Cambodia: Validation Agreement Enters into Force

The European Patent Office (EPO) announced in a recent press release that the agreement between the Royal Government of the Kingdom of Cambodia (KH) and the EPO on the validation of European patents was signed on January 23, 2017. With the recognition of the EPC, the Kingdom of Cambodia will become the first Asian country to give the same legal effects to a European patent as a national patent on its territory.

With the entry into force of the agreement, it is thus possible to obtain patent protection in the Cambodia by having a European patent granted by the European Patent Office. A national granting procedure in the Kingdom of Cambodia is no longer necessary. However, in order to validate the European patent in Cambodia , the payment of a so-called validation fee is necessary. The amount of the fee will be approximately EUR 200 and the due date for paying the validation fee expires 6 months starting from the notice of the publication of the European search report. For Euro-PCT applications the validation fee will be due at the time for entering of the application into the European phase before the EPO.

For the validation of the granted European patent in the Kingdom of Cambodia, a translation into Khmer language of the description, claims and figures of the European patent has to be filed with the Ministry of Industry & Handicraft (MIH) of Cambodia. Both, the translation and a publication fee are due within three months of the date on which the mention of the grant of the European patent is published.

Taking into account the current EPC contracting states, validation and extension states, including the Kingdom of Cambodia, a European patent can now provide patent protection in a total of 43 European and non-European countries.

Comments:

Since 2010, the EPO has signed validation agreements with four non-EPC member states (see table below).

It can be expected that validation agreements will be concluded with further non-European countries.

Country: Agreement: Signature date: Time of entry into force:
Morocco (MA) Agreement between the Government of the Kingdom of Morocco and the European Patent Organisation on validation of European patents December 17, 2010 March 1, 2015
Republic of Moldova (MD) Agreement between the Government of the Republic of Moldova and the European Patent Organisation on validation of European patents October 16, 2013 November 1, 2015
Tunisia (TN) Agreement between the Government of the Republic of Tunisia and the European Patent Organisation on Validation of European patents July 3, 2014
Kingdom of Cambodia (KH) Agreement between the Government of the Royal Government of the Kingdom of Cambodia and the European Patent Organisation on Validation of European patents January 23, 2017

Last time this table was updated: March 15, 2017.

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Merry Christmas and a Happy New Year!

We wish all our readers a Merry Christmas and a Happy New Year 2017!

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Andorra: New Patent Law and Possible Validation Agreement With EPO

Andorra flagAndorra is currently negotiating an agreement with the European Patent Office (EPO) for the validation of European patents in this country, as well as to become a member state of the Patent Cooperation Treaty (PCT). Both agreements may enter into force by the end of 2016 or during the first half of 2017.

Additionally, as from January 25, 2016 it will be possible to protect inventions through a direct national patent filing in Andorra. National patent applications will not be substantively examined in Andorra unless it is considered that there is an obvious lack of novelty. Therefore, the procedure is generally a simple depositary system.

Moreover, there will be a requirement for proof of novelty, inventive step and industrial applicability before any actions can be taken to enforce patent rights in Andorra.

Andorran patent applications may be filed in Catalan, Spanish, English or French language. However, if applications are filed in Spanish, French or English, it will be necessary to file a translation of the claims in Catalan.

Since Andorra is a member state of the Paris Convention (PC), a 12-month priority right can be claimed for any patent application(s) previously filed in any member state of the PC or the World Trade Organization (WTO).

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Brexit: Impact on European Patents, Trademarks and Designs

Union-JackOn June 23, 2016, a referendum will be held in Britain to decide whether or not Britain should leave or remain in the European Union (EU). In the event of a majority voting for a “leave” (“Brexit“, a portmanteau combining the words “Britain” and “exit”) Britain will leave the European Union in accordance with Art. 50 (2) Treaty on European Union within a time period of two years.

A Brexit would have considerable consequences for the harmonization process of European intellectual property right. The main effects and implications of a Brexit may be summarized as follows:

1. Trademark and Design Law

The Council Regulation (EC) No. 207/2009, the EU regulation that govern the European Union trademark (EU trademark), would cease to have effect in Britain in case of a Brexit. Proprietors and applicants of EU trademarks would have to convert their EU trademarks into national trademarks by way of a conversion under Art. 112 to 114 of the regulation. Alternatively, they may choose to let their trademark right in Britain become abandoned.

Similarly, the Council Regulation (EC) No. 6/2002, the EU regulation that govern the community designs (RCD), would cease to have effect in Britain. However, in contrast to the case of EU trademarks the regulation (EC) No. 6/2002 does not provide an option for a voluntary conversation of a community design into a national design, so that it is questionable whether and if so, how, the protection of a registered community design may be maintained in Britain in case of a Brexit.

Moreover, Britain could no longer be designated in a community trademark application and in an application for a registered community design.

2. Patent Law

A unitary patent (European  patent with unitary effect, EPUE) issued by the European Patent Office would have no effect in Britain after a Brexit. For the establishment of the Unified Patent Court (UPC) two scenarios are possible. First, the UPC may be established without Britain. The Court of First Instance will have no thematic section in London. However, the thematic section of the Court of First Instance could be built up in a different city. Second, the road map for the establishment of the UPC may be hindered or delayed in case of a Brexit.

For the establishment of the UPC, it is necessary that out of 25 participating countries at least 13 countries ratify the convention, including France, Germany and Britain as the three countries with the most European patent validations in 2012. Since Italy was the country with the fourth highest number of European patents, Italy would move up to the position of the three sine-qua-none participating countries. However, Italy has so far made no effort in the implementation of the convention into national law. An addendum to the convention would therefore be required. It is very likely, that the road map for the establishment of the UPC will be delayed in case of a Brexit.

For European patents and European patent applications without unitary effect, a Brexit would have no impact, since Britain would remain a member state of the European Patent Convention (EPC).

3. Impact on Patent and Trademark License Agreements

Existing patent and trademark license agreements should be checked for a possible impact of a Brexit. If an “accidental” change of the license area is not explicitly regulated in an agreement, the will of the parties would have to be determined by supplementary interpretation of the agreement.

Similar considerations apply to trademark delimitation agreements and related agreements.

4. Impact on the Exhaustion of IP Rights

If the British citizens voted for a Brexit, existing pan-European exhaustion regimes may have to be modified.

Under current law, IP rights are exhausted once goods are put on the market within the territory of the EU or the European Economic Area (EEA) with the owner`s consent. After a Brexit, however, a patent proprietor may once again have the possiblity to prohibit the import from Britain to Europe or from Europe to Britian of goods marked with a trademark or protected by a patent.

For reasons of grandfathering, IP rights that have already been exhausted should continue to be exhausted even after a Brexit. However, for non-exhausted rights the legal situation may be different.

5. Necessity to Introduce Transitional Arrangements

In the interests of patent and trademark proprietors, comprehensive transitional arrangements should be worked out by European and British legislators in a timely manner, in order to ensure that existing and future property rights will not cease to have effect in and for Britain in case of a Brexit.

It is highly recommended for applicants of trademarks and designs to apply for national trademarks and designs in Britain in parallel to filing EU applications at least until transitional arrangements are entering into force.

Other procedural changes are of secondary importance for the proprietor of IP rights. After a Brexit, Britain would have no representatives in the European Parliament or in the European Council. Moreover, no British judge would contribute to EU law in the Court of Justice of the European Union (CJEU). The established and future EU legislation and case law would inevitably be affected by a Brexit.

6. Our Opinion

In our view, it would be desirable and in the interests of applicants and proprietors of IP rights if comprehensive transitional arrangements were negotiated by the European and British legislators in case of a Brexit, in order to enhance the legal certainty for all market participants. A delay or a refusal of such negotiations by the EU – with the open or hidden intention to make a deterring example of a country daring to choose to exit the EU – would be counterproductive.

Existing rules of the European Economic Area (EEA), the European Free Trade Association (EFTA) and the World Trade Organization (WTO) may be used for this purpose and, if necessary, adapted to the situation, as already proposed in an interview by the former British Foreign Secretary Lord David Owen.

Update (June 24, 2016): Britain has voted to leave the EU.

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OHIM: New Office Name and EU Trade Mark Regulation

EU trade mark regulation
The Office for Harmonisation in the Internal Marke (OHIM) announced in a recent press release that the Regulation (EU) No. 2015/2424 of the European Parliament and the Council (EU trade mark regulation) dated December 16, 2015 will enter into force on March 23, 2016.

For applicants and owners of registered community trademarks the following changes should be noted.

1. Re-Branding of the OHIM

As from March 23, 2016, the OHIM will re-brand itself to „European Union Intellectual Property Office (EUIPO)“. From the same date, a community trademark (CTM) will be called “European Union trademark” (EUTM).

The office’s email addresses will also change. The new email addresses will have the format: name.firstname@euipo.europa.eu. The office’s website will be updated to reflect the new name. The new domain name will be: www.euipo.europa.eu.

2. New Fee Structure

The fee system under the EUIPO will replace the current fee system of the OHIM. The filing, maintenance, litigation and appeal fees will all be changed.

2.1 Filing Fees for EU Trademarks

The basic filing fee for EU trademarks will cover only one class instead of three classes, as it is presently the case. In other words, additional class fees will have to be paid for any EU trademark application covering goods and services of more than one class (Nice classification). The fees are summarized in the following table.

number of classes current fee
(online filing)
new fee
(online filing)
1 class 900 EUR 850 EUR
2 classes 900 EUR 900 EUR
3 classes 900 EUR 1.050 EUR
each additional class 150 EUR 150 EUR

2.2 Fees for the Renewal of EU Trademarks

The renewal fees for EU trademarks will be lowered and will now correspond to the filing and class fees. The renewal fees for EU trademarks are summarized in the table below.

number of classes current fee new fee
1 class 1.350 EUR 850 EUR
2 classes 1.350 EUR 900 EUR
3 classes 1.350 EUR 1.050 EUR
each additional class 400 EUR 150 EUR

In contrast to the present system, the renewal of any EU trademark will have to be requested on the renewal date rather than at the end of the month of a possible renewal, in accordance with Art. 47 (3) EU trademark regulation.

Example: a EU trademark with a filing date of April 15, 2016 must be renewed and the renewal fee must be paid on or before April 15, 2026 (Friday).

If the renewal of a EU trademark is not requested within the normal due date, the trademark can still be validly renewed, if an additional late payment fee is paid together with the basic fee. The time limit for requesting renewal of the trademark and pay the late payment fee and basic renewal fee will end 6 months from the date of the normal time limit.

2.3 Fees in Relation to EU Trademarks

The process fees for opposition, nullification and appeal proceedings are lowered, as will be apparent from the table below.

procedure current fee new fee
opposition 350 EUR 320 EUR
nullification 700 EUR 630 EUR
appeal 800 EUR 720 EUR

3. Introduction of EU Certification Marks

On September 23, 2017, a new type of trademarks will be introducted at the EUIPO: the so-called “EU certification mark”.

The certification mark will allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with certification requirements. Thus type of trademark will only be available to members of the organisation, which ensures that the quality standards are observed. For this reason, the applicant of an EU certification mark must file together with the application documents the regulations of the organisation which set out a number of matters.

4. Introduction of New Types of Trademarks

Starting from October 1, 2017, the registration of new types of trademarks will be easier. The EU trade mark regulation will remove the requirement of graphical representation. New types of non-traditional trademarks, such as holograms or motion trademarks, will in principle be registrable as EU trademarks.

It is still unknown, how the new types of trademarks may be non-graphically represented in each case.

5. Possible Seizure of Goods in Transit within the EU

In a measure to help in the battle against counterfeiting, the EU trade mark regulation intends to make it easier for trademark owners to seize counterfeit goods in transit within the European Union.

The owners of EU trademarks will be entitled to seize and destroy goods in transit within the EU that are illegally marked with their trademarks, unless the goods can be lawfully put on sale in the country of final destination. In other words, the seizure may be prevented by the potential trademark infringer, if he can prove that he is allowed to bring into the market the goods marked with the trademark in the country of final destination.

6. Interpretation of the Goods and Services of a EU trademark

The European Court has previously ruled in its decision “IP Translator” (C-307/10) that the protection provided by a trademark covering the class headings of the Nice Classification is limited to the literal meaning of the terms. With entering into force of the EU trade mark regulation, it is now implemented law that in accordance with the WYSIWYG (abbreviation for “what you see is what you get”) approach the descriptions of goods and services will be interpreted strictly such that class heading language will no longer be construed as covering all goods or services in the class.

This principle as codified in Sect. 28 (5) of the EU Trade Mark Regulation Union will not only be applicable to the newly filed EU trademarks, but also for all registered trademarks and pending trademark applications. Since the application of the new law may in principle constitute a loss of legal rights for all those old cases, the EU Trade Mark Regulation provides for a transitional regime for the trademarks registered prior to June 22, 2012. The owners of these trademarks may declare whether the selected class headings should protect all other goods and services within the class and extend protection to those goods and services. The time limit for submitting the declaration to the EUIPO will expire on September 24, 2016.

However, this option only applies to those cases, wherein the terms cannot be subsumed under the verbatim of the claimed class headings. The goods and services to be claimed in the declaration must be selected from the alphabetical list of terms according to the Nice Classification as valid at the time of filing the trademark.

7. Comments

In our view, the procedural and substantive changes that are introduced by the EU trade mark regulation are to be welcomed. The reduction of the renewal fees for EU trademarks might reduce the number of double registration of trademarks by the same applicants.

With respect to the WYSIWYG approach for interpreting the scope of protection of a trademark now applicable under the EU trade mark regulation, applicants for and owners of EU trademarks should check their portfolios for trademarks, for which action is required prior to the expiry of the time limit of September 24, 2016. If necessary, a declaration should be filed with the EUIPO that the trademark should be extended to the desired (missing) goods and services.

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Artur Fischer: One of the Greatest Inventors of all Times Died at Age of 96

Artur FischerAs Spiegel Online reported today, inventor Artur Fischer died on  January 27, 2016 at the age of 96. This is very sad news as Artur Fischer was arguably the greatest innovator and one of the greatest businessmen of post-war Germany. Among a large number of useful things, he invented the synchronous flash for photography (registered as a patent already in 1949), the famous Fischer Dowel (“S Plug” (Split-) wallplug made from plastic materials, “Dübel” in German) and the Fischertechnik Construction Kits with which many nerds grew up, including the famous C64 Fischer Robotics Kit of the 1980s. Further inventions of Artur Fischer were innovative bone plugs for fixing bone fractures and biodegradable and edible children’s toys from potato starch.

Fischer received the Order of Merit of the Federal Republic of Germany in 1999 and was honored by the European Patent Office in 2014 for his life’s work (picture above).

His heritage includes an impressive portfolio of over 1,100 patents. He even overtook Thomas Alva Edison, who held  “only” 1,093 patents, and reportedly remained inventive and interested in solving technical problems until the very end.

Foto: © European Patent Office European Inventor Award, [CC BY-NC-ND 2.0]

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Moldova: Validation Agreement Enters into Force

flag MoldovaThe European Patent Office (EPO) announced in a recent press release that the agreement on the validation of European patents between the EPO and the Republic of Moldova has entered into force on November 1, 2015. With the recognition of the EPC, the Republic of Moldova followed Morocco to become the second country which is not a member of the European Patent Organization but gives the same legal effects to a European patent as a national patent on its territory.

With the entry into force of the agreement, it is thus possible to obtain patent protection in the Republic of Moldova by having a European patent granted by the European Patent Office. A national granting procedure in the Republic of Moldova is no longer necessary. However, in order to validate the European patent in the Republic of Moldova, the payment of a so-called validation fee is necessary. The amount of the fee is currently EUR 200 and the due date for paying the validation fee expires 6 months starting from the notice of the publication of the European search report. For Euro-PCT applications the validation fee will be due at the time for entering of the application into the European phase before the EPO.

For the validation of the granted European patent in the Republic of Moldova, a translation into Moldovan of the description, claims and figures of the European patent has to be filed with the State Agency on Intellectual Property of the Republic of Moldova. Both, the translation and a publication fee are due within three months of the date on which the mention of the grant of the European patent is published.

Taking into account the current EPC contracting states, validation and extension states, including the Republic of Moldova, a European patent can now provide patent protection in a total of 42 European and non-European countries.

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Merry Christmas and a Happy New Year!

We wish all our readers a Merry Christmas and a Happy New Year 2016!

Munich Christmas

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Federal Supreme Court Confirms Nivea Blue

NiveaBeiersdorf AG, manufacturer of Nivea, won a ruling from Germany’s Federal Supreme Court (BGH) that gives it a second chance to defend its trademark for the blue color on its Nivea products in a legal battle with Unilever NV (court case number: I ZB 65/13). On July 9, 2015, the BGH ordered a reopening of the proceedings before the German Federal Patent Court (BPatG).

The suit is part of an long-standing legal battle between the two DAX listed companies over their dark blue colors (Panthone 280 C) used in the Dove and Nivea brands.

“Since 1925, the color Blue stands for the trademark values of Nivea. The blue tin is the ‘face’ of the brand and the basis of the global design language of the Nivea products,” said Inken Hollmann-Peters, Vice President Corporate Communications & Sustainabilitya at Beiersdorf. “That’s why we leave nothing untried to protect the iconic color image.”

In the preceding instance, the BPatG had applied a strict standard, deciding that an abstract color trademark can only be registered or maintained as a registered trademark, if 75 percent of the relevant consumers associate the color with the trademark. The Nivea Blue trademark did not fulfill this strict criterium. However, according to the BGH the threshold must now be lowered to a more moderate 50 percent.

Dr. Wolfgang Büscher, chairman of a panel of five judges at the highest civil court, said one issue at trial was whether “the federal patent court set a standard that is too strict.”

Beiersdorf said it welcomed the decision as it regards the color as a trademark and not only as a decorative background.

The number of law suits over abstract colors are currently on the rise. Mondelez International Inc. and Nestlé SA are fighting over a trademark for the color “purple”, which is used by Mondelez for the packaging of Cadbury’s Dairy Milk bars. Moreover, the BPatG recently ruled in a law suit brought by the Spanish bank Santander SA that a trademark for the color “red” owned by the German Association of Savings and Loans Banks (Deutsche Sparkassen- und Giroverband, DSGV) should be cancelled.

Update (May 10, 2016): The 25th Senate of the Federal Patent Office (BPatG) cancelled the trademark for the color “red” of the German Association of Savings and Loans Banks (BPatG, GRUR 2015, 796). An appeal was filed against this decision, so that the Federal Supreme Court will have the final words in this case (I ZB 52/15).

Foto: Beiersdorf

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Filing a Trademark Application in Canada: Characteristics of the Canadian Trademark Law

Trademark application in CanadaThe registration process of a trademark in Canada is in some ways extraodinary when compared to the registration practices in other countries.

The most important characteristics of the Canadian trademark registration process are summarized below.

1. No Madrid Protocol

Canada belongs to a only a handful of industrialized countries in the world, which have neither joined the Madrid Agreement (Agreement) nor the Protocol of the Madrid Agreement (Madrid Protocol), as discussed elsewhere.

However, since Canada has signed the Paris Convention (PC), the priority of a foreign trademark application can be validly claimed in a Canadian trademark application. Moreover, the applicant can claim the priority of the trademark application in Canada in a foreign trademark filing. A prerequesite of the validity of the priority claim is that the signs and the goods and services of the first and subsequent trademark applications are essentially identical.

2. Obligation to Use the Trademark

Before a trademark can be registered in Canada, the applicant of the trademark must generally use the trademark in Canada. The application may be filed on the basis of a proposed use in Canada or, if the trademark is already used in a a foreign country (use abroad) on the basis of a registered trademark in the country of origin of the applicant. Furthermore, a trademark application may be filed for a mark, which is not yet used in Canada, but has nevertheless become known to the public in Canada.

3. No Classification of Goods and Services

In Canada, the goods and services claimed are not classified according to Nice classification. The trademark application must only provide a list of goods (Canadian engl. “wares“) and services for which protection is sought. No class fee is charged at the CIPO. However, it should be made sure that the claimed goods and services are used in Canada or that the use of the trademark for the goods and services is at least intended by the applicant (see item 2).

4. Declaration of Use

If the trademark application in Canada is filed on the basis of a proposed use, a declaration of use must be filed with the CIPO. In this declaration, the date of the first use of the trademark in Canada must be provided for each of the claimed goods and services. The time limit for filing this declaration can be extended up to three times.

5. Filing a Certificate of Registration

If the trademark application in Canada is filed on the basis of a foreign registration, a trademark certificate must be filed with the trademark office in Canada. If the trademark certificate is not written in English language, a translation thereof into English language must be provided.

6. End of the Grace Period of Non-use

After expiry of a time limit of three years from the registration of the trademark in Canada, any third party may request that the applicant provides documentary proof of the use of the trademark. If such a request is filed by a third party, it is necessary to proof the use of the trademark in Canada for each good and service claimed in the application. If no proof of the use can be provided, the trademark will be partially or fully cancelled.

7. Prohibited Trademarks

In Canada, some kind of signs are excluded from trademark protection. A simple word, which is predominantely a given name or family name of a person, cannot be protected by a trademark. An exception can be made, if the person whos name should be registered as a trademark has died more than 30 years before the trademark application is filed. Also, as in other countries descriptive or non-distinctive signs cannot be protected by trademarks. The CIPO will assume that the relevant consumers are familiar with both, the English and French languages.

8. Power of Attorneys

Although it is not required by law to submit a signed power of attorney, the CIPO can request at any time to provide proof that the representative having filed the application in the name of the applicant is authorized by the applicant.

9. Registration Procedure

The examination of the tradmark is generally carried out within a time frame of 4 to 8 months after filing the application. The total registration process can typically be completed within a time frame of  18 to 24 months from filing the application.

After the publication of the registration third parties can file oppositions against the registered trademark.

10. Renewal of Trademarks

In Canada, the normal term of protection expires 15 years after registration of the trademark. The registered trademark may be renewed every 15 years.

A registered trademark may at any time be cancelled for non-use, if requested by a third party (see item 6).

Foto: © Jamie McCaffrey, [CC BY 2.0]

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