SUNDAY, 25 JUNE 2017
Moldova: a transit country for counterfeit goods into the EU

Moldova has ratified most of International Conventions in the field of intellectual property, including the TRIPS Agreement, and its legislation is harmonized with the European Directives. Furthermore, after it signed the Association Agreement with the EU in 2014, the country has launched a number of law enforcement projects, notably in respect to intellectual property rights. One of the primary objectives of these projects is to ensure effective rights at the border.

Geographically located at the eastern border of the European Union, on the one hand, but also in the immediate neighborhood of the Black Sea port of Odessa, on the other hand, the Republic of Moldova is interested in trade of the counterfeit goods. According to statistical data, a great quantity of the counterfeit goods found in the EU have been transited through the Republic of Moldova; the variety of products is very extensive, including in particular clothing, cosmetics, perfumery, cigarettes, medicines, car parts and food products.

From a legal point of view, Moldova has at its disposal the necessary customs means to prevent access of counterfeit products into the EU market. The Customs Code’s provisions allow the intervention of customs officers either at the request of the right holder or ex officio. Moreover, with the transposition of EU Regulation 608/2013 into national legislation, the procedure is identical to that applied in the EU countries, including the destruction of goods shipped in small quantity. Thus the owners of intellectual property rights have adequate legal instruments to stop infringement of their rights in Moldova.

From the institutional point of view, there is an increase in the professional capacities of the customs officers. Through the educational partnership that our company has with the Customs Service of the Republic of Moldova, we have noticed that the customs authorities are willing to respect intellectual property rights at the border.

On the other hand, there is a need for more active involvement on the part of right holders. The statistics provided by the border authorities shows a decrease in the number of requests for intervention (down 39% when compared to 2015) and the total number of trade marks protected at the border declined in 2016 for the first time since the introduction of this protection system. At the same time, out of 32% of the cases related to detained counterfeit goods in 2016, the right holders did not react to the notification of the Moldovan customs authorities.

This data reveals a worrying situation that deserves to be further analyzed both by the responsible authorities of the Republic of Moldova and by rights holders.  The active cooperation of right holders with the Moldovan customs officers would substantially reduce the volume of counterfeits on the EU market and by implication would favour the enforcement of intellectual property rights both in the EU and in Moldova.

This piece has ben specially prepared for the Class 46 weblog by MARQUES member Ion Tiganas, Attorney-at-law, PhD (Managing Partner, Tiganas & Partners IP Law Firm)

Posted by: Blog Administrator @ 16.35
Tags: Moldova, counterfeits, customs,
0 Comments    Post a comment
FRIDAY, 23 JUNE 2017
UDRP questions: WIPO selects some answers

Remember the days when those pesky domain name registrations seemed to be the respectable trade mark owner's worst  nightmare?  Fortunately things aren't nearly as bad as they could have been, not least because there exists a stable, relatively consistent and quite economical system for arbitrating URL disputes.  WIPO has a great deal of experience in this field now, and it shares this experience with its users.  In this context we are pleased to draw your attention to the following release:

Dear colleagues,

We are pleased to announce the release of the Third Edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), which was officially launched in May.  As a reflection of WIPO UDRP jurisprudence, the WIPO Overview is the go-to resource for WIPO complainants and respondents, and panelists alike. 

The number of cases managed by WIPO has nearly doubled since WIPO Overview 2.0;  it is through many of these cases that it has been possible to capture consensus views of WIPO UDRP panels as expressed in WIPO Overview 3.0.  Following review of thousands of new WIPO cases, this updated edition cites almost 1,000 representative decisions from over 265 WIPO panelists across some 100 issues, twice as many as were covered by version 2.0. 

Since creating the UDRP blueprint, WIPO has processed over 37,000 UDRP-based cases involving parties from 178 countries and decided in 21 languages by nearly 500 WIPO experts covering some 65 nationalities.

In a separate development, as of June 1, WIPO also administers cases under the policy for the EU domain, bringing to 75 the number of country code Top-Level Domains for which WIPO provides services.

You are welcome to learn more about WIPO domain name dispute resolution at www.wipo.int/amc/en/domains

Posted by: Blog Administrator @ 15.00
Tags: UDRP, WIPO, arbitrations,
0 Comments    Post a comment
THURSDAY, 22 JUNE 2017
Introducing ... the Madrid Member Profiles Databases

Have you been introduced to the Madrid Member Profiles Databases yet?  No?  Well, there's no need to stand on ceremony.  Our friends at the World Intellectual Property Organization (WIPO) have broken the ice by doing the introduction themselves!  This is what they tell us:

Introducing the Madrid Member Profiles Databases

On May 21, 2017 WIPO launched the all-new Member Profiles Database. This highly anticipated e-service offers a portal to the trade mark rules and examination procedures of Madrid System members, putting a wealth of vital information at your fingertips.
 
When preparing an international trademark application, use the Member Profiles Database to uncover details about trademark offices in your target markets, including which types of trademarks can be protected and how to file an international application through your ‘home’ Office of origin.
 
After you’ve registered your trade mark through the Madrid System, the database’s simple interface gives you access to key procedures and time limits applicable in the countries or regions of Madrid System members you have designated under your international registration.
 
Read on to find out how get started with the Member Profiles Database.
 
Additional resources:

Posted by: Blog Administrator @ 17.15
Tags: WIPO, Madrid Member Profiles Databases,
0 Comments    Post a comment
FRIDAY, 16 JUNE 2017
Top ten trade mark representatives in Switzerland, by number of new national applications

The table above shows the ten trade mark representatives that filed the most new national applications in 2016?in Switzerland, and the percentage change in new applications filed from 2015?to 2016?(last column). Note that for a methodological reason, the number of applications for 2016 is comparatively underreported, so the decline of applications for most firms in the top ten is potentially an artifact of the reporting. The relative standing is correct, however.

All the more impressive that E. Blum & Co?not only defends its top spot - which it has held for ten years now - but manages to increase the number of its applications. The other two firms in the top three remain unchanged compared to 2015 (I did not do a post in 2016). Wild Schnyder makes the biggest gain, from number 10 in 2015 to number 5 in 2017. This may have something to do with Barbara K. M?ller joining the firm in 2015. Just outside the top ten are Katzarov SA and Troller Hitz Troller.

As always, this ranking is based on quantity alone. Quantity does not mean quality. Draw your own conclusions. If you believe the numbers are wrong or I missed your firm, send me an email.?

The data is from?Swissreg, advanced search, the name of the firm selected as "representative", appropriate date range, only "new registration" was selected as "reasons for publication", all the options were selected for "status".?

Search carried out on?16 June 2017. If you believe your firm should be featured, please send me an email.?

Disclaimer:?I work for a?law firm?that also prosecutes trade marks. We are not among the top ten filers, so I don't think the fact that I am working for a competitor of the listed firms influenced the results in any way.

Posted by: Mark Schweizer @ 13.24
Tags: Switzerland, rankings,
0 Comments    Post a comment
TUESDAY, 13 JUNE 2017
Madrid: Common Regulations amended

We live in a world of change, and even the best things in life never stay the same.  It should be no surprise, therefore, that the Common Regulations under the Madrid Agreement and Protocol are being changed -- just a little.  According to WIPO

Amendments to the Common Regulations under the Madrid Agreement and Protocol

The amendments to Rules 12, 25, 26, 27 and 32 of the Common Regulations and item 7.4 of the Schedule of Fees will enter into force on July 1, 2017.

  • Control by the International Bureau of WIPO of the classification of limitations to the list of goods and services made in international applications (Rule 12).

  • New requirement to list the goods and services in a request for the recording of a limitation according to the numbers of the classes contained in the international registration (Rules 25 to 27).

  • New recording to introduce in the international registration indications concerning the legal nature of the holder or to change those indications (Rules 25 to 27, 32 and item 7.4 of the Schedule of Fees).

For further information, please refer to Information Notice No. 11/2017.

Posted by: Blog Administrator @ 21.30
Tags: Common Regulations, Madrid,
0 Comments    Post a comment
TUESDAY, 13 JUNE 2017
Madrid: three brand-new WIPO webinars starting next week

Our good friends at the World Intellectual Property Organization (WIPO) are busily putting the final touches to the first three in a series of brand-new and absolutely free Madrid System Webinars that will be launched next week:

Registrations are open for three webinars in June:

Programs will be broadcast live in English, providing users with the opportunity to interact directly with WIPO presenters.

This Madrid news item, published by WIPO, has further information..

Posted by: Blog Administrator @ 19.20
Tags: Madrid webinars,
0 Comments    Post a comment
WEDNESDAY, 7 JUNE 2017
Turkish Trade Mark Office protects New Zealand?s famous rugby team?s ?The Kiwis? trade mark

The Turkish Trade Mark Office has allowed an opposition based on genuine rights obtained via prior use of the opponent’s trade mark and worldwide registrations although that trade mark is not used in Turkey for the relevant goods and services.

The opponent is the owner of the New Zealand’s famous rugby team (the New Zealand Kiwis), commonly known as “The Kiwis”, and has trade mark registrations for “The Kiwis” in many countries.  Turkey however is not one of them and the opponent’s trade marks are never used in Turkey for the relevant goods and services.

Under Turkish Trade Mark Law, in an opposition based on the genuine rights of the unregistered trade mark, the opponent must show use of the unregistered trade mark for the relevant goods before the filing date of the applied-for trade mark. In recent decisions, the Office has asked for evidence of use of the unregistered trade marks in question within the territory of Turkey in order to grant the genuine rights in them.

In the present opposition, the applicant filed an application to register the “KIWIS” trade mark before the Office in classes 25 and 35 of the Nice Classification system. The opponent filed an opposition based on the genuine rights and the well-known status of its trade marks as well as its team’s industrial property rights in the “The Kiwis” trade mark and filed extensive evidence proving the use of the trade mark worldwide.

Trade Marks Department Directorate of the Office allowed the opposition and rejected the application entirely due to the ground trade mark’s recognition worldwide and the rights of the opponent on its rugby team’s name.

This is a landmark decision with regard to oppositions based on genuine rights since the Trade Marks Department Directorate of the Office acknowledged the genuine rights in a trade mark even though this trade mark is never used in Turkey on the goods and services within the scope of the opposed application.

This blogpost has been kindly prepared for Class 46 by Mutlu Yıldırım Köse and Seda Gümbüşoğlu, both of Gün+Partners.

Posted by: Blog Administrator @ 19.12
Tags: Turkey, opposition, unused mark, Kiwis,
0 Comments    Post a comment