Issue 031
  July 2013
Contents:
 

Update on ICANN’s new gTLD programme

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HouseMARQUES interview: Till Lampel

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House of Lords passes IP Bill

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OHIM draft guidelines published

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New Boards of Appeal president

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Customs Regulation published

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Tips for Madrid users

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Cancellation due to non-use in Russia

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Upcoming MARQUES events

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MARQUES Media round-up

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Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

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Update on ICANN’s new gTLD programme
Last month, 1,800 delegates spanning the globe participated in ICANN’s 47th Meeting in Durban, South Africa. Members of the MARQUES Cyberspace Team were there and report on the latest news.
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The HouseMARQUES interview: Till Lampel, Unfair Competition Team
Till Lampel reveals what the Unfair Competition Team has planned for Monte Carlo, and reveals his favourite Annual Conference venues.
Read More >>
House of Lords passes IP Bill
The UK Intellectual Property Bill 2013 has now passed the House of Lords in the UK and will shortly become law. The amendments to UK design legislation are the culmination of a long consultative process, in which the MARQUES Designs Team has been involved, making written submissions and attending briefings. David Stone, chair of the MARQUES Designs Team, reports.
Read More >>
OHIM draft guidelines published
OHIM has published the draft Guidelines of Work Package 1 online for consultation until 13th September.
Read More >>

New Boards of Appeal President

 

New Customs Regulation published

The Council of the European Union has appointed Théophile Margellos as President of the Boards of Appeal of OHIM.   EU Regulation 608/2013 concerning customs enforcement of intellectual property rights was published last month.
Read More >>   Read More >>
Tips for Madrid users
WIPO has published some practical tips on the Madrid System, including on the restriction on extension of old applications to new contracting states.
Read More >>
Cancellation due to non-use in Russia
As of 3rd July, non-use cancellation actions in Russia must be brought before the newly established Court on Intellectual Property Rights. In an article on the MARQUES website, Marina Grineva of the Brands and Marketing Team discusses how this change of venue may benefit parties to such disputes.


Before 2011 non-use cancellation requests were filed at the Chamber for Patent Disputes, which was subject to the jurisdiction of Rospatent, and its decisions could be appealed to the Moscow Arbitration Court.

From 8th December 2011, however, disputes concerning non-use became the responsibility of the Court on Intellectual Property Rights. On 2nd July 2013, the Plenum of the Supreme Arbitration Court of the Russian Federation approved the start of the new IP Court and from July 3rd 2013 non-use cancellation actions should be filed to the IP Court.

For the period between December 8, 2011 and 3rd July 2013 non-use disputes were referred to the Moscow Arbitration Court. The non-use decisions rendered by the Arbitration Court in 2012 and in early 2013 on more than 300 cases make it possible to form a general opinion on its practice and to identify its major approaches to these disputes. We expect that the newly created IP Court will examine non-use cancellation cases based on the practice developed by the Arbitration Court.

The transfer of the venue has a number of benefits for parties, including regarding representation, evidence, examination of documents, cases involving multiple marks and fees. But there are also some downsides including more complicated procedure, and longer times for examination of disputes.

Interested parties
In recent years, the Chamber for Patent Disputes and the courts have developed the criteria applicable to evidence of legitimate interest in trade mark non-use cancellation proceedings (Resolution 14503/10 of 1st March 2011 concerning the trade mark Ñòðèæàìåíò/Strigament, Resolution KG-À40/10536-09 of 19th November 2009 concerning the trademark Gold Star and Order VAS-2333/10 dated 10th March 2010 concerning the trade mark Gold Star).

Now, the Arbitration Court views parties that cannot be the holder of rights to a trade mark (individuals not registered as individual entrepreneurs) as parties that may have a legitimate interest. Such parties can include, for example, individuals who own domain names and who wish to protect their rights to such domain names in case of a conflict with a trade mark.

Evidence of use
The burden of proof of trademark use lies with the trade mark owner. Trade mark use is viewed as use of the trade mark by its owner or a party so authorised by virtue of a licence agreement or sub-licence agreement that should be registered at the Russian PTO, or by another party using the trade mark under control of the owner.

Very careful attention must be paid to preparing documents confirming trade mark use as the court of appeal will only accept additional evidence if the party submitting the evidence shows that it could not be provided to the court of first instance for reasons beyond the party's control, and only if the court accepts the reasons as valid.

It must also be taken into account that in Russia it is not possible to combine trademark non-use cancellation action with opposition/invalidation or enforcement action based on the same trade mark. A non-use cancellation action may, under certain conditions, be made as a counter-action as part of a case relating to infringement. However, the non-use cancellation action will be examined in the court examining the initial infringement claim rather than the Moscow Arbitration Court.

Read the full article Cancellation of trademark due to non-use in the Russian Federation on the Team page in the MARQUES website.

 

Upcoming MARQUES events

 

MARQUES Media round-up

Add the forthcoming MARQUES events to your diaries to make sure you don’t miss out.   Keep up to date with MARQUES news via the Class 46 blog, twitter and the LinkedIn discussion group
Read More >>   Read More >>

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