In order to prevent the spread of COVID-19 virus on the territory of the Russian Federation, on 26 March 2020 the Russian Government made a decision to minimize communication between people and announced days off from 30 March to 3 April. There is a high probability that the days off will be extended.

For this reason, Rospatent was closed from 30 March 30 to 3 April. All deadlines that fell between 30 March and 3 April are moved forward a week. During this time, the Patent Office received electronic documents related to the daily operations: filing applications, responding to the requests for examination, extending the periods relating to patents, trade marks and industrial designs, but all orders will be fulfilled after the termination of the weekends and the work resumption.

Information on the further Rospatent operating mode will be available subsequently.

Law firms are also forced to stop operating in a standard mode. Fortunately, modern technologies allow us to carry out the activities by working remotely and staying in touch with the world via email, phone and video conference.

Sergey Zuykov, Zuykov and Partners, member of the MARQUES Dispute Resolution Team

WIPO has published updated information on the impact of the COVID-19 pandemic on the  Madrid System.

The information is available to read on WIPO’s website here. The page will be updated by WIPO as more instructions become available:

It covers:

• Remedies and extensions of time limits
• Suspension of postal communications
• Temporary measures concerning certified documents and extracts services
• Measures implemented by IP Offices
• Madrid System online services

In addition, readers might like to note:

Information Notice 12/2020 on Temporary Measures Concerning Certified Documents and Extracts Services

Information Notice 11/2020 on Suspension of Postal Communication with the International Bureau

Information Notice 10/2020 on Closure of the Office in Colombia

Information Notice 7/2020 on Remedies Available Against Failure to Meet a Time Limit and Extension of Time Limits in Case of Closure

According to an official notification issued by CNIPA on 27 March 2020, the remedy for missing deadlines due to COVID-19 under Announcement No. 350 of 28 January 2020 applies to all foreign parties, including trade mark applicants, trade mark right holders and agents (see announcement here).

Announcement No. 350 suspends the relevant time limit given in Law, or the deadline specified by the CNIPA, from the date when the obstacle to the exercise of the rights arises until the date when the obstacle for exercise of the right is removed, except as otherwise stipulated by law.

The applicant may claim for continued protection within two months from the date when the obstacle to the exercise of rights is removed, with supporting evidentiary material for the restoration of rights.

We would like to take this opportunity to report to you that our colleagues and our families are all safe and healthy now. The overall situation in China is basically under control and the recovery of economic and social life is being expedited.

We do hope the international community works with solidarity to overcome the pandemic soon.

By Chuanhong Long, Vice President of CCPIT Patent and Trademark Law Offices. Reproduced with permission

Perhaps not the most fortunate timing, but on 20 March 2020, Greece's new - and long awaited - TM law was enacted. Law No. 4679/2020 represents the country's transposition instrument of Directive 2015/2436 and a further effort of alignment with the system of rule of the European Trademark. The new trademark law brings about significant changes, which include:

Relative grounds for refusal are no longer examined ex-officio

So it's EUIPO-style for the GR TM Office as well, with notifications sent to proprietors of TMs cited in the automated report upon filing

Civil courts have dual competence in trademark invalidity proceedings

The competence to rule upon the validity of trademarks has been transferred from administrative to civil courts. A cancellation action before the Trademarks Administrative Committee is always available, but the Committee's decision are now subject to appeal before the single-Member First Instance Court of Athens and not before the administrative courts.

This change goes hand-in-hand with the introduction of invalidity / cancellation counter-claims in infringement proceedings before the civil courts.

Rules have been set in place to avoid parallel proceedings (e.g. a cancellation action before the Trademarks Administrative Committee) and the risk of conflicting judgments. The invalidity counter-claim is also available to the defendant in temporary relief proceedings, but cannot lead to definitive invalidity

Non-use as defense in infringement proceedings, both in the context of a main action and in temporary relief proceedings

The defendant in infringement proceedings can raise non-use of the trademark as a defense, rather than having to file separate cancellation action before the Trademarks’ Committee, as was the case under the previous legal regime. Art. 40 of the new law sets up a particular procedure for such proof of use request, essentially 'cracking' the general rules of civil procedure.

Remedies for infringement

Damages are awarded to the trademark owner only in the event of willful infringement or gross negligence on the part of the infringer (Art. 38 para. 5), while, under the previous legal regime, any type of negligence would suffice for damages purposes. The wording employed is based on the Greek text of Art. 13 para. 2 of the IPR Enforcement Directive, which translates, perhaps unsuccessfully, "reasonable grounds to know" as "gross negligence". This provision may be problematic, particularly as such type of (higher) culpability standard for damages is not required for damages over copyright or patent infringement.

Voluntary Mediation before the Trademark Office

Its success remains to be seen.

Other notable provisions include

• Changes in the renewal procedure to reflect Art. 49 of Directive 2015/2436 (Art. 36), but, now late renewal will not "overturn rights of third parties which were acquired in the meantime".
• The transposition of Art. 8 of Directive 2015/2436 (art. 53) where lack of distinctive character or of reputation of an earlier trademark prevents the cancellation of a later trademark.
• The transposition of Art. 18 of Directive 2015/2436 (Art. 48) establishing the "intervening right" defense of the owner of a later trademark in infringement proceedings.
• A slight change in the Greek Trademark Office's fees structure to favour online filing and renewal.

The EUIPO and OECD have published a study on the trade in counterfeit pharmaceutical products, covering the period 2014 to 2016.

According to the study, the total value of counterfeit pharmaceuticals traded worldwide is estimated as being up to €4.03 billion (€4.4 billion). India and China are identified as the largest producers of counterfeit pharmaceuticals, with Singapore and Hong Kong the most important transit points.

Counterfeit antibiotics, lifestyle drugs and painkillers were the pharmaceuticals most frequently encountered, according to Customs seizure data. Other medicines seized included counterfeit treatments for cancer, diabetes, malaria, HIV and heart disease.

The study also found that in the period analysed, 96 percent of all Customs seizures of counterfeit pharmaceuticals were of postal or express courier deliveries.

The study uses data from nearly half a million Customs seizures from various enforcement agencies, as well as data form the Counterfeit Incident System of the Pharmaceutical Security Institute and research from the WHO.

The WHO estimates that sub-standard and counterfeit anti-malTrebuchet MS drugs in sub-Saharan Africa can add up to 116,000 deaths annually.

Red the full report (English), executive summary (23 languages) and press release (eight languages) on the dedicated page on EUIPO’s website. Studies on other sectors can be found here.

For more resources on counterfeiting, visit the MARQUES Anti-Counterfeiting and Parallel Trade Team page.

After three extensions of time, the UK has finally left the EU and entered the transition period. This will not only affect the .eu ccTLD, but also other European ccTLDs who carry eligibility requirements related to the location or geographical presence of the domain owner. Clare Grimley and Lara Elder of the MARQUES Cyberspace Team explain.

Whilst it may seem that UK domain owners are the only ones impacted by Brexit, this is not the case. Many brand owners based outside the EU used a UK subsidiary or other UK-based entity for the purposes of registering certain European ccTLDs in order to meet the eligibility requirements.

Impact on European ccTLDs

We have put together a summary of European ccTLDs which are directly affected by Brexit and their current position (see  below). This does not include European ccTLDs which have local presence requirements irrespective of Brexit.

It is also worth noting that, whilst not a direct requirement for the domain owner, the rules for .cz, .de and .sk domains all require an address for service in the EU/EEA to be provided if requested by the Registry. 

On the contrary, the .co.uk, .uk and .org.uk ccTLDs are not affected by Brexit, and continue to welcome registrations from anyone, anywhere in the world without territorial or other restrictions.

So, before the end of the transition period on 31 December 2020, affected domain owners will need to ensure that their domain name registrations continue to comply with the eligibility requirements.

UK companies and subsidiaries

UK brand owners, or those who are based outside the UK but which use a UK subsidiary for the purposes of registering certain ccTLDs in Europe, should note that these domain names will need to be moved either to a subsidiary or other affiliate based in the European Union, if possible, or placed with another entity that can hold a domain name of behalf of the brand owner, such as an intermediary registrar controlled entity in the EU or a law firm the brand owner works with (if this is possible in a particular jurisdiction).

There may be implications and issues with placing affected domain names with other entities (such as tax and/or company law restrictions), so the sooner consideration is given to doing so, the better.

Clare writes: If you have an EU-based entity able to hold affected domains then start moving them now; the reassignment of domain names is not always a straightforward process, and it can take time to get the relevant documentation in place. There is still uncertainty amongst the Registries so moving your names now could avoid a mad dash in December 2020. Check with your Registrar to see what options they can offer and if you are without alternative, consider moving your website to a different extension, whether that is an alternative ccTLD, a gTLD, or a new gTLD.

By Clare Grimley, Com Laude and Lara Elder, Carpmaels & Ransford. The authors are members of the MARQUES Cyberspace Team

EUROPEAN ccTLDs DIRECTLY AFFECTED BY BREXIT