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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 3 APRIL 2020
Changes in Russia due to COVID-19

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

Posted by: Blog Administrator @ 15.46
Tags: COVID-19, Rospatent,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4849

THURSDAY, 2 APRIL 2020
Latest COVID-19 news from WIPO

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

Posted by: Blog Administrator @ 17.00
Tags: COVID-19, WIPO, Madrid System,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4848

WEDNESDAY, 1 APRIL 2020
Relief for missing deadlines in China

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

Posted by: Blog Administrator @ 14.59
Tags: COVID-19, China, CNIPA,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4847

MONDAY, 30 MARCH 2020
GREECE: New trademark law

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.
Posted by: Nikos Prentoulis @ 07.44
Tags: Greece, new law, trademarks, Directive 2015/2436,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4846

SUNDAY, 29 MARCH 2020
Time limits extended in Turkey

In connection with the COVID-19 pandemic, the Turkish Parliament has approved Law No. 2/2633 adapting measures to suspend time limits for various administrative and legal proceedings including those concerning IP rights. It came into force upon its publication in the Turkish Official Gazette on 26 March.

The Turkish PTO and the legal authorities will remain open and these measures in the Law are aimed to extend deadlines just in case:

  • Time limits for administrative proceedings, including ones before the Turkish PTO, expiring between 13 March 2020 and 30 April 2020 have been suspended until 1 May 2020. This suspension includes all procedural deadlines from payment of any official fees for obtaining or maintaining any IP rights to filing responses to office actions and from submission of oppositions and appeals to submission of evidence to prove use of opponent’s marks and claiming priority.
  • Time limits for civil legal proceedings expiring between 13 March 2020 and 30 April 2020 have been suspended until 1 May 2020. This suspension includes all deadlines irrespective of whether they have been set by the courts or are statutory in nature from filing civil court actions with infringement, nullification and unfair competition claims to filing court actions for cancellation of Turkish PTO decisions, from responding to court actions and preliminary injunction requests to submission of evidence, from submission objections/statements on expert reports to filing appeals to the decisions of First Instance Courts, Regional Courts of Justice or Court of Appeals or responding appeals, from payment of ordered legal fees to starting or maintaining mediation proceedings. On the other hand, time limits for proceedings required to conduct preliminary injunction orders are kept out of this suspension measure and will keep running as usual.
  • Time limits for filing criminal complaints and for conducting search and seizure orders due to infringement and unfair competition actions which are subject to jail and fines will keep running, but all other time limits for subsequent proceedings in criminal legal actions expiring between 13 March 2020 and 30 April 2020 have been suspended until 1 May 2020 regardless of whether they have been set by the courts or are statutory in nature.
  • Hearings of civil and criminal court actions falling into this suspension term can be postponed by the courts to any date later than 30 April 2020 (in practice 4 May since 1 May is a public holiday, followed by a weekend).
  • The suspended time limits for administrative and legal procedures will start running again after 30 April 2020. And there will be another 15 days extension for the deadlines which would have ended in less than 15 days to 13 March. If the pandemic continues, this suspension term may be extended for once up to six months by the President without prejudice to change its scope and terms.

Contributed by Yasemin Aktas of OFO VENTURA in Istanbul

Posted by: Blog Administrator @ 12.06
Tags: COVID-19, Turkey,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4844

TUESDAY, 24 MARCH 2020
Counterfeit pharmaceuticals worth €4 billion annually

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.

Posted by: Blog Administrator @ 16.19
Tags: pharmaceuticals, EUIPO, OECD, WHO,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4843

MONDAY, 23 MARCH 2020
European domains after Brexit: who is affected?

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

Country/Territory

TLDs

What the Rules say

What the Registries say

European

Union

.eu

.ею  .ευ

Pursuant to the amended eligibility rules in Regulation (EU) 2019/517, domain owners need to be Union citizens (regardless of address), resident of a Member State, or an organisation established in the Union, Iceland, Liechtenstein or Norway by the end of the transition period.

Existing domains registered to UK owners will ultimately be deleted and made available for registration unless the domain owner can show that they meet the eligibility criteria. Look out for the updated timeline here (although note the page is currently awaiting update with the most recent timeline).

Bulgaria

.bg .бг

Domain owners need to be individuals or legal entities with commercial registration in the Republic of Bulgaria or an EU Member State.

Existing domains registered to UK owners will not be affected; however new domains will have to be registered via an EU-registered third party.

Croatia

.hr

Domain owners need to be individuals or legal entities registered in the Republic of Croatia, foreign entities who have a registered subsidiary in the Republic of Croatia or a legal entity established in the EU.

Existing domains registered to UK owners will not be affected and the Registry has decided that UK registrants can continue to register .hr domain names even after Brexit.

 

France

.fr .pm .re

.tf

.wf .yt

Domain owners must be located within the territory of one of the Member States of the EU, or Norway, Switzerland, Iceland or Liechtenstein.

The Registry has not made a decision yet.

 

Hungary

.hu

Domain owners need to be individuals or legal entities in Hungary, the EU, a country of the Council of Europe, the EEA, EFTA or a country neighbouring Hungary. Alternatively, they must be the owner of a trade mark registered in, or granted protection rights, in Hungary.

The UK has not left the Council of Europe at present and so .hu domains are unaffected by Brexit unless this position changes.

Italy

.it

.co.it

Domain owners need to be individuals with citizenship or residence in, or entities with, a registered office in the EEA, the Vatican, the Republic of San Marino, or Switzerland.

Existing domains registered to UK owners will not be affected and can continue to be registered during the transition period, however the Registry is awaiting the final outcome of negotiations between the UK and EU before setting their policy for registrations after 31 December 2020.

Posted by: Blog Administrator @ 09.10
Tags: Brexit, domain names, .eu,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4842

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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