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Singapore Patent Office partially increases official fees from December 1

From December 1, 2011, the Singapore Patent Office (IPOS) is raising some of its official fees, including those regarding trademark application and patent search procedures.
As a result, the official fee when applying for a trademark with the IPOS (in the case of an online application) has increased to $341.

http://www.ipos.gov.sg/topNav/svc/New+Fees+and+Form.htm

Singapore: trends concerning Trademark system

Implementation of Nice Classification, 10th Edition
The Intellectual Property Office of Singapore (IPOS) plans to conduct examination based on the Nice Classification, 10th Edition, with regard to trademark applications filed on or after January 1, 2012.

Harmonization of descriptions of designated goods
The Intellectual Property Office of Singapore has signed a document with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Office for the Harmonization of the Internal Market (OHIM) (the Trilateral offices), stating that description of designated goods/services recognized by any one of the four Offices will be mutually recognized as valid.
If this is implemented, there will be a lower risk of rejection due to a difference in the descriptions of designated goods/services. In addition, using the same description in different countries to obtain rights for the goods/services will benefit the applicants by saving time and money.

Obligation to present evidence of use in non-use cancellation trials
Due to a change of regulations, when submitting a written reply, the trademark owner (demandee) will hereafter have to submit evidence of use along with the declaration of use.
However, the above does not apply in cases where there is a legitimate reason for non-use.

Chile's accession to the Trademark Law Treaty takes effect

On May 11, 2011, WIPO announced that the Chilean government had completed accession procedures for the Trademark Law Treaty.
The accession came into effect on August 5, 2011.

Taiwan Trademark Law draft amendment approved

On May 9, 2011, Taiwan’s Economic Committee of the Legislative Yuan approved a draft amendment to the Taiwanese Trademark Law. If the draft bill passes the readings at future Legislative Yuan meetings, the amended Trademark Law will be promulgated and put into effect.

Below are the main revisions:

1. Expansion of the items eligible for protection“Moving trademarks”, “holograms”, and “olfactory trademarks” will be newly added to the items eligible for protection.

2. Stipulation of trademark usage conduct

3. Abolition of the system of registration fee installment payments The current system is to be abolished and changed to lump payment of the registration fee for ten years at the time of registration.

4. Addition of restrictions to system of consentEven if a declaration of consent has been submitted, in case that co-existing registrations are not recognized as appropriate, a system of not recognizing the registration will be adopted and the decisions will be made by the intellectual property office.

5. Addition of definitions and regulations concerning the system of certificate of origin marks.

Italy enforces trademark opposition proceedings

From May 1, 2011, opposition proceedings are to go into effect with regard to Italian trademark law.However, the opposition proceedings will not apply to trademark applications filed before the date of enforcement.

Number of applications filed with Europe's Community Trade Mark (CTM) and Registered Community Design (RCD) recovers

The number of applications filed with the Community Trade Mark (CTM) in 2010 has increased by 11% from 2009, reaching 98,000 applications. Out of this number, applications from Germany and the U.S.A. in particular have increased greatly.

The number of applications filed with the Registered Community Design (RCD) has also increased by 7% from 2009, reaching 82,000 cases. The number of applications from Germany, Italy, etc. has slightly decreased from 2008, but as a whole, the annual applications have reached a new high.

Information regarding relief measures, etc. by Europe's Office of Harmonization for the Internal Market (OHIM)

The European Office of Harmonization for the Internal Market (OHIM) has provided relief measures in response to the recent Tohoku earthquake.
As a result, all time limits which affect persons who have their residence or a registered office(s) in Japan and are in the process of following procedures with the OHIM, and which were to expire between March 11 and March 28, 2011 (March 11 and March 28 inclusive), have been extended until April 28.

Establishment of Website concerning European Community Trade Mark (CTM) and European Registered Community Design (RCD) in Japanese language.

A Website in Japanese language has been established to introduce Community Trade Mark (CTM) and Community Design (RCD) for which OHIM is responsible. For details, please refer to the homepage below.

http://www.registerbrandeurope.jp

Malaysia amends its trademark regulations

The amended regulations went into effect on February 15, 2011. The main changes are as follows:

1. Increase of Official Fee
The revenue stamp fee in connection with the filing procedures has increased.

2. Introduction of PPH
In order for an application to undergo an accelerated examination, it must be a case of one of the following circumstances.

1. The application involves the national or public good
2. There are ongoing legal procedures concerning infringement, or there is evidence that there is danger of infringement

2010 rankings of numbers of trademark applications by foreign companies in Korea (Madrid System)

(Unit: one application)

KIPO

Montenegro revises its Trademark Law

Montenegro’s new Trademark Law went into effect on December 16, 2010. Main changes are as follows.
1. Establishment of an application system for acquisition of protection of Serbian trademarks in Montenegro: in order to acquire protection in Montenegro of a Serbian trademark registered before May 28, 2008, a new application is required (the deadline for the application is December 16, 2011). The following items do not need this new application: (a) ones which for which proof of trademark right have already been requested; (b) ones for which request for renewal in Montenegro of the Serbia-based trademark has been submitted; (c) ones based on Serbian trademarks and for which request for registration in Montenegro has been made by assignment, name change, etc.
2. Implementation of an appeals system: the period for making an appeal is within 3 months of the announcement of an application. In the examination, similarity with previous trademarks (i.e., examination on relative grounds) will not be determined.
3. If one does not accept the trademark office’s decision, one may request an appeal with the office with proper jurisdiction. Furthermore, if one still refuses to accept that further decision, an administrative lawsuit is possible.

TMview adds data on Bulgarian domestic trademark applications and registrations

TMview added domestic trademark data (application and registration information) for Bulgaria to its searchable database. With the addition of Bulgaria’s domestic trademark data (approximately 79,000 cases), TMview’s stored data includes more than 4.7 million items. What is TMview? TMview is a free online trademark search service offered from April 13, 2010. It offers data for the following countries and organizations: OHIM, WIPO, Great Britain, Czech Republic, Italy, Benelux, Portugal, Denmark, Spain, Slovakia, Slovenia, Estonia, Bulgaria.

China tops world trademark rankings

A senior official from the Chinese State Administration for Industry and Commerce (SAIC) announced a series of figures putting in a new light China’s already established domination on the world of trademarks. With approximately 8,07 million applications and 5,39 million valid registered trademarks as of October 2010, the country is indeed in top place of world trademark rankings in terms of sheer numbers.

The SAIC is aiming to solve the issue of abandoned trademarks within three years and to reach international standards within five years. Another objective is the acceleration of the trademark examination process.

The number of trademark applications received by the SAIC from January to October 2010 is already reaching 859 thousand, and it is expected to exceed one million if the current pace is maintained.

JPO trial decision to refuse the registration as a 3D trademark of Yakult’s plastic bottle declared illegal by IP High Court

The IP High Court of Japan issued on November 16, 2010 a judgment ordering the Japan Patent Office (JPO) to revoke its earlier trial decision to refuse the registration as a three-dimensional trademark of the plastic container used for the Yakult drink.
A milk-based drink widely known in Japan, Yakult is manufactured by Yakult Honsha, which had previously filed with the IP High Court a request for trial in revocation of the JPO’s trial decision.
The registration of the Yakult bottle by the JPO, if it happens, would constitute the second time that the shape of a container is registered as a 3D trademark in Japan – following the registration of the Coca-Cola bottle.


http://www.yakult.co.jp/news/article.php?num=515

New Chinese Trademark Office formality requirements

The Chinese Trademark Office has recently issued new formality requirements. The new rules started to take effect since July 1, 2010.Main changes are as follows:

1. The applicant’s signature is required on all application forms to be submitted to the Chinese trademark Office, including application forms relating to trademark filings, trademark renewal, oppositions, an appeal for cancellation on non-use, etc.
2. An original power of attorney is required for each application.
3. All application forms are partially changed in formality. For applicant’s convenience, notes for filling up the application form and proceeding with the application are written on the backside of each application form. Each application form (in Chinese) can be downloaded from the site below.

http://sbj.saic.gov.cn/sbsq/txsm

Revised trademark law in Norway

Norway revised its trademark law on July 1, 2010. The main points of the revision are as follows.
Following this revision, it is now possible to file a trial for cancellation or invalidation to the Norwegian Patent Office (before the revision, it was necessary to file a lawsuit in a court of law).
The term of registration is now of ten years from the filing date (instead of ten years from the registration date).The period to file an opposition is now of three months from the date of disclosure (instead of two months).

Other countries revised their trademark law recently.In Italy, an opposition system was introduced on March 10, 2010.
Romania also revised its trademark law on March 29, 2010. Following this revision, the Romanian State Office for Inventions and Trademarks no longer examines relative grounds for refusal; examination is thus conducted only regarding absolute grounds for refusal.

JETRO releases Japanese translation of China IP laws

The Japan External Trade Organization (JETRO) has released on its website Japanese translations for a number of Chinese judicial texts, including Chinese IP laws (Patent, utility model and design law, and trademark law), administrative regulations (for example administrative instructions on patent, utility model and design law, and ordinances on the enforcement of the trademark law) and law interpretations. A Japanese translation of the Chinese examination guidelines for patent, utility model and design was released as well.
As the strategic importance of patent, design and trademark filing in China is on the increase, these translations will most likely come in handy for Japanese companies and IP practitioners.


http://www.jetro.go.jp/world/asia/cn/ip/law/

India adopts the 9th edition of the Nice Classification for trademarks(India)

India has adopted the 9th edition of the International Classification of Goods and Services for trademarks (“Nice Classification”), following an amendment of its Trade Marks Rules dated May 20, 2010.With this amendment, the service classes 43, 44 and 45 have become available for use in the country.Published and registered trademarks may be registered or renewed with their original classes, as reclassification for these trademarks is not mandatory.However, it will be necessary to undertake specific procedures for currently pending trademark applications, such as filing a petition for reclassification into the appropriate class(es) or limiting the scope of the application to the services of class 42.

Chinese trademark law: SAIC issues examination guidelines for trademarks including the characters for “China” and for trademarks beginning with the character for “National”

The State Administration for Industry & Commerce (SAIC) of China published on July 28, 2010 its trademark examination guidelines regarding trademarks including the characters for “China” (中国) and trademarks beginning with the character for “National” (国). The contents of the guidelines are shown below.

1. Trademarks including the characters for “China”An application for a trademark containing the official name of the People’s Republic of China or resembling that name will be registered only if all four of the following conditions are met:
1) The applicant has obtained the approval of the State Council or of an organ authorized by the State Council and is thus qualified for the filing of such an application, and the name of the applicant is lawfully registered in the official name registry.
2) The applied-for trademark and the name of the applying company or its abbreviation are identical, and the abbreviation of the name of the applying company has obtained the approval of the State Council or of an organ authorized by the State Council.
3) There is a close relationship between the applied-for trademark and the applicant.
4) The scope of the designated goods/services in the trademark application matches the scope of business.

2. Trademarks beginning with the character for “National”A trademark beginning with the character for “National” will be strictly examined based on the following guidelines:
1) Trademarks such as “National + name of the designated good” or trademarks including “National + name of the designated good” will be refused due to “being excessively promotional and deceiving in nature”, “lacking any noticeable features” and “causing a negative influence”.
2) Trademarks beginning with the character for “National” but not of the type “National + name of the designated good” will not be examined along the guideline stated in 1).However, trademarks merely indicating the quality of the designated goods or of a deceiving nature, trademarks likely to cause damage to market order, and trademarks likely to cause a politically negative influence will be refused.

Note: The applicant can submit as evidence relevant documents during the application process.

Korean trademark law: changes in the renewal procedure

The Official fee remittance system for trademarks in Korea was revised on July 28, 2010, as described below.

1) Introduction of an installment payment system for the registration fee
* In the former system, the registration fee (ten-year period) had to be remitted in a lump sum
* With the new system, it is possible to remit the registration fee in two installments (five-year period). The second installment must be remitted before the beginning of the second half of the ten-year period of the duration of the trademark right.

2) Shift to an application system for registration renewal
* In the former system, the renewal application fee had to be remitted at the time of filing of the application for renewal; the renewal registration fee then had to be remitted following the receipt of the Decision to Register from the Korean Intellectual Property Office.
* With the new system, remitting the renewal registration fee at the time of filing of the application for renewal makes it possible to obtain without examination an extension of the duration of the trademark right.

The prefectural vice-governor of Kagawa, et al. visited China Trademark Office (CTMO) for solving the problem of place-name trademark such as “讃岐 (Sanuki)”

In May, 2009, Kagawa prefecture and the industry groups in Japan filed an appeal in response to the published application for a trademark “讚岐烏冬 (Chinese characters representing wheat noodle made in Sanuki district in Japan) in China On June 11, 2010, the prefectural vice-governor Takagi and the executives of the industry groups visited CTMO for requesting not to permit the registration.The prefectural vice-governor Takagi, et al. requested accelerated examination of their appeal and rejection of the registration, by insisting that “讃岐 (Sanuki)” is an old name of Kagawa prefecture and is still used in some place-names such as “讃岐平野 (Sanuki Plain)”, and the place-names “讃岐 (Sanuki)” and “香川 (Kagawa)” are widely known in China.In the interview this time, the Chinese authorities answered that they would appropriately deal with this case in accordance with the Chinese domestic low. The prefectural vice-governor Takagi says “we believe that the intention of our appeal and our concern on the registration of the place-name trademark have been understood. We will continue to take necessary actions so that our appeal would be approved”.

USPTO Debuted TMIN

On March 31, 2010, the U.S. Patent and Trademark Office (USPTO) debuted the Trademark Information Network (TMIN). At TMIN, it is possible to view broadcast-style videos which cover important topics and important information on trademark applications.

Hikone city will charge for commercial use of trademark “Hikonyan”

The mayor of Hikone City announced on March 1, 2010, that the city would charge for the use of the trademark “Hikonyan”, owned by the city.
This will come into force from this July over sales of products using the trademark, etc. for commercial purpose.
Meanwhile, the use of the trademark by public corporations, citizen groups, etc. for non-commercial purpose will stay charge-free.
The companies in the city will be also allowed to use the trademark for free, even for commercial purpose.
“Hikonyan” is a character created for “the 400th Anniversary of the Construction of Hikone Castle (a national treasure)”, and “A Commemoration of Ii Naosuke and the Opening of Japan 150th Year Festival”.
“Hikonyan” soon became popular, but the city has not charged for the use of the trademark so as to promote the events.
According to the announcement, the city will charge for the use of the trademark, in accordance with the scale of a business, a sales plan, etc.By the end of last year, the city permitted approximately 1000 use of the trademark, and the total sales amount of Hikonyan-related products for 2 years (2007 and 2008) is estimated as much as about 270 million yen.

Apple’s iPad: trademark battle brewing?

After Apple unveiled its new tablet PC “iPad” on January 27, 2010, it was discovered that a number of companies, including the U.S. subsidiary of Fujitsu, had already applied for the iPad name. A dispute over trademark rights between Apple and these companies could be on the horizon.

Famous Chinese tea to be authenticated by trademark seals

In order to protect from imitation their local Longjing tea, known as one of the finest teas in China, the authorities of the Zhejiang province will introduce in 2010 a system of trademark seals.
The Zhejiang province obtained in 2009 the rights to the certification trademark for “Longjing tea”. Under the new system, seals showing the certification trademark will be stuck on authentic Longjing tea products, thus preventing the name from being used in connection with tea leaves produced outside the province.

Korea : introduction of a priority examination system for trademark on April 1

A system of priority examination for trademark was introduced in Korea on April 1, 2009. Thanks to this system, the examination of a trademark application will begin two months after the filing of the request for priority examination.

This system can be used in the following situations:
1)The applicant is using or preparing to use the totality of the designated goods and services of the trademark related to the application
2)The applicant has sent warnings or has requested a provisional disposition forbidding the use of the trademark against a third party currently using with no legitimate reason a trademark identical or similar to the trademark related to the application
3)A third party is using commercially and with no legitimate reason a trademark identical or similar to the trademark related to the application

In addition, a system of “intervening right” and a system of “non-demand of right” are currently under study, with a scheduled introduction in 2010.

Reference material

Revision of the Community Trademark fees scheduled to early May

The European Commission has announced that a fee reduction and revision of the fee system regarding Community Trademarks (CTM) will take place in early May.
Following the revision, CTM fees will be paid as a single sum at the time of filing, in contrast to the current system where fees are paid separately as “filing fees” and “registration fees”.
Details of the revision are as follows:

	Current fee	Revised fee from May 2009
CTM application fee (paper) (1)	900	1050
CTM application fee (e-filing) (1)	750	900
CTM registration fee (2)	850	0
Madrid Protocol registration fee (3)	1450	870

(1) Effective for applications filed after the implementation of the new fee system.
(2) Effective for applications that reached the registration stage after the implementation of the new fee system (if the OHIM issues the letter inviting the applicant to pay the registration fee before the new fee system becomes effective, the pre-revision fees will apply).
(3) The new fees related to Madrid protocol applications will become effective about 3 months after the implementation of the revision.

Madrid Protocol: sending of the Decision to Grant a Registration to become automatic

On September 1, 2009, the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (also called the Madrid Protocol) will be modified as described below.

- Current system -
When filing an application for international registration under the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, the designated authority in each member state examines the application in the twelve or eighteen months following the filing of the application, and sends the applicant a notice detailing the reasons for refusal if such reasons were found. On the other hand, if no reason for refusal has been found, the sending of a notice in this regard (that is the Decision to Grant a Registration) is left to the discretion of the authority.

- Revised system -
From September 1, 2009, the sending of a Decision to Grant a Registration in the case that no reason for refusal has been found will be compulsory in all member states. Accordingly, it will be possible for the applicant to be informed earlier that the application has been registered.

Japan’s world-famous brands

The forum Inter Brand Japan, which deals with issues related to the brand strategies of private companies, issued on February 18, 2009 a top-thirty ranking showing the value of globally-active Japanese brands. The top spot was taken by Toyota, followed by Honda, Sony, Canon, Nintendo, Panasonic and Lexus. Focusing on brands created by Japanese companies, this ranking, entitled Japan's Best Global Brands 2009, expresses their global value as a fixed amount by analyzing three factors:
1)financial aspects (the brand’s expected revenue);
2)incentive role of the brand (the influence of the brand on the decision to buy of the consumers); and
3)strength of the brand (the ability of the brand to sustain the demand of the consumers over a long period).
To be eligible, companies must be listed in the stock market and realize at least 30% of its turnover abroad.


ITmedia News：http://www.itmedia.co.jp/news/articles/0902/19/news009.html

Establishment of Examination Criteria for Applications of Trademarks Involving the Name of a Historical Figure, etc

The current Trademark Law has no written provision to prohibit registration of trademarks involving the name of a historical figure. However, there is a concern over registration of a trademark involving the name of a historical figure by a person with no connection to the historical figure; such registration may have an adverse effect on the local industries of the birthplace of the historical figure, undermining its efforts for regional development, or may offend the descendants.
In view of this, the Japanese Patent Office is planning to establish examination criteria for a violation of public order (Trademark Law, Article 4, Paragraph 1, Item 7) in relation to applications for trademarks involving the name of a historical figure, etc, so as to avoid simply examining individual cases on the basis of the trend of trial decisions. This reflects a standpoint of ensuring uniformity, clarification, and foreseeability of examination.


Examples of trademarks involving the name of a historical figure, etc, that were not allowed to be registered as a result of trial decisions

　・“Yukichi Fukuzawa” (invalidation trial No. 2004-89021): Yukichi Fukuzawa was an enlightenment thinker and the author of “Gakumon no susume (Encouragement of Learning; an enlightenment book on the author’s opinion about the nation and learning)”
　・“CARNEGIE SPECIAL” (Tokyo High Court decision of August 29, 2002; No. 529 filed in 2001): Dale Carnegie was a writer and lecturer. Educational courses having titles beginning with his name are widely known in a lot of countries including Japan.
　・“Hideyo Noguchi” (appeal trial No. 2003-18577): Hideyo Noguchi was a world-famous bacteriologist.