October 10, 2017

Russia: Changes to Official Fees for Patents, Trademarks, and Designs

The Decree of the Government of the Russian Federation No. 1151 of September 23, 2017, has introduced changes to the official patent, design, and trademark fees. The new Regulation on Official Fees entered into force on October 6, 2017. The changes affect both the amounts of the official fees and the order of and deadlines for their payment. The official fees for obtaining patents, utility models, and industrial designs have practically doubled. Annuity fees for maintaining a patent in force have increased by 100 percent. The official trademark fees have not increased significantly. However, the official fees for formal examination, registration, and renewal of trademarks now depend on the number of classes in the trademark application or registration. Specifically, additional fees for each additional class of goods or services above the fifth class are payable for formal examination, registration, and renewal of trademarks. As a consequence, filing, registration, and renewal of trademarks in a large number of classes of goods and services will be more expensive for trademark applicants and owners.   A new additional fee for issuing a trademark registration certificate has also been introduced. Source: 2018 International Trade Association (INTA)
October 3, 2017

Russian Federation: Increase in Official Fees Effective October 6, 2017

On September 23, 2017 the Government of the Russian Federation issued Decree No.1151 on amendments to the official fees for legal actions related to patents, trademarks and appellations of origin. In line with this Decree, which comes into force on October 6, 2017, the official fees will be increased by 20-25% on average. Source: Intels
October 2, 2017

Europe: Trademark Reforms Come Into Force on October 1, 2017

Effective Sunday, October 1, 2017, the second round of reforms to the EU trademark system will come into force.  The first wave of changes took place in March of 2016 with the implementation of the new trademark regulation (2015/2424) .  The latest changes are summarized below: Removal of graphical representation- One of the major changes is the removal of the requirement for graphical representation for EU trademarks (EUTMs).The result is that marks can be represented in any appropriate form, as long as the representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective.” Sounds and colors are now explicitly registerable under the trademark rules. EU Certification Mark The EU certification mark will allow a certifying institution or organization to permit parties adhering to the certification system to use the mark as a sign for goods and services, as long as they comply with the certification requirements. Some EU countries previously allowed certification marks, although a number of them (including Germany) did not. 3.  Procedural Changes The changes will also bring a number of procedural amendments into force, relating to the filing of priority claims and the enforcement of acquired distinctiveness. Source:
October 2, 2017

Kuwait: Original Certificates No Longer Required

Pursuant to new procedures adopted at the Trademark Office in Kuwait, the TMO will be issuing separate certificates for renewal and recordal matters, which include changes of name or address, assignments, and mergers. Previously, the TMO requested the filing of the original trademark registration certificate for the endorsement of any recordal. This update comes in light of a number of substantial procedural changes that entered into force in Kuwait after approving the Implementing Regulations of the Gulf Cooperation Council Trademark Law. These changes are: The opposition period was modified and is no longer end 30 days from the third publication in the Official Gazette. The opposition period is now 60 days from publication date, bringing the procedure more in line with international standards. A legalized Certificate of Incorporation or an Extract from the Commercial Register must be submitted in support of a trademark application. A certificate of home or foreign registration/application is no longer a requirement. The Certificate of Incorporation or an Extract from the Commercial Register may be used for subsequent filings. Notices for renewal, as well as notices for the recordal of assignment, change of name, and change of address will be published in the Official Gazette; this was not the case in the past. Source:  SABAIP
October 2, 2017

Morocco: Increase in Official Fees Effective October 1, 2017

The Moroccan Office of Industrial and Commercial Property (OMPIC) has announced that effective 1st October 2017, the Official Fees for IP matters (trademarks, patents, designs) in Morocco will be increased.  The increase also applies to examination and the annuity maintenance fees for patents and utility models. Source:  SABA IP
October 2, 2017

Argentina: Official Fees Increase for Trademarks

The National Institute of Industrial Property (INPI) by means of Resolution 311 E/2017 of July 18, 2017, and amended by Resolution 317-E/2017, implemented a significant two-phase increase in trademark and other industrial property fees.  The total increase in trademark fees amounts to approximately 40% on average. The first phase came into force on August 1, 2017, and the second phase will be effective as of October 1, 2017.  For example, the renewal fees have increased from ARS 1,500 to ARS 1,950 as of August 1, 2017, and will increase again to ARS 2,100 as of October 1, 2017. Some of these fees will not be increased again in the second phase.  For example, the fee for filing a trademark application has increased from ARS 1,200 to ARS 1,700 as of August 1, 2017 and will NOT be increased in October 2017. Source:  SMD Country Index:  O’Conor & Power, Argentina and Estudio Gold, Buenos Aires, Argentina
October 2, 2017

Austria:  Formal Requirements for Recordal of Assignments Reduced

An amendment of the Austrian IP Laws entered into force on August 2, 2017 which considerably reduces the formal requirements for the recordal of assignments, mergers or changes of name.  The new rules will apply for all protective rights (patents, utility models, trademarks, designs and SPCs). Generally, it is now sufficient to submit a confirmatory assignment signed by the concerned parties, without notarization of their signatures.  Filing the original of an assignment document with the signature of the assignor notarized has thus become unnecessary in most cases. Source:
September 27, 2017

European Trademark Law: Additional Changes Come Into Force on October 1, 2017

In a bid to streamline processes and facilitate cooperation between Member States, the European Trademark Law has been going through the biggest reform since the introduction of the 1989 Trade Marks Directive (2008/95/EC) and the 1994 Community Trade Mark Regulation (207/2009/EC).  Although many reforms have already been introduced, additional changes will come into force on Sunday, October 1, 2017. The changes include: The elimination of the requirement for the graphical representation of a trademark  The introduction of the EU certification mark Diverse procedural changes. Source:  DEHNS
September 27, 2017

Canada: Increases Patent Term for Eligible Pharmaceutical Patents

A new statutory and regulatory framework came into effect in Canada on September 21, 2017 which will allow Canada to fulfill its obligations under the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union which would allow for the extension of the term for drug patents due to delays resulting from regulatory approval.  At present the United States, Japan and Australia currently have such adjustments to the terms of drug patents.  If eligible, the term of a patent can be extended by up to two years. Source:  Kirby IP
September 19, 2017

Qatar: Trademark Renewal Formalities Updated

Pursuant to Circular no. 6 of 2016, it is possible to pay the trademark renewal fees without a surcharge until the last day of the protection period.  In the past the last day to pay the renewal fees  without a surcharge was the first day of the renewal period. Late payment of renewal fees can be paid 12 months before the renewal due date without shortening the protection period. Source: SABAIP