TRADEMARK MATTERSTM
Summer 2009 Edition
FACEBOOK®: TRADEMARK PROTECTION
FACEBOOK® recently recognized trademark rights and put in place a process to ask withdrawal of usernames infringing trademark rights. If you believe that someone else's Facebook® username is at risk of infringing your trademark rights, do not hesitate to contact us.
NEW AT THE CANADIAN TRADE-MARKS OFFICE
Oppositions: On March 2009, new opposition proceedings were enforced to grant the parties a 18 month cool-off period to amicably settle the opposition. Trademark specialists are enthusiastic about this new practice which has proven in other countries to successfully encourage amicable settlements and dramatically reduce legal fees. This new practice is another step to reach the international general trademark practice.
Source: CIPO : www.cipo.gc.ca
Possible filings on week-ends and holidays: CIPO has opened a consultation period until September 2009, on filing dates on weekends and holidays. Applicants would be granted a filing date at the time of filing, instead of the next working day. This proposed change is particularly vital to those having US and Australian priority deadlines where this practice is already in force.
Source: CIPO : www.cipo.gc.ca
POTENTIALLY FRAUDULENT PUBLICATION NOTICES
Many companies send paying notices for the publication of recipient's pending trademarks. CIPO recalls that they are fraudulent notices and invites the public to be very careful. In case of doubt, ask your appointed trademark agent.
EUROPEAN COMMUNITY TRADEMARKS: REDUCTION OF TAXES
Since May 2009, the tax for electronic filings of CTM have increased from 750€ to 900€ for 3 classes. Taxes are of 150€ for each additional class. However, the 850€ registration tax was abolished, resulting in a total tax reduction of 700€. The registration tax is not required for pending applications at the time of enforcement of this new practice.
Source: Office of Harmonization of Internal Markets (OHIM)
Collaborator: Mr. David Bilquey, trademark advisor – Cabinet Flechner, France
CHINA: ENFORCEMENT OF IP RIGHTS
On April 2009, China's Supreme People's Court addressed to all judges recommendations on the management of IP litigations, and insisted on the fact that legal protection on IP rights needed to be enforced. The protection system was therefore so well improved that companies doing business in China should consider revisiting their IP strategy and trademark protection in that country.
Amendments to the China practice now approaches the European and North-American IP practices: genuine and distinctive trademarks are recognized to be eligible to a stronger protection; use of the mark is vital in order to claim rights; an infringement suit will most likely fail if the plaintiff's trademark is not in use.
Copyrights and business names may supersede trademark rights and be the basis of trademark expungment suits. Therefore, it becomes vital for trademark owners to perform availability searches, put all relevant trademarks and business names on a surveillance system, and promptly oppose all pending confusingly similar trademarks.
Finally, companies who wish to start-up in China should be careful in choosing their name in order to not be charged with trademark infringement. The company may be instructed to change its name.
Source : China Sunbow & Associates, IP Firm - China
© Isabelle Deshaies
June 2009
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