Prosecution

As previously reported by our team at Inventa International, the European Union is set to modernize its Trademark System and new developments have occurred.

Past December 24, 2015, Regulation no. 2015/2424 of the European Parliament and the Council was fully published in the Official Journal of the European Union which means that the changes to European Union’s trademark system are entering into force on March 23, 2016.

Apart from the usual problems inherent in the registration of a trademark, applying for a trademark in China implies even additional hurdles for IP stakeholders. These added problems are not at all related to the “first to file” principle, which applies in most of the jurisdictions in the world and means that in order to be protected, the trademark must be registered, and not by relying on existing unregistered trademark rights.

Inventa International informs that the Libyan Registrar has confirmed that it would be possible to submit renewal applications for expired trademarks regardless of their expiry date until the 31st of December, 2015.

All expired trademarks that fail to proceed with this action on the stated date will be handled as if they were cancelled from the 1st of January, 2016.

To submit renewal applications or obtaining certificates, applicants are required to provide the following:

The Republic of Gambia becomes the last country (and the 21st African country) to integrate the Madrid Protocol. By joining the Madrid System, related to the international registration of trademarks, from 18th of December 2015, it will be possible to designate the country in international trademark applications via the Madrid System.

The social media company Pinterest, known for permitting its users to view, post and organise content by creating pins on their virtual Pinterest Pinboard has lost two legal battles, one in the United Kingdom and another in the United States of America. The lawsuits intended to obligate companies to cease using the word “pin” in their software applications.

The aforementioned cases revolved around an American travel start-up company called Pintrips and a British location-based mobile directory called Free118. The latter used the word “pimmydeal” in one of its services.

The Ministry of Commerce and Industry has informed that the official fees for most intellectual property transactions will be increased. The measure will most likely become effective as from the 21st of December, 2015.

The increase will affect all trademark, patents and industrial design applications filed after the aforementioned date as well as retroactively for pending applications.

The decision has not been officially announced yet, the announcement will most probably be published in the Official Gazette on the 21st of December this year.

Since the former Sudanese territory corresponding to the states of Bahr el Ghazal, Equatoria became independent on 9 July 2011, the status of protection of Intellectual Property Rights is uncertain in the new country and the implementation of the new law is still pending.

To reassure the investors, the Ministry of Justice of South Sudan had decided to accept applications for registrations of trademarks at the Registrar of Companies, guided by the Sudan Trade Marks Act of 196.

There have been new developments regarding the digitization of the Nigerian Trade Mark database. The Nigerian Registry of Trademarks, Patents & Designs has issued an update regarding their data capture project. The announcement made by the Office claimed that the digitization of the Nigerian trade mark database will commence on the 1st of October 2015. The project counts with the collaboration of the World Intellectual Property Organization (WIPO).

The new Tunisian decree, Decree No. 2015-303, that repeals the Decree No. 2001-1603, came into force.

This decree introduced new changes regarding trademark applications and, mainly, trademark oppositions procedures.

The referred alterations are the following:

As of  September 28 of 2015, Canada has started to accept voluntary registrations of trademarks using the Nice Agreement (extended name: Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of marks), initial signed in 1957.

Canada was one of the few countries in the world that had not adhered to the Nice Classification that will now allow applicants to search for potential conflicting trademarks more easily, considering that trademarks will be arranged with similar goods/services.