Trademarks

Past October 6th, 2016, the Government of Brunei Darussalam deposited its instrument of accession to the Madrid Protocol for the international registration of marks. The Protocol will enter into force in respect to this jurisdiction January 6th, 2017.

The Madrid Protocol allows trademark owners to seek multi-jurisdictional protection of trademarks, through a single application proceeding, reducing costs and bureaucracy.

The African Regional Intellectual Property Organization (ARIPO) has signed a deal (October 3rd) with the recently renamed European Union Intellectual Property Office (EUIPO) to foster bilateral cooperation for matters related to trademarks, designs and enforcement thereof. Notably, EUIPO does not support patent applications through its Offices.

This Memorandum of Understanding (MoU) renews the previous 1999 and 2011 agreements and create opportunities for joint conferences, seminars, training programs to share expertise in IP matters and comparative IP studies.

The Cayman Islands had an outdated IP legislation in force, but waves of change are in progress. With the new Cayman Islands Intellectual Property Office (CIIPO), the Cayman Islands Government fully intends to revolutionize the organization and application of new Intellectual Property laws.

Louis Vuitton, the world’s most valuable fashion house based in Paris, filed an infringement lawsuit, back in June 2014, against My Other Bag (MOB), a small company based in Los Angeles, United States, claiming among others, that MOB is infringing on their registered trademarks and designs, but also diluting its famous trademark.

Louis Vuitton also claims that MOB completely ignored the several requests to cease production and marketing of their bags that infringed on Louis Vuitton’s designs.

Before announcing the Apple Watch, Apple, inc. tried to register the trademark iWatch in several jurisdictions, with trademarks applications dated from 2013 and 2014. In some jurisdictions the application was successful and the trademark was registered and ready for use. In other cases, Apple wasn't so lucky. The most famous case is the trademark application of the iWatch filed at the United Kingdom Intellectual Property Office (UKIPO), numbered 00003047484, which was rejected after an opposition was filed in the name of Swatch.

The Gulf Cooperation Council (GCC) Trademark Law has the primary objective of unifying the trademark registration systems and procedure of all member states of the GCC: Saudi Arabia, Bahrain, Kuwait, Qatar, Oman and United Arab Emirates. This unification, however, does not create a centralized filing procedure nor does it replace the national filing.

Approved by the GCC Supreme Council during its 33th meeting, back in 2012, it has been progressively adapted and implemented by the GCC member states, only now coming into force in Saudi Arabia.

A case that is currently attracting a lot of media attention has been the case of Pirate Joe vs Trader Joe’s. The first is a Canadian retailer, located in Vancouver, who resells products belonging to the second party at a 30 to 40% increased price, without any authorization to use the similar trademark; the second party is a large company based on Monrovia, California, United States, who sells various food products for almost 60 years.

Past August 30, 2016, a trademark opposition system has come into effect in Mexico. The amendment to the Mexican IP Law was published in the Official Gazette June 1, 2016 and a new opposition has come alive, where before there was none. While the opposition system is most certainly welcome, taking into account that it will make it easier – and cheaper – for opponents to oppose published trademarks that might be deemed too similar to their previous trademarks, the new opposition system has some local peculiarities that might make it a strange beast for most foreign applicants.

The Minister of Foreign Affairs of the Cook Islands has notified that they have deposited the instrument of accession of the Convention Establishing the Word Intellectual Property Organization (WIPO), signed at Stockholm in 1967.

The deposit occurred past July 2th, 2016 and will enter into force October 27th, 2016.

Aiming at making the protection of intellectual property a more efficient process, Thailand has amended its Trademarks Act of B.E. 2534 (1991).

The amendments were published in the Royal Gazette on April 29, 2016 and become effective on July 28, 90 days after the publication date.

Significant changes were introduced which we may summarize as follows.