International progression in the intellectual property field
TMView and TMClass
As of May 13, 2024, the Registrar General’s Department of Ghana (GHIPO) officially began to utilize the harmonized database of goods and services (HDB) provided by TMclass.
The database affords users the ability to search and translate terms relating to trademark goods and services in any of the 44 languages which are covered by the service. Moreover, users of the database are able to clarify the classification of trademark terms as per the Nice Classification.
The harmonized database is a tool connected to TMclass, a system which assists the classification of terms of goods and services for trademark protection purposes, based upon the 45 Class Headings of the Nice Classification.
The addition of the GHIPO to TMclass is a direct result of the Intellectual Property Rights Action for Africa (AfrIPI), a project funded and implemented by the European Union Intellectual Property Office (EUIPO).
The Business Registrations and Licensing Agency of Tanzania (BRELA) also began to utilize the HDB of TMclass as of March 11, 2024.
Following the GHIPO’s and BRELA’s adoption of TMclass and the corresponding database, there are now 34 IP offices outside of the EU that use and accept terms of the HDB and 93 total participating national and regional IP offices utilizing the TMclass.
In further trademark database advancements, The Trinidad and Tobago Intellectual Property Office (TTIPO) recently accepted and began to utilize the TMview search tool as of April 15, 2024, marking the 77th participating office to utilize the same.
TMview is a useful tool which allows users to search for and obtain information on over 121 millions trademarks registered worldwide. In just over 14 years of operation, TMview has provided more than 128 million searches from across the globe, with countries such as Spain, the UK, Germany and Italy, as well as the US and China, providing the most frequent users.
The accession to TMview by Trinidad and Tobago is a direct result of another EU funded project named CarlPI, implemented by the EUIPO in collaboration with the World Intellectual Property Organization (WIPO).
The Belize Intellectual Property Office (BELIPO) also made its trademark data available via the TMview search tool from February 26, 2024, a move which was also made possible by the CarlPI project.
Canada
As of March 25, 2024, several amendments to the Canadian Patent Rules entered into effect. These amendments have been implemented with the aim of providing further protection to applicants and rights holders from the possibility of making insufficient fee payments stemming from incorrect information provided by the Commissioner.
In order to achieve this higher level of protection regarding fee payments, the newly amended regulations now allow for the Commissioner to waive requirements for the submission of an application for an extension of time in order to identify the source of erroneous information relating to fee amounts.
Moreover, the Commissioner is now also able to waive the requirement for a patent applicant or right holder to pay a fee relating to the difference in costs paid due to incorrect information provided by the Commissioner.
The Commissioner may also now implement a transitional period of up to 4 months from the date of the initial waived fees during which the same costs for fee differences owing to incorrect information being provided by the Commissioner for future fee payers may also be waived.
Georgia
Alterations to the Law of Georgia “On Trademarks” were implemented on March 8, 2024, aiming to improve the procedures for the legal protection of trademarks in the jurisdiction and to further harmonize Georgian IP law with EU legislation.
Among the most significant changes to the law, the legal definition of a trademark has been amended by way of the abolishment of the graphical representation requirement for trademarks. As such, applicants are no longer obliged to provide a graphical depiction of the trademark in an application with a mark now being considered so long as it is presented in a clear and unambiguous manner to the examiner in order to facilitate a precise understanding of the subject matter. In addition, trademark holders are now permitted to request the division of a mark with different priority dates now able to be established for multiple goods and services pertaining to the mark.
Furthermore, a clarification of the absolute and relative grounds for refusal has been provided as per the new law. Henceforth, absolute grounds for refusal now include situations in which a trademark merely depicts the shape of a good or technical functionality or substantial value. Moreover, trademarks that consist of a single letter, number, or color will not be automatically refused, and symbols resembling surnames are now also included in the absolute grounds for refusal.
With regard to relative grounds for refusal, applicants may now submit consent from the owners of any similar existing trademarks or designs in Georgia in order to demonstrate that the existing owner of a similar IP right does not oppose registration of the mark. This new procedure is applicable to trademark applications in both the substantive examination stage and the appeal stage.
The timeline for overall trademark examination has been amended, with the formal examination timeframe having been halved from a 2-month period to 1 month. Subsequently, the deadline for the payment of fees for the formal examination has been reduced to 15 calendar days. Applicants are able to request an accelerated examination of their mark within a period of three months from the notification acceptance of the application.
Another significant alteration brought about by the new trademark legislation is the introduction of a new procedure for the recognition of the reputation of a trademark or whether it is well-known. As such, the similarity of a mark contained within an application to any well-known marks is no longer taken into consideration during the examination process, although the issue of similarity may be raised during the appeals stage or within court proceedings. Further, it will be possible to appeal a decision regarding trademark registration directly with the Appeals Chamber from September 1, 2024.
Further changes enforced now also mean that provisions in relation to marks consisting of names and/or images of historical Georgian monuments will also encompass cultural heritage sites and museum names. Moreover, the Ministry of Culture and Sport will be required to provide it's consent prior for the registration of trademarks containing any of these features.
The amendments to the law now also mean that trademark holders are permitted to amend the goods and services indicated in relation to a trademark so long as the request to do so is submitted within five years of the enactment of the law. This change is applicable to applications filed both prior to and after the enactment of the new legislation. After the period of five years has passed, the scope of protection for the trademark will only cover the goods and services initially indicated in the application as per the classes listed.
The alterations to the Georgian trademark law indicate a significant stride towards the modernization of the IP field in the jurisdiction, bringing the system further in line with other countries in the region and EU legislation.
South Korea
As of May 1, 2024 a new system for the implementation of consent for trademark coexistence was enforced in South Korea.
The newly introduced procedures mean that trademark holders or prior applicants can provide their consent for new similar or identical trademark applications filed by others to be registered by the Korean Intellectual Property Office (KIPO).
The previous system completely prohibited the registration of new trademark applications that were similar or identical to marks previously registered, even if the holder of the previously registered mark provided written consent for the registration of the new one. This subsequently led to the use of the so-called “Assign Back Strategy”, whereby the proposed new mark would be registered by the current owner of the previously registered mark instead of the new applicant in order for the mark to be accepted as registrable by the KIPO. Once registered, the new mark would then be assigned back to the actual applicant of the new mark (the creator) which proved to be a lengthy and convoluted process.
The implementation of the new trademark coexistence system therefore provides a more streamlined solution for applicants wishing to file for trademarks that may be perceived as similar or identical to those previously registered.
In order to be eligible for consent to register via the coexistence system, the new mark must not have been filed with the intent to be registered for the same goods or services as the previously registered mark.
Moreover, a new cancellation ground has been enforced whereby trademarks registered on the basis of the trademark coexistence agreement will be canceled if it can be shown that the mark is intended to be used for the purposes of unfair competition, consumer confusion and/or deception.
In the instance that a trademark is canceled based upon the aforementioned ground, the owner of that mark will not be permitted to register for another mark that is identical or similar to the one canceled until after a period of three years from the confirmation of the cancellation. The statutory period for the request to cancel a mark based upon this new ground is three years.
PPH
The Japan Patent Office (JPO) and the Moroccan Office of Industrial and Commercial Property Office (OMPIC) opted to extend their Patent Prosecution Highway (PPH) program with one another.
The two offices implemented an initial PPH pilot program on January 1, 2021, and after a successful run, the program was officially extended beyond a pilot project.
The implementation of a PPH program between the JPO and the OMPIC means that applicants who have had their patent claims examined by one of the offices are able to request the acceleration of the processing of their application with the other. This is accomplished by the sharing of examination results by the office of first filing with the second office, eliminating the need for duplicate examinations to occur in both.
In turn, this leads to not only an expedited turn-around time for the processing of patent applications, but also increases efficiency, and assists IP offices to improve the quality of the patent granting process.