IP system updates and international treaty implementation
North Macedonia
On November 1, 2024, a newly published practice paper regarding the distinctiveness of three-dimensional trademarks (shape marks) containing verbal or figurative elements when the shape lacks inherent distinctiveness entered into effect in North Macedonia.
The new practice paper was drafted and finalised in alignment with the European Union Intellectual Property Network (EUIPN) Common Practice (CP9), already applied by the IP offices of the EUIPN. The document contains tailor-made advice and guidance for prospective applicants, rights holders, and IP professionals as to the specificities of the implementation of the common practices outlined in the CP9 in the jurisdiction.
As such, it sets forth an overview of the quality standards used to consider and assess three-dimensional trademarks, as well as providing a comprehensive explanation and clarity as to the principles on which the practice is based.
The newly enforced practice paper published with regard to the CP9 for North Macedonia comes as a direct result of the EUIPO’s continued efforts to collaborate with non-EU member states to harmonize IP practices across international jurisdictions, and to strengthen IP co-operations.
It is hoped that in providing further clarity and transparency concerning trademark procedures in North Macedonia, the practice paper will, in turn, strengthen legal certainty for IP applicants, as well as for trademark examiners and other stakeholders.
Brazil
The National Institute of Industrial Property of Brazil (INPI) recently published and enacted two new intellectual property Ordinances regarding procedures in relation to patent registration and maintenance.
The first Ordinance, namely Ordinance No. 14/2024, which entered into effect on October 3, 2024, establishes a more uniformed specification of standards with regard to the content and form of patent applications and certificates of addition, adapting the previous procedures of patent filing and registration to suit a more modern age of online filings and maintenance of IP rights.
The second Ordinance to enter into force was Ordinance No. 20/2024, which became effective as of October 17, 2024. This Ordinance streamlines the procedures regarding the transfer of ownership of patents, as well as for the filing of amendments in relation to the individual or company name or the address of the patent applicant/owner.
Combined, the two Ordinances bring about a multitude of significant amendments to the previous patent system and regulations in Brazil. One of the most notable changes to the previous system is that patent applications may now be split into divisional applications up until the date of publication of the decision with regard to the granting, rejection, or definitive archiving of the initial patent application. As such, the date of publication of the final decision as to grant is set as the same date on which examination of the parent application is concluded. This time restriction has been abolished with regard to ex officio divisions of a patent application, meaning that henceforth, applicants are permitted to file divisional patent applications during an appeal phase, when requested by the Brazilian INPI.
Moreover, divisional patent applications are now required to be filed alongside a marked copy of the original application, which explicitly depicts the amendments to the set of claims detailed in the initial application which remain pending at the point of filing of the divisional application. This marked copy setting out the amendments should clearly indicate the page, excerpt, and the type changes implemented in the new divisional application.
In instances of any overlap of the scope of claims detailed in both the original and divisional patent application, the claims of the original application should be amended to exclude the subject matter claimed in the divisional application.
A further modification to the previous patent procedures in Brazil now means that it will no longer be required that patent applicants provide a sworn translation of foreign documents in order to meet filing obligations. Instead, a simple translation of the relevant documents will suffice.
The alterations to the Brazilian patent system brought about by the two newly implemented Ordinances introduce clarity and a more uniformed procedure for applicants and IP professionals alike. In turn, a more efficient process for obtaining patent protection is hoped to encourage both national and foreign IP applicants to file for patent protection in Brazil.
Georgia
As per the signing of a resolution by the Parliament of Georgia on September 17, 2024, Georgia has officially joined the Marrakesh Treaty “On Facilitating Access to Printed Works for Persons Who Are Blind, Visually Impaired, or With Other Restrictions in the Ability to Familiarize with Printed Works” (Marrakesh Treaty).
The Marrakesh Treaty was originally adopted as of June 27, 2013, and entered into force on September 30, 2016. Administered by the World Intellectual Property Organization (WIPO), the Treaty is an international agreement which was implemented with the intention of providing more accessible methods for those who are considered blind, visually impaired, or print disabled to access works which are protected by copyright. In order to achieve its aims, the Treaty allows for exceptions to copyright law which affords for the legal production of accessible versions of copyrighted works.
The Committee on the Rights of Persons with Disabilities of the World Intellectual Property Organization (WIPO) initially recommended that the jurisdiction of Georgia ratify the Marrakesh Treaty on March 21, 2023 in order to enforce the same nationally. Once it was implemented, it was required to amend the national legislation of Georgia to bring the domestic laws in line with the Marrakesh Treaty, resulting in the Law of Georgia "On Copyright and Neighboring Rights" being implemented on December 15, 2023.
The implementation of the Marrakesh Treaty in Georgia indicates an ongoing drive to facilitate a more inclusive system for providing access to IP protected works in the country, as well as for a more internationally cohesive approach to creative works accessibility worldwide.
Dominican Republic
As of September 16, 2024, the National Industrial Property Office of the Dominican Republic (ONAPI) officially began to utilize and share its trademark data with the international database TMview.
TMview is facilitated by the European Union Intellectual Property Office (EUIPO), and allows users to search for and obtain information on over 127.2 million trademarks across the globe. In over 14 years of operation, TMview has been used for more than 135 million trademark searches worldwide, and incorporates trademark data provided by 78 IP offices globally.
The introduction of the ONAPI to TMview now means that users will be able to search for global marks inclusive of the 298,000 added to the database from the Dominican Republic.
The addition of the ONAPI to TMview is a direct result of the EUIPO’s ongoing efforts to collaborate and provide cooperation throughout the Caribbean region, aided by the EU-funded CarIPI project.