PETOŠEVIĆ

August 2020

How Brexit Will Impact Your IP Rights

After the Brexit transition period ends on December 31, 2020, the EU law will no longer apply in the UK. We prepared a quick guide on what to look out for starting from January 1, 2021:

EUTMs

EU trademark applications that are still pending before the European Union Intellectual Property Office (EUIPO) on December 31, 2020 will not cover the UK. Applicants wishing to extend the pending application to the UK will be allowed to file an application for a UK trademark for the same goods and services (or a narrower scope of goods and services) as the original EUTM application during a nine-month period starting on December 31, 2020. The UK trademark will have the same filing and priority dates as the original EUTM.

EUTMs that are already registered on December 31, 2020 will no longer cover the UK, but UK national trademarks equivalent to the corresponding registered EUTMs will be automatically created at the end of the transition period with no action required from the right holder. These newly created UK national trademarks will not be re-examined and will have the priority and renewal dates of the original EUTM. Additionally, the reputation acquired through the intensive use of the original EUTM in the EU before the transition period will also apply to the newly created UK trademark.

Community Designs

Analogue rules that apply to EUTMs also apply to pending and registered Community designs. In case of pending applications, it will be possible to file a UK design application within nine months starting from December 31, 2020, keeping the priority date of the original Community design. In case of registered Community designs, the UK national equivalents will be automatically created with the same benefits (no re-examination, no official fees).

European Patents

Brexit will not affect European patents and patent applications because these are granted through the centralized procedure before the European Patent Office (EPO) under the European Patent Convention (EPC). As the UK will remain a member of the EPC after Brexit, the UKIPO will still validate European patents, and the UK patent professionals will be entitled to represent right holders before the EPO.

Representation before EUIPO

As of January 1, 2021, legal practitioners and professional representatives qualified in the UK or having their place of business in the UK will no longer be entitled to represent applicants or right holders before the EUIPO. It is therefore important for right holders to appoint practitioners who will be able to assist with proceedings before the EUIPO.

PETOŠEVIĆ is a specialized IP firm with presence in seven EU countries and numerous practitioners authorized to represent before the EUIPO and EPO. Should you require our assistance in this respect, do let us know.

By: Zita Szilágyi

For more information, please contact Zita Szilágyi at our Hungary office.

Ukraine Amends Trademark Law

Amendments to the Ukrainian trademark law entered into force on August 16, 2020, as part of a set of laws intended to implement the requirements set out in the EU-Ukraine Association Agreement, synchronize local legislation with that of the EU and ensure legal and linguistic consistency of legal acts regulating intellectual property rights in Ukraine.

Non-Traditional and Collective Marks

The amendments introduce the possibility to register any type of a sign as a trademark, provided that it is capable of distinguishing goods and services and that it can be represented in the trademark register in a manner allowing the competent authorities and the public to clearly and precisely determine the scope of protection.

In particular, the new law adds sound marks to the list of signs eligible for registration, which already included colors, product shapes and packaging designs under the previous law. The amended law reinforces the need to update the trademark register’s technical capabilities in order to include different types of marks.

The amendments also introduce collective trademarks, which may be owned by an established association that will be the proprietor of the mark.

Opposition Procedure

The amended law introduced an opposition procedure similar to the one in the EU. Once the filing fee is paid and the IPO establishes that the application meets the filing requirements (including applicant’s data, the mark’s image and the list of goods and services), it will issue a notification on granting a filing date, and the application will be published in the Official Bulletin and entered into the application database. The data on international registrations or subsequent designations for Ukraine will be published in the Bulletin once the IPO receives the relevant notification from WIPO.

Any person may file an opposition within three months from the application publication date. For national trademarks, applicants may file a response to the opposition within two months from the date they receive the opposition notification from the IPO. Applicants may refute the objections, amend their applications, or withdraw them. For international trademarks, right holders may file a response within three months from the date the IPO sends a provisional refusal to WIPO.

Oppositions and responses are considered at the stage of substantive examination, when the application is checked for absolute and relative grounds for refusal. Opponents may file an appeal to the final decision within two months from the date of receiving it.

Previously, oppositions could be filed no later than five days before the final decision on the application is issued, but the law did not include any provisions which permitted opponents to appeal the IPO’s decision.

Grounds for Refusal

The amended law also extends the list of absolute and relative grounds for refusal and invalidation.

The new absolute grounds are the following:
 

• If a trademark is in conflict with a plant variety denomination registered or applied for in Ukraine, or which was granted protection in accordance with an international agreement to which Ukraine is a party before the trademark filing date;
   
• If a trademark is in conflict with a geographical indication registered in Ukraine or which was granted protection in accordance with an international agreement to which Ukraine is a party before the trademark filing date, and misleads as to the special quality, characteristics and true origin of the goods;

• If a trademark is misleading about the nature, quality and geographical origin of the goods and services.

The new relative grounds are the following:
 

• If a trademark is identical with or similar to an earlier right, not only in terms of confusion, but also in terms of association;

• If a trademark is identical with or similar to the extent of confusion or association with a well-known trademark and designates identical or similar goods or services, or if it designates nonsimilar goods or services but shows a connection with the owner of a well-known trademark and may harm his/her interests;

• If a trademark application is filed by an agent or a representative in their own name without the owner’s consent, and if there is no evidence to justify such filing and the owner has objected (Article 6^septies of the Paris Convention).

Consent to Registration and Use

The amended law establishes that a trademark identical with or similar to an earlier trademark can be registered if the owner of the earlier mark gives consent and if there is no risk of consumer confusion.

Re-Registering Trademarks

The deadline to re-register a trademark was reduced from three to two years following its cancellation. Trademarks may be re-registered if they were cancelled because they were not renewed in time or if the trademark owner surrendered the trademark in full or in part. In these cases, trademarks may also be re-registered by another person if the previous owner gives consent.

Non-Use Grace Period

While the previous version of the law provided for a three-year non-use grace period, the national courts applied the five-year non-use grace period introduced by the EU-Ukraine Association Agreement, which came into force on September 1, 2017. The amended law now explicitly provides for a five-year non-use grace period.

Fair Use

The amended law introduces two additional types of trademark fair use by third parties:

• Descriptive fair use, referring to the use of a registered trademark in relation to the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of the goods or services protected by the trademark;

• Nominative fair use, referring to the use of a registered trademark in commerce when it is required to indicate the intended purpose of a good or a service, i.e. when it is compatible with or is a spare part of the goods/services sold under the trademark.

The law also amends the existing provision on trademark fair use in comparative advertising, specifying that such use must solely be intended for distinguishing goods and services and emphasizing their differences.

By: Marina Maltykh and Igor Alfiorov

For more information, please contact Marina Maltykh or Igor Alfiorov at our Ukraine office.

Ukraine Amends Industrial Design Law

Amendments to the Ukrainian industrial design law entered into force on August 16, 2020, as part of a set of laws intended to implement the requirements set out in the EU-Ukraine Association Agreement, synchronize local legislation with that of the EU and ensure legal and linguistic consistency of legal acts regulating intellectual property rights in Ukraine.

The amended industrial design law introduces individual character (along with novelty) as a new registrability requirement, creating a twofold criterion, common in the EU, which each industrial design should meet in order to enjoy protection. A design will be deemed as having individual character if the overall impression it creates on the informed user is different from the overall impression created by any other registered or unregistered design made available to the public.

The novelty criterion has also been transformed. While under the old law ‘novelty’ implied that no identical design was disclosed anywhere in the world before the application or priority date, the new law defines an industrial design as novel if no other identical registered or unregistered industrial design was previously disclosed, without specifying where the disclosure should occur geographically (whether only within or also outside Ukraine’s borders). The new law defines disclosure in the following way:

1. A registered design is deemed to be available to the public if it was published following its registration, or exhibited, used in trade or otherwise disclosed before the filing or priority date, except when these events could not reasonably have become known in the normal course of business to the circles specialized in the corresponding sector operating in Ukraine;

2. An unregistered design is deemed to be available to the public if it was published, exhibited, used in trade or otherwise disclosed, except when these events could not reasonably have become known in the normal course of business to the circles specialized in the corresponding sector operating in Ukraine.

The grace period for filing an application after disclosure was extended from six to 12 months, allowing the author, his successor in title, or a third person as a result of information provided directly or indirectly by the author or his successor in title, to disclose the design for the purposes deemed sensible to them without destroying the design’s novelty.

The law introduces two additional instances in which an industrial design will not be considered protectable. It imposes the visibility requirement (a part of a complex product which is not visible in its normal use should not be granted protection) and the non-functionality requirement (a design should not be granted protection if its features merely serve a technical purpose and must be accurately reproduced in their exact form and dimensions in order to allow interconnection with another product).

While designs which do not comply with the requirements, including novelty and individual character, could previously be invalidated in court, they can now also be invalidated before the Ukrainian IPO Board of Appeal, both when still valid and when they have lapsed.

The post-grant opposition system has been introduced as an additional interim option for parties to resolve potential issues in an administrative procedure before they resort to litigation, meaning that industrial designs can now be cancelled before the IPO Board of Appeal.

The law explicitly introduces unregistered designs as a new category and sets the term of their validity as three years following their disclosure. The law also confirms that registered designs will be valid for five years but can be renewed for a total term of 25 years. The industrial design law and the by-laws were out of sync on the issue – while the law provided for a maximum protection term of 15 years, the Decree of the Cabinet of Ministers No. 496 of July 12, 2019 allowed for a maximum of 25. The new law now brings consistency and uniformity in terms of design validity.

Another important development is the introduction of multiple design applications, allowing applicants to include up to 100 designs in the same application if they have the same owner(s) and comply with the unity of class requirement. However, the IPO will consider each industrial design separately and can make a decision to register some of the designs and refuse protection to others.

In terms of procedural formalities, the window for payment of industrial design annuities now opens six months before the deadline as opposed to two months in the past.

Finally, it is clarified that the industrial design examination will be carried out in compliance with the new law, while the application of protectability requirements will depend on the legislation in force on the filing date of the design application.

By: Viktoriia Smyrnova

For more information, please contact Viktoriia Smyrnova at our Ukraine office.

Owners of Romanian TMs and IRs Designating Romania Invited to Specify the Scope of Goods and Services by September 30

The new trademark law entered into force in Romania on July 13, 2020. It transposes into national legislation Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the EU member states relating to trademarks.

The law adopts the literal approach when interpreting class headings. According to this practice, which was initiated by the EUIPO in March 2013, when class headings are used to designate the scope of protection in trademark applications and registrations, they will not be interpreted as covering all goods or services in their class but will rather be interpreted literally.

Owners of both Romanian and international trademarks designating Romania registered before July 13, 2020 which use entire class headings of the Nice Classification are invited to file a declaration. This option is not available for registrations using only parts of class headings.

If you have a trademark registered in Romania and all the goods or services for which you intended to obtain protection are covered by the literal meaning of the class heading, you do not need to take any action. However, if you intended to obtain protection for goods or services that are included in the alphabetical list of the class, but are not clearly covered by the literal meaning of the class heading, you should consider filing the declaration.

When making the declaration, trademark owners can only use the wording from the alphabetical list of the Nice Classification in force on the date of filing the trademark application. They are not allowed to provide their own specifications.

There is no obligatory form provided for the declaration, and no official fee.

If a declaration is not filed by September 30, 2020, it will be interpreted that the trademark is registered for the goods or services designated by the literal meaning of the class heading.

For more information, please contact PETOŠEVIĆ Romania Head of Office Ms. Aura Campeanu.

Croatian IPO Amends Official Fee Structure

Amendments to the regulation on fees charged by the Croatian Intellectual Property Office entered into force on August 8, 2020, amending trademark fees, introducing utility model fees and modifying patent examination fees to reflect the changes introduced by the new Croatian Patent Act in February 2020.

Trademark fees were amended so that the basic fee for filing or renewing a trademark now covers only one class, and not three classes as before.

A separate utility model fee has been introduced, because the new Patent Act introduced the “utility model” concept and separate registration procedures for patents and utility models, thus significantly shortening the registration procedure for utility models – a utility model application is published as a registered right as soon as the formal examination is completed.

The new Patent Act also introduced a mandatory preliminary prior art search and an optional preliminary written opinion on the patentability of an invention at an early stage of the examination procedure, before an application is published and before substantive examination is requested.

Therefore, the new patent examination fee structure now includes separate fees for the prior art search, an opinion on patentability and substantive examination, helping to decrease examination costs for applicants whose applications do not meet patentability requirements. Previously, all applicants had to pay the full examination fee.

It is important to note that all patent applications filed before the new Patent Act entered into force on February 20, 2020 are subject to examination requirements under the old Patent Act.

By: Ana Družinec

For more information, please contact Ana Družinec at our Croatia office.

Hungarian Officials Shut Down Illegal Streaming Service

The Hungarian National Tax and Customs Administration (NTCA) officials recently shut down an unauthorized website that was illegally streaming 88 Hungarian-language TV channels. The officials seized a significant number of computers, decoders and TV cards from the home of one of the men operating the website in the capital of Budapest. The officials also disconnected six servers which hosted the streaming website.

The website streamed the channels of one of the best-known telecommunication service providers with nationwide coverage in Hungary and had more than 8,000 registered users.

An illegal Internet Protocol Television (IPTV) service that is provided without the payment of royalties to copyright and related rights owners is considered a criminal case, and the perpetrator can be sentenced to up to eight years in prison. It is estimated that the streaming service caused financial losses of approximately EUR 560,000 (USD 660,000) for copyright holders.

Prepared by: Erika Farkas

For more information, please contact hungary@petosevic.com.

PETOŠEVIĆ Strengthens Its Russian Speaking Patent Team and Practice

We are pleased to announce that an accomplished patent attorney Taras Manolov has joined PETOŠEVIĆ Ukraine, further enhancing the firm’s patent practice and our presence in the Russian-speaking region.

As a skilled patent attorney with a background in microbiology, Mr. Manolov handles patent prosecution, enforcement and litigation throughout the Russian-speaking region, and advises clients on all aspects of patent protection. He has extensive experience in preparing, filing and prosecuting patent applications in the fields of medicine, pharmacology, biotechnology and chemistry.

Mr. Manolov joins PETOŠEVIĆ after having worked at a leading Russian IP firm for nine years, following an extensive career in research and academia in Sweden, Germany and Ukraine, spanning 13 years.

The arrival of Mr. Manolov strengthens the PETOŠEVIĆ patent practice, which now comprises almost 30 patent attorneys, agents and consultants across Eastern Europe and Central Asia. Our patent team includes 12 licensed European and Eurasian Patent Attorneys authorized to represent clients before the European Patent Office (EPO) and the Eurasian Patent Office (EAPO), and the following patent professionals with a specific technical background:

• Ivan Nagornykh, Russian Patent Attorney, Eurasian Patent Attorney, MPhys in Theoretical Physics: Certified Specialist in Atomic Nucleus and Particles Studies
   
• Natalia Osipenko, Russian Patent Attorney, Eurasian Patent Attorney, MSc in Chemical Technology and Biotechnology
   
• Daria Dunai, Belarusian Patent Attorney, Eurasian Patent Attorney, BSc in Biology and Chemistry
   
• Alexey Rumyantsev, Russian Patent Attorney, MSc in Remote Sensing
   
• Olga Kudoyar, Patent Consultant (Russia and Ukraine), Specialist Degree in Ecology, Biotechnology and Bioenergetics
   
• Vladimir Nika, Albanian Trademark & Patent Agent, European Patent Attorney, PhD in Metallurgy, BSc in Mechanical Engineering
   
• Nada Herak, Serbian Patent & Trademark Agent, European Patent Attorney, MSc in Chemistry
   
• Dragana Bogdanović Marković, Serbian Patent & Trademark Agent, MSc in Pharmaceutical Sciences
   
• Taras Manolov, Ukrainian Patent Attorney, PhD in Medical Microbiology

Nine of our lawyers are European Patent Institute (EPI) members, including three EPI Council members and five EPI committee members. PETOŠEVIĆ Group founder, Chairman and CEO Slobodan Petošević was a member of the EPI Board from 2012-2017. He is currently serving within the EPI’s Professional Conduct Committee.

For more information on our patent and other IP services, please visit our Services page.

At PETOŠEVIĆ, we are thrilled to be strengthening our team in the challenging Russian-speaking region and look forward to further developing our patent practice and expertise with Taras Manolov on board.

PETOŠEVIĆ Kazakhstan and Astana Hub Sign Cooperation Agreement

PETOŠEVIĆ Kazakhstan and Astana Hub, which offers business development programs to companies and startups in the field of information technology, have recently signed a one-year cooperation agreement, under which PETOŠEVIĆ Kazakhstan will support tech startups by providing intellectual property information and advice through consultations, presentations and various educational events.

Astana Hub was created in November 2018 as part of the Digital Kazakhstan state program, which is to be implemented in the period 2018-2022 and which aims to contribute to the digital modernization of the country.

Under our IP2START® initiative, lawyers from our offices across the firm provide free initial IP advice to new entrepreneurs who may not know much about the opportunities that the IP system offers and may not have enough resources to hire a lawyer. We help startups devise an action plan to protect their ideas, products or services, increase the value of their IP assets, and develop an effective IP strategy to grow their business.

Prepared by: Dayana Auezova

For more information, please contact dayana.auezova@petosevic.com.