DECEMBER 24, 2014 | SEASONAL GREETINGS TO OUR CLIENTS AND PARTNERS
MERRY CHRISTMAS AND A PROSPEROUS NEW YEAR 2015
for all our clients and business partners.
LangPatent Anwaltskanzlei IP Law Firm
Please be kindly informed that our office is closed on 24.12., 25.12., 26.12, 31.12.2014 and 01.01.2015.
MARCH 05, 2015 | AFRICAN INTELLECTUAL PROPERTY ORGANIZATION (OAPI) JOINS THE MADRID SYSTEM
Effective March 05, 2015, the African Intellectual Property Organization (OAPI) joined the Madrid System. OAPI is the main organization that ensures the protection of intellectual property rights in African French speaking countries. It comprises Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, the Republic of Congo, Côte d'Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo.
The OAPI became the 93rd member of the Madrid System. With this accession, the Madrid System now provides brand owners the possibility to protect their goods and services through one international application covering more than 100 countries.
In case the OAPI has been designated within an international trademark application, or within a designation subsequent to an international trademark registration, the individual national fee currently amounts to 733.- CHF for up to three classes and 150.- CHF for each additional class.
JULY 01, 2013 | ENLARGEMENT OF THE EUROPEAN UNION TO CROATIA
On July 01, 2013, the European Union will be enlarged to Croatia as the 28th Member State. The effects on the Community Trademark and the Community Design System are the same as with the twelve Member States which joined the Union in May 2004 and January 2007, namely the automatic extension of Community Trademarks and Community Designs to Croatia and the grandfathering of earlier rights.
In the following, we would like to summarize the consequences arising from the accession of Croatia for your information:
1. Consequences for holders of Community
Effective July 1st, 2013, all existing Community Trademarks (CTM) applications and registered CTMs are automatically extended to the territory of Croatia in order to have equal effects throughout the Community. There are neither formalities which must be completed nor additional costs that need to be paid. In the following, we want to give you an overview of the main implications for CTM owners or applicants arising from this extension.
For owners of CTMs registered before July 1st, 2013:
- These CTMs are subject to an immediate extension of the existing protection to Croatia.
- They cannot be declared invalid on the basis of any absolute ground for refusal that becomes applicable merely because of the accession of Croatia (‘grandfathering clause’). This means that, if a CTM is non-distinctive, descriptive, generic, deceptive or contrary to public policy or morality in the language or in the territory of Croatia, it will not be refused if its filing date is before July 1st, 2013. The priority date is irrelevant in this context.
- They cannot be declared invalid on basis of a relative ground for refusal due to a national earlier right acquired in Croatia prior to July 1st, 2013. The priority date is irrelevant in this context, too.
- However, the use of such trademarks in Croatia may be prohibited by the owner of a national earlier right in Croatia, provided latter was acquired prior to July 1st, 2013 and in good faith.
In other words, a CTM registered prior to July 1st, 2013 cannot be challenged because of the accession’s implications and, therefore, generally is enforceable within the entire Community including Croatia.
However, its use within Croatia may be prohibited in case of a conflicting national Croatian earlier right. Therefore, prior to using such trademark within the territory of Croatia, a research in the Croatian trademark register is highly recommended in order to identify any earlier trademarks potentially preventing the use.
For owners of pending CTM applications filed on or after July 1st, 2013:
- These CTM applications are seeking protection in all 28 Member States of the Community, including Croatia.
- They may be refused on the basis of any absolute ground for refusal. This means that, if a CTM application is non-distinctive, descriptive, generic, deceptive or contrary to public policy or morality in the language or in the territory of Croatia as well as of any other member state of the Community, it will be refused. This is the case even if the CTM application has a priority date which is earlier than the relevant accession date as the priority right does not protect the CTM applicant against any change in the law relevant to its application.
- Regarding relative grounds for refusal, they are not affected by special provisions relating to the enlargement of the Community. Accordingly, they may be opposed or declared invalid on the basis of a trade mark registered in Croatia if that mark has an earlier filing or priority date under the normal rules. Acquisition in good faith is not a condition.
In other words, a CTM application filed on or after July 1st, 2013 can be challenged on absolute grounds as well as on relative grounds for refusal under the normal rules. No special provisions do apply.
For owners of pending CTM applications filed before July 1st, 2013:
- These CTM applications are subject to an extension of the protection-sought to Croatia with effect of July 1st, 2013.
- They may not be refused on the basis of any absolute ground for refusal if this ground becomes applicable merely because of the accession of Croatia (‘grandfathering clause’). This means that if a CTM application is non-distinctive, descriptive, generic, deceptive or contrary to public policy or morality in the language or in the territory of Croatia, it will not be refused if its filing date is before July 1st, 2013.
- Pending CTM applications filed between January 1st and June 30th, 2013 may be opposed on basis of a national earlier right in Croatia, provided that the filing or priority date of the Croatian trademark is earlier than the filing or priority date of the opposed CTM application and the national mark was applied for in good faith.
- Pending CTM applications filed before January 1st, 2013 cannot be opposed on the basis of a national earlier right in Croatia under any circumstances. The priority date is irrelevant in this context.
In other words, in the examination of CTM applications filed before July 1st, 2013 absolute grounds for refusal deriving from the accession of Croatia will not be taken into account. Furthermore, only CTM applications filed between January 1st, 2013 and June 30th, 2013 can be subject to oppositions based on earlier Croatian national rights.
For owners of national trademark rights in croatia acquired before July 1st, 2013:
- The use of a CTM, registered before July 1st, 2013 for a similar mark, can be prevented with effect to the territory of Croatia on basis of such right.
- A pending CTM application, filed on or after January 1st, 2013, can be opposed on basis of such right.
- Once a CTM is owned for the same mark covering the same goods and services as an earlier national Croatian trademark, the seniority of the earlier national mark can be claimed in respect of the CTM. Accordingly, the national trademark does not have to be renewed anymore for preserving the earlier filing date with respect to the territory of Croatia.
To sum up, owners of national trademark rights in Croatia filed before July 1st, 2013 can prevent the use of a CTM registered before July 1st, 2013 for a similar mark, can oppose a pending CTM application filed on or after January 1st, 2013 and can claim the seniority of this mark for an identical CTM.
2. Consequences for holders of REGISTERED Community
Effective July 1st, 2013, all existing applications for a Registered Community Design (RCD), all existing RCDs and all existing unregistered Community Designs are automatically extended to the territory of Croatia in order to have equal effects throughout the Community. There are neither formalities which must be completed nor additional costs that need to be paid. In the following, we want to give you an overview of the key implications for Community Design (CD) right owners or applicants arising from this extension.
For owners of RCD applications filed before July 1st, 2013:
Whether a RCD application complies with public policy and accepted principles of morality is under normal circumstances assessed without reference to any particular national or linguistic context. However, where a RCD contains an offensive verbal element in a language which, as a result of the accession of Croatia, becomes an official language of the European Union after the date of filing, the absolute ground for refusal does not apply.
In other words, applications for RCDs filed before July 1st, 2013 cannot be refused due to non-compliance with public policy and accepted principles of morality if these grounds become applicable merely because of the accession of Croatia.
For owners of community designs registered or come-into-force before July 1st, 2013:
- As an expression of the need to respect acquired rights, these rights cannot be cancelled on the basis of grounds for invalidity which exist in Croatia and which only become opposable as from this accession, namely, in particular:
- of a conflict with an earlier design which enjoys protection in Croatia from a date prior to the filing or priority date of the Community design but which has been disclosed to the public at a subsequent date,
- of the use of a distinctive sign which enjoys protection in Croatia from a date prior to the filing or priority date of the Community design,
- of the non-authorised use of a work which is protected by the copyright law of Croatia from a date prior to the filing or priority date of the Community design and
- of the improper use of signs, emblems or coats of arms, other than those covered by Article 6ter of the Paris Convention which are of particular public interest for Croatia.
- Irrespective of that, Community designs can be cancelled on the basis of grounds for invalidity which are applicable independently of the enlargement of the Community.
- Furthermore, the use of such design rights in the territory of Croatia may be prohibited by the owner of a national earlier right in Croatia, provided latter was acquired or applied-for in good faith prior to July 1st, 2013 and in good faith.
For owners of national designs rights in Croatia applied-for or acquired before July 1st, 2013:
Owners of national designs rights in Croatia may prevent the use of a Community design right with effect to the territory of Croatia, if the national design right has been acquired or applied-for in good faith before July 1st, 2013.
If you have any additional questions, or wish to discuss this matters further, please do not hesitate to contact us.
JANUARY 01, 2014 | CURRENT AMENDMENTS OF GERMAN AND EUROPEAN REGULATIONS OF INTELLECTUAL PROPERTY
Starting with January 1, 2014, a new design law (Designgesetz (DesignG)) as well as implementing rules (Designverordnung (DesignV)) are applicable in Germany replacing the former Geschmacksmustergesetz. In addition to the amendment of the designation of design patents with the international denomination “Design” instead of “Geschmacksmuster”, some amendments are implemented which lead to innovations for the user.
According to the new design law, there is now the possibility to file a request for nullification of a registered design with the German Patent and Trademark Office. According to prior law, a nullity suit before a district court had to be filed. While the nullity suit with the district court is still possible as a counterclaim in infringement proceedings, nullity proceedings at the German Patent and Trademark Office are additionally possible.
With respect to the application and the registration proceedings of designs, the new design law brings also amendments with respect to multiple design applications. For multiple design applications including up to 100 different designs, it is no longer necessary that all the designs belong to the same class of goods. However, the application shall not contain more than five different designations of goods.
Moreover, the new design law provides a possibility to file designs via the website of the German Patent and Trademark Office, while applications filed by telefax are no longer admissible.
NEW GERMAN PATENT LAW
With effect of April 1, 2014, the German patent law was amended, and some novel rules have been introduced.
FOREIGN LANGUAGE APPLICATIONS
For applications filed in English or French language, the time limit for filing a translation is extended to twelve months after the filing date, however up to fifteen months after the priority date in the maximum. Moreover, such application is deemed to be withdrawn, if the translation is not filed within the time limit, while according to former law, the application was deemed to be not filed. The consequence is that according to new law the filing date which may be claimed in a later application is maintained, even if the translation has not been filed in time, while according to former law the application had no effect at all.
EXTENDED SEARCH REPORT
Similar to the European proceedings with European patent applications, in German applications, an extended search report with a preliminary opinion with respect to patentability of the subject matter claimed in the application will be provided. Thus, a preliminary opinion similar to a first office action will be received with the search report. For this additional service, the search fee will be increased by 50 EUR to 300 EUR. In addition to the amendment regarding the content of the search report, the possibility to file a request for prior art search with respect to foreign applications of third parties is abrogated. However, the possibility to file a request for examination for an application of a third party is maintained.
The time limit for filing an opposition against a granted German patent has been extended from three to nine months, similar to the proceedings with respect to European patents.
Oral proceedings will be obligatory in the German patent examination proceedings, if a request therefor is filed. Accordingly, it is no longer possible that the examiner may make a decision whether oral proceedings are held or not.
Moreover, all oral proceedings in opposition proceedings will be public.
From the beginning of the year 2014, the German Patent and Trademark Office offers a possibility of online file inspection via the internet. Thus, it is possible to obtain an overview about status and history of patent applications via the internet. However, the database available via the internet does not cover the whole database of the German Patent and Trademark Office, but will be successively stocked up.
EUROPEAN PATENT LAW
With effect of April 1, 2014, also an amendment with respect to the proceedings before the European Patent Office regarding divisional applications came into force. A further amendment refers to the prior art search for European patent applications originating from international PCT applications which will come in force on November 1, 2014.
According to the amended Rule 36 EPC, it is again possible to file divisional applications of all pending European patent applications without any time limit restrictions after April 1, 2014. The twenty-four-month time limit for filing such divisional applications after receipt of the first office action is abrogated. However, an additional fee for divisional applications of the second or further generation will become due. Divisional applications of the second or further generation are such divisional applications which originate from applications which have also been filed as divisional applications.
ADDITIONAL SEARCH FEES
With effect of November 1, 2014, the amended Rule 164 EPC will come into force, which allows applicants of international PCT applications, for which an additional European search report is established at the time of entering the European regional phase, to pay additional search fees, if the objection of missing unity of invention is raised during prior art search. In this case, the search is limited to the first invention, and according to prior law, the applicant had to restrict the application to this invention and to file divisional applications for the other inventions. However, now, there is an additional possibility to ask for a prior art search for the additional inventions contained in the application.
Unfortunately, the European Patent Office again increased the official fees with effect of April 1, 2014. Although the European Patent Office realizes overplus funds and contrary to the political goal to improve innovation and to reduce the costs for European enterprises to obtain protection for intellectual property, the European Patent Office continues to increase the fees generally every two years by about five per cent.
JANUARY 20, 2013 | NEW EUROPEAN UNITARY PATENT AND UNIFIED PATENT COURT
New European Unitary Patent and Unified Patent Court
New regulations regarding the unitary patent protection and the translation arrangements for such protection have been entered into force on January 20, 2013 by the European Community. After signing of the agreement about Unified Patent Court on February 19, 2013 and the decision of the Court of Justice of the European Union on the enhanced cooperation in the area of the creation of unitary patent protection these new regulations will apply from January 1, 2014 or the date of entry into force of the agreement on a Unified Patent Court which requires the ratification by at least 13 member states including France, Germany and the United Kingdom. However, since normally ratification of the agreement will take some time in the member states of the European Community, it is not to expect that the Unified Patent Court and the unitary patent system will come into force at the beginning of 2014, but more likely by the end of 2014 or in 2015.
The European Patent with unitary effect (unitary patent) will be another option for applicants of patents besides the already existing national patents of the EuropeanCommunity member states and the classical regional European patent. The unitary patent will be granted by the European Patent Office in the same way as the classical regional European patent and the provisions of the European Patent Convention will apply to this unitary patent with respect to the filing requirements and examination procedure as known from the existing classical regional European patent. However, at the end of the proceedings the applicant will have the possibility to decide that the European Patent is granted for the 25 participating states of the unitary patent system with unitary effect in all member states. The unitary patent will have the same effect as of a national patent in all of the participating member states according to the national law of the member state the nationality of which the applicant has or where the applicant has a place of business. This national law will be applied for the unitary patent throughout the member states of the unitary patent system. For applicants with a nationality of a state outside of Europe or a place of business outside of Europe German law will apply, as the European patent organisation is located in Germany.
For the request to grant the European Patent as a unitary patent the applicant will have to file a translation into English language, if the European Patent is granted in German or French language or in any other official language of a EuropeanCommunityMemberState, if the language of the proceedings is English. Filing of such a translation is mandatory for a transitional period until a machine translation system is fully operational. The details for the requirements for a request for a unitary patent are under preparation and will be issued in good time before January 1, 2014 or the date of the entry into force of the agreement.
According to the unitary patent no translations of the patent specification have to be filed with the member states of the European patent convention as for the classical European regional patent. Moreover, no validation processes have to be carried out for the unitary patent. In addition, annuity fees have not to be paid to the national patent offices of the member states anymore, but to the European Patent Office in case of a unitary patent.
UNIFIED PATENT COURT
Up to now all infringement and validity suits with respect to classical regional European patents are handled by national courts and the authorities of the contracting states. Accordingly, a patent proprietor may have to lead a lot of proceedings in different countries when enforcing a European Patent. The same is true if somebody seeks the nullification of an European patent in several countries.
The agreement on the Unified Patent Court addresses the above problems by creating a specialized patent court (Unified Patent Court or UPC) with exclusive jurisdiction for litigation relating to European patents and unitary European patents. Thus, after a transitional period of 7 years the Unified Patent Court will be exclusively responsible for infringement cases and nullity actions with respect to European regional patents and European unitary patents. The European patent court will comprise a court of first instance located in Paris, London and Munich with regional chambers or local chambers in the member states. The unitary Patent court will have judges from at least two member states in every chamber and there is the possibility that a technically educated judge can be consulted.
The unified patent court will also have a court of appeal located in Luxemburg which also comprises international judges and technical judges.