Japanese Patent Office Seeks to Extend Trademark Protection to Sound and Moving Images

December 11, 2008

Japanese Government sources have revealed Japans Patent Office intentions of accepting applications to register sound and moving images as trademarks.

This idea has developed since companies begun advertising products using music and moving images on the Internet and in television, in fact some countries already offer sound and moving images trademark registration.

Nowadays in Japan, it is only possible to register as trademarks “motionless” objects, namely letters representing a products name’, logos and diagrams.

On the contrary, some other countries, such us the United States, Britain, Germany and Australia, accept sounds, holograms and moving images that are considered to enhance the impact of products on consumers, as trademarks.

In the United States, 147 sound and 20 moving images were registered as trademarks between 1994 and 2006, according to the Institute of Intellectual Property, which is affiliated with the Patent Office.

According to the sources, companies from the States and Europe have been urging the Japanese Government to adopt the necessary measures in order to protect sound and moving images as trademarks.

In response, the Japanese Patent Office has been considering the possibility of covering a wider range of items under the Trademarks Law.

Finally, as those who use registered trademarks without approval have to face up to 10 years imprisonment or a fine of up to 10 million yen. Hence, it can be said that the foreseen revision is expected to more extensively protect companies’ rights.

WIPO’s Committee Concentrates on non-Traditional Marks, Trademark Opposition Procedures and Industrial Designs

December 11, 2008

WIPOs Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) concluded in the beginning of December 2008, after coming to an agreement in the field of non traditional marks such as holograms and audio marks trademark opposition procedures, consideration of key issues relating to industrial designs, and new areas of work.

Since July of 2008, the Committee has been working on coming to an agreement or unification in respect of the representation and description of non traditional marks such as three dimensional marks, color marks, sound marks, movement marks, hologram marks or position marks.

The goal is to promote uniform results in the trademark registration process across different jurisdictions for the benefit of trademark owners and trademark offices.

On the other hand, WIPO Director General Francis Gurry urged the Committee to put special emphasis on the issue of designs which has not been a priority in the intellectual property policy making considerations.

He highlighted the importance of industrial designs as a means of distinguishing or differentiating products which offer essentially identical functional features. He pointed out that, for products which bring a new technology to the market, design is a key means of communicating how the technology will work.

The meeting, from December 1 to 5, 2008, was attended by 72 member states, 4 intergovernmental organizations and 8 non governmental organizations. The next meeting of the SCT is scheduled to take place in Geneva in June 2009.

Benelux Intellectual Property Office Warns Against non Official Registers

December 11, 2008

BOIP (Benelux Intellectual Property Office) has made a public announcement on its website. Warning trademarks owners about the being contacted by companies as TM Collection and IBIP International Bureau for Intellectual Property which offer to publish their trademark in a non official (European) register, published by these companies. All of this against a substantial amount of money.

The BOIP has advised the public that it is not correct to think that any trademark right is associated with these proposals. Emphasizing the fact that these initiatives are strictly private, without any official character and strongly recommending not following these sorts of proposals.

Singapore Treaty on The Law of Trademarks to Enter into Force in 2009

December 8, 2008

A new international treaty establishing standards for trademark registration procedures will become effective in 2009 after Australia ratification on December 16, 2008. This is the tenth ratification of the Singapore Treaty on the Law of Trademarks (The Singapore Treaty) and will permit the treaty to enter into force on March 16. 2009.

According to WIPO Director General, Francis Gurry, the Singapore Treaty represents good news for trademark holders around the world as it will allow registering and managing trademark rights cost effectively and efficiently.

The Treaty standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communications technologies to process and manage evolving trademark rights. This facilitates the creation of a common action ground for all economic operators that invest in branded goods.

The Singapore Treaty sets up administration rules for the trademark offices, which are applicable to all sorts of trademarks, considering the advantages and potential of electronic communication facilities, and at the same time recognizing the different requirements of both developing and developed nations.

Names of Mountains not Acceptable for Registration

November 28, 2008

The Registrar of Trademarks has declared that Mount Everest Mineral Water cannot register names of mountains as trademarks.

Based on the Geographical Indications Act, it has been established that names of mountains are not suitable for registration as trademark for agricultural and natural products.

In other words, anybody can use the term HIMALAYA to market its goods. This decision is final and so the Appellate Board may instruct the Registrar to cancel Himalayan from the register as a trademark.

Geographical indication such as Himalayan or Himalaya, which serves to denote the geographical origin of the products in question, is not prima facie registrable as trademark. Accordingly, the entries in the Register in respect of these two trademarks may have to be considered as wrongly made, the Registrar of Trademarks said in a letter dated September 9 this year.

This whole conflict started when Mt. Everest filed a restriction against Bisleri in the Delhi High Court (June 2008) preventing them from using the word HIMALAYA as a trademark. The plaintiff claimed that HIMALAYAN is the registered trademark of the company and that nobody should be allowed to use the words Himalayan, Himalayas and Himalaya.

As a response, Bisleri filed an application with the Intellectual Property Appellate Board seeking to cancel the trademark based on the argument that HIMALAYAN is a word which describes the source, quality and properties of the water. In fact, other water brands such as Paras, Catch, Hello, Qua and Natural also use the descriptive word HIMALAYA.

Geographical indication such as Himalayan or Himalaya, which serves to denote the geographical origin of the products in question, is not prima facie registrable as trademark. Accordingly, the entries in the Register in respect of these two trademarks may have to be considered as wrongly made, those were the words of the Registrar of Trademarks in September this year.

Bisleri was taken to court for using the generic word from the Himalayas. We had no choice but to go to the Intellectual Property Board to strike off the brand Himalayan. Now anyone who is making water in Himalayas can use the expression from the Himalayas. There are at least four other manufacturers of mineral water using the word Himalaya. This is a statement of fact and cannot be objected, Bisleri International chairman Ramesh Chauhan said.

500,000th Community Trademark

November 28, 2008

After enjoying more than a decade of unprecedented demand for European wide protection of intellectual property, the European trade marks and designs registration office, OHIM, has registered the 500,000th Community trade mark

Since the Community trade mark was introduced in 1996 to provide legal protection throughout the European Union in a single application, demand has increased enormously. On 2007 OHIM received approximately 90.000 Community trade mark applications, which is further more than the 20.0000 foreseen on the 90.

OHIM is an independent, non profit making European agency, funded entirely by fees from customers. The agency is based in the Spanish city of Alicante.

Most of the trade mark registration processes are done through the Internet. As a result of the intensive use of e commerce tools and strict cost controls, productivity measured in terms of registrations per head of staff has risen significantly, and the agency has a growing financial surplus.

According to information released this achievement and finantial sutuation could be reflected on the registration fees, which cost can be brought down sharply.

OHIM President Wubbo de Boer says: We are in the fortunate position of offering a service that is very popular with both large and small businesses and which, in general, has seen growing demand.

Registering our half a million Community trade mark is a very important milestone. I would pay tribute both to the vision of those who saw the need for Europe wide IP protection and to the European and global customers who have put their confidence in us over the years.

The cost of trade mark protection is a major concern , and I am particularly glad that we will be able, by mid way through next year after the Commission brings forward its proposals, to cut the cost of having a Community trade mark by about 40% to around 1 000.

Member States Review Key Copyright Issues

November 28, 2008

WIPO member states met from 3rd until 7th of November 2008, to revise a number of fundamental copyright issues. The conference examined WIPO work on limitations and exceptions, the protection of audiovisual performances and broadcasting organizations and discussed the question of access to copyright protected content by visually impaired persons.

Limitations and Exceptions: Access for Visually Impaired People

Some of the member states recognized the special needs of disabled persons (including the blind, visually impaired and other reading disabled persons) and pointed out the importance of concentrating on those needs.

They have agreed to analyze current limitations and exceptions. The possible establishment of a stakeholders platform at WIPO was also discussed, as to simplify secure access for disabled persons to copyright protected works.

Due to the fact that for visually impaired people to have access to copyright protected works in a readable format (e.g. Braille, large print and audio books) may be necessary to copy and transform a given work into a large text or other format. The law in many countries allows such copying and transformation without the rights owners permissions, in other countries; those acts could infringe copyright if done without permission.

Audiovisual Performances

Member states expressed their interest to develop for performers the international protection of audiovisual performances. The importance of information exchange as a means of building consensus on this issue was underlined.

Broadcasting Organizations

It was decided to continue discussions on the protection of broadcasting organizations with a view to concluding an international instrument.

Progress has been achieved in boosting understanding of the various stakeholder positions. Nonetheless, further work is necessary to achieve agreement on the objectives, specific scope and object of protection of such an instrument before convening a diplomatic conference to conclude a treaty.

Reason why a diplomatic conference could be arranged only after agreement on objectives, specific scope and objective of protection had been achieved.