Madrid Protocol: new joiners
Mexico, India, Rwanda and, most recently, Tunisia have all joined the Madrid Protocol in 2013. The World Intellectual Property Organisation’s Madrid system for the international registration of marks allows brand owners to file trade mark applications in a number of different countries through a single, international application. Subsequent changes and renewals to registrations can also be managed through this centralised system. Brand owners interested in Mexico, India, Rwanda and Tunisia now have the opportunity to protect their brands in those countries via the Madrid system.

Class headings
In August 2013, the UK IPO issued a Practice Amendment Notice (PAN 03/13) following the Court of Justice of the European Union’s decision in the IP Translator case. The Court had confirmed that terms used in a trade mark specification to identify goods/services covered by the mark should be sufficiently clear and precise. The IPO’s practice note sets out how it will treat UK trade mark applications containing certain forms of specification:
  • “All goods in class X” will result in an objection.
  • If an applicant wishes to register for all goods and services in a particular class, they should list all the individual items in the alphabetical list.
  • Certain ‘General Indications’ (i.e. parts of a Class Heading) should be avoided as being too vague – see the list in the PAN.

Non-traditional UK trade marks
In October, the English Court of Appeal handed down judgments in two joined cases concerning the registrability of certain trade marks (Nestlé v Cadbury; and J W Spear & Sons v Zynga). The Court found that the two trade marks at stake (a particular colour mark for Cadbury in one case; and a scrabble tile mark for Spear/Mattel in the other) failed to fulfil the requirement of being “a sign”, and were therefore also insufficiently graphically represented. The Court said this was because the registrations at stake potentially covered a variety of different marks. The judgment means that a number of existing ‘non-traditional’ UK trade marks (i.e. sounds, colours, shapes, etc) may be vulnerable to invalidity, depending on their form of registration and any accompanying descriptions.

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Croatia joins the EU

Croatia joined the EU on 1 July 2013 and as a consequence, EU-wide brand protection measures now include Croatia.

CTMs filed on or after 1 July 2013 will cover Croatia as well as the other EU Member States. CTMs filed on or before 30 June 2013 are ‘grandfathered’ (i.e. they are automatically extended to cover Croatia). There is no need for rights owners to do anything.

Rights holders can now apply for Customs actions against counterfeit goods in Croatia. Parties wishing to do this can either file a National Application for Action with the Croatian customs authorities or file a single Community Application for Action with the designated customs department in their Member States, remembering to include Croatia on the list of countries in which they wish customs action to be taken.

New Customs Regulation (EC No. 608/2013)

From 1 January 2014 the new EU Customs Regulation (replacing regulation EC No. 1383/2003) will have direct effect across member states.

The new regulation should simplify aspects of the customs enforcement proceedings for rights holders:

  • The currently optional ‘simplified procedure’ for destruction of goods without a court order under certain circumstances will now be compulsory in all member states.
  • Rights holders will be able to opt in to an expedited procedure for the destruction of small postal consignments. Opting in will give customs authorities the power to destroy these small consignments without the need for rights holders to provide consent.

These articles are part of the BrandWrites Newsletter for November 2013



Nick Aries

Nick Aries

United States

Call me on: +1 415 231 6568