Trdmk Prac & Fms V1 Cont

TRADEMARK PRACTICE & FORMS

Stephan Kinsella Teresa C. Tucker Co-Editors

Volume 1

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This publication was created to provide you with accurate and authoritative information concerning the subject matter covered; however, this publication was not neces- sarily prepared by persons licensed to practice law in a particular jurisdiction. The publisher is not engaged in rendering legal or other professional advice and this publication is not a substitute for the advice of an attorney. If you require legal or other expert advice, you should seek the services of a competent attorney or other professional.

http://www.pbookshop.com Introduction

With the increasing globalization of commerce, more and more companies are seeking worldwide protection of their trademark and other intellectual property rights. Unfortunately, the complexity and diversity of trademark laws and systems worldwide can make obtaining global trademark protection a daunting task. For example, when providing the ling instructions and documents to submit applications in countries worldwide, private practitioners and law department personnel need to know the ling requirements and have the necessary documents immediately available. However, the nuances of local laws, rules, and practices of foreign jurisdictions are not always known to practitioners. Local agents are therefore often instructed without complete information, which inevitably results in undesirable delays. Some attorneys have to request the ling requirements and documents from sources around the world, and then wait days or weeks for replies. Once the response is received, there is often need to decipher the advice and explana- tions and request clarication of some points. This can give rise to further delay, causing clients to be frustrated and dissatised. Other problems often arise when trademark practitioners have to sift through instructions, advisory notications, and registration requirements for dozens of countries, each of which may be dierent than the others. Trademark Practice & Forms seeks to be a valuable guide for attorneys and paralegals in both corporate law departments and private practice who prosecute trademarks in multiple jurisdictions. In this treatise, the substantive and procedural requirements and the most common forms for initial registration in each country are presented in a single booklet. Thehttp://www.pbookshop.com materials are organized in easily readable text that allows the reader to comprehend quickly the distinctions, as well as the similarities, between dierent jurisdictions. Often subtle, these distinctions are nevertheless signicant and can create expensive surprises for the unaware. The meaning of a word or the availability of a procedure can make a dierence even at the initial ling stage. When working across borders, law and practice cannot always be summed up by ‘‘yes’’ or ‘‘no’’. By reviewing a country’s requirements before ling or instructing local agents, the attorney can anticipate requirements that may need to be assembled prior to instructing an application for the sake of eciency, and also will be able to appreciate how to best protect trademark rights in that country. The goal of Trademark Practice & Forms is therefore to present continually updated and practical information on the topic of international trademark law in a convenient, single source and format.

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Scope of Coverage This treatise provides an ever-growing and continually updated set of international trademark materials and forms, designed to increase the eciency of multi-jurisdictional lings and the quality of service provided to the client. Each chapter provides basic information concerning the legal procedures and substantive issues for the trademark systems of a given country, prepared by experts in each jurisdiction. Each chapter attempts to follow a common outline, to al- low easy access and updating, with some variation, however, as necessary to account for dierences in or unique features of each country’s trademark system. It is hoped that the information provided herein and the design employed will make trademark lings much more manageable and protable. This publication is specically concerned with trademark protection. To cover the material with sucient depth, it is necessary to leave the discussion of other intellectual property rights to other publications. Thus, for example, the Berne Convention on copyrights is not mentioned among the international treaties. Coverage is limited to the administrative and transactional aspects of trademark law. Appeals, oppositions, and infringement actions worldwide, for example, are not covered in detail, as an adequate treatment of these important topics would require one or more treatises dedicated to these topics. In addition to providing country-oriented booklets, the Treatise includes sections covering complementary topics, such as regional trademark systems (e.g., the European Community Trademark chapter) and an overview of International Trademark Protection. Also provided is the chapter Trademark Law and the Internet, which discusses domain-name disputes and related matters. It is expected that further chaptershttp://www.pbookshop.com on complementary topics of interest to the practitioner will be added from time to time. Conclusion This Treatise is a work-in-progress. I and the publisher seek to continually improve it, with the input of its users. We invite you to share your input, suggestions, and criticisms, and it is our hope that you will nd this publication to be a useful practice tool for trademark practice in multiple jurisdictions. Editors Stephan Kinsella Applied Optoelectronics, Inc. Houston, Texas November 2009 iv Guidelines and Conventions

The Contents This is not a book that should be read from cover to cover. Rather, the organization and format is designed as a desktop guidebook to trademark laws, with ‘‘easy access’’ as a primary goal. Thus, if the issue is the choice of a mark, one may refer to the Registration Require- ments section for the relevant jurisdiction. If one needs to know the process, time involved, and estimated government charges, he would refer to the Initial Registration section. The sections containing forms may be used if one needs to instruct an agent to submit an application or other document. A goal of this reference is to achieve consistency in organization from country to country and treaty to treaty. The same material is generally covered in the same section in each country chapter. To keep duplication to a minimum, cross-references have been added where feasible to increase ease of use. Each country chapter will generally contain most of the sections described below.

Overview: Policies and Trends A very brief picture of the country’s regulatory and economic climate is provided to give the user a context within which to view the country’s trademark law. This information indicates whether protection of intellectual property rights is obtained with ease or diculty in a particular jurisdiction and whether enforcement of such rights is available. The Future Trends subsection will alert the reader to expected developments in the country and in its trademark laws. http://www.pbookshop.com Overview: The Basics The Basics column rst provides the vital statistics of the country. The remainder of the column oers the reader fast access to specic trademark statistics for the country. It lists the country’s membership in international and regional treaties, the goods and services classication used, the requirements as to home registration, any preference toward the rst user or rst registrant, the duration of protection, and the availability of priority registration.

Overview: Laws, Rules, Regulations The primary resources of a country’s trademark laws and practices are listed in this box. If these resources are easily available, a source for them is indicated here. The reader should also check the section on resources at the end of each country booklet.

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Registration Requirements This section covers the qualications of a mark and of an applicant—in other words the ‘‘what,’’ the ‘‘what not,’’ and the ‘‘who.’’ A more detailed explanation of who can register for a priority date is included in this section.

Trademark Register Assuming a mark and applicant meet the registration requirements, one must still consider whether the mark is suciently distinctive for registration. The more detailed discussion of distinctiveness is placed in the section that describes the country’s trademark register because these two topics are intertwined in the many countries that maintain two-part registries. The requirements of distinctiveness will depend on whether registration is sought in Part A or B of the country’s registry.

Initial Registration This section has three parts: a procedural timeline, a boxed listing of estimated average processing times, and a boxed listing of government fees. The user should refer to this section for the deadlines that occur during the ling process from the time an application is submitted through the issuance of the certicate. Missing a deadline can result in a lapsed or abandoned application, and a country’s registrar may not accept the excuse that the applicant or his agent was relying on a local agent or the registrar to inform him of the status of the application.

Registration Forms This section begins with a preface of the common form requirements and a checklisthttp://www.pbookshop.com of the information that the reader will usually need from the client to le and prosecute the application. The information in the checklist is often the same from country to country, but it should be noted that there are subtle variations. The reader should nd the checklist most useful in determining whether the client has provided complete information. If one is instructing an agent, the checklist should be used to ensure that the agent is supplied with all the information needed. The most commonly used registration forms have been reproduced for the purpose of showing the content and format of the information that must be submitted to the country registries. For most countries, the ling of an application must be accomplished by authorized local agents or attorneys, sometimes in a language other than English. Therefore, these forms are intended for illustration only. vi Guidelines and Conventions

Post-Registration The primary focus of this publication is on trademark registration, and therefore this section is a brief summary of the requirements for renewal, cancellation, rectication, restoration, assignments, and licensing. Illustrative forms follow the summary.

Resources This section includes links and contact information for government agencies, publications, and web sites that oer information and assistance on trademarks for a particular country.

Appendix: National Classication If a country uses a national classication, it is included in an appendix to the specic country booklet. The International Classication can be found in the International Trademark Protection booklet in the section on the Nice Agreement.

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K 2011 Thomson Reuters/West, 12/2011 vii http://www.pbookshop.com The Conventions

A number of choices have been made to unify the content of this publication in the face of dierences in the customs and practices among countries. As a general matter, American spelling, grammar and other conventions are usually employed. Thus, American spell- ings (e.g., color, not colour) and the American date convention (month/ day/year) are used. Also, by and large, ‘‘trademark’’ is kept as one word, except when referring to the two-word name of a statute, regulation, or rule. Cross-references to material within the same country booklet state the booklet section and subsection where the material is found. For example, Registration Requirements, Who Can Register? refers to the section and subsection within the same country booklet. Cross- references to international and regional treaties are preceded by the name of the book and the booklet, and the specic treaty then follows. For example, Trademark Practice & Forms, International Trademark Protection, Nice Agreement. Editors Stephan Kinsella Applied Optoelectronics, Inc. Houston, Texas November 2009

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K 2011 Thomson Reuters/West, 12/2011 ix http://www.pbookshop.com About the Editors

Stephan Kinsella (www.KinsellaLaw.com) is General Counsel with Applied Optoelectronics, Inc., in Sugar Land, Texas, and Senior Fel- low with the Ludwig von Mises Institute. Before joining AOI, he was a partner in the Intellectual Property Department of Duane Morris LLP. He has taught Computer Law at South Texas College of Law, and is author of numerous books and articles about intellectual property law, international law and other topics. Mr. Kinsella is co-author of International Investment, Political Risk, and Dispute Resolution: A Practitioner’s Guide (Oxford University Press, 2005), and co-editor of Digest of Commercial Laws of the World (Oxford University Press 1998-2011; Thomson Reuters/West 2011-present) and World Online Business Law (Oxford University Press 2003-2011). Kinsella is founder and editor of Libertarian Papers, co-editor of Property, Freedom, and Society: Essays in Honor of Hans-Hermann Hoppe (Mises Institute, 2009). His book The Ethics of Action: Fundamentals of Libertarian Legal Theory is forthcoming in 2010. He received an LL.M. in international business law from King’s College London— University of London, his JD from the Louisiana State University Law Center, and MSEE and BSEE degrees from Louisiana State University.

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K 2011 Thomson Reuters/West, 12/2011 xi http://www.pbookshop.com Contributor Directory

SPECIAL TOPIC CHAPTERS

International Trademark Protection

John A. Tang, Esq. Tel: 713-951-5623 Strasburger & Price, LLP Fax: 713-951-5660 1401 McKinney Street, Suite E-mail: 2200 [email protected] Houston, Texas 770102 [email protected] United States Web: www.strasburger.com

John A. Tang is a partner in the intellectual property practice group of Strasburger & Price in Houston, TX. Mr. Tang prepares and prosecutes patent applications in computer hardware and software, telecommunications systems, electronics, semiconductor fabrications and mechanical technologies. He also prepares and prosecutes business method patents in the nancial and insurance industries. His practice also includes trademark prosecution, trademark clearance opinions, and counseling on licensing and trademark rights in cyberspace. In addition, he represents clients in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Oce (PTO). Mr. Tang is a former trademark examining attorney and patent examiner with the PTO. He received his B.S. in electrical engineering from Texas A&M University, his M.S. in electrical engineering from Southern Method- ist University andhttp://www.pbookshop.com his J.D. from South Texas College of Law. He is admitted before the State Bars of Florida and Texas and is registered to practice before the U.S. Patent and Trademark Oce. Strasburger & Price, LLP is a full-service law rm with oces in Austin, Collin County, Dallas, Houston, and San Antonio, Texas, Washington, D.C., and, through Strasburger & Price, S.C., Mexico City. Strasburger serves as a trusted adviser to publicly and privately held companies, entrepreneurs, governmental entities and individuals. Our attorneys represent a variety of companies including start up, middle market and international corporations. For more information about Strasburger, please visit www.Strasburger.com.

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Trademark Law and the Internet

Jennifer L. Fessler, Esq. Tel: 603-668-6560 Grossman Tucker Perreault & Fax: 603-668-2970 Peger E-mail: [email protected] 55 South Commercial Street Web: www.gtpp.com Manchester, NH 03101

Jennifer L. Fessler is an associate of Grossman Tucker Perreault & Peger, PLLC in Manchester, NH. Jennifer focuses her intellectual property practice on domestic and international trademark and copyright matters. In particular, Jennifer has experience in the selection, clearance, and adoption of trademarks, as well as the prosecution of trademark and copyright applications, in the United States and throughout the world. Jennifer also provides counseling on a wide range of trademark and copyright related matters, such as licensing and enforcement as well as defending against accused infringement and settlement negotiations. Jennifer also focuses her practice on the overlap between the Internet and intellectual property, with special emphasis on domain name registrations and transfers, domain name disputes, cybersquatting, online copyright and brand identity disputes, and trademark use in virtual worlds. Jennifer received her J.D. in 2006 from Southern New England School of Law, where she served as a Law Review Editor. She went on to receive her Master of Laws in Intellectual Property degree in 2007 from Franklin Pierce Law Center. She is a member of the Connecticut and U.S. Supreme Court Bars. Jennifer was a contributor to an Amicus Brief submitted to the U.S. Supreme Court forhttp://www.pbookshop.com an Intellectual Property case heard before the Court in 2008, is a frequent guest speaker on trademark topics and has authored a number of professional articles concerning trademark and copyright matters.

Protecting Trademarks Worldwide: International Trademark Filing Strategies

Gary B. Chapman, Ph.D., J.D. Tel: (303) 499-8080 or (800) Greenlee, Winner and Sullivan, 670-7865 P.C. Fax: (303) 499-8089 Intellectual Property Law Web: http://www.greenwin.com 4875 Pearl East Circle, Suite 200 Email: [email protected] Boulder, CO 80301

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Gary B. Chapman is an associate in the intellectual property law rm of Greenlee, Winner and Sullivan, P.C. Dr. Chapman is a registered patent attorney who has been involved in a broad range of complex patent and trademark matters. His practice includes patent and trademark ling, prosecution and counseling clients in strategic business planning regarding intellectual property matters and in drafting license and related trademark agreements as well as conducting land- scape assessments and freedom to operate opinions. In addition, Dr. Chapman has experience representing clients at the Trademark Trial and Appeal Board. He received his doctorate and Master’s degree in Biophysics from the University of Rochester and his undergraduate degree in Medical Biophysics from the University of Western Ontario. Dr. Chapman has particular expertise in biomedical research with applications related to medical instrumentation and imaging, drug and biological therapeutics, and computational modeling of complex biological systems.

COUNTRY CHAPTERS

Algeria

Dahmène Touchent Tel: 01-48-33-11-51 Lawyer, Manager of Lexalgeria, Mobile: 06-70-83-34-62 Legal Portal of Algerian Law E-mail: [email protected] 32, Coursive Georges Méliès Web: 93300 Aubervilliers, France www.multimania.com/lexalgeria

Dahmène Touchent manages the Algerian legal website LexAlgeria www.multimania.http://www.pbookshop.com com/lexalgeria. He received his Diplôme d'études supérieures from the Financial National Institute, Algiers, his master of laws degree from the Paris XIII University, and took the legal higher studies in export law program from Paris V University. He teaches law to rst-year and upper-class students at Claude Bernard institute (Paris), University of Paris XIII and University of Paris XII. He has written articles on the legal systems of Algeria, Morocco, and Tunisia, and articles on a variety of topics including Algerian public law and French labour law.

Argentina

Juan M. Aulmann Tel. (54 11) 4114-1100 Obligado & Cia. Fax (54 11) 4311-5675

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Paraguay 610 E-mail: [email protected] C1057AAH—Buenos Aires www.obligado.com Argentina

Juan Aulmann is a partner at Obligado & Cia. in Buenos Aires, Argentina. He obtained his law degree (J.D.) from Universidad de Buenos Aires. In 2002 he completed a Masters of Law degree (LL.M.) with emphasis on Intellectual Property at Franklin Pierce Law Center, Concord, New Hampshire, in the United States. At the end of the program he interned at the Trademark Department of Colgate- Palmolive Company in New York. At present he specializes in trademark law in Argentina, advising domestic and foreign clients in connection with trademark clearance, prosecution, oppositions, licensing and infringement issues. Founded in 1889 Obligado & Cia. is one of the oldest full service IP law rms in Argentina. The rm practices all aspects of patent, trademark and copyright law focusing on counseling, prosecution and litigation. Furthermore, the rm’s attorneys are experienced in portfolio management, dispute resolution and mediation services in the intellectual property eld. Obligado & Cia. and its attorneys are members of INTA, AIPPI, LES, ASIPI, FICPI, MARQUES and ECTA.

Armenia

Taras Kulbaba Tel: +32 2 688 33 15 PETOSˇEVIC Fax: +32 2 688 33 16 6 Raymond Hyelaan E-mail: 3090 Overijse [email protected] BELGIUM www.petosevic.com http://www.pbookshop.com Mr. Taras Kulbaba is an associate in the PETOSˇEVIC Brussels oce. His duties include prosecution and enforcement of trademarks and industrial designs. He is a contributor for the International Trademark Association’s Trademark Reporter, for which he prepared trademark case summaries of relevant and recent trademark decisions in Ukraine. Taras can be reached at [email protected] With over 80 people in 14 oces, PETOSˇEVIC provides a full range of intellectual property services in Eastern Europe, including Albania, Bosnia, Bulgaria, Romania, Serbia, Montenegro, Kosovo, Slovenia, Croatia, Macedonia and Ukraine. The rm also has Client Service Of- ces in Belgium and Luxembourg and a Liaison Oce in New York. PETOSˇEVIC’s practice includes: creating strategies for protecting, managing and enforcing IP portfolios; conducting trademark and patent searches; trademark, patent, copyright and other IP litigation; xvi Contributor Directory assignments, licensing and other IP agreements; anti-counterfeiting and anti-piracy enforcement; unfair competition, false advertising and trade dress cases; domain name registration and renewals; monitor- ing trademark rights on the Internet; research and investigation and translation of intellectual property documents.

Australia

Colin Oberin Tel.: 61 3 9613 8880 Allens Arthur Robinson Fax: 61 3 9613 8779 530 Collins Street E-mail: [email protected] Melbourne VIC 3000 Web: www.aar.com.au Australia

Colin Oberin is a Consultant (of Counsel) and a former partner of Al- lens Arthur Robinson Patent & Trade Marks Attorneys. He has more than 35 years experience in Intellectual Property. Colin is a registered patent attorney in Australia and New Zealand, a registered trade marks attorney in Australia, and a Chartered Chemist and has acted for a variety of Australian and international clients and associates predominantly in the areas of trademarks, chemical patents, general mechanical patents and industrial designs. Colin is a former Councilor and member of the Trade Marks Commit- tee of the Asian Patent Attorneys Association (APAA), as well as a long standing former member of the Trade Marks Committee of the Institute of Patent and Trade. Mark Attorneys of Australia (IPTA). He is an Emeritus member of the International Federation of Industrial Property Attorneys (FICPI), a Fellow of the Institute of Patent and Trade Mark Attorneys of Australia (FIPTA)http://www.pbookshop.com and has been a regular attendee at meetings of the International Trademark Association (INTA). Allens Arthur Robinson is one of Australia’s leading law rms and has a particularly strong IP presence having been named Australian IP Firm of the year 2009 (Managing Intellectual Property); Leading Australian IP Firm 2009 (Chambers Global: the World’s Leading Lawyers); Leading Australian Patent Litigation Firm, Trademark Lit- igation Firm and Copyright Firm 2009 (Managing Intellectual Prop- erty) Leading Australian IP Firm 2008 (Asia Pacic Legal 500) and Leading Australian IP Firm 2008 (PLC Which Lawyer? Yearbook).

Austria

Katrin Hanschitz Tel: +43 1 53 53 721

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Robert König Fax: +43 1 533 15 15 ORTNER PÖCH FORAMITTI E-mail: o[email protected] Rechtsanwälte GmbH Web: www.opf.at Strauchgasse 1-3 1010 Vienna Austria

Katrin Hanschitz is a partner of ORTNER PÖCH FORAMITTI Rechtsanwälte GmbH in Vienna, Austria and has experience in a broad range of intellectual property and unfair competition issues, including acquisition and enforcement of trademarks, licensing and litigation practice. She has co-authored a number of articles with the European Intellectual Property Review. Robert König is an associate of ORTNER PÖCH FORAMITTI Rechtsanwälte GmbH. His practice includes trademark registration and enforcement as well as counseling on various intellectual property issues, with a special focus on product piracy and prosecution. ORTNER PÖCH FORAMITTI Rechtsanwälte GmbH is a medium-size internationally oriented independent law rm specializing in nance transactions (in their broadest sense), corporate law, intellectual property law, cartel and unfair competition law, the implementation of EU law in Austria as well as state aid and procurement law. In the area of intellectual property law, the rm’s practice focuses on trademark and copyright law, media and entertainment law, IT and communications law, unfair competition law and e-commerce. Typical clients in this eld are large Austrian and international businesses as well as international advertising and marketing companies. Due to its specialization and its knowledge of the commercial and technical background of thehttp://www.pbookshop.com clients’ business, the rm is able to assist its clients in a most ecient and skillful way, be it the protection of clients’ intellectual property rights, comprehensive advice in all areas for the formation of a company in Austria or the structuring of a complex cross-border transaction. A number of partners act as arbitrators under ICC rules, the rules of the International Arbitral Centre of the Austrian Federal Economic Chamber and in ad-hoc arbitrations.

Bahrain

Abbas Al Radhi Tel: + 973 530 077 Partner Fax: + 973 530 088 Gulf Trade Mark Services E-mail: [email protected] P.O. Box 787, Manama Web: www.gtmsbahrain.com xviii Contributor Directory

Kingdom of Bahrain

Gulf Trade Mark Services, an associate rm of BDO Jawad Habib, specializes in the registration of Trade Marks, Patents, Designs and related services. Our main oce is situated in Bahrain, where we have centralized our Intellectual Property operations. In addition to Bahrain, through joint venture agreements in each host country, we are able to deal with all Intellectual Property matters in Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. Abbas Al Radhi received an MBA in Financing and Business Law from the University of Maine in the USA. He has an MSB in Account- ing from Husson College in Maine, USA, and a BSc. in Accounting from the University of Kuwait. He is a CPA and a CBM25 with 25 years of experience.

Benelux

Antonietta Arcuri Tel: (32 2) 652 16 00 Manager-Trademark & Design Fax: (32 2) 652 19 00 Department E-mail: Oce Kirkpatrick info@oce-kirkpatrick.com Patent & Trademark Attorneys Europe—Benelux Avenue Wolfers, 32 B-1310 La Hulpe Brussels, Belgium

Antonietta Arcuri is a qualied Benelux and European Trademark and Design Attorney.http://www.pbookshop.com Antonietta is currently manager of the Trademark and Design Department of Kirkpatrick (Belgium). With 15 years of experience in all aspects of trademark and design law, she manages trademark portfolios for some major Belgian companies as well as for clients from all over the world. Her practice includes advise in the elds of trademark protection, trademark searching, strategic trademark management and trademark infringement. Antonietta is also a committee member of the INTA (Trademark Administrators Committee) and of the BMM (Benelux Association for trademark attorneys). Founded in Brussels, Belgium in 1852, Kirkpatrick is one of the oldest intellectual property rms in Europe. The rm has gradually extended the scope of its activities to oer a range of tailor-made services covering all intellectual property elds such as patents, supple- mentary protection certicates, trademarks, designs, copyrights,

K 2011 Thomson Reuters/West, 12/2011 xix Trademark Practice & Forms domain names, licences and technical and legal translation. Its professional team consists of 40 people of which half are Patent and Trademark attorneys authorised to act before the Belgian and Dutch Industrial Property Oces, the Benelux Trademark Bureau, the European Patent Oce, the Oce for Harmonization in the Internal Market and the World Intellectual Property Organization, on behalf of their Belgian and foreign clients, SMEs or multinationals. The rm also operates in other regions of the world through a network of associates who are carefully chosen and controlled. In 2004, Kirkpatrick became the rst Belgian Intellectual Property rm to be awarded ISO 9001:2000.

Bermuda

Donna Pilgrim Tel: (441) 295 1422 Conyers Dill & Pearman Fax: (441) 292 4720 Barristers & Attorneys E-mail: donna.pilgrim@ Clarendon House, 2 Church conyeradillandpearman.com Street Web: Hamilton HN 11, Bermuda www.conyersdillandpearman.com

Donna Pilgrim graduated from the University of Essex in 1987. She attended Guildford Law School and was admitted to practice as a so- licitor in England & Wales in 1991, Hong Kong in 1992 and as an attorney in Bermuda in 2000. Donna obtained her Masters in Law in Intellectual Property from Hong Kong University in 1994. Before joining Conyers Dill & Pearman’s Intellectual Property group in 1997, Donna was an associate in the intellectual property departments of Robin Bridge & John Liu and later Deacons, Hong Kong, concentrat- ing primarily on High Court enforcement actions. Her practice now involves all aspects of the protection and enforcement of intellectual property, including prosecuting trademark applications, opposition and cancellationhttp://www.pbookshop.com proceedings conducted in the Registry and in the Courts, and licensing. Donna has contributed articles to EIPR, and wrote the Hong Kong chapter for International Intellectual Property Law Global Jurisdictions published by Wiley and the Bermuda chapter for World Intellectual Property Rights & Remedies published by Oceana for the Center for International Legal Studies. Conyers Dill & Pearman is the largest international oshore law rm. It was founded in 1928 with the merger of two practices, and now has a complement of over 600 sta, including more than 150 lawyers. It is headquartered in Bermuda with operations in Anguilla, British Virgin Islands, Cayman Islands, Dubai, Hong Kong, London, Mauritius, Moscow, Sao Paulo and Singapore. The rm is a multidiscipline practice, advising on all aspects of company/commercial law, shipping, real property, litigation, private client and trust law in addition to intellectual property. xx Contributor Directory

Brazil

José Carlos Tinoco Soares Júnior Tel: +55-11-5084.5330 Tinoco Soares & Filho S/C Ltda. Fax: +55-11-5084.5334 Av. Indianopolis, 995 E-mail: [email protected] São Paulo-SP-04063-001 Web: www.tinoco.com.br P.O. Box, 2737—01060-970 São Paulo, Brazil

José Carlos Tinoco Soares Júnior is a partner with Tinoco Soares & Filho s/c Ltda. Education: University Ibero-American of São Paulo (system analyst degree); University Paulista of São Paulo (Law degree). Registered Patent and Trademark Agent. Member: ABPI; ASIPI; AIPPI; INTA; LES. Languages: Portuguese, English and Spanish. Practice Areas: Patents & Trademarks. Established in 1989, the rm specializes in all intellectual property matters, including trademarks, patents, copyrights, licensing, franchising, unfair competition and litigation. Our founder, Dr. Tinoco, has been working in this eld for more than sixty years. He has written several books, among them Unfair Competition, Royalties, Com- ments to our Current Law, Trade Dress, Treatise of Trademarks, and Treatise of Patents. The rm has a strong reputation in litigation for domestic and international clients. The rm currently has several lawyers, technicians, patent attorneys, draftsmen and support personnel adding up to 60 professionals.

Brunei Darussalam

Dr. Colin Ong Legal Services Tel: (673)(02) 420913 Advocates & Solicitorshttp://www.pbookshop.com Fax: (673)(02) 420911 Suites 2-2 to 2-5, E-mail: [email protected]; Gadong Properties Centre [email protected] Km 3-6, Jalan Gadong Web: www.dcls.intranets.com Bandar Seri Begawan BE 4119 Negara Brunei Darussalam

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The rm is aliated to the London Barristers Chambers of Essex Court Chambers (www. essexcourt-chambers.law.co.uk); 3 Verulam Buildings (www.3verulam.co.uk) and Dr. Colin Ong is a foreign consultant to several Singapore law rms including that of Khattar Wong & Partners (www.khattarwong.com). The law rm’s main focus is on banking, insurance, construction law, cross border litigation, arbitration, company law, conict of laws, oil and gas, project nance; business reconstructions and all aspects of Intellectual Property Law including enforcement work as well as trademark oppositions. It has both the experience and knowledge to provide expert legal advice in the areas of ling trademarks, patents, copyright, IP infringement litigation, matters dealing with unfair competition and other related matters. The rm’s multilingual lawyers also conduct negotiation and drafting of licensing, distribution and franchise agreements. The rm’s clients range from small trading companies to large multinational corporations and have been involved in major trademark work. The rm is a member of ASEAN Intellectual Property Law Associa- tion and members of the rm are also members of the multinational ASEAN Law Association. The rm strives hard to provide services that are tailored to each client’s particular needs and also in keeping legal costs to a minimum.

Republic of Bulgaria

Iliana Panayotova E-mail: Senior Associate [email protected] ‘‘Law Firm Georgieva panayotova[email protected] and Georgiev’’ Web: www.legaideas.eu 1A ‘‘Kaimakchalan’’ Str., . 3, apt. 14 Soa 1505, Bulgariahttp://www.pbookshop.com

Iliana also participated actively in the annual meeting organized by the International Trademark association (INTA) in Boston, USA; the seminar of ASIPI ‘‘Trade Mark Protection in Europe and America: Coincidences and discrepancies’’ in Barcelona, Spain and INTA Europe Trademark Workshop in Brussels. Law Firm Georgieva and Georgiev is a permanent member of INTA and participates in dierent events organized by various associations in the IP eld. The company also provides legal services in the following areas: competition law, commercial law, foreign investments, employment law, procedural representation, executive procedings, alternative methods for resolving disputed, legal representation and marriage agreements. Law Firm Georgieva and Georgiev is created to provide high-quality legal services in the Bulgarian market, protecting the rights and interests of Bulgarian and foreign clients here and aiming for the incorporation and development of a successful business within the country.

Cambodia

Tilleke & Gibbins Tel: +66 2653 5555 Supalai Grand Tower, Fax: +66 2653 5678 26th Floor, E-mail: 1011, Rama 3 Road [email protected] Chongnonsi, Yannawa Web: www.tillekeandgibbins.com Bangkok 10120 Thailand

K 2011 Thomson Reuters/West, 12/2011 xxiii Trademark Practice & Forms the Department of Intellectual Property and is a certied patent agent. She also received a certicate for completing the SEAD Course on Drafting Patent Specications conducted by the Federation Internationale des Conseils en Propriete Industrielle. Since 1990, Mrs. Vachanavuttivong has been responsible for Tilleke & Gibbins’ trade mark registration practice. In 2001, she became the managing director of the rm’s intellectual property registration operations, assuming responsibility also for the rm’s patent registration practice and the intellectual property registration operations for Vietnam, Cambodia, Laos and Myanmar. In 2005, she was given charge of the rm’s entire intellectual property practice. Mrs. Vachanavuttivong is currently the President of the Intellectual Property Association of Thailand in addition to being a Director of the Association. She is a frequent speaker and has authored numerous articles on intellectual property topics.

Canada

Sheldon Burshtein Tel.: 416-863-2934 Blake, Cassels & Graydon LLP Fax: 416-863-2653 Barristers & Solicitors and E-mail: [email protected] Patent & Trade-mark Agents Web: www.blakes.com Box 25, Commerce Court West Toronto, Ontario Canada, M5L 1A9

Canadian Oces: Toronto, Ontario; Montreal, Quebec; Ottawa, Ontario; Calgary, Alberta; and Vancouver, British Columbia. Foreign Oces: New York, New York; Chicago, Illinois; London, England; Beijinghttp://www.pbookshop.com and Shanghai (associated), China; Bahrain; Al- Khobar, Saudi Arabia. Sheldon Burshtein is a Partner of Blake, Cassels & Graydon LLP. He practises in the Toronto oce as a member of the Intellectual Prop- erty, Information Technology, Life Sciences, Sports & Entertainment, Franchising, and Alternative Dispute Resolution Groups. Qualications. Sheldon received his B. (Civ.) Eng. from McGill University and is a registered professional engineer in the province of Ontario. He also has two law degrees, his civil law B.C.L. and his common law LL.B., from McGill University. Sheldon is a member of The Law Society of Upper Canada and has been certied by The Law Society of Upper Canada (Province of Ontario) as a specialist in intellectual property (patent, trade-mark and copyright) law. He is registered as a patent agent and as a trade-mark agent in Canada. xxiv Contributor Directory

He is also registered to practise before the United States Patent and Trademark Oce on behalf of Canadian applicants. Sheldon is a certied licensing professional. Practice. Sheldon’s work includes the clearance, prosecution, acquisition, enforcement and exploitation of patents, trade-marks, copyright, industrial designs and other forms of intellectual property. His practice emphasizes commercial transactions involving intellectual property and information technology, such as licensing and other transactions involving pharmaceuticals and life sciences, electronic commerce, and other technologies, as well as franchising. He is signicantly involved in counselling on intellectual property matters. Leader. Sheldon is a leader of the Intellectual Property and Technol- ogy Bar. Law Business Research’s The International Who’s Who of Pa- tent Lawyers identied him as ‘‘the most frequently named Canadian’’ patent lawyer and The International Who’s Who of Trademark Lawyers consistently ranks Sheldon among the 10 top trade-mark lawyers in the world. Managing Intellectual Property has referred to him as ‘‘the foremost copyright expert in Canada.’’ PLC Cross-border Intellectual Property Handbook has selected him as the leading commercial intellectual property lawyer in Canada. The International Who’s Who of Business Lawyers refers to him as an ‘‘excellent attorney’’ and a ‘‘leader in his eld.’’ Canadian Recognition. Sheldon has been continuously listed in The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Can- ada from inception. He has been continuously rated among the most frequently recommended lawyers for ‘‘Intellectual Property’’ in The Canadian Legal Lexpert Directory from inception, and is also recognized in the ‘‘Computer and Information Technology’’ and ‘‘Technology’’ categories. He has been continuously listed in The Best Lawyers in Canada in the ‘‘Intellectual Property’’ and ‘‘Technology’’ categories since inception. Sheldon was named in the Who’s Who Legal: Canadahttp://www.pbookshop.com 2010 special report for both ‘‘Patents’’ and ‘‘Trademarks.’’ He is also referenced in the Canadian Who’s Who.He has received a Special Recognition of Achievement Award from the Intellectual Property Institute of Canada. International Recognition. Sheldon has been continuously ranked for ‘‘Intellectual Property’’ by Chambers Global: The World’s Leading Lawyers for Business since inception. He has been named in Law Business Research’s The International Who’s Who of Business Lawyers and in both its ‘‘Patent’’ and ‘‘Trademark’’ categories. He has been honoured as an ‘‘Intellectual Property Luminary’’ by the publishers of Patent World, Trademark World and Copyright World. Sheldon has been selected by Mondaq as one of the ‘‘World’s Leading Intellectual Property Lawyers.’’ He was named an ‘‘Expert’s Expert’’ by World Trademark Review. He has been ranked as one of the leading ‘‘Intel- lectual Property’’ experts in the PLC Cross-border Intellectual Prop-

K 2011 Thomson Reuters/West, 12/2011 xxv Trademark Practice & Forms erty Handbook since inception. Sheldon has been referenced in the European Counsel Life Sciences Specialist 500 of the ‘‘Top-Ranking Life Sciences Lawyers Worldwide.’’ He has been continuously named by Practical Law Company among the leading ‘‘Life Sciences Lawyers’’ since inception. He has been ranked by Practical Law Company as one of the leading ‘‘E-Commerce and Information Technology Lawyers.’’ He has been named in the ‘‘Global Counsel Lawyer Super Leagues.’’ Sheldon has been selected by Practical Law Company as one of the world’s leading intellectual property lawyers. He is listed in PLC Which Lawyer? in Canada for multiple categories. Sheldon is ranked in the Intellectual Asset Management Licensing 250 as one of ‘‘The World’s Leading Patent and Technology Licensing Lawyers.’’ Trade-marks. Sheldon represents numerous clients in brand counselling and the protection, licensing and enforcement of trade-mark, trade dress and trade name rights, as well as in domain name issues. He has authored a multiple-volume book and coauthored two other books on trade-mark law. He has been consistently chosen one of the ‘‘World’s Leading Trademark Law Experts’’ by Managing Intellectual Property since inception. Sheldon was named an ‘‘Experts’ Expert’’ by World Trademark Review. He has been selected one of the ‘‘World’s Top 50 Trade Mark Law Practitioners’’ and the ‘‘Worldwide Leading 25 Trade-mark Experts’’ by Managing Intellectual Property. He has consistently been selected as one of the ‘‘Most Highly Regarded Individuals Global - Trademarks’’ in The International Who’s Who of Trade Mark Lawyers published by Law Business Research. He has consistently been selected one of the world’s top 10 trade-mark lawyers by that publication. Domain Names. Sheldon advises numerous clients on domain name strategy, transactions and proceedings. He led a Blakes team in the structuring and set up of the ‘‘.ca’’ domain name registry. Sheldon has authored a multiple-volume book on Internet trademark and domain name law. He hashttp://www.pbookshop.com been ranked by Practical Law Company as one of the leading ‘‘E-Commerce and Information Technology Lawyers.’’ Sheldon has been named in the PLC Cross-border Information and E-Commerce Handbook and was selected in PLC Which Lawyer? Yearbook in the category of ‘‘IT and E-commerce.’’ Patents. Sheldon acts for numerous businesses in various industries in the management, prosecution, licensing and enforcement of patent rights. He has authored a book on Canadian patent law. He has been consistently chosen one of the ‘‘World’s Leading Patent Experts’’ by Managing Intellectual Property since inception. Sheldon has been consistently recognized in The International Who’s Who of Patent Lawyers by Law Business Research since inception, and has been identied as the most frequently named Canadian. Sheldon received the Marie F. Morency Memorial Prize awarded by the Intellectual Property Institute of Canada for the highest national standing in the patent xxvi Contributor Directory agents drafting examination. Copyright. Sheldon has represented major newspaper, magazine and book publishers, major recording companies, a major television network and others on copyright protection, transaction and enforcement issues. He has co-authored a book on Canadian copyright law and has also been involved in drafting sections of the Copyright Act. He has been consistently selected in the Managing Intellectual Prop- erty surveys as one of the ‘‘World’s Leading Copyright Law Experts’’ since the rst survey to date. He was referred to as ‘‘the foremost copyright expert in Canada.’’ Licensing, Technology Transfer, Franchising and Transactions. Sheldon was among the rst group of individuals to be designated a ‘‘certied licensing professional.’’ He has acted in the licensing of various types of intellectual properties in virtually every industry, and represents major clients in connection with technology and other licensing, franchising and merchandising programs. Sheldon has been involved in transactions involving some of the most valuable Canadian and international intellectual properties. He has been selected by PLC Cross-border Intellectual Property Handbook as the leading commercial intellectual property lawyer in Canada and has been selected in Intellectual Asset Management’s ‘‘Licensing 250 - The World’s Leading Patent and Technology Licensing Lawyers.’’ He has authored chapters in several books on licensing and on intellectual property and information technology in commercial transactions. Sheldon authors a monthly column on ‘‘Licensing Fundamentals’’ in World Intellectual Property Report. Sheldon has received an Achieve- ment Award from the Licensing Executives Society USA/Canada. Pharmaceuticals and Life Sciences. Sheldon acts for a number of major international and domestic pharmaceutical companies and has served as a director of one of Canada’s largest pharmaceutical companies. He has been referenced in the European Counsel Life Sci- ences Specialisthttp://www.pbookshop.com 500 of the ‘‘Top-Ranking Life Sciences Lawyers Worldwide.’’ He has been ranked by Practical Law Company among the leading ‘‘Life Sciences Lawyers’’ since inception. Sheldon has been selected in the PLC Global Counsel Life Sciences Handbook and the PLC Cross-border Life Sciences Handbook since inception. He is recommended by PLC Which Lawyer? Yearbook in the category of ‘‘Life Sciences-Intellectual Property.’’ He has written a regular column in Pharmaceuticals Canada. Internet, E-commerce, Information Technology and Communications. Sheldon acts for a number of leading Internet e-commerce, information and technology based companies and advises other businesses on those issues, including social media. For example, he led a Blakes team in the structuring and set up of the ‘‘.ca’’ domain name registry. Sheldon has authored a multiple-volume book on Internet trademark and domain name law. He has been selected in

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Law Business Research’s The International Who’s Who of Internet, e-Commerce and Data Protection Lawyers. He has been ranked by Practical Law Company as one of the leading ‘‘E-Commerce and Infor- mation Technology Lawyers’’. Sheldon was selected by Practical Law Company as an ‘‘Expert in Communications Law.’’ He has been named in the PLC Cross-Border Communications Handbook, the PLC Com- munications Industry Report and the PLC Cross-Border Information Technology and E-Commerce Handbook. He was selected in the PLC Which Lawyer? in the category of ‘‘IT and E-commerce’’. He has also been chosen one of the ‘‘Personalities in Canadian Technology’’. Sports and Entertainment. Sheldon is active on behalf of numerous clients in the sports and entertainment industry. For example, he has acted for newspaper and magazine publishers, a television network and major recording companies. Sheldon has acted for most of the major North American professional sports leagues, as well as a leading sanctioning body. Alternative Dispute Resolution. Sheldon serves as an arbitrator and as a mediator. He is a member of the panel of IP Neutrals of Can- ada and the Canadian Panel of Neutrals for the International Trademark Association. He is also a member of the panel of the Intel- lectual Property Division of National Arbitration and Mediation and the panel of the Alternative Dispute Resolution Center. Sheldon has authored a book on domain name arbitration. Books and Articles. Sheldon is an author of several books on Cana- dian intellectual property law, such as The Corporate Counsel Guide to Intellectual Property Law (Canada Law Book), Patent Your Own Invention (International Self Counsel Press) and the multiple-volume The Law of Domain Names and Trade-marks on the Internet (Carswell). He has co-authored a book on international trade-mark law and has contributed chapters to numerous domestic and international books on trade-marks, copyright, other intellectual property, licensing, merchandising,http://www.pbookshop.com intellectual property in commercial transactions, intellectual property disputes, electronic commerce, as well as pharmaceuticals and biotechnology. Sheldon is the author of hundreds of articles and papers on intellectual property and technology topics. He has authored regular columns in various publications. He has also spoken often in these areas. Teaching. Sheldon lectures annually at the McGill University/ Intellectual Property Institute of Canada trade-mark course. He is a member of the faculty in the Osgoode Hall Law School e-commerce LL.M. program and has been a lecturer in the Osgoode Hall Intel- lectual Property LL.M. program and the Osgoode Hall Intensive Program in Business Law. Organizations. Sheldon is a member of many professional organizations in the legal, intellectual property and engineering elds and has xxviii Contributor Directory chaired and sat on numerous committees in organizations such as the American Bar Association, the Canadian Bar Association, the Intel- lectual Property Institute of Canada, the International Association for the Protection of Industrial Property, the International Trademark Association and the Licensing Executives Society. He is a past chair of the Toronto Patent and Trademark Group.

Chile

Francisco J. Silva Tel: (562) 3720440 Silva & Cia. Fax: (562) 3720444 Hendaya 60, 4th Floor E-mail: [email protected] Santiago Web: www.silva.cl Chile

Francisco Javier Silva Dorado is a partner with Silva & Compañia in Santiago, Chile. He obtained his law degree (J.D.) from Catholic University of Chile. In 1993, he completed a Masters in International Law (LL.M.) with emphasis on International Business Law, at Washington College of Law, the American University, Washington, D.C. In 1994, he practiced at Baker & Hostetler in Washington D.C. At present, he chairs the International Department at Silva & Cia., rendering advice to national and multinational clients in the protection of their intellectual property. He is a member of the Chilean Intellectual Property Association (ACHIPI) and an active participating member of various international associations, including the Inter- American Industrial Property Association (ASIPI), the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA), and the European Communities Trademark Association (ECTA). Silva & Cia. practiceshttp://www.pbookshop.com exclusively in the area of Intellectual Property law. We advise clients on every aspect of IP law, including the following: Searching, ling, prosecution and enforcement of trademarks in Chile and worldwide. Searching, drafting, prosecution and enforcement of patent applications in the areas of biotechnology, pharmaceutical, chemistry (both organic and inorganic), electronic, electrical engineering, mechanical engineering, mining, mineral processing, metallurgy, and the like. Legal protection of utility models, and industrial designs. Copyright and Internet Law (domain name registration, domain name search and surveillance and all the services in connection with domain name dispute resolution procedures). Litigation in all these areas; franchising and licensing; antitrust Law; and unfair competition matters. Silva & Cia. and its lawyers are associated with many Intellectual Property organizations, such as the Chilean Bar Association, ACHIPI (Chilean Industrial Property As-

K 2011 Thomson Reuters/West, 12/2011 xxix Trademark Practice & Forms sociation), INTA, AIPPI, FICPI, MARQUES, PTMG ASIPI, AIPLA, and ECTA.

China

John Lee & Cynthia Zhang Tel: 86 10 8532-1919 Lehman, Lee and Xu Fax: 86 10 8532-1999 10-2 Liangmaqiao E-mail: [email protected] Diplomatic Compound Web: www.lehmanlaw.com No. 22 Dongfang East Road Chaoyang District Beijing 100600 P.R. China

Lehman, Lee & Xu, one of the rst private law rms licensed in China in 1992, has grown to be one of the largest Chinese law rms, with of- ces in eight cities. Our International Practice Section provides a full range of services to foreign companies in China and Chinese companies doing business abroad. Our IP expertise is also extensive. The rm has an in-house patent agency, trademark agency, and investigative services division. Our lawyers help coordinate the Intel- lectual Property Rights Committee of the China Foreign Research- based Pharmaceutical Industry Association (FRPIA) as well as the China International Franchise Association (CIFA). We produce a China IP newsletter to keep our clients informed of the latest developments in Chinese IP law and practice. The rm is a member of the International Trademark Association (INTA), International Association for the Protection of Industrial Property (AIPPI), Asian Patent Attorneys Association (APAA), National Association of Patent Practitioners (NAPP), the International Anti-Counterfeitinghttp://www.pbookshop.com Coalition (IACC), the China Anti-Counterfeiting Committee (CACC), Quality Brands Protection Committee (QBPC, China), Computer Law Association (CLA), and Software and Informa- tion Industry Association (SIIA). The rm’s managing partner is Edward Eugene Lehman.

Colombia

Laura Michelsen Tel: (571) 601 9660—621 58110 Andrés Medina Leiva Fax: (571) 611 4209—635 1914 Triana Uribe & Michelsen E-mail: [email protected] Calle 93B No. 12-48 (204) Bogotá Web: www.tumnet.com Republic of Colombia xxx Contributor Directory

Laura Michelsen Niño is a partner of Triana, Uribe & Michelsen, located in Bogotá D.C., Colombia, and directs the Firm’s Industrial Property Department. She handles trademark prosecution, trade slogan registrations, domain names, patent registrations, and all other industrial property matters. She also handles health registrations and its prosecution. She was formerly partner and director of the Industrial Property department of Vernot Abogados, 1993-1995. She practiced as associate and director of the Industrial Property Department in Figueroa, Sierra & Asociados from 1990 to 1993. She received her J.D. in 1993 from the School of Law at Universidad de Los Andes, and is author of the 1993 book Reseña de normas básicas y trámites en Colombia y en Venezuela relativos a la Propiedad Industrial sobre Signos Distintivos (Brief description of basic regulation and procedures in Colombia and Venezuela regarding the Industrial Property of Distinctive Signs). Ms. Michelsen is member of several trademark associations such as the: Colombian Association of Industrial Property (ACPI), Interna- tional Trademark Association (INTA), International Anticounterfeit- ing Coalition (IACC), the Imaging Supplies Coalition (ISC), and the International Association for the Protection of Industrial Property (AIPPI). She is also a member of the list of Conciliators in Industrial and Intellectual Property; the list of secretaries of the arbitration tribunal of the Chamber of Commerce of Bogota and she is part of the Board of Directors of the Colombian Association of Industrial Prop- erty (ACPI). Mr. Andrés Medina Leiva is an associate of Triana, Uribe & Michelsen, in the Industrial Property Department. Mr. Medina drafts and prepares oppositions, administrative remedies to be led before the Trademark Oce and renders legal opinions and counseling over Trademark and Patent matters. He received his J.D. in 2001 from the school of law at Ponticiahttp://www.pbookshop.com Universidad Javeriana, Bogotá.

Costa Rica

Adriana Porras-Elizondo Tel: (506) 234-8204 Castro & Pal Asociados Fax: (506) 234-8337 Yoses Sur, Itan 225 E, 50N, 50E E-mail: [email protected] P.O. BOX 10488-1000 Web: www.castropal.com San José, Costa Rica

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Property Department on all legal aspects of IP. She obtained her law degree (J.D.) from the University of Costa Rica. In 2005 she received a Masters of Law degree (LL.M.) with emphasis on intellectual property at the University of Houston Law Center, in the United States. She is a member of the Congress of Fellows of the Center for International Legal Studies, where she has contributed to publications. She is also a member of the Inter-American Association of Industrial Property (ASIPI) and the Costa Rican Association of Intellectual Prop- erty Professionals (APPICR). Castro & Pal Asociados is one of the few Intellectual Property rms in Costa Rica. Its practice includes ling, prosecuting and litigating patents, trademarks, copyrights and domain names, as well as advising and drafting agreements on IP matters, including trade secrets, licensing and acquisition of IP rights. The client base is composed of both foreign and national corporations. The rm has also advised the private sector on intellectual property matters when dening a position on proposed new legislation or when negotiating free trade agreements.

Croatia

Dr. Alexander Cizek, LL.M. Tel: +43-1-531 78 1451 DLA Piper Weiss-Tessbach Fax: +43-1-533 52 52 Rechtsanwälte GmbH [email protected] Schottenring 14 www.dlapiper.com 1010 Vienna, AUSTRIA

Weiss-Tessbach Branch in the Tel: +385-1-4854 2 00 Republic of Croatia Fax: +385-1-4854 2 41 Frane Petrica 4 www.dlapiper.com HR-10000 Zagreb,http://www.pbookshop.com CROATIA

Alexander Cizek studied law in Vienna and the U.S. and was admitted to practise in New York in 1996 and in Austria in 2000. He has been a Partner with DLA Piper Weiss-Tessbach since 2001 and heads the Intellectual Property and Technology practice group in the Vienna oce. Alexander specialises in all IP law areas including trademarks and deals with every aspect of trademark law, trade dress and design law, copyright law, software law, patent law and utility model law, transfer of technology and know-how, licensing law, etc. Alexander’s IP practice also covers legal matters of unfair competition and unfair trade practices and handles IP-related M&A transactions. He has substantial litigation experience both in court and before the Patent and Trademark Oces. Alexander is recommended in reputable publications such as Chambers and Legal 500 for his brand protection xxxii Contributor Directory and anti-counterfeiting work. He has been ranked among the 250 ‘‘World’s Leading Patent & Technology Licensing Lawyers 2010’’ by the internationally well respected ‘‘IAM-magazine’’. DLA Piper Weiss-Tessbach Rechtsanwälte GmbH, organizacˇná zlozˇka is part of the global law rm DLA Piper. DLA Piper has more than 3,500 lawyers and provides a range of legal services around the world. Lawyers operating from oces in Asia, Europe, the Middle East and the United States provide high quality legal advice to clients in their local market and internationally. The vision of the rm is to be the leading global business law rm. DLA Piper draws on the knowledge of its locally and internationally trained lawyers advising on a broad range of matters including commercial, corporate, bankruptcy and restructuring, tax, nance, human resources, litigation, real estate, regulatory and legislative, technology, and media and communications in every major market around the world.

Cyprus

Nicholas Ktenas and Tel: +357 25 110000 Eleana Spyris Fax: +357 25 110001 Andreas Neocleous & Co., LLC E-mail: [email protected] Neocleous House Web: www.neocleous.com 195 Archbishop Makarios III Avenue, Limassol 3608 Cyprus

Nicholas Ktenas graduated with an LL.B from Sheeld University in 1997 and obtained an LL.M. in EU law from Nottingham University in 1998. He joined Andreas Neocleous & Co in 2001 and was admitted as a partner in the rm in 2007. He specializes in intellectual property and his otherhttp://www.pbookshop.com areas of practice include company, competition, contract, employment, EU, and maritime law. He has litigation experience in commercial and employment matters. He participated as the local consultant representing Andreas Neocleous & Co in an international consortium which won the tender for the formulation of a national strategy and legal frame-work for an electronic commerce study for the Cypriot Planning Bureau. Mr. Ktenas has been an instructor in Business and Company Law at the Cyprus College and before joining Andreas Neocleous & Co he was head of the legal department of the Louis Cruise Lines group of companies in Cyprus. Eleana Spyris was born in Australia. She graduated in law from Shef- eld University in 2002 and was awarded an LL.M in International Law by Bristol University in 2005. She was admitted to the Cyprus Bar in 2006. Her main areas of practice are intellectual property law, competition law and corporate law.

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Andreas Neocleous & Co. was established in 1965. Since then it has developed a strong local presence as well as a substantial international practice. The rm provides a full range of legal services in Cyprus and abroad through its oces in Brussels, Budapest, Kiev, Moscow, Prague and Sevastopol. Its head oce is in Limassol and the rm is divided into departments specializing in major areas of law: admiralty and shipping, banking and nance, corporate and commercial, e-business, intellectual property, real estate, litigation and arbitration, tax law and international tax planning and European Union law.

Denmark

Mads Marstrand-Jorgensen Tel: +45 33 433100 Norsker & Co. Fax: +45 33 133838 Landemarket 10, E-mail: [email protected] DK-1119 Copenhagen K Web: www.norskerco.dk Denmark

Norsker & Co. is a Danish law oce established in 1900 oering a full range of legal service. It is well known for its industrial property and commercial law. The client base is European and North Central American. Mr. Mads Marstrand-Jorgensen is partner in Norsker & Co. and head of the intellectual property group. He was admitted to the Bar in 1975 and is also admitted to appear before all Danish Courts and before the EU Trademarks Oce in Alicante, Spain. He acts on behalf of Danish and foreign clients in matters in connection with intellectual property and his extremely active and professional representation is the rm’s hallmark. Mr. Mads Marstrand-Jorgensen has been acting successfully in court in the leading Danish court decisions in the eld, including severalhttp://www.pbookshop.com landmark Supreme Court decisions. He is the author of several books and articles related to intellectual property and has been a speaker at major intellectual property conferences.

Ecuador

Bruce Horowitz, Esteban Riofrio Tel: (593-2) 222 2057 and Monica Cortez Fax: (593-2) 250 1902 Paz Horowitz, Abogados E-mail: [email protected] Whymper 1105 y Almagro, [email protected] Edif. Tempo [email protected] Quito, Ecuador [email protected] Web: www.pazhorowitz.com xxxiv Contributor Directory

Bruce Horowitz is Managing Partner of Paz Horowitz, Abogados. Born and raised in Galion, Ohio, USA, Bruce rst came to Ecuador as a volunteer Land Surveyor for the Shuar Indians in the Amazon Basin. He later received his J.D. from NYU Law School, and practiced for 15 years in Alaska and Ohio, before returning to Ecuador. Bruce is the author of the Ecuador Chapter of Intellectual Property in the Global Marketplace, 2nd Edition (Wiley 1999). He is Co-Chair of the ABA International Law Section’s International IP Rights Committee, and an active member of INTA. Not licensed to practice in Ecuador. Esteban Riofrio, the Chief IP Counsel at Paz & Horowitz, has a J.D. from Catholic University Law School in Quito, and an LL.M. from the Univ. Andino Simon Bolivar. In addition to his regular practice, Esteban is the volunteer legal counsel to Junior Achievement in Ecuador. He is active in INTA, Marques, ASIPI. Monica Cortez is the IP Administrator at Paz & Horowitz, where she handles the coordination of trademark and patent lings throughout Latin America for major foreign clients. Before coming to Paz & Horo- witz, Monica worked at both the U.S. and British embassies. She is in the process of obtaining her law degree. Paz Horowitz is a completely bi-lingual law rm, whose excellence has been recognized by both in the International Who’s Who of Trademark Lawyers and by Managing Intellectual Property. Paz Horowitz serves national and international businesses and NGO’s in the areas that most aect them: corporate, labor, administrative, intellectual property, environment, anti-corruption compliance, community relations and education, tax, litigation, ADR, and real estate law.

El Salvador Espino Neito & Asociadoshttp://www.pbookshop.com Tel: (503) 263-7522 83 Ave Nte. #138 Col Escalón Faxes: (503) 263-7504 San Salvador, El Salvador (503) 264-3198 Central America E-mail: [email protected] Web: www.espinolaw.com

European Community

Doug McCall Tel: 0151 709 3961 W.P. Thompson & Co. Fax: 0151 709 0162 Coopers Building E-mail: [email protected] Church Street Web: www.wpt.co.uk Liverpool L1 3AB

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England

Doug McCall received a degree of BSc(Tech) in chemistry from Manchester University, Faculty of Technology in 1961. He joined W.P. Thompson & Co. in 1962 and has been a partner since 1970. Doug is a Chartered Patent Attorney, a European Patent Attorney and a Trade Mark Attorney. He is a member of the Council of the Chartered Institute of Patent Agents and is past president of that body. Doug is also a member of the Institute of Trade Mark Attorneys, a member of the European Communities Trade Mark Association (ECTA), a member of the International Trade Mark Association and a member of UNION of European Practitioners in Industrial Property. Doug is based in the Liverpool Oce of W.P. Thompson & Co. For over a 100 years the rm of W.P. Thompson & Co. has provided commercial and private clients, large and small, with advice on all aspects of Intellectual Property Law including Patents, Trade Marks, Registered Designs, Design right and Copyright. Since the rm was founded in 1873 it has established a reputation for quality of service, client care and condentiality. Over many years the rm has established strong and highly esteemed contacts with fellow Intel- lectual Property practitioners throughout the world. The rm recognises the value and importance of on-going professional development and also is fully committed to investing in the latest communication and information technology. By combining these with our personal expertise, we can oer clients advice on a highly cost- eective basis.

European Trade Mark Law

Almut Diederichsenhttp://www.pbookshop.com Telephone (496131) 287 7099 Bette-Westenberger-Brink Email: [email protected] Rechtsanwälte Große Bleiche 60-62, 55116 Mainz, Germany

Practice areas: European law, private international law, competition law, trade marks. Admitted: 1999.

xxxvi Contributor Directory

Finland

Jan Waselius Telephone: +358 9 668 9520 and Thomas Kolster Facsimile: +358 9 6689 5222 Waselius & Wist Email: ww@ww. Eteläsplanadi 24 A Web site: www.ww. 00130 Helsinki Finland

Jan Waselius, founding partner, graduated from the faculty of law of the University of Helsinki in 1968 and was admitted to the Finnish Bar in 1972. Prior to the establishment of Waselius & Wist, Jan Waselius was a partner of Roschier-Holmberg & Waselius from 1970 to 1995 (head of corporate and nance law practice group; senior partner 1986-1995; of counsel 1996-1997.). Jan Waselius is renowned for his knowledge in the areas of corporate law, nance law, securities law, banking law, mergers and acquisitions, commercial law, intellectual property rights, labour law and litigation and arbitration. Throughout his career he has gained broad experience of international nancial transactions and regulatory matters. He has acted for a large number of listed and unlisted Finnish and foreign companies, banks, securities brokers and other nancial institutions as well as, for governments. Jan Waselius is also Honorary Finnish Legal Adviser to several foreign governments as well as a Board member of several Anglo-American and European corporations in Finland and abroad. Jan Waselius is an author of various articles in international publications. Thomas Kolster joined Waselius & Wist in 2006 after having obtained his LL.M. from the University of Helsinki in the same year. Mr. Kolster performedhttp://www.pbookshop.com his court practice at the District Court of Åland in 2008. Thomas Kolster is a member of the Association of Finnish Lawyers and the Legal Society of Finland. His main areas of practice include Mergers and Acquisitions, Intellectual Property and Informa- tion Technology and Banking and Finance and he is an author of various articles in international publications. Waselius & Wist is a commercial law rm, committed to providing highly specialized legal services in complex business transactions. WWaselius & Wist is especially renowned for high-end advice within the elds of capital markets, banking and nance, mergers and acquisitions, dispute resolution, tax law as well as EU and competition law and Intellectual Property and Information Technology.

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France

Nadège PARFAIT Tel: +33 (0)1 45 61 94 64 Bureau CASALONGA & JOSSE Fax: +33 (0)1 45 63 94 21 European and French Patent and Email: [email protected] Trademark Attorneys www.casalonga.com 8 avenue Percier 75008 Paris France

Caroline Casalonga and Karina Dimidjian CASALONGA AVOCATS Attorneys at Law 5-7 avenue Percier 75008 Paris France

Nadège Parfait is an associate in the Intellectual Property law rm Casalonga & Josse in Paris. Mrs Parfait received her law degree from the University of Paris in 2000 and is a registered French and European Trademark Attorney since 2007. Her practice includes extensive trademark, ornamental designs and copyright prosecution. Caroline Casalonga is a partner in the Intellectual Property law rm Casalonga Avocats in Paris. Mrs. Casalonga received her law degree from the University of Paris Assas in 1991 and an LLM f rom Cornell University in 1996. She was admitted to the Paris bar in 1993 and has been a registered French and European Trademark Attorney since 1999. She has a broad experience in trademark, domain name, design, copyrighthttp://www.pbookshop.com and unfair competition litigation matters, including cases relating to advertising. Apart from litigation, her practice includes non-contentious matters: opinions on all aspects of intellectual property law, prosecution matters and licensing. She has extensive experience in anti-counterfeiting actions, including customs actions. Mrs. Casalonga is a frequent author and speaker on intellectual property issues. Mrs. Casalonga is a member of European Community Trademark Association (ECTA) and the International Trademark Association (INTA). Karina Dimidjian-Lecomte is a partner in the Intellectual property law rm Casalonga Avocats in Paris. Mrs. Dimidjian-Lecomte received her BA cum laude from The University of Pennsylvania in 1992 and her JD cum laude from the Georgetown University Law Center in 1996. She was admitted to the New York bar in 1996 and to the Paris bar in 2003. Her practice includes managing trademark and design xxxviii Contributor Directory portfolios, including counseling, licensing, infringement actions, oppositions and cancellation proceedings. In addition, she is experienced in conducting due diligence reviews in connection with cross-border company and trademark acquisitions. Mrs. Dimidjian-Lecomte is a member of the New York State Bar Association and the International Trademark Association (INTA). She is a Member of the INTA leadership committee on education. She organized for the last years several very successful INTA presentations to law students. She was awarded this year for the Academic Subcommittee of the Membership Services Committee, Co-chair of the Student Membership Project Team. Founded in 1867, Casalonga & Josse has established its reputation as one of the leading intellectual property law rms in France and Europe. It has oces in Alicante, Spain, for Community trademark and design matters and in Munich, Germany for European patent matters. The rm practices patent, trademark, copyright, design law, including prosecution, licensing, counseling and litigation. Its attorneys are authorized to represent clients before the European Pa- tent Oce, the Community Trademark and Design Oce, the French Patent and Trademark Oce, the European Community Trademark Courts in Alicante and the European Court of Justice. Casalonga Avocats is an IP lawyer boutique an dis the litigation partner for the Casalonga & Josse.

Germany

Philip Heusler Tel.: +49-89-38 999 80 v. Bezold & Partner Fax: +49-89-38 999 850 Patent Law Firm E-mail: [email protected] Akademiestr. 7 Web: www.ip-rm.de D-80799 München Germany http://www.pbookshop.com Philip Heusler has been an associate of the law rm v. Bezold & Partner since 2007. He received his degree in law from the Ludwig Maximilians University Munich in 1998 and was admitted to the bar in 2001. His practice includes litigation concerning trademarks, designs and unfair competition matters, license agreements and trademark and design registrations. He is a member of the German IP Organization GRUR. The IP law rm v. Bezold & Partner was founded in 1950 by Dr. Ernst Sommerfeld, son of the pioneer of modern quantum physics Arnold Sommerfeld. In 1960 he was joined by Dr. Dieter v. Bezold, disciple of the famous physicist Walter Gerlach. In keeping with the tradition of connection to physics, Dr. Oliver Hertz joined the rm in 1996. The law rm v. Bezold & Partner oers representation services

K 2011 Thomson Reuters/West, 12/2011 xxxix Trademark Practice & Forms in all procedures before the German Patent and Trademark Oce, the European Patent Oce, the World Intellectual Property Organi- zation and the Oce for Harmonization in the Internal Market. v. Bezold & Partner prosecute Patent, Utility Model, Design and Trademark litigation’s, cases of Unfair Competition and all other IP right-related suits before the German Civil Courts.

Ghana

Antoinette D. Hubbard Tel: 00233 21 783616-18 ANGA & EMUWA Fax: 00233 21 770493 P. O. Box CT 72 E-mail: Cantonments, Accra [email protected] Ghana [email protected] [email protected] Web: [email protected]

Antoinette D. Hubbard, a native of Philadelphia, Pennsylvania, earned her Bachelor of Arts Degree in Political Science from Bryn Mawr College and her Juris Doctor degree from the University of Pennsylvania in 1984. First called to the Bar in 1984 in Delaware, Ms. Hubbard subsequently practiced for over a decade in Boston, Massachusetts. While in the United States, Ms. Hubbard’s practice encompassed a broad variety of matters, including commercial, property, probate, pharmaceutical, medical device and insurance cases. In 1999, Ms. Hubbard became a member of the bar of the Republic of Ghana, as she had relocated to Ghana. Ms. Hubbard is a principal of the rm of Anga & Emuwa of Accra, Ghana. Over the course of her career, Ms. Hubbard has been active in numerous bar associations and legal societies; she is a member of, inter alia, the International Trademark Association.http://www.pbookshop.com In addition to its oce in Ghana, Anga & Emuwa, a full service rm, has oces in Lagos and Port Harcourt, Nigeria. The rm is a member of Commercial Law Aliates, an international aliation of independent business and litigation law rms with over two hundred members in more than seventy countries. Anga & Emuwa is also a member of the Nigerian ICC-Counterfeiting Intelligence Bureau and composes the Nigerian Law Digest, published by Martindale-Hubbell in its International Law Directory.

Greece

Sonia Melegou Tel: +(30) 210 775.33.41 Zepos & Yannopoulos or + (30) 210 775.45.71 xl Contributor Directory

120, Vas. Soas Ave, Fax: + (30) 210 770.28.25 115 26 Athens or + (30) 210 771.12.50 Greece E-mail: [email protected] Web: www.zeya.com

Sonia Melegou is an associate at Zepos & Yanopoulos and a member of the corporate — commercial group of the rm. Her practice includes, among others, trademark and patent registrations and prosecution, counseling on intellectual property issues and litigation regarding counterfeit products and trademark infringement. Established in 1893, Zepos & Yannopoulos is one of the leading and largest law rms in Greece providing comprehensive legal and tax advice to companies conducting business in Greece. Zepos & Yan- nopoulos is a law rm with an international orientation providing comprehensive legal and tax services to companies and nancial institutions doing business in Greece. The main oce of the rm is in Athens while it has a branch in Thessaloniki. The rm combines a unique tradition in legal practice with a dynamic professional sta that is well known for acting proactively and for creating ecient, innovative and practical solutions for its clients. In addition to the oering of quality legal and tax advice, Zepos & Yannopoulos assists its international clients capture the intricacies of the Greek business environment and practice.

Hong Kong S.A.R.

Lehman, Lee and Xu Tel: (852) 3588 2188 Suite 2311, Shell Tower Fax: (852) 3588 2088 Times Square, E-mail: 1 Matheson Street,http://www.pbookshop.com [email protected] Causeway Bay, Web: www.lehmanlaw.com Hong Kong SAR

K 2011 Thomson Reuters/West, 12/2011 xli Trademark Practice & Forms individual brands, including as part of larger merger transactions. The rm is a member of the International Trademark Association (INTA), International Association for the Protection of Industrial Property (AIPPI), Asian Patent Attorneys Association (APAA), National Association of Patent Practitioners (NAPP), the International Anti-Counterfeiting Coalition (IACC), the China Anti-Counterfeiting Committee (CACC), Quality Brands Protection Committee (QBPC, China), Computer Law Association (CLA) and Software and Informa- tion Industry Association (SIIA).

India

Mrs. Ruma Mitra Tel: 91(33) 22819195 D. P. Ahuja & Co. or 91(33) 22808059 Patent & Trademark Attorneys Fax: 91(33) 22819441 53 Syed Amir Ali Avenue or 91(33) 22819444 Calcutta 700019 E-mail: [email protected] India Web: www.dpahuja.com

Ruma Mitra is a Lawyer and Advocate of the Calcutta High Court. Ruma practiced corporate law for 6 years before joining D. P. Ahuja & Co., as Legal Counsel, in the year 2000. She currently specialises in Trademark litigation. D. P. Ahuja & Co., is a full-service, professionally managed, Intel- lectual Property Law rm established in 1971, known for its technology oriented, equal opportunities, transparent and ethical practice. The rm is headquartered in Calcutta (also the location of the Head Oce of the Indian Patent Oce), with oces in Bangalore, Madras and New Delhi. http://www.pbookshop.com In the area of Trademarks, the rm specialises in Trademarks Searches, Opinions, Prosecution, Renewals, Oppositions, Litigation, Commercial Investigations and Market Surveys as well as Drafting and Evaluation of Licence Agreements. The rm publishes World Patent & Trademark News™ (www.wptn.com), a magazine on Intellectual Property New and Articles from around the world. The rm represents over 2500 international corporations, research institutes and universities from around the world.

Indonesia

D. P. Ahuja & Co. Tel: 91(33) 22819195 xlii Contributor Directory

53 Syed Amir Ali Avenue or 91(33) 22808059 Calcutta 700 019 Fax: 91(33) 22819444 India or 91(33) 24757524 E-mail: [email protected] Web: www.dpahuja.com

D.P. Ahuja & Co. was established in 1971, and since then, our rm has grown rapidly to encompass all aspects of Intellectual Property Law and Litigation. Our rm has the highest professional sta strength in India and is equipped to handle matters in all technical areas. Our records, les and business data are computerized and updated online. A broad spectrum of our area of services includes: Pa- tent, Trademark and Design Searches, Filings, Prosecution and Renewals in India and abroad; Patent and Trademark Licensing; Trademark and Anti-Counterfeiting investigations; Initiating, Defend- ing and Processing Infringement Litigation; Case Law Research and Legal Analysis for any IP related litigation. Our rm has four oces in India and combines the capabilities of 90 members—20 Trademark and Patent Attorneys, 8 Service Managers and other Support Sta— to provide fully integrated, high-quality legal services in the area of intellectual property counseling and litigation. Our rm today handles a large number of International Patent and Trademark matters around the world for both Indian and foreign clients. Our rm has one of the most active Trademark Litigation Departments in India with its own investigation wing. We have helped in the enforcement of rights in famous trademarks and trade names in India as well as in other countries. Our success in litigation lies in our ability to develop an eective, well-researched and meticulously planned strategy for our clients. Above all, D.P. Ahuja & Co., is committed to a tradition of high standards and excellence in professional services. http://www.pbookshop.com Iran Abbas Fakhari Tel: +98 21 890 89 11 Raysan Patent & Fax: +98 21 890 93 51 Trademark Agents E-mail: [email protected] Suite 5, Building 125, Web: www.irantm.com North Felestin Tehran 14158 Iran

Raysan Patent & Trademark Agents was founded in 1975 and specialized in the area of industrial property law. The patent and trademark attorneys and agents of Raysan Patent & Trademark Agents advise

K 2011 Thomson Reuters/West, 12/2011 xliii Trademark Practice & Forms and represent dierent aspects of industrial property law. The scope of practice of our patent and trademark agents cover the prosecution, defense and enforcement of patents and trademarks as well as consult- ing with clients in drafting and completing license and cooperation agreements. Our lawyers provide counsel and represent clients either at court or the Patent & Trademark Oce in dierent aspects of industrial property law, competition law and anti-counterfeiting law, among others. Raysan Patent & Trademark Agents has a close and interactive cooperation with other Iranian and worldwide IP rms. Associates of our rm have an outstanding working experience in the eld of industrial property and are members of international intellectual property organizations.

Israel

Sanford T. Colb and David Colb Tel: 972 3 7180800 Sanford T. Colb & Co. Fax: 972 3 7180801 8 Shaul Hamelech Blvd. Emails: [email protected]; Beit Amot Mishpat, [email protected] Tel-Aviv 64733 Israel Website: www.stc.co.il

Sanford T. Colb is the founder and sole partner of Sanford T. Colb & Co. He studied physics at the University of Pennsylvania and is a graduate of Harvard Law School and Cambridge University. Mr. Colb is registered to practice before the Israel Patent Oce and the U.S. Patent & Trademark Oce, and has been admitted to the Israel Bar and the Massachusetts Bar. For over 25 years, Mr. Colb has been at the forefront of IP law in Israel and has established himself as a leading expert in the eld. David Colb is a juniorhttp://www.pbookshop.com attorney in the litigation department at Sanford T. Colb & Co. David is a law graduate of Cambridge University. He has experience in IP enforcement matters including copyright and trademark infringement and anti-counterfeiting. Sanford T. Colb & Co. is a full-service intellectual property law rm, providing services relating to all aspects of intellectual property and technology licensing. The rm represents many well-known Israel and international clients in the registration, litigation and enforcement of their intellectual property rights. Sanford T. Colb & Co. has oces in Jerusalem, Tel-Aviv and Rehovot.

xliv Contributor Directory

Italy

Margherita Barié Tel.: +39-02-655851 Carnelutti, Fax: +39-02-65585585 Studio Legale Associato E-mail: [email protected] Via Principe Amedeo, 3 Web: www.carnelutti.com 20121-Milano Italy

Pietro Pouchè Tel.: +39-02-655851 Carnelutti, Fax: +39-02-65585585 Studio Legale Associato E-mail: [email protected] Via Principe Amedeo, 3 Web: www.carnelutti.com 20121-Milano Italy

Margherita Barié is a partner in the Milan oce of Carnelutti, Studio Legale Associato. She acts as counsel in all forms of local arbitration and conducts and manages domestic and international litigation in various elds relating to commercial law and, in particular, intellectual property rights. Ms. Bariè is a member of the Italian Bar As- sociation qualied to plead before the High Courts. Moreover, she is member of the Licensing Executives Society and of the Italian Anti- Counterfeiting Group. Ms. Bariè is uent in English, French and Spanish, in addition to her native Italian. She has spoken throughout the country on trademark licensing and IP related issues and is a regular contributor to national and international publications, such as the World Trademark Yearbook and the Getting Thehttp://www.pbookshop.com Deal Through—Trademarks. Margherita Barié is recognized as a dispute resolution expert by PLC Which Lawyer? Yearbook, she is recommended as an IP advisor by European Legal Experts and as an IP and dispute resolution lawyer by Chambers & Partners. Ms. Barié's experience includes: local arbitration conducted under Italian law relating to waste disposal plants on the Island of Elba against the Tuscan Region; litigation under Italian law relating to the forging of telephone cards; litigation under Italian law relating to pharmaceutical counterfeiting; legal proceedings relating to the nonfulllment of franchising agreements, distribution agreements and bank loans secured by mortgages; litigation under Italian law relating to Intellectual Property issues such as trademarks and unfair competition, for clients such as Nokia, Sony and Reynolds Tobacco Co (relating to Camel trademark).

K 2011 Thomson Reuters/West, 12/2011 xlv Trademark Practice & Forms

Pietro Pouché is a junior partner in the Milan oce of Carnelutti, Studio Legale Associato. He is member of the rm’s intellectual property department, where his practice focuses on legal advice and litigation relating to international, European and Italian intellectual and industrial property matters. He speaks English in addition to Italian. Pietro Pouché advises multinational and Italian clients on the management of their IP assets, protection against infringement, adoption of anti-counterfeiting measures and implementation of business activities through the use of software and databases and the development of licensing strategies. His dispute resolution practice focuses on representing major clients belonging to the fashion and pharmaceutical industries, on trademark, patent, design and copyright infringements. Pietro Pouché began focusing on intellectual property early on, when he worked with one of Italy’s most prominent IP professors on a thesis on comparative advertising in the United States. Pietro Pouché joined the rm originally in 2001 and returned after an extensive period spent in the United States. Pietro Pouché, following his admission to the Italian Bar in 2004, was the only Italian selected by the Duke University School of Law (North Carolina) to attend the 2005 LL.M. program where he focused on the main areas in the IP eld under both American and international perspectives. He earned his master’s degree in May 2005. Mr. Pouché is often involved in IP-related research projects and is a regular contributor to national and international publications. Carnelutti is a leading Italian law rm originally founded in Venice at the end of the 19th century by Professor Francesco Carnelutti, one of the greatest Italian jurists of all time. The rm oers a comprehensive and wide range of legal services in several areas of practice, including international businesshttp://www.pbookshop.com labor law, corporate and nancial transactions, telecom, media and labour law advising foreign investors in Italy and Italian clients when operating abroad.

Japan

Keisaku Ishihara Tel: +81-52-203-1001 NAGOYA INTERNATIONAL Fax: +81-52-231-0515 PATENT FIRM E-mail: [email protected] Meishin Bldg. 2F, 20-19, Web: http://www.patent.gr.jp Nishiki 1-chome, Naka-ku, Nagoya 460-0003 Japan xlvi Contributor Directory

NAGOYA INTERNATIONAL PATENT FIRM was found in 1978 by President Tsutomu Adachi. Since then, our faithful service and untir- ing dedication have permitted us to enjoy the patronage of not only the many domestic clients but also clients overseas. To protect and promote eective utilization of valuable intellectual property of our clients, we are able to provide a wide scope of services from the preparation and prosecution of all types of patent and trademark applications, and representation in appeals and trials, to the peripheral practice related to intellectual property, like expert opinion (e.g. non-infringement or invalidity), contract negotiation (e.g., preparation/negotiation of license agreements, technology transfer agreements, nondisclosure or development agreements), portfolio management strategy, litigation and ADR. Our long-term cooperation with foreign associates has enabled us to help our clients secure intellectual property as well as enforce their intellectual property via license negotiation or initiating a lawsuit. Further, we have handled numerous litigation and trial cases among other Japanese patent rms. In order to better support the wide range of services, the skills of our members are very diverse, including: patent attorneys, technical engineers, design & trademark specialists, translators, draftspeople, and clerical support sta, all of which now total over 70.

Kosovo

Kujtesa Nezaj-Shehu Tel: +381 38 248 914 SDP KOSOVË Fax: +381 38 248 915 Str. Nena Tereze, no.29/1, B.4 E-mail: 10,000 Prishtina [email protected] Kosovo Web: www.sdpkosove.com http://www.pbookshop.com Ms. Kujtesa Nezaj-Shehu is the director of SDP KOSOVË, a 4-lawyer IP law rm located in Prishtina, Kosovo, providing a full range of intellectual property services, from prosecution of trademarks and patents, to litigation and anti-counterfeiting strategies. Kujtesa’s practice focuses on all aspects of IP enforcement in Kosovo, including appearing before the courts and preparing strategy for anti- counterfeiting programs in the region. She is a certied Patent and Trademark Agent before the Kosovo Industrial Property Oce. Kujtesa is an author of a number of IP related articles, including a chapter providing an overview of the trademark law in Kosovo, which was published in 2009 by Thomson West in a publication titled Trademarks Throughout the World. She also speaks on the topic of intellectual property protection in Kosovo. Recently, Kujtesa partici-

K 2011 Thomson Reuters/West, 12/2011 xlvii Trademark Practice & Forms pated in a PETOSˇEVIĆ-organized webinar on Enforcement Strategy in Eastern Europe, where she gave a presentation on ‘‘IP Rights in Kosovo—What You Need to Know’’. You can reach Kujtesa at [email protected].

Lebanon

Dr. Rana A. Chaaban Paris: +33 6 70263414 Unversité du Maine Beirut: +961 3526022 Avenue Olivier Messiaen E-mail: 72085—Le Mans Cedex 09 [email protected] Le Mans—France

Before having oces in Lebanon, Rana Chaaban has served as a counsel in leading law rms in the United States as well as in France. Admitted at the Paris Bar, Dr. Chaaban has represented organisa- tions and individuals in France, mainly but not only in signicant arbitration disputes. Dr. Chaaban’s areas of concentration include multinational corporations, commercial enterprises, and governmental agencies. Honoured by the French Academy of Moral Sciences in 2007, Dr. Chaaban represents clients in a wide variety of regulatory matters and transactions, including banking transactions, construction, taxation, arbitration, leasing and factoring. In addition, Dr. Chaaban is a Senior Lecturer at Le Mans University in France and has published many articles in relation with arbitration in the Arab Countries. She is also the author of a famous book The Caducity of Contracts that has won many awards in Beirut and France. Dr. Chaaban is uent in English, Arabic, Spanish and French.

Liechtenstein

Burkhard Bogensbergerhttp://www.pbookshop.com Tel +423 399 32 42 MS (chem.eng.), PhD (tech.sci.) Fax +423 399 32 49 BOGENSBERGER E-Mail: [email protected] Patent & Markenbuero Internet: www.patentanwalt.li Im Aescherle 1, 9494 Schaan / Liechtenstein

Education and professional career E 1976-1982 Studies of industrial chemistry at the Technical University of Graz (Austria) with a main focus on biochemistry and biotechnology. E 1982-1985 Doctoral thesis on the conversion of organic wastes into the biopolymer PHB in the pilot plant scale for. Supple- mentary electron microscopy studies. xlviii Contributor Directory

E 1979-1980 Courses of medical biology, eukaryotic genetics and practical anatomical dissection at Karl-Franzens-University, Graz. E 1986-1990 R&D in fermentation technology at Sandoz Pharma Division, Tyrol (Austria). E 1990-1993 Head of department of environmental technology at a Liechtenstein engineering company. E 1994-2003 Trainee and junior partner with a Liechtenstein patent law rm. E 2002 Qualication as a European Patent Attorney. E 2004 Qualication as a Liechtenstein Patent and Trademark Attorney; founding of patent law rm BOGENSBERGER Patent- & Markenbuero. Membership in professional bodies E EPI (European Patent Institute: Board member, and Biotech Committee) E LIPAV (Liechtenstein Patent Attorneys’ Association; Board member) E LES-CH (Licensing Executive Society Switzerland) BOGENSBERGER Patent & Markenbuero is a patent law rm having its place of business in the city of Schaan in the Principality of Liechtenstein, located half-way between WIPO in Geneva and the EPO in Munich. We oer all services in connection with intellectual property and represent clients, primarily SMEs, before the Liechtenstein Authori- ties, the Swiss Patent Oce, the World Intellectual Porperty Organisation (WIPO), and the European Patent Oce (EPO). Our main technical focus is in chemical, pharmaceutical, biotec and medical matters but we also consult and represent in trademark and design matters. http://www.pbookshop.com Acknowledgements The authors would like to thank Ms. Marina Yurchenko, a law student at St. John’s University Law School, for her contribution to this chapter.

Lithuania

Jurga Petniunaite Telephone: (370 5) 252 66 76 AAA Baltic Service Company Facsimile (370 5) 252 66 70 J. Jasinskio 16 B E-mail: [email protected] Victoria building Website: www.aaa.lt LT-01112 Vilnius, Lithuania

K 2011 Thomson Reuters/West, 12/2011 xlix Trademark Practice & Forms

AAA Legal Services specializes in copyright, design, franchise, patent, trademark law in Lithuania, Latvia, and Estonia. AAA has oces in Vilnius, Lithuania, Tallinn, Estonia, representatives in Riga, Latvia. AAA Legal Services has been voted the number one rm for trademark, copyright, patent work in the Baltic States in the Managing Intellectual Property annual surveys. Since 2000, AAA attorneys won more than 50 court actions to stop the infringement of our clients’ IP rights and obtained the destruction of more than 50,000 counterfeit Adidas, Nike, Lee, and Wrangler goods. Marius J. Jason is founder, chairman and senior attorney of AAA Legal Services. He practiced law in New York City for 15 years before moving to Lithuania in 1992. Mr. Jason has a degree in chemistry, a Master of Laws degree in trade regulation from New York University and a Doctor of Law degree from universities in America. His work on audio-visual piracy won rst prize in his law school copyright competition. He was a partner in a New York City law rm and is a registered patent attorney in the USA (Reg. No. 27,805) and Lithuania (Reg. No. 3). Mr. Jason was a consultant to the State Patent Bureau of Lithuania, is the founder and president of Lithuania’s group of International Association for the Protection of Intellectual Property (AIPPI), the founder and former president of Lithuania’s patent attorney association. Mr. Jason specializes in business and intellectual property law, having more than 25 years experience in legal analysis, advice, representation, document preparation. Mr. Jason is listed among the world’s leading Trademark Lawyers in The International Who’s Who of Busi- ness Lawyers.

Macedonia

Zivka Kostovska-Stojkovska Tel: +389 2 3245 955/985 PETOSˇEVIChttp://www.pbookshop.com Fax: +389 2 3245 984 29 Noemvri 17-2/3m E-mail: 1000 Skopje [email protected] Macedonia Web: www.petosevic.com

Ms. Zivka Kostovska-Stojkovska is the director of the PETOSˇEVIC Macedonia oce. Her practice focuses on the maintenance of trademarks and patents, as well as on working with the customs authorities on surveillance and seizure of counterfeit goods. Zivka is an attorney-at-law and a certied patent and trademark agent before the Macedonian courts. She has recently contributed two articles for the AmCham Macedonia publication Emerging Macedonia, titled ‘‘Macedonia’s New Law on Industrial Property—Wider Protection, Stronger Enforcement’’ and ‘‘The Challenges of IP Protection in the l Contributor Directory

Balkans’’. Zivka can be contacted at zivka.kostovska@ petosevic.com With over 80 people in 14 oces, PETOSˇEVIC provides a full range of intellectual property services in Eastern Europe, including Albania, Bosnia, Bulgaria, Romania, Serbia, Montenegro, Kosovo, Slovenia, Croatia, Macedonia and Ukraine. The rm also has Client Service Of- ces in Belgium and Luxembourg and a Liaison Oce in New York. PETOSˇEVIC’s practice includes: creating strategies for protecting, managing and enforcing IP portfolios; conducting trademark and patent searches; trademark, patent, copyright and other IP litigation; assignments, licensing and other IP agreements; anti-counterfeiting and anti-piracy enforcement; unfair competition, false advertising and trade dress cases; domain name registration and renewals; monitor- ing trademark rights on the Internet; research and investigation and translation of intellectual property documents.

Macau (of the People’s Republic of China)

Edward E. Lehman & Jiangang Li Tel: (86)(10) 8532-1919 Lehman, Lee & Xu Fax: (86)(10) 8532-1999 A Licensed Chinese Law Partnership E-mail: 6th oor, Dongwai Diplomatic [email protected] Oce Building Web: www.lehmanlaw.com 23 Dongzhimenwai Dajie Beijing 100600 China

Luis Reigadas Tel: (853) 356570 RPmacau-Intellectual Property Fax: (853) 356571 Services, Limited Email: [email protected] Travessa da Misericórdia,http://www.pbookshop.com No. 6, Web: www.rpmacau.com 1st & 2nd Floors, A, Macau P.O. Box: 1299 Macau

K 2011 Thomson Reuters/West, 12/2011 li Trademark Practice & Forms from small international trading companies to large multi-national corporations, in the acquisition and sale of trademark portfolios and individual brands, including as part of larger merger transactions. Lehman, Lee & Xu is a member of the International Trademark As- sociation (INTA), International Association for the Protection of Industrial Property (AIPPI), Asian Patent Attorneys Association (APAA), National Association of Patent Practitioners (NAPP), the International Anti-Counterfeiting Coalition (IACC), the China Anti- Counterfeiting Committee (CACC), Quality Brands Protection Com- mittee (QBPC, China), Computer Law Association (CLA) and Software and Information Industry Association (SIIA). RPmacau-Intellectual Property Services. Luis Reigadas, lawyer and notary, is the head and senior partner of RPmacau-Intellectual Prop- erty Services. Having pioneered and practiced exclusively in intellectual property law and related areas for over a decade, the lawyers of RPmacau have established themselves as one of the leading law rms in this eld. RPmacau specializes in all aspects and the management of intellectual property matters both contentious and noncontentious, including registration, licensing and litigation relating to intellectual property rights, and unfair competition. RPmacau has membership of many recognized international organizations and regularly participates in a number of seminars in relation to the various associations. Having global correspondents and maintaining a portfolio of clients from a number of domestic and international companies of various sizes they provide top quality, competitively priced work. The languages spoken and written uently are English, Portuguese, Cantonese and Mandarin with a comprehension of French and Spanish.

Malaysia

Ella Cheong Sprusonhttp://www.pbookshop.com & Ferguson (M) Tel: +60 3 2697 1668 SDN BHD Fax: +60 3 2697 2668 #06-03 Wisma Bandar E-mail: No. 18 Jalan Tuanku Abdul Rahman [email protected] 50100 Kuala Lumpur Web: www.ecsf-asia.com Malaysia

Ella Cheong Spruson & Ferguson (ECSF) was formed by established leading Intellectual Property (IP) practitioners from Asia and Australia. ECSF harnesses the talents and taps the experience of its IP experts to establish a specialist regional Asian IP practice span- ning South East Asia and the Indian sub-continent. Our combined experience adds up to more than a century, so you know you are in capable hands with that recognisable personalised service. Through lii Contributor Directory our regional oces, professional associations and panel of legal counsel in the various jurisdictions throughout the region, the ECSF synergy provides a one-stop, multi-networked agency securing, protecting and enforcing your IP rights throughout Asia. Our team at ECSF comprises highly qualied patent and trade mark specialists, professionals and technical experts with impeccable academic credentials. Selected from scientic, technical and design disciplines, our host of Ph.D., Masters and Bachelors graduates have extensive and in-depth industry experience in all areas of IP.

Mexico

Adriana Ibarra Vazquez, Tel.: +52 55 5488 2668 Daniela Gutierrez Maiz, and Fax.: +52 55 5488 2667 Sergio Rodriguez Castillo E-mail: Sánchez DeVanny Eseverri, S.C. [email protected]; World Trade Center Mexico [email protected] Montecito 38—10th Floor Web: www.sanchezdevanny.com 03810 Mexico, D.F., Mexico

Adriana Ibarra-Vazquez specializes in entertainment, pports & copyright, intellectual property, and information technology law. She received a Masters of International Commercial Law from the Instituto Tecnológico y de Estudios Superiores de Monterrey in 2002 and a B.A. Law, Instituto Tecnológico y de Estudios Superiores de Monterrey, 1995-1999. Prior to joining Sanchez DeVanny Eseverri, Ms. Ibarra-Vazquez was head of the Intellectual Property Department of the Instituto Tecnológico y de Estudios Superiores de Monterrey and Legal Counsel to NIC Mexico (ccTLD .MX). She is uent in Span- ish and English. Sánchez DeVannyhttp://www.pbookshop.com Eseverri, S.C. (‘‘Sánchez DeVanny’’) was founded in 1996 in Mexico City by Jorge Sánchez DeVanny. José Ángel Eseverri Ahuja joined the rm in 1999 and Robert W. Chandler, Jr., opened the Monterrey oce in 2001. Since its establishment, Sánchez DeVanny has maintained constant growth, both in clients and professionals. However, it is not our size, but our quality, speed of response and commitment to handling matters on site that marks our clients’ preference for us. Our services include activities of a diverse nature in the defense and protection of the rights, property and interests of our clients; from the development of strategies for penetra- tion of the Mexican market, tax planning, drafting and negotiation of contracts, advise on joint ventures and strategic alliances, representation in litigation, carrying out actions before government agencies, administrative procedures, obtaining of permits, authorizations, licenses and registrations, legal advise and preparation of opinions,

K 2011 Thomson Reuters/West, 12/2011 liii Trademark Practice & Forms measurement of risk in complex transactions, restructuring and reorganization of liabilities and business operations, to the handling of corporate books and intellectual property portfolios.

Montenegro

Jasna Jusic Paovic Tel: +382 20 634 561 PETOSˇEVIC Fax: +382 20 634 421 Crnogorskih serdara bb E-mail: [email protected] 1st Floor, Apt. 4 Web: www.petosevic.com 81000 Podgorica Montenegro

Ms. Jasna Jusic Paovic is the director of the PETOSˇEVIC Montenegro oce. Jasna’s practice focuses on all aspects of IP enforcement in Montenegro, including customs matters. She also handles trademark and patent prosecution and maintenance. Jasna is the co-author of the ‘‘Border Measures in Montenegro and Kosovo’’ article, which was published in the Trademark World Magazine. Recently, Jasna also participated in a PETOSˇEVIC-organized webinar on Enforcement Strategy in Eastern Europe, where she gave a presentation on ‘‘IP Rights in Montenegro—What You Need to Know’’. You can reach Jasna at [email protected] With over 80 people in 14 oces, PETOSˇEVIC provides a full range of intellectual property services in Eastern Europe, including Albania, Bosnia, Bulgaria, Romania, Serbia, Montenegro, Kosovo, Slovenia, Croatia, Macedonia and Ukraine. The rm also has Client Service Of- ces in Belgium and Luxembourg and a Liaison Oce in New York. PETOSˇEVIC’s practice includes: creating strategies for protecting, managing and enforcing IP portfolios; conducting trademark and patent searches; trademark,http://www.pbookshop.com patent, copyright and other IP litigation; assignments, licensing and other IP agreements; anti-counterfeiting and anti-piracy enforcement; unfair competition, false advertising and trade dress cases; domain name registration and renewals; monitor- ing trademark rights on the Internet; research and investigation and translation of intellectual property documents.

Morocco

Dahmène Touchent Tel: 01-48-33-11-51 Legal Portal of Algerian Law Mobile: 06-70-83-34-62 32, Coursive Georges Méliès E-mail: [email protected] 93300 Aubervilliers, France Web: www.multimania.com/ lexalgeria liv Contributor Directory

Dahmène Touchent manages the Algerian legal website LexAlgeria . He received his Diplôme d'études supérieures from the Financial National Institute, Algiers, his master of laws degree from the Paris XIII University, and took the legal higher studies in export law program from Paris V University. He teaches law to rst-year and upper-class students at Claude Bernard institute (Paris), University of Paris XIII and University of Paris XII. He has written articles on the legal systems of Algeria, Morocco, and Tunisia, and articles on a variety of topics including Algerian public law and French labour law.

Myanmar

Jonathan Kok Tel: 65 6220 1911 U Than Maung Fax: 65 6224 4118 Kelvin Chia Partnership E-mail: 6 Temasek Boulevard [email protected] Fourth Floor Web: www.kcpartnership.com.sg Suntec Tower Four Singapore 038986

Jonathan is a Partner at Kelvin Chia Partnership. He specialises in the area of intellectual property law, advising clients on the protection and commercial exploitation of their intellectual assets, acquisition of rights, regulatory issues, and assisting them with the preparation of intellectual property-related documents. He has also worked with research institutes researching cutting edge technology. He is one of the co-authors of the volume on Media of the Singapore Forms and Precedents series published by LexisNexis/Butterworths. Jonathan is a member of the Licensing Executives Society Interna- tional, the International Trademark Association and the Asian Patent Attorneys Association.http://www.pbookshop.com U Than Maung is a legal associate based at the rm’s Yangon oce. Prior to joining Kelvin Chia Partnership, U Than Maung was a Law Ocer and Public Attorney with the Attorney General’s Oce of the Union of Myanmar. He has undertaken a wide range of matters for local and foreign clients in the elds of intellectual property, trade and economy, taxation and all aspects of investment and commercial business, and liaises with government authorities and regulatory bodies on such matters. He is procient in Burmese and English. Kelvin Chia Partnership is a commercial law rm established in Singapore with oces in Vietnam and Myanmar and a registered of- ce in Cambodia. The rm has strong regional capabilities, and its practice also extends to other countries within the Asian region such as China, Philippines, Indonesia and Malaysia. Through a strong

K 2011 Thomson Reuters/West, 12/2011 lv Trademark Practice & Forms network of associates, the rm is also able to provide a comprehensive range of international legal services.

New Zealand

Peter B. Curling Tel: +64 4 473 8278 A J Park, Huddart Parker Building Fax: +64 4 472 3358 1 Post Oce Square E-mail: [email protected] Wellington Web: www.ajpark.com New Zealand

Peter Curling was born, educated and spent the early part of his career in London, England, initially in the British Trade Marks Regis- try before joining the profession in 1969 and A J Park in 1972. Peter specialises in all aspects concerning the acquisition and enforcement of trade mark and related rights both within South Pacic countries and throughout the world. For many years Peter was a member of the New Zealand Institute of Patent Attorneys Team liais- ing with the Trade Marks Registry with respect to changes to trade mark practices before IPONZ discontinued this liaison arrangement. He has served as the Secretary of the New Zealand group of AIPPI and is involved in the Committee work of the International Trademark Association. In addition to membership of the New Zealand Institute of Patent Attorneys, Peter’s membership of international organizations includes as an Overseas member of the (British) Institute of Trade Mark Attorneys and Associate membership of the European Communities Trade Mark Practitioners Association. A J Park is amongst the leading and largest of Australia’s intellectual property practices comprising more than 50 professionals specializing in trade marks, patentshttp://www.pbookshop.com and all areas of intellectual property practice. Established in New Zealand in 1891, the A J Park practice deals with the Trade Marks Registries of Australia, Fiji, New Zealand and Papua New Guinea as well as other Pacic Island territories.

Nicaragua

José Bellido Tel: +44 (0) 20 7631-6510 LLB (Madrid) MA (Madrid) Fax: +44 (0) 20 7631 6506 LLM (London) E-mail: [email protected] or Birkbeck College, [email protected] University of London School of Law Malet Street lvi Contributor Directory

London WC1E 7HX United Kingdom

Guy Jose Bendaña, Tel: (505) 266-5696 LLB (Managua) or (505) 266-5697 PhD (UCA, Managua) Fax: (505) 266-8863 Partner, Guy José Bendaña- or (505) 268-0590 Guerrero & Asociados E-mail: P.O. Box 3140 [email protected] Managua 5, Nicaragua Web: www.guybendana.com.ni

Jose Bellido is a graduate of Universidad Autonoma de Madrid (LLB) and University of London (LLM). He has been Herchel Smith Junior Scholar at Queen Mary, University of London (2001), and obtained the Sir Roy Good Prize at the University of London for outstanding academic achievement (2002). He has been visiting scholar at UNR (Argentina) and stipendiat at the Max-Planck Institute for Intellectual Property (Munich, Germany, 2003). He is currently nishing his PhD at the University of London on the history of Intellectual Property law in Latin America. He teaches Law for Managers at University of College (University of London) and Intellectual Property Law at Birkbeck College (University of London). He has practiced law in Spain and UK. His research interests are legal theory, property and intellectual property and legal history. Guy José Bendaña is a partner in the intellectual property rm Guy José Bendaña-Guerrero & Asociados, formerly Henry Caldera & Henry Caldera-Pallais, founded in 1907. He is also a Professor in Intellectual Property Law in several Universities. His publications include: ‘‘Transferenciahttp://www.pbookshop.com de tecnología’’ (1984), ‘‘Comentarios al Convenio de París para la Protección de la Propiedad Industrial’’ (1996), ‘‘Temas de Derecho de Propiedad Industrial’’ (199 8), and ‘‘Curso de Derecho de Propiedad Industrial’’ (1999). Guy José Bendaña-Guerrero & Asociados is the oldest intellectual property rm in Nicaragua. For over a 100 years the rm has been involved in the drafting and counseling of Nicaraguan intellectual property laws. The rm is a member of the International Trade Mark Association (INTA), the Inter-American Industrial Property Association (ASIPI), The Chartered Institute of Arbitrators, and founding member of the Nicaraguan Intellectual Property Association (ANIPI).

K 2011 Thomson Reuters/West, 12/2011 lvii Trademark Practice & Forms

Nigeria

Theophilus I. Emuwa Tel: (+234 1) 4736296; 4617321-3 ÆLEX Fax: (+234 1) 2692072; 4617092 Legal Practioners and E-mail: [email protected] Arbitrators [email protected] Marble House Web: www.aelex.com 1, Kingsway Road, P. O. Box 52901, Ikoyi, Lagos, Nigeria

Theophilus I. Emuwa is a partner in Anga & Emuwa, Lagos, Nigeria. He qualied in mechanical engineering before becoming a lawyer. He is admitted to practise law in England & Wales, Nigeria and Ghana; and is a member of the International Bar Association; the Nigerian Society of Engineers; the WIPO Arbitration and Mediation Centre; and the International Trademark Association [INTA]. He is on the Editorial Board of The Trademark Reporter and is the author of the Nigeria section of the International Annual Review of Trademark Ju- risprudence (also published by the INTA). ÆLEX is a full service commercial and litigation law rm, one of the largest in West Africa with oces in Lagos and Port Harcourt, Nigeria, and in Accra, Ghana. The rm handles all matters (both of a contentious and noncontentious nature) relating to trademarks, patents, design, copyright, franchising, licensing, distributorship agreements and technology transfer. The rm is a member of the International Trademark Association (INTA), the AIPPI Nigeria Chapter and the Intellectual Property Law Associationhttp://www.pbookshop.com of Nigeria. The rm is also a member of Counterforce. Counterforce is a global network of law rms specialis- ing in intellectual property and anti-counterfeiting work. Counterforce is operated by the International Chamber of Commerce—Counterfeit- ing Intelligence Bureau. The rm is a member of the World Services Group, and a member of Meritas. It is also the Reviser of the Nigeria Law Digest published by Martindale-Hubbell in its International Law Directory.

North Korea (Democratic People’s Republic of Korea)

S. Ted Kwon Tel: (82 2) 3465-7700 Yoon Yang Kim Shin & Yu Fax: (82 2) 3465-7800 lviii Contributor Directory

11th Floor, Namkang Building, E-mail: [email protected] 1340-6, Seocho-dong, Seocho-gu, Web: www.yoonyang.com Seoul 137-861, Korea

Member, State Capital Global Law Firm Group, www.statecapitallaw.org S. Ted Kwon, admitted in 1986 to the Korean Patent Bar, is a partner of the law rm Kim, Shin & Yu in Seoul, Korea and has been heading the trademark practice group in the rm since 1990. Ted was a chair of the Trademark Committee of the Korean Patent Attorneys Associa- tion and was on an advisory committee to the Commissioner of the Korean Intellectual Property Oce. Ted is an active participant to INTA and has served on various committees. Yoon Yang Kim Shin & Yu is a full service law rm which provides both domestic and foreign clients with the highest quality legal services in international transactions, mergers and acquisitions, securities and nance, antitrust and fair trade, intellectual property, licensing and technology transfer, labor, maritime, tax, other general corporate and business matters, and civil, criminal, administrative, environmental, family, constitutional, medical, and international litigation and arbitration. Yoon Yang Kim Shin & Yu has a vision to grow into a world-class law rm based in Seoul, Korea by achieving its goal of providing the highest quality legal services and by taking initiatives to practice the highest ethical principles and to realize democratic human relationships.

Norway

Kate I. Løhrenhttp://www.pbookshop.com Tel: (+47) 23 32 77 00 ONSAGERS AS Fax : (+47) 23 32 77 01 Universitetsgt. 7, P.B. 6963 E-mail: [email protected] St. Olavs Plass Web: www.onsagers.com 0130 Oslo, Norway

Kate I. Lohren is a partner of ONSAGERS AS. She graduated in law from the University of Bergen in 1983. After some years in private practice, she was admitted to the bar in 1986. She had her own law rm and was also a partner of Defensor AS from 1989. She became a partner of Onsagers AS in 1997 after a merger between Defensor and Onsagers. Ms. Lohren is a board member of the Association of Norwe- gian Patent Practitioners and a subdelegate of the Ficpi Exco Committee.

K 2011 Thomson Reuters/West, 12/2011 lix Trademark Practice & Forms

Onsagers AS is one of Norway’s leading IP consultancy rms with a professional sta of more than 20 out of approximately 50 employees. We provide a wide eld of services in the areas of patent, trademark, design, company names and domain names, strategic use of immaterial property as well as enforcement of such rights, anti-counterfeiting and litigation. Our legal sta consists of six lawyers. Onsagers oers to its clients excellent opportunities to obtain, maintain and exploit industrial property rights and our rm handles a large number of international patent, trademark and design matters around the world for both Norwegian and foreign clients. The patent department handles patent matters in the elds of chemistry, biochemistry/ gene technology, inorganic chemistry, process chemistry, IT electro subjects, including protection of software and approaching software problems, machine/construction, including machine elements, mechanics, ships and oshore. In addition to current counselling and assistance to our clients with respect to patents, trademarks and design as well as strategic use of immaterial property, including company names and domain names, we oer assistance with respect to valuation of companies and ideas, licensing, contracts and design counseling. Thus our advice can promote innovation, creation and securing of assets. Onsagers is located in Oslo, Bergen, Tromsø and London.

Panama

Alvaro Javier Aguilar-Alfu Tel: +507-340-6444 / 6638-8707 Lombardi Aguilar & Garcia Fax: +507-340-6446 / 270-2521 47th Street, Ocean Plaza, E-mail: [email protected] or 12th Floor aguilara[email protected] Aptdo. 0831-0110 Skype aguilara5389 Panamahttp://www.pbookshop.com Web: www.laglex.com Republic of Panama Alvaro Aguilar earned his law degree from Universidad Santa Maria la Antigua in Panama in 1990 and an LLM from Washington College of Law, American University, Washington, D.C. He is Member of the Board of Directors and Secretary of International Relations of the Colegio Nacional de Abogados (Panama Bar Association) and Presi- dent of the Association of Chinese-Panamanian Professionals (APROCHIPA). Alvaro is also founding member and Treasurer of the Panamanian Law and New Technologies Association (APANDETEC), aswell asof the Law & Taxation and Information Technology Commit- tees of the American Chamber of Commerce of Panama (AMCHAM). He has written articles on Latin American taxation, intellectual property and other aspects of business law, such as ‘‘Enforcement of Intel- lx Contributor Directory lectual Property Protection between Mexico and the United States,’’ Fordham Intellectual Property, Media & Entertainment Law, Journal, Vol. V, No. 1, 1994 and speaks Spanish, English and French. Lombardi, Aguilar & Garcia was created as an alternative for clients worldwide who seek fast, innovative and eective solutions to their legal problems. The rm currently provides services to individual and corporate clients in Panama as well in the Americas, Europe and Asia. Its partners maintain a commitment with professional ethics and social responsibility by participating in the board of directors of groups such as the Panama Bar Association, the German Chamber of Commerce and the American Chamber of Commerce (AMCHAM) of Panama. The rm centers its law practice in private client services and asset protection (private interest foundations, trusts), business structures (oshore corporations), tax planning, real estate and e-commerce. It also advises in areas of law such as corporate, commercial, intellectual property, maritime, tax, and immigration law as well as related litigation.

Peru

Gonzalo Ferrero Diez Canseco Tel: (511) 617-9000 Ferrero, Lema, Solari & Fax: (511) 617-9010 Asociados E-mail: [email protected] Calle Los Angeles N° 340, www.efdc.com.pe Miraores Lima 18, Perú

Gonzalo Ferrero is a partner and head of the Intellectual Property and Telecommunications practice groups of Ferrero Diez Canseco & Asociados. He focuseshttp://www.pbookshop.com his practice in all areas of Intellectual Property, including Unfair Competition, and Telecommunications Law. He also has extensive experience in intellectual property litigation and prosecution. He is a recognized leader in the eld of intellectual property, having been nominated by the English publication ‘‘Who’s Who of Business Lawyers’’ (www.whoswholegal.com) as one of the leading trademark practitioners not only of Peru but of the world. He has been a member of the board of directors of the Peruvian Association of Industrial Property in the periods 1999-2001 and 2001-2003. Mr. Fer- rero received his LL.M from New York University. He was also awarded a scholarship by the Interamaerican Association of Industrial Property to study at the intellectual property institute which is held every year at the Franklin Pierce Law Center in New Hampshire. He has written numerous articles on intellectual property matters, some of which have been published in law reviews all over the country.

K 2011 Thomson Reuters/West, 12/2011 lxi Trademark Practice & Forms

Ferrero Diez Canseco & Asociados is one of the leading law rms of Peru. The rm has a diversied practice, and has represented national and also international clients in a wide range of areas, including but not limited to banking, capital markets, telecommunications, corporate, government contracts, insurance, intellectual property, investment, labor,M&A,privatizations and taxation, among others. Most of its attorneys hold masters degrees from prestigious U.S. or UK universities, and have had extensive experience in dealing with complex international matters.

Philippines

Llewellyn L. Llanillo & Tel: (632) 817-9811 Franco Noel A. Manaig Fax: (632) 817-3896 SyCip Salazar Hernandez & E-mail: Gatmaitan [email protected] 105 Paseo de Roxas [email protected] Makati City 1226 Web: www.syciplaw.com Philippines

Llewellyn L. Llanillo: Admitted to bar, 1969 (Philippines) and 19 87 (New York). Preparation education, Ateneo de Davao University (A.B.); legal education, University of the Philippines (LL.B.). Registered Trademark and Patent Attorney. Chairman and Managing Partner of SyCip Salazar Hernandez & Gatmaitan. Foreign Attorney, Anderson, Mori & Rabinowitz, Tokyo, Japan, 1975-1977. Editor: Philippine Patent Oce Decisions; IP Asia; INTA Trademark Country Guides. Named one of Asia’s leading intellectual property lawyers in AsiaLaw Proles (1997); The International Financial Law Review’s Guide to the World’shttp://www.pbookshop.com International Business Law Firms 1997; The Asia Pacic Legal 500; The Guide to Asia’s Commercial Law Firms 1997/98 Edition, Asialaw Leading Lawyers 1997 and 1996 Guide to the World’s Leading Experts in Trade Mark Law. Member: Licensing Executives Society of the Philippines (President, 1985-1988; Director, 1988-); Intellectual Property Association of the Philippines (President, 1991- 1992; Vice President, 1986-1988; Director, 1981-1989); Philip- pine Bar Association (President, 1999-2000); Integrated Bar of the Philippines (Executive Director 2003-) International Bar Association; United States Trademark Association; Asian Patent Attorneys As- sociation (Vice President, 1994-97; Councilor, 1998-); APAA Philip- pine National Group (President 1991-1992); Association Internationale pour la Protection de la Propriete Industrielle Philippine National Group (President, 1991-1992); Union Internationale des Avocats (Pres- ident of the Philippines National Committee). lxii Contributor Directory

Franco Noel A. Manaig: Admitted to bar, 1999. Preparatory education, University of the Philippines (B.S.A.B); legal education, University of the Philippines (LL.B.). Senior Associate, SyCip Salazar Hernandez & Gatmaitan. SyCip Salazar Hernandez & Gatmaitan, founded in 1945, is the largest commercial law rm in the Philippines with a diverse practice reecting the nature and quality of the national and international industries and corporations for whom it acts. Four of the partners are admitted to the New York bar, giving an indication of the rm’s international connections and capabilities. The rm is active in construction, energy, manufacturing, mining, banking and nancial services, intellectual property and all other aspects of commercial law practice and litigation. Among the many awards consistently received by the rm are the IP Asia Law’s Best IP Law Firm of the Philippines for the years 2005 and 2006.

Poland

Michal Wróblewski & Tel: +4822 6163761 Piotr Kochanski Fax: +4822 6163762 Kochanski Brudkowski & E-mail: m.wroblewski@ Partners kochanskioces.com.pl ul. Czeska 22A Web: 03-902 Warszawa, www.kochanskioces.com.pl Poland

Michal Wróblewski received a degree of BSc (Tech) in chemistry from the University of Lodz, Faculty of technology in 1973. He became a member of the Polish Chamber of Patent Attorneys in 1987. He worked as a patent attorney in the Institute of Dyes and Organic Products in Lodzhttp://www.pbookshop.com for 10 years. In May 1993 he established the Patent Agency Sójka & Wróblewski. In May 2002 he joined the Partnership of Advocates and Legal Counsellors Kochanski Brudkowski & Partners, where he is a head of noncontentious intellectual property practice. Piotr Kochanski, an advocate, is a managing partner in Kochanski Brudkowski & Partners. He received a degree of BSc (Law) from the Jagiellonian University in Kraków. Mr Kochanski was a visiting scholar at the George Washington University in Washington D.C. from 1993 to 1995. He is a member of the Bar since 1986, Warsaw Bar since 1991 and U.S. District of Columbia Bar since 1995. Kochanski Brudkowski & Partners (www.kochanskioces.com.pl) is a full service law rm with a strong IT and IP prole. It provides advice on all aspects of IP matters and handles trademark and patent litiga-

K 2011 Thomson Reuters/West, 12/2011 lxiii Trademark Practice & Forms tion and registration in-house. It was recognised in this role by Global Counsel 3000 and Intellectual Property 2002 and is a recommended rm in Poland. KBW is a member of LawExchange International (www. lawexchange.org), an international network of U.S. and European law rms.

Portugal

César Bessa Monteiro and Tel: + 351 21 3583620 Ricardo Henriques Fax: + 351 21 3159434 ABBC & Associates— E-mail: [email protected] Sociedade de Advogados RL [email protected] Largo S. Carlos, N°1a7 Website: www.abbc.pt 1200-410 Lisbon, Portugal

César Bessa Monteiro: Universidade Clássica de Lisboa, Faculdade de Direito (Bachelor of Laws). Mr. Monteiro specializes in industrial property; intellectual property; IT law; agency and distributorships; franchising; counterfeiting; arbitration; and mediation. His experience includes: Industrial Property Ocial Agent; Reporter of the Portu- guese Group in several Congress of the International Associations for the Protection of the Industrial Property (AIPPI); Lecturer in the post-graduation courses on Intellectual Property Law organised by the Lisbon School of Law and the Portuguese Association on Intel- lectual Law; author of several books published in the Intellectual Property Law and Arbitration areas; Arbitrator at the Arbitration Court of the Portuguese Commercial and Industrial Association; and Arbitrator at the Arbitration Court of the Portuguese Intellectual Property Association; Member of the Governmental Commission, which drafted the Portuguese Industrial Property Code in force as from July 1, 2003.http://www.pbookshop.com Memberships include: Member of the Intellectual Property Commission of the Portuguese Delegation of the Interna- tional Chamber of Commerce; Member of the Board of Directors of the Portuguese Group of the AIPPI; member of several associations, including INTA (International Trademark Association) Mr. Bessa Monteiro has been invited by the INTA Meetings Committee to be the chair of the roundtables in Portugal; FICPI (International Federation of the Industrial Property Consultants) and ECTA (European Com- munities Trademark Association). Professional representative before the Oce of Harmonisation of the Internal Market (Trademarks and Designs). Member of the Counterfeiting Intelligence Bureau (specialised division of the International Chamber of Commerce). Ricardo Henriques: Universidade Clássica de Lisboa, Faculdade de Direito (Bachelor of Laws). Mr. Henriques specializes in industrial property; intellectual property; counterfeit law; advertising law and lxiv Contributor Directory sports law. Abreu, Cardigos & Associados is a rm providing legal services particularly addressed to corporate entities that require a wide range of complementary services and specialised assistance in particular elds of law. The rm was incorporated in 1993 by Lisbon attorneys with a valuable experience in international law rms. Their professional legal background together with their corresponding expertise were the basis on which this project was established and allowed the rm to quickly become known and accepted in six major areas of the law: banking and nance (swaps and derivatives), taxation and tax planning (international taxation), mergers and acquisitions (MBOs, MBIs), capital markets, EU and competition law, Industrial Property and Information Technology. Abreu, Cardigos & Associados is one of the largest law rms in Portugal and the only one to have been certied by the IPQ, the Portuguese Institute for Quality, with the ISO 9001 norm.

Puerto Rico

Eugenio J. Torres-Oyola, Esq. Tel: 787-766-7000 Maristella Collazo-Soto, Esq. Fax: 787-766-7001 Ferraiuoli Torres Marchand & www.ftmrlaw.com Rovira, P.S.C. 221 Ponce De León Ave., Suite 403 Hato Rey, PR 00917

Eugenio Torres heads Ferraiuoli Torres Marchand & Rovira’s Intel- lectual Property Practice Group. He is a ranked as a Band 1 attorney in Intellectual Property in Puerto Rico by Chambers Latin America. He is registered patent attorney with the United States Patent and Trademark Oce. He teaches an Intellectual Property and Entrepre- neurship Law Clinichttp://www.pbookshop.com at the University of Puerto Rico Law School, the rst such course in the Island, and he heads the University of Puerto Rico Intellectual Property Institute. Mr. Torres Clinical class is one of only 20 in the nation certied by the United States Patent and Trademark Oce under its law school pilot program. Maristella Collazo is a member of Ferraiuoli Torres Marchand & Rovira’s Intellectual Property Practice Group. She has an LL.M. in Intellectual Property and Information Technology from the Fordham University School of Law. Ferraiuoli Torres Marchand & Rovira, P.S.C. is a multiservice law rm that is singularly focused on intellectual property. FTMR boasts the largest and most diverse IP team in Puerto Rico. This practice is what dierentiates FTMR from other rms in Puerto Rico. Today, FTMR boasts the largest and most diverse IP team in the Island. No

K 2011 Thomson Reuters/West, 12/2011 lxv Trademark Practice & Forms other rm can match the depth and variety of experiences that FTMR IP attorneys possess. FTMR has earned praise for its IP practice having been ranked as a Band 1 law rm by Chambers Latin America.

Qatar

Malik Al-Kammaz Tel: +974 4442 3992 Saba & Co. Intellectual Property Fax: +974 4432 4106 - Qatar Oce http://www.sabaip.com P.O. Box 14-035, Doha, Qatar

Romania

Musat & Asociatii tel: (40 21) 202 59 00 Attorneys-at-Law fax: (40 21) 223 39 57 Contributors: www.musat.ro Anca Musat—Partner & IP counselor Adriana Nica—Associate 43 Aviatorilor Blvd, 011853, Bucharest, 1st District Romania

Anca MUSAT is a partner at Musat & Asociatii in charge with the competition and IP department. She has been involved in a number of major mergers and acquisitions in the industry sector and has extensive experience in the competition and intellectual property aspects of these transactions. She has also gained substantial experience in mergers and acquisition/privatisation as a coordinator and as a member of legalhttp://www.pbookshop.com teams retained for the privatisation of some major State-owned company. Also, she has considerable experience in protecting and enforcing intellectual property rights, including oppositions and counterfeiting litigation. Her other areas of practice cover EU law, consumer law and banking and nance. Se has published various articles on IP law, competition law, commercial and corporate law, as well as customs law. She speaks Romanian, English, and Greek and is a Member of the Bucharest and Romanian Bar Associa- tions as well as a number of international legal organizations. Adriana NICA joined the Competition & IP practice of Musat & Asociatii as an Associate. She also specializes in the elds of European Union Law and Banking and Finance. Ms. Nica holds an LL.M. degree in International Business Law at the Central European University, Budapest. Adriana Nica is a member of the Bucharest Bar Associa- tion and is uent in English and French. lxvi Contributor Directory

Musat & Asociatii is one of the largest Romanian law rm, with its principal oce in Bucharest. The Firm has grown since its establishment to its current size of over 85 lawyers. The rm has a high level of expertise and experience in business matters, and our practice covers the whole spectrum of business activities. The rm oers a comprehensive range of legal services, including company and corporate law, project nance, banking/nance and capital markets, mergers and acquisition/privatisation, energy, communications and information technology, competition and IP, aviation, property/ construction, insurance, shipping, environmental, tax, and employment/pensions, as well as litigation, dispute management and arbitration.

Russia

Andreas Neocleous & Co LLC Tel.: +7 495 933 8703 Perevedenovskiy per., 13 Fax: +7 495 411 8504 Building 21 E-mail: [email protected] 105082 Moscow Website: www.neocleous.ru Russia

Andrey Yermakov graduated in law from the Moscow State Academy of Law and holds a Master’s degree in Jurisprudence (Business Law) from the International University, Moscow, as well as a Ph.D in law. He also gained an LL.M from Nottingham University in 2002. His main areas of practice are commercial law, intellectual property law, taxation and civil litigation. Irina Strizhakova graduated in law from the Institute of International Trade and Law of the Russian Academy for Foreign Trade in Moscow. Her main areas of practice are civil law, corporate law, arbitration law and tax law. http://www.pbookshop.com Stanislav Sorochan graduated from the law faculty of Kuban State University (Krasnodar, Russia) with the diploma of specialist in law (civil law specialisation) and in 2008 he was awarded a master’s degree (LL.M) in International Commercial Law at Kingston University, London. His main areas of practice are civil law, corporate law and international private law. The Moscow oce of Andreas Neocleous and Co LLC was established in 1991 and grew rapidly with the development of close business ties between Russia and Cyprus. Over the years the rm has built a strong reputation in Russia for providing high quality legal services to international clients entering the Russian market or making investments in Russia as well assisting domestic clients in connection with their transactions with foreign partners and in the Russian market.

K 2011 Thomson Reuters/West, 12/2011 lxvii Trademark Practice & Forms

Saudi Arabia

Alawi Hamed Almihdar Tel: +966 2 6973311 Almihdar Law Firm Fax: +966 2 6977301 Sary Street E-mail: P.O. Box 1180 aaalf@almihdarlawrm.com Jeddah 21431 Saudi Arabia

Alawi Hamed Almihdar obtained his B.A. degree in Law from Cambridge University in 1971 and his LL.B. (subsequently redesig- nated as LL.M.) in Public and Private International Law in 1972. He was awarded his M.A. by Cambridge University in 1976. He joined the Ministry of Petroleum & Mineral Resources in Saudi Arabia as Legal Adviser in the Deputy Ministry for Mineral Aairs and continued as external adviser to the Ministry for several years after leaving his full time position in the Ministry. The Almihdar Law Firm (ALF) was formed in Jeddah by Ali and Alawi Hamed Almihdar in 1976. From 1979-1985 ALF worked in close association with a leading City of London Law Firm which assisted with the development of its international legal practice. Over the years ALF have built a considerable commercial practice in Saudi Arabia and a national and international reputation, advising Saudi National clients both corporate and private, mixed Saudi foreign companies and a large number of foreign organizations such as law rms, other professionals, embassies, banks, insurance companies and other companies and commercial bodies. The rm oers a wide range of services extending from the formation of Saudi companies,http://www.pbookshop.com Foreign Investment Licensing, Licensing for other Commercial activities including Trademark Registration in the Kingdom, Shipping, Intellectual Property Protection, Agency and Distributorship matters, Construction Contracts, Arbitrations, Litiga- tion before Saudi courts, tribunals and committees, Labour Law matters, and general corporate advice.

Singapore

Ella Cheong Tel: +65 6 3333 7200 Ella Cheong Spruson & Ferguson Fax: +65 6 3333 7222 (Singapore) Pte Ltd E-mail: [email protected] 152 Beach Road #30-00 Gateway East lxviii Contributor Directory

Singapore 189721

Ella Cheong is one of Asia’s best known IP lawyers. She was a prece- dent partner at one of Hong Kong’s oldest law rms, having founded its IP department, and was also co-founder of a leading IP boutique legal rm in Singapore. She has served as a member of the Board of Directors of INTA, and has participated in many of INTA’s committees. She is Chairman of the group comprising independent members of the Association Internationale pour la Protection de la Propriete Industrielle (AIPPI) from around the world, representing them on the Council of Presidents and the Executive Committee of AIPPI, and received its Award of Merit. She sat on the Council of FICPI and she has now been elected a Member of Honour of FICPI. Ella has been featured in numerous publications (including ‘‘Who’s Who in the World,’’ ‘‘Who’s Who of Professionals’’ and various other ‘‘Who’s Who’’) as a leading professional and practitioner in each and every aspect of IP and was listed as one of the world’s top 20 trademark law practitioners in ‘‘The Best of the Best’’. She was nominated to the ABI International Directory of Distinguished Leadership Hall of Fame and featured in 2000 Outstanding Intel- lectuals of the 21st century, as well as being awarded the HK Outstanding Women Entrepreneurs Award 2002. She received Matsushita’s Panasonic Gold Award of Merit for Contribution to Protection of IP Rights 2004. Ella Cheong Spruson & Ferguson (ECSF) was formed by established leading Intellectual Property (IP) practitioners from Asia and Australia. ECSF harnesses the talents and taps the experience of its IP experts to establish a specialist regional Asian IP practice span- ning South East Asiahttp://www.pbookshop.com and the Indian sub-continent. Our combined experience adds up to more than a century, so you know you are in capable hands with that recognisable personalised service. Through our regional oces, professional associations and panel of legal counsel in the various jurisdictions throughout the region, the ECSF synergy provides a one-stop, multi-networked agency securing, protecting and enforcing your IP rights throughout Asia. Our team at ECSF comprises highly-qualied patent and trademark specialists, professionals and technical experts with impeccable academic credentials. Selected from scientic, technical and design disciplines, our host of Ph.D., Masters and Bachelors graduates have extensive and in-depth industry experience in all areas of IP.

K 2011 Thomson Reuters/West, 12/2011 lxix Trademark Practice & Forms

Slovak Republic

Eva Skottke & Dr. Alexander Tel: +421-2-5920 2111 Cizek, LL.M. Fax: +421-2-5443 4585 DLA PIPER WEISS-TESSBACH E-mail: [email protected] Rechtsanwälte GmbH, [email protected] organizacˇná zlozˇka Web: http://www.dlapiper.com/ Suché Mýto 1 Slovakrepublic/ SK-81103 Bratislava Slovak Republic

Eva Skottke studied law in Bratislava and Bielefeld in Germany. She has been a Senior Associate with DLA Piper Weiss-Tessbach based in the Bratislava oce since 1998. Eva is a specialist in the eld of intellectual property law. Her practice includes all aspects of intellectual property law such as trademarks and unfair competition practices as well as designs, copyrights and patents. Eva regularly advises national and international clients in licensing matters, in particular trademark and software licensing. Eva further deals with commercial, civil and employment law. She has also extensive experience in real estate matters. Eva speaks uently Slovak, German and English. Alexander Cizek studied law in Vienna and the U.S. and was admitted to practise in New York in 1996 and in Austria in 2000. He has been a Partner with DLA Piper Weiss-Tessbach since 2001 and heads the Intellectual Property and Technology practice group in the Vienna oce. Alexander specialises in all IP law areas including trademarks and deals with every aspect of trademark law, trade dress and design law, copyright law, software law, patent law and utility model law, transfer of technology and know-how, licensing law, etc. Alexander’s IP practice also covershttp://www.pbookshop.com legal matters of unfair competition and unfair trade practices and handles IP-related M&A transactions. He has substantial litigation experience both in court and before the Patent and Trademark Oces. Alexander is recommended in reputable publications such as Chambers and Legal 500 for his brand protection and anti-counterfeiting work. He has been ranked among the 250 ‘‘World’s Leading Patent & Technology Licensing Lawyers 2010’’ by the internationally well respected ‘‘IAM-magazine’’. DLA Piper Weiss-Tessbach Rechtsanwälte GmbH, organizacˇná zlozˇka is part of the global law rm DLA Piper. DLA Piper has more than 3,500 lawyers and provides a range of legal services around the world. Lawyers operating from oces in Asia, Europe, the Middle East and the United States provide high quality legal advice to clients in their local market and internationally. The vision of the rm is to be the leading global business law rm. DLA Piper draws on the knowledge lxx Contributor Directory of its locally and internationally trained lawyers advising on a broad range of matters including commercial, corporate, bankruptcy and restructuring, tax, nance, human resources, litigation, real estate, regulatory and legislative, technology, and media and communications in every major market around the world.

South Africa

Louise Myburgh Tel: +27 12 673 1111; Spoor & Fisher +27 12 673 1284 (direct) P O Box 454 Fax: +27 12 673 1100 Pretoria 0001 E-mail [email protected]; [email protected] Web: www.spoor.com Oce Address: Spoor and Fisher House 1 Lakeview Crescent o Kwikkie Crescent Centurion, Gauteng Republic of South Africa

Louise Myburgh is a partner of Spoor & Fisher and practices in its Centurion Oce. She has a BEcon (Hons) degree from University of Stellenbosch and an LL.B. from the University of South Africa, and is a fellow of the South African Institute of Intellectual Property Law. Her personal elds of specialization include trademark and copyright law, with emphasis on litigation. Ms. Myburgh also lectures on copyright law at the South African Institute of Intellectual Property Law. Spoor & Fisher have major oces situated in both Johannesburg and Pretoria. Johannesburg is the industrial, commercial and nancial hub of South Africa,http://www.pbookshop.com and Pretoria is the seat of the South African Pa- tent and Trade Marks Oce, as well as the court of the Commissioner of Patents. The Spoor & Fisher practice focuses on all areas of Intellectual Prop- erty Law and related elds and includes patent, design, drafting, l- ing and prosecution as well as patent litigation, sale and exploitation agreements, franchising, trademark ling, prosecution and renewals including trademark litigation and anti-counterfeiting as well as registration of Cinematograph Films and copyright litigation. The rm also conducts Intellectual Property evaluations and associated commercial work.

K 2011 Thomson Reuters/West, 12/2011 lxxi Trademark Practice & Forms

South Korea

Jay K. Lee. Esq. Tel: 82-2-6003-7590 Yoon Yang Kim Shin & Yu E-mail: [email protected] 19th Floor, ASEM Tower, #159-1 Web: www.hwawoo.com Samsung-dong, Gangnam-ku, Seoul Korea

Jay K. Lee is a partner and chair of the international practice group of Yoon Yang Kim Shin & Yu. Mr. Lee has been practicing law for more than twenty-ve years. His practice includes acting as lead counsel in numerous complex Intellectual Property and M&Amp;A transactions, trans-national litigations and international arbitrations. He has written many articles on various subjects and lectured on many occasions before business associations and colleges. He also counsels clients on broad commercial transactions, ranging from corporate governance, intellectual property transactions, real estate transactions to securities litigation. Mr. Lee received his LL.B. from Seoul National University; his J.D. from Boston University and his LL.M. from New York University. He has been serving as member of the International Chamber of Commerce, International Court of Arbitration since 2000 and also serves as board member for many corporations and not-for-prot organizations. Mr. Lee is a member of the Korea, NY State and NJ State bars. FIRM PROFILE: Yoon Yang Kim Shin & Yu is a rm established as a result of a merger between Yoon & Yang and Kim Shin & Yu. Kim Shin & Yu was established in 1968 and has been serving a broad and diversied client base, ranging from small and medium-sized companies to FORTUNE 500 companies. Yoon & Yang on the other hand acclaimed itshttp://www.pbookshop.com excellence in litigation, arbitration, various other forms of dispute resolution, bankruptcy, corporate reorganization, fair trade and anti-trust areas. The rm is comprised of a full sta of legal support personnel. Most of the stas are uent in foreign languages, such as English, French, Chinese, Japanese and German. The rm practices all aspects of corporate, antitrust, securities, business and commercial law, with particular emphasis on corporation, international trade and investment, banking, fair trade, securities and nance, real estate, taxation, admiralty, technology transfer, intellectual property, international construction, arbitration/litigation, employment and labor relations.

lxxii Contributor Directory

Spain

Enric Enrich and Tel: + 34 93 419 37 98 Elisabeth Planell Fax: + 34 93 419 48 44 Enrich Advocats E-mail: [email protected] Josep Tarradellas 155, 2 Web: www.copyrait.com 08029 Barcelona Spain

Enric Enrich’s practice focuses on private international law and intellectual property. He represents clients in many sectors of the entertainment industries. Chairman of the Copyright and Neighbour- ing rights committee of the Barcelona Bar Association, and former Co- chairman of the Committee of Intellectual Property of the Interna- tional Bar Association (IBA). Arbitrator of the WIPO and of the AFMA. Member of the International Association of Entertainment Lawyers (IAEL) and Association Litteraire et Artistique Internationale (ALAI). Elisabeth Planell’s practice focuses on Information Technology Law and Intellectual Property. She is tutor of the WIPO Worldwide Academy. Enrich, Amat i Vidal-Quadras Advocats oers a wide variety of private civil, corporate and commercial legal services, with an international focus. Our rm oers particular emphasis in intellectual property (in the areas of art law, copyright and entertainment law for the movie and music industries, information technology and computer law, as well as trademarks, tradenames and protection of other IP rights), foreign investments in Spain (direct investments, mergers and acquisitions, real estatehttp://www.pbookshop.com investments), Spanish investments abroad, international contracts (agency and distribution, license, merchandising, franchising, sports, export-import sales, construction, etc.) and international tax planning. Our attorneys are uent in foreign languages including English, French, Italian, Portuguese, Spanish and Catalan. Based in Barcelona, we have close relationships with other law Spanish rms, especially in Madrid. We serve the interests of U.S. clients in Europe, and European clients in Central and South America.

Sweden

Karin Burling Tel: +46 8 701 78 00 Advokatrma Lindhs DLA Fax: +46 8 701 78 99

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Nordic KB, E-mail: Kungsgatan 9—P.O. Box 7315 [email protected] 103 90 Stockholm Web: www.dlanordic.se Sweden

Karin Burling is a senior associate and an attorney at law (Sw: advokat) in Sweden focusing on intellectual property law, IT law and media law. Karin Burling graduated from the University of Lund, Sweden, where she obtained an LL.M. She thereafter pursued LL.M. studies in intellectual property law and in 1999 she obtained an LL.M. from the London School of Economics and Political Science, UK, in intellectual property law (focusing on IP law, trademark law, IT law and competition law). Before joining the law rm Lindhs DLA Nordic, Karin Burling worked at a district court in Sweden where she gained experience in civil litigation. She represents and counsels clients on all aspects of intellectual property matters, including trademark protection and trademark infringement matters, copyright and patent matters including licensing, reselling and transferring of IP-rights. Her work also includes advising on pharmaceutical advertisements and general market law issues as well as advising on Internet and e-commerce law including gambling and lottery matters. Karin Burling has thorough experience in all aspects of intellectual property litigation, including arbitration as well as trademark and copyright infringement actions. Lindhs DLA Nordic is the largest Pan-Scandinavian law rm with of- ces in Sweden, Denmark and Norway. The law rm ranks among the leading law rms in Sweden, Denmark and Norway. DLA Nordic provides a comprehensive cross border service to its domestic clients and is well respected as a center of expertise amongst businesses with an international focus. Its practice areas includes international trade, commercial law includinghttp://www.pbookshop.com corporate, banking, IT, intellectual property as well as tax, M&A, litigation, property and employment law. Its unique cross-border approach has made it one of Scandinavia’s most successful law rms and has attracted an increasing number of international companies in a variety of sectors.

Taiwan

Thomas Q.T. Tsai Tel: 886-2-2571-0150 Pei-Ling Tong Fax: 886-2-2562-9103 TSAI, LEE & CHEN E-mail: [email protected] 12FL., 148 Sung Chiang Rd. Web: www.tsailee.com.tw Taipei, Taiwan lxxiv Contributor Directory

Tsai, Lee & Chen is primarily engaging in the practice of intellectual property law. It is one of the few rms in Taiwan having the capability of providing clients with comprehensive services relating to patent, trademark, trade dress, copyright, trade secret, domain name, unfair competition, licensing, cyberspace law and other related matters. Most signicantly, the rm is famous and competent in hi-technology areas, such as Semiconductors, TFTLCD, Nanotechnology, 3C (Com- puter, Communication and Consumer Electronics, particularly in E-Commerce and the Internet issues), Biochemistry and Pharmaceutics. The rm is also keeping abreast with challenges of enforcing IP rights in the new technologies that are emerging from the convergence of the information sciences and biotechnology. Our strength is the quality, expertise and experience of our professionals. Our members have written texts and articles on intellectual property law and technology, made valuable inventions, received awards for academic excellence, and practiced for decades in intellectual property law. Most members hold advanced degrees in law and technical elds. Some served as patent examiners of the Intellectual Property Oce (IPO, Taiwan’s patent and trademark of- ce) before they joined the rm. Most partners have been invited to give lectures or workshops on patent, trademark and internet related subjects to local industries and the examiners of the IPO. Their views and recommendations have been frequently sought and relied on by the IPO in its formulation of patent and trademark policies and interpretation of patent, trademark and copyright law. This access to the IPO gives us valuable insights, which have benetted our clients. Several partners teach IP related courses, such as Computer and Internet Law, Intellectual Property Management . . . etc. as adjunct professors of Law at local universities, and are recognized as known authorities on these subjects in Taiwan. http://www.pbookshop.com In addition to the headquarters in Taipei, the capital city of Taiwan, there are two oces located in the Hsinchu and Tainan Science-Based Industrial Park to serve a large amount of clients from high-tech elds. Moreover, the rm also actively participates with many global IP communities, including PTMG, ABA, ECTA, APIIP, APAA, AIPLA, IPO, FICPI and INTA. The professionals of this rm are constantly invited as guest speakers in many international organizations for information reciprocity and discussion concerning the most updated IP matters around the world.

Thailand

Tilleke & Gibbins Tel: +66 2653 5555

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Supalai Grand Tower, Fax: +66 2653 5678 26th Floor, E-mail: 1011, Rama 3 Road [email protected] Chongnonsi, Yannawa Web: www.tillekeandgibbins.com Bangkok 10120 Thailand

Darani Vachanavuttivong is a Co-Managing Partner of Tilleke & Gib- bins International Ltd. in addition to her position as the Managing Director of the rm’s award-winning Intellectual Property Department. Peers and clients around the world have consistently voted the rm’s intellectual property practice as the top in Thailand, including the Thailand IP Firm of the Year Award from Asialaw (2004 to 2007), Managing Intellectual Property (2007 and 2008), and Asian- Counsel (2007). Ms. Vachanavuttivong herself has been consistently identied as a leading lawyer in the area of intellectual property. Mrs. Vachanavuttivong graduated from Thammasat University in Thailand with a Bachelor’s Degree in Business Administration (Ac- counting) in 1985, a Higher Diploma in Auditing in 1988, and a Master of Science in Accounting in 1991. She later pursued law studies and obtained her law degree in 1999 from Ramkhamhaeng University. In 2002, she successfully completed the Program of Instruction for Lawyers and Negotiation Workshop at Harvard Law School. She passed the examination for a Thai lawyer’s licence in 2004. In addition, she completed the Patent Agent Training Course conducted by the Department of Intellectual Property and is a certied patent agent. She also received a certicate for completing the SEAD Course on Drafting Patent Specications conducted by the Federation Internationale des Conseils en Propriete Industrielle. Since 1990, Mrs. Vachanavuttivonghttp://www.pbookshop.com has been responsible for Tilleke & Gibbins’ trade mark registration practice. In 2001, she became the managing director of the rm’s intellectual property registration operations, assuming responsibility also for the rm’s patent registration practice and the intellectual property registration operations for Vietnam, Cambodia, Laos and Myanmar. In 2005, she was given charge of the rm’s entire intellectual property practice. Mrs. Vachanavuttivong is currently the President of the Intellectual Property Association of Thailand in addition to being a Director of the Association. She is a frequent speaker and has authored numerous articles on intellectual property topics.

lxxvi Contributor Directory

Tunisia

Turkey

Kazim Dündar and Ömer Dündar Tel: 90 212 324 31 00 Stock Industrial Property Services A.S. Fax: 90 212 324 31 18 173 Buyukdere Caddesi, Levent E-mail: 34394 Istanbul [email protected] Turkey

Established in 1886,http://www.pbookshop.com Stock Industrial Property Services provides services to its clients in the elds of trademarks, patents and industrial designs. Kazim Dündar graduated from the Law School of Istanbul University. He has been actively engaged in industrial property work and practice for over forty years. Ömer Dündar received a business degree from the A.B. Freeman School of Business at Tulane University and a law degree from Law School of Bilgi University, Istanbul. He is engaged in trademark prosecution and litigation work and practice.

K 2011 Thomson Reuters/West, 12/2011 lxxvii Trademark Practice & Forms

Ukraine

Tetyana V. Gluhovska & Tel: +380 44 490-5400 Hlib O. Tsvietkov Fax: +380 44 490-5490 Konnov & Sozanovsky E-mail: 23 Shota Rustaveli, 5, [email protected] Kiev 01023, Ukraine Web: www.konnov.com UA

Tetyana Glukhovska is an associate with Konnov and Sozanovsky. Ms. Glukhovska concentrates her practice in intellectual property law. She represents and counsels individuals and corporate clients on intellectual property matters, including patent, trademark infringement matters and trademark protection, as well as Internet and e-commerce law. She has been heavily involved in all aspects of intellectual property litigation, including trademark and copyright infringement actions. She received her degree in law from Kiev University School of Law, and her degree in intellectual property in the Institute of Intellectual Property and Law. She is an associate member of the American Bar Association (ABA). Ms. Glukhovska is admitted to practice in Ukraine. She speaks Ukrainian, Russian, En- glish and German. Hlib Tsvetkov is an associate with Konnov & Sozanovsky. He represents Ukrainian and foreign clients in questions of trademark registration and search. He speaks Ukrainian, Russian and English.

United Kingdom

Doug McCall Tel: 0151 709 3961 W.P. Thompson &http://www.pbookshop.com Co. Fax: 0151 709 0162 Coopers Building E-mail: [email protected] Church Street Web: www.wpt.co.uk Liverpool, L1 3AB England

Doug McCall received a degree of BSc (Tech) in chemistry from Manchester University, Faculty of Technology in 1961. He joined W.P. Thompson & Co. in 1962 and has been a Partner since 1970. He is a Chartered Patent Attorney, a European Patent Attorney and a Trade Mark Attorney. He is a member of the Council of the Chartered Institute of Patent Agents and is Past President of that body. He is also a member of the Institute of Trade Mark Attorneys, a member of the European Communities Trade Mark Association (ECTA), a lxxviii Contributor Directory member of the International Trade Mark Association and a member of UNION of European Practitioners in Industrial Property. He is based in the Liverpool Oce of W.P. Thompson & Co. For over a 100 years the rm of W.P. Thompson & Co. has provided commercial and private clients, large and small, with advice on all aspects of Intellectual Property Law including Patents, Trade Marks, Registered Designs, Design Rights and Copyright. Since the rm was founded in 1873, it has established a reputation for quality of service, client care and condentiality. Over many years the rm has established strong and highly esteemed contacts with fellow Intel- lectual Property practitioners throughout the world. The rm recognises the value and importance of ongoing professional development and also is fully committed to investing in the latest communication and information technology. By combining these with our personal expertise, we can oer clients advice on a highly cost- eective basis.

United States of America

Joseph Robinson, Nadine Farid, Tel: 212-527-7700 and Steven Notto Fax: 212-753-6237 Darby & Darby E-mail: [email protected] 805 Third Avenue [email protected] New York, NY 10022 [email protected] Web: www.darbylaw.com

Anita Nesser Tel: 214/981-6764 Associate General Counsel Fax: 214/981-6855 Centex Corporation E-mail: [email protected] 2728 North Harwoodhttp://www.pbookshop.com Dallas, Texas 75201 United States

K 2011 Thomson Reuters/West, 12/2011 lxxix Trademark Practice & Forms organic, physical and polymer chemistry; prosthetics and textile processing. Mr. Robinson also has substantial experience in Patent Oce interference, reissue, and reexamination proceedings. His practice also involves trademark procurement, counseling, licensing and litigation. Nadine Farid’s experience at Darby & Darby has included the litigation of patent, trademark, false advertising and copyright claims as well as trademark counseling and clearance. Ms. Farid also has experience with new media issues, such as privacy law compliance and Internet-related crime and security issues, as well as in the successful resolution or settlement of a number of disputes before the Trademark Trial and Appeal Board and the successful negotiation of a settlement in a patent litigation before the federal district court in Los Angeles. Prior to joining to Darby & Darby, Ms. Farid practiced general commercial litigation and immigration law and served a judicial clerkship with the U.S. Department of Justice. She is currently a Lecturer on Law at Harvard Law School. Steven J. Notto, a senior foreign trademark paralegal with Darby & Darby, handles all aspects of foreign trademark prosecution, including searches, ling applications, responding to Ocial Actions, registration of trademarks, change of ownership names, trademark assignments and maintaining trademark database. Prior to joining Darby and Darby over fteen years ago, Mr. Notto worked for ten years in the eld of general trademark litigation and anticounterfeit- ing trademark litigation. Anita Nesser is an Associate General Counsel of Centex Corporation, the nation’s premier company in building and related services. Before joining Centex, Ms. Nesser was a trademark attorney for Baker Botts. Ms. Nesser received her preparatory education from Wellesley Col- lege, where she receivedhttp://www.pbookshop.com her bachelor of arts degree, cum laude, in 1987. She received her law degree from the John Marshall Law School, and is licensed to practice law in Texas, Illinois and the District of Columbia.

Vietnam

Edward J. Kelly Tel: +66 2263 7700 Director, Fax: +66 2263 7710 Intellectual Property thru 7713 Division Enforcement, Licensing E-mail: and Transactions [email protected] lxxx Contributor Directory

Tilleke & Gibbins Web: International Ltd. Tilleke & Gibbins Build- www.tillekeandgibbins.com ing 64/1 Soi Tonson, Ploenchit Bangkok 10330 Thailand

Edward J. Kelly, the Director of Tilleke & Gibbins International Ltd. Intellectual Property Division for Enforcement, Transactions and Licensing, is a graduate of Duke University (BA Economics, 1988) and the Boston University School of Law (JD, 1991). He obtained an LLM in International Law (focusing on IP law) while studying under Dr. Sompong Sucharitkul at Golden Gate University in San Francisco, California (2000), and has completed coursework in comparative (Thai/ U.S.) intellectual property law at a joint program sponsored by Chulalongkorn University and Golden Gate University in Thailand (Summer 2000). He has also completed postgraduate coursework in intellectual property law and biotechnology law at the University of San Diego (Spring 2001). Mr. Kelly was formerly a partner with the New York law rm, Kelly, Rode & Kelly, LLP and has eleven years of trial litigation experience, with over thirty jury trial verdicts. He has also served as the Director of the Contracts, Licensing and Exports Department for the global communications technology supplier, Har- ris Corporation (NYSE-HRS) in Bangkok, Thailand and Redwood Shores, California. Mr. Kelly is admitted to practice law in federal and state courts in both New York and California and is an active member of the American Bar Association’s International Intellectual Property Rights Committee and Southeast Asia Law Committee, the Computer Law Association,http://www.pbookshop.com the Anti-Counterfeiting Group and the American Chamber of Commerce (Thailand) IPR Committee. Mr. Kelly focuses his time and eorts on IP enforcement matters and IP licensing/transactions.

K 2011 Thomson Reuters/West, 12/2011 lxxxi http://www.pbookshop.com Summary of Contents

Volume 1

PART I. SPECIAL TOPICS Chapter 1. International Trademark Protection Chapter 2. Trademark Law and the Internet Chapter 3. Protecting Trademarks Worldwide

PART II. NATIONAL SYSTEMS AND FORMS Chapter 4. Albania Chapter 5. Algeria Appendix 5A. Nice Classication Chapter 6. Argentina Chapter 7. Armenia Chapter 8. Australia Chapter 9. Austria Chapter 10. Bahrain Chapter 11. Benelux Chapter 12. Bermuda Chapter 13. Bosniahttp://www.pbookshop.com and Herzegovina Chapter 14. Brazil Chapter 15. Brunei Darussalam Chapter 16. Republic of Bulgaria Chapter 17. Cambodia Chapter 18. Canada Chapter 19. Chile Chapter 20. China Chapter 21. Colombia Chapter 22. Costa Rica Chapter 23. Croatia Chapter 24. Cyprus lxxxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

Chapter 25. Denmark Chapter 26. Ecuador Chapter 27. Egypt Chapter 28. El Salvador Chapter 29. European Community Chapter 30. European Trade Mark Law Chapter 31. Finland Chapter 32. France Chapter 33. Germany Chapter 34. Ghana Appendix 34A. National Classication System Chapter 35. Greece Chapter 36. Hong Kong S.A.R. Chapter 37. India Appendix 37A. National Classication System

Volume 2

PART II. NATIONAL SYSTEMS AND FORMS (CONTINUED) Chapter 38. Indonesia Chapter 39. Iran Chapter 40. Israel Chapter 41. Italyhttp://www.pbookshop.com Chapter 42. Japan Chapter 43. Kosovo Chapter 44. Laos Chapter 45. Lebanon Chapter 46. Liechtenstein Chapter 47. Lithuania Chapter 48. Macedonia Chapter 49. Macau Chapter 50. Malaysia Chapter 51. Mexico Chapter 52. Montenegro lxxxiv Summary of Contents

Chapter 53. Morocco Appendix 53A. Nice Classication Chapter 54. Myanmar Chapter 55. New Zealand Chapter 56. Nicaragua Chapter 57. Nigeria Appendix 57A. National Classication of Goods Chapter 58. North Korea (Democratic People's Republic of Korea) Chapter 59. Norway Chapter 60. Panama Chapter 61. Papua New Guinea Chapter 62. Peru Chapter 63. The Philippines Chapter 64. Poland Chapter 65. Portugal Chapter 66. Puerto Rico Chapter 67. Qatar Chapter 68. Romania Appendix 68A. Schedule of Fees for Trademark-Related Procedures Chapter 69. Russia Chapter 70. Saudi Arabia Chapter 71. Singaporehttp://www.pbookshop.com Chapter 72. Slovak Republic Chapter 73. South Africa Chapter 74. South Korea Chapter 75. Spain Chapter 76. Sweden Chapter 77. Taiwan Chapter 78. Thailand Chapter 79. Tunisia Appendix 79A. National Classication Chapter 80. Turkey Chapter 81. Ukraine lxxxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

Chapter 82. United Kingdom Chapter 83. United States Chapter 84. Vietnam

http://www.pbookshop.com

lxxxvi Table of Contents

Volume 1

PART I. SPECIAL TOPICS CHAPTER 1. INTERNATIONAL TRADEMARK PROTECTION

I. ASEAN A. OVERVIEW § 1:1 History and scope § 1:2 Policies and objectives § 1:3 The future

B. RESOURCES § 1:4 In general

II. MADRID UNION A. OVERVIEW § 1:5 History and scope § 1:6 Policies and objectives § 1:7 The future http://www.pbookshop.com B. TRADEMARK PROVISIONS § 1:8 What is available? § 1:9 What are the limitations? § 1:10 Who can seek protection?

C. PROCEDURAL REQUIREMENTS § 1:11 Filing of the registration § 1:12 Registration and publication § 1:13 Eective date of registration § 1:14 Duration and cancellation § 1:15 Transfers and licenses § 1:16 Enforcement § 1:17 The Madrid Agreement versus the Madrid Protocol

lxxxvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms D. RESOURCES § 1:18 In general

III. NICE AGREEMENT A. OVERVIEW § 1:19 History and scope § 1:20 Policies and objectives § 1:21 The future

B. INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES § 1:22 In general

C. RESOURCES § 1:23 In general

IV. NAIROBI TREATY A. OVERVIEW § 1:24 History and scope

B. RESOURCES § 1:25 In general

V. PARIS CONVENTION A. OVERVIEW § 1:26 History and scope § 1:27 Policies and objectives § 1:28 The futurehttp://www.pbookshop.com

B. TRADEMARK PROVISIONS § 1:29 What is available?—Reciprocity § 1:30 —Priority registration § 1:31 —Common rules among nations § 1:32 What are the limitations? § 1:33 Who can seek protection?

C. PROCEDURAL REQUIREMENTS § 1:34 Filing priority registration

D. RESOURCES § 1:35 In general lxxxviii Table of Contents

VI. TLT AGREEMENT A. OVERVIEW § 1:36 History and scope § 1:37 Polices and objectives § 1:38 The future

B. TRADEMARK PROVISIONS § 1:39 What is available? § 1:40 What are the limitations?

C. RESOURCES § 1:41 In general

VII. TRIPS AGREEMENT A. OVERVIEW § 1:42 History and scope § 1:43 Policies and objectives § 1:44 The future

B. TRADEMARK PROVISIONS § 1:45 What is available? § 1:46 What are the limitations?

C. RESOURCES § 1:47 In general

VIII. WIPO CONVENTION A. OVERVIEWhttp://www.pbookshop.com

§ 1:48 History and scope § 1:49 Policies and objectives § 1:50 The Internet

B. TRADEMARK PROVISIONS § 1:51 What is available? § 1:52 What are the limitations? § 1:53 Who can seek protection?

C. PROCEDURAL REQUIREMENTS § 1:54 Mediation § 1:55 Arbitration lxxxix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 1:56 Expedited arbitration

D. RESOURCES § 1:57 In general CHAPTER 2. TRADEMARK LAW AND THE INTERNET § 2:1 Domain name trademark infringement—Domain-name piracy before the enactment of the Anticybersquatting Consumer Protection Act (ACPA) § 2:2 —Anticybersquatting Consumer Protection Act (ACPA) § 2:3 —Uniform Domain Name Dispute Resolution Policy (UDRP) § 2:4 Other forms of trademark infringement on the internet § 2:5 —Use of trademarks on social networking sites § 2:6 —Use of trademarks as metatags § 2:7 —Keyword advertising § 2:8 —Pop-up advertising § 2:9 Fair use § 2:10 Criticism sites § 2:11 Conclusion CHAPTER 3. PROTECTING TRADEMARKS WORLDWIDE § 3:1 Overview § 3:2 Trademark property rights—Types of registrable trademarks and service marks § 3:3 —Not registrable § 3:4 International treaties § 3:5 Philosophies of trademark protection—“rst to use” and “rst to le” § 3:6 Strategies—Madridhttp://www.pbookshop.com Protocol lings § 3:7 —European community lings § 3:8 —Protection from trademark piracy § 3:9 —Capturing rights in nascent trademarks for developing technologies § 3:10 Trademark licensing § 3:11 Costs, representation and procedural requirements § 3:12 Maintenance of trademark rights—Renewal § 3:13 —Opposing confusingly similar marks § 3:14 —Preventing cancellation § 3:15 —Proper marking § 3:16 —Proper use § 3:17 Selected country overviews § 3:18 Australia § 3:19 Canada xc Table of Contents

§ 3:20 China § 3:21 European Community (EC) § 3:22 India § 3:23 Japan § 3:24 Korea (South) § 3:25 Mexico § 3:26 New Zealand § 3:27 United Kingdom (covering England, Wales, Scotland, Northern Ireland and the Isle of Man) § 3:28 United States

PART II. NATIONAL SYSTEMS AND FORMS CHAPTER 4. ALBANIA

I. OVERVIEW § 4:1 The basics § 4:2 Policies and trends—Trade and regulatory climate § 4:3 —Why register locally? § 4:4 —The future § 4:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 4:6 What is a mark? § 4:7 Which marks may be registered?—Trademark for goods / trademark for services [service mark] § 4:8 —Collective trademark § 4:9 —Certication trademark § 4:10 —Colored trademarkhttp://www.pbookshop.com § 4:11 What cannot be registered? § 4:12 —Non-distinctive or descriptive marks § 4:13 —Marks that are immoral § 4:14 —Deceptive trademarks § 4:15 —Marks with unauthorized content § 4:16 —Identical, similar § 4:17 Who can register?—Proprietor or user § 4:18 —Authorized agent § 4:19 —Priority registrant

III. TRADEMARK REGISTER § 4:20 Where is the trademark registered?—Trademark register § 4:21 —Requirement of distinctiveness § 4:22 —Exclusive use rights xci K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 4:23 —Limitation on exclusive use rights § 4:24 —Enforcement § 4:25 —Validity

IV. INITIAL REGISTRATION § 4:26 Procedural timeline—Search and advice § 4:27 —Application and fees § 4:28 —Formal examination § 4:29 —Filing certicate/serial number § 4:30 —Publication § 4:31 —Oppositions/observations § 4:32 —Substantive examination § 4:33 —Re-examination § 4:34 —Registration § 4:35 Average processing times—Registration § 4:36 —Government fee schedule

V. REGISTRATION FORMS § 4:37 Information checklist § 4:38 Registration forms § 4:39 Power of attorney

VI. POST-REGISTRATION § 4:40 Renewal of registration—Duration of protection § 4:41 —Renewal § 4:42 —After expiration renewal § 4:43 —Reinstatement § 4:44 —Advertisement of renewal § 4:45 Alteration or modication—Correction of mistakes § 4:46 —Correctionshttp://www.pbookshop.com to trademark § 4:47 —Corrections to goods and/or services § 4:48 —Corrections to name or address § 4:49 Cancellation of registration—At request of owner § 4:50 —Actions by court—Revocation of a trademark registration § 4:51 — —Invalidation of a trademark registration § 4:52 Removal of trademark for non-use § 4:53 Assignments—Rights to assign § 4:54 —Legal documents § 4:55 —Recordation of assignment § 4:56 Licensees or registered users—Right to grant use § 4:57 —Rights of the licensor § 4:58 —Rights of the licensee § 4:59 —Legal documents § 4:60 —Recordation of license xcii Table of Contents

VII. RESOURCES § 4:61 In general CHAPTER 5. ALGERIA

I. OVERVIEW § 5:1 The basics § 5:2 Policies and trends—Trade and regulatory climate § 5:3 —Why register locally? § 5:4 —The future

II. REGISTRATION REQUIREMENTS § 5:5 What is a mark? § 5:6 Which marks may be registered?—Trademark for goods § 5:7 —Trademark for services § 5:8 —Collective trademark § 5:9 —Colored trademark § 5:10 What cannot be registered? § 5:11 Who can register?—Proprietor or user § 5:12 —Authorized agent § 5:13 —Priority registrant § 5:14 —Incorporation

III. INITIAL REGISTRATION § 5:15 Trademark register § 5:16 Search and advice § 5:17 Application § 5:18 Response of INAPI § 5:19 Publication http://www.pbookshop.com IV. POST-REGISTRATION § 5:20 Duration of protection § 5:21 Renewal § 5:22 Cancellation of registration § 5:23 Assignments—Rights to assign § 5:24 —Recordation of assignment § 5:25 —Legal documents § 5:26 Licensees or registered users—Right to grant use § 5:27 —Rights of the proprietor § 5:28 —Penalties § 5:29 — —Damages § 5:30 — —Seizure and destruction of the imitated products § 5:31 — —Publication of the judgment in newspapers § 5:32 —Rights of the licensee xciii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 5:33 —Recordation of license

V. REGISTRATION FORMS § 5:34 Power of attorney form § 5:35 —French § 5:36 Application for ling of a trademark § 5:37 Application for the priority of the registered mark § 5:38 Application for the correction of mistakes on each mark § 5:39 Deed of assignment form § 5:40 Application for international registration (madrid agreements) § 5:41 Substitution for international registration § 5:42 Recording any other application related to a change of name § 5:43 Recording any other application related to address § 5:44 Partial or total renunciation of trademark § 5:45 Application for assignment, concession or license

VI. RESOURCES § 5:46 In general Appendix 5A. Nice Classication CHAPTER 6. ARGENTINA

I. OVERVIEW § 6:1 The basics § 6:2 Policies and trends—Trade and regulatory climate § 6:3 Why register locally § 6:4 The future § 6:5 Laws, rules and regulations II. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 6:6 What is a mark? § 6:7 Which marks may be registered?—Trademark (for goods) § 6:8 —Service marks § 6:9 —Trade names § 6:10 —Collective trademark § 6:11 —Certication trademark § 6:12 —Marks in color § 6:13 —Defensive trademark § 6:14 What cannot be registered? § 6:15 —Marks that are “immoral, deceptive or scandalous” § 6:16 —Marks that are names, portraits or signatures of living individuals § 6:17 —Identical, similar, and deceptive trademarks § 6:18 —Opposed mark xciv Table of Contents

§ 6:19 —Generic or descriptive marks § 6:20 —Geographically descriptive § 6:21 —Natural or intrinsic color § 6:22 —Originality § 6:23 —Shapes § 6:24 —Ocial signs and emblems § 6:25 Who can register? § 6:26 —Proprietor or user § 6:27 —Priority registrant § 6:28 —Joint owners or users

III. TRADEMARK REGISTER § 6:29 Where is the trademark registered?—Trademark register § 6:30 —Requirement of distinctiveness § 6:31 —Exclusive use rights § 6:32 —Remedies: infringement; enforcement

IV. INITIAL REGISTRATION § 6:33 Procedural timeline—Search § 6:34 —Application and review § 6:35 —Publication and response § 6:36 —Ocial actions § 6:37 —Opposition

V. REGISTRATION FORMS § 6:38 Information checklist § 6:39 Power of attorney form § 6:40 Power of attorney § 6:41 Poder § 6:42 Application for registration of trademark (initial registration form) § 6:43 Oppositionhttp://www.pbookshop.com form VI. POST-REGISTRATION § 6:44 Renewal of registration—Duration of protection § 6:45 —Renewal before expiration § 6:46 —Renewal after expiration § 6:47 —Reinstatement § 6:48 Alteration or modication—Obvious errors § 6:49 —To trademark § 6:50 —To goods and/or services § 6:51 —To name or address § 6:52 Cancellation of registration—The property rights over a trademark are extinguished: § 6:53 —Registered trademarks are null: § 6:54 Assignments xcv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 6:55 Licensees or registered users—Recordation of license § 6:56 Assignment form § 6:57 Change of name form

VII. RESOURCES § 6:58 In general CHAPTER 7. ARMENIA

I. OVERVIEW § 7:1 The basics § 7:2 Policies and trends—Trade and regulatory climate § 7:3 —Why register locally? § 7:4 —The future § 7:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 7:6 What is a mark? § 7:7 Which marks may be registered?—Trademark for goods/trademark for services [service mark] § 7:8 —Collective trademark § 7:9 —Certication trademark § 7:10 —Colored trademark § 7:11 What cannot be registered?—Types of marks that are not envisaged by the trademark law § 7:12 —Non-distinctive or descriptive marks § 7:13 —Marks that are immoral § 7:14 —Deceptive trademarks § 7:15 —Marks with unauthorized content § 7:16 —Identical/similar § 7:17 Who can register?—Proprietorhttp://www.pbookshop.com or user § 7:18 —Authorized agent § 7:19 —Priority registrant

III. TRADEMARK REGISTER § 7:20 Where is the trademark registered?—Trademark register § 7:21 —Requirement of distinctiveness § 7:22 —Exclusive use rights § 7:23 —Limitation on exclusive use rights § 7:24 —Validity

IV. INITIAL REGISTRATION § 7:25 Procedural timeline—Search and advice § 7:26 —Application and fees xcvi Table of Contents

§ 7:27 —Filing receipt/serial number § 7:28 —Preliminary examination § 7:29 —Publication § 7:30 —Oppositions/observations § 7:31 —Substantive examination § 7:32 —Re-examination § 7:33 —Registration § 7:34 Average processing times—Registration

V. REGISTRATION FORMS § 7:35 Information checklist § 7:36 Registration forms § 7:37 Power of attorney

VI. POST-REGISTRATION § 7:38 Renewal of registration—Duration of protection § 7:39 —Renewal before expiration § 7:40 —Renewal after expiration § 7:41 —Reinstatement § 7:42 —Advertisement of renewal § 7:43 Alteration or modication—Errors or omissions due to the fault of the ipa § 7:44 —To trademark § 7:45 —To goods and/or services § 7:46 —To name or address § 7:47 Cancellation of registration—Action by registrar § 7:48 —At request of owner § 7:49 —Actions by court—Revocation of a trademark registration § 7:50 — —Invalidation of a trademark registration § 7:51 Removal of trademark for non-use § 7:52 Assignments—Rights to assign § 7:53 —Legal documents § 7:54 —Form ofhttp://www.pbookshop.com assignment agreement (important!) § 7:55 —Recordation of assignment § 7:56 Licensees or registered users—Right to grant use § 7:57 —Rights of the licensor § 7:58 —Rights of the licensee § 7:59 —Legal documents § 7:60 —Recordation of license

VII. RESOURCES § 7:61 In general CHAPTER 8. AUSTRALIA

I. OVERVIEW § 8:1 The basics xcvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 8:2 Policies and trends—Trade and regulatory climate § 8:3 —Why register locally? § 8:4 —The future § 8:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 8:6 What is a mark? § 8:7 Which marks may be registered?—Trademark for goods § 8:8 —Trademark for services § 8:9 —Collective trademark § 8:10 —Certication trademark § 8:11 —Defensive trademark § 8:12 —Series of trade marks § 8:13 —Colored trademark § 8:14 —Madrid protocol trade marks § 8:15 What cannot be registered?—Identical, similar, and deceptive marks § 8:16 —Opposed mark § 8:17 —Nominative or descriptive trademark § 8:18 —Trade marks with prohibited matters § 8:19 —Trade marks with prohibited words or representations § 8:20 Who can register?—Proprietor or user § 8:21 —Priority registrant § 8:22 —Joint owners or users § 8:23 —Authorized agent

III. TRADEMARK REGISTER § 8:24 Where is the trademark registered?—Trade marks register § 8:25 —Requirement of distinctiveness § 8:26 —Exclusive use rights § 8:27 —Limitation on exclusive use rights § 8:28 —Infringementhttp://www.pbookshop.com and validity

IV. INITIAL REGISTRATION § 8:29 Procedural timeline—Search § 8:30 —Assisted ling service (AFS) § 8:31 —Application § 8:32 —Review § 8:33 —Registration § 8:34 —Amendment

V. REGISTRATION FORMS § 8:35 Information checklist § 8:36 Common form requirements § 8:37 Application to register a trade mark xcviii Table of Contents

§ 8:38 Notice of opposition (national) § 8:39 Notice of opposition (international under the madrid protocol) § 8:40 Request to amend a trade mark application or registration § 8:41 Notication of change of name/address/address for service § 8:42 Request for deferment of acceptance § 8:43 Application for an extension of time (between 15 and 21 months) § 8:44 Application for an extension of time under section 224 § 8:45 Application for an extension of time (for lodging opposition) § 8:46 Notice of withdrawal of an application or cancellation of a registration § 8:47 Payment of trade mark registration fee

VI. POST-REGISTRATION § 8:48 Renewal of registration—Duration of protection § 8:49 —Renewal before expiration § 8:50 —Renewal after expiration § 8:51 —Status of unrenewed trademark § 8:52 —Notice of renewal § 8:53 Amendment—Action by registrar at request of owner § 8:54 —Change in classication by registrar § 8:55 —Correction of register by registrar § 8:56 —Correction of error or omission by federal court § 8:57 —Violation of condition § 8:58 —Loss of exclusive use § 8:59 —Miscellaneous grounds for amendment § 8:60 Cancellation of registration—Action by registrar—At request of owner § 8:61 —Action by court—For violation of condition § 8:62 — —Loss of exclusive use § 8:63 — —Miscellaneous grounds for amendment § 8:64 Removal of trademark for non-use—Grounds for removal § 8:65 —Time of applicationhttp://www.pbookshop.com § 8:66 —Notication § 8:67 —Opposition § 8:68 —Removal and restoration § 8:69 Assignments—Right to assign § 8:70 —Recordation of assignment § 8:71 Licensees or users—Right to grant use § 8:72 Application to record assignment or transmission of a trade mark § 8:73 Application to record a claim to interest or right in a trade mark § 8:74 Application for removal of trade mark from register for non-use § 8:75 Request for renewal of the registration of a trade mark

VII. RESOURCES § 8:76 In general xcix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms CHAPTER 9. AUSTRIA

I. OVERVIEW § 9:1 The basics § 9:2 Policies and trends—Trade and regulatory climate § 9:3 —Why register locally? § 9:4 —The future § 9:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 9:6 What is a trademark? § 9:7 Which marks may be registered? § 9:8 —Trademark of goods § 9:9 —Trademark of services § 9:10 —Collective trademark § 9:11 —Defensive trademarks § 9:12 —Colour trademarks § 9:13 What cannot be registered? § 9:14 Who can register? § 9:15 —Proprietor or user § 9:16 —Authorized agent § 9:17 —Priority § 9:18 —Joint owners or users § 9:19 —Proposed corporation

III. TRADEMARK REGISTER § 9:20 Where is the trademark registered? § 9:21 —Requirement of distinctiveness § 9:22 —Exclusive use rights § 9:23 —Limitation on exclusive use rights § 9:24 —Enforcement—Cancellationhttp://www.pbookshop.com § 9:25 —Injunction § 9:26 —Publication § 9:27 —Claim for abatement § 9:28 —Appropriate compensation and missed prots § 9:29 —Penal punishment § 9:30 —Validity

IV. INITIAL REGISTRATION § 9:31 Procedural timeline § 9:32 —Pre-application search § 9:33 —Application § 9:34 —Review by the patent oce § 9:35 —Similarity research c Table of Contents

§ 9:36 —Registration § 9:37 —Publication § 9:38 —Opposition § 9:39 —Time constraints § 9:40 —Average processing times § 9:41 —Priority information § 9:42 —Payment of fees § 9:43 —Notication

V. REGISTRATION FORMS § 9:44 Information checklist § 9:45 Application for registration of trademark § 9:46 Trademark application form

VI. POST-REGISTRATION § 9:47 Renewal of registration—Duration of protection § 9:48 —Renewal before expiration § 9:49 —Renewal after expiration § 9:50 —Reinstatement § 9:51 —Advertisement of renewal § 9:52 Amendment—Action by register at request of owner § 9:53 —To goods and/or services § 9:54 —To name or address § 9:55 Cancellation of registration § 9:56 Assignment—Rights to assign § 9:57 —Recordation of assignment § 9:58 —Legal documents § 9:59 Licencees or registered users—Rights to grant use § 9:60 —Rights of the proprietor § 9:61 —Rights of the licencee § 9:62 —Recordationhttp://www.pbookshop.com of the licence § 9:63 —Legal documents VII. RESOURCES § 9:64 In general CHAPTER 10. BAHRAIN

I. OVERVIEW § 10:1 The basics § 10:2 Policies and trends § 10:3 —Trade and regulatory climate § 10:4 —Why register locally? § 10:5 —The future ci K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 10:6 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 10:7 What is a mark? § 10:8 Which marks may be registered?—Trademark for goods § 10:9 —Trademark for services § 10:10 —Collective trademark § 10:11 What cannot be registered? § 10:12 Who can register?

III. TRADEMARK REGISTER § 10:13 Where is the trademark registered?—Ministry of Commerce and Industry § 10:14 —Filing methods § 10:15 —Registers § 10:16 —Requirement of distinctiveness § 10:17 —Exclusive use rights § 10:18 —Limitation on exclusive use rights § 10:19 —Incontestability § 10:20 —Enforcement § 10:21 —Validity

IV. INITIAL REGISTRATION § 10:22 Procedural timeline—Search and advice § 10:23 —Application § 10:24 —Review § 10:25 —Registration

V. REGISTRATION FORMS § 10:26 In generalhttp://www.pbookshop.com § 10:27 Power of Attorney form § 10:29 Application for Registration of Trademark (Initial Registration form)

VI. POST-REGISTRATION § 10:30 Renewal of registration—Duration of protection § 10:31 —Renewal before expiration § 10:32 —Renewal after expiration § 10:33 —Reinstatement § 10:34 —Advertisement of renewal § 10:35 Amendment—Action by registrar at request of owner § 10:36 Alteration or modication—Obvious errors § 10:37 —To trademark § 10:38 —To goods and/or services cii Table of Contents

§ 10:39 —To name or address § 10:40 Cancellation of registration—Action by court § 10:41 —Miscellaneous grounds for amendment § 10:42 Removal of trademark for non-use—Grounds for removal § 10:43 Assignments—Rights to assign § 10:44 —Recordation of assignment § 10:45 Licensees or registered users—Right to grant use § 10:46 —Rights of the licensee § 10:47 —Recordation of license

VII. RESOURCES § 10:48 In general CHAPTER 11. BENELUX

I. OVERVIEW § 11:1 The basics § 11:2 Policies and trends—Trade and regulatory climate § 11:3 —Why register locally? § 11:4 —The future § 11:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 11:6 What is a trademark? § 11:7 Which trademarks may be registered? § 11:8 —Word/label trademarks § 11:9 —Trademark for goods/services § 11:10 —Associated trademark § 11:11 —Individual trademark § 11:12 —Collective trademark (article 2.34 bcip) § 11:13 —Certicationhttp://www.pbookshop.com trademark § 11:14 —Three-dimensional (plastic) trademarks § 11:15 —Colored trademark § 11:16 —Smell/sound trademark § 11:17 —Defensive trademarks § 11:18 —Commercial trademarks § 11:19 —Series of trademarks § 11:20 —Complex trademarks § 11:21 What cannot be registered? § 11:22 Who can register? § 11:23 —Proprietor or user § 11:24 —Authorized agent § 11:25 —Priority registrant § 11:26 —Joint owners or users § 11:27 —Proposed corporation ciii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms III. TRADEMARK REGISTER § 11:28 Where is the trademark registered? § 11:29 Trademark oces § 11:30 —National oces—Belgium § 11:31 — —The netherlands § 11:32 — —Grand-duchy of luxembourg § 11:33 — —World intellectual property organization (wipo) § 11:34 —Requirement of distinctiveness § 11:35 —Exclusive use rights § 11:36 —Limitation on exclusive use rights—Enforcement § 11:37 —Validity

IV. INITIAL REGISTRATION § 11:38 Procedural timeline § 11:39 —Application § 11:40 —Formal examination § 11:41 —Publication for opposition purpose § 11:42 —Opposition procedure § 11:43 —Examination of absolute grounds of protection § 11:44 —Prior marks search § 11:45 —Registration § 11:46 —Publication § 11:47 Average processing times

V. REGISTRATION FORMS § 11:48 Information checklist § 11:49 Registration forms § 11:50 Initial registration documents VI. POST-REGISTRATIONhttp://www.pbookshop.com § 11:51 Renewal of registration—Duration of protection § 11:52 —Renewal before expiration § 11:53 —Renewal after expiration § 11:54 —Reinstatement § 11:55 —Advertisement of renewal § 11:56 Amendment—Action by registrar at request of owner § 11:57 —Change in classication by registrar § 11:58 —Correction of error or omission by federal court § 11:59 —Violation of condition § 11:60 —Loss of exclusive use § 11:61 —Miscellaneous grounds for amendment § 11:62 Alteration or modication § 11:63 —Obvious errors—To trademark § 11:64 — —To goods and/or services civ Table of Contents

§ 11:65 — —To name or address § 11:66 Cancellation of registration § 11:67 Removal § 11:68 —Action by registrar § 11:69 —At request of owner § 11:70 —Action by court § 11:71 Removal of trademark for non-use § 11:72 —Grounds for removal § 11:73 —Time of application § 11:74 —Notication § 11:75 —Opposition § 11:76 —Removal and restoration § 11:77 Assignment—Rights to assign § 11:78 —Recordation of assignment § 11:79 —Legal documents § 11:80 Licensees or registered users—Right to grant use § 11:81 —Rights of the proprietor § 11:82 —Rights of the licensee § 11:83 —Recordation of license § 11:84 —Legal documents

VII. RESOURCES § 11:85 In general CHAPTER 12. BERMUDA

I. OVERVIEW § 12:1 The basics § 12:2 Policies and trends—Trade and regulatory climate § 12:3 —Why register locally? § 12:4 —The futurehttp://www.pbookshop.com II. REGISTRATION REQUIREMENTS § 12:5 What is a mark? § 12:6 Which marks may be registered?—Trade mark for goods § 12:7 —Trade mark for services § 12:8 —Colored trade mark § 12:9 —Defensive trade mark § 12:10 —Series of trade marks § 12:11 What cannot be registered? § 12:12 —Immoral, deceptive or scandalous § 12:13 —Identical and similar trade marks § 12:14 —Nominative or descriptive marks § 12:15 —Marks with unauthorized content § 12:16 —Marks with prohibited content cv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 12:17 Who can register?—Proprietor or user § 12:18 —Authorized agent § 12:19 —Priority registrant § 12:20 —Joint owners or users § 12:21 —Proposed corporation

III. TRADEMARK REGISTER § 12:22 Where is the trademark registered?—Trademark register § 12:23 —Requirement of distinctiveness § 12:24 —Exclusive use rights § 12:25 —Limitation on exclusive use rights § 12:26 —Enforcement § 12:27 —Validity

IV. INITIAL REGISTRATION § 12:28 Procedural timeline—Search and advice § 12:29 —Application § 12:30 —Examination § 12:31 —Response § 12:32 —Publication § 12:33 —Application for entry § 12:34 —Issue of certicate § 12:35 Average processing times § 12:36 Government ocial fees

V. REGISTRATION FORMS § 12:37 Initial registration form § 12:38 Authorization of agent § 12:39 —Trade mark/service mark registration questionnaire VI. POST-REGISTRATIONhttp://www.pbookshop.com § 12:40 Renewal of registration—Duration of protection § 12:41 —Renewal before expiration § 12:42 —Renewal after expiration § 12:43 —Reinstatement § 12:44 Alteration or modication—Obvious errors § 12:45 —To trade mark § 12:46 —To goods and/or services § 12:47 —To name or address § 12:48 Cancellation of registration—Registration of a trade mark may be cancelled for the following reasons: § 12:49 Assignments—Rights to assign § 12:50 —Recordation of assignment § 12:51 —Legal documents § 12:52 Licensees or registered users cvi Table of Contents

§ 12:53 —Right to register licensee as registered user § 12:54 —Rights of the proprietor § 12:55 —Rights of the licensee § 12:56 —Recordation of license

VII. RESOURCES § 12:57 In general CHAPTER 13. BOSNIA AND HERZEGOVINA

I. OVERVIEW § 13:1 The basics § 13:2 Policies and trends—Trade and regulatory climate § 13:3 —Why register locally? § 13:4 —The future § 13:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 13:6 What is a mark? § 13:7 Which marks may be registered?—Trademark for goods § 13:8 —Trademark for services § 13:9 —Collective mark § 13:10 —Certication mark § 13:11 —Color marks § 13:12 What cannot be registered? § 13:13 —Absolute grounds:—Marks that are immoral or contrary to public policy § 13:14 — —Nominative or descriptive marks § 13:15 — —Identical mark § 13:16 — —Marks with prohibited content § 13:17 —Relativehttp://www.pbookshop.com grounds:—Similar marks § 13:18 — —Marks with prohibited content § 13:19 Who can register? § 13:20 —Priority registration

III. TRADEMARK REGISTER § 13:21 Where is the trademark registered?—Kinds of registers § 13:22 —Exclusive rights § 13:23 —Exhaustion of right § 13:24 —Limitation of exclusive rights § 13:25 —Acquisition and validity of a trademark

IV. INITIAL REGISTRATION § 13:26 Prescribed procedural steps—Search cvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 13:27 —Application § 13:28 —Action by the registrar § 13:29 —Publication and opposition

V. REGISTRATION FORMS § 13:30 Required information

VI. RESOURCES § 13:31 In general CHAPTER 14. BRAZIL

I. OVERVIEW § 14:1 The basics § 14:2 Policies and trends—Intellectual and industrial property § 14:3 Recent administrative updates—Resolution No. 126/06 on August 10, 2006 § 14:4 —Resolution No. 127/06 on August 10, 2006 § 14:5 —Resolution No. 128/06 on August 10, 2006 § 14:6 —Resolution No. 144/07 on April 18, 2007 § 14:7 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 14:8 What is a mark? § 14:9 Which marks may be registered?—Trademark for goods § 14:10 —Trademark for services § 14:11 —Collective trademark § 14:12 —Certication trademark § 14:13 What cannot be registered? § 14:14 —Identicalhttp://www.pbookshop.com or similar, and deceptive trademarks § 14:15 —Marks with unauthorized content § 14:16 —Wordmark or descriptive marks § 14:17 —Names, symbols of events § 14:18 Who can register?—Proprietor or user § 14:19 —Priority registrant

III. TRADEMARK REGISTER § 14:20 Where is the trademark registered?—Trademark register § 14:21 —Requirement of distinctiveness § 14:22 —Exclusive use rights § 14:23 —Enforcement

IV. INITIAL REGISTRATION § 14:24 Procedural timeline—Search cviii Table of Contents

§ 14:25 —Application § 14:26 —Review § 14:27 —Registration

V. REGISTRATION FORMS § 14:28 Information checklist § 14:29 Power of attorney form § 14:30 Application for registration of trademark (initial registration form) § 14:31 Contract of assignment (deed of assignment)

VI. POST-REGISTRATION § 14:32 Renewal of registration—Duration of protection § 14:33 —Renewal before expiration § 14:34 —Renewal after expiration § 14:35 —Reinstatement § 14:36 Alteration or modication—To trademark § 14:37 —To goods and/or services § 14:38 —To name or address § 14:39 Cancellation of registration § 14:40 Assignments § 14:41 —Recordation of assignment § 14:42 —Legal documents § 14:43 Licensees or registered users § 14:44 —Recordation of license § 14:45 —Rights of the parties § 14:46 —Cancellation of assignment or license

VII. RESOURCES § 14:47 In general CHAPTER 15.http://www.pbookshop.com BRUNEI DARUSSALAM

I. OVERVIEW § 15:1 The basics § 15:2 Policies and trends—Trade and regulatory climate § 15:3 —Historical basis of trade mark protection in brunei § 15:4 —Why register locally? § 15:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 15:6 What is a trade mark? § 15:7 Which marks may be registered?—Trademark for goods § 15:8 —Associated trademark § 15:9 —Collective mark cix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 15:10 —Series of trademarks § 15:11 —Certication trademark § 15:12 What cannot be registered? § 15:13 —Identical marks § 15:14 —Similar to earlier mark and likelihood of confusion § 15:15 —Unfair advantage and distinctive character of earlier mark § 15:16 —No infringement of copyright § 15:17 —Unauthorised use of royal arms etc § 15:18 —Well-known trade marks and protection under paris convention § 15:19 —Marks with prohibited matters § 15:20 —Oences committed by partnership and bodies corporate § 15:21 Who can register?—Proprietor or user § 15:22 —Recognition and register of trade mark agents

III. TRADEMARK REGISTER § 15:23 Where is the trademark registered?—Trade marks register § 15:24 —Exclusive rights conferred by registered trade mark

IV. INITIAL REGISTRATION § 15:25 Procedural timeline—Application for registration § 15:26 —Public inspection of register § 15:27 —Request for information and inspection of documents § 15:28 —Registration procedure—Examination of application § 15:29 — —Signature on documents § 15:30 — —Address for service § 15:31 — —Registration procedure and examination of application § 15:32 —Representation of trade marks § 15:33 —Further representation of trade marks § 15:34 —Examination report and applicants response § 15:35 —Time frame to respond § 15:36 —Amendmenthttp://www.pbookshop.com of application § 15:37 —Acceptance of application § 15:38 —Publication of application § 15:39 —Certicate of registration § 15:40 —Duration of registration § 15:41 —Opposition proceedings § 15:42 —Opposition hearing § 15:43 —Entry and issuance of certicate

register a trade mark under sections 33 to 35 and rules 13 and 17 § 15:48 Form TM 2 Brunei Darussalam Trade Marks Act application for additional classes under rule 19(4) § 15:49 Form TM 3 Brunei Darussalam Trade Marks Act request to the registrar for a statement of grounds of decision under rules 24(6) and 64(2) § 15:50 Form TM 4 Brunei Darussalam Trade Marks Act notice of opposition section 39(2) and rule 29(1) section 40(3) and rule 23(2) section 45 and rule 53(3) rule 42(2)(a) rst schedule paragraph 10 of the act and rule 56(3) second schedule paragraph 9 of the act and rule 57(3) § 15:51 Form TM 5 Brunei Darussalam Trade Marks Act form for counter-statement under rules 29(2) and 55(3) § 15:52 Form TM 6 Brunei Darussalam Trade Marks Act request for an extension of time on an application under rule 68(2) § 15:53 Form TM 7 Brunei Darussalam Trade Marks Act renewal of trade mark registration under section 44 and rule 48 and rule 49 § 15:54 Form TM 8 Brunei Darussalam Trade Marks Act request to divide an application under section 42, rule 15(1) and rule 17(2) § 15:55 Form TM 9 Brunei Darussalam Trade Marks Act request for the restoration and renewal of a registration removed from the register because of non-payment of the renewal fee under section 44(5) and rule 50 § 15:56 Form TM 11 Brunei Darussalam Trade Marks Act application to register a change of proprietor under section 26 and rule 52(1)(a) § 15:57 Form TM 12 Brunei Darussalam Trade Marks Act request to merge either applications or registrations under section 42 and rule 16 § 15:58 Form TM 13 Brunei Darussalam Trade Marks Act request to change the details of an application or a registration under sections 40(2) and 61(4) and rules 14(3), 22(1) and 38 § 15:59 Form TM 14 Brunei Darussalam Trade Marks Act notice to surrender a registration under section 46 and rule 54(1)(a) § 15:60 Form TMhttp://www.pbookshop.com 15 Brunei Darussalam Trade Marks Act notice of a partial surrender of the specication of goods or services for which the mark is registered under section 46 and rule 54(1)(b) § 15:61 Form TM 16 Brunei Darussalam Trade Marks Act application to record or cancel a registrable transaction or memorandum relating to a trade mark other than an assignment or licence under section 26 and rule 36 and rule 52(1)(d) and (e) § 15:62 Form TM 17 Brunei Darussalam Trade Marks Act request for alteration of a registered mark under section 45 and rule 53(1) § 15:63 Form TM 19 Brunei Darussalam Trade Marks Act application to intervene in proceedings for the revocation, invalidation or rectication of a registration under sections 47, 48 and 61 and rule 55(5) § 15:64 Form TM 20 Brunei Darussalam Trade Marks Act request for information about applications and registered marks under section 63 and rule 43 cxi K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 15:65 Form TM 21 Brunei Darussalam Trade Marks Act request for a certied copy under section 63(3)(b) and rule 41 § 15:66 Form TM 22 Brunei Darussalam Trade Marks Act request to appoint or change an agent or to enter or change an address for service under section 61(4) and rules 9(3) and 38(2) § 15:67 Form TM 23 Brunei Darussalam Trade Marks Act ling of regulations governing the use of collective or certication marks under rst schedule paragraph 5 and second schedule paragraph 6 of the act and rule 56(2) § 15:68 Form TM 24 Brunei Darussalam Trade Marks Act application to amend the regulations governing the use of collective or certication marks under rst schedule paragraph 10 and second schedule paragraph 11 of the act and rule 57(1) § 15:69 Form TM 25 Brunei Darussalam Trade Marks Act application to register a licensee under section 26 and rule 52(1)(b) § 15:70 Form TM 26 Brunei Darussalam Trade Marks Act application to remove or amend the recordal of a licence under section 26 and rule 52(1)(c) § 15:71 Form TM 27 Brunei Darussalam Trade Marks Act form for publication § 15:72 Form TM 28 Brunei Darussalam Trade Marks Act notice to the registrar of attendance at hearing under section 69(1) and rule 30(3) § 15:73 Form TM 29 Brunei Darussalam Trade Marks Act counter- statement to notice of opposition in respect of collective or certication marks under rule 56(4) § 15:74 Form TM 30 Brunei Darussalam Trade Marks Act notice to the registrar of attendance at hearing in respect of a collective or certication mark under rule 56(4) § 15:75 Form TM 31 Brunei Darussalam Trade Marks Act certicate issued under section 41 and rule 34 § 15:76 Form TM 32 Brunei Darussalam Trade Marks Act application to register a collective mark or certication mark under rst schedule,http://www.pbookshop.com second schedule of the act and rule 56(1) VI. POST-REGISTRATION § 15:77 Renewal of registration—Duration of protection § 15:78 —Renewal of registration § 15:79 —Renewal of registration § 15:80 —Delayed renewal and removal of registration § 15:81 —Restoration of registration § 15:82 Alteration of registered trade mark—Alteration of registered trade mark § 15:83 Revocation, invalidation, rectication and cancellation § 15:84 —Procedure on application for revocation, declaration of invalidity and rectication of the register § 15:85 Assignments—Assignment of registered trade mark § 15:86 —Right to assign cxii Table of Contents

§ 15:87 —Rights of licensee in case of infringement § 15:88 —Rights of exclusive licensee

VII. RESOURCES § 15:89 In general CHAPTER 16. REPUBLIC OF BULGARIA

I. OVERVIEW § 16:1 The basics § 16:2 Policies and trends § 16:3 —Why register locally? § 16:4 —The future

II. REGISTRATION REQUIREMENTS § 16:5 What is a mark? § 16:6 Which marks may be registered? § 16:7 What cannot be registered? § 16:8 Who can register? § 16:9 —International registrations

III. TRADEMARK REGISTER § 16:10 Where is the trademark registered?—Bulgarian patent oce § 16:11 —Filling methods § 16:12 —Trademark register § 16:13 —Single vs. multi-class applications § 16:14 —Exclusive use rights § 16:15 —Limitation on exclusive use rights § 16:16 —Exhaustion of right to mark § 16:17 —Jointlyhttp://www.pbookshop.com held right to mark § 16:18 —Indication of registration § 16:19 —Duration of registration § 16:20 —Remedies; infringement; enforcement

IV. INITIAL REGISTRATION § 16:21 Procedural timeline—Search and advice § 16:22 —Application § 16:23 —Filing receipt/serial number § 16:24 —Examination as to form § 16:25 —Examination on the merits § 16:26 —Publication of application § 16:27 —Observations by third parties § 16:28 —Opposition against registration § 16:29 —Registration cxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 16:30 —Trademark processing fees (in BGN) § 16:31 —Other service fees (in BGN)

V. REGISTRATION FORMS § 16:32 Application for registration of trademark § 16:33 Information checklist § 16:34 Power of attorney

VI. POST-REGISTRATION § 16:35 Maintenance and renewal of registration—Duration of protection § 16:36 —Renewal before expiration of the protection § 16:37 —Renewal after expiration of the protection § 16:38 —Renewal of international registrations § 16:39 —Reinstatement § 16:40 Alteration or modication—To trademark § 16:41 —To goods and/or services § 16:42 —To name or address § 16:43 —Revocation of registration § 16:44 Cancellation of registration § 16:45 —Transfer of a mark § 16:46 —Mark licensing

VII. RESOURCES § 16:47 In general CHAPTER 17. CAMBODIA

I. OVERVIEW § 17:1 The basics § 17:2 Policies andhttp://www.pbookshop.com trends—Trade and regulatory climate § 17:3 —Why register locally? § 17:4 —The future § 17:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 17:6 What is a mark? § 17:7 Which marks may be registered?—Marks including trademark and service mark § 17:8 —Associated trademark § 17:9 —Collective trademark § 17:10 —Series of trademarks § 17:11 —Certication trademark § 17:12 —Defensive trademark § 17:13 —Colored trademark cxiv Table of Contents

§ 17:14 What cannot be registered? § 17:15 Who can register?—Proprietor or user § 17:16 —Proposed corporation § 17:17 —Authorized agent

III. TRADEMARK REGISTER § 17:18 Where is the trademark registered?—Registration § 17:19 —Rights conferred § 17:20 —Validity of the mark § 17:21 —Provisional measures § 17:22 —Enforcement rights § 17:23 —Border measures

IV. INITIAL REGISTRATION § 17:24 Procedural timeline—Application § 17:25 —Review § 17:26 —Registration § 17:27 —Opposition

V. REGISTRATION FORMS § 17:28 Information checklist § 17:29 Common form requirements § 17:30 Authorization of agent (power of attorney) § 17:31 Application for registration

VI. POST-REGISTRATION § 17:32 Renewal of registration—Duration of protection § 17:33 —Suspension for failure to renew § 17:34 —Restoration § 17:35 Alterationhttp://www.pbookshop.com or rectication—Removal for non-use § 17:36 —Nullication of registration § 17:37 Assignment § 17:38 Licensing

VII. RESOURCES § 17:39 In general CHAPTER 18. CANADA

I. OVERVIEW § 18:1 The basics § 18:2 Policies and trends § 18:3 —Trade and regulatory climate cxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 18:4 —Why register locally? § 18:5 —The future § 18:6 Laws, rules and regulations

II. LEGAL FRAMEWORK § 18:7 In general § 18:8 Federal law § 18:9 Provincial and territorial law § 18:10 Trade names § 18:11 International law

III. TRADEMARKS § 18:12 Distinctiveness § 18:13 Trademarks § 18:14 Trade names § 18:15 Rights through use § 18:16 Benets of registration § 18:17 Adoption of trademarks § 18:18 Use § 18:19 —Use with wares § 18:20 —Use with services § 18:21 Making known

IV. REGISTRATION REQUIREMENTS § 18:22 Eligible trademarks § 18:23 Registrable trademarks § 18:24 —Trademark for wares § 18:25 —Trademark for services § 18:26 —Words § 18:27 —Two-dimensional designs § 18:28 —Trade dresshttp://www.pbookshop.com and distinguishing guises § 18:29 —Certication marks § 18:30 —Collective mark § 18:31 —Color mark § 18:32 Trademarks registrable only in certain circumstances § 18:33 —Names § 18:34 —Descriptive terms § 18:35 —Misdescriptive terms § 18:36 —Acquired distinctiveness § 18:37 —Not without distinctive character § 18:38 —Trade names § 18:39 —Associated trademarks § 18:40 —Prohibited marks § 18:41 Unregistrable trademarks § 18:42 —Something other than a trademark cxvi Table of Contents

§ 18:43 —Non-visual marks § 18:44 —Generic terms § 18:45 —Scandalous, obscene, or immoral marks § 18:46 —Marks that designate kind, quality, quantity, destination, value, or place of origin § 18:47 —Designation of a plant variety § 18:48 —Geographical indications § 18:49 —Confusing marks § 18:50 Bases for registration § 18:51 Entitlement to registration § 18:52 —Proprietor or user § 18:53 —Authorized agent § 18:54 —Priority § 18:55 —Joint owners or users § 18:56 —Proposed corporation

V. TRADEMARK REGISTER § 18:57 Register § 18:58 Distinctiveness § 18:59 Exclusive rights § 18:60 Limitations on exclusive use § 18:61 Enforcement § 18:62 Validity

VI. INITIAL REGISTRATION § 18:63 Choice of trademark § 18:64 Searching § 18:65 Application § 18:66 Filing receipt § 18:67 Initial examination § 18:68 Amendment § 18:69 Disclaimerhttp://www.pbookshop.com § 18:70 Response and reexamination § 18:71 Publication § 18:72 Opposition § 18:73 Registration § 18:74 Procedural timeline § 18:75 Request for publication of ocial notice § 18:76 Government fee schedule

VII. REGISTRATION FORMS § 18:77 In general § 18:78 Forms § 18:79 —Application for registration of a trademark § 18:80 —Application for registration of a certication mark cxvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 18:81 —Application for amendment of a registration otherwise than to extend the statement of wares or services § 18:82 —Application for amendment of a registration to extend the statement of wares or services § 18:83 Information checklist

VIII. POST-REGISTRATION § 18:84 Renewal—Duration § 18:85 —Renewal before expiration § 18:86 —Renewal after expiration § 18:87 —Reinstatement § 18:88 —Advertisement of renewal § 18:89 Amendment—Action by registrar at request of owner § 18:90 —Change in classication by registrar § 18:91 —Correction of error or omission by federal court § 18:92 —Violation of condition § 18:93 —Loss of exclusive use § 18:94 —Miscellaneous grounds for amendment § 18:95 Alteration or modications—Obvious errors § 18:96 —Amendment to trademark § 18:97 —Amendment to wares or services § 18:98 —Amendment to name or address § 18:99 Use of a trademark § 18:100 —As a trademark § 18:101 —As registered § 18:102 —Marking § 18:103 —Multiple trade-marking § 18:104 —French language considerations in quebec § 18:105 Cancellation of registration § 18:106 —Action by registrar § 18:107 —At request of owner § 18:108 —Actionhttp://www.pbookshop.com by court—Invalidity § 18:109 — —For violation of condition § 18:110 — —Loss of exclusive use § 18:111 — —Miscellaneous grounds of amendment § 18:112 Removal of trade-mark for non-use § 18:113 —Grounds for removal § 18:114 —Time of application § 18:115 —Notication § 18:116 —Evidence § 18:117 —Decision § 18:118 —Opposition § 18:119 —Removal and restoration § 18:120 Assignment—Rights to assignment § 18:121 —Recordation of assignment § 18:122 —Legal documents cxviii Table of Contents

§ 18:123 Licensees or registered users § 18:124 —Right to grant use § 18:125 —Rights of the proprietor § 18:126 —Rights of the licensee § 18:127 —Recordal of the license § 18:128 —Other instruments

IX. VIOLATION AND ENFORCEMENT OF TRADEMARK RIGHTS § 18:129 Violation of trademark rights—Infringement § 18:130 —Depreciation of goodwill § 18:131 —Passing o § 18:132 —Unfair competition § 18:133 —Comparative advertising § 18:134 —Violation of prohibited marks § 18:135 —Importation § 18:136 Enforcement of trademark rights—Parties and jurisdiction § 18:137 —Remedies § 18:138 —Imported goods § 18:139 —Criminal sanctions

X. RESOURCES § 18:140 In general CHAPTER 19. CHILE

I. OVERVIEW § 19:1 The basics § 19:2 Policies and trends—Trade and regulatory climate § 19:3 —Why register locally? § 19:4 Laws, ruleshttp://www.pbookshop.com and regulations

II. REGISTRATION REQUIREMENTS § 19:5 What is a mark? § 19:6 Which marks may be registered?—Trademarks for goods § 19:7 —Trademarks for services § 19:8 —Trademarks for commercial establishments § 19:9 —Trademarks for industrial establishment § 19:10 —Colored trademarks § 19:11 What cannot be registered? § 19:12 —Identical and similar marks § 19:13 —Marks with unauthorized content § 19:14 —Generic or descriptive marks § 19:15 —Marks with prohibited content cxix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 19:16 Who can register?—Proprietor or user § 19:17 —Authorized agent § 19:18 —Priority registrant

III. TRADEMARK REGISTER § 19:19 Where is the trademark registered?—Trademark register § 19:20 —Requirement of distinctiveness § 19:21 —Exclusive use rights § 19:22 —Enforcement § 19:23 —Validity

IV. INITIAL REGISTRATION § 19:24 Procedural timeline—Search and advice § 19:25 —Application § 19:26 —Review § 19:27 —Registration

V. REGISTRATION FORMS § 19:28 Information checklist § 19:29 Common form requirements § 19:30 Power of attorney § 19:31 Power of attorney form § 19:32 Application for registration of trademark (initial registration form)

VI. POST-REGISTRATION § 19:33 Renewal of registration—Duration of protection § 19:34 —Renewal before expiration § 19:35 —Renewal after expiration § 19:36 Alteration or modication—To trademark § 19:37 —To name or address § 19:38 —Cancellationhttp://www.pbookshop.com § 19:39 Use of R § 19:40 Assignments § 19:41 —Recordation of assignment § 19:42 —Legal documents § 19:43 Licensees or registered users § 19:44 —Recordation of license § 19:45 —Rights of the parties § 19:46 —Cancellation of assignment or license § 19:47 Contract of assignment (deed of assignment)—Use of form § 19:48 —Information required

VII. RESOURCES § 19:49 In general cxx Table of Contents

CHAPTER 20. CHINA

I. OVERVIEW § 20:1 The basics § 20:2 Policies and trends—Trade and regulatory climate § 20:3 —Why register locally? § 20:4 —The future § 20:5 —The amendment § 20:6 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 20:7 What is a mark? § 20:8 Which marks may be registered?—Trademark for goods § 20:9 —Trademark for services § 20:10 —Collective trademark § 20:11 —Certication trademark § 20:12 — —Color combination trademark § 20:13 — —Trademark in color/trademark with color claimed § 20:14 What cannot be registered? § 20:15 —Deceptive marks § 20:16 —Marks with prohibited matters § 20:17 —Marks with prohibited words or representations § 20:18 —Marks lacking distinctiveness § 20:19 —Three dimensional marks lacking distinctiveness § 20:20 Who can register?—Proprietor or user § 20:21 —Priority registrant § 20:22 —Authorized agent

III. TRADEMARK REGISTER § 20:23 Where is the trademark registered?—Trademarks register § 20:24 —Requirementhttp://www.pbookshop.com of distinctiveness § 20:25 —International registrations § 20:26 —Exclusive use rights § 20:27 —Quality assurance § 20:28 —Enforcement

IV. INITIAL REGISTRATION § 20:29 Procedural timeline—Search and advice § 20:30 —Application § 20:31 —Examination § 20:32 —Registration

V. REGISTRATION FORMS § 20:33 Information checklist cxxi K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 20:34 Common form requirements § 20:35 Initial registration documents § 20:36 Authorization of Agent (Power of Attorney) Form TM-8 § 20:37 Application for Trademark Registration Form TM-2 § 20:38 Application for Trademark Registration

VI. POST-REGISTRATION § 20:39 Renewal of registration—Duration of protection § 20:40 —Renewal before expiration § 20:41 —Renewal after expiration § 20:42 —Reinstatement § 20:43 Alteration or modication—To trademark application or registration documents § 20:44 —To trademark § 20:45 —To goods or services § 20:46 —To name, address or other registered matters § 20:47 Cancellation § 20:48 —Non-use § 20:49 —Non-registrable § 20:50 —Fraud § 20:51 —Disputed trademark § 20:52 —Well-known marks § 20:53 —Prior rights § 20:54 —Geographical indication § 20:55 —Unauthorized registration § 20:56 —Cancellation by owner § 20:57 Assignments—Right to assign § 20:58 —Legal documents § 20:59 —Registration of assignment § 20:60 Licenses or registered use—Right to grant use § 20:61 —Recordation § 20:62 Post-registrationhttp://www.pbookshop.com documents—Application for Assignment of a Pending/Registered Trade Mark Form Form TM-11 § 20:63 —Application for Renewal of Trademark Registration Form No. 09 § 20:64 —Application for Change of the Name/Address of Trademark Applicant/Registrant Form No. 04

VII. RESOURCES § 20:65 In general CHAPTER 21. COLOMBIA

I. OVERVIEW § 21:1 The basics § 21:2 Policies and trends—Trade and regulatory climate cxxii Table of Contents

§ 21:3 —Why register locally? § 21:4 —The future

II. REGISTRATION REQUIREMENTS § 21:5 In general § 21:6 What is a mark? § 21:7 Which marks may be registered?—Trademark for goods § 21:8 —Service mark § 21:9 —Colored marks § 21:10 —Advertising slogans (trade slogans) § 21:11 —Collective trademarks § 21:12 —Certication marks § 21:13 —Trade names § 21:14 —Labels or emblems (trade emblems) § 21:15 —Geographical indications—Appellations of origin § 21:16 — —Indications of origin § 21:17 —Well-known distinctive signs § 21:18 What cannot be registered? § 21:19 Who can register?

III. TRADEMARK REGISTER § 21:20 Where is the trademark registered? § 21:21 —Filing methods § 21:22 —Trademark register § 21:23 —Requirement of distinctiveness § 21:24 —Exclusive use rights § 21:25 —Validity and enforcement § 21:26 —Marking IV. INITIAL REGISTRATIONhttp://www.pbookshop.com § 21:27 In general § 21:28 Procedural timeline—Application § 21:29 —Trademark oce review/initial examination § 21:30 —Publication § 21:31 —Opposition and entry § 21:32 —Registration § 21:33 —Legal actions

V. REGISTRATION FORMS § 21:34 Power of attorney § 21:35 Power of attorney form § 21:36 Initial registration § 21:37 Initial registration form cxxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms VI. POST-REGISTRATION § 21:38 Renewal of registration (d. 486, article 152-153)—Duration of protection § 21:39 —Renewal before expiration § 21:40 —Renewal after expiration § 21:41 —Reinstatement § 21:42 Alteration or modication (d. 486, article 143) § 21:43 Cancellation of registration (d. 486, article 165-170) § 21:44 Assignments (d. 486, article 161-164) § 21:45 Licensees or registered users (d. 486, article 162.-164)

VII. RESOURCES § 21:46 In general CHAPTER 22. COSTA RICA

I. OVERVIEW § 22:1 The basics § 22:2 Policies and trends—Trade and regulatory climate § 22:3 —Why register locally § 22:4 —The future § 22:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 22:6 What is a mark? § 22:7 Which marks may be registered—Collective trademark § 22:8 —Certication trademark § 22:9 What cannot be registered? § 22:10 Who can register? § 22:11 Who can register—Foreignhttp://www.pbookshop.com applicants § 22:12 —Right of priority § 22:13 —Precedence to obtain registration

III. TRADEMARK REGISTER § 22:14 Where is the trademark registered—Industrial property registry § 22:15 —Single versus multi-class applications § 22:16 —Exclusive use rights § 22:17 —Limitation on exclusive use rights § 22:18 —Infringement; enforcement § 22:19 —Action for damages

IV. INITIAL REGISTRATION § 22:20 Procedural timeline—Search and advice cxxiv Table of Contents

§ 22:21 —Application § 22:22 — —Serial number § 22:23 — —Examination of requirements § 22:24 — —Examination of the mark § 22:25 — —Publication § 22:26 — —Opposition to registration § 22:27 — —Registration

VI. POST-REGISTRATION § 22:33 Renewal of registration—Duration of protection § 22:34 —Renewal before expiration § 22:35 —Renewal after expiration § 22:36 Alteration or modication—Amendment § 22:37 —Limitation of goods or services § 22:38 —Division of the registration § 22:39 —Change of owners name § 22:40 Cancellation of registration—Cancellation because of generic term § 22:41 —Cancellation for non-use § 22:42 Assignments § 22:43 License of use

VII. RESOURCES § 22:44 In generalhttp://www.pbookshop.com CHAPTER 23. CROATIA

I. OVERVIEW § 23:1 The basics § 23:2 Paris Convention policies and trends—Trade and regulatory climate § 23:3 —Why register locally? § 23:4 —The future § 23:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 23:6 What is a trademark? § 23:7 Which trademarks may be registered? cxxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 23:8 —Trademark for goods § 23:9 —Trademark for services § 23:10 —Collective trademark § 23:11 —Certication trademark § 23:12 —3d trademarks § 23:13 What cannot be registered? § 23:14 —Identical or similar marks § 23:15 —Nominative or descriptive signs § 23:16 —Sign contrary to public order or morality § 23:17 —Sign not capable of being represented graphically § 23:18 —Sign that suggests earlier designations of origin or geographical indications § 23:19 —Sign that suggests a false geographical indication for wine or spirits § 23:20 —Sign that contains a ag, coats of arms or other insignia § 23:21 Who can register?—Owner or user § 23:22 —Authorized agent § 23:23 —Priority registrant

III. TRADEMARK REGISTER § 23:24 Where is the trademark registered?—Trademark register § 23:25 —Exclusive rights of use § 23:26 —Enforcement § 23:27 —Statute of limitation

IV. INITIAL REGISTRATION § 23:28 Procedural timeline—Search and advice § 23:29 —Application § 23:30 —Review § 23:31 —Registration

V. REGISTRATIONhttp://www.pbookshop.com FORMS § 23:32 Information checklist § 23:33 Common form requirements § 23:34 Application for registration of trademark § 23:35 Application for registration of modications to a trademark

VI. POST-REGISTRATION § 23:36 Renewal of registration—Duration of protection § 23:37 —Renewal before expiration § 23:38 —Renewal after expiration § 23:39 Alteration or modication—To trademark § 23:40 —To name and address § 23:41 Ceasing of eect of the trademark § 23:42 Nullity of trademark cxxvi Table of Contents

§ 23:43 Assignments § 23:44 Licenses § 23:45 —Recordation of license § 23:46 —Rights of the licensee § 23:47 —Rights of the proprietor § 23:48 Pledge

VII. RESOURCES § 23:49 In general CHAPTER 24. CYPRUS

I. OVERVIEW § 24:1 The basics § 24:2 Trade and regulatory climate—Policies and trends § 24:3 —Why register locally? § 24:4 —The future § 24:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 24:6 What is a mark? § 24:7 Which marks may be registered?—Trade mark for goods § 24:8 —Trade mark for services § 24:9 —Collective mark § 24:10 —Certication mark § 24:11 —Coloured trade mark § 24:12 What cannot be registered? § 24:13 —Identical mark § 24:14 —Similar mark § 24:15 —Nominative or descriptive marks § 24:16 —Marks withhttp://www.pbookshop.com prohibited content § 24:17 —Marks that are scandalous, immoral or contrary to public policy § 24:18 Who can register?—Authorized agent (advocate) § 24:19 —Priority registration

III. TRADE MARK REGISTER § 24:20 Where is the trade mark registered?—Trade marks register § 24:21 —Requirement of distinctiveness § 24:22 —Exclusive use rights § 24:23 —Limitation on exclusive use rights § 24:24 —Enforcement § 24:25 —Validity

IV. INITIAL REGISTRATION § 24:26 Procedural timeline—Search and advice cxxvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 24:27 —Application § 24:28 —Review § 24:29 —Action by the registrar § 24:30 —Payment of fees § 24:31 —Compliance § 24:32 —Review § 24:33 —Registration § 24:34 —Opposition § 24:35 —Decision on opposition

V. REGISTRATION FORMS § 24:36 Information checklist § 24:37 Common form requirements

VI. INITIAL REGISTRATION DOCUMENTS § 24:38 Application for registration of mark—Use of form § 24:39 —Information required § 24:40 —Attachments to form § 24:41 —Forms used

VII. POST-REGISTRATION § 24:42 Renewal of registration—Duration of protection § 24:43 —Renewal before expiration § 24:44 Alteration or modication—Amendment in the registry § 24:45 —Modication of the registered trade mark § 24:46 —Deletion from the trade marks registry § 24:47 Assignments § 24:48 —Legal documents § 24:49 Licensees or registered users § 24:50 —Record of licence § 24:51 —Rights ofhttp://www.pbookshop.com the registered user

CHAPTER 25. DENMARK

I. OVERVIEW § 25:1 The basics § 25:2 Policies and trends—Trade and regulatory climate § 25:3 —Why register locally? § 25:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 25:5 What is a mark? § 25:6 Which marks may be registered?—Trademark for goods § 25:7 —Trademark for services cxxviii Table of Contents

§ 25:8 —Collective and certication trademarks § 25:9 —Colored trademark § 25:10 What cannot be registered? § 25:11 Who can register?

IV. INITIAL REGISTRATION § 25:17 In general

V. REGISTRATION FORMS § 25:18 Power of attorney forms § 25:19 Application for registration of trademark (primary application form) § 25:20 List of goods for the primary application form § 25:21 Application for registration of trademarkcollective mark § 25:22 List of goods for the collective mark application form § 25:23 Notice of opposition § 25:24 Request to amend a trademark application or registration § 25:25 Assignment recordation form/cover sheet § 25:26 Designation of domestic representative § 25:27 Notication of change of name/address/address for service § 25:28 Notice of withdrawal of an application, notice or request § 25:29 Paymenthttp://www.pbookshop.com of trademark registration fee VI. POST-REGISTRATION § 25:30 Renewal of registration—Duration of protection § 25:31 —Renewal before expiration § 25:32 —Renewal § 25:33 Amendment—Action by registrar at request of owner: § 25:34 Cancellation of registration § 25:35 Removal of trademark for non-use—Grounds for removal § 25:36 Assignments § 25:37 Licensees or registered users

VII. RESOURCES § 25:38 In general cxxix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms CHAPTER 26. ECUADOR

I. OVERVIEW § 26:1 The basics § 26:2 Policies and trends—Trade and regulatory climate § 26:3 —Why register locally?—Real protection § 26:4 — —Rights in other countries based on ecuadorian registrations § 26:5 — —A community trademark? almost § 26:6 — —Speed, low cost, proven protection and extended protection § 26:7 —The future § 26:8 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 26:9 What is a mark? § 26:10 Which marks may be registered? § 26:11 What cannot be registered? § 26:12 Who can register?—Non-user § 26:13 —Proprietor § 26:14 —Citizenship, residency, domicile of applicant/title holder § 26:15 —Title holder § 26:16 —General or special attorney-in-fact § 26:17 —Authorized agent § 26:18 —Joint title holders § 26:19 —Proposed corporation § 26:20 —Signature of attorney

III. TRADEMARK REGISTER § 26:21 Where is the trademark registered? § 26:22 Trademark register—Requirement of distinctiveness § 26:23 —Exclusive use rights § 26:24 —Limitationhttp://www.pbookshop.com on exclusive use rights

IV. INITIAL REGISTRATION § 26:25 In general § 26:26 Classication system § 26:27 Application requirements § 26:28 Procedural timeline—Trademark oce review/initial examination § 26:29 —Publication § 26:30 —Opposition and entry § 26:31 —Legal actions

V. REGISTRATION FORMS § 26:32 In general § 26:33 Application for registration of trademark (initial registration form) cxxx Table of Contents

§ 26:34 Notication of change of name/address/address for service § 26:35 Power of attorney

VI. POST-REGISTRATION § 26:36 Duration of protection § 26:37 Renewal before expiration § 26:38 Renewal after expiration § 26:39 Reinstatement § 26:40 Amendment—Action by registrar at request of owner § 26:41 —Change in classication by registrar § 26:42 —Miscellaneous grounds for post-registration amendment § 26:43 Alteration or modication—Obvious errors § 26:44 —To trademark § 26:45 —To goods and/or services § 26:46 —To name or address § 26:47 Cancellation of registration—Action by registrar § 26:48 —At request of owner § 26:49 —Loss of exclusive use § 26:50 Assignments—Rights to assign § 26:51 —Recordation of assignment § 26:52 —Legal documents § 26:53 Licensees or registered users—Right to grant use § 26:54 —Rights of the proprietor § 26:55 —Rights of the licensee § 26:56 —Recordation of licensee

VII. RESOURCES § 26:57 In general CHAPTER 27. EGYPT http://www.pbookshop.com I. OVERVIEW § 27:1 The basics § 27:2 Policies and trends—Trade and regulatory climate § 27:3 —Why register locally? § 27:4 —The future § 27:5 Laws, rules and regulations

§ 27:11 —Coloured mark § 27:12 —Trade designations § 27:13 What cannot be registered?—Identical and similar marks § 27:14 —Nominative and description marks § 27:15 —Marks with unauthorized content § 27:16 —Marks with prohibited content § 27:17 Who can register?—Proprietor or user § 27:18 —Priority registrant

IV. INITIAL REGISTRATION § 27:24 Procedural timeline—Search and advice § 27:25 —Application for registration § 27:26 —Examination § 27:27 —Acceptance and announcement § 27:28 —Decision with no time limit § 27:29 —Registration post publication

V. POST REGISTRATION § 27:30 Renewal of registration—Duration of protection and renewal § 27:31 —Renewal after expiry § 27:32 —Alteration or modication § 27:33 —Cancellation § 27:34 —Reinstatementhttp://www.pbookshop.com § 27:35 —Assignments § 27:36 —License

VI. TRADEMARK PROCESSING FEES § 27:37 In general

VII. REGISTRATION FORMS § 27:38 Registration forms § 27:39 Initial registration forms

VIII. RESOURCES § 27:40 In general cxxxii Table of Contents

CHAPTER 28. EL SALVADOR

I. OVERVIEW § 28:1 The basics § 28:2 Policies and trends—Trade and regulatory climate § 28:3 —Why register locally? § 28:4 —The future § 28:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 28:6 What is a mark? § 28:7 Which marks may be registered? § 28:8 What cannot be registered? § 28:9 Who can register?

III. INITIAL REGISTRATION § 28:10 In general

IV. REGISTRATION FORMS § 28:11 In general

V. POST-REGISTRATION § 28:12 Renewal of registration—Duration of protection § 28:13 —Renewal before expiration § 28:14 —Renewal after expiration § 28:15 —Reinstatement § 28:16 —Advertisement of renewal § 28:17 Amendment § 28:18 Alterationhttp://www.pbookshop.com or modication—Obvious errors § 28:19 —To trademark § 28:20 —Goods and/or services § 28:21 —To name or address § 28:22 Cancellation of registration—Action by registrar § 28:23 —At request of owner § 28:24 —Action by court § 28:25 Removal of trademark for non-use § 28:26 Assignments—Rights to assign § 28:27 —Recordation of assignment § 28:28 —Legal documents § 28:29 Licensees or registered users—Right to grant use § 28:30 —Rights of the proprietor § 28:31 —Rights of the licensee § 28:32 —Recordation of license cxxxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms VI. RESOURCES § 28:33 In general CHAPTER 29. EUROPEAN COMMUNITY

I. OVERVIEW § 29:1 The basics § 29:2 Background § 29:3 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 29:4 What is a mark and which marks may be registered? § 29:5 Collective marks § 29:6 Certication marks § 29:7 What cannot be registered—Marks which are not registrable in view of relative grounds § 29:8 —Marks which are not registrable in view of inherent grounds § 29:9 Who can register?

III. TRADE MARK REGISTER § 29:10 Where is the trade mark registered and what does it contain? § 29:11 Exclusive use rights § 29:12 Enforcement

IV. INITIAL REGISTRATION § 29:13 Search § 29:14 Application § 29:15 Seniority § 29:16 Exhibition priority § 29:17 O.H.I.M. review § 29:18 Amendmenthttp://www.pbookshop.com of a trade mark application § 29:19 Opposition § 29:20 Registration/duration/renewal § 29:21 Timings and ocial fees

V. APPLICATION DOCUMENTS § 29:22 Application form § 29:23 Power of attorney § 29:24 Certied copy § 29:25 Fees § 29:26 Documents—CTM Application Form § 29:27 —CTM Opposition Form

VI. POST-REGISTRATION § 29:28 Renewal cxxxiv Table of Contents

§ 29:29 Amendment of a trade mark registration § 29:30 Removal of trade marks for non-use § 29:31 Removal for other reasons § 29:32 Acquiescence § 29:33 Infringement § 29:34 Limitation on the eects of a community trade mark § 29:35 Exhaustion § 29:36 Conversion § 29:37 Assignment § 29:38 Licencing

VII. RESOURCES § 29:39 In general CHAPTER 30. EUROPEAN TRADE MARK LAW

I. INTRODUCTION § 30:1 In general § 30:2 National trade mark protection § 30:3 Madrid Agreement

II. COMMUNITY TRADE MARK AND HARMONIZATION § 30:4 In general § 30:5 Harmonization directive

III. COMMUNITY TRADE MARK § 30:6 Nature § 30:7 Scope § 30:8 Applications § 30:9 Oppositionshttp://www.pbookshop.com § 30:10 Conversion procedure § 30:11 Priority § 30:12 Seniority § 30:13 Infringement actions § 30:14 Remedies § 30:15 Renewal

IV. MADRID PROTOCOL § 30:16 In general § 30:17 Applications

V. NATIONAL RIGHTS AND THE COMMUNITY TRADE MARK § 30:18 In general cxxxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms VI. PIRACY AND COUNTERFEITING § 30:19 In general

VII. ENLARGEMENT § 30:20 Accession of new member states § 30:21 Accession of bulgaria and romania CHAPTER 31. FINLAND

I. OVERVIEW § 31:1 The basics § 31:2 Policies and trends—Trade and regulatory § 31:3 —Why register locally? § 31:4 —The future § 31:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 31:6 What is a mark? § 31:7 Which marks may be registered?—Trademark for goods or services § 31:8 —Collective trademark § 31:9 —Certication trademark § 31:10 What cannot be registered?—Absolute grounds for refusal of trademark registration § 31:11 — —Marks that are “contrary to the law, public order or morality” § 31:12 — —Marks that are “likely to deceive the public” § 31:13 — —“generic” marks § 31:14 —Relative grounds for refusal of trademark registration § 31:15 — —Marks that contain ags or coats of arms of states or municipalitieshttp://www.pbookshop.com § 31:16 — —Marks that may be confused with a prior registered or established trademark § 31:17 — —Marks that may be confused with earlier distinctive trade names § 31:18 — —Marks that may be confused with marks already in use § 31:19 — —Marks that contain an existing trade name § 31:20 — —Marks that contain a persons name or portrait § 31:21 — —Marks that infringe on rights that pertain to copyrights, photographs or models § 31:22 — —Marks that may be confused with registered names of plant species § 31:23 — —Marks that do not conform to Council Regulation No. 2081/92/EEC § 31:24 Who can register?—Proprietor § 31:25 —Foreign applicants cxxxvi Table of Contents

§ 31:26 —Authorized agent § 31:27 —Priority registrant

IV. INITIAL REGISTRATION § 31:34 Procedural timeline

V. REGISTRATION FORMS § 31:35 Application for registration of a trademark—Use of form § 31:36 —Application § 31:37 —Information required in the application § 31:38 —Appendices to the application

VI. POST-REGISTRATION § 31:39 Renewal of registration—Duration of protection § 31:40 —Renewal before expiration § 31:41 —Renewal after expiration § 31:42 —Reinstatement § 31:43 Alteration or modication—Obvious errors § 31:44 —To trademark § 31:45 —To goods and/or services § 31:46 Removal of registration on request by the owner § 31:47 Forfeiture of trademark right and registration § 31:48 Nullicationhttp://www.pbookshop.com of registration § 31:49 Assignments—Rights to assign § 31:50 —Recording of assignment § 31:51 —Legal documents § 31:52 Licensees or registered users—Right to grant use § 31:53 —Rights of the proprietor § 31:54 —Rights of the licensee § 31:55 —Registration of license § 31:56 —Legal documents § 31:57 Pledging of trademarks—Right to grant use § 31:58 —Legal documents

VII. RESOURCES § 31:59 In general cxxxvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms CHAPTER 32. FRANCE

I. OVERVIEW § 32:1 The basics § 32:2 Policies and trends—Trade and regulatory climate § 32:3 —Why register locally? § 32:4 Laws, rules and regulations § 32:5 —The future

II. REGISTRATION REQUIREMENTS § 32:6 What is a mark? § 32:7 Which marks may be registered?—Trademark for goods § 32:8 —Trademark for services § 32:9 —Collective marks § 32:10 —Collective certication marks § 32:11 What cannot be registered? § 32:12 —Identical and similar marks § 32:13 —Marks that are descriptive or devoid of distinctive character § 32:14 —Marks consisting of ags, emblems or other national symbols § 32:15 —Marks that are illegal or against public policy § 32:16 —Deceptive marks § 32:17 —Marks that conict with another type of prior intellectual property right § 32:18 Who can register?—Proprietor § 32:19 —Foreign applicants § 32:20 —Co-owners

III. TRADEMARK REGISTER § 32:21 Where is the trademark registered?—National institute of industrial property § 32:22 —Filing methodshttp://www.pbookshop.com § 32:23 —Trademarks register § 32:24 —Single v. multi-class applications § 32:25 —Exclusive use rights § 32:26 —Infringement § 32:27 —Seizure § 32:28 —Customs

IV. INITIAL REGISTRATION § 32:29 Procedure—Search and advice § 32:30 —Application § 32:31 —Priority § 32:32 —Review § 32:33 —Publication cxxxviii Table of Contents

§ 32:34 —Oppositions § 32:35 —Observations by third parties § 32:36 —Post publication registration § 32:37 —Appeal procedure

V. GOVERNMENT OFFICIAL FEE SCHEDULE § 32:38 In general

VI. REGISTRATION FORMS § 32:39 In general § 32:40 Information required on the french trademark application form § 32:41 Additional information/documents required

VII. POST REGISTRATION § 32:42 Renewal of registration—Duration of protection § 32:43 —Renewal § 32:44 —Renewal with simultaneous new application § 32:45 —Six-months grace period § 32:46 Alteration or modication—To trademark § 32:47 —To goods and/or services § 32:48 —To name or address of applicant § 32:49 Cancellation—Cancellation for non-use § 32:50 —Cancellation for dilution § 32:51 Assignments § 32:52 Other transfer of property § 32:53 License

VIII. RESOURCES § 32:54 In general http://www.pbookshop.com CHAPTER 33. GERMANY I. OVERVIEW § 33:1 The basics § 33:2 Policies and trends—Trade and regulatory climate § 33:3 —Why register locally? § 33:4 —The future § 33:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 33:6 What is a mark? § 33:7 Which marks may be registered?—Trademark for goods § 33:8 —Trademark for services cxxxix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 33:9 — —Collective mark § 33:10 — —Trade designations § 33:11 — —Colored trademark § 33:12 What cannot be registered? § 33:13 —Identical and similar marks § 33:14 —Nominative or descriptive marks § 33:15 —Marks with unauthorized content § 33:16 —Marks with prohibited content § 33:17 Who can register?—Proprietor or user § 33:18 —Authorized agent § 33:19 —Priority registrant

III. TRADEMARK REGISTER § 33:20 Where is the trademark registered?—Trademarks register § 33:21 —Requirement of distinctiveness § 33:22 —Exclusive use rights § 33:23 —Enforcement

IV. INITIAL REGISTRATION § 33:24 Procedural timeline—Search and advice § 33:25 —Application § 33:26 —Review § 33:27 —Registration

V. REGISTRATION FORMS § 33:28 Information checklist—The applicant § 33:29 —The mark § 33:30 —Agents and service § 33:31 Common form requirements—Printed forms § 33:32 —Service on patent oce § 33:33 Applicationhttp://www.pbookshop.com for registration of trademark

VI. POST-REGISTRATION § 33:34 Renewal of registration—Duration of protection § 33:35 —Renewal before expiration § 33:36 —Renewal after expiration § 33:37 —Reinstatement § 33:38 Alteration or modication—Obvious errors § 33:39 —To trademark § 33:40 —To goods and/or services § 33:41 —To name or address § 33:42 Cancellation § 33:43 Assignments § 33:44 —Recordation of assignment cxl Table of Contents

§ 33:45 —Legal documents § 33:46 Licensees or registered users § 33:47 —Recordation of license § 33:48 —Rights of the licensee § 33:49 —Rights of the proprietor

VII. RESOURCES § 33:50 In general CHAPTER 34. GHANA

I. OVERVIEW § 34:1 Basics facts § 34:2 Policies and trends § 34:3 —Why register locally? § 34:4 Law, rules, and regulations

II. REGISTRATION REQUIREMENTS § 34:5 What is a mark? § 34:6 Which marks may be registered? § 34:7 —Trade mark for goods § 34:8 —Certication trade marks § 34:9 —Coloured trade marks § 34:10 What cannot be registered? § 34:11 Who can register?

III. TRADE MARK REGISTER § 34:12 Where is the trade mark registered?—Registry of trade marks § 34:13 —Register § 34:14 —Exclusivehttp://www.pbookshop.com use rights and enforceability § 34:15 —Limitation on exclusive use rights § 34:16 —Validity

IV. INITIAL REGISTRATION § 34:17 Procedural timeline—Search and advice § 34:18 —Filing receipt/serial number § 34:19 —Application and fees § 34:20 —Patent oce review/initial examination § 34:21 —Acceptance or rejection of application § 34:22 —Publication § 34:23 —Issuance of certicate § 34:24 —Opposition process § 34:25 —Entry of trade mark § 34:26 —Registration cxli K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms V. REGISTRATION FORMS § 34:27 In general § 34:28 Form of Authorisation of Agent in a Matter or Proceeding under Regulations 71 (2) (Form TM-No. 1) § 34:29 Application for Registration of Trade Mark in Part (Form TM-No. 2) § 34:30 Additional Representation of Trade Mark to Accompany Application for Registration (Form TM-No. 2(a)) § 34:31 Request for Statement of Grounds of Decision (Form TM-No. 3) § 34:32 Application for Registration of Certication Trade Mark under Section 36 (Form TM-No. 4) § 34:33 Notice of Opposition to Application of a Trade Mark (Form TM- No. 5) § 34:34 Form of Counter-Statement (Form TM-No. 6) § 34:35 Notice to the Registrar of Attendance at Hearing (Form TM-No. 7) § 34:36 Fee for Registration of a Trade Mark (Form TM-No. 8) § 34:37 Renewal of Registration of Trade Mark (Form TM-No. 9) § 34:38 Additional Fee to Accompany Renewal Fee (Form TM-No. 9) within One Month after Advertisement of Non-Payment of Renewal Fee (Form TM-No. 10) § 34:39 Restoration of Trademark Removed from Register for Non- Payment of Fee (Form TM-No. 11) § 34:40 Application under Regulations 36 (2) for Extension of Time, in Accordance with Section 29 (4), for the Registration of the Name of a Corporation As Subsequent Proprietor of a Trade Mark in the Register (Form TM-No. 12) § 34:41 Joint Request to the Registrar by Registered Proprietor and Transferee to Register the Transferee as Subsequent Proprietor of Trade Marks Upon the Same Devolution of Title (Form TM- No. 13) § 34:42 Request to the Registrar to Register a Subsequent Proprietor of a Trade Mark or Trade Marks Upon the Same Devolution of Title (Form TM-No. 14) § 34:43 Declarationhttp://www.pbookshop.com (Only to be Furnished when Requested by Registrar) in Support of the Statement of Case Accompanying Form TM-No. 13 or Form TM-No. 14 (Form TM-No. 15) § 34:44 Request for Alteration of Trade or Business Address in the Register of Trade Marks (Form TM-No. 16) § 34:45 Application to the Registrar under Section 23 (5) and Regulation 26 (2) to Dissolve the Association Between a Registered Trade Mark and (an) Other Registered Trade Mark(s) (Form TM-No. 17) § 34:46 Request for Correction of Clerical Error; or for Permission to Amend Application (Form TM-No. 18) § 34:47 Request to Enter Change of Name or Description of Registered Proprietor (or Registered User) of Trade Mark upon the Register (Form TM-No. 19) § 34:48 Application by Registered Proprietor of Trade Mark for the Cancellation of Entry thereof in the Register (Form TM-No. 20) cxlii Table of Contents

§ 34:49 Application by Registered Proprietor of Trade Mark to the Registrar to Strike Out Goods From Those for which the Trade Mark is Registered (Form TM-No. 21) § 34:50 Request by Registered Proprietor of a Trade Mark that a Disclaimer or Memorandum Relating Thereto May Be Registered (Form TM-No. 22) § 34:51 Application by Registered Proprietor under Section 35 for an Addition to or Alteration of a Registered Trade Mark Regulation 46 (1) (Form TM-No. 23) § 34:52 Application to the Registrar for the Rectication of the Register or the Removal of a Trade Mark from the Register (Form TM-No. 24) § 34:53 Application to the Registrar for Leave to Intervene in Proceedings Relating to the Rectication of the Register or the Removal of a Trade Mark from the Register (Form TM-No. 25) § 34:54 Request for Search under Regulation 61 (1) (Form TM-No. 26) § 34:55 Request for Registrar's Preliminary Advice as to Distinctiveness or Capability of Distinguishing, by a Person Proposing to Apply for the Registration of a Trade Mark (Form TM-No. 27) § 34:56 Appeal From the Registrar to the Minister/Court (Form TM-No. 28) § 34:57 Request for General Certicate of the Registrar (including Certicate of Registration of a Trade Mark) (Form TM-No. 29) § 34:58 Application under Section 27 and Regulation 11 for Registration of An invented Word (or Words) in Part of the Register as a Defensive Trade Mark (Form TM-No. 30) § 34:59 Form of Request to the Registrar by a Registered Proprietor or a Registered User of a Trade Mark, or a Person About to Be So Registered, to Enter, Alter, or Substitute An Address for Service as Part of His Registration (Regulations 41 (2)) (Form TM-No. 31) § 34:60 Regulations for Governing the Use of Certication (Form TM-No. 32) § 34:61 Request for the Consent of the Minister to Alteration of the Depositedhttp://www.pbookshop.com Regulations for the Use of a Certication Trade Mark (Form TM-No. 33) § 34:62 Application to the Minister for An Order Expunging or Varying An Entry in the Register Relating to a Certication Trade Mark or Varying the Deposited Regulations (Form TM-No. 34) § 34:63 Notice to the Minister under Paragraph 2 (2) of the First Schedule to the Act and Regulation 23 (1) of Opposition to An Application for Registration of a Certication Trade Mark (Form TM-No. 35) § 34:64 Form of Counter Statement in Reply to Notice to the Minister under Sub-Paragraph (2) of Paragraph 2 of the First Schedule to the Act and Regulation 23 (1) of Opposition to An Appliction for Registration of a Certication Trade Mark (Form TM-No. 36) § 34:65 Hearing by the Minister of An Opposition under Sub-Paragraph (2) of Paragraph 2 of the First Schedule to the Act and Regulation 23 to An Application for Registration of a Certication Trade Mark (Form TM-No. 37) cxliii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 34:66 Application for the Certicate of the Registrar under Section 22 (6) and Regulation 39 (1) with Reference to a Proposed Assignment of a Registered Trade Mark (Form TM-No. 38) § 34:67 Application for the Approval by the Registrar under Section 22(8) and Regulation 39 (1) of a Proposed Assignment, or of a Transmission (On or After the Appointed Day), of a Trade Mark Resulting in Exclusive Rights in Dierent Persons for Dierent Parts of Ghana (Form TM-No. 39) § 34:68 Application for the Approval by the Registrar under Section 22 (8) or the Second Schedule (Paragraph 2) of the Act and Regulation 39 of An Assignment or Transmission of a Registered Trade Mark Before the Appointed Day, Resulting in Exclusive Rights in Dierent Persons for Dierent Parts of Ghana (Form TM-No. 40) § 34:69 Application to the Registrar under Section 22(9) and Regulation 40 for Directions for the Advertisement of An Assignment of Trade Marks Otherwise Than in Connection with the Good-Will of the Business (Form TM-No. 41) § 34:70 Application for Extension of Time in Which to Apply for the Registrar's Directions for the Advertisement of An Assignment of Trade Marks Otherwise Than in Conection with the Goodwill of the Business (Section 22 (9) and Regulation 40 (5) (Form TM-No. 42) § 34:71 Application to the Registrar under Regulation 63 (2) by the Proprietor of a Registered Trade Mark for the Conversion of the Specication From Part 3 of the Schedule to the Ordinance to Schedule 1 of the Trade Marks Regulations (Form TM-No. 43) § 34:72 Reclassication (Form TM-No. 44) § 34:73 Notice of Opposition to Application under Section 35 Regulation 46 (3) for Addition to or Alteration of a Registered Trade Mark (Form TM-No. 45) § 34:74 Notice of Order of Court for Alteration or Rectication of Register of Trade Marks (Form TM-No. 46) § 34:75 Request to the Registrar for Entry On the Register and Advertisement of a Note of a Certicate of Validity by the Court under Sectionhttp://www.pbookshop.com 44, Regulation 45 (Form TM-No. 47) § 34:76 Application for Registration of Registered User (Form TM-No. 48) § 34:77 Application by the Registered Proprietor of a Trade Mark for Variation of the Registration of a Registered User thereof with Regard to the Goods or the Conditions or Restrictions (Section 28 (10) Paragraph (A); Regualtion 51 (1)) (Form TM-No. 49) § 34:78 Application by the Registered Proprietor of a Trade Mark or by Any of the Registered Users of the Trade Mark for the Cancellation or Entry of a Registered User thereof (Section 28 (10) Paragraph (B) Regulation 51(2)) (Form TM-No. 50) § 34:79 Application for Cancellation of Entry of a Registered User of a Trade Mark (Form TM-No. 51) § 34:80 Notice to the Registrar under Section 28 (11) and Regulation 51 (4) of intention to intervene in Proceedings for the Variation or Cancellation of An Entry of a Registered User of a Trade Mark (Form TM-No. 52) cxliv Table of Contents

VI. POST-REGISTRATION § 34:81 Renewal of registration—Duration of protection § 34:82 —Renewal before expiration § 34:83 —Renewal after expiration § 34:84 —Reinstatement § 34:85 —Advertisement of renewal § 34:86 Amendments, alterations or modications—Alteration or modication—To trade mark itself § 34:87 — —To goods § 34:88 — —To name or address § 34:89 — —Alteration as a result of petition by third party on grounds of violation of condition § 34:90 —Rectication of register § 34:91 —Cancellation § 34:92 —Removal of trade mark for non-use § 34:93 Assignments—Rights to assign § 34:94 —Entry of assignment on register § 34:95 —Recordation of assignment § 34:96 —Legal documents § 34:97 Licensees or registered users—Right to grant use § 34:98 —Rights of the proprietor § 34:99 —Rights of the licensee § 34:100 —Recordation of license

VII. RESOURCES § 34:101 In general Appendix 34A. National Classication System CHAPTER 35. GREECE

I. OVERVIEWhttp://www.pbookshop.com § 35:1 The basics § 35:2 Policies and trends—Trade and regulatory climate § 35:3 —Why register locally? § 35:4 —The future

§ 35:12 —Colored trademark § 35:13 What cannot be registered? § 35:14 —Identical or confusingly similar marks § 35:15 —Opposed mark § 35:16 —Marks with unauthorized content § 35:17 —Nominative or descriptive marks § 35:18 —Marks with prohibited matters § 35:19 —Marks with prohibited words or representations § 35:20 Who may register? § 35:21 —Proprietor or user § 35:22 —Related user § 35:23 —Authorized agent § 35:24 —Priority registrant

III. TRADEMARK REGISTER § 35:25 Where is the trademark registered?—Trademarks registry § 35:26 —Requirement of distinctiveness § 35:27 —Exclusive use rights § 35:28 —Enforcement

IV. INITIAL REGISTRATION § 35:29 Procedural timeline—Search and advice § 35:30 —Application § 35:31 —Review § 35:32 —Registration

V. REGISTRATION FORMS § 35:33 Information checklist § 35:34 Common form requirements § 35:35 Power of attorney § 35:36 Power ofhttp://www.pbookshop.com attorney form § 35:37 Application for registration of trademark § 35:38 Application of foreign trademark

§ 35:48 —Deception of public § 35:49 —Not registrable § 35:50 —Prior rights § 35:51 Assignments § 35:52 —Recordation of assignment § 35:53 —Legal documents § 35:54 Licensees or registered users § 35:55 —Recordation of license § 35:56 —Rights of the licensee § 35:57 —Cancellation of license § 35:58 Assignment and power of attorney for recordal—Use of form § 35:59 —Information required § 35:60 —Attachments to form § 35:61 Trademark assignment form

VII. RESOURCES § 35:62 In general CHAPTER 36. HONG KONG S.A.R.

I. OVERVIEW § 36:1 The basics § 36:2 Policies and trends—Trade and regulatory climate § 36:3 —Why register locally? § 36:4 —The Trade Marks Ordinance 2003 § 36:5 Law, rules and regulations

II. REGISTRATION REQUIREMENTS § 36:6 What is a mark? § 36:7 Which marks may be registered?—Trademark for goods § 36:8 —Trademarkhttp://www.pbookshop.com for services § 36:9 —Series of trademarks § 36:10 — —Associated trademarks § 36:11 — —Certication mark § 36:12 — —Collective mark § 36:13 — —Defensive trademark § 36:14 — —Colour trademark § 36:15 What cannot be registered—Absolute grounds for refusal § 36:16 —Relative grounds for refusal § 36:17 —Exceptions to relative grounds for refusal—Consent § 36:18 — —Honest concurrent use § 36:19 — —Disclaimers § 36:20 — —Claim to priority § 36:21 — —Licence § 36:22 — —Opposition to trademark by a third party cxlvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms III. TRADEMARK REGISTER § 36:23 Where is the trademark registered?—Trade marks register § 36:24 —Exclusive use rights § 36:25 —Actual use § 36:26 —Special categories—Surnames § 36:27 — —Geographical names § 36:28 — —Letters

IV. INITIAL REGISTRATION § 36:29 Procedural timeline—Search and advice § 36:30 —Application § 36:31 —Examination § 36:32 —Registration

V. REGISTRATION FORMS § 36:33 Information checklist § 36:34 Common form requirements § 36:35 Request for search of records request for preliminary advice on registrability Form T1 § 36:36 Application for registration of a trade mark (including certication mark, collective mark and defensive mark) forms t2, t2a § 36:37 Notice of attendance at hearing request for statement of reasons Form T12

VI. POST-REGISTRATION § 36:38 Renewal of registration (Trade Marks Ordinance, Section 50)— Duration of protection § 36:39 —Renewal before expiration § 36:40 —Late renewal after expiration § 36:41 —Restoration § 36:42 —Mergerhttp://www.pbookshop.com § 36:43 —Reclassication § 36:44 —Revocation, invalidity and variation—Revocation (Trade Marks Ordinance, Section 52) § 36:45 — —Declaration of invalidity of registration (Trade Marks Ordinance, Section 53) § 36:46 — —Variation of registration (Trade Marks Ordinance, Section 54) § 36:47 — —Assignment (Trade Marks Ordinance, Sections 27 and 29) § 36:48 —Licensing of registered trademarks § 36:49 — —A license may authorize a licensee to grant a sub-license § 36:50 — —A licence is not eective unless it is in writing and is signed by or on behalf of the grantor § 36:51 Post-registration documents § 36:52 —Request for renewal of a trade mark registration request for restoration and renewal of a trade mark registration Form T8 cxlviii Table of Contents

§ 36:53 —Notice of opposition/objection application for revocation, declaration of invalidity, variation of a trade mark registration, or rectication of an error or omission in the register application for intervention in proceedings for revocation, declaration of invalidity, variation or rectication Form T6 § 36:54 —Application or notice to register registrable transaction (other than a licence) request to amend or remove registered particulars of security interest Form T10 § 36:55 —Application or notice to register a licence request to amend or remove registered particulars of a licence Form T11 CHAPTER 37. INDIA

I. OVERVIEW § 37:1 The basics § 37:2 Policies and trends—Trade and regulatory climate § 37:3 —The Indian economy § 37:4 —Openness to foreign investment § 37:5 —Why register locally? § 37:6 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 37:7 What is a mark? § 37:8 Which marks may be registered? § 37:9 —Trademark for goods § 37:10 —Trademark for services [service mark] § 37:11 —Associated trademark § 37:12 —Collective trademark § 37:13 —Certication trademark § 37:14 —Colored trademark § 37:15 —Defensivehttp://www.pbookshop.com trademark § 37:16 —Series of trademarks § 37:17 What cannot be registered?—Absolute grounds for refusal of registration § 37:18 —Relative grounds for refusal of registration § 37:19 What cannot be registered. § 37:20 Who can register? § 37:21 —Proprietor or user § 37:22 —Authorized agent § 37:23 —Priority registrant § 37:24 —Joint owners or users § 37:25 —Proposed corporation

III. TRADEMARK REGISTER § 37:26 Where is the trademark registered? cxlix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 37:27 —Trademark register § 37:28 —Requirement of distinctiveness § 37:29 —Exclusive use rights § 37:30 —Limitation on exclusive use rights § 37:31 —Enforcement § 37:32 —Validity

IV. INITIAL REGISTRATION § 37:33 Procedural timeline § 37:34 —Average processing times § 37:35 —Government fee schedule

V. REGISTRATION FORMS § 37:36 In general § 37:37 Information checklist § 37:38 Application for registration of trademark (initial registration form) § 37:39 General power of attorney form

VI. POST-REGISTRATION § 37:40 Renewal of registration § 37:41 —Duration of protection § 37:42 —Renewal after expiration § 37:43 —Reinstatement § 37:44 —Advertisement of renewal § 37:45 —Amendment § 37:46 —Action by registrar at request of owner § 37:47 —Change in classication by registrar § 37:48 —Correction of error or omission by tribunal § 37:49 —Violation of condition § 37:50 —Loss of exclusive use § 37:51 —Miscellaneoushttp://www.pbookshop.com grounds for amendment § 37:52 Alteration or modication—Obvious errors—To trademark § 37:53 — —To goods and/or services § 37:54 — —To name or address § 37:55 Cancellation of registration—Action by registrar § 37:56 —At request of owner § 37:57 —Action by court § 37:58 —For violation of condition § 37:59 —Loss of exclusive use § 37:60 Miscellaneous grounds for amendment—Grounds for removal § 37:61 —Removal of trademark for non-use § 37:62 —Time of application § 37:63 —Notication § 37:64 —Opposition § 37:65 —Removal and restoration cl Table of Contents

§ 37:66 Assignments—Rights to assign § 37:67 —Recordal of assignment § 37:68 —Legal documents § 37:69 —Licensees or registered users § 37:70 —Right to grant use § 37:71 —Rights of the proprietor § 37:72 —Rights of the licensee § 37:73 —Recordal of license

VII. RESOURCES § 37:74 In general Appendix 37A. National Classication System

Volume 2 CHAPTER 38. INDONESIA

I. OVERVIEW § 38:1 The basics § 38:2 Policies and trends § 38:3 —Trade and regulatory climate § 38:4 —Why register locally? § 38:5 —The future § 38:6 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 38:7 What is a mark? § 38:8 Which marks may be registered? § 38:9 —Trademark for goods § 38:10 —Trademarkhttp://www.pbookshop.com for services (service mark) § 38:11 —Associated trademark § 38:12 —Collective trademark § 38:13 —Certication trademark § 38:14 —Colored trademark § 38:15 —Defensive trademark § 38:16 —Commercial mark § 38:17 —Series of trademarks § 38:18 What cannot be registered? § 38:19 Who can register? § 38:20 —Proprietor or user:

III. TRADEMARK REGISTER § 38:21 Where is the trademark registered? cli K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 38:22 —Requirement of distinctiveness § 38:23 —Exclusive use rights § 38:24 —Limitation on exclusive use rights § 38:25 —Enforcement § 38:26 —Validity

IV. INITIAL REGISTRATION § 38:27 Procedural timeline—Application § 38:28 —Review § 38:29 —Registration

V. REGISTRATION FORMS § 38:30 In general § 38:31 Information checklist § 38:32 Power of attorney form § 38:33 Statement of trademark ownership

VI. POST-REGISTRATION § 38:34 Renewal of registration § 38:35 —Duration of protection § 38:36 —Renewal after expiration § 38:37 —Reinstatement § 38:38 —Advertisement of renewal § 38:39 —Amendment § 38:40 —Action by registrar at request of owner § 38:41 —Change in classication by registrar § 38:42 —Correction of error or omission by federal court § 38:43 —Violation of condition § 38:44 —Loss of exclusive use § 38:45 Miscellaneous grounds for amendment—Alteration or modication—Obvioushttp://www.pbookshop.com errors § 38:46 Cancellation of registration—Action by registrar § 38:47 —At request of owner § 38:48 —Action by court § 38:49 —For violation of condition § 38:50 —Loss of exclusive use § 38:51 Removal of trademark for non-use—Grounds for removal § 38:52 —Time of application § 38:53 —Notication § 38:54 —Opposition § 38:55 —Removal and restoration § 38:56 Assignments—Rights to assign § 38:57 —Recordation of assignment § 38:58 —Legal documents § 38:59 Licensees or registered users—Right to grant use clii Table of Contents

§ 38:60 —Rights of the proprietor § 38:61 —Rights of the licensee § 38:62 —Recordation of license

VII. RESOURCES § 38:63 In general CHAPTER 39. IRAN

I. OVERVIEW § 39:1 The basics § 39:2 Policies and trends—Trade and regulatory climate § 39:3 —Why register locally? § 39:4 —Madrid Agreement and Protocol § 39:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 39:6 What is a mark? § 39:7 Which marks may be registered?—Trademark for goods § 39:8 —Trademark for services § 39:9 —Collective trademark § 39:10 —Color marks § 39:11 —Three-dimensional marks § 39:12 —Defensive trademarks: § 39:13 What cannot be registered? § 39:14 —Identical or similar marks § 39:15 —Marks with unauthorized content § 39:16 —Marks with prohibited matters § 39:17 Who can register?—Proprietor or user § 39:18 —Authorized agent § 39:19 —Priorityhttp://www.pbookshop.com registrant § 39:20 —Joint owners or users III. TRADEMARK REGISTER § 39:21 Where is the trademark registered?—Register of trademarks § 39:22 —Requirement of distinctiveness § 39:23 —Exclusive use rights § 39:24 —Limitation on exclusive use rights § 39:25 —Enforcement

IV. INITIAL REGISTRATION § 39:26 Procedural time line—Search and advice § 39:27 —Application § 39:28 —Review cliii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 39:29 —Registration

V. REGISTRATION FORMS § 39:30 Information checklist § 39:31 Common form requirements § 39:32 Power of Attorney Form TM-3 § 39:33 Application for Registration of a Trademark Form TM-1

VI. POST-REGISTRATION § 39:34 Renewal of registration—Duration of protection § 39:35 —Renewal before expiration § 39:36 —Renewal after expiration § 39:37 —Reinstatement § 39:38 —Advertisement of renewal § 39:39 Amendment § 39:40 —Action by register at request of owner § 39:41 —Obvious errors § 39:42 —To trademark § 39:43 —To goods and/or services § 39:44 —To name or address § 39:45 Cancellation of registration § 39:46 Assignments § 39:47 —Recordation of assignment § 39:48 —Legal documents § 39:49 Licenses or registered users § 39:50 —Right to grant use § 39:51 —Rights of the proprietor § 39:52 —Rights of licensee § 39:53 —Recordation of license VII. RESOURCEShttp://www.pbookshop.com § 39:54 In general CHAPTER 40. ISRAEL

I. OVERVIEW § 40:1 The basics § 40:2 Policies and trends—Trade and regulatory climate § 40:3 —Why register locally? § 40:4 —The future § 40:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 40:6 What is a mark? cliv Table of Contents

§ 40:7 Which marks may be registered?—Trademark for goods § 40:8 —Trademark for services (Service Mark) § 40:9 —Collective trademark § 40:10 —Certication trademark § 40:11 —Colored trademark § 40:12 What cannot be registered? § 40:13 Who can register? § 40:14 —Partnership § 40:15 —Corporation § 40:16 —Joint applicants § 40:17 —Trusts/conservatorships/estates § 40:18 —Foreign applicants

III. TRADEMARK REGISTER § 40:19 Where is the trademark registered?—Israel patents, designs and trademarks oce § 40:20 —Filing methods § 40:21 —Register § 40:22 —Exclusive use rights § 40:23 —Exclusive use of a ‘well known’ trademark § 40:24 —Limitation on exclusive use rights § 40:25 —Remedies; enforcement; infringement § 40:26 —Validity

IV. INITIAL REGISTRATION § 40:27 Procedure—Search and advice § 40:28 —Application § 40:29 —Filing receipt/serial number § 40:30 —Initial examination § 40:31 —Expedited examination § 40:32 —Response § 40:33 —Publicationhttp://www.pbookshop.com § 40:34 —Opposition § 40:35 —Grounds for opposition: § 40:36 —Competing claims to identical marks § 40:37 —Concurrent use § 40:38 —Registration § 40:39 —Average processing times § 40:40 Government fee schedule

V. REGISTRATION FORMS § 40:41 Application for registration of trademark § 40:42 Power of attorney § 40:43 Assignment of trademark application recordation form § 40:44 Assignment of registered trademark recordation form clv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms VI. POST-REGISTRATION § 40:45 Renewal of registration § 40:46 —Duration of protection § 40:47 —Renewal before expiration § 40:48 —Renewal after expiration § 40:49 —Reinstatement § 40:50 Amendment—Action by commissioner at request of owner § 40:51 —Correction of error or omission by the commissioner § 40:52 —Alteration of trademark at owner's request § 40:53 —Cancellation of registration § 40:54 —Miscellaneous grounds for amendment § 40:55 —Removal of registration for non-use § 40:56 Assignments—Right to assign § 40:57 —Recordation of assignment § 40:58 Licensees or registered users—Right to grant use § 40:59 —Recordation of license

VII. RESOURCES § 40:60 In general CHAPTER 41. ITALY

I. OVERVIEW § 41:1 The basics § 41:2 Policies and trends—Trade and regulatory climate § 41:3 —Why register locally? § 41:4 —Why le an international registration? § 41:5 —The future § 41:6 Laws, rules and regulations

II. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 41:7 What is a mark? § 41:8 Which marks may be registered?—Trademark for goods § 41:9 —Trademark for services § 41:10 —Certication mark § 41:11 What cannot be registered? § 41:12 —Identical and similar marks § 41:13 —Marks with unauthorized content § 41:14 —Nominative or descriptive marks § 41:15 —Marks with prohibited matters § 41:16 Who can register?—Proprietor or user § 41:17 —Foreign applicants § 41:18 —Priority registrant § 41:19 —Authorized agent clvi Table of Contents

§ 41:20 International trademark registrations—Applicable international agreement § 41:21 —Registrable trademarks § 41:22 —The applicant § 41:23 —The trademark application § 41:24 —Priority § 41:25 —Where to le the application § 41:26 —Classication of goods and services § 41:27 —Ocial languages § 41:28 —Designation of countries § 41:29 —Rights conferred by the international registration § 41:30 —Examination and opposition § 41:31 —Duration and renewal § 41:32 —Assignment/licensing § 41:33 —Documents to be provided for ling § 41:34 —Additional documentation which can be produced even after ling the application

III. TRADEMARK REGISTER § 41:35 Where is the trademark registered?—Trademarks register § 41:36 —Eects of the application § 41:37 —Requirement of distinctiveness § 41:38 —Exclusive use rights § 41:39 —Non-conforming use § 41:40 —Enforcement

IV. INITIAL REGISTRATION § 41:41 Procedural timeline—Search and advice § 41:42 —Application § 41:43 —Review § 41:44 —Registrationhttp://www.pbookshop.com V. REGISTRATION FORMS § 41:45 Information checklist § 41:46 Common form requirements § 41:47 Initial registration documents—Power of attorney [form omitted] § 41:48 Application for registration of trademark

§ 41:55 —To name or address § 41:56 By proprietor § 41:57 Revocation § 41:58 Nullication § 41:59 Assignments—Assignable rights § 41:60 —Recordation of assignment § 41:61 —Legal documents § 41:62 Licensees or registered users § 41:63 —Recordation of license § 41:64 —Rights of the licensee § 41:65 —Rights of the proprietor

VII. RESOURCES § 41:66 In general CHAPTER 42. JAPAN

I. OVERVIEW § 42:1 The basics § 42:2 Policies and trends—Trade and regulatory climate § 42:3 —Why register locally? § 42:4 —The future § 42:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 42:6 What is a mark? § 42:7 Which marks may be registered?—Trademark for goods § 42:8 —Service mark § 42:9 —Associated trademark § 42:10 —Defensive trademark § 42:11 —Collectivehttp://www.pbookshop.com trademark § 42:12 —Colored trademark § 42:13 —Three-dimensional marks § 42:14 —Regionally based collective trademarks § 42:15 —Trademark system for retail services or wholesale services § 42:16 What cannot be registered? § 42:17 —Identical or similar marks § 42:18 —Deceptively or confusingly similar marks § 42:19 —Opposed mark § 42:20 —Marks with unauthorized content § 42:21 —Marks with prohibited content § 42:22 —Public order § 42:23 —Nominative or descriptive marks § 42:24 —Common marks § 42:25 —Non-distinguishing marks clviii Table of Contents

§ 42:26 —Well-known marks § 42:27 Who can register?—Proprietor or user § 42:28 —Authorized agent

IV. INITIAL REGISTRATION § 42:36 Procedural timeline—Search and advice § 42:37 —Application § 42:38 —Registration

V. REGISTRATION FORMS § 42:39 Information checklist § 42:40 Initial application documents—Application for registration of trademark § 42:41 —Application for registration

VI. POST-REGISTRATION § 42:42 Renewal of registration—Duration of protection § 42:43 —Renewal before expiration § 42:44 —Renewal after expiration § 42:45 —Restoration § 42:46 —Advertisement of renewal § 42:47 Invalidationhttp://www.pbookshop.com and cancellation—Invalidation of registration § 42:48 —Cancellation of registration § 42:49 —Eect of cancellation § 42:50 —Defensive trademarks § 42:51 Assignments—Right to assign § 42:52 —Limitations on assignment § 42:53 —Registration of assignment § 42:54 Licensees or registered users—Right to grant use § 42:55 —Registration § 42:56 —Rights of registered user § 42:57 —Limitation on rights of registered user

VII. RESOURCES § 42:58 In general clix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms CHAPTER 43. KOSOVO

I. OVERVIEW § 43:1 The basics § 43:2 Policies and trends—Trade and regulatory climate § 43:3 —Why register locally? § 43:4 —The future § 43:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 43:6 What is a mark? § 43:7 Which marks may be registered—Trademark for goods § 43:8 —Trademark for services § 43:9 —Associated trademark § 43:10 —Collective trademark § 43:11 —Certication trademark § 43:12 —Color trademark § 43:13 —Series of trademarks § 43:14 What cannot be registered? § 43:15 What cannot be registered—Non-distinctive trademarks § 43:16 —Descriptive trademarks § 43:17 —Generic marks § 43:18 —Deceptive trademarks § 43:19 —Marks with unauthorized content § 43:20 —Marks that are immoral, unlawful or contrary to the public order § 43:21 —Confusingly similar marks § 43:22 —Exceptions § 43:23 Who can register—Proprietor or user § 43:24 —Authorized agent § 43:25 —Priorityhttp://www.pbookshop.com registrant III. TRADEMARK REGISTER § 43:26 Where is the trademark registered—Trademark register § 43:27 —Requirement of distinctiveness § 43:28 —Exclusive use rights § 43:29 —Limitation on exclusive use rights § 43:30 —Validity § 43:31 —Enforcement

IV. INITIAL REGISTRATION § 43:32 Procedural timeline—Search and advice § 43:33 —Application § 43:34 —Formal examination clx Table of Contents

§ 43:35 —Publication of trademark application § 43:36 —Oppositions § 43:37 —Registration § 43:38 Government fee schedule

VI. POST-REGISTRATION § 43:46 Renewal of registration—Duration of protection § 43:47 —Renewal before expiration § 43:48 —Renewal after expiration § 43:49 —Reinstatement § 43:50 —Advertisement of renewal § 43:51 Alteration or modication—Correction of technical mistakes § 43:52 —Alteration to trademark § 43:53 —Alteration to goods and/or services § 43:54 —Alteration to name or address § 43:55 Cancellation of registration § 43:56 Revocation of trademark registration for non-use § 43:57 Invalidation of trademark registration § 43:58 Assignments § 43:59 Licenses VII. RESOURCEShttp://www.pbookshop.com § 43:60 In general CHAPTER 44. LAOS

I. OVERVIEW § 44:1 The basics § 44:2 Policies and trends—Trade and regulatory climate § 44:3 —Why register locally? § 44:4 —The future § 44:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 44:6 What is a trademark? clxi K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 44:7 Which trademarks may be registered? § 44:8 —Associated trademark § 44:9 —Collective mark § 44:10 —Certication trademark § 44:11 —Colored trademark § 44:12 —Defensive trademark § 44:13 —Commercial trademark § 44:14 —Series of trademarks § 44:15 What cannot be registered? § 44:16 Who can register?

III. TRADEMARK REGISTER § 44:17 Where is the trademark registered?—Trademark register § 44:18 —Requirement of distinctiveness § 44:19 —Exclusive use rights § 44:20 —Limitation on exclusive use rights § 44:21 —Enforcement § 44:22 —Validity § 44:23 —Classication § 44:24 —Marking

IV. INITIAL REGISTRATION § 44:25 Procedure § 44:26 Examination § 44:27 Assignment § 44:28 Documents required § 44:29 Fees

V. REGISTRATION FORMS § 44:30 Applicationhttp://www.pbookshop.com for registration of a trademark § 44:31 Checklist of information needed to complete application § 44:32 Application in several classes § 44:33 Application for several trademarks

VI. POST-REGISTRATION § 44:34 Renewal of registration—Duration of protection § 44:35 —Renewal § 44:36 —Termination for failure to renew § 44:37 —Restoration § 44:38 —Amendment

VII. RESOURCES § 44:39 In general clxii Table of Contents

CHAPTER 45. LEBANON

I. OVERVIEW § 45:1 The basics § 45:2 Policies and trends—Trade and regulatory climate § 45:3 —Why register locally? § 45:4 —The future § 45:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 45:6 What is a mark? § 45:7 Which marks may be registered?—Trademark (for goods) § 45:8 —Service mark § 45:9 —Trade names and establishment signboards § 45:10 —Collective mark § 45:11 —Geographical indications § 45:12 What cannot be registered? § 45:13 —Marks that are disparaging or that falsely suggest a connection § 45:14 —Marks that are immoral, deceptive or scandalous § 45:15 —Marks likely to cause confusion, or to cause mistake, or to deceive § 45:16 Who can register?

III. TRADEMARK REGISTER § 45:17 Where is the trademark registered?—Oce of protection of commercial, industrial, literary, and artistic property § 45:18 —Filing methods § 45:19 —Filing bases § 45:20 —Exclusive use rights § 45:21 —Incontestability § 45:22 —Remedies;http://www.pbookshop.com infringement; enforcement

IV. INITIAL REGISTRATION § 45:23 Procedural timeline—Application led § 45:24 —Review

V. REGISTRATION FORMS § 45:25 In general CHAPTER 46. LIECHTENSTEIN

I. OVERVIEW § 46:1 The basics clxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 46:2 Policies and trends—Trade and regulatory climate § 46:3 —Why register locally? § 46:4 —The future § 46:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 46:6 What is a trademark? § 46:7 Which marks may be registered? § 46:8 What may not be registered? § 46:9 Who may register?

III. TRADEMARK REGISTER AND INITIAL REGISTRATION § 46:10 Trademark registration generally § 46:11 Searches and advice § 46:12 Initial examination § 46:13 Appeals of initial examinations § 46:14 Publication and opposition § 46:15 Registration § 46:16 Time frame

IV. REGISTRATION FORMS § 46:17 Filing requirements: trademark applications § 46:18 Checklist of information needed to complete application § 46:19 Applicable application fees

V. POST-REGISTRATION § 46:20 Renewal of registration—Duration of protection § 46:21 —Renewal before expiration § 46:22 —Renewalhttp://www.pbookshop.com after expiration § 46:23 —Publication of renewal § 46:24 Alteration or modication § 46:25 Cancellation § 46:26 Removal of trademark for non-use § 46:27 Assignments § 46:28 Licensing § 46:29 Enforcement CHAPTER 47. LITHUANIA

I. OVERVIEW § 47:1 The basics § 47:2 Policies and trends—Trade and regulatory climate § 47:3 —Why register locally? clxiv Table of Contents

§ 47:4 —Other advantages § 47:5 —Community trade mark § 47:6 —Advantage § 47:7 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 47:8 What is a mark? § 47:9 Which marks may be registered?—Trademark for goods § 47:10 —Trademark for services [service mark] § 47:11 —Collective trademark § 47:12 —Colored trademark § 47:13 What cannot be registered? § 47:14 —Marks that are “Immoral, deceptive or scandalous” § 47:15 —Marks that are “disparaging” or that “falsely suggest a connection” § 47:16 —Marks that suggest a false geographical indication § 47:17 —Marks that suggest a false geographical indication for wine and spirits § 47:18 —Marks that are descriptive § 47:19 —Opposed mark § 47:20 Who can register? § 47:21 —Authorized representative

III. TRADEMARK REGISTER § 47:22 Where is the trademark registered?—Lithuanian state patent bureau § 47:23 —Filing methods § 47:24 —Trademark register § 47:25 —Single v. multi-class applications § 47:26 —Exclusive use rights § 47:27 —Limitation on exclusive use rights § 47:28 —Enforcementhttp://www.pbookshop.com § 47:29 —Validity IV. INITIAL REGISTRATION § 47:30 Procedure—Search and advice § 47:31 —Application/ling receipt/serial number § 47:32 —Initial examination/examination of application § 47:33 —Examination of the mark § 47:34 —Reexamination § 47:35 —Appeal § 47:36 —Publication § 47:37 —Opposition

V. REGISTRATION FORMS § 47:38 In general clxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 47:39 Power of attorney form for use in the Republic of Lithuania

VI. POST-REGISTRATION § 47:40 Renewal of registration—Duration of protection § 47:41 —Renewal before expiration § 47:42 —Renewal after expiration § 47:43 —Reinstatement § 47:44 —Advertisement of renewal § 47:45 Amendment—Correction of mistake in registration § 47:46 —Amendment to mark § 47:47 —Amendment to list of goods/services § 47:48 —Changes of name or address § 47:49 Assignments § 47:50 Licensees § 47:51 Cancellation—Invalidation of a registration § 47:52 —Revocation of a registration

VII. RESOURCES § 47:53 In general CHAPTER 48. MACEDONIA

I. OVERVIEW § 48:1 The basics § 48:2 Policies and trends—Trade and regulatory climate § 48:3 —Why register locally? § 48:4 —The future: § 48:5 Laws, rules and regulations II. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 48:6 What is a mark? § 48:7 Which marks may be registered?—Trademark for goods § 48:8 —Trademark for services [service mark] § 48:9 —Associated trademark § 48:10 —Collective trademark § 48:11 —Certication trademark § 48:12 —Colored trademark § 48:13 What cannot be registered? § 48:14 —Marks that are immoral or contrary to the public order § 48:15 —Graphical presentation § 48:16 —Deceptively or confusingly similar marks § 48:17 —Generic marks § 48:18 —Nominative or descriptive marks § 48:19 —Misleading trademarks clxvi Table of Contents

§ 48:20 —Marks with unauthorized content § 48:21 Who can register? § 48:22 —Authorized agent § 48:23 —Joint owners or users

IV. INITIAL REGISTRATION § 48:30 Procedural timeline—Search and advice § 48:31 —Application § 48:32 —Registration § 48:33 Average processing times § 48:34 Government fee schedule—Fees for searches § 48:35 —Fees for trademark prosecution

V. REGISTRATION FORMS § 48:36 Information checklist § 48:37 Registration forms § 48:38 Notice of opposition § 48:39 Request to amend a trademark application or registration § 48:40 Designation of domestic representative § 48:41 Notice of withdrawal of an application, notice, or request § 48:42 Payment of trademark registration fee http://www.pbookshop.com VI. POST-REGISTRATION § 48:43 Renewal of registration—Duration of protection § 48:44 —Renewal before expiration § 48:45 —Renewal after expiration § 48:46 —Reinstatement § 48:47 —Advertisement of renewal § 48:48 Cancellation of registration § 48:49 Cancellation of trademark for non-use § 48:50 Assignments § 48:51 Licensees or registered users

VII. RESOURCES § 48:52 In general clxvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms CHAPTER 49. MACAU

I. OVERVIEW § 49:1 The basics § 49:2 Policies and trends—Trade and regulatory climate § 49:3 —Why register locally? § 49:4 —The future § 49:5 Laws, rules, regulations

II. REGISTRATION REQUIREMENTS § 49:6 What is a mark? § 49:7 Which marks may be registered?—Marks for goods or services § 49:8 —Unity of application and registration of the marks § 49:9 —Colour marks § 49:10 —Collective marks § 49:11 What cannot be registered? § 49:12 —Identical marks § 49:13 —Deceptively or confusingly similar marks § 49:14 —Marks likely to be used for unfair competition § 49:15 —Nominative or descriptive marks § 49:16 —Marks with unauthorized content § 49:17 —Marks with prohibited words or representations § 49:18 Who can register?—Proprietor or user § 49:19 —Paris convention priority applicant § 49:20 —Priority application based on use in macau § 49:21 —Authorised agent or attorney

III. TRADEMARK REGISTER § 49:22 Where is the mark registered?—Marks register § 49:23 —Eect of registration

IV. INITIAL REGISTRATIONhttp://www.pbookshop.com § 49:24 Procedural timeline—Search and advice § 49:25 —Application § 49:26 —Review and publication § 49:27 —Registration

V. REGISTRATION FORMS § 49:28 Form requirements § 49:29 Authorisation of agent § 49:30 Application to register a mark § 49:31 Application to register mark

VI. POST-REGISTRATION § 49:32 Termination of registration—Surrender of mark registration clxviii Table of Contents

§ 49:33 —Revocation of mark registration § 49:34 —Lapse of mark registration § 49:35 —Publication of lapse § 49:36 Renewal of registration—Duration of protection § 49:37 —Renewal before expiration § 49:38 —Renewal following expiration § 49:39 —Renewal following extinction § 49:40 Correction or alteration of mark—Alteration of mark § 49:41 —Addition or substitution of goods or services § 49:42 —Change of address, registered oce, or proprietor's name § 49:43 Assignment—Right to assign § 49:44 —Deed of assignment § 49:45 —Prohibition on transfer of certain marks § 49:46 —Recording of assignment § 49:47 —Publication of assignment § 49:48 License to use mark—Right to grant licence § 49:49 —Publication of licence § 49:50 —Rights of licenced user

VII. POST-REGISTRATION FORMS § 49:51 Application for other actions by the I.P. Oce

VIII. RESOURCES § 49:52 In general CHAPTER 50. MALAYSIA

I. OVERVIEW § 50:1 The basics § 50:2 Policies and trends—Trade and regulatory climate § 50:3 —Why registerhttp://www.pbookshop.com locally? § 50:4 —The future § 50:5 Laws, rules and regulations

§ 50:15 —Identical marks § 50:16 —Deceptively or confusingly similar marks § 50:17 —Opposed mark § 50:18 —Marks with unauthorized content § 50:19 —Single chemical element or compound marks § 50:20 —Nominative or descriptive marks § 50:21 —Marks with prohibited content § 50:22 —Marks with prohibited words or representations § 50:23 —Well-known mark § 50:24 —Geographical indication § 50:25 Who can register?—Proprietor or user § 50:26 —Priority registrant § 50:27 —Proposed corporation § 50:28 —Authorized agent

III. TRADEMARK REGISTER § 50:29 Where is the trademark registered?—Trade marks register § 50:30 —Abolishment of part a & part b § 50:31 —Exclusive use rights § 50:32 —Requirement of distinctiveness § 50:33 —Enforcement § 50:34 —Validity

IV. INITIAL REGISTRATION § 50:35 Procedural timeline—Search and advice § 50:36 —Application § 50:37 —Review § 50:38 —Registration § 50:39 Special interim rules for renewal V. REGISTRATIONhttp://www.pbookshop.com FORMS § 50:40 Information checklist § 50:41 Common form requirements § 50:42 Initial registration documents—Statutory declaration of ownership § 50:43 —Request to enter, alter, or substitute an address for service Form TM-1 § 50:44 —Request for preliminary advice from registrar Form TM-4 § 50:45 —Application for registration of trademark Form TM-5

§ 50:51 —Renewal of territorial registration (interim provision) § 50:52 Alteration or rectication—Rectication dened § 50:53 —Grounds for rectication § 50:54 —Alteration of entry § 50:55 Assignments—Right to assign § 50:56 —Registration of assignment § 50:57 Licensees or registered users—Right to grant use § 50:58 —Recordation § 50:59 —Rights of registered user § 50:60 —Alteration or cancellation § 50:61 Post-Registration documents—Renewal of registration of a trademark Form TM-12 § 50:62 —Application to register a subsequent proprietor Form TM-15 § 50:63 —Application to make, cancel, or vary an entry in the register Form TM-17 § 50:64 —Application for registration of registered user Form TM-23 § 50:65 —Modied international classication of services

VII. RESOURCES § 50:66 In general CHAPTER 51. MEXICO

I. OVERVIEW § 51:1 The basics § 51:2 Policies and trends—Trade regulatory climate § 51:3 —Why register locally? § 51:4 —The future § 51:5 Laws, rules and regulations

II. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 51:6 What is a mark? § 51:7 Which marks may be registered?—Trademark for goods § 51:8 —Services trademark § 51:9 —Collective marks § 51:10 What cannot be registered? § 51:11 Who can register? § 51:12 —Individuals § 51:13 —Entities

III. TRADEMARK REGISTRATION § 51:14 Where is the trademark registered?—Mexican industrial property institute § 51:15 —Filing methods clxxi K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 51:16 —Registers § 51:17 —Single v. multi-class applications § 51:18 —Filing bases § 51:19 —Exclusive use rights § 51:20 —Constructive use § 51:21 —Incontestability § 51:22 —Marking § 51:23 —Remedies; infringement; enforcement

IV. INITIAL REGISTRATION § 51:24 Procedure—Search and advice § 51:25 —Application § 51:26 —Filing receipt/serial number § 51:27 —Initial examination § 51:28 —Response § 51:29 —Reexamination § 51:30 —Publication § 51:31 —Post-publication / registration § 51:32 —Trademark processing fees (2009)

V. REGISTRATION FORMS § 51:33 Application for registration of trademark

VI. DESIGNATION OF DOMESTIC REPRESENTATIVE § 51:34 Power of attorney

VII. POST-REGISTRATION § 51:35 Maintenance and renewal of registration—Maintenance § 51:36 —Duration of protection § 51:37 —Renewal before expiration § 51:38 —Renewalhttp://www.pbookshop.com after expiration § 51:39 —Reinstatement § 51:40 —Alteration or the modication § 51:41 —Correction of mistake in registration § 51:42 —Amendment to mark § 51:43 —Amendment of registration, other than amendment of mark § 51:44 —Cancellation § 51:45 —Assignments § 51:46 —Licenses CHAPTER 52. MONTENEGRO

I. OVERVIEW § 52:1 The basics clxxii Table of Contents

§ 52:2 Policies and trends—Trade and regulatory climate § 52:3 —Why register locally? § 52:4 —The future § 52:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 52:6 What is a mark? § 52:7 Which marks may be registered?—Trademark § 52:8 —Service mark § 52:9 —Collective trademark § 52:10 —Certication trademark § 52:11 —Colored trademark § 52:12 —Three-dimensional marks § 52:13 What cannot be registered? § 52:14 —Public order § 52:15 —Generic mark § 52:16 —Marks with unauthorized content § 52:17 —Marks with prohibited content § 52:18 —Deceptive marks § 52:19 —Opposed mark § 52:20 —Non-distinguishing marks § 52:21 —Well-known marks § 52:22 Who can register?—Proprietor or user § 52:23 —Authorized agent

III. TRADEMARK REGISTER § 52:24 Where is the trademark registered?—Trademark register § 52:25 —Requirement of distinctiveness § 52:26 —Requirement of no conict § 52:27 —Exclusive use rights § 52:28 —Limitation on exclusive use right § 52:29 —Enforcement § 52:30 —Validityhttp://www.pbookshop.com

IV. INITIAL REGISTRATION § 52:31 Procedural timeline—Search and advice § 52:32 —Application and fees § 52:33 —Registration

V. REGISTRATION FORMS § 52:34 Information checklist § 52:35 Initial application documents § 52:36 —Application for registration of trademark

VI. POST-REGISTRATION § 52:37 Renewal of registration—Duration of protection clxxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 52:38 —Renewal before expiration § 52:39 —Renewal after expiration § 52:40 —Reinstatement § 52:41 Amendment—Action by registrar during application stage § 52:42 —Action by registrar at request of owner § 52:43 Cancellation of registration—Revocation action § 52:44 —Cancellation action § 52:45 —Contestation of trademark registration § 52:46 Removal of trademark for non-use—Grounds for removal § 52:47 —Removal period § 52:48 —Removal and restoration § 52:49 Assignments—Right to assign § 52:50 —Recordation of assignment § 52:51 —Legal documents § 52:52 Licensees or registered users—Right to grant use § 52:53 —Rights of the trademark owner § 52:54 —Recordation of license

VII. RESOURCES § 52:55 In general CHAPTER 53. MOROCCO

I. OVERVIEW § 53:1 The basics § 53:2 Policies and trends—Trade and regulatory climate § 53:3 —Why register locally? § 53:4 —The future

II. REGISTRATION REQUIREMENTS § 53:5 What is a mark? § 53:6 Which markshttp://www.pbookshop.com may be registered?—Trademark for goods § 53:7 —Trademark for services § 53:8 —Collective trademark § 53:9 —Colored trademark § 53:10 What cannot be registered? § 53:11 —Marks that are “immoral, deceptive or scandalous” § 53:12 —Marks that use emblems or authority distinction § 53:13 —Identical, similar, and deceptive trademarks § 53:14 Who can register?—Proprietor or user § 53:15 —Authorized agent § 53:16 —Priority registrant § 53:17 —Incorporation

III. INITIAL REGISTRATION § 53:18 Procedural timeline—Trademark register clxxiv Table of Contents

§ 53:19 —Search and advice § 53:20 —Application § 53:21 —Response of ompic § 53:22 —Publication

IV. POST-REGISTRATION § 53:23 Duration of protection § 53:24 Amendment § 53:25 Cancellation of registration § 53:26 Removal of trademark for non-use—Grounds for removal § 53:27 Assignments § 53:28 —Rights to assign § 53:29 —Recordation of assignment § 53:30 —Legal documents § 53:31 Licensees or registered users—Right to grant use § 53:32 —Rights of the proprietor § 53:33 —Rights of the licensee § 53:34 —Recordation of license

V. REGISTRATION FORMS § 53:35 Power of Attorney form § 53:36 Power of Attorney form (French) § 53:37 Application for Registration of Trademark (Initial Registration Form)—Application for registration in Tangiers § 53:38 —Application for registration in other cities of Morocco § 53:39 Application for International Registration § 53:40 Deed of Assignment form

VI. RESOURCES § 53:41 In generalhttp://www.pbookshop.com Appendix 53A. Nice Classication CHAPTER 54. MYANMAR

I. OVERVIEW § 54:1 The basics § 54:2 Policies and trends—Trade and regulatory climate § 54:3 —Why register locally? § 54:4 —The future § 54:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 54:6 What is a mark? clxxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 54:7 Which marks may be registered?—Trademark for goods § 54:8 —Service mark § 54:9 —Property mark § 54:10 What cannot be registered? § 54:11 —Identical trademarks § 54:12 —Deceptively or confusingly similar marks § 54:13 —Marks with prohibited content § 54:14 Who can register?—Proprietor or user § 54:15 —Authorized agent

III. TRADEMARK REGISTER § 54:16 Where is the trademark registered?—Miscellaneous register § 54:17 —Registration creates evidence of use

IV. INITIAL REGISTRATION § 54:18 Procedural timeline—Search and advice § 54:19 —Application § 54:20 —Review § 54:21 —Registration

V. REGISTRATION FORMS § 54:22 Information checklist § 54:23 Common form requirements § 54:24 Initial registration documents—Authorization of agent (power of attorney) § 54:25 —Power of attorney form § 54:26 —Declaration of ownership

VI. POST-REGISTRATION § 54:27 Renewal ofhttp://www.pbookshop.com registration—Duration of protection § 54:28 —Revocation or cancellation § 54:29 —Alteration § 54:30 Assignments and licenses—Right to assign or license § 54:31 —Registration of assignment or license § 54:32 —Registration procedure

VII. RESOURCES § 54:33 In general CHAPTER 55. NEW ZEALAND

I. OVERVIEW § 55:1 The basics clxxvi Table of Contents

§ 55:2 Policies and trends—Trade and regulatory climate § 55:3 Why register locally? § 55:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 55:5 What is a mark? § 55:6 Which marks may be registered?—Trademark for goods and/or services § 55:7 — —Combined trademark § 55:8 — —Series of trademarks § 55:9 — —Certication trademark § 55:10 — —Collective trademark § 55:11 — —Collective trademark § 55:12 What cannot be registered? § 55:13 —Identical marks § 55:14 —Similar marks § 55:15 —Opposed mark § 55:16 —Marks with unauthorised content § 55:17 —Geographical indications § 55:18 —Single chemical element or compound marks § 55:19 —Marks with prohibited matters § 55:20 —Marks with prohibited words or representations § 55:21 Who can register?—Proprietor or user § 55:22 —Priority registrant § 55:23 —Licensee § 55:24 —Joint proprietors § 55:25 —Authorised agent

III. TRADEMARK REGISTER § 55:26 Where is the trademark registered?—Register of trademarks § 55:27 —Exclusive use rights § 55:28 Registrability—Generalhttp://www.pbookshop.com rule § 55:29 —Distinctiveness IV. INITIAL REGISTRATION § 55:30 Procedural time line—Search and advice § 55:31 —Application § 55:32 —Review § 55:33 —Registration

§ 55:38 —Form 2: Application for Registration of Trade Mark § 55:39 —Form 2: Application for Registration of Certication Trademark § 55:40 —Form 2: Application for Registration of Collective Trade Mark

VI. POST-REGISTRATION § 55:41 Renewal of registration—Duration of protection § 55:42 —Renewal before expiration § 55:43 —Restoration § 55:44 Alteration of register—Alteration dened § 55:45 —Grounds for alteration § 55:46 Rectication of register—Rectication dened § 55:47 —Grounds for rectication § 55:48 Revocation of register—Revocation dened § 55:49 —Grounds for revocation § 55:50 Declaration of invalidity § 55:51 —Eect of declaration of invalidity § 55:52 Assignment—Right to assign § 55:53 —Deed of assignment § 55:54 —Recordation of assignment § 55:55 Licences (or registered user)—Right to grant use § 55:56 —Recordation of licensee § 55:57 Form 16: Application for Renewal of Registration of Trade Mark § 55:58 Form 12: Application for Rectication of Register § 55:59 Form 13: Application for Revocation of Register § 55:60 Form 14: Application for Declaration of Invalidity § 55:61 Form 17: Request for Alteration of Trade or Business Address or Address for Service § 55:62 Form 23: Application for Registration of Subsequent Proprietor § 55:63 Form 24: Application for Registration of Registered User VII. RESOURCEShttp://www.pbookshop.com § 55:64 In general CHAPTER 56. NICARAGUA

I. OVERVIEW § 56:1 The basics § 56:2 Laws, rules and regulations § 56:3 Policies and trends—Trade and regulatory climate § 56:4 —Why register locally? § 56:5 —The future

II. REGISTRATION REQUIREMENTS § 56:6 What is a mark? clxxviii Table of Contents

§ 56:7 Which marks may be registered—Trademark for goods § 56:8 —Trademark for services [service mark] § 56:9 —Trade names § 56:10 —Collective trademark § 56:11 —Certication trademark § 56:12 —Slogans § 56:13 —Well-known mark § 56:14 —Geographical indication—Appellations of origin § 56:15 — —Indications of origin § 56:16 What cannot be registered? § 56:17 What cannot be registered—Intrinsic grounds of refusal—Signs devoid of distinctive character § 56:18 — —Misleading marks § 56:19 — —Ocial emblems and related signs § 56:20 — —Oensive marks § 56:21 — —Plant variety rights § 56:22 — —Nicaraguan pandora's box § 56:23 —Earlier rights grounds of refusal: prior rights in the sign § 56:24 Who can register? § 56:25 Who can register—Proprietor or user § 56:26 —Authorized agent § 56:27 —Priority registrant § 56:28 —Joint owners or users

III. TRADEMARK REGISTER § 56:29 In general § 56:30 Filing methods § 56:31 Single versus multi-class applications § 56:32 Requirement of distinctiveness § 56:33 Exclusive use rights § 56:34 Limitation on exclusive use rights § 56:35 Enforcementhttp://www.pbookshop.com IV. INITIAL REGISTRATION § 56:36 Procedure—Search and advice § 56:37 —Application and review § 56:38 —Serial number and publication § 56:39 —Opposition and entry § 56:40 —Substantial examination § 56:41 —Registration certicate and publication § 56:42 —Average processing times § 56:43 —Trademark processing fees (as of October 20, 2011)

V. REGISTRATION FORMS § 56:44 Information checklist clxxix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 56:45 Power of attorney form § 56:46 Application for registration of trademark (initial registration form) § 56:47 Trade name registration § 56:48 Notice of opposition form § 56:49 Request to amend a trademark application or registration § 56:50 Assignment recordation form/cover sheet § 56:51 Notication of change of name/address/address for service § 56:52 Notice of Withdrawal of an Application

VI. POST-REGISTRATION § 56:53 Maintenance and renewal of registration—Duration of protection § 56:54 —Renewal before expiration § 56:55 —Renewal after expiration § 56:56 —Advertisement of renewal § 56:57 Trademark renewal form § 56:58 Alteration or modication § 56:59 Cancellation of registration—Action by registrar § 56:60 —At request of owner and action by court § 56:61 —Genericness of the trademark § 56:62 Removal of trademark for non-use § 56:63 Assignments § 56:64 —Recordation of assignment § 56:65 Licensees or registered users—Right to grant use § 56:66 —Rights of the licensee § 56:67 —Rights of the licensor § 56:68 —Recordation of license

VII. RESOURCES § 56:69 In general CHAPTER 57.http://www.pbookshop.com NIGERIA I. OVERVIEW § 57:1 The basics § 57:2 Policies and trends—Trade and regulatory climate § 57:3 —Why register locally § 57:4 —The future § 57:5 Law, rules and regulations

II. REGISTRATION REQUIREMENTS § 57:6 What is a mark? § 57:7 Which marks may be registered?—Trade mark for goods § 57:8 —Service marks § 57:9 —Associated trade marks clxxx Table of Contents

§ 57:10 —Defensive trade marks § 57:11 —Certication trade marks § 57:12 —Coloured trade marks § 57:13 —Series of trade marks § 57:14 What cannot be registered? § 57:15 Who can register? § 57:16 Where is the trade mark registered?—The trade marks registry § 57:17 —The register § 57:18 —Rights conferred by registration § 57:19 —Limitation on exclusive use rights § 57:20 —Validity

III. INITIAL REGISTRATION § 57:21 Procedural timeline—Search and advice § 57:22 —Application and fees § 57:23 —Filing receipt/ serial number/ acknowledgement § 57:24 —Trade marks registry/review and record initial examination § 57:25 —Acceptance or refusal of application § 57:26 —Publication § 57:27 —Registration/ issuance of certication/ entry of trademark § 57:28 —Opposition

IV. REGISTRATION FORMS § 57:29 In general

V. POST REGISTRATION § 57:30 Renewal of registration—Duration of protection § 57:31 —Renewal before expiration § 57:32 —Removal after expiration § 57:33 —Reinstatement § 57:34 —Advertisementhttp://www.pbookshop.com of renewal § 57:35 Amendment—Action by registrar at request of owner § 57:36 —Change in classication by registrar § 57:37 —Correction of error or omission by the federal high court § 57:38 —Violation of condition § 57:39 Alteration or modication—To trademark § 57:40 —To goods and or services § 57:41 —To name or address § 57:42 Cancellation of registration—Action by registrar § 57:43 — —At request of owner § 57:44 —Action by court—For violation of condition § 57:45 — —Removal of trademark for non-use § 57:46 — —Notication § 57:47 — —Opposition § 57:48 — —Removal and restoration clxxxi K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 57:49 Assignments—Right to assign § 57:50 —Recordation of assignment § 57:51 —Legal documents § 57:52 Licensees or registered users—Right to grant use § 57:53 —Rights of the proprietor § 57:54 —Rights of the licensee § 57:55 —Recordation of license

VI. RESOURCES § 57:56 In general Appendix 57A. National Classication of Goods CHAPTER 58. NORTH KOREA (DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA)

I. OVERVIEW § 58:1 The basics § 58:2 Policies and trends—Trade and regulatory climate § 58:3 —Why register locally? § 58:4 —The future § 58:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 58:6 What is a mark? § 58:7 Which marks may be registered?—Trademark for goods § 58:8 —Service mark § 58:9 What cannot be registered? § 58:10 Who can register?—Proprietor or user § 58:11 —Priority registrant § 58:12 —Authorizedhttp://www.pbookshop.com agent III. TRADEMARK REGISTER § 58:13 Where is the trademark registered?—Trademark register § 58:14 —Exclusive use rights of registration holder

IV. INITIAL REGISTRATION § 58:15 Procedure—Application eld § 58:16 —Review § 58:17 —Registration

V. REGISTRATION FORMS § 58:18 Information checklist § 58:19 Common form requirement clxxxii Table of Contents

§ 58:20 Authorization of agent (power of attorney)

VI. POST-REGISTRATION § 58:21 Renewal of registration—Duration of protection § 58:22 —Renewal before expiration § 58:23 —Renewal after expiration § 58:24 —Restoration § 58:25 Alteration or cancellation—Alteration § 58:26 —Termination § 58:27 —Cancellation § 58:28 Assignments—Right to assign § 58:29 —Recordation of assignment § 58:30 Licensees or registered users—Right to grant use

VII. RESOURCES § 58:31 In general CHAPTER 59. NORWAY

I. OVERVIEW § 59:1 The basics § 59:2 In general

II. OBTAINTING SOLE TRADEMARKS RIGHTS § 59:3 Registration § 59:4 Trademark use § 59:5 Assignment § 59:6 License agreement III. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 59:7 Denition of a trade mark § 59:8 Who can register § 59:9 Prior trademarks § 59:10 National representation § 59:11 Registered trademark rights § 59:12 Unregisterable trade marks § 59:13 Consent § 59:14 Examination procedure

IV. TRADEMARK REGISTER § 59:15 In general § 59:16 Laws, regulations § 59:17 First division clxxxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 59:18 Division—Examination § 59:19 — —Absolute hindrances § 59:20 — —Relative hindrances § 59:21 — —Response § 59:22 — —Expiration § 59:23 — —Resumption § 59:24 — —Reinstatement § 59:25 — —Specication of goods § 59:26 First division—Publication § 59:27 —Opposition § 59:28 Appeal division

V. PROVISIONS REGARDING LEGAL PROTECTION § 59:29 Imprisonment § 59:30 Liability § 59:31 Conscation § 59:32 Notication to the patent oce

VI. REGISTRATION FORMS § 59:33 In general CHAPTER 60. PANAMA

I. OVERVIEW § 60:1 The basics § 60:2 —Trade and regulatory climate § 60:3 —Why register locally? § 60:4 —The future § 60:5 Laws, rules and regulations

II. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 60:6 What is a mark? § 60:7 Which marks may be registered?—Trademark for goods and services § 60:8 —Collective trademark § 60:9 —Warranty trademark § 60:10 —Mark of origin § 60:11 —Denomination of origin § 60:12 —Commercial name or trade name § 60:13 —Slogans or advertisement signs § 60:14 What cannot be registered? § 60:15 —Identical, similar, and deceptive trademarks § 60:16 —Nominative or descriptive marks § 60:17 —Marks with unauthorized content clxxxiv Table of Contents

§ 60:18 —Marks with prohibited content/words/representations § 60:19 Who can register?

III. TRADEMARK REGISTER § 60:20 Where is the trademark registered? § 60:21 —Trademark register § 60:22 —Single- vs multi-class registrations § 60:23 —Exclusive use rights § 60:24 —Limitation on exclusive use rights § 60:25 —Enforcement

IV. INITIAL REGISTRATION § 60:26 Procedure timeline—Search and advice § 60:27 —Filing receipt/serial number § 60:28 —Application and fees § 60:29 —Trademark oce review/initial examination § 60:30 —Response § 60:31 —Publication § 60:32 —Opposition § 60:33 —Post-publication/registration § 60:34 —Average processing times § 60:35 —Government fee schedule

V. REGISTRATION FORMS § 60:36 Information checklist § 60:37 Power of attorney form § 60:38 Application for registration of trademark (initial registration form); trademark/service mark application form § 60:39 A davit of use § 60:40 Request tohttp://www.pbookshop.com amend, change of name/address, withdrawal or renew a trademark application or registration assignment recordation form/cover sheet

VI. POST-REGISTRATION § 60:41 Renewal of registration § 60:42 Amendment § 60:43 Alteration or modication § 60:44 Cancellation of registration and removal of trademark for non-use § 60:45 Assignments § 60:46 Licensees or registered users

VII. RESOURCES § 60:47 In general clxxxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms CHAPTER 61. PAPUA NEW GUINEA

I. OVERVIEW § 61:1 The basics § 61:2 Policies and trends—Trade and regulatory climate § 61:3 —Why register locally? § 61:4 —The future § 61:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 61:6 What is a mark? § 61:7 Which marks may be registered?—Trademark for goods § 61:8 —Trademark for services § 61:9 —Associated trademark § 61:10 —Combined trademark § 61:11 —Series of trademarks § 61:12 —Certication trademark § 61:13 —Defensive trademark § 61:14 —Colored trademark § 61:15 What cannot be registered?—Identical or similar trademarks § 61:16 —Opposed mark § 61:17 —Marks with unauthorized content § 61:18 —Marks with prohibited matters § 61:19 —Marks with prohibited words or representations § 61:20 Who can register?—Proprietor or user § 61:21 —Proposed corporation § 61:22 —Registered user § 61:23 —Joint proprietors § 61:24 —Authorized agent III. TRADEMARKhttp://www.pbookshop.com REGISTER § 61:25 Where is the trademark registered?—Trade marks register § 61:26 —Register Parts A and B § 61:27 —Exclusive use rights § 61:28 —Distinctions in enforcement § 61:29 Register Part A—General rule § 61:30 —Distinctiveness § 61:31 Register Part B—General rule § 61:32 —Distinctiveness

IV. INITIAL REGISTRATION § 61:33 Procedural timeline—Search § 61:34 —Application § 61:35 —Review clxxxvi Table of Contents

§ 61:36 —Registration

V. REGISTRATION FORMS § 61:37 Information checklist § 61:38 Common form requirements § 61:39 Initial registration documents—Application for Registration of Trade Mark Form 4

VI. POST-REGISTRATION § 61:40 Renewal of registration—Duration of protection § 61:41 —Notice before expiration § 61:42 —Renewal before expiration § 61:43 —Renewal after expiration § 61:44 Alteration of register or trademark—Alteration dened § 61:45 —Alteration of register § 61:46 —Alteration of trademark § 61:47 Rectication of register—Rectication dened § 61:48 —Grounds for rectication § 61:49 Assignment—Right to assign § 61:50 —Recordation of assignment § 61:51 Registered user—Right to grant use § 61:52 —Renewal of registered use § 61:53 —Rights of registered user § 61:54 —Variation, extension, or cancellation of registered use § 61:55 Post-Registration documents—Application for Renewal Registration of Trade Mark Form 6 § 61:56 —Application for Registration of Registered User Form 7 § 61:57 —Application by Person Entitled by Assignment or Transmission to Registered Trade Mark for Registration Form 11 § 61:58 —Application for Renewal of Registration of Registered User Form 8 § 61:59 —Applicationhttp://www.pbookshop.com for Variation or Extension of Registration of Registered User Form 9 § 61:60 —Application for Cancellation of Registration of Registered User Form 10 § 61:61 —Application for Amendment or Alteration of the Register Form 2 § 61:62 —Application to Alter a Registered Trade Mark Form 3

VII. RESOURCES § 61:63 In general CHAPTER 62. PERU

I. OVERVIEW § 62:1 The basics clxxxvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 62:2 Policies and trends § 62:3 Why register locally? § 62:4 The future § 62:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 62:6 What is a mark? § 62:7 Which marks may be registered?—Trademark (for goods) § 62:8 —Service mark § 62:9 —Collective marks § 62:10 —Certication mark § 62:11 —Colored marks § 62:12 What cannot be registered? § 62:13 —Marks that consist solely of the everyday shape of products § 62:14 —Marks that are merely descriptive § 62:15 —Identical or similar marks § 62:16 —Marks that contain an indication of origin or appellation of origin § 62:17 —Marks that consist of ags, coats of arms or emblems § 62:18 —Marks likely to create confusion or deceive § 62:19 —Marks contrary to public order § 62:20 —Marks that are identical or similar to a well-known mark § 62:21 —Marks that contribute with unfair competition practices § 62:22 Who can register? § 62:23 —Authorized attorney § 62:24 —Claiming priority

III. TRADEMARK REGISTER § 62:25 Where is the trademark registered? § 62:26 Filing method § 62:27 Single-class applications § 62:28 Filing baseshttp://www.pbookshop.com § 62:29 Exclusive use rights § 62:30 Remedies, infringement and enforcement

IV. INITIAL REGISTRATION § 62:31 Procedure—Search and advice § 62:32 —Application § 62:33 —Filing receipt/ serial number § 62:34 —Initial examination § 62:35 —Publication § 62:36 —Registration

V. REGISTRATION FORMS § 62:37 Information checklist clxxxviii Table of Contents

§ 62:38 Initial registration documents—Power of attorney form § 62:39 —Application for registration of trademark § 62:40 —Application for registration of trademark form

VI. POST-REGISTRATION § 62:41 Renewal of registration—Duration of protection § 62:42 —Renewal before expiration § 62:43 —Renewal after expiration § 62:44 —Lapsing of registration § 62:45 Modication or amendment § 62:46 Cancellation § 62:47 Assignments § 62:48 Cancellation

VII. RESOURCES § 62:49 In general CHAPTER 63. THE PHILIPPINES

I. OVERVIEW § 63:1 The basics § 63:2 Policies and trends—Trade and regulatory climate § 63:3 —Why register locally? § 63:4 —The future

II. REGISTRATION REQUIREMENTS § 63:5 What is a mark? § 63:6 Which marks may be registered?—Trademark for goods § 63:7 —Service mark § 63:8 — —Collective trademark § 63:9 — —Certication trademark § 63:10 — —Defensivehttp://www.pbookshop.com trademark § 63:11 — —Colored trademark § 63:12 What cannot be registered? § 63:13 —Identical or confusingly similar trademarks § 63:14 —Opposed mark § 63:15 —Marks with unauthorized content § 63:16 —Nominative or descriptive marks § 63:17 —Marks with prohibited matters § 63:18 —Shapes and colors § 63:19 Who can register?—Proprietor or user § 63:20 —Priority registrant § 63:21 —Authorized agent

III. TRADEMARK REGISTER § 63:22 Where is the trademark registered?—Trademarks register clxxxix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 63:23 —Distinctiveness

IV. INITIAL REGISTRATION § 63:24 Procedural timeline—Search § 63:25 —Application § 63:26 —Review § 63:27 —Registration

V. REGISTRATION FORMS § 63:28 Information checklist § 63:29 Trademark application (combined petition, statement on oath, and power of attorney) § 63:30 Annex A: Trademark Application § 63:31 Annex B: Declaration of Actual Use § 63:32 Annex C: Assignment of Trademarks § 63:33 Annex D: Anniversary (Adavit of Use)

VI. POST-REGISTRATION § 63:34 Renewal of registration—Duration of protection § 63:35 —Renewal before expiration § 63:36 —Renewal after expiration § 63:37 Alteration or modication—By registrant § 63:38 Cancellation—By registrant § 63:39 —By third party § 63:40 —Entry of order § 63:41 Assignments—Right to assign § 63:42 —Deed of assignment § 63:43 —Recordation of assignment § 63:44 Licensees or registered users—Right to grant use § 63:45 —License agreement § 63:46 —Recordationhttp://www.pbookshop.com § 63:47 Assignment of trademark—Use of form § 63:48 —Information required

VII. RESOURCES § 63:49 In general CHAPTER 64. POLAND

I. OVERVIEW § 64:1 The basics § 64:2 Policies and trends—Trade and regulatory climate § 64:3 —Why register locally? § 64:4 Laws, rules and regulations cxc Table of Contents

II. REGISTRATION REQUIREMENTS § 64:5 What is a mark? § 64:6 On which marks may be granted rights of protection?—Trademark for goods § 64:7 —Trademark for services § 64:8 —Collective trademark § 64:9 —Collective guarantee trademark § 64:10 What cannot be registered? § 64:11 —Identical or similar marks § 64:12 —Marks with unauthorized content § 64:13 —Marks with prohibited matters § 64:14 —Nominative or descriptive marks § 64:15 Who can register?—Proprietor or user § 64:16 Authorized agent § 64:17 —Priority registrant

IV. INITIAL REGISTRATION § 64:23 Procedural timeline—Search and advice § 64:24 —Application § 64:25 —Publication § 64:26 —Review § 64:27 —Registration V. REGISTRATIONhttp://www.pbookshop.com FORMS § 64:28 Information checklist § 64:29 Common form requirements § 64:30 Power of attorney § 64:31 Application for registration of trademark § 64:32 Application for registration of trademark § 64:33 Power of attorney

§ 64:39 —To goods and/or services § 64:40 —To name or address § 64:41 —Invalidation § 64:42 —Lapse § 64:43 Assignments § 64:44 —Recordation of assignment § 64:45 —Legal documents § 64:46 Licensees or registered users § 64:47 —Recordation of license

VII. RESOURCES § 64:48 In general CHAPTER 65. PORTUGAL

I. OVERVIEW § 65:1 The basics § 65:2 Policies and trends—Trade and regulatory climate § 65:3 —Why register locally? § 65:4 —The future § 65:5 Law, rules and regulations

II. REGISTRATION REQUIREMENTS § 65:6 What is a mark? § 65:7 Which marks may be registered?—Trademark for goods and trademark for services [service mark] § 65:8 —Collective trademark § 65:9 —Associated trademark § 65:10 —Certication trademark § 65:11 —Coloredhttp://www.pbookshop.com trademark § 65:12 What cannot be registered? § 65:13 —Indistinctive marks § 65:14 —Marks with unauthorized content/words/representations § 65:15 —Identical, similar, and deceptive trademarks marks or that “falsely suggest a connection” § 65:16 —Marks that are “immoral, deceptive or scandalous” § 65:17 Who can register?—Proprietor or user § 65:18 —Authorized agent or lawyer § 65:19 —Priority registrant

III. TRADE MARK REGISTER § 65:20 Where is the trademark registered?—Trademark register § 65:21 —Filing methods § 65:22 —Single v. multi-class applications cxcii Table of Contents

§ 65:23 —Validity § 65:24 —Exclusive use rights § 65:25 —Limitation to exclusive use rights § 65:26 —Marking § 65:27 —Remedies; infringement; enforcement

IV. INITIAL REGISTRATION § 65:28 Procedural timeline—Search and advice § 65:29 —Application and fees § 65:30 —Filing receipt/serial number § 65:31 —Claim for priority § 65:32 —Industrial property institute review/initial examination § 65:33 —Publication § 65:34 —Opposition and entry § 65:35 —Reexamination § 65:36 —Decision § 65:37 —Response § 65:38 —Appeal § 65:39 —Post-publication/registration § 65:40 —Government fee schedule

V. REGISTRATION FORMS § 65:41 General information § 65:42 Power of attorney form [draft] § 65:43 Application for registration of trademark (initial registration form) § 65:44 Assignment form [draft] § 65:45 Licensing form [draft] § 65:46 Trademark license agreement § 65:47 Payment of trademark registration fee VI. POST-REGISTRATIONhttp://www.pbookshop.com § 65:48 Maintenance and renewal of registration—Duration of protection and renewal before expiration § 65:49 —Renewal after expiration § 65:50 Maintenance § 65:51 Reinstatement § 65:52 —Alteration or modication § 65:53 Annulment § 65:54 Cancellation of registration—Grounds for cancellation § 65:55 —Proceedings for cancellation § 65:56 Assignments—Rights to assign § 65:57 —Recordation of assignment § 65:58 —Legal documents § 65:59 Licensees or registered users—Right to grant use § 65:60 —Recordation of license cxciii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 65:61 —Legal documents § 65:62 —Abandonment

VII. RESOURCES § 65:63 In general CHAPTER 66. PUERTO RICO

I. OVERVIEW § 66:1 The basics § 66:2 Policies and trends—Trade and regulatory climate § 66:3 Why register locally? § 66:4 —The future § 66:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 66:6 What is a mark? § 66:7 Which marks may be registered?—Trademark for goods § 66:8 —Trademark for services § 66:9 —Certication trademark § 66:10 —Collective trademark § 66:11 What cannot be registered? § 66:12 —Marks that are contrary to the law, the morale and public policy—Marks that are symbols of puerto rico § 66:13 —Marks that are the full name, one or two last names, image, nickname,signature, or a combination of these, of a person § 66:14 —Words that are descriptive of the goods and services for which they are used § 66:15 —Words indicating the genre of the goods and services § 66:16 —Shapes and labels § 66:17 —Geographichttp://www.pbookshop.com names and terms § 66:18 —Identical, similar, and deceptive trademarks § 66:19 —Marks similar to famous marks § 66:20 Who can register?—Proprietor or owner § 66:21 —Representative § 66:22 —Foreign applicants or corporations

III. TRADEMARK REGISTER § 66:23 Where is the trademark registered?—Puerto Rico trademark oce § 66:24 —Filing methods § 66:25 —Single and multi-class applications § 66:26 —Filing bases § 66:27 —Requirement of distinctiveness § 66:28 —Continuous use or incontestability cxciv Table of Contents

§ 66:29 —Exclusive use rights § 66:30 —Enforcement and remedies

IV. INITIAL REGISTRATION § 66:31 Procedural timeline—Search and advice § 66:32 —Application § 66:33 —Filing receipt/serial number § 66:34 —Initial examination § 66:35 —Response § 66:36 —Reexamination, reconsideration, and judicial revision § 66:37 —Publication § 66:38 —Opposition § 66:39 —Post-publication/registration § 66:40 —Government fee schedule

V. REGISTRATION FORMS § 66:41 Information checklist § 66:42 Application for registration of trademark (initialregistration form)

VI. POST-REGISTRATION § 66:43 Maintenance § 66:44 Renewal of registration—Duration of protection § 66:45 —Renewal before expiration § 66:46 —Renewal after expiration § 66:47 —Reinstatement § 66:48 —Advertisement of renewal § 66:49 Amendments—Amendments to the registration § 66:50 —Correction of error in registration § 66:51 —Cancellation of registration § 66:52 —Assignments

VII. RESOURCEShttp://www.pbookshop.com § 66:53 In general CHAPTER 67. QATAR

I. OVERVIEW § 67:1 The basics § 67:2 Policies and trends—Trade and regulatory climate § 67:3 —Why register locally? § 67:4 —The future § 67:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 67:6 What is a mark? cxcv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 67:7 Which trademarks may be registered? § 67:8 —Associated trademark § 67:9 —Collective mark § 67:10 —Group mark § 67:11 —Certication trademark § 67:12 —Defensive trademark § 67:13 —Commercial trademark § 67:14 —Geographical indication § 67:15 —Series of trademarks § 67:16 —Other types of trademarks § 67:17 What cannot be registered? § 67:18 Who can register?

III. TRADEMARK REGISTER § 67:19 Where is the trademark registered?—Industrial property oce § 67:20 Filing methods—Registers § 67:21 —Rights of usage § 67:22 —Constructive use rights § 67:23 —Enforcement § 67:24 —Marking § 67:25 —Classi cation

IV. INITIAL REGISTRATION § 67:26 Procedure—Search and advice § 67:27 —Application § 67:28 —Initial examination § 67:29 —Response § 67:30 —Publication § 67:31 Average processing times § 67:32 Trademark fees http://www.pbookshop.com V. REGISTRATION FORMS § 67:33 In general § 67:34 Power of Attorney form

VI. POST-REGISTRATION § 67:35 Maintenance and renewal of registration—Duration of protection § 67:36 —Renewal before expiration § 67:3y —Renewal after expiration § 67:38 Cancellation—Action by registrar § 67:39 —Action by owner § 67:40 —Action by court § 67:41 Removal of trademark for non-use § 67:42 Assignments cxcvi Table of Contents

§ 67:43 Licenses

VII. RESOURCES § 67:44 In general CHAPTER 68. ROMANIA

I. OVERVIEW § 68:1 The basics § 68:2 Policies and trends—Trade and regulatory climate § 68:3 —Why register locally? § 68:4 —The future § 68:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 68:6 What is a trademark? § 68:7 Which marks may be registered? § 68:8 What cannot be registered? § 68:9 Who can register?

III. TRADEMARK REGISTER § 68:10 Where is the trademark registered?—State oce for patents and trademarks § 68:11 —Filing methods § 68:12 —Registers § 68:13 —Single/multi-class application § 68:14 —Requirement of distinctiveness § 68:15 —Rights over a registered trademark. validity. enforcement § 68:16 —Limitations of the rights over a registered trademark http://www.pbookshop.com IV. INITIAL REGISTRATION § 68:17 Procedural timeline—Search and advice § 68:18 —Application § 68:19 —Preliminary examination § 68:20 —Decisions further to the examination § 68:21 —Opposition § 68:22 —Reexamination § 68:23 —Final decision § 68:24 —Taxes/fees

V. REGISTRATION FORMS § 68:25 Information checklist § 68:26 Registration forms cxcvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 68:27 Trademark Registration Application § 68:28 Trademark Renewal Application

VI. POST REGISTRATION § 68:29 Renewal of registration—Duration of protection § 68:30 —Renewal before expiration § 68:31 —Renewal after expiration § 68:32 —Reinstatement § 68:33 Amendment—Amendment to trademark § 68:34 —Other amendments to the registration § 68:35 Trademark annulment § 68:36 Cancellation of trademark for non-use § 68:37 Transfer

VII. RESOURCES § 68:38 In general Appendix 68A. Schedule of Fees for Trademark-Related Procedures CHAPTER 69. RUSSIA

I. OVERVIEW § 69:1 The basics § 69:2 Policies and trends—Trade and regulatory climate § 69:3 —Why register locally? § 69:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 69:5 What is a mark? § 69:6 Which marks may be registered?—Trademark for goods § 69:7 —Trademarkhttp://www.pbookshop.com for services [service mark] § 69:8 —Trademark for executed works § 69:9 — —Word mark § 69:10 — —Graphic mark § 69:11 — —Volume mark § 69:12 — —Combined mark § 69:13 —Famous trademark § 69:14 —Collective trademark § 69:15 —Other marks § 69:16 What cannot be registered § 69:17 —Absolute grounds for rejecting the registration of a trademark— Indistinguishable marks § 69:18 — —Commonly used marks § 69:19 — —Commonly accepted marks § 69:20 — —Characteristic marks cxcviii Table of Contents

§ 69:21 — —Marks representing form of goods § 69:22 — —Marks that consist of ags, coats of arms or other insignia § 69:23 — —False and immoral marks § 69:24 — —Marks identical or similar to ocial marks to the point of confusion § 69:25 — —Marks comprising designations identifying wines and other liquors § 69:26 —Other grounds for rejection of registration of a trademark— Identical and similar trademarks § 69:27 — —Nominative marks and marks containing industrial designs § 69:28 Who can register § 69:29 —Individuals who are russian residents and legal entities registered in russia § 69:30 —Foreign applicants § 69:31 —Patent attorneys § 69:32 —Other representatives

III. TRADEMARK REGISTER § 69:33 Registration of trademark § 69:34 Content of trademark register § 69:35 Press release regarding a registration § 69:36 Exclusive use rights § 69:37 Limitation on exclusive use rights

IV. INITIAL REGISTRATION § 69:38 In general § 69:39 Procedural timeline § 69:40 —Formal examination § 69:41 —Examination of pending designation § 69:42 —Issue of resolution on registration § 69:43 —Federal register of trademarks § 69:44 —Trademarkhttp://www.pbookshop.com registration certicate § 69:45 —Notication of registration § 69:46 —Registration validity period § 69:47 —Registration fees

V. REGISTRATION FORMS § 69:48 In general § 69:49 Power of attorney § 69:50 Application for registration of trademark § 69:51 Application for amendment of name, address of tm designation § 69:52 Application for amendment of errors § 69:53 Application to change the applicant § 69:54 Application to register the transfer of exclusive right agreement § 69:55 Application to register the license agreement cxcix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms VI. POST-REGISTRATION § 69:56 Renewal of registration—Duration of protection § 69:57 —Renewal before expiration § 69:58 Form for prolongation of a trademark § 69:59 Renewal after expiration § 69:60 Amendment—Action by registrar at request of owner § 69:61 Cancellation of registration § 69:62 Assignment and license agreements—Assignment of a trademark § 69:63 —License agreements § 69:64 —Registration of assignment and license agreements

VII. RESOURCES § 69:65 In general CHAPTER 70. SAUDI ARABIA

I. OVERVIEW § 70:1 The basics § 70:2 Policies and trends—Trade and regulatory climate § 70:3 —Why register locally? § 70:4 —The future § 70:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 70:6 What is a mark? § 70:7 Which marks may be registered?—Trademark for goods § 70:8 —Trademark for services § 70:9 —Collective mark § 70:10 What cannot be registered? § 70:11 Who can register?http://www.pbookshop.com § 70:12 —Authorized agent § 70:13 —Priority registrant

III. TRADEMARK REGISTER § 70:14 Where is the trademark registered?—Trademark register § 70:15 —Requirement of distinctiveness § 70:16 —Exclusive use rights § 70:17 —Enforcement

IV. INITIAL REGISTRATION § 70:18 Procedural timeline—Search and advice § 70:19 —Application § 70:20 —Review cc Table of Contents

§ 70:21 —Registration

V. REGISTRATION FORMS § 70:22 Information checklist § 70:23 Common form requirements

VI. INITIAL REGISTRATION DOCUMENTS § 70:24 Application for registration of trademark

VII. POST-REGISTRATION § 70:25 Renewal of registration—Duration of protection § 70:26 —Renewal prior to expiration § 70:27 —Renewal after expiration § 70:28 —Reinstatement § 70:29 Alteration or modication—Obvious errors § 70:30 —To trademark § 70:31 —To name or address § 70:32 —Cancellation § 70:33 —Assignments § 70:34 —Recording of assignment § 70:35 —Legal documents § 70:36 —Licensees or registered users § 70:37 —Recording the license § 70:38 —Rights of the licensee § 70:39 —Rights of the proprietor

VIII. RESOURCES § 70:40 In general CHAPTER 71.http://www.pbookshop.com SINGAPORE I. OVERVIEW § 71:1 The basics § 71:2 Policies and trends—Trade and regulatory climate § 71:3 —Why register locally? § 71:4 —Future § 71:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 71:6 What is a mark? § 71:7 Which marks may be registered?—Trademark for goods & services § 71:8 —Associated trademark § 71:9 —Series of trademarks cci K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 71:10 —Certication trademark § 71:11 —Well known marks § 71:12 —Collective marks § 71:13 —Colored trademark § 71:14 —Multiclass applications § 71:15 Grounds for refusal of registration—Absolute grounds for refusal § 71:16 —Relative grounds for refusal § 71:17 —Division of application § 71:18 —Protection for geographical indications § 71:19 —Marks with prohibited matters § 71:20 —Marks with prohibited words or representations § 71:21 Who can register?—Proprietor or user § 71:22 —Priority registrant § 71:23 —Proposed corporation § 71:24 —Licensee § 71:25 —Joint proprietors/co-owners § 71:26 —Deceased persons § 71:27 —Authorized agent

III. TRADEMARK REGISTER § 71:28 Trade marks register § 71:29 Register parts a and b

IV. INITIAL REGISTRATION § 71:30 Procedural timeline—Application § 71:31 —Review § 71:32 —Registration

V. REGISTRATION FORMS § 71:33 Information checklist § 71:34 Commonhttp://www.pbookshop.com form requirements § 71:35 Trademark representation requirements § 71:36 Application for Registration of Trade Mark Form TM-4 § 71:37 Application for Registration of Collective or Certication Trade Mark Forms TM-4 and TM-10 § 71:38 Request for Grounds of Decision Form TM-7

VI. POST-REGISTRATION § 71:39 Renewal of registration—Duration of protection § 71:40 —Notice before expiration § 71:41 —Renewal before expiration § 71:42 —Renewal after expiration and restoration § 71:43 —Removal of trade mark from register § 71:44 Alteration of register or trademark—Alteration of register § 71:45 Rectication, revocation and invalidation—Rectication ccii Table of Contents

§ 71:46 —Revocation § 71:47 —Invalidation § 71:48 Assignment—Right to assign § 71:49 —Recordation of assignment § 71:50 Licenses—Right to grant use § 71:51 —Recordation of license § 71:52 —Consequences of failure to record a license § 71:53 —Variation or cancellation of license § 71:54 Application for Renewal of Registration Form TM-19 § 71:55 Late Application for Renewal of Registration Form TM-24 § 71:56 Application for Restoration and Renewal of Registration Form TM-21 § 71:57 Application to Register a Subsequent Proprietor Form TM-22 § 71:58 Request to Amend Name or Address Form TM-26 § 71:59 Application for Revocation or Declaration of Invalidity of Registration or Rectication of Register Form TM-28 § 71:60 Request for Variation of Regulations for Collective or Certication Trademark Form TM-30 § 71:61 Request for Cancellation of Trademark Entry in the Register Forms TM-31 and TM-32 § 71:62 Request for Entry of Disclaimer or Limitation in the Register Form TM-33 § 71:63 Application for Registration of Grant of a Licence Form TM-37 § 71:64 —Madrid protocol

VII. RESOURCES § 71:65 In general CHAPTER 72. SLOVAK REPUBLIC

I. OVERVIEW § 72:1 The basicshttp://www.pbookshop.com § 72:2 Policies and trends—Trade and regulatory climate § 72:3 —Why register locally? § 72:4 —The future § 72:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 72:6 What is a mark? § 72:7 Which marks may be registered?—Trademark for goods § 72:8 —Trademark for services § 72:9 —Collective trademark § 72:10 —Colored trademark § 72:11 What cannot be registered? § 72:12 Who can register?—Proprietor or user cciii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 72:13 —Authorized agent § 72:14 —Priority registrant § 72:15 —Observations

III. TRADEMARK REGISTER § 72:16 Where is the trademark registered?—Trademark register § 72:17 —Exclusive use rights § 72:18 —Limitation on exclusive use rights § 72:19 —Enforcement § 72:20 —Validity

IV. INITIAL REGISTRATION § 72:21 Procedure—Search and advice § 72:22 —Application § 72:23 —Review § 72:24 —Registration

VI. POST-REGISTRATION § 72:29 Renewal of registration—Duration of protection § 72:30 —Renewal § 72:31 Alteration or modication—Obvious errors § 72:32 —To trademark § 72:33 —To goods and/or services § 72:34 —To namehttp://www.pbookshop.com or address § 72:35 Revocation of the trademark § 72:36 Declaration of invalidity of the trademark § 72:37 Pledge § 72:38 Transfer of trademarks § 72:39 Licensees or registered users

VII. RESOURCES § 72:40 In general CHAPTER 73. SOUTH AFRICA

I. OVERVIEW § 73:1 The basics cciv Table of Contents

§ 73:2 Policies and trends—Trade and regulatory climate § 73:3 —Relevant legislation § 73:4 —Why register locally? § 73:5 —The future § 73:6 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 73:7 What makes a trade mark registrable:what is a mark?— Registration requirements § 73:8 Which marks may be registered?—Trade mark for goods § 73:9 —Service mark § 73:10 —Collective trade mark § 73:11 —Certication trade mark § 73:12 —Defensive trade mark § 73:13 —Series of trade marks § 73:14 What cannot be registered?—Absolute grounds for refusal § 73:15 —Relative grounds for refusal § 73:16 Who can register? § 73:17 —Authorized agent § 73:18 —Priority registrant § 73:19 —Joint owners or users § 73:20 —Proposed corporation/company about to be formed

III. TRADE MARK REGISTER § 73:21 Where is the trade mark registered?—Trade mark register § 73:22 —Exclusive use rights § 73:23 —Limitation on exclusive use rights § 73:24 —Marking § 73:25 —Enforcement § 73:26 —Infringement § 73:27 —Remedieshttp://www.pbookshop.com § 73:28 —Validity IV. INITIAL REGISTRATION § 73:29 Procedure § 73:30 —Procedural timeline § 73:31 —Average processing times § 73:32 —Advertisement

V. REGISTRATION FORMS § 73:33 In general § 73:34 Registration forms § 73:35 Power of attorney § 73:36 Application for registration of trade mark ccv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms VI. POST-REGISTRATION § 73:37 Renewal of registration—Duration of protection § 73:38 —Renewal before expiration § 73:39 —Renewal after expiration § 73:40 —Reinstatement § 73:41 —Advertisement of renewal § 73:42 Amendment—Action by registrar at request of owner § 73:43 —Violation of condition § 73:44 Loss of exclusive use § 73:45 Miscellaneous grounds for amendment—Alteration or modication—Obvious errors § 73:46 Cancellation of registration—Action by registrar § 73:47 —At request of owner § 73:48 —Action by court § 73:49 —For violation of condition § 73:50 Removal of trade mark for non-use—Grounds for removal § 73:51 —Time of application § 73:52 —Notication § 73:53 —Opposition § 73:54 —Removal and restoration § 73:55 Assignments—Rights to assign § 73:56 —Recordation of assignment § 73:57 —Legal documents § 73:58 Licensees or registered users—Right to grant use § 73:59 —Rights of the proprietor § 73:60 —Rights of the licensee § 73:61 —Recordation of license

VII. RESOURCES § 73:62 In general http://www.pbookshop.com CHAPTER 74. SOUTH KOREA I. OVERVIEW § 74:1 The basics § 74:2 Policies and trends—Trade and regulatory climate § 74:3 —Why register locally? § 74:4 —The future § 74:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 74:6 What is a mark? § 74:7 Which marks may be registered?—Trademark for goods § 74:8 —Trademark for services ccvi Table of Contents

§ 74:9 —Collective trademark § 74:10 —Business mark § 74:11 —Colored trademark § 74:12 —Geographical indication § 74:13 What cannot be registered?—Non-distinctive trademarks § 74:14 —Identical or similar trademarks § 74:15 —Deceptive or confusing marks § 74:16 —Opposed mark § 74:17 —Mark with unauthorized content § 74:18 —Marks with prohibited matters § 74:19 —Marks with prohibited words or representations § 74:20 Who can register?—Proprietor or user § 74:21 —Priority registrant § 74:22 —Authorized agent

III. TRADEMARK REGISTER § 74:23 Where is the trademark registered?—Trademarks register § 74:24 —Requirement of distinctiveness § 74:25 —Application must comply with international treaties § 74:26 —Rights of a registered owner § 74:27 —Validity § 74:28 —Enforcement

IV. INITIAL REGISTRATION § 74:29 Procedural timeline—Application § 74:30 —Review § 74:31 —Registration § 74:32 Procedural timeline

V. REGISTRATION FORMS § 74:33 Informationhttp://www.pbookshop.com checklist § 74:34 Specimen requirements § 74:35 Initial registration documents—Power of attorney § 74:36 —Application for applicants code § 74:37 —Application for registration § 74:38 —Submission of priority document

§ 74:45 —Change of name and/or address of trademark holder § 74:46 —Addition of goods/services § 74:47 —Rejection of application for addition § 74:48 Cancellation, invalidation, abandonment, extinction—Cancellation § 74:49 —Invalidation trial of a trademark registration § 74:50 —Abandonment of trademark § 74:51 —Extinction of trademark right § 74:52 Assignments—Right to assign § 74:53 —Registration of assignment § 74:54 Licensees or registered users—Right to grant use § 74:55 —Duration § 74:56 —Rights of registered user § 74:57 —Right to use a trademark after the term of a patent right expires § 74:58 —Presumption of the amount of damages § 74:59 —Alteration or cancellation § 74:60 —International application under the madrid protocol § 74:61 Post-Registration forms—Deed of Assignment § 74:62 —Certicate of Nationality/Corporation

VII. RESOURCES § 74:63 In general CHAPTER 75. SPAIN

I. OVERVIEW § 75:1 The basics § 75:2 Policies and trends—Trade and regulatory climate § 75:3 —Why register locally? § 75:4 —The future § 75:5 Laws, ruleshttp://www.pbookshop.com and regulations II. REGISTRATION REQUIREMENTS § 75:6 What is a mark? § 75:7 Which marks may be registered?—Trademark for goods § 75:8 —Trademark for services § 75:9 — —Defensive mark § 75:10 — —Collective mark § 75:11 — —Certication mark § 75:12 — —Colored trademark and sound trademarks § 75:13 What cannot be registered? § 75:14 —Identical or similar mark § 75:15 —Marks with unauthorized content § 75:16 —Nominative or descriptive marks § 75:17 Who can register?—Proprietor or user ccviii Table of Contents

§ 75:18 —Authorized agent § 75:19 —Priority registrant

III. TRADEMARK REGISTER § 75:20 Where is the trademark registered?—Trademarks register § 75:21 —Exclusive use rights § 75:22 —Obligatory use of the trademark § 75:23 —Enforcement

IV. INITIAL REGISTRATION § 75:24 Procedural timeline—Search § 75:25 —Application § 75:26 —Review § 75:27 —Registration § 75:28 —Notications

V. REGISTRATION FORMS § 75:29 Information checklist § 75:30 Common form requirements § 75:31 Initial registration documents—Power of attorney § 75:32 —Application for registration of trademark

VI. POST-REGISTRATION § 75:33 Renewal of registration—Duration of protection § 75:34 —Renewal before expiration § 75:35 —Renewal after expiration § 75:36 —Reinstatement § 75:37 Alteration or modication—To trademark § 75:38 —To goods and/or services § 75:39 —To namehttp://www.pbookshop.com or address § 75:40 Cancellation § 75:41 Assignments § 75:42 —Recordation of assignment § 75:43 —Legal documents § 75:44 Licensees or registered users § 75:45 —Recordation of license § 75:46 —Rights of the parties § 75:47 —Cancellation of assignment or license § 75:48 Post-Registration documents—Contract of Assignment (Deed of Assignment)

VII. RESOURCES § 75:49 In general ccix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms CHAPTER 76. SWEDEN

I. OVERVIEW § 76:1 The basics § 76:2 Policies and trends—Trade and regulatory climate § 76:3 —Why register locally? § 76:4 —The future § 76:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 76:6 What is a mark? § 76:7 Which marks may be registered?—Trademark for goods § 76:8 —Trademark for services § 76:9 —Collective trademark § 76:10 —Colored trademarks, sound marks and three-dimensional marks § 76:11 —Company names § 76:12 What cannot be registered? § 76:13 —Conicting trademarks § 76:14 —Nominative or descriptive trademarks § 76:15 —Trademarks that are immoral, deceptive, unauthorized content or opposed trademark, etc § 76:16 Who can register?—Proprietor or user § 76:17 —Authorized agent § 76:18 — —Priority registrant

III. TRADEMARK REGISTER § 76:19 Where is the trademark registered?—Trademark register § 76:20 —Requirement of distinctiveness § 76:21 —Exclusive use rights § 76:22 —Enforcementhttp://www.pbookshop.com

IV. INITIAL REGISTRATION § 76:23 Procedure—Search and advice § 76:24 —Application § 76:25 —Review § 76:26 —Registration

V. REGISTRATION FORMS § 76:27 Information checklist § 76:28 Common form requirement § 76:29 Initial registration documents—Application for registration of trademark § 76:30 —Power of attorney form ccx Table of Contents

VI. POST-REGISTRATION § 76:31 Renewal of registration—Duration of protection § 76:32 —Renewal before expiration § 76:33 —Renewal after expiration § 76:34 —Advertisement of renewal § 76:35 Alteration or modication—To trademark § 76:36 —To goods and/or services § 76:37 —Name or address § 76:38 Cancellation of registration § 76:39 Removal of Trademark for Non-Use § 76:40 Assignments—Rights to assign § 76:41 —Recordation of assignment § 76:42 —Legal documents § 76:43 Licensees or registered users—Right to grant use § 76:44 —Rights of the proprietor § 76:45 —Rights of the licensee § 76:46 —Recordation of license

VII. RESOURCES § 76:47 In general CHAPTER 77. TAIWAN

I. OVERVIEW § 77:1 The basics § 77:2 Policies and trends—Trade and regulatory climate § 77:3 —Why register locally? § 77:4 —The future § 77:5 Laws, rules and regulations

II. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 77:6 What is a mark? § 77:7 Which marks may be registered?—Trademark § 77:8 — —Associated trademark § 77:9 — —Defensive trademark § 77:10 —Service mark § 77:11 —Collective mark § 77:12 —Certication trademark § 77:13 What cannot be registered?—Identical, similar, and deceptive trademarks—Identical or similar trademarks § 77:14 — —Deceptive trademarks § 77:15 —Opposed mark § 77:16 —Nominative or descriptive marks § 77:17 —Marks with unauthorized content ccxi K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 77:18 —Marks with prohibited content/words/representations— Prohibited content § 77:19 — —Prohibited words or representations: § 77:20 Who can register?—Proprietor or user § 77:21 —Authorized agent § 77:22 — —Registration by foreign nationals § 77:23 —Priority registrant § 77:24 — —Priority before WTO accession § 77:25 —Joint owners or users/proposed corporation

IV. INITIAL REGISTRATION § 77:37 Procedural timeline—Search and advice § 77:38 —Application § 77:39 —Review § 77:40 —Publication § 77:41 —Opposition § 77:42 —Revocation

V. REGISTRATIONhttp://www.pbookshop.com FORMS § 77:43 Information Checklist § 77:44 Common form requirements § 77:45 Initial registration documents—Authorization of agent (power of attorney) § 77:46 — —Form § 77:47 —Application for registration of trademark § 77:48 — —Form § 77:49 —Adavit of intent to use § 77:50 Renewal of registration—Adavit of intent to use—Form

VI. POST-REGISTRATION § 77:51 Renewal of registration—Duration of protection § 77:52 —Renewal ccxii Table of Contents

§ 77:53 —Renewal after expiration § 77:54 —Reinstatement § 77:55 —Advertisement of renewal § 77:56 Change of registration—Change in registration particulars § 77:57 —Change in the type of a registration § 77:58 —Change in designated goods/services § 77:59 —Change in the trademark design § 77:60 Cancellation of registration § 77:61 —At request of owner § 77:62 —Action by interested party § 77:63 —Action by registrar § 77:64 Removal of trademark registration for improper use or non-use § 77:65 —Grounds for removal § 77:66 —Procedure and response § 77:67 — —Appeals § 77:68 —Eect of removal § 77:69 Assignments—Rights to assign § 77:70 — —Right to assign the application § 77:71 —Recordation of assignment § 77:72 —Legal documents § 77:73 Licensees or registered users—Right to grant use § 77:74 —Recordation of license § 77:75 —Rights of licensee § 77:76 —Termination of license § 77:77 Post registration forms—Use of form § 77:78 —Information required § 77:79 —Application for extending the term of the trademark—Form § 77:80 Assignment—Use of form § 77:81 —Information required § 77:82 —Form VII. RESOURCEShttp://www.pbookshop.com § 77:83 In general CHAPTER 78. THAILAND

I. OVERVIEW § 78:1 The basics § 78:2 Policies and trends—Trade and regulatory climate § 78:3 —Why register locally? § 78:4 —The future § 78:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 78:6 What is a mark? ccxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 78:7 Which marks may be registered?—Trademark for goods § 78:8 —Trademark for services § 78:9 — —Collective trademark (set) § 78:10 — —Certication trademark (Mark of Guarantee) § 78:11 — —Defensive trademark § 78:12 — —Colored trademark § 78:13 — —Three-dimensional marks § 78:14 — —Well-known marks § 78:15 What cannot be registered?—Identical trademarks § 78:16 —Deceptively or confusingly similar marks § 78:17 —Opposed marks § 78:18 —Marks with unauthorized content § 78:19 —Marks with prohibited words or representations § 78:20 —Pharmaceutical marks § 78:21 —Marks with prohibited content § 78:22 —Well-known trademarks § 78:23 —Generic and descriptive marks § 78:24 Who can register?—Proprietor or user § 78:25 —Priority registrant § 78:26 —Authorized agent

III. TRADEMARK REGISTER § 78:27 Where is the trademark registered?—Trademark register § 78:28 —Necessary characteristics § 78:29 —Distinctiveness § 78:30 —Exclusive use rights

IV. INITIAL REGISTRATION § 78:31 Procedural timeline—Search and advice § 78:32 —Application § 78:33 —Review § 78:34 —Registrationhttp://www.pbookshop.com V. REGISTRATION FORMS § 78:35 Information checklist § 78:36 Common form requirements § 78:37 Initial registration documents—Application for registration of trademark § 78:38 —Disclaimer § 78:39 —Application for priority claim § 78:40 —Request for extension of time—priority claim § 78:41 —Authorization of agent (power of attorney) § 78:42 —Power of attorney

VI. POST-REGISTRATION § 78:43 Renewal of registration—Duration of protection ccxiv Table of Contents

§ 78:44 —Renewal before expiration § 78:45 Rescission and rectication—Amendment to registration § 78:46 —Rescission by owner § 78:47 —Rescission by registrar § 78:48 —Rescission of license § 78:49 —Certication marks § 78:50 Assignments—Right to assign § 78:51 —Registration of assignment § 78:52 Licensees or registered users—Right to grant use § 78:53 —Amendment of licensing agreement § 78:54 —Alteration or cancellation § 78:55 Post-Registration documents—Petition to transfer or inheritance of rights § 78:56 —Application for registration of license § 78:57 —Application to enter changes § 78:58 —Application for renewal § 78:59 —Application to cancel

VII. RESOURCES § 78:60 In general CHAPTER 79. TUNISIA

I. OVERVIEW § 79:1 The basics § 79:2 Policies and trends—Trade and regulatory climate § 79:3 —Government § 79:4 —Legal system § 79:5 — —Constitutional law § 79:6 — —Statutory law § 79:7 Why registerhttp://www.pbookshop.com locally? § 79:8 Laws, rules and regulations II. REGISTRATION REQUIREMENTS § 79:9 What is a mark? § 79:10 Which marks may be registered?—Trademark for goods § 79:11 —Trademark for services § 79:12 —Collective trademark § 79:13 —Colored trademark § 79:14 What cannot be registered? § 79:15 Who can register?—Proprietor or user § 79:16 —Authorized agent § 79:17 —Priority registrant § 79:18 —Incorporation ccxv K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms III. TRADEMARK REGISTER § 79:19 Where is the trademark registered?—Trademark register

IV. INITIAL REGISTRATION § 79:20 Procedural timeline—Search and advice § 79:21 —Application § 79:22 —Review § 79:23 —Publication

V. POST-REGISTRATION § 79:24 Duration of protection § 79:25 Renewal § 79:26 Cancellation of registration § 79:27 Assignments—Right to assign § 79:28 —Recordation of assignment § 79:29 —Legal documents § 79:30 Licensees or registered users—Right to grant use § 79:31 —Rights of the proprietor § 79:32 — —A penalties § 79:33 — —Damages § 79:34 — —A seizure § 79:35 — —A destruction of the imitated products § 79:36 — —A publication of the judgment in newspapers § 79:37 —Rights of the licensee § 79:38 —Recordation of license § 79:39 Registration forms—Power of attorney form § 79:40 —Deed of assignment form

VI. RESOURCES § 79:41 In generalhttp://www.pbookshop.com Appendix 79A. National Classication CHAPTER 80. TURKEY

I. OVERVIEW § 80:1 The basics § 80:2 Policies and trends—Trade and regulatory climate § 80:3 —Why register locally?

II. REGISTRATION REQUIREMENTS § 80:4 What is a mark? § 80:5 Which marks may be registered?—Trademarks § 80:6 —Service marks ccxvi Table of Contents

§ 80:7 —Certication marks § 80:8 —Collective marks § 80:9 What cannot be registered? § 80:10 —Absolute grounds for refusal of registration for Refusal of Registration § 80:11 —Relative grounds for refusal of registration for Refusal of Registration § 80:12 Who can register? § 80:13 —Representation of an applicant or registrant

III. TRADEMARK REGISTER § 80:14 Where is a trademark registered? § 80:15 —Filing methods § 80:16 —Single and/or multi-class ling § 80:17 —Requirement of distinctiveness § 80:18 —Exclusive use rights § 80:19 —Limitation on exclusive use rights § 80:20 —Exhaustion of exclusive use rights § 80:21 —Enforcement § 80:22 —Validity

IV. INITIAL REGISTRATION § 80:23 Search § 80:24 Communication of the ling details § 80:25 Examination and allowance of application § 80:26 Re-examination § 80:27 Re-consideration and appeal § 80:28 Publication § 80:29 Who may oppose? § 80:30 Opposition procedure § 80:31 Registration § 80:32 Average processinghttp://www.pbookshop.com times § 80:33 Government fee schedule § 80:34 Marking

V. REGISTRATION FORMS § 80:35 In general § 80:36 Initial application form § 80:37 Form for opposing a published application § 80:38 Power of attorney form § 80:39 Trademark assignment form § 80:40 License agreement

VI. POST-REGISTRATION § 80:41 Renewal of registration ccxvii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 80:42 —Duration of protection § 80:43 —Renewal before expiration § 80:44 —Renewal after expiration § 80:45 —Reinstatement § 80:46 —Advertisement of renewal § 80:47 —Classication § 80:48 Amendment—Action by the tto at request of owner § 80:49 —Amendment of classication § 80:50 Alteration or modication—Obvious errors § 80:51 Cancellation of registration—At request of owner § 80:52 —Action by tto § 80:53 Invalidation of trademark for non-use § 80:54 —Time of commencement of invalidation action for non-use § 80:55 —Enforcement § 80:56 Change in legal status, name and address § 80:57 Assignments—Rights to assign § 80:58 —Mandatory disclosure of terms in assignment document § 80:59 —Non-mandatory disclosure of terms in assignment document § 80:60 —Recordal of assignment § 80:61 —Documents required for recordal of assignment § 80:62 Licenses § 80:63 —Recordation of license § 80:64 —Minimum disclosure for recordal of license agreement

VII. RESOURCES § 80:65 In general CHAPTER 81. UKRAINE

I. OVERVIEW § 81:1 The bascishttp://www.pbookshop.com § 81:2 Policies and trends—Trade and regulatory climate § 81:3 —The future § 81:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 81:5 What is a mark? § 81:6 Which marks may be registered? § 81:7 What cannot be registered? § 81:8 Who can register? § 81:9 —Ukrainian applicants § 81:10 —Foreign applicants

III. TRADEMARK REGISTER § 81:11 Where is the trademark registered?—Trademark register ccxviii Table of Contents

§ 81:12 —Exclusive use rights § 81:13 —Validity

IV. INITIAL REGISTRATION § 81:14 Procedural timeline—Search and advice § 81:15 —Application § 81:16 —Serial number § 81:17 —Formal examination § 81:18 —Qualied examination § 81:19 —Publication in the ocial bulletin § 81:20 —Issuing the certicate

V. REGISTRATION FORMS § 81:21 Power of attorney § 81:22 The application for registration § 81:23 Application for registration

VI. POST-REGISTRATION § 81:24 Renewal of registration § 81:25 Alteration or modication § 81:26 Cancellation of registration § 81:27 —At request of the owner § 81:28 —If the tax is not paid § 81:29 —Following court procedure § 81:30 Removal of Trademark for Non-Use § 81:31 Assignments and license agreements CHAPTER 82. UNITED KINGDOM I. OVERVIEWhttp://www.pbookshop.com § 82:1 The basics § 82:2 Background § 82:3 Economy overview § 82:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 82:5 What is a mark and which marks may be registered? § 82:6 —International registrations § 82:7 —Collective marks § 82:8 —Certication marks § 82:9 —Defensive marks § 82:10 What cannot be registered—Marks which are not registrable in view of relative grounds § 82:11 —Marks which are not registrable in view of inherent grounds ccxix K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 82:12 Who can register?

III. TRADE MARK REGISTER § 82:13 Where is the trade mark registered and what does it contain: § 82:14 Exclusive use rights § 82:15 Enforcement

IV. INITIAL REGISTRATION § 82:16 Search § 82:17 Application § 82:18 Registry review § 82:19 Amendment of a trade mark application § 82:20 Opposition § 82:21 Registration/duration/renewal § 82:22 Timings and ocial fees

V. APPLICATION DOCUMENTS § 82:23 Application form § 82:24 Power of attorney § 82:25 Certied copy § 82:26 Fees § 82:27 Documents—Tm3 application to register a trade mark § 82:28 —Tm7 notice of opposition and statement of grounds § 82:29 —Tm21 change of proprietor's name or address or other change to an application § 82:30 —Tm11 renewal of trademark registration

VI. POST REGISTRATION § 82:31 Renewal http://www.pbookshop.com § 82:32 Amendment of a trade mark registration § 82:33 Removal of trade marks for non-use § 82:34 Removal for other reasons § 82:35 Acquiescence § 82:36 Infringement § 82:37 Relief § 82:38 Groundless threats of infringement § 82:39 Passing o § 82:40 Assignments § 82:41 Licencing

VII. RESOURCES § 82:42 In general ccxx Table of Contents

CHAPTER 83. UNITED STATES

I. OVERVIEW § 83:1 The basics § 83:2 Policies and trends—Trade and regulatory climate § 83:3 —Why register locally? § 83:4 —The future

II. REGISTRATION REQUIREMENTS § 83:5 What is a mark? § 83:6 Which marks may be registered?—Trademark (for goods) § 83:7 —Service mark § 83:8 —Certication mark § 83:9 —Collective mark § 83:10 —Colored marks § 83:11 What cannot be registered? § 83:12 —Marks that are “immoral, deceptive or scandalous” § 83:13 —Marks that are “disparaging” or that “falsely suggest a connection” § 83:14 —Marks that suggest a false geographical indication for wine or spirits § 83:15 —Marks that consist of ags, coats of arms or other insignia § 83:16 —Marks that are names, portraits or signatures of living individuals (or deceased presidents) § 83:17 —Marks likely “to cause confusion, or to cause mistake, or to deceive” § 83:18 —Marks that are “merely descriptive” or “deceptively misdescriptive” § 83:19 —“Primarily geographically descriptive”/“Primarily geographically deceptively misdescriptive” marks § 83:20 —Marks thathttp://www.pbookshop.com are “primarily merely” a surname § 83:21 —Congurations of products or containers that, as a whole, are functional matter which is incapable of functioning as a mark under §§ 1, 2 and 45 of the Trademark Act § 83:22 —“Generic” marks § 83:23 Who can register?

III. TRADEMARK REGISTER § 83:24 Where is the trademark registered?—United States Patent and Trademark Oce § 83:25 —Filing methods § 83:26 —Registers § 83:27 —Single v. multi-class applications § 83:28 —Filing bases § 83:29 —Exclusive use rights ccxxi K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 83:30 —Constructive use § 83:31 —Incontestability § 83:32 —Marking § 83:33 —Remedies; infringement; enforcement

IV. INITIAL REGISTRATION § 83:34 Procedural timeline—Search and advice § 83:35 —Application § 83:36 —Filing receipt/serial number § 83:37 —Initial examination § 83:38 —Response § 83:39 —Reexamination § 83:40 —Publication § 83:41 —Post-publication/registration

V. REGISTRATION FORMS § 83:42 In general § 83:43 Designation of domestic representative § 83:44 Power of attorney

VI. POST-REGISTRATION § 83:45 Maintenance and renewal of registration—Maintenance § 83:46 —Duration of protection § 83:47 —Renewal before expiration § 83:48 —Renewal after expiration § 83:49 —Reinstatement § 83:50 Alteration or modication—Correction of mistake in registration § 83:51 —Amendment to mark § 83:52 —Amendment of registration, other than amendment of mark § 83:53 Cancellation § 83:54 Assignmentshttp://www.pbookshop.com § 83:55 Replacement § 83:56 Recordation form cover sheet

VII. RESOURCES § 83:57 In general CHAPTER 84. VIETNAM

I. OVERVIEW § 84:1 The basics § 84:2 Policies and trends—Trade and regulatory climate § 84:3 —Why register locally? § 84:4 —The future ccxxii Table of Contents

§ 84:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 84:6 What is a mark? § 84:7 Which marks may be registered?—Trademark for goods § 84:8 —Service mark § 84:9 — —Associated trademark § 84:10 — —Combined trademark § 84:11 — —Joint marks (Series of Trademarks) § 84:12 — —Collective marks § 84:13 — —Defensive trademark § 84:14 — —Colored trademark § 84:15 What cannot be registered? § 84:16 —Identical marks § 84:17 —Deceptively or confusingly similar marks § 84:18 —Opposed mark § 84:19 —Marks with unauthorized content § 84:20 —Nominative or descriptive marks § 84:21 —Marks without distinctive characteristics § 84:22 What Cannot Be Registered?—Marks with Prohibited Matters § 84:23 Who can register?—Proprietor or user § 84:24 —Priority registrant § 84:25 —Authorized agent

III. TRADEMARK REGISTER § 84:26 Where is the trademark registered?—Trademark register § 84:27 —National registry § 84:28 —Validity of the mark § 84:29 —Enforcement § 84:30 Registration—Requirement of distinctiveness http://www.pbookshop.com IV. INITIAL REGISTRATION § 84:31 Procedural timeline—Application § 84:32 —Review § 84:33 —Registration

V. REGISTRATION FORMS § 84:34 Documents § 84:35 Initial registration documents—Authorization of agent (power of attorney) § 84:36 —Application for registration of trademark

VI. POST-REGISTRATION § 84:37 Renewal of registration—Duration of protection ccxxiii K 2011 Thomson Reuters/West, 12/2011 Trademark Practice & Forms

§ 84:38 —Renewal § 84:39 —Suspension for failure to renew § 84:40 —Restoration § 84:41 Alteration or rectication—Rectication dened § 84:42 —Suspension § 84:43 —Cancellation § 84:44 Assignments—Right to assign § 84:45 —Deed of assignment § 84:46 —Recordation of assignment § 84:47 —Suspension or invalidation § 84:48 Licensees or registered users—Right to grant use § 84:49 —Recordation § 84:50 —Rights of licensee § 84:51 —Required information § 84:52 —Necessary documents § 84:53 Post-Registration documents—Application for extension of validity of certicate of registration of mark § 84:54 Deed of Assignment—Deed of assignment

VII. RESOURCES § 84:55 In general

http://www.pbookshop.com

ccxxiv TRADEMARK PRACTICE & FORMS

Stephan Kinsella Teresa C. Tucker Co-Editors

Volume 1

http://www.pbookshop.com

http://www.pbookshop.com Introduction

K 2012 Thomson Reuters/West, 4/2012 iii Trademark Practice & Forms

K 2012 Thomson Reuters/West, 4/2012 v Trademark Practice & Forms

Resources This section includes links and contact information for government agencies, publications, and web sites that oer information and assistance on trademarks for a particular country.

http://www.pbookshop.com

K 2012 Thomson Reuters/West, 4/2012 vii http://www.pbookshop.com The Conventions

http://www.pbookshop.com

K 2012 Thomson Reuters/West, 4/2012 ix http://www.pbookshop.com About the Editors

Teresa C. Tucker of Grossman Tucker Perreault & Peger, PLLC in Manchester, New Hampshire, focuses on trademark and copyright matters and counsels businesses and entrepreneurs in selecting, clear- ing, and protecting new trademarks as well as in defending and as- serting their trademarks and copyrights in conict situations. Terry received her B.S.http://www.pbookshop.com in Marketing/Management from Barry University in 1977, and her J.D. from Franklin Pierce Law Center in 1993. She is a member of the New Hampshire Bar and is admitted to practice in the New Hampshire Federal District Court, the Court of Appeals for First Circuit, and the Court of Appeals for the Federal Circuit. She is an adjunct professor of law at UNH School of Law where she has taught Trademark Registration Practice. Terry has lectured on the subject of trademarks and copyrights and is the author of several published articles directed toward both businesses and the general legal profession.

K 2012 Thomson Reuters/West, 4/2012 xi http://www.pbookshop.com Contributor Directory

SPECIAL TOPIC CHAPTERS

International Trademark Protection

K 2012 Thomson Reuters/West, 4/2012 xiii Trademark Practice & Forms

Trademark Law and the Internet

Jennifer L. Fessler, Esq. Tel: 603-668-6560 Grossman Tucker Perreault & Fax: 603-668-2970 Peger E-mail: [email protected] 55 South Commercial Street Web: www.gtpp.com Manchester, NH 03101

Protecting Trademarks Worldwide: International Trademark Filing Strategies

xiv Contributor Directory

COUNTRY CHAPTERS

Algeria

Dahmène Touchent manages the Algerian legal website LexAlgeria www.multimania. com/lexalgeria. He received his Diplôme d'études supérieures fromhttp://www.pbookshop.com the Financial National Institute, Algiers, his master of laws degree from the Paris XIII University, and took the legal higher studies in export law program from Paris V University. He teaches law to rst-year and upper-class students at Claude Bernard institute (Paris), University of Paris XIII and University of Paris XII. He has written articles on the legal systems of Algeria, Morocco, and Tunisia, and articles on a variety of topics including Algerian public law and French labour law.

Argentina

Juan M. Aulmann Tel. (54 11) 4114-1100 Obligado & Cia. Fax (54 11) 4311-5675 Paraguay 610 E-mail: [email protected]

K 2012 Thomson Reuters/West, 4/2012 xv Trademark Practice & Forms

C1057AAH—Buenos Aires www.obligado.com Argentina

Armenia

Taras Kulbaba Tel: +32 2 688 33 15 PETOSˇEVIC Fax: +32 2 688 33 16 6 Raymond Hyelaan E-mail: 3090 Overijse [email protected] BELGIUM www.petosevic.com

Mr. Taras Kulbaba is an associate in the PETOSˇEVIC Brussels oce. His duties includehttp://www.pbookshop.com prosecution and enforcement of trademarks and industrial designs. He is a contributor for the International Trademark Association’s Trademark Reporter, for which he prepared trademark case summaries of relevant and recent trademark decisions in Ukraine. Taras can be reached at [email protected] With over 80 people in 14 oces, PETOSˇEVIC provides a full range of intellectual property services in Eastern Europe, including Albania, Bosnia, Bulgaria, Romania, Serbia, Montenegro, Kosovo, Slovenia, Croatia, Macedonia and Ukraine. The rm also has Client Service Of- ces in Belgium and Luxembourg and a Liaison Oce in New York. PETOSˇEVIC’s practice includes: creating strategies for protecting, managing and enforcing IP portfolios; conducting trademark and patent searches; trademark, patent, copyright and other IP litigation; assignments, licensing and other IP agreements; anti-counterfeiting and anti-piracy enforcement; unfair competition, false advertising and xvi Contributor Directory trade dress cases; domain name registration and renewals; monitor- ing trademark rights on the Internet; research and investigation and translation of intellectual property documents.

Australia

Colin Oberin Tel.: 61 3 9613 8880 Allens Arthur Robinson Fax: 61 3 9613 8779 530 Collins Street E-mail: [email protected] Melbourne VIC 3000 Web: www.aar.com.au Australia

Colin Oberin is a Consultant (of Counsel) and a former partner of Al- lens Arthur Robinson Patent & Trade Marks Attorneys. He has more than 35 years experience in Intellectual Property. Colin is a registered patent attorney in Australia and New Zealand, a registered trade marks attorney in Australia, and a Chartered Chemist and has acted for a variety of Australian and international clients and associates predominantly in the areas of trademarks, chemical patents, general mechanical patents and industrial designs. Colin is a former Councilor and member of the Trade Marks Commit- tee of the Asian Patent Attorneys Association (APAA), as well as a long standing former member of the Trade Marks Committee of the Institute of Patent and Trade. Mark Attorneys of Australia (IPTA). He is an Emeritus member of the International Federation of Industrial Property Attorneys (FICPI), a Fellow of the Institute of Patent and Trade Mark Attorneys of Australia (FIPTA) and has been a regular attendee at meetings of the International Trademark Association (INTA). Allens Arthur Robinson is one of Australia’s leading law rms and has a particularlyhttp://www.pbookshop.com strong IP presence having been named Australian IP Firm of the year 2009 (Managing Intellectual Property); Leading Australian IP Firm 2009 (Chambers Global: the World’s Leading Lawyers); Leading Australian Patent Litigation Firm, Trademark Lit- igation Firm and Copyright Firm 2009 (Managing Intellectual Prop- erty) Leading Australian IP Firm 2008 (Asia Pacic Legal 500) and Leading Australian IP Firm 2008 (PLC Which Lawyer? Yearbook).

Austria

Katrin Hanschitz Tel: +43 1 53 53 721 Robert König Fax: +43 1 533 15 15 ORTNER PÖCH FORAMITTI E-mail: o[email protected] Rechtsanwälte GmbH Web: www.opf.at

K 2012 Thomson Reuters/West, 4/2012 xvii Trademark Practice & Forms

Strauchgasse 1-3 1010 Vienna Austria

Katrin Hanschitz is a partner of ORTNER PÖCH FORAMITTI Rechtsanwälte GmbH in Vienna, Austria and has experience in a broad range of intellectual property and unfair competition issues, including acquisition and enforcement of trademarks, licensing and litigation practice. She has co-authored a number of articles with the European Intellectual Property Review. Robert König is an associate of ORTNER PÖCH FORAMITTI Rechtsanwälte GmbH. His practice includes trademark registration and enforcement as well as counseling on various intellectual property issues, with a special focus on product piracy and prosecution. ORTNER PÖCH FORAMITTI Rechtsanwälte GmbH is a medium-size internationally oriented independent law rm specializing in nance transactions (in their broadest sense), corporate law, intellectual property law, cartel and unfair competition law, the implementation of EU law in Austria as well as state aid and procurement law. In the area of intellectual property law, the rm’s practice focuses on trademark and copyright law, media and entertainment law, IT and communications law, unfair competition law and e-commerce. Typical clients in this eld are large Austrian and international businesses as well as international advertising and marketing companies. Due to its specialization and its knowledge of the commercial and technical background of the clients’ business, the rm is able to assist its clients in a most ecient and skillful way, be it the protection of clients’ intellectual property rights, comprehensive advice in all areas for the formation of a company in Austria or the structuring of a complex cross-border transaction. A number of partners act as arbitrators under ICC rules,http://www.pbookshop.com the rules of the International Arbitral Centre of the Austrian Federal Economic Chamber and in ad-hoc arbitrations. Bahrain

Abbas Al Radhi Tel: + 973 530 077 Partner Fax: + 973 530 088 Gulf Trade Mark Services E-mail: [email protected] P.O. Box 787, Manama Web: www.gtmsbahrain.com Kingdom of Bahrain

Gulf Trade Mark Services, an associate rm of BDO Jawad Habib, specializes in the registration of Trade Marks, Patents, Designs and related services. Our main oce is situated in Bahrain, where we xviii Contributor Directory have centralized our Intellectual Property operations. In addition to Bahrain, through joint venture agreements in each host country, we are able to deal with all Intellectual Property matters in Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. Abbas Al Radhi received an MBA in Financing and Business Law from the University of Maine in the USA. He has an MSB in Account- ing from Husson College in Maine, USA, and a BSc. in Accounting from the University of Kuwait. He is a CPA and a CBM25 with 25 years of experience.

Benelux

Antonietta Arcuri is a qualied Benelux and European Trademark and Design Attorney. Antonietta is currently manager of the Trademark and Design Department of Kirkpatrick (Belgium). With 15 years of experience in all aspects of trademark and design law, she manages trademark portfolios for some major Belgian companies as well as for clients from all over the world. Her practice includes advise in the elds of trademark protection, trademark searching, strategic trademark managementhttp://www.pbookshop.com and trademark infringement. Antonietta is also a committee member of the INTA (Trademark Administrators Committee) and of the BMM (Benelux Association for trademark attorneys). Founded in Brussels, Belgium in 1852, Kirkpatrick is one of the oldest intellectual property rms in Europe. The rm has gradually extended the scope of its activities to oer a range of tailor-made services covering all intellectual property elds such as patents, supple- mentary protection certicates, trademarks, designs, copyrights, domain names, licences and technical and legal translation. Its professional team consists of 40 people of which half are Patent and Trademark attorneys authorised to act before the Belgian and Dutch Industrial Property Oces, the Benelux Trademark Bureau, the European Patent Oce, the Oce for Harmonization in the Internal Market and the World Intellectual Property Organization, on behalf

K 2012 Thomson Reuters/West, 4/2012 xix Trademark Practice & Forms of their Belgian and foreign clients, SMEs or multinationals. The rm also operates in other regions of the world through a network of associates who are carefully chosen and controlled. In 2004, Kirkpatrick became the rst Belgian Intellectual Property rm to be awarded ISO 9001:2000.

Bermuda

Donna Pilgrim graduated from the University of Essex in 1987. She attended Guildford Law School and was admitted to practice as a so- licitor in England & Wales in 1991, Hong Kong in 1992 and as an attorney in Bermuda in 2000. Donna obtained her Masters in Law in Intellectual Property from Hong Kong University in 1994. Before joining Conyers Dill & Pearman’s Intellectual Property group in 1997, Donna was an associate in the intellectual property departments of Robin Bridge & John Liu and later Deacons, Hong Kong, concentrat- ing primarily on High Court enforcement actions. Her practice now involves all aspects of the protection and enforcement of intellectual property, including prosecuting trademark applications, opposition and cancellation proceedings conducted in the Registry and in the Courts, and licensing. Donna has contributed articles to EIPR, and wrote the Hong Kong chapter for International Intellectual Property Law Global Jurisdictions published by Wiley and the Bermuda chapter for World Intellectual Property Rights & Remedies published by Oceana for thehttp://www.pbookshop.com Center for International Legal Studies. Conyers Dill & Pearman is the largest international oshore law rm. It was founded in 1928 with the merger of two practices, and now has a complement of over 600 sta, including more than 150 lawyers. It is headquartered in Bermuda with operations in Anguilla, British Virgin Islands, Cayman Islands, Dubai, Hong Kong, London, Mauritius, Moscow, Sao Paulo and Singapore. The rm is a multidiscipline practice, advising on all aspects of company/commercial law, shipping, real property, litigation, private client and trust law in addition to intellectual property.

Brazil

Wilson Pinheiro Jabur Tel.: 55 (11) 3146 2411 Salusse Marangoni Advogados Fax: 55 (11) 3146 2420 xx Contributor Directory

Av. Paulista, 1842, Torre Norte, Web: 12 andar www.salussemarangoni.com.br 01310-923 São Paulo SP, Brazil

Wilson Pinheiro Jabur is a lawyer and a Brazilian Industrial Prop- erty Agent. He graduated from the University of Sao Paulo, where he also received his Master´s degree in law, and is currently pursuing his Doctorate in Commercial Law, having undergone post-graduate courses at the Franklin Pierce Law Center (UNH-USA) and Getulio Vargas Foundation (FGV-BR). He is a partner of Salusse Marangoni Advogados heading the rm’s Intellectual Property Practice. In addition to that, he is Coordinator and professor of the specialization course on intellectual property at GVlaw (FGV/EDESP/GVLaw) as well as an Adjunct Professor on specialization courses on New Technology Law and IP at prestigious institutions such as EPD (Escola Paulista de Direito) and IICS (Instituto Internactional de Ciências Sociais). E Member of the Brazilian Intellectual Property Association (ABPI) and Associate Founder of CEAE - Center for the Study of Law Firm Administration. E Member of the Research Group on Intellectual Property and Technology Transfer of the Federal University of Viçosa. E Associate scholar of the Brazilian Intellectual Property Institute. E Director of Industrial Property of the Brazilian Anti- Counterfeiting Association (ABCF) since 2003. He was Managing Editor from 2005-2007 of the São Paulo Association of Intellectual Property (ASPI). Salusse Marangoni Advogados was founded in 1992 and is dedicated to providing services with exibility, quality and achievement of results. The rm has branches in Sao Paulo and Rio de Janeiro as wellhttp://www.pbookshop.com as a long-established network of corresponding lawrms both in Brazil and abroad. Our team is composed of highly qualied, multi-lingual lawyers who are constantly submitted to improvement programs in order to develop and deliver creative and eective solutions to meet the legal needs of clients, be they of greater or lesser complexity. Throughout its history, the rm has earned high recognition by the business community for its ability to perceive the needs of its clients and provide objective solutions swiftly and conclusively. In the biographical listing under the heading “Chile” replace the telephone number listed with: Tel.: (562) 4387000

Brunei Darussalam

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Dr. Colin Ong Legal Services Tel: (673)(02) 420913 Advocates & Solicitors Fax: (673)(02) 420911 Suites 2-2 to 2-5, E-mail: [email protected]; Gadong Properties Centre [email protected] Km 3-6, Jalan Gadong Web: www.dcls.intranets.com Bandar Seri Begawan BE 4119 Negara Brunei Darussalam

Dr. Colin Ong Legal Services is regarded the leading civil and commercial Brunei law rm in all independent international legal publications including An International Who’s Who of Banking Lawyers; An International Who’s Who of Commercial Litigators; Chambers & Partners Global; Asia Law Proles; IFLR 100 and Asia-Pacic Legal 500. A member of the Firm has also been seconded as Principal Legal Consultant to the ASEAN Centre for Energy for the ASEAN (Jakarta). The rm is aliated to the London Barristers Chambers of Essex Court Chambers (www. essexcourt-chambers.law.co.uk); 3 Verulam Buildings (www.3verulam.co.uk) and Dr. Colin Ong is a foreign consultant to several Singapore law rms including that of Khattar Wong & Partners (www.khattarwong.com). The law rm’s main focus is on banking, insurance, construction law, cross border litigation, arbitration, company law, conict of laws, oil and gas, project nance; business reconstructions and all aspects of Intellectual Property Law including enforcement work as well as trademark oppositions. It has both the experience and knowledge to provide expert legal advice in the areas of ling trademarks, patents, copyright, IP infringement litigation, matters dealing with unfair competition and other related matters. The rm’s multilingual lawyers also conduct negotiation and drafting of licensing, distribution and franchise agreements. The rm’s clients range fromhttp://www.pbookshop.com small trading companies to large multinational corporations and have been involved in major trademark work. The rm is a member of ASEAN Intellectual Property Law Associa- tion and members of the rm are also members of the multinational ASEAN Law Association. The rm strives hard to provide services that are tailored to each client’s particular needs and also in keeping legal costs to a minimum.

Republic of Bulgaria

Iliana Panayotova E-mail: Senior Associate [email protected] ‘‘Law Firm Georgieva panayotova[email protected] and Georgiev’’ Web: www.legaideas.eu xxii Contributor Directory

1A ‘‘Kaimakchalan’’ Str., . 3, apt. 14 Soa 1505, Bulgaria

Iliana Panayotova is a Senior Associate in Law Firm Georgieva and Georgiev. She has graduated at Soa University with a Master Degree in Law. At the law rm she is specializing mainly in the area of Intel- lectual Property and Competition Law since the major practicing area of Law rm Georgieva nad Georgiev is namely with a particular focus on the general protection of intellectual property rights. Currently Iliana is doing her second Master’s Degree in ‘‘Diplomacy and International Relations’’ at New Bulgarian University, Soa. Her professional experience includes the completion of many courses such as: ‘‘General Course on Intellectual Property’’, organized by WIPO; ‘‘Non-governmental Organizations’’ and ‘‘Business Intelligence and Marketing Strategy’’, organized by British Training Solutions. Iliana also participated actively in the annual meeting organized by the International Trademark association (INTA) in Boston, USA; the seminar of ASIPI ‘‘Trade Mark Protection in Europe and America: Coincidences and discrepancies’’ in Barcelona, Spain and INTA Europe Trademark Workshop in Brussels. Law Firm Georgieva and Georgiev is a permanent member of INTA and participates in dierent events organized by various associations in the IP eld. The company also provides legal services in the following areas: competition law, commercial law, foreign investments, employment law, procedural representation, executive procedings, alternative methods for resolving disputed, legal representation and marriage agreements. Law Firm Georgieva and Georgiev is created to provide high-quality legal services in the Bulgarian market, protecting the rights andhttp://www.pbookshop.com interests of Bulgarian and foreign clients here and aiming for the incorporation and development of a successful business within the country.

Cambodia

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Darani Vachanavuttivong is a Co-Managing Partner of Tilleke & Gib- bins International Ltd. in addition to her position as the Managing Director of the rm’s award-winning Intellectual Property Department. Peers and clients around the world have consistently voted the rm’s intellectual property practice as the top in Thailand, including the Thailand IP Firm of the Year Award from Asialaw (2004 to 2007), Managing Intellectual Property (2007 and 2008), and Asian- Counsel (2007). Ms. Vachanavuttivong herself has been consistently identied as a leading lawyer in the area of intellectual property. Mrs. Vachanavuttivong graduated from Thammasat University in Thailand with a Bachelor’s Degree in Business Administration (Ac- counting) in 1985, a Higher Diploma in Auditing in 1988, and a Master of Science in Accounting in 1991. She later pursued law studies and obtained her law degree in 1999 from Ramkhamhaeng University. In 2002, she successfully completed the Program of Instruction for Lawyers and Negotiation Workshop at Harvard Law School. She passed the examination for a Thai lawyer’s licence in 2004. In addition, she completed the Patent Agent Training Course conducted by the Department of Intellectual Property and is a certied patent agent. She also received a certicate for completing the SEAD Course on Drafting Patent Specications conducted by the Federation Internationale des Conseils en Propriete Industrielle. Since 1990, Mrs. Vachanavuttivong has been responsible for Tilleke & Gibbins’ trade mark registration practice. In 2001, she became the managing director of the rm’s intellectual property registration operations, assuming responsibility also for the rm’s patent registration practice and the intellectual property registration operations for Vietnam, Cambodia, Laos and Myanmar. In 2005, she was given charge of the rm’s entire intellectual property practice. Mrs. Vachanavuttivong is currently the President of the Intellectual Property Association of Thailand in addition to being a Director of the Association. Shehttp://www.pbookshop.com is a frequent speaker and has authored numerous articles on intellectual property topics. Canada

Canadian Oces: Toronto, Ontario; Montreal, Quebec; Ottawa, xxiv Contributor Directory

Ontario; Calgary, Alberta; and Vancouver, British Columbia. Foreign Oces: New York, New York; Chicago, Illinois; London, England; Beijing and Shanghai (associated), China; Bahrain; Al- Khobar, Saudi Arabia. Sheldon Burshtein is a Partner of Blake, Cassels & Graydon LLP. He practises in the Toronto oce as a member of the Intellectual Prop- erty, Information Technology, Life Sciences, Sports & Entertainment, Franchising, and Alternative Dispute Resolution Groups. Qualications. Sheldon received his B. (Civ.) Eng. from McGill University and is a registered professional engineer in the province of Ontario. He also has two law degrees, his civil law B.C.L. and his common law LL.B., from McGill University. Sheldon is a member of The Law Society of Upper Canada and has been certied by The Law Society of Upper Canada (Province of Ontario) as a specialist in intellectual property (patent, trade-mark and copyright) law. He is registered as a patent agent and as a trade-mark agent in Canada. He is also registered to practise before the United States Patent and Trademark Oce on behalf of Canadian applicants. Sheldon is a certied licensing professional. Practice. Sheldon’s work includes the clearance, prosecution, acquisition, enforcement and exploitation of patents, trade-marks, copyright, industrial designs and other forms of intellectual property. His practice emphasizes commercial transactions involving intellectual property and information technology, such as licensing and other transactions involving pharmaceuticals and life sciences, electronic commerce, and other technologies, as well as franchising. He is signicantly involved in counselling on intellectual property matters. Leader. Sheldon is a leader of the Intellectual Property and Technol- ogy Bar. Law Business Research’s The International Who’s Who of Pa- tent Lawyers identied him as ‘‘the most frequently named Canadian’’ patent lawyer andhttp://www.pbookshop.comThe International Who’s Who of Trademark Lawyers consistently ranks Sheldon among the 10 top trade-mark lawyers in the world. Managing Intellectual Property has referred to him as ‘‘the foremost copyright expert in Canada.’’ PLC Cross-border Intellectual Property Handbook has selected him as the leading commercial intellectual property lawyer in Canada. The International Who’s Who of Business Lawyers refers to him as an ‘‘excellent attorney’’ and a ‘‘leader in his eld.’’ Canadian Recognition. Sheldon has been continuously listed in The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Can- ada from inception. He has been continuously rated among the most frequently recommended lawyers for ‘‘Intellectual Property’’ in The Canadian Legal Lexpert Directory from inception, and is also recognized in the ‘‘Computer and Information Technology’’ and ‘‘Technology’’ categories. He has been continuously listed in The Best

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Lawyers in Canada in the ‘‘Intellectual Property’’ and ‘‘Technology’’ categories since inception. Sheldon was named in the Who’s Who Legal: Canada 2010 special report for both ‘‘Patents’’ and ‘‘Trademarks.’’ He is also referenced in the Canadian Who’s Who.He has received a Special Recognition of Achievement Award from the Intellectual Property Institute of Canada. International Recognition. Sheldon has been continuously ranked for ‘‘Intellectual Property’’ by Chambers Global: The World’s Leading Lawyers for Business since inception. He has been named in Law Business Research’s The International Who’s Who of Business Lawyers and in both its ‘‘Patent’’ and ‘‘Trademark’’ categories. He has been honoured as an ‘‘Intellectual Property Luminary’’ by the publishers of Patent World, Trademark World and Copyright World. Sheldon has been selected by Mondaq as one of the ‘‘World’s Leading Intellectual Property Lawyers.’’ He was named an ‘‘Expert’s Expert’’ by World Trademark Review. He has been ranked as one of the leading ‘‘Intel- lectual Property’’ experts in the PLC Cross-border Intellectual Prop- erty Handbook since inception. Sheldon has been referenced in the European Counsel Life Sciences Specialist 500 of the ‘‘Top-Ranking Life Sciences Lawyers Worldwide.’’ He has been continuously named by Practical Law Company among the leading ‘‘Life Sciences Lawyers’’ since inception. He has been ranked by Practical Law Company as one of the leading ‘‘E-Commerce and Information Technology Lawyers.’’ He has been named in the ‘‘Global Counsel Lawyer Super Leagues.’’ Sheldon has been selected by Practical Law Company as one of the world’s leading intellectual property lawyers. He is listed in PLC Which Lawyer? in Canada for multiple categories. Sheldon is ranked in the Intellectual Asset Management Licensing 250 as one of ‘‘The World’s Leading Patent and Technology Licensing Lawyers.’’ Trade-marks. Sheldon represents numerous clients in brand counselling and the protection, licensing and enforcement of trade-mark, trade dress and tradehttp://www.pbookshop.com name rights, as well as in domain name issues. He has authored a multiple-volume book and coauthored two other books on trade-mark law. He has been consistently chosen one of the ‘‘World’s Leading Trademark Law Experts’’ by Managing Intellectual Property since inception. Sheldon was named an ‘‘Experts’ Expert’’ by World Trademark Review. He has been selected one of the ‘‘World’s Top 50 Trade Mark Law Practitioners’’ and the ‘‘Worldwide Leading 25 Trade-mark Experts’’ by Managing Intellectual Property. He has consistently been selected as one of the ‘‘Most Highly Regarded Individuals Global - Trademarks’’ in The International Who’s Who of Trade Mark Lawyers published by Law Business Research. He has consistently been selected one of the world’s top 10 trade-mark lawyers by that publication. Domain Names. Sheldon advises numerous clients on domain name strategy, transactions and proceedings. He led a Blakes team in the xxvi Contributor Directory structuring and set up of the ‘‘.ca’’ domain name registry. Sheldon has authored a multiple-volume book on Internet trademark and domain name law. He has been ranked by Practical Law Company as one of the leading ‘‘E-Commerce and Information Technology Lawyers.’’ Sheldon has been named in the PLC Cross-border Information and E-Commerce Handbook and was selected in PLC Which Lawyer? Yearbook in the category of ‘‘IT and E-commerce.’’ Patents. Sheldon acts for numerous businesses in various industries in the management, prosecution, licensing and enforcement of patent rights. He has authored a book on Canadian patent law. He has been consistently chosen one of the ‘‘World’s Leading Patent Experts’’ by Managing Intellectual Property since inception. Sheldon has been consistently recognized in The International Who’s Who of Patent Lawyers by Law Business Research since inception, and has been identied as the most frequently named Canadian. Sheldon received the Marie F. Morency Memorial Prize awarded by the Intellectual Property Institute of Canada for the highest national standing in the patent agents drafting examination. Copyright. Sheldon has represented major newspaper, magazine and book publishers, major recording companies, a major television network and others on copyright protection, transaction and enforcement issues. He has co-authored a book on Canadian copyright law and has also been involved in drafting sections of the Copyright Act. He has been consistently selected in the Managing Intellectual Prop- erty surveys as one of the ‘‘World’s Leading Copyright Law Experts’’ since the rst survey to date. He was referred to as ‘‘the foremost copyright expert in Canada.’’ Licensing, Technology Transfer, Franchising and Transactions. Sheldon was among the rst group of individuals to be designated a ‘‘certied licensing professional.’’ He has acted in the licensing of various types of intellectual properties in virtually every industry, and representshttp://www.pbookshop.com major clients in connection with technology and other licensing, franchising and merchandising programs. Sheldon has been involved in transactions involving some of the most valuable Canadian and international intellectual properties. He has been selected by PLC Cross-border Intellectual Property Handbook as the leading commercial intellectual property lawyer in Canada and has been selected in Intellectual Asset Management’s ‘‘Licensing 250 - The World’s Leading Patent and Technology Licensing Lawyers.’’ He has authored chapters in several books on licensing and on intellectual property and information technology in commercial transactions. Sheldon authors a monthly column on ‘‘Licensing Fundamentals’’ in World Intellectual Property Report. Sheldon has received an Achieve- ment Award from the Licensing Executives Society USA/Canada. Pharmaceuticals and Life Sciences. Sheldon acts for a number of major international and domestic pharmaceutical companies and has

K 2012 Thomson Reuters/West, 4/2012 xxvii Trademark Practice & Forms served as a director of one of Canada’s largest pharmaceutical companies. He has been referenced in the European Counsel Life Sci- ences Specialist 500 of the ‘‘Top-Ranking Life Sciences Lawyers Worldwide.’’ He has been ranked by Practical Law Company among the leading ‘‘Life Sciences Lawyers’’ since inception. Sheldon has been selected in the PLC Global Counsel Life Sciences Handbook and the PLC Cross-border Life Sciences Handbook since inception. He is recommended by PLC Which Lawyer? Yearbook in the category of ‘‘Life Sciences-Intellectual Property.’’ He has written a regular column in Pharmaceuticals Canada. Internet, E-commerce, Information Technology and Communications. Sheldon acts for a number of leading Internet e-commerce, information and technology based companies and advises other businesses on those issues, including social media. For example, he led a Blakes team in the structuring and set up of the ‘‘.ca’’ domain name registry. Sheldon has authored a multiple-volume book on Internet trademark and domain name law. He has been selected in Law Business Research’s The International Who’s Who of Internet, e-Commerce and Data Protection Lawyers. He has been ranked by Practical Law Company as one of the leading ‘‘E-Commerce and Infor- mation Technology Lawyers’’. Sheldon was selected by Practical Law Company as an ‘‘Expert in Communications Law.’’ He has been named in the PLC Cross-Border Communications Handbook, the PLC Com- munications Industry Report and the PLC Cross-Border Information Technology and E-Commerce Handbook. He was selected in the PLC Which Lawyer? in the category of ‘‘IT and E-commerce’’. He has also been chosen one of the ‘‘Personalities in Canadian Technology’’. Sports and Entertainment. Sheldon is active on behalf of numerous clients in the sports and entertainment industry. For example, he has acted for newspaper and magazine publishers, a television network and major recording companies. Sheldon has acted for most of the major North American professional sports leagues, as well as a leading sanctioninghttp://www.pbookshop.com body. Alternative Dispute Resolution. Sheldon serves as an arbitrator and as a mediator. He is a member of the panel of IP Neutrals of Can- ada and the Canadian Panel of Neutrals for the International Trademark Association. He is also a member of the panel of the Intel- lectual Property Division of National Arbitration and Mediation and the panel of the Alternative Dispute Resolution Center. Sheldon has authored a book on domain name arbitration. Books and Articles. Sheldon is an author of several books on Cana- dian intellectual property law, such as The Corporate Counsel Guide to Intellectual Property Law (Canada Law Book), Patent Your Own Invention (International Self Counsel Press) and the multiple-volume The Law of Domain Names and Trade-marks on the Internet (Carswell). He has co-authored a book on international trade-mark xxviii Contributor Directory law and has contributed chapters to numerous domestic and international books on trade-marks, copyright, other intellectual property, licensing, merchandising, intellectual property in commercial transactions, intellectual property disputes, electronic commerce, as well as pharmaceuticals and biotechnology. Sheldon is the author of hundreds of articles and papers on intellectual property and technology topics. He has authored regular columns in various publications. He has also spoken often in these areas. Teaching. Sheldon lectures annually at the McGill University/ Intellectual Property Institute of Canada trade-mark course. He is a member of the faculty in the Osgoode Hall Law School e-commerce LL.M. program and has been a lecturer in the Osgoode Hall Intel- lectual Property LL.M. program and the Osgoode Hall Intensive Program in Business Law. Organizations. Sheldon is a member of many professional organizations in the legal, intellectual property and engineering elds and has chaired and sat on numerous committees in organizations such as the American Bar Association, the Canadian Bar Association, the Intel- lectual Property Institute of Canada, the International Association for the Protection of Industrial Property, the International Trademark Association and the Licensing Executives Society. He is a past chair of the Toronto Patent and Trademark Group.

Chile

Francisco J. Silva Tel: (562) 3720440 Silva & Cia. Fax: (562) 3720444 Hendaya 60, 4th Floor E-mail: [email protected] Santiago Web: www.silva.cl Chile http://www.pbookshop.com Francisco Javier Silva Dorado is a partner with Silva & Compañia in Santiago, Chile. He obtained his law degree (J.D.) from Catholic University of Chile. In 1993, he completed a Masters in International Law (LL.M.) with emphasis on International Business Law, at Washington College of Law, the American University, Washington, D.C. In 1994, he practiced at Baker & Hostetler in Washington D.C. At present, he chairs the International Department at Silva & Cia., rendering advice to national and multinational clients in the protection of their intellectual property. He is a member of the Chilean Intellectual Property Association (ACHIPI) and an active participating member of various international associations, including the Inter- American Industrial Property Association (ASIPI), the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA), and the European Communities Trademark

K 2012 Thomson Reuters/West, 4/2012 xxix Trademark Practice & Forms

Association (ECTA). Silva & Cia. practices exclusively in the area of Intellectual Property law. We advise clients on every aspect of IP law, including the following: Searching, ling, prosecution and enforcement of trademarks in Chile and worldwide. Searching, drafting, prosecution and enforcement of patent applications in the areas of biotechnology, pharmaceutical, chemistry (both organic and inorganic), electronic, electrical engineering, mechanical engineering, mining, mineral processing, metallurgy, and the like. Legal protection of utility models, and industrial designs. Copyright and Internet Law (domain name registration, domain name search and surveillance and all the services in connection with domain name dispute resolution procedures). Litigation in all these areas; franchising and licensing; antitrust Law; and unfair competition matters. Silva & Cia. and its lawyers are associated with many Intellectual Property organizations, such as the Chilean Bar Association, ACHIPI (Chilean Industrial Property As- sociation), INTA, AIPPI, FICPI, MARQUES, PTMG ASIPI, AIPLA, and ECTA.

China

Lehman, Lee & Xu,http://www.pbookshop.com one of the rst private law rms licensed in China in 1992, has grown to be one of the largest Chinese law rms, with of- ces in eight cities. Our International Practice Section provides a full range of services to foreign companies in China and Chinese companies doing business abroad. Our IP expertise is also extensive. The rm has an in-house patent agency, trademark agency, and investigative services division. Our lawyers help coordinate the Intel- lectual Property Rights Committee of the China Foreign Research- based Pharmaceutical Industry Association (FRPIA) as well as the China International Franchise Association (CIFA). We produce a China IP newsletter to keep our clients informed of the latest developments in Chinese IP law and practice. The rm is a member of the International Trademark Association (INTA), International Association for the Protection of Industrial Property (AIPPI), Asian Patent Attorneys Association (APAA), xxx Contributor Directory

National Association of Patent Practitioners (NAPP), the International Anti-Counterfeiting Coalition (IACC), the China Anti-Counterfeiting Committee (CACC), Quality Brands Protection Committee (QBPC, China), Computer Law Association (CLA), and Software and Informa- tion Industry Association (SIIA). The rm’s managing partner is Edward Eugene Lehman.

Colombia

Laura Michelsen Niño is a partner of Triana, Uribe & Michelsen, located in Bogotá D.C., Colombia, and directs the Firm’s Industrial Property Department. She handles trademark prosecution, trade slogan registrations, domain names, patent registrations, and all other industrial property matters. She also handles health registrations and its prosecution. She was formerly partner and director of the Industrial Property department of Vernot Abogados, 1993-1995. She practiced as associate and director of the Industrial Property Department in Figueroa, Sierra & Asociados from 1990 to 1993. She received her J.D. in 1993 from the School of Law at Universidad de Los Andes, and is author of the 1993 book Reseña de normas básicas y trámites en Colombia y en Venezuela relativos a la Propiedad Industrial sobre Signos Distintivos (Brief description of basic regulation and procedures in Colombia and Venezuela regarding the Industrial Propertyhttp://www.pbookshop.com of Distinctive Signs). Ms. Michelsen is member of several trademark associations such as the: Colombian Association of Industrial Property (ACPI), Interna- tional Trademark Association (INTA), International Anticounterfeit- ing Coalition (IACC), the Imaging Supplies Coalition (ISC), and the International Association for the Protection of Industrial Property (AIPPI). She is also a member of the list of Conciliators in Industrial and Intellectual Property; the list of secretaries of the arbitration tribunal of the Chamber of Commerce of Bogota and she is part of the Board of Directors of the Colombian Association of Industrial Prop- erty (ACPI). Mr. Andrés Medina Leiva is an associate of Triana, Uribe & Michelsen, in the Industrial Property Department. Mr. Medina drafts and prepares oppositions, administrative remedies to be led before the Trademark Oce and renders legal opinions and counseling over

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Trademark and Patent matters. He received his J.D. in 2001 from the school of law at Ponticia Universidad Javeriana, Bogotá.

Costa Rica

Adriana Porras-Elizondo is Senior Associate Attorney of Castro & Pal Asociados. Her expertise in intellectual property includes trademark, patent and copyrights ling and prosecution, and other related matters. She currently advises Castro & Pal Asociados Intellectual Property Department on all legal aspects of IP. She obtained her law degree (J.D.) from the University of Costa Rica. In 2005 she received a Masters of Law degree (LL.M.) with emphasis on intellectual property at the University of Houston Law Center, in the United States. She is a member of the Congress of Fellows of the Center for International Legal Studies, where she has contributed to publications. She is also a member of the Inter-American Association of Industrial Property (ASIPI) and the Costa Rican Association of Intellectual Prop- erty Professionals (APPICR). Castro & Pal Asociados is one of the few Intellectual Property rms in Costa Rica. Its practice includes ling, prosecuting and litigating patents, trademarks, copyrights and domain names, as well as advising and drafting agreements on IP matters, including trade secrets, licensing and acquisition of IP rights. The client base is composed of both foreign and national corporations. The rm has also advised the private sector onhttp://www.pbookshop.com intellectual property matters when dening a position on proposed new legislation or when negotiating free trade agreements.

Croatia

Dr. Alexander Cizek, LL.M. Tel: +43-1-531 78 1451 DLA Piper Weiss-Tessbach Fax: +43-1-533 52 52 Rechtsanwälte GmbH [email protected] Schottenring 14 www.dlapiper.com 1010 Vienna, AUSTRIA

Weiss-Tessbach Branch in the Tel: +385-1-4854 2 00 Republic of Croatia Fax: +385-1-4854 2 41 xxxii Contributor Directory

Frane Petrica 4 www.dlapiper.com HR-10000 Zagreb, CROATIA

Alexander Cizek studied law in Vienna and the U.S. and was admitted to practise in New York in 1996 and in Austria in 2000. He has been a Partner with DLA Piper Weiss-Tessbach since 2001 and heads the Intellectual Property and Technology practice group in the Vienna oce. Alexander specialises in all IP law areas including trademarks and deals with every aspect of trademark law, trade dress and design law, copyright law, software law, patent law and utility model law, transfer of technology and know-how, licensing law, etc. Alexander’s IP practice also covers legal matters of unfair competition and unfair trade practices and handles IP-related M&A transactions. He has substantial litigation experience both in court and before the Patent and Trademark Oces. Alexander is recommended in reputable publications such as Chambers and Legal 500 for his brand protection and anti-counterfeiting work. He has been ranked among the 250 ‘‘World’s Leading Patent & Technology Licensing Lawyers 2010’’ by the internationally well respected ‘‘IAM-magazine’’. DLA Piper Weiss-Tessbach Rechtsanwälte GmbH, organizacˇná zlozˇka is part of the global law rm DLA Piper. DLA Piper has more than 3,500 lawyers and provides a range of legal services around the world. Lawyers operating from oces in Asia, Europe, the Middle East and the United States provide high quality legal advice to clients in their local market and internationally. The vision of the rm is to be the leading global business law rm. DLA Piper draws on the knowledge of its locally and internationally trained lawyers advising on a broad range of matters including commercial, corporate, bankruptcy and restructuring, tax, nance, human resources, litigation, real estate, regulatory and legislative, technology, and media and communications in every majorhttp://www.pbookshop.com market around the world.

Cyprus

Nicholas Ktenas graduated with an LL.B from Sheeld University in 1997 and obtained an LL.M. in EU law from Nottingham University

K 2012 Thomson Reuters/West, 4/2012 xxxiii Trademark Practice & Forms in 1998. He joined Andreas Neocleous & Co in 2001 and was admitted as a partner in the rm in 2007. He specializes in intellectual property and his other areas of practice include company, competition, contract, employment, EU, and maritime law. He has litigation experience in commercial and employment matters. He participated as the local consultant representing Andreas Neocleous & Co in an international consortium which won the tender for the formulation of a national strategy and legal frame-work for an electronic commerce study for the Cypriot Planning Bureau. Mr. Ktenas has been an instructor in Business and Company Law at the Cyprus College and before joining Andreas Neocleous & Co he was head of the legal department of the Louis Cruise Lines group of companies in Cyprus. Eleana Spyris was born in Australia. She graduated in law from Shef- eld University in 2002 and was awarded an LL.M in International Law by Bristol University in 2005. She was admitted to the Cyprus Bar in 2006. Her main areas of practice are intellectual property law, competition law and corporate law. Andreas Neocleous & Co. was established in 1965. Since then it has developed a strong local presence as well as a substantial international practice. The rm provides a full range of legal services in Cyprus and abroad through its oces in Brussels, Budapest, Kiev, Moscow, Prague and Sevastopol. Its head oce is in Limassol and the rm is divided into departments specializing in major areas of law: admiralty and shipping, banking and nance, corporate and commercial, e-business, intellectual property, real estate, litigation and arbitration, tax law and international tax planning and European Union law.

Denmark

Mads Marstrand-Jorgensen Tel: +45 33 433100 Norsker & Co. Fax: +45 33 133838 Landemarket 10,http://www.pbookshop.com E-mail: [email protected] DK-1119 Copenhagen K Web: www.norskerco.dk Denmark

Norsker & Co. is a Danish law oce established in 1900 oering a full range of legal service. It is well known for its industrial property and commercial law. The client base is European and North Central American. Mr. Mads Marstrand-Jorgensen is partner in Norsker & Co. and head of the intellectual property group. He was admitted to the Bar in 1975 and is also admitted to appear before all Danish Courts and before the EU Trademarks Oce in Alicante, Spain. He acts on behalf of Danish and foreign clients in matters in connection with intellectual property and his extremely active and professional representation is xxxiv Contributor Directory the rm’s hallmark. Mr. Mads Marstrand-Jorgensen has been acting successfully in court in the leading Danish court decisions in the eld, including several landmark Supreme Court decisions. He is the author of several books and articles related to intellectual property and has been a speaker at major intellectual property conferences.

Ecuador

Bruce Horowitz is Managing Partner of Paz Horowitz, Abogados. Born and raised in Galion, Ohio, USA, Bruce rst came to Ecuador as a volunteer Land Surveyor for the Shuar Indians in the Amazon Basin. He later received his J.D. from NYU Law School, and practiced for 15 years in Alaska and Ohio, before returning to Ecuador. Bruce is the author of the Ecuador Chapter of Intellectual Property in the Global Marketplace, 2nd Edition (Wiley 1999). He is Co-Chair of the ABA International Law Section’s International IP Rights Committee, and an active member of INTA. Not licensed to practice in Ecuador. Esteban Riofrio, the Chief IP Counsel at Paz & Horowitz, has a J.D. from Catholic University Law School in Quito, and an LL.M. from the Univ. Andino Simon Bolivar. In addition to his regular practice, Esteban is the volunteer legal counsel to Junior Achievement in Ecuador. He is activehttp://www.pbookshop.com in INTA, Marques, ASIPI. Monica Cortez is the IP Administrator at Paz & Horowitz, where she handles the coordination of trademark and patent lings throughout Latin America for major foreign clients. Before coming to Paz & Horo- witz, Monica worked at both the U.S. and British embassies. She is in the process of obtaining her law degree. Paz Horowitz is a completely bi-lingual law rm, whose excellence has been recognized by both in the International Who’s Who of Trademark Lawyers and by Managing Intellectual Property. Paz Horowitz serves national and international businesses and NGO’s in the areas that most aect them: corporate, labor, administrative, intellectual property, environment, anti-corruption compliance, community relations and education, tax, litigation, ADR, and real estate law.

El Salvador

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Espino Neito & Asociados Tel: (503) 263-7522 83 Ave Nte. #138 Col Escalón Faxes: (503) 263-7504 San Salvador, El Salvador (503) 264-3198 Central America E-mail: [email protected] Web: www.espinolaw.com

European Community

Doug McCall Tel: 0151 709 3961 W.P. Thompson & Co. Fax: 0151 709 0162 Coopers Building E-mail: [email protected] Church Street Web: www.wpt.co.uk Liverpool L1 3AB England

Doug McCall received a degree of BSc(Tech) in chemistry from Manchester University, Faculty of Technology in 1961. He joined W.P. Thompson & Co. in 1962 and has been a partner since 1970. Doug is a Chartered Patent Attorney, a European Patent Attorney and a Trade Mark Attorney. He is a member of the Council of the Chartered Institute of Patent Agents and is past president of that body. Doug is also a member of the Institute of Trade Mark Attorneys, a member of the European Communities Trade Mark Association (ECTA), a member of the International Trade Mark Association and a member of UNION of European Practitioners in Industrial Property. Doug is based in the Liverpool Oce of W.P. Thompson & Co. For over a 100 years the rm of W.P. Thompson & Co. has provided commercial and privatehttp://www.pbookshop.com clients, large and small, with advice on all aspects of Intellectual Property Law including Patents, Trade Marks, Registered Designs, Design right and Copyright. Since the rm was founded in 1873 it has established a reputation for quality of service, client care and condentiality. Over many years the rm has established strong and highly esteemed contacts with fellow Intel- lectual Property practitioners throughout the world. The rm recognises the value and importance of on-going professional development and also is fully committed to investing in the latest communication and information technology. By combining these with our personal expertise, we can oer clients advice on a highly cost- eective basis.

European Trade Mark Law xxxvi Contributor Directory

Almut Diederichsen Telephone (496131) 287 7099 Bette-Westenberger-Brink Email: [email protected] Rechtsanwälte Große Bleiche 60-62, 55116 Mainz, Germany

Practice areas: European law, private international law, competition law, trade marks. Admitted: 1999.

http://www.pbookshop.com

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Finland

Jan Waselius Telephone: +358 9 668 9520 and Thomas Kolster Facsimile: +358 9 6689 5222 Waselius & Wist Email: ww@ww. Eteläsplanadi 24 A Web site: www.ww. 00130 Helsinki Finland

xxxviii Contributor Directory

France

Caroline Casalonga and Karina Dimidjian CASALONGA AVOCATS Attorneys at Law 5-7 avenue Percier 75008 Paris France

K 2012 Thomson Reuters/West, 4/2012 xxxix Trademark Practice & Forms portfolios, including counseling, licensing, infringement actions, oppositions and cancellation proceedings. In addition, she is experienced in conducting due diligence reviews in connection with cross-border company and trademark acquisitions. Mrs. Dimidjian-Lecomte is a member of the New York State Bar Association and the International Trademark Association (INTA). She is a Member of the INTA leadership committee on education. She organized for the last years several very successful INTA presentations to law students. She was awarded this year for the Academic Subcommittee of the Membership Services Committee, Co-chair of the Student Membership Project Team. Founded in 1867, Casalonga & Josse has established its reputation as one of the leading intellectual property law rms in France and Europe. It has oces in Alicante, Spain, for Community trademark and design matters and in Munich, Germany for European patent matters. The rm practices patent, trademark, copyright, design law, including prosecution, licensing, counseling and litigation. Its attorneys are authorized to represent clients before the European Pa- tent Oce, the Community Trademark and Design Oce, the French Patent and Trademark Oce, the European Community Trademark Courts in Alicante and the European Court of Justice. Casalonga Avocats is an IP lawyer boutique an dis the litigation partner for the Casalonga & Josse.

Germany

Ghana

Antoinette D. Hubbard, a native of Philadelphia, Pennsylvania, earned her Bachelor of Arts Degree in Political Science from Bryn Mawr College and her Juris Doctor degree from the University of Pennsylvania in 1984. First called to the Bar in 1984 in Delaware, Ms. Hubbard subsequently practiced for over a decade in Boston, Massachusetts. While in the United States, Ms. Hubbard’s practice encompassed a broad variety of matters, including commercial, property, probate, pharmaceutical, medical device and insurance cases. In 1999, Ms. Hubbard became a member of the bar of the Republic of Ghana, as she had relocated to Ghana. Ms. Hubbard is a principal of the rm of Anga & Emuwa of Accra, Ghana. Over the course of her career, Ms. Hubbard has been active in numerous bar associations and legal societies; she is a member of, inter alia, the International Trademark Association. In addition to itshttp://www.pbookshop.com oce in Ghana, Anga & Emuwa, a full service rm, has oces in Lagos and Port Harcourt, Nigeria. The rm is a member of Commercial Law Aliates, an international aliation of independent business and litigation law rms with over two hundred members in more than seventy countries. Anga & Emuwa is also a member of the Nigerian ICC-Counterfeiting Intelligence Bureau and composes the Nigerian Law Digest, published by Martindale-Hubbell in its International Law Directory.

Greece

Sonia Melegou Tel: +(30) 210 775.33.41 Zepos & Yannopoulos or + (30) 210 775.45.71 120, Vas. Soas Ave, Fax: + (30) 210 770.28.25

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115 26 Athens or + (30) 210 771.12.50 Greece E-mail: [email protected] Web: www.zeya.com

Hong Kong S.A.R.

Lehman, Lee and Xu Tel: (852) 3588 2188 Suite 2311, Shell Tower Fax: (852) 3588 2088 Times Square, E-mail: 1 Matheson Street, [email protected] Causeway Bay,http://www.pbookshop.com Web: www.lehmanlaw.com Hong Kong SAR Lehman, Lee & Xu, one of the rst private law rms licensed in China in 1992, has grown to be one of the largest Chinese law rms, with of- ces in eight cities including Hong Kong and Macau. We have the experience and knowledge to provide expert legal advice in the areas of ling trademarks, patents, copyright, IP infringement litigation, matters dealing with unfair competition and other related matters. Our trademark attorneys are also involved in all aspects of transactional trademark work, including the negotiation and drafting of licensing, distribution and franchise agreements. We advise clients, which range from small international trading companies to large multi-national corporations, in the acquisition and sale of trademark portfolios and individual brands, including as part of larger merger transactions. xlii Contributor Directory

The rm is a member of the International Trademark Association (INTA), International Association for the Protection of Industrial Property (AIPPI), Asian Patent Attorneys Association (APAA), National Association of Patent Practitioners (NAPP), the International Anti-Counterfeiting Coalition (IACC), the China Anti-Counterfeiting Committee (CACC), Quality Brands Protection Committee (QBPC, China), Computer Law Association (CLA) and Software and Informa- tion Industry Association (SIIA).

India

Ruma Mitra is a Lawyer and Advocate of the Calcutta High Court. Ruma practiced corporate law for 6 years before joining D. P. Ahuja & Co., as Legal Counsel, in the year 2000. She currently specialises in Trademark litigation. D. P. Ahuja & Co., is a full-service, professionally managed, Intel- lectual Property Law rm established in 1971, known for its technology oriented, equal opportunities, transparent and ethical practice. The rm is headquartered in Calcutta (also the location of the Head Oce of the Indian Patent Oce), with oces in Bangalore, Madras and New Delhi. In the area of Trademarks, the rm specialises in Trademarks Searches, Opinions, Prosecution, Renewals, Oppositions, Litigation, Commercial Investigationshttp://www.pbookshop.com and Market Surveys as well as Drafting and Evaluation of Licence Agreements. The rm publishes World Patent & Trademark News™ (www.wptn.com), a magazine on Intellectual Property New and Articles from around the world. The rm represents over 2500 international corporations, research institutes and universities from around the world.

Indonesia

D. P. Ahuja & Co. Tel: 91(33) 22819195 53 Syed Amir Ali Avenue or 91(33) 22808059 Calcutta 700 019 Fax: 91(33) 22819444

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India or 91(33) 24757524 E-mail: [email protected] Web: www.dpahuja.com

Iran http://www.pbookshop.com Abbas Fakhari Tel: +98 21 890 89 11 Raysan Patent & Fax: +98 21 890 93 51 Trademark Agents E-mail: [email protected] Suite 5, Building 125, Web: www.irantm.com North Felestin Tehran 14158 Iran

Raysan Patent & Trademark Agents was founded in 1975 and specialized in the area of industrial property law. The patent and trademark attorneys and agents of Raysan Patent & Trademark Agents advise and represent dierent aspects of industrial property law. The scope of practice of our patent and trademark agents cover the prosecution, xliv Contributor Directory defense and enforcement of patents and trademarks as well as consult- ing with clients in drafting and completing license and cooperation agreements. Our lawyers provide counsel and represent clients either at court or the Patent & Trademark Oce in dierent aspects of industrial property law, competition law and anti-counterfeiting law, among others. Raysan Patent & Trademark Agents has a close and interactive cooperation with other Iranian and worldwide IP rms. Associates of our rm have an outstanding working experience in the eld of industrial property and are members of international intellectual property organizations.

Israel

Sanford T. Colb is the founder and sole partner of Sanford T. Colb & Co. He studied physics at the University of Pennsylvania and is a graduate of Harvard Law School and Cambridge University. Mr. Colb is registered to practice before the Israel Patent Oce and the U.S. Patent & Trademark Oce, and has been admitted to the Israel Bar and the Massachusetts Bar. For over 25 years, Mr. Colb has been at the forefront of IP law in Israel and has established himself as a leading expert in the eld. David Colb is a junior attorney in the litigation department at Sanford T. Colb & Co. David is a law graduate of Cambridge University. He has experience inhttp://www.pbookshop.com IP enforcement matters including copyright and trademark infringement and anti-counterfeiting. Sanford T. Colb & Co. is a full-service intellectual property law rm, providing services relating to all aspects of intellectual property and technology licensing. The rm represents many well-known Israel and international clients in the registration, litigation and enforcement of their intellectual property rights. Sanford T. Colb & Co. has oces in Jerusalem, Tel-Aviv and Rehovot.

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Italy

Margherita Barié Tel.: +39-02-655851 Carnelutti, Fax: +39-02-65585585 Studio Legale Associato E-mail: [email protected] Via Principe Amedeo, 3 Web: www.carnelutti.com 20121-Milano Italy

Pietro Pouchè Tel.: +39-02-655851 Carnelutti, Fax: +39-02-65585585 Studio Legale Associato E-mail: [email protected] Via Principe Amedeo, 3 Web: www.carnelutti.com 20121-Milano Italy

Japan

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Kosovo

Lebanon

Dr. Rana A. Chaaban Paris: +33 6 70263414 Unversité du Maine Beirut: +961 3526022 Avenue Olivier Messiaen E-mail: 72085—Le Mans Cedex 09 [email protected] Le Mans—France

Liechtenstein

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Lithuania

AAA Legal Services specializes in copyright, design, franchise, patent, trademark law in Lithuania, Latvia, and Estonia. AAA has oces in Vilnius, Lithuania, Tallinn, Estonia, representatives in Riga, Latvia. AAA Legal Services has been voted the number one rm for trademark, copyright, patent work in the Baltic States in the Managing Intellectual Property annual surveys. Since 2000, AAA attorneys won more than 50 court actions to stop the infringement of our clients’ IP rights and obtained the destruction of more than 50,000 counterfeit Adidas, Nike, Lee, and Wrangler goods. Marius J. Jason is founder, chairman and senior attorney of AAA Legal Services. He practiced law in New York City for 15 years before moving to Lithuania in 1992. Mr. Jason has a degree in chemistry, a Master of Laws degree in trade regulation from New York University and a Doctor of Law degree from universities in America. His work on audio-visual piracy won rst prize in his law school copyright competition. He was a partner in a New York City law rm and is a registered patent attorney in the USA (Reg. No. 27,805) and Lithu- ania (Reg. No. 3). Mr. Jason was a consultant to the State Patent Bureau of Lithuania, is the founder and president of Lithuania’s group of International Association for the Protection of Intellectual Property (AIPPI), the founder and former president of Lithuania’s patent attorney association. Mr. Jason specializes in business and intellectual property law, having more than 25 years experience in legal analysis, advice, representation, document preparation. Mr. Jason is listed among the world’s leading Trademark Lawyers in The International Who’s Who of Busi- ness Lawyers.

Macedonia

Zivka Kostovska-Stojkovska Tel: +389 2 3245 955/985 PETOSˇEVIChttp://www.pbookshop.com Fax: +389 2 3245 984 29 Noemvri 17-2/3m E-mail: 1000 Skopje [email protected] Macedonia Web: www.petosevic.com

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Macau (of the People’s Republic of China)

Lehman, Lee & Xu, one of the rst private law rms licensed in China in 1992, has grown to be one of the largest Chinese law rms, with of- ces in eight cities including Hong Kong and Macau. We have the experience and knowledge to provide expert legal advice in the areas of ling trademarks, patents, copyright, IP infringement litigation, matters dealing with unfair competition and other related matters. Our trademark attorneys are also involved in all aspects of transactional trademark work, including the negotiation and drafting of licensing, distribution and franchise agreements. We advise clients, which range lii Contributor Directory from small international trading companies to large multi-national corporations, in the acquisition and sale of trademark portfolios and individual brands, including as part of larger merger transactions. Lehman, Lee & Xu is a member of the International Trademark As- sociation (INTA), International Association for the Protection of Industrial Property (AIPPI), Asian Patent Attorneys Association (APAA), National Association of Patent Practitioners (NAPP), the International Anti-Counterfeiting Coalition (IACC), the China Anti- Counterfeiting Committee (CACC), Quality Brands Protection Com- mittee (QBPC, China), Computer Law Association (CLA) and Software and Information Industry Association (SIIA). RPmacau-Intellectual Property Services. Luis Reigadas, lawyer and notary, is the head and senior partner of RPmacau-Intellectual Prop- erty Services. Having pioneered and practiced exclusively in intellectual property law and related areas for over a decade, the lawyers of RPmacau have established themselves as one of the leading law rms in this eld. RPmacau specializes in all aspects and the management of intellectual property matters both contentious and noncontentious, including registration, licensing and litigation relating to intellectual property rights, and unfair competition. RPmacau has membership of many recognized international organizations and regularly participates in a number of seminars in relation to the various associations. Having global correspondents and maintaining a portfolio of clients from a number of domestic and international companies of various sizes they provide top quality, competitively priced work. The languages spoken and written uently are English, Portuguese, Cantonese and Mandarin with a comprehension of French and Spanish.

Malaysia

K 2012 Thomson Reuters/West, 4/2012 liii Trademark Practice & Forms our regional oces, professional associations and panel of legal counsel in the various jurisdictions throughout the region, the ECSF synergy provides a one-stop, multi-networked agency securing, protecting and enforcing your IP rights throughout Asia. Our team at ECSF comprises highly qualied patent and trade mark specialists, professionals and technical experts with impeccable academic credentials. Selected from scientic, technical and design disciplines, our host of Ph.D., Masters and Bachelors graduates have extensive and in-depth industry experience in all areas of IP.

Mexico

Montenegro

Jasna Jusic Paovic Tel: +382 20 634 561 PETOSˇEVIC Fax: +382 20 634 421 Crnogorskih serdara bb E-mail: [email protected] 1st Floor, Apt. 4 Web: www.petosevic.com 81000 Podgorica Montenegro

Morocco

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Myanmar

New Zealand

Peter B. Curling Tel: +64 4 473 8278 A J Park, Huddart Parker Building Fax: +64 4 472 3358 1 Post Oce Square E-mail: [email protected] Wellington Web: www.ajpark.com New Zealand

Peter Curling was born, educated and spent the early part of his career in London, England, initially in the British Trade Marks Regis- try before joining the profession in 1969 and A J Park in 1972. Peter specialises in all aspects concerning the acquisition and enforcement of trade mark and related rights both within South Pacic countries and throughout the world. For many years Peter was a member of the New Zealand Institute of Patent Attorneys Team liais- ing with the Trade Marks Registry with respect to changes to trade mark practices before IPONZ discontinued this liaison arrangement. He has served as the Secretary of the New Zealand group of AIPPI and is involved in the Committee work of the International Trademark Association. In addition to membership of the New Zealand Institute of Patent Attorneys, Peter’s membership of international organizations includes as an Overseas member of the (British) Institute of Trade Mark Attorneys and Associate membership of the European Communities Trade Mark Practitioners Association. A J Park is amongst the leading and largest of Australia’s intellectual property practices comprising more than 50 professionals specializing in trade marks, patents and all areas of intellectual property practice. Established in Newhttp://www.pbookshop.com Zealand in 1891, the A J Park practice deals with the Trade Marks Registries of Australia, Fiji, New Zealand and Papua New Guinea as well as other Pacic Island territories.

Nicaragua

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United Kingdom

Jose Bellido is a graduate of Universidad Autonoma de Madrid (LLB) and University of London (LLM). He has been Herchel Smith Junior Scholar at Queen Mary, University of London (2001), and obtained the Sir Roy Good Prize at the University of London for outstanding academic achievement (2002). He has been visiting scholar at UNR (Argentina) and stipendiat at the Max-Planck Institute for Intellectual Property (Munich, Germany, 2003). He is currently nishing his PhD at the University of London on the history of Intellectual Property law in Latin America. He teaches Law for Managers at University of College (University of London) and Intellectual Property Law at Birkbeck College (University of London). He has practiced law in Spain and UK. His research interests are legal theory, property and intellectual property and legal history. Guy José Bendaña is a partner in the intellectual property rm Guy José Bendaña-Guerrero & Asociados, formerly Henry Caldera & Henry Caldera-Pallais, founded in 1907. He is also a Professor in Intellectual Property Law in several Universities. His publications include: ‘‘Transferencia de tecnología’’ (1984), ‘‘Comentarios al Convenio de París para la Protección de la Propiedad Industrial’’ (1996), ‘‘Temas dehttp://www.pbookshop.com Derecho de Propiedad Industrial’’ (199 8), and ‘‘Curso de Derecho de Propiedad Industrial’’ (1999). Guy José Bendaña-Guerrero & Asociados is the oldest intellectual property rm in Nicaragua. For over a 100 years the rm has been involved in the drafting and counseling of Nicaraguan intellectual property laws. The rm is a member of the International Trade Mark Association (INTA), the Inter-American Industrial Property Association (ASIPI), The Chartered Institute of Arbitrators, and founding member of the Nicaraguan Intellectual Property Association (ANIPI).

lviii Contributor Directory

Nigeria

Theophilus I. Emuwa is a partner in Anga & Emuwa, Lagos, Nigeria. He qualied in mechanical engineering before becoming a lawyer. He is admitted to practise law in England & Wales, Nigeria and Ghana; and is a member of the International Bar Association; the Nigerian Society of Engineers; the WIPO Arbitration and Mediation Centre; and the International Trademark Association [INTA]. He is on the Editorial Board of The Trademark Reporter and is the author of the Nigeria section of the International Annual Review of Trademark Ju- risprudence (also published by the INTA). ÆLEX is a full service commercial and litigation law rm, one of the largest in West Africa with oces in Lagos and Port Harcourt, Nigeria, and in Accra, Ghana. The rm handles all matters (both of a contentious and noncontentious nature) relating to trademarks, patents, design, copyright, franchising, licensing, distributorship agreements and technology transfer. The rm is a member of the International Trademark Association (INTA), the AIPPI Nigeria Chapter and the Intellectual Property Law Association of Nigeria. The rm is also a member of Counterforce. Counterforcehttp://www.pbookshop.com is a global network of law rms specialis- ing in intellectual property and anti-counterfeiting work. Counterforce is operated by the International Chamber of Commerce—Counterfeit- ing Intelligence Bureau. The rm is a member of the World Services Group, and a member of Meritas. It is also the Reviser of the Nigeria Law Digest published by Martindale-Hubbell in its International Law Directory.

North Korea (Democratic People’s Republic of Korea)

S. Ted Kwon Tel: (82 2) 3465-7700 Yoon Yang Kim Shin & Yu Fax: (82 2) 3465-7800 11th Floor, Namkang Building, E-mail: [email protected]

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1340-6, Seocho-dong, Seocho-gu, Web: www.yoonyang.com Seoul 137-861, Korea

Norway

Panama

K 2012 Thomson Reuters/West, 4/2012 lxi Trademark Practice & Forms lectual Property Protection between Mexico and the United States,’’ Fordham Intellectual Property, Media & Entertainment Law, Journal, Vol. V, No. 1, 1994 and speaks Spanish, English and French. Lombardi, Aguilar & Garcia was created as an alternative for clients worldwide who seek fast, innovative and eective solutions to their legal problems. The rm currently provides services to individual and corporate clients in Panama as well in the Americas, Europe and Asia. Its partners maintain a commitment with professional ethics and social responsibility by participating in the board of directors of groups such as the Panama Bar Association, the German Chamber of Commerce and the American Chamber of Commerce (AMCHAM) of Panama. The rm centers its law practice in private client services and asset protection (private interest foundations, trusts), business structures (oshore corporations), tax planning, real estate and e-commerce. It also advises in areas of law such as corporate, commercial, intellectual property, maritime, tax, and immigration law as well as related litigation.

Peru

Gonzalo Ferrero Diez Canseco Tel: (511) 617-9000 Ferrero, Lema, Solari & Fax: (511) 617-9010 Asociados E-mail: [email protected] Calle Los Angeles N° 340, www.efdc.com.pe Miraores Lima 18, Perú

Philippines

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Poland

Portugal

K 2012 Thomson Reuters/West, 4/2012 lxv Trademark Practice & Forms sports law. Abreu, Cardigos & Associados is a rm providing legal services particularly addressed to corporate entities that require a wide range of complementary services and specialised assistance in particular elds of law. The rm was incorporated in 1993 by Lisbon attorneys with a valuable experience in international law rms. Their professional legal background together with their corresponding expertise were the basis on which this project was established and allowed the rm to quickly become known and accepted in six major areas of the law: banking and nance (swaps and derivatives), taxation and tax planning (international taxation), mergers and acquisitions (MBOs, MBIs), capital markets, EU and competition law, Industrial Property and Information Technology. Abreu, Cardigos & Associados is one of the largest law rms in Portugal and the only one to have been certied by the IPQ, the Portuguese Institute for Quality, with the ISO 9001 norm.

Puerto Rico

Qatar

Malik Al-Kammaz Tel: +974 4442 3992 Saba & Co. Intellectual Property Fax: +974 4432 4106 - Qatar Oce http://www.sabaip.com P.O. Box 14-035, Doha, Qatar

Romania

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Russia

Andreas Neocleous & Co LLC Tel.: +7 495 933 8703 Perevedenovskiy per., 13 Fax: +7 495 411 8504 Building 21 E-mail: [email protected] 105082 Moscow Website: www.neocleous.ru Russia

Saudi Arabia

Alawi Hamed Almihdar Tel: +966 2 6973311 Almihdar Law Firm Fax: +966 2 6977301 Sary Street E-mail: P.O. Box 1180 aaalf@almihdarlawrm.com Jeddah 21431 Saudi Arabia

Alawi Hamed Almihdar obtained his B.A. degree in Law from Cambridge University in 1971 and his LL.B. (subsequently redesig- nated as LL.M.) in Public and Private International Law in 1972. He was awarded his M.A. by Cambridge University in 1976. He joined the Ministry of Petroleum & Mineral Resources in Saudi Arabia as Legal Adviser in the Deputy Ministry for Mineral Aairs and continued as external adviser to the Ministry for several years after leaving his full time position in the Ministry. The Almihdar Law Firm (ALF) was formed in Jeddah by Ali and Alawi Hamed Almihdar in 1976. From 1979-1985 ALF worked in close association with a leading City of London Law Firm which assisted with the development of its international legal practice. Over the years ALF have built a considerable commercial practice in Saudi Arabia and a national and international reputation, advising Saudi National clients both corporate and private, mixed Saudi foreign companies and a large number of foreign organizations such as law rms, other professionals, embassies, banks, insurance companies and other companies and commercial bodies. The rm oers a wide range of services extending from the formation of Saudi companies, Foreign Investment Licensing, Licensing for other Commercial activitieshttp://www.pbookshop.com including Trademark Registration in the Kingdom, Shipping, Intellectual Property Protection, Agency and Distributorship matters, Construction Contracts, Arbitrations, Litiga- tion before Saudi courts, tribunals and committees, Labour Law matters, and general corporate advice.

Singapore

Ella Cheong Tel: +65 6 3333 7200 Ella Cheong Spruson & Ferguson Fax: +65 6 3333 7222 (Singapore) Pte Ltd E-mail: [email protected] 152 Beach Road #30-00 Gateway East Singapore 189721

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Ella Cheong is one of Asia’s best known IP lawyers. She was a prece- dent partner at one of Hong Kong’s oldest law rms, having founded its IP department, and was also co-founder of a leading IP boutique legal rm in Singapore. She has served as a member of the Board of Directors of INTA, and has participated in many of INTA’s committees. She is Chairman of the group comprising independent members of the Association Internationale pour la Protection de la Propriete Industrielle (AIPPI) from around the world, representing them on the Council of Presidents and the Executive Committee of AIPPI, and received its Award of Merit. She sat on the Council of FICPI and she has now been elected a Member of Honour of FICPI. Ella has been featured in numerous publications (including ‘‘Who’s Who in the World,’’ ‘‘Who’s Who of Professionals’’ and various other ‘‘Who’s Who’’) as a leading professional and practitioner in each and every aspect of IP and was listed as one of the world’s top 20 trademark law practitioners in ‘‘The Best of the Best’’. She was nominated to the ABI International Directory of Distinguished Leadership Hall of Fame and featured in 2000 Outstanding Intel- lectuals of the 21st century, as well as being awarded the HK Outstanding Women Entrepreneurs Award 2002. She received Matsushita’s Panasonic Gold Award of Merit for Contribution to Protection of IP Rights 2004. Ella Cheong Spruson & Ferguson (ECSF) was formed by established leading Intellectual Property (IP) practitioners from Asia and Australia. ECSF harnesses the talents and taps the experience of its IP experts to establish a specialist regional Asian IP practice span- ning South East Asia and the Indian sub-continent. Our combined experience adds up to more than a century, so you know you are in capable hands withhttp://www.pbookshop.com that recognisable personalised service. Through our regional oces, professional associations and panel of legal counsel in the various jurisdictions throughout the region, the ECSF synergy provides a one-stop, multi-networked agency securing, protecting and enforcing your IP rights throughout Asia. Our team at ECSF comprises highly-qualied patent and trademark specialists, professionals and technical experts with impeccable academic credentials. Selected from scientic, technical and design disciplines, our host of Ph.D., Masters and Bachelors graduates have extensive and in-depth industry experience in all areas of IP.

lxx Contributor Directory

Slovak Republic

K 2012 Thomson Reuters/West, 4/2012 lxxi Trademark Practice & Forms of its locally and internationally trained lawyers advising on a broad range of matters including commercial, corporate, bankruptcy and restructuring, tax, nance, human resources, litigation, real estate, regulatory and legislative, technology, and media and communications in every major market around the world.

South Africa

lxxii Contributor Directory

South Korea

Jay K. Lee. Esq. Tel: 82-2-6003-7590 Yoon Yang Kim Shin & Yu E-mail: [email protected] 19th Floor, ASEM Tower, #159-1 Web: www.hwawoo.com Samsung-dong, Gangnam-ku, Seoul Korea

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Spain

Enric Enrich and Tel: + 34 93 419 37 98 Elisabeth Planell Fax: + 34 93 419 48 44 Enrich Advocats E-mail: [email protected] Josep Tarradellas 155, 2 Web: www.copyrait.com 08029 Barcelona Spain

Enric Enrich’s practice focuses on private international law and intellectual property. He represents clients in many sectors of the entertainment industries. Chairman of the Copyright and Neighbour- ing rights committee of the Barcelona Bar Association, and former Co- chairman of the Committee of Intellectual Property of the Interna- tional Bar Association (IBA). Arbitrator of the WIPO and of the AFMA. Member of the International Association of Entertainment Lawyers (IAEL) and Association Litteraire et Artistique Internationale (ALAI). Elisabeth Planell’s practice focuses on Information Technology Law and Intellectual Property. She is tutor of the WIPO Worldwide Academy. Enrich, Amat i Vidal-Quadras Advocats oers a wide variety of private civil, corporate and commercial legal services, with an international focus. Our rm oers particular emphasis in intellectual property (in the areas of art law, copyright and entertainment law for the movie and music industries, information technology and computer law, as well as trademarks, tradenames and protection of other IP rights), foreign investments in Spain (direct investments, mergers and acquisitions, real estate investments), Spanish investments abroad, international contractshttp://www.pbookshop.com (agency and distribution, license, merchandising, franchising, sports, export-import sales, construction, etc.) and international tax planning. Our attorneys are uent in foreign languages including English, French, Italian, Portuguese, Spanish and Catalan. Based in Barcelona, we have close relationships with other law Spanish rms, especially in Madrid. We serve the interests of U.S. clients in Europe, and European clients in Central and South America.

Sweden

Karin Burling Tel: +46 8 701 78 00 Advokatrma Lindhs DLA Fax: +46 8 701 78 99 Nordic KB, E-mail: lxxiv Contributor Directory

Kungsgatan 9—P.O. Box 7315 [email protected] 103 90 Stockholm Web: www.dlanordic.se Sweden

Taiwan

Thomas Q.T. Tsai Tel: 886-2-2571-0150 Pei-Ling Tong Fax: 886-2-2562-9103 TSAI, LEE & CHEN E-mail: [email protected] 12FL., 148 Sung Chiang Rd. Web: www.tsailee.com.tw Taipei, Taiwan

K 2012 Thomson Reuters/West, 4/2012 lxxv Trademark Practice & Forms

Tsai, Lee & Chen is primarily engaging in the practice of intellectual property law. It is one of the few rms in Taiwan having the capability of providing clients with comprehensive services relating to patent, trademark, trade dress, copyright, trade secret, domain name, unfair competition, licensing, cyberspace law and other related matters. Most signicantly, the rm is famous and competent in hi-technology areas, such as Semiconductors, TFTLCD, Nanotechnology, 3C (Com- puter, Communication and Consumer Electronics, particularly in E-Commerce and the Internet issues), Biochemistry and Pharmaceutics. The rm is also keeping abreast with challenges of enforcing IP rights in the new technologies that are emerging from the convergence of the information sciences and biotechnology. Our strength is the quality, expertise and experience of our professionals. Our members have written texts and articles on intellectual property law and technology, made valuable inventions, received awards for academic excellence, and practiced for decades in intellectual property law. Most members hold advanced degrees in law and technical elds. Some served as patent examiners of the Intellectual Property Oce (IPO, Taiwan’s patent and trademark of- ce) before they joined the rm. Most partners have been invited to give lectures or workshops on patent, trademark and internet related subjects to local industries and the examiners of the IPO. Their views and recommendations have been frequently sought and relied on by the IPO in its formulation of patent and trademark policies and interpretation of patent, trademark and copyright law. This access to the IPO gives us valuable insights, which have benetted our clients. Several partners teach IP related courses, such as Computer and Internet Law, Intellectual Property Management . . . etc. as adjunct professors of Law at local universities, and are recognized as known authorities on these subjects in Taiwan. In addition to thehttp://www.pbookshop.com headquarters in Taipei, the capital city of Taiwan, there are two oces located in the Hsinchu and Tainan Science-Based Industrial Park to serve a large amount of clients from high-tech elds. Moreover, the rm also actively participates with many global IP communities, including PTMG, ABA, ECTA, APIIP, APAA, AIPLA, IPO, FICPI and INTA. The professionals of this rm are constantly invited as guest speakers in many international organizations for information reciprocity and discussion concerning the most updated IP matters around the world.

Thailand

Tilleke & Gibbins Tel: +66 2653 5555 Supalai Grand Tower, Fax: +66 2653 5678 lxxvi Contributor Directory

26th Floor, E-mail: 1011, Rama 3 Road [email protected] Chongnonsi, Yannawa Web: www.tillekeandgibbins.com Bangkok 10120 Thailand

Darani Vachanavuttivong is a Co-Managing Partner of Tilleke & Gib- bins International Ltd. in addition to her position as the Managing Director of the rm’s award-winning Intellectual Property Department. Peers and clients around the world have consistently voted the rm’s intellectual property practice as the top in Thailand, including the Thailand IP Firm of the Year Award from Asialaw (2004 to 2007), Managing Intellectual Property (2007 and 2008), and Asian- Counsel (2007). Ms. Vachanavuttivong herself has been consistently identied as a leading lawyer in the area of intellectual property. Mrs. Vachanavuttivong graduated from Thammasat University in Thailand with a Bachelor’s Degree in Business Administration (Ac- counting) in 1985, a Higher Diploma in Auditing in 1988, and a Master of Science in Accounting in 1991. She later pursued law studies and obtained her law degree in 1999 from Ramkhamhaeng University. In 2002, she successfully completed the Program of Instruction for Lawyers and Negotiation Workshop at Harvard Law School. She passed the examination for a Thai lawyer’s licence in 2004. In addition, she completed the Patent Agent Training Course conducted by the Department of Intellectual Property and is a certied patent agent. She also received a certicate for completing the SEAD Course on Drafting Patent Specications conducted by the Federation Internationale des Conseils en Propriete Industrielle. Since 1990, Mrs. Vachanavuttivong has been responsible for Tilleke & Gibbins’ trade markhttp://www.pbookshop.com registration practice. In 2001, she became the managing director of the rm’s intellectual property registration operations, assuming responsibility also for the rm’s patent registration practice and the intellectual property registration operations for Vietnam, Cambodia, Laos and Myanmar. In 2005, she was given charge of the rm’s entire intellectual property practice. Mrs. Vachanavuttivong is currently the President of the Intellectual Property Association of Thailand in addition to being a Director of the Association. She is a frequent speaker and has authored numerous articles on intellectual property topics.

K 2012 Thomson Reuters/West, 4/2012 lxxvii Trademark Practice & Forms

Tunisia

Turkey

Kazim Dündar and Ömer Dündar Tel: 90 212 324 31 00 Stock Industrial Property Services A.S. Fax: 90 212 324 31 18 173 Buyukdere Caddesi, Levent E-mail: 34394 Istanbul [email protected] Turkey

lxxviii Contributor Directory

Ukraine

Tetyana V. Gluhovska & Tel: +380 44 490-5400 Hlib O. Tsvietkov Fax: +380 44 490-5490 Konnov & Sozanovsky E-mail: 23 Shota Rustaveli, 5, [email protected] Kiev 01023, Ukraine Web: www.konnov.com UA

United Kingdom

Doug McCall Tel: 0151 709 3961 W.P. Thompson &http://www.pbookshop.com Co. Fax: 0151 709 0162 Coopers Building E-mail: [email protected] Church Street Web: www.wpt.co.uk Liverpool, L1 3AB England

K 2012 Thomson Reuters/West, 4/2012 lxxix Trademark Practice & Forms member of the International Trade Mark Association and a member of UNION of European Practitioners in Industrial Property. He is based in the Liverpool Oce of W.P. Thompson & Co. For over a 100 years the rm of W.P. Thompson & Co. has provided commercial and private clients, large and small, with advice on all aspects of Intellectual Property Law including Patents, Trade Marks, Registered Designs, Design Rights and Copyright. Since the rm was founded in 1873, it has established a reputation for quality of service, client care and condentiality. Over many years the rm has established strong and highly esteemed contacts with fellow Intel- lectual Property practitioners throughout the world. The rm recognises the value and importance of ongoing professional development and also is fully committed to investing in the latest communication and information technology. By combining these with our personal expertise, we can oer clients advice on a highly cost- eective basis.

United States of America

Anita Nesser Tel: 214/981-6764 Associate General Counsel Fax: 214/981-6855 Centex Corporation E-mail: [email protected] 2728 North Harwoodhttp://www.pbookshop.com Dallas, Texas 75201 United States

Joseph R. Robinson, a member of Darby & Darby, specializes in patent litigation, counseling, licensing and procurement in biotechnical, pharmaceutical, chemical and mechanical technologies. He has experience in litigating patent matters in areas such as recombinant mo- lecular biology, pharmaceuticals, enzyme technology, electrochemistry, food chemistry, organic chemistry, textiles, and complex paper handling machinery. He also has experience in ANDA counseling and litigation. He has procured patents covering inventions in a wide range of elds such as drugs and treatments for autoimmune and infectious diseases; drug delivery systems; vaccines; genetically engineered plants, microorganisms, and animals; agro-, inorganic, lxxx Contributor Directory organic, physical and polymer chemistry; prosthetics and textile processing. Mr. Robinson also has substantial experience in Patent Oce interference, reissue, and reexamination proceedings. His practice also involves trademark procurement, counseling, licensing and litigation. Nadine Farid’s experience at Darby & Darby has included the litigation of patent, trademark, false advertising and copyright claims as well as trademark counseling and clearance. Ms. Farid also has experience with new media issues, such as privacy law compliance and Internet-related crime and security issues, as well as in the successful resolution or settlement of a number of disputes before the Trademark Trial and Appeal Board and the successful negotiation of a settlement in a patent litigation before the federal district court in Los Angeles. Prior to joining to Darby & Darby, Ms. Farid practiced general commercial litigation and immigration law and served a judicial clerkship with the U.S. Department of Justice. She is currently a Lecturer on Law at Harvard Law School. Steven J. Notto, a senior foreign trademark paralegal with Darby & Darby, handles all aspects of foreign trademark prosecution, including searches, ling applications, responding to Ocial Actions, registration of trademarks, change of ownership names, trademark assignments and maintaining trademark database. Prior to joining Darby and Darby over fteen years ago, Mr. Notto worked for ten years in the eld of general trademark litigation and anticounterfeit- ing trademark litigation. Anita Nesser is an Associate General Counsel of Centex Corporation, the nation’s premier company in building and related services. Before joining Centex, Ms. Nesser was a trademark attorney for Baker Botts. Ms. Nesser received her preparatory education from Wellesley Col- lege, where she received her bachelor of arts degree, cum laude, in 1987. She received her law degree from the John Marshall Law School, and is licensed tohttp://www.pbookshop.com practice law in Texas, Illinois and the District of Columbia.

Vietnam

Edward J. Kelly Tel: +66 2263 7700 Director, Fax: +66 2263 7710 Intellectual Property thru 7713 Division Enforcement, Licensing E-mail: and Transactions [email protected] Tilleke & Gibbins Web: International Ltd.

K 2012 Thomson Reuters/West, 4/2012 lxxxi Trademark Practice & Forms

Tilleke & Gibbins Build- www.tillekeandgibbins.com ing 64/1 Soi Tonson, Ploenchit Bangkok 10330 Thailand

Edward J. Kelly, the Director of Tilleke & Gibbins International Ltd. Intellectual Property Division for Enforcement, Transactions and Licensing, is a graduate of Duke University (BA Economics, 1988) and the Boston University School of Law (JD, 1991). He obtained an LLM in International Law (focusing on IP law) while studying under Dr. Sompong Sucharitkul at Golden Gate University in San Francisco, California (2000), and has completed coursework in comparative (Thai/ U.S.) intellectual property law at a joint program sponsored by Chulalongkorn University and Golden Gate University in Thailand (Summer 2000). He has also completed postgraduate coursework in intellectual property law and biotechnology law at the University of San Diego (Spring 2001). Mr. Kelly was formerly a partner with the New York law rm, Kelly, Rode & Kelly, LLP and has eleven years of trial litigation experience, with over thirty jury trial verdicts. He has also served as the Director of the Contracts, Licensing and Exports Department for the global communications technology supplier, Har- ris Corporation (NYSE-HRS) in Bangkok, Thailand and Redwood Shores, California. Mr. Kelly is admitted to practice law in federal and state courts in both New York and California and is an active member of the American Bar Association’s International Intellectual Property Rights Committee and Southeast Asia Law Committee, the Computer Law Association, the Anti-Counterfeiting Group and the American Chamber of Commerce (Thailand) IPR Committee. Mr. Kelly focuses hishttp://www.pbookshop.com time and eorts on IP enforcement matters and IP licensing/transactions.

lxxxii Summary of Contents

Volume 1

PART I. SPECIAL TOPICS Chapter 1. International Trademark Protection Chapter 2. Trademark Law and the Internet Chapter 3. Protecting Trademarks Worldwide

PART II. NATIONAL SYSTEMS AND FORMS Chapter 4. Albania Chapter 5. Algeria Appendix 5A. Nice Classication Chapter 6. Argentina Chapter 7. Armenia Chapter 8. Australia Chapter 9. Austria Chapter 10. Bahrain Chapter 11. Benelux Chapter 12. Bermuda Chapter 13. Bosniahttp://www.pbookshop.com and Herzegovina Chapter 14. Brazil Chapter 15. Brunei Darussalam Chapter 16. Republic of Bulgaria Chapter 17. Cambodia Chapter 18. Canada Chapter 19. Chile Chapter 20. China Chapter 21. Colombia Chapter 22. Costa Rica Chapter 23. Croatia Chapter 24. Cyprus lxxxiii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

Volume 2

Chapter 53. Morocco Appendix 53A. Nice Classication Chapter 54. Myanmar Chapter 55. New Zealand Chapter 56. Nicaragua Chapter 57. Nigeria Appendix 57A. National Classication of Goods Chapter 58. North Korea (Democratic People's Republic of Korea) Chapter 59. Norway Chapter 60. Panama Chapter 61. Papua New Guinea Chapter 62. Peru Chapter 63. The Philippines Chapter 64. Poland Chapter 65. Portugal Chapter 66. Puerto Rico Chapter 67. Qatar Chapter 68. Romania Appendix 68A. Schedule of Fees for Trademark-Related Procedures Chapter 69. Russia Chapter 70. Saudi Arabia Chapter 71. Singaporehttp://www.pbookshop.com Chapter 72. Slovak Republic Chapter 73. South Africa Chapter 74. South Korea Chapter 75. Spain Chapter 76. Sweden Chapter 77. Taiwan Chapter 78. Thailand Chapter 79. Tunisia Appendix 79A. National Classication Chapter 80. Turkey Chapter 81. Ukraine lxxxv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

Chapter 82. United Kingdom Chapter 83. United States Chapter 84. Vietnam

http://www.pbookshop.com

lxxxvi Table of Contents

Volume 1

PART I. SPECIAL TOPICS CHAPTER 1. INTERNATIONAL TRADEMARK PROTECTION

I. ASEAN A. OVERVIEW § 1:1 History and scope § 1:2 Policies and objectives § 1:3 The future

B. RESOURCES § 1:4 In general

lxxxvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms D. RESOURCES § 1:18 In general

III. NICE AGREEMENT A. OVERVIEW § 1:19 History and scope § 1:20 Policies and objectives § 1:21 The future

B. INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES § 1:22 In general

C. RESOURCES § 1:23 In general

IV. NAIROBI TREATY A. OVERVIEW § 1:24 History and scope

B. RESOURCES § 1:25 In general

V. PARIS CONVENTION A. OVERVIEW § 1:26 History and scope § 1:27 Policies and objectives § 1:28 The futurehttp://www.pbookshop.com

C. PROCEDURAL REQUIREMENTS § 1:34 Filing priority registration

D. RESOURCES § 1:35 In general lxxxviii Table of Contents

VI. TLT AGREEMENT A. OVERVIEW § 1:36 History and scope § 1:37 Polices and objectives § 1:38 The future

B. TRADEMARK PROVISIONS § 1:39 What is available? § 1:40 What are the limitations?

C. RESOURCES § 1:41 In general

VII. TRIPS AGREEMENT A. OVERVIEW § 1:42 History and scope § 1:43 Policies and objectives § 1:44 The future

B. TRADEMARK PROVISIONS § 1:45 What is available? § 1:46 What are the limitations?

C. RESOURCES § 1:47 In general

VIII. WIPO CONVENTION A. OVERVIEWhttp://www.pbookshop.com

§ 1:48 History and scope § 1:49 Policies and objectives § 1:50 The Internet

B. TRADEMARK PROVISIONS § 1:51 What is available? § 1:52 What are the limitations? § 1:53 Who can seek protection?

C. PROCEDURAL REQUIREMENTS § 1:54 Mediation § 1:55 Arbitration lxxxix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 1:56 Expedited arbitration

PART II. NATIONAL SYSTEMS AND FORMS CHAPTER 4. ALBANIA

I. OVERVIEW § 4:1 The basics § 4:2 Policies and trends—Trade and regulatory climate § 4:3 —Why register locally? § 4:4 —The future § 4:5 Laws, rules and regulations

III. TRADEMARK REGISTER § 4:20 Where is the trademark registered?—Trademark register § 4:21 —Requirement of distinctiveness § 4:22 —Exclusive use rights xci K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 4:23 —Limitation on exclusive use rights § 4:24 —Enforcement § 4:25 —Validity

V. REGISTRATION FORMS § 4:37 Information checklist § 4:38 Registration forms § 4:39 Power of attorney

VII. RESOURCES § 4:61 In general CHAPTER 5. ALGERIA

I. OVERVIEW § 5:1 The basics § 5:2 Policies and trends—Trade and regulatory climate § 5:3 —Why register locally? § 5:4 —The future

III. INITIAL REGISTRATION § 5:15 Trademark register § 5:16 Search and advice § 5:17 Application § 5:18 Response of INAPI § 5:19 Publication http://www.pbookshop.com IV. POST-REGISTRATION § 5:20 Duration of protection § 5:21 Renewal § 5:22 Cancellation of registration § 5:23 Assignments—Rights to assign § 5:24 —Recordation of assignment § 5:25 —Legal documents § 5:26 Licensees or registered users—Right to grant use § 5:27 —Rights of the proprietor § 5:28 —Penalties § 5:29 — —Damages § 5:30 — —Seizure and destruction of the imitated products § 5:31 — —Publication of the judgment in newspapers § 5:32 —Rights of the licensee xciii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 5:33 —Recordation of license

VI. RESOURCES § 5:46 In general Appendix 5A. Nice Classication CHAPTER 6. ARGENTINA

IV. INITIAL REGISTRATION § 6:33 Procedural timeline—Search § 6:34 —Application and review § 6:35 —Publication and response § 6:36 —Ocial actions § 6:37 —Opposition

V. REGISTRATION FORMS § 6:38 Information checklist § 6:39 Power of attorney form § 6:40 Power of attorney § 6:41 Poder § 6:42 Application for registration of trademark (initial registration form) § 6:43 Oppositionhttp://www.pbookshop.com form VI. POST-REGISTRATION § 6:44 Renewal of registration—Duration of protection § 6:45 —Renewal before expiration § 6:46 —Renewal after expiration § 6:47 —Reinstatement § 6:48 Alteration or modication—Obvious errors § 6:49 —To trademark § 6:50 —To goods and/or services § 6:51 —To name or address § 6:52 Cancellation of registration—The property rights over a trademark are extinguished: § 6:53 —Registered trademarks are null: § 6:54 Assignments xcv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 6:55 Licensees or registered users—Recordation of license § 6:56 Assignment form § 6:57 Change of name form

VII. RESOURCES § 6:58 In general CHAPTER 7. ARMENIA

I. OVERVIEW § 7:1 The basics § 7:2 Policies and trends—Trade and regulatory climate § 7:3 —Why register locally? § 7:4 —The future § 7:5 Laws, rules and regulations

IV. INITIAL REGISTRATION § 7:25 Procedural timeline—Search and advice § 7:26 —Application and fees xcvi Table of Contents

V. REGISTRATION FORMS § 7:35 Information checklist § 7:36 Registration forms § 7:37 Power of attorney

VII. RESOURCES § 7:61 In general CHAPTER 8. AUSTRALIA

I. OVERVIEW § 8:1 The basics xcvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 8:2 Policies and trends—Trade and regulatory climate § 8:3 —Why register locally? § 8:4 —The future § 8:5 Laws, rules and regulations

IV. INITIAL REGISTRATION § 8:29 Procedural timeline—Search § 8:30 —Assisted ling service (AFS) § 8:31 —Application § 8:32 —Review § 8:33 —Registration § 8:34 —Amendment

V. REGISTRATION FORMS § 8:35 Information checklist § 8:36 Common form requirements § 8:37 Application to register a trade mark xcviii Table of Contents

VII. RESOURCES § 8:76 In general xcix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms CHAPTER 9. AUSTRIA

I. OVERVIEW § 9:1 The basics § 9:2 Policies and trends—Trade and regulatory climate § 9:3 —Why register locally? § 9:4 —The future § 9:5 Laws, rules and regulations

IV. INITIAL REGISTRATION § 9:31 Procedural timeline § 9:32 —Pre-application search § 9:33 —Application § 9:34 —Review by the patent oce § 9:35 —Similarity research c Table of Contents

V. REGISTRATION FORMS § 9:44 Information checklist § 9:45 Application for registration of trademark § 9:46 Trademark application form

I. OVERVIEW § 10:1 The basics § 10:2 Policies and trends § 10:3 —Trade and regulatory climate § 10:4 —Why register locally? § 10:5 —The future ci K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 10:6 Laws, rules and regulations

IV. INITIAL REGISTRATION § 10:22 Procedural timeline—Search and advice § 10:23 —Application § 10:24 —Review § 10:25 —Registration

V. REGISTRATION FORMS § 10:26 In generalhttp://www.pbookshop.com § 10:27 Power of Attorney form § 10:29 Application for Registration of Trademark (Initial Registration form)

VII. RESOURCES § 10:48 In general CHAPTER 11. BENELUX

I. OVERVIEW § 11:1 The basics § 11:2 Policies and trends—Trade and regulatory climate § 11:3 —Why register locally? § 11:4 —The future § 11:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 11:6 What is a trademark? § 11:7 Which trademarks may be registered? § 11:8 —Word/label trademarks § 11:9 —Trademark for goods/services § 11:10 —Associated trademark § 11:11 —Individual trademark § 11:12 —Collective trademark (article 2.34 bcip) § 11:13 —Certicationhttp://www.pbookshop.com trademark § 11:14 —Three-dimensional (plastic) trademarks § 11:15 —Colored trademark § 11:16 —Smell/sound trademark § 11:17 —Defensive trademarks § 11:18 —Commercial trademarks § 11:19 —Series of trademarks § 11:20 —Complex trademarks § 11:21 What cannot be registered? § 11:22 Who can register? § 11:23 —Proprietor or user § 11:24 —Authorized agent § 11:25 —Priority registrant § 11:26 —Joint owners or users § 11:27 —Proposed corporation ciii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms III. TRADEMARK REGISTER § 11:28 Where is the trademark registered? § 11:29 Trademark oces § 11:30 —National oces—Belgium § 11:31 — —The netherlands § 11:32 — —Grand-duchy of luxembourg § 11:33 — —World intellectual property organization (wipo) § 11:34 —Requirement of distinctiveness § 11:35 —Exclusive use rights § 11:36 —Limitation on exclusive use rights—Enforcement § 11:37 —Validity

VII. RESOURCES § 11:85 In general CHAPTER 12. BERMUDA

I. OVERVIEW § 12:1 The basics § 12:2 Policies and trends—Trade and regulatory climate § 12:3 —Why register locally? § 12:4 —The futurehttp://www.pbookshop.com II. REGISTRATION REQUIREMENTS § 12:5 What is a mark? § 12:6 Which marks may be registered?—Trade mark for goods § 12:7 —Trade mark for services § 12:8 —Colored trade mark § 12:9 —Defensive trade mark § 12:10 —Series of trade marks § 12:11 What cannot be registered? § 12:12 —Immoral, deceptive or scandalous § 12:13 —Identical and similar trade marks § 12:14 —Nominative or descriptive marks § 12:15 —Marks with unauthorized content § 12:16 —Marks with prohibited content cv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 12:17 Who can register?—Proprietor or user § 12:18 —Authorized agent § 12:19 —Priority registrant § 12:20 —Joint owners or users § 12:21 —Proposed corporation

§ 12:53 —Right to register licensee as registered user § 12:54 —Rights of the proprietor § 12:55 —Rights of the licensee § 12:56 —Recordation of license

VII. RESOURCES § 12:57 In general CHAPTER 13. BOSNIA AND HERZEGOVINA

I. OVERVIEW § 13:1 The basics § 13:2 Policies and trends—Trade and regulatory climate § 13:3 —Why register locally? § 13:4 —The future § 13:5 Laws, rules and regulations

IV. INITIAL REGISTRATION § 13:26 Prescribed procedural steps—Search cvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 13:27 —Application § 13:28 —Action by the registrar § 13:29 —Publication and opposition

V. REGISTRATION FORMS § 13:30 Required information

VI. RESOURCES § 13:31 In general CHAPTER 14. BRAZIL

I. OVERVIEW § 14:1 The basics § 14:2 Policies and trends—Trade and regulatory climate § 14:3 —The future § 14:4 Laws, rules and regulations § 14:5 Recent administrative updates—Resolution No. 126/06 of August 10, 2006 § 14:6 —Resolution No. 127/06 of August 10, 2006 § 14:7 —Resolution No. 128/06 of August 10, 2006 § 14:8 —Resolution No. 144/07 of April 18, 2007 § 14:9 —Resolution No. 274/11 of November 24, 2011

II. REGISTRATION REQUIREMENTS § 14:10 What is a mark? § 14:11 Which marks may be registered—Trademarks for goods § 14:12 —Trademarks for services § 14:13 —Collective trademark § 14:14 —Certicationhttp://www.pbookshop.com trademark § 14:15 What cannot be registered—Identical or similar, and deceptive trademarks § 14:16 —Marks with unauthorized content § 14:17 —Descriptive marks § 14:18 —Names, symbols of events § 14:19 —Deceptive and immoral marks § 14:20 —Colors § 14:21 Who can register—Proprietor or user § 14:22 —Priority registrant § 14:23 —Joint owners or users § 14:24 —Proposed corporations

III. TRADEMARK REGISTER § 14:25 Where the trademark is registered: Trademark Register cviii Table of Contents

§ 14:26 Requirement of distinctiveness § 14:27 Exclusive use rights § 14:28 Enforcement

IV. INITIAL REGISTRATION § 14:29 Procedural timeline—Search § 14:30 —Application § 14:31 —Review § 14:32 — —Action by the Patent Oce § 14:33 — —Payment of fees § 14:34 — —Compliance § 14:35 —Registration § 14:36 — —Publication § 14:37 — —Opposition § 14:38 — — —Rebuttal § 14:39 — —Decision on opposition/examination § 14:40 — —Allowance, grant and issuance of certicate § 14:41 Government fees

V. REGISTRATION FORMS § 14:42 Information checklist § 14:43 Power of Attorney form § 14:44 Application for registration of trademark (initial registration form) § 14:45 Contract of Assignment (Deed of Assignment)

VI. POST-REGISTRATION § 14:46 Renewal of registration—Duration of protection § 14:47 —Renewal before expiration § 14:48 —Renewal after expiration § 14:49 —Reinstatement § 14:50 Alterationhttp://www.pbookshop.com or modication—To a trademark § 14:51 —To goods and/or services § 14:52 —To name or address § 14:53 Cancellation of registration § 14:54 Assignments § 14:55 —Recordation of assignment § 14:56 —Legal documents § 14:57 Licensees or registered users § 14:58 —Recordation of license § 14:59 —Rights of the parties § 14:60 —Cancellation of assignment or license

VII. RESOURCES § 14:61 In general cix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms CHAPTER 15. BRUNEI DARUSSALAM

II. REGISTRATION REQUIREMENTS § 15:6 What is a trade mark? § 15:7 Which marks may be registered?—Trademark for goods § 15:8 —Associated trademark § 15:9 —Collective mark § 15:10 —Series of trademarks § 15:11 —Certication trademark § 15:12 What cannot be registered? § 15:13 —Identical marks § 15:14 —Similar to earlier mark and likelihood of confusion § 15:15 —Unfair advantage and distinctive character of earlier mark § 15:16 —No infringement of copyright § 15:17 —Unauthorised use of royal arms etc § 15:18 —Well-known trade marks and protection under paris convention § 15:19 —Marks with prohibited matters § 15:20 —Oences committed by partnership and bodies corporate § 15:21 Who can register?—Proprietor or user § 15:22 —Recognition and register of trade mark agents

III. TRADEMARK REGISTER § 15:23 Where is the trademark registered?—Trade marks register § 15:24 —Exclusivehttp://www.pbookshop.com rights conferred by registered trade mark

§ 15:36 —Amendment of application § 15:37 —Acceptance of application § 15:38 —Publication of application § 15:39 —Certicate of registration § 15:40 —Duration of registration § 15:41 —Opposition proceedings § 15:42 —Opposition hearing § 15:43 —Entry and issuance of certicate

V. REGISTRATION FORMS § 15:44 Information checklist § 15:45 Authorization of agent (power of attorney) Form TM-POA § 15:46 Form TM-POA: Authorization of agent (power of attorney) § 15:47 Form TM 1 Brunei Darussalam Trade Marks Act application to register a trade mark under sections 33 to 35 and rules 13 and 17 § 15:48 Form TM 2 Brunei Darussalam Trade Marks Act application for additional classes under rule 19(4) § 15:49 Form TM 3 Brunei Darussalam Trade Marks Act request to the registrar for a statement of grounds of decision under rules 24(6) and 64(2) § 15:50 Form TM 4 Brunei Darussalam Trade Marks Act notice of opposition section 39(2) and rule 29(1) section 40(3) and rule 23(2) section 45 and rule 53(3) rule 42(2)(a) rst schedule paragraph 10 of the act and rule 56(3) second schedule paragraph 9 of the act and rule 57(3) § 15:51 Form TM 5 Brunei Darussalam Trade Marks Act form for counter-statement under rules 29(2) and 55(3) § 15:52 Form TM 6 Brunei Darussalam Trade Marks Act request for an extension of time on an application under rule 68(2) § 15:53 Form TM 7 Brunei Darussalam Trade Marks Act renewal of trade mark registration under section 44 and rule 48 and rule 49 § 15:54 Form TMhttp://www.pbookshop.com 8 Brunei Darussalam Trade Marks Act request to divide an application under section 42, rule 15(1) and rule 17(2) § 15:55 Form TM 9 Brunei Darussalam Trade Marks Act request for the restoration and renewal of a registration removed from the register because of non-payment of the renewal fee under section 44(5) and rule 50 § 15:56 Form TM 11 Brunei Darussalam Trade Marks Act application to register a change of proprietor under section 26 and rule 52(1)(a) § 15:57 Form TM 12 Brunei Darussalam Trade Marks Act request to merge either applications or registrations under section 42 and rule 16 § 15:58 Form TM 13 Brunei Darussalam Trade Marks Act request to change the details of an application or a registration under sections 40(2) and 61(4) and rules 14(3), 22(1) and 38 § 15:59 Form TM 14 Brunei Darussalam Trade Marks Act notice to surrender a registration under section 46 and rule 54(1)(a) cxi K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 15:60 Form TM 15 Brunei Darussalam Trade Marks Act notice of a partial surrender of the specication of goods or services for which the mark is registered under section 46 and rule 54(1)(b) § 15:61 Form TM 16 Brunei Darussalam Trade Marks Act application to record or cancel a registrable transaction or memorandum relating to a trade mark other than an assignment or licence under section 26 and rule 36 and rule 52(1)(d) and (e) § 15:62 Form TM 17 Brunei Darussalam Trade Marks Act request for alteration of a registered mark under section 45 and rule 53(1) § 15:63 Form TM 19 Brunei Darussalam Trade Marks Act application to intervene in proceedings for the revocation, invalidation or rectication of a registration under sections 47, 48 and 61 and rule 55(5) § 15:64 Form TM 20 Brunei Darussalam Trade Marks Act request for information about applications and registered marks under section 63 and rule 43 § 15:65 Form TM 21 Brunei Darussalam Trade Marks Act request for a certied copy under section 63(3)(b) and rule 41 § 15:66 Form TM 22 Brunei Darussalam Trade Marks Act request to appoint or change an agent or to enter or change an address for service under section 61(4) and rules 9(3) and 38(2) § 15:67 Form TM 23 Brunei Darussalam Trade Marks Act ling of regulations governing the use of collective or certication marks under rst schedule paragraph 5 and second schedule paragraph 6 of the act and rule 56(2) § 15:68 Form TM 24 Brunei Darussalam Trade Marks Act application to amend the regulations governing the use of collective or certication marks under rst schedule paragraph 10 and second schedule paragraph 11 of the act and rule 57(1) § 15:69 Form TM 25 Brunei Darussalam Trade Marks Act application to register a licensee under section 26 and rule 52(1)(b) § 15:70 Form TM 26 Brunei Darussalam Trade Marks Act application to remove or amend the recordal of a licence under section 26 and rule 52(1)(c) § 15:71 Form TMhttp://www.pbookshop.com 27 Brunei Darussalam Trade Marks Act form for publication § 15:72 Form TM 28 Brunei Darussalam Trade Marks Act notice to the registrar of attendance at hearing under section 69(1) and rule 30(3) § 15:73 Form TM 29 Brunei Darussalam Trade Marks Act counter- statement to notice of opposition in respect of collective or certication marks under rule 56(4) § 15:74 Form TM 30 Brunei Darussalam Trade Marks Act notice to the registrar of attendance at hearing in respect of a collective or certication mark under rule 56(4) § 15:75 Form TM 31 Brunei Darussalam Trade Marks Act certicate issued under section 41 and rule 34 § 15:76 Form TM 32 Brunei Darussalam Trade Marks Act application to register a collective mark or certication mark under rst schedule, second schedule of the act and rule 56(1) cxii Table of Contents

VI. POST-REGISTRATION § 15:77 Renewal of registration—Duration of protection § 15:78 —Renewal of registration § 15:79 —Renewal of registration § 15:80 —Delayed renewal and removal of registration § 15:81 —Restoration of registration § 15:82 Alteration of registered trade mark—Alteration of registered trade mark § 15:83 Revocation, invalidation, rectication and cancellation § 15:84 —Procedure on application for revocation, declaration of invalidity and rectication of the register § 15:85 Assignments—Assignment of registered trade mark § 15:86 —Right to assign § 15:87 —Rights of licensee in case of infringement § 15:88 —Rights of exclusive licensee

VII. RESOURCES § 15:89 In general CHAPTER 16. REPUBLIC OF BULGARIA

I. OVERVIEW § 16:1 The basics § 16:2 Policies and trends § 16:3 Why register locally? § 16:4 The future

II. REGISTRATION REQUIREMENTS § 16:5 What is a mark? § 16:6 Which markshttp://www.pbookshop.com may be registered? § 16:7 What cannot be registered? § 16:8 Grounds for opposition § 16:9 Who can register? § 16:10 Who can register—International registrations

III. TRADEMARK REGISTER § 16:11 Bulgarian Patent Oce § 16:12 Filing methods § 16:13 Trademark Register § 16:14 Single versus multi-class applications § 16:15 Exclusive use rights § 16:16 —Limitation on exclusive use rights § 16:17 Exhaustion of right to mark § 16:18 Jointly held right to a mark cxiii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 16:19 Indication of registration § 16:20 Duration of registration § 16:21 Infringement; enforcement; remedies

IV. INITIAL REGISTRATION § 16:22 Procedural timeline—Search and advice § 16:23 —Application § 16:24 —Filing receipt/serial number § 16:25 —Examination as to form § 16:26 —Publication of the application § 16:27 —Observations by third parties § 16:28 — —Opposition against registration § 16:29 —Registration § 16:30 Trademark processing fees (in BGN) § 16:31 Other service fees (in BGN)

V. REGISTRATION FORMS § 16:32 In general § 16:33 Information checklist § 16:34 Power of Attorney form § 16:35 Application for registration of a trademark

VI. POST-REGISTRATION § 16:36 Maintenance and renewal of registration—Duration of protection § 16:37 —Renewal before expiration of the protection § 16:38 —Renewal after expiration of the protection § 16:39 —Renewal of international registrations § 16:40 —Reinstatement § 16:41 Alteration or modication—To a trademark § 16:42 —To goods and/or services § 16:43 —To namehttp://www.pbookshop.com or address § 16:44 Revocation of registration § 16:45 Cancellation of registration § 16:46 Transfer of a mark § 16:47 Mark licensing

VII. RESOURCES § 16:48 In general CHAPTER 17. CAMBODIA

I. OVERVIEW § 17:1 The basics § 17:2 Policies and trends—Trade and regulatory climate cxiv Table of Contents

§ 17:3 —Why register locally? § 17:4 —The future § 17:5 Laws, rules and regulations

IV. INITIAL REGISTRATION § 17:24 Procedural timeline—Application § 17:25 —Review § 17:26 —Registrationhttp://www.pbookshop.com § 17:27 —Opposition V. REGISTRATION FORMS § 17:28 Information checklist § 17:29 Common form requirements § 17:30 Authorization of agent (power of attorney) § 17:31 Application for registration

VI. POST-REGISTRATION § 17:32 Renewal of registration—Duration of protection § 17:33 —Suspension for failure to renew § 17:34 —Restoration § 17:35 Alteration or rectication—Removal for non-use cxv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 17:36 —Nullication of registration § 17:37 Assignment § 17:38 Licensing

VII. RESOURCES § 17:39 In general CHAPTER 18. CANADA

I. OVERVIEW § 18:1 The basics § 18:2 Policies and trends § 18:3 —Trade and regulatory climate § 18:4 —Why register locally? § 18:5 —The future § 18:6 Laws, rules and regulations

II. LEGAL FRAMEWORK § 18:7 In general § 18:8 Federal law § 18:9 Provincial and territorial law § 18:10 Trade names § 18:11 International law

III. TRADEMARKS § 18:12 Distinctiveness § 18:13 Trademarks § 18:14 Trade names § 18:15 Rights through use § 18:16 Benets ofhttp://www.pbookshop.com registration § 18:17 Adoption of trademarks § 18:18 Use § 18:19 —Use with wares § 18:20 —Use with services § 18:21 Making known

§ 18:29 —Certication marks § 18:30 —Collective mark § 18:31 —Color mark § 18:32 Trademarks registrable only in certain circumstances § 18:33 —Names § 18:34 —Descriptive terms § 18:35 —Misdescriptive terms § 18:36 —Acquired distinctiveness § 18:37 —Not without distinctive character § 18:38 —Trade names § 18:39 —Associated trademarks § 18:40 —Prohibited marks § 18:41 Unregistrable trademarks § 18:42 —Something other than a trademark § 18:43 —Non-visual marks § 18:44 —Generic terms § 18:45 —Scandalous, obscene, or immoral marks § 18:46 —Marks that designate kind, quality, quantity, destination, value, or place of origin § 18:47 —Designation of a plant variety § 18:48 —Geographical indications § 18:49 —Confusing marks § 18:50 Bases for registration § 18:51 Entitlement to registration § 18:52 —Proprietor or user § 18:53 —Authorized agent § 18:54 —Priority § 18:55 —Joint owners or users § 18:56 —Proposed corporation

V. TRADEMARK REGISTER § 18:57 Register http://www.pbookshop.com § 18:58 Distinctiveness § 18:59 Exclusive rights § 18:60 Limitations on exclusive use § 18:61 Enforcement § 18:62 Validity

§ 18:70 Response and reexamination § 18:71 Publication § 18:72 Opposition § 18:73 Registration § 18:74 Procedural timeline § 18:75 Request for publication of ocial notice § 18:76 Government fee schedule

VII. REGISTRATION FORMS § 18:77 In general § 18:78 Forms § 18:79 —Application for registration of a trademark § 18:80 —Application for registration of a certication mark § 18:81 —Application for amendment of a registration otherwise than to extend the statement of wares or services § 18:82 —Application for amendment of a registration to extend the statement of wares or services § 18:83 Information checklist

VIII. POST-REGISTRATION § 18:84 Renewal—Duration § 18:85 —Renewal before expiration § 18:86 —Renewal after expiration § 18:87 —Reinstatement § 18:88 —Advertisement of renewal § 18:89 Amendment—Action by registrar at request of owner § 18:90 —Change in classication by registrar § 18:91 —Correction of error or omission by federal court § 18:92 —Violation of condition § 18:93 —Loss of exclusive use § 18:94 —Miscellaneous grounds for amendment § 18:95 Alterationhttp://www.pbookshop.com or modications—Obvious errors § 18:96 —Amendment to trademark § 18:97 —Amendment to wares or services § 18:98 —Amendment to name or address § 18:99 Use of a trademark § 18:100 —As a trademark § 18:101 —As registered § 18:102 —Marking § 18:103 —Multiple trade-marking § 18:104 —French language considerations in quebec § 18:105 Cancellation of registration § 18:106 —Action by registrar § 18:107 —At request of owner § 18:108 —Action by court—Invalidity § 18:109 — —For violation of condition cxviii Table of Contents

§ 18:110 — —Loss of exclusive use § 18:111 — —Miscellaneous grounds of amendment § 18:112 Removal of trade-mark for non-use § 18:113 —Grounds for removal § 18:114 —Time of application § 18:115 —Notication § 18:116 —Evidence § 18:117 —Decision § 18:118 —Opposition § 18:119 —Removal and restoration § 18:120 Assignment—Rights to assignment § 18:121 —Recordation of assignment § 18:122 —Legal documents § 18:123 Licensees or registered users § 18:124 —Right to grant use § 18:125 —Rights of the proprietor § 18:126 —Rights of the licensee § 18:127 —Recordal of the license § 18:128 —Other instruments

IX. VIOLATION AND ENFORCEMENT OF TRADEMARK RIGHTS § 18:129 Violation of trademark rights—Infringement § 18:130 —Depreciation of goodwill § 18:131 —Passing o § 18:132 —Unfair competition § 18:133 —Comparative advertising § 18:134 —Violation of prohibited marks § 18:135 —Importation § 18:136 Enforcement of trademark rights—Parties and jurisdiction § 18:137 —Remedieshttp://www.pbookshop.com § 18:138 —Imported goods § 18:139 —Criminal sanctions

X. RESOURCES § 18:140 In general CHAPTER 19. CHILE

I. OVERVIEW § 19:1 The basics § 19:2 Policies and trends—Trade and regulatory climate § 19:3 Why register locally? § 19:4 Laws, rules and regulations cxix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms II. REGISTRATIONS REQUIREMENTS § 19:5 What is a mark? § 19:6 Which marks may be registered—Trademarks for goods § 19:7 —Trademarks for services § 19:8 —Trademarks for commercial establishments § 19:9 —Trademarks for industrial establishment § 19:10 —Color marks § 19:11 What cannot be registered—Identical and similar marks § 19:12 —Marks with unauthorized content § 19:13 —Generic or descriptive marks § 19:14 —Marks with prohibited content § 19:15 Who may register—Proprietor or user § 19:16 —Authorized agent § 19:17 —Priority registrant

III. TRADEMARK REGISTER § 19:18 Where the trademark is registered: Trademark Register § 19:19 Requirement of distinctiveness § 19:20 Exclusive use rights § 19:21 Enforcement § 19:22 Duration

IV. INITIAL REGISTRATION § 19:23 Procedural timeline—Search and advice § 19:24 —Application § 19:25 — —Agent § 19:26 — —Payment of fees § 19:27 —Review § 19:28 — —Action by the Trademark Oce § 19:29 — —Compliance § 19:30 —Registrationhttp://www.pbookshop.com § 19:31 — —Publication § 19:32 — —Opposition § 19:33 — —Decision on opposition/examination § 19:34 — —Entry and issuance of certicate § 19:35 —Chart of completion times and ling fees

V. REGISTRATION FORMS § 19:36 Information checklist § 19:37 Common form requirements § 19:38 Power of Attorney form § 19:39 Application for registration of trademark (initial registration form)

VI. POST-REGISTRATION § 19:40 Renewal of registration—Duration of protection cxx Table of Contents

§ 19:41 —Renewal before expiration § 19:42 —Renewal after expiration § 19:43 Alteration or modication—To a trademark § 19:44 —To name or address § 19:45 Cancellation § 19:46 Use of ® § 19:47 Assignments § 19:48 —Recordation of assignment § 19:49 —Legal documents § 19:50 Licensees or registered users § 19:51 —Recordation of license § 19:52 —Rights of the parties § 19:53 —Cancellation of assignment or license § 19:54 Contract of Assignment (Deed of Assignment)

VII. RESOURCES § 19:55 In general CHAPTER 20. CHINA

II. REGISTRATION REQUIREMENTS § 20:7 What is a mark? § 20:8 Which markshttp://www.pbookshop.com may be registered?—Trademark for goods § 20:9 —Trademark for services § 20:10 —Collective trademark § 20:11 —Certication trademark § 20:12 — —Color combination trademark § 20:13 — —Trademark in color/trademark with color claimed § 20:14 What cannot be registered? § 20:15 —Deceptive marks § 20:16 —Marks with prohibited matters § 20:17 —Marks with prohibited words or representations § 20:18 —Marks lacking distinctiveness § 20:19 —Three dimensional marks lacking distinctiveness § 20:20 Who can register?—Proprietor or user § 20:21 —Priority registrant § 20:22 —Authorized agent cxxi K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms III. TRADEMARK REGISTER § 20:23 Where is the trademark registered?—Trademarks register § 20:24 —Requirement of distinctiveness § 20:25 —International registrations § 20:26 —Exclusive use rights § 20:27 —Quality assurance § 20:28 —Enforcement

IV. INITIAL REGISTRATION § 20:29 Procedural timeline—Search and advice § 20:30 —Application § 20:31 —Examination § 20:32 —Registration

V. REGISTRATION FORMS § 20:33 Information checklist § 20:34 Common form requirements § 20:35 Initial registration documents § 20:36 Authorization of Agent (Power of Attorney) Form TM-8 § 20:37 Application for Trademark Registration Form TM-2 § 20:38 Application for Trademark Registration

§ 20:59 —Registration of assignment § 20:60 Licenses or registered use—Right to grant use § 20:61 —Recordation § 20:62 Post-registration documents—Application for Assignment of a Pending/Registered Trade Mark Form Form TM-11 § 20:63 —Application for Renewal of Trademark Registration Form No. 09 § 20:64 —Application for Change of the Name/Address of Trademark Applicant/Registrant Form No. 04

VII. RESOURCES § 20:65 In general CHAPTER 21. COLOMBIA

I. OVERVIEW § 21:1 The basics § 21:2 Policies and trends—Trade and regulatory climate § 21:3 —Why register locally? § 21:4 —The future

II. REGISTRATION REQUIREMENTS § 21:5 In general § 21:6 What is a mark? § 21:7 Which marks may be registered?—Trademark for goods § 21:8 —Service mark § 21:9 —Colored marks § 21:10 —Advertising slogans (trade slogans) § 21:11 —Collective trademarks § 21:12 —Certication marks § 21:13 —Trade names § 21:14 —Labelshttp://www.pbookshop.com or emblems (trade emblems) § 21:15 —Geographical indications—Appellations of origin § 21:16 — —Indications of origin § 21:17 —Well-known distinctive signs § 21:18 What cannot be registered? § 21:19 Who can register?

§ 21:26 —Marking

IV. INITIAL REGISTRATION § 21:27 In general § 21:28 Procedural timeline—Application § 21:29 —Trademark oce review/initial examination § 21:30 —Publication § 21:31 —Opposition and entry § 21:32 —Registration § 21:33 —Legal actions

V. REGISTRATION FORMS § 21:34 Power of attorney § 21:35 Power of attorney form § 21:36 Initial registration § 21:37 Initial registration form

VI. POST-REGISTRATION § 21:38 Renewal of registration (d. 486, article 152-153)—Duration of protection § 21:39 —Renewal before expiration § 21:40 —Renewal after expiration § 21:41 —Reinstatement § 21:42 Alteration or modication (d. 486, article 143) § 21:43 Cancellation of registration (d. 486, article 165-170) § 21:44 Assignments (d. 486, article 161-164) § 21:45 Licensees or registered users (d. 486, article 162.-164)

VII. RESOURCES § 21:46 In generalhttp://www.pbookshop.com CHAPTER 22. COSTA RICA

I. OVERVIEW § 22:1 The basics § 22:2 Policies and trends—Trade and regulatory climate § 22:3 —Why register locally § 22:4 —The future § 22:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 22:6 What is a mark? § 22:7 Which marks may be registered—Collective trademark cxxiv Table of Contents

§ 22:8 —Certication trademark § 22:9 What cannot be registered? § 22:10 Who can register? § 22:11 Who can register—Foreign applicants § 22:12 —Right of priority § 22:13 —Precedence to obtain registration

IV. INITIAL REGISTRATION § 22:20 Procedural timeline—Search and advice § 22:21 —Application § 22:22 — —Serial number § 22:23 — —Examination of requirements § 22:24 — —Examination of the mark § 22:25 — —Publication § 22:26 — —Opposition to registration § 22:27 — —Registration

V. REGISTRATION FORMS § 22:28 Registration forms—Application for registration of trademark (initial registration form) § 22:29 —Power of attorney § 22:30 Information checklist § 22:31 Sample applicationhttp://www.pbookshop.com form § 22:32 Sample power of attorney form VI. POST-REGISTRATION § 22:33 Renewal of registration—Duration of protection § 22:34 —Renewal before expiration § 22:35 —Renewal after expiration § 22:36 Alteration or modication—Amendment § 22:37 —Limitation of goods or services § 22:38 —Division of the registration § 22:39 —Change of owners name § 22:40 Cancellation of registration—Cancellation because of generic term § 22:41 —Cancellation for non-use § 22:42 Assignments § 22:43 License of use cxxv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms VII. RESOURCES § 22:44 In general CHAPTER 23. CROATIA

I. OVERVIEW § 23:1 The basics § 23:2 Paris Convention policies and trends—Trade and regulatory climate § 23:3 —Why register locally? § 23:4 —The future § 23:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 23:6 What is a trademark? § 23:7 Which trademarks may be registered? § 23:8 —Trademark for goods § 23:9 —Trademark for services § 23:10 —Collective trademark § 23:11 —Certication trademark § 23:12 —3d trademarks § 23:13 What cannot be registered? § 23:14 —Identical or similar marks § 23:15 —Nominative or descriptive signs § 23:16 —Sign contrary to public order or morality § 23:17 —Sign not capable of being represented graphically § 23:18 —Sign that suggests earlier designations of origin or geographical indications § 23:19 —Sign that suggests a false geographical indication for wine or spirits § 23:20 —Sign that contains a ag, coats of arms or other insignia § 23:21 Who can register?—Ownerhttp://www.pbookshop.com or user § 23:22 —Authorized agent § 23:23 —Priority registrant

III. TRADEMARK REGISTER § 23:24 Where is the trademark registered?—Trademark register § 23:25 —Exclusive rights of use § 23:26 —Enforcement § 23:27 —Statute of limitation

IV. INITIAL REGISTRATION § 23:28 Procedural timeline—Search and advice § 23:29 —Application § 23:30 —Review cxxvi Table of Contents

§ 23:31 —Registration

V. REGISTRATION FORMS § 23:32 Information checklist § 23:33 Common form requirements § 23:34 Application for registration of trademark § 23:35 Application for registration of modications to a trademark

VII. RESOURCES § 23:49 In general CHAPTER 24. CYPRUS

I. OVERVIEW § 24:1 The basicshttp://www.pbookshop.com § 24:2 Trade and regulatory climate—Policies and trends § 24:3 —Why register locally? § 24:4 —The future § 24:5 Laws, rules and regulations

§ 24:14 —Similar mark § 24:15 —Nominative or descriptive marks § 24:16 —Marks with prohibited content § 24:17 —Marks that are scandalous, immoral or contrary to public policy § 24:18 Who can register?—Authorized agent (advocate) § 24:19 —Priority registration

IV. INITIAL REGISTRATION § 24:26 Procedural timeline—Search and advice § 24:27 —Application § 24:28 —Review § 24:29 —Action by the registrar § 24:30 —Payment of fees § 24:31 —Compliance § 24:32 —Review § 24:33 —Registration § 24:34 —Opposition § 24:35 —Decision on opposition

V. REGISTRATION FORMS § 24:36 Information checklist § 24:37 Common form requirements http://www.pbookshop.com VI. INITIAL REGISTRATION DOCUMENTS § 24:38 Application for registration of mark—Use of form § 24:39 —Information required § 24:40 —Attachments to form § 24:41 —Forms used

§ 24:48 —Legal documents § 24:49 Licensees or registered users § 24:50 —Record of licence § 24:51 —Rights of the registered user CHAPTER 25. DENMARK

I. OVERVIEW § 25:1 The basics § 25:2 Policies and trends—Trade and regulatory climate § 25:3 —Why register locally? § 25:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 25:5 What is a mark? § 25:6 Which marks may be registered?—Trademark for goods § 25:7 —Trademark for services § 25:8 —Collective and certication trademarks § 25:9 —Colored trademark § 25:10 What cannot be registered? § 25:11 Who can register?

III. TRADEMARK REGISTER § 25:12 Where is the trademark registered?—Trademark register § 25:13 —Exclusive use rights § 25:14 —Limitation on exclusive use rights § 25:15 —Enforcement § 25:16 —Validity IV. INITIAL REGISTRATIONhttp://www.pbookshop.com § 25:17 In general V. REGISTRATION FORMS § 25:18 Power of attorney forms § 25:19 Application for registration of trademark (primary application form) § 25:20 List of goods for the primary application form § 25:21 Application for registration of trademarkcollective mark § 25:22 List of goods for the collective mark application form § 25:23 Notice of opposition § 25:24 Request to amend a trademark application or registration § 25:25 Assignment recordation form/cover sheet § 25:26 Designation of domestic representative § 25:27 Notication of change of name/address/address for service cxxix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 25:28 Notice of withdrawal of an application, notice or request § 25:29 Payment of trademark registration fee

VI. POST-REGISTRATION § 25:30 Renewal of registration—Duration of protection § 25:31 —Renewal before expiration § 25:32 —Renewal § 25:33 Amendment—Action by registrar at request of owner: § 25:34 Cancellation of registration § 25:35 Removal of trademark for non-use—Grounds for removal § 25:36 Assignments § 25:37 Licensees or registered users

VII. RESOURCES § 25:38 In general CHAPTER 26. ECUADOR

II. REGISTRATION REQUIREMENTS § 26:9 What is ahttp://www.pbookshop.com mark? § 26:10 Which marks may be registered? § 26:11 What cannot be registered? § 26:12 Who can register?—Non-user § 26:13 —Proprietor § 26:14 —Citizenship, residency, domicile of applicant/title holder § 26:15 —Title holder § 26:16 —General or special attorney-in-fact § 26:17 —Authorized agent § 26:18 —Joint title holders § 26:19 —Proposed corporation § 26:20 —Signature of attorney

III. TRADEMARK REGISTER § 26:21 Where is the trademark registered? cxxx Table of Contents

§ 26:22 Trademark register—Requirement of distinctiveness § 26:23 —Exclusive use rights § 26:24 —Limitation on exclusive use rights

V. REGISTRATION FORMS § 26:32 In general § 26:33 Application for registration of trademark (initial registration form) § 26:34 Notication of change of name/address/address for service § 26:35 Power of attorney

VI. POST-REGISTRATION § 26:36 Duration of protection § 26:37 Renewal before expiration § 26:38 Renewal after expiration § 26:39 Reinstatement § 26:40 Amendment—Action by registrar at request of owner § 26:41 —Change in classication by registrar § 26:42 —Miscellaneous grounds for post-registration amendment § 26:43 Alteration or modication—Obvious errors § 26:44 —To trademark § 26:45 —To goods and/or services § 26:46 —To namehttp://www.pbookshop.com or address § 26:47 Cancellation of registration—Action by registrar § 26:48 —At request of owner § 26:49 —Loss of exclusive use § 26:50 Assignments—Rights to assign § 26:51 —Recordation of assignment § 26:52 —Legal documents § 26:53 Licensees or registered users—Right to grant use § 26:54 —Rights of the proprietor § 26:55 —Rights of the licensee § 26:56 —Recordation of licensee

VII. RESOURCES § 26:57 In general cxxxi K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms CHAPTER 27. EGYPT

I. OVERVIEW § 27:1 The basics § 27:2 Policies and trends—Trade and regulatory climate § 27:3 —Why register locally? § 27:4 —The future § 27:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 27:6 What is a mark? § 27:7 Which marks may be registered?—Trademark for goods § 27:8 —Service mark § 27:9 —Collective mark § 27:10 —Certication mark § 27:11 —Coloured mark § 27:12 —Trade designations § 27:13 What cannot be registered?—Identical and similar marks § 27:14 —Nominative and description marks § 27:15 —Marks with unauthorized content § 27:16 —Marks with prohibited content § 27:17 Who can register?—Proprietor or user § 27:18 —Priority registrant

III. TRADEMARK REGISTER § 27:19 Where is the trademark registered?—Registration department § 27:20 —The trademark register § 27:21 —Classication § 27:22 —Rights conferred § 27:23 —Remedieshttp://www.pbookshop.com IV. INITIAL REGISTRATION § 27:24 Procedural timeline—Search and advice § 27:25 —Application for registration § 27:26 —Examination § 27:27 —Acceptance and announcement § 27:28 —Decision with no time limit § 27:29 —Registration post publication

V. POST REGISTRATION § 27:30 Renewal of registration—Duration of protection and renewal § 27:31 —Renewal after expiry § 27:32 —Alteration or modication § 27:33 —Cancellation cxxxii Table of Contents

§ 27:34 —Reinstatement § 27:35 —Assignments § 27:36 —License

VI. TRADEMARK PROCESSING FEES § 27:37 In general

VII. REGISTRATION FORMS § 27:38 Registration forms § 27:39 Initial registration forms

VIII. RESOURCES § 27:40 In general CHAPTER 28. EL SALVADOR

I. OVERVIEW § 28:1 The basics § 28:2 Policies and trends—Trade and regulatory climate § 28:3 —Why register locally? § 28:4 —The future § 28:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 28:6 What is a mark? § 28:7 Which marks may be registered? § 28:8 What cannot be registered? § 28:9 Who can register?

III. INITIAL REGISTRATIONhttp://www.pbookshop.com

§ 28:10 In general

IV. REGISTRATION FORMS § 28:11 In general

§ 28:18 Alteration or modication—Obvious errors § 28:19 —To trademark § 28:20 —Goods and/or services § 28:21 —To name or address § 28:22 Cancellation of registration—Action by registrar § 28:23 —At request of owner § 28:24 —Action by court § 28:25 Removal of trademark for non-use § 28:26 Assignments—Rights to assign § 28:27 —Recordation of assignment § 28:28 —Legal documents § 28:29 Licensees or registered users—Right to grant use § 28:30 —Rights of the proprietor § 28:31 —Rights of the licensee § 28:32 —Recordation of license

VI. RESOURCES § 28:33 In general CHAPTER 29. EUROPEAN COMMUNITY

I. OVERVIEW § 29:1 The basics § 29:2 Background § 29:3 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 29:4 What is a mark and which marks may be registered? § 29:5 Collective marks § 29:6 Certication marks § 29:7 What cannothttp://www.pbookshop.com be registered—Marks which are not registrable in view of relative grounds § 29:8 —Marks which are not registrable in view of inherent grounds § 29:9 Who can register?

III. TRADE MARK REGISTER § 29:10 Where is the trade mark registered and what does it contain? § 29:11 Exclusive use rights § 29:12 Enforcement

IV. INITIAL REGISTRATION § 29:13 Search § 29:14 Application § 29:15 Seniority cxxxiv Table of Contents

§ 29:16 Exhibition priority § 29:17 O.H.I.M. review § 29:18 Amendment of a trade mark application § 29:19 Opposition § 29:20 Registration/duration/renewal § 29:21 Timings and ocial fees

V. APPLICATION DOCUMENTS § 29:22 Application form § 29:23 Power of attorney § 29:24 Certied copy § 29:25 Fees § 29:26 Documents—CTM Application Form § 29:27 —CTM Opposition Form

VI. POST-REGISTRATION § 29:28 Renewal § 29:29 Amendment of a trade mark registration § 29:30 Removal of trade marks for non-use § 29:31 Removal for other reasons § 29:32 Acquiescence § 29:33 Infringement § 29:34 Limitation on the eects of a community trade mark § 29:35 Exhaustion § 29:36 Conversion § 29:37 Assignment § 29:38 Licencing

VII. RESOURCES § 29:39 In general CHAPTER 30.http://www.pbookshop.com EUROPEAN TRADE MARK LAW

I. INTRODUCTION § 30:1 In general § 30:2 National trade mark protection § 30:3 Madrid Agreement

II. COMMUNITY TRADE MARK AND HARMONIZATION § 30:4 In general § 30:5 Harmonization directive

III. COMMUNITY TRADE MARK § 30:6 Nature cxxxv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 30:7 Scope § 30:8 Applications § 30:9 Oppositions § 30:10 Conversion procedure § 30:11 Priority § 30:12 Seniority § 30:13 Infringement actions § 30:14 Remedies § 30:15 Renewal

IV. MADRID PROTOCOL § 30:16 In general § 30:17 Applications

V. NATIONAL RIGHTS AND THE COMMUNITY TRADE MARK § 30:18 In general

VI. PIRACY AND COUNTERFEITING § 30:19 In general

VII. ENLARGEMENT § 30:20 Accession of new member states § 30:21 Accession of bulgaria and romania CHAPTER 31. FINLAND

I. OVERVIEW § 31:1 The basicshttp://www.pbookshop.com § 31:2 Policies and trends—Trade and regulatory § 31:3 —Why register locally? § 31:4 —The future § 31:5 Laws, rules and regulations

§ 31:12 — —Marks that are “likely to deceive the public” § 31:13 — —“generic” marks § 31:14 —Relative grounds for refusal of trademark registration § 31:15 — —Marks that contain ags or coats of arms of states or municipalities § 31:16 — —Marks that may be confused with a prior registered or established trademark § 31:17 — —Marks that may be confused with earlier distinctive trade names § 31:18 — —Marks that may be confused with marks already in use § 31:19 — —Marks that contain an existing trade name § 31:20 — —Marks that contain a persons name or portrait § 31:21 — —Marks that infringe on rights that pertain to copyrights, photographs or models § 31:22 — —Marks that may be confused with registered names of plant species § 31:23 — —Marks that do not conform to Council Regulation No. 2081/92/EEC § 31:24 Who can register?—Proprietor § 31:25 —Foreign applicants § 31:26 —Authorized agent § 31:27 —Priority registrant

III. TRADEMARK REGISTER § 31:28 Where is the trademark registered?—Trademark register § 31:29 —Requirement of distinctiveness § 31:30 —Exclusive use rights § 31:31 —Limitations on exclusive use rights § 31:32 —Enforcement § 31:33 —Validity IV. INITIAL REGISTRATIONhttp://www.pbookshop.com § 31:34 Procedural timeline V. REGISTRATION FORMS § 31:35 Application for registration of a trademark—Use of form § 31:36 —Application § 31:37 —Information required in the application § 31:38 —Appendices to the application

VI. POST-REGISTRATION § 31:39 Renewal of registration—Duration of protection § 31:40 —Renewal before expiration § 31:41 —Renewal after expiration § 31:42 —Reinstatement cxxxvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 31:43 Alteration or modication—Obvious errors § 31:44 —To trademark § 31:45 —To goods and/or services § 31:46 Removal of registration on request by the owner § 31:47 Forfeiture of trademark right and registration § 31:48 Nullication of registration § 31:49 Assignments—Rights to assign § 31:50 —Recording of assignment § 31:51 —Legal documents § 31:52 Licensees or registered users—Right to grant use § 31:53 —Rights of the proprietor § 31:54 —Rights of the licensee § 31:55 —Registration of license § 31:56 —Legal documents § 31:57 Pledging of trademarks—Right to grant use § 31:58 —Legal documents

VII. RESOURCES § 31:59 In general CHAPTER 32. FRANCE

I. OVERVIEW § 32:1 The basics § 32:2 Policies and trends—Trade and regulatory climate § 32:3 —Why register locally? § 32:4 Laws, rules and regulations § 32:5 —The future

II. REGISTRATION REQUIREMENTS § 32:6 What is ahttp://www.pbookshop.com mark? § 32:7 Which marks may be registered?—Trademark for goods § 32:8 —Trademark for services § 32:9 —Collective marks § 32:10 —Collective certication marks § 32:11 What cannot be registered? § 32:12 —Identical and similar marks § 32:13 —Marks that are descriptive or devoid of distinctive character § 32:14 —Marks consisting of ags, emblems or other national symbols § 32:15 —Marks that are illegal or against public policy § 32:16 —Deceptive marks § 32:17 —Marks that conict with another type of prior intellectual property right § 32:18 Who can register?—Proprietor § 32:19 —Foreign applicants cxxxviii Table of Contents

§ 32:20 —Co-owners

III. TRADEMARK REGISTER § 32:21 Where is the trademark registered?—National institute of industrial property § 32:22 —Filing methods § 32:23 —Trademarks register § 32:24 —Single v. multi-class applications § 32:25 —Exclusive use rights § 32:26 —Infringement § 32:27 —Seizure § 32:28 —Customs

IV. INITIAL REGISTRATION § 32:29 Procedure—Search and advice § 32:30 —Application § 32:31 —Priority § 32:32 —Review § 32:33 —Publication § 32:34 —Oppositions § 32:35 —Observations by third parties § 32:36 —Post publication registration § 32:37 —Appeal procedure

V. GOVERNMENT OFFICIAL FEE SCHEDULE § 32:38 In general

VI. REGISTRATION FORMS § 32:39 In general § 32:40 Information required on the french trademark application form § 32:41 Additionalhttp://www.pbookshop.com information/documents required

§ 32:53 License

VIII. RESOURCES § 32:54 In general CHAPTER 33. GERMANY

I. OVERVIEW § 33:1 The basics § 33:2 Policies and trends—Trade and regulatory climate § 33:3 —Why register locally? § 33:4 —The future § 33:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 33:6 What is a mark? § 33:7 Which marks may be registered?—Trademark for goods § 33:8 —Trademark for services § 33:9 — —Collective mark § 33:10 — —Trade designations § 33:11 — —Colored trademark § 33:12 What cannot be registered? § 33:13 —Identical and similar marks § 33:14 —Nominative or descriptive marks § 33:15 —Marks with unauthorized content § 33:16 —Marks with prohibited content § 33:17 Who can register?—Proprietor or user § 33:18 —Authorized agent § 33:19 —Priority registrant

III. TRADEMARKhttp://www.pbookshop.com REGISTER § 33:20 Where is the trademark registered?—Trademarks register § 33:21 —Requirement of distinctiveness § 33:22 —Exclusive use rights § 33:23 —Enforcement

IV. INITIAL REGISTRATION § 33:24 Procedural timeline—Search and advice § 33:25 —Application § 33:26 —Review § 33:27 —Registration

V. REGISTRATION FORMS § 33:28 Information checklist—The applicant cxl Table of Contents

§ 33:29 —The mark § 33:30 —Agents and service § 33:31 Common form requirements—Printed forms § 33:32 —Service on patent oce § 33:33 Application for registration of trademark

VII. RESOURCES § 33:50 In general CHAPTER 34. GHANA

I. OVERVIEW § 34:1 Basics facts § 34:2 Policies andhttp://www.pbookshop.com trends § 34:3 —Why register locally? § 34:4 Law, rules, and regulations

III. TRADE MARK REGISTER § 34:12 Where is the trade mark registered?—Registry of trade marks cxli K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 34:13 —Register § 34:14 —Exclusive use rights and enforceability § 34:15 —Limitation on exclusive use rights § 34:16 —Validity

V. REGISTRATION FORMS § 34:27 In general § 34:28 Form of Authorisation of Agent in a Matter or Proceeding under Regulations 71 (2) (Form TM-No. 1) § 34:29 Application for Registration of Trade Mark in Part (Form TM-No. 2) § 34:30 Additional Representation of Trade Mark to Accompany Application for Registration (Form TM-No. 2(a)) § 34:31 Request for Statement of Grounds of Decision (Form TM-No. 3) § 34:32 Application for Registration of Certication Trade Mark under Section 36 (Form TM-No. 4) § 34:33 Notice of Opposition to Application of a Trade Mark (Form TM- No. 5) § 34:34 Form of Counter-Statement (Form TM-No. 6) § 34:35 Notice tohttp://www.pbookshop.com the Registrar of Attendance at Hearing (Form TM-No. 7) § 34:36 Fee for Registration of a Trade Mark (Form TM-No. 8) § 34:37 Renewal of Registration of Trade Mark (Form TM-No. 9) § 34:38 Additional Fee to Accompany Renewal Fee (Form TM-No. 9) within One Month after Advertisement of Non-Payment of Renewal Fee (Form TM-No. 10) § 34:39 Restoration of Trademark Removed from Register for Non- Payment of Fee (Form TM-No. 11) § 34:40 Application under Regulations 36 (2) for Extension of Time, in Accordance with Section 29 (4), for the Registration of the Name of a Corporation As Subsequent Proprietor of a Trade Mark in the Register (Form TM-No. 12) § 34:41 Joint Request to the Registrar by Registered Proprietor and Transferee to Register the Transferee as Subsequent Proprietor of Trade Marks Upon the Same Devolution of Title (Form TM- No. 13) cxlii Table of Contents

§ 34:42 Request to the Registrar to Register a Subsequent Proprietor of a Trade Mark or Trade Marks Upon the Same Devolution of Title (Form TM-No. 14) § 34:43 Declaration (Only to be Furnished when Requested by Registrar) in Support of the Statement of Case Accompanying Form TM-No. 13 or Form TM-No. 14 (Form TM-No. 15) § 34:44 Request for Alteration of Trade or Business Address in the Register of Trade Marks (Form TM-No. 16) § 34:45 Application to the Registrar under Section 23 (5) and Regulation 26 (2) to Dissolve the Association Between a Registered Trade Mark and (an) Other Registered Trade Mark(s) (Form TM-No. 17) § 34:46 Request for Correction of Clerical Error; or for Permission to Amend Application (Form TM-No. 18) § 34:47 Request to Enter Change of Name or Description of Registered Proprietor (or Registered User) of Trade Mark upon the Register (Form TM-No. 19) § 34:48 Application by Registered Proprietor of Trade Mark for the Cancellation of Entry thereof in the Register (Form TM-No. 20) § 34:49 Application by Registered Proprietor of Trade Mark to the Registrar to Strike Out Goods From Those for which the Trade Mark is Registered (Form TM-No. 21) § 34:50 Request by Registered Proprietor of a Trade Mark that a Disclaimer or Memorandum Relating Thereto May Be Registered (Form TM-No. 22) § 34:51 Application by Registered Proprietor under Section 35 for an Addition to or Alteration of a Registered Trade Mark Regulation 46 (1) (Form TM-No. 23) § 34:52 Application to the Registrar for the Rectication of the Register or the Removal of a Trade Mark from the Register (Form TM-No. 24) § 34:53 Application to the Registrar for Leave to Intervene in Proceedings Relating to the Rectication of the Register or the Removal of a Trade Mark from the Register (Form TM-No. 25) § 34:54 Request forhttp://www.pbookshop.com Search under Regulation 61 (1) (Form TM-No. 26) § 34:55 Request for Registrar's Preliminary Advice as to Distinctiveness or Capability of Distinguishing, by a Person Proposing to Apply for the Registration of a Trade Mark (Form TM-No. 27) § 34:56 Appeal From the Registrar to the Minister/Court (Form TM-No. 28) § 34:57 Request for General Certicate of the Registrar (including Certicate of Registration of a Trade Mark) (Form TM-No. 29) § 34:58 Application under Section 27 and Regulation 11 for Registration of An invented Word (or Words) in Part of the Register as a Defensive Trade Mark (Form TM-No. 30) § 34:59 Form of Request to the Registrar by a Registered Proprietor or a Registered User of a Trade Mark, or a Person About to Be So Registered, to Enter, Alter, or Substitute An Address for Service as Part of His Registration (Regulations 41 (2)) (Form TM-No. 31) cxliii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 34:60 Regulations for Governing the Use of Certication (Form TM-No. 32) § 34:61 Request for the Consent of the Minister to Alteration of the Deposited Regulations for the Use of a Certication Trade Mark (Form TM-No. 33) § 34:62 Application to the Minister for An Order Expunging or Varying An Entry in the Register Relating to a Certication Trade Mark or Varying the Deposited Regulations (Form TM-No. 34) § 34:63 Notice to the Minister under Paragraph 2 (2) of the First Schedule to the Act and Regulation 23 (1) of Opposition to An Application for Registration of a Certication Trade Mark (Form TM-No. 35) § 34:64 Form of Counter Statement in Reply to Notice to the Minister under Sub-Paragraph (2) of Paragraph 2 of the First Schedule to the Act and Regulation 23 (1) of Opposition to An Appliction for Registration of a Certication Trade Mark (Form TM-No. 36) § 34:65 Hearing by the Minister of An Opposition under Sub-Paragraph (2) of Paragraph 2 of the First Schedule to the Act and Regulation 23 to An Application for Registration of a Certication Trade Mark (Form TM-No. 37) § 34:66 Application for the Certicate of the Registrar under Section 22 (6) and Regulation 39 (1) with Reference to a Proposed Assignment of a Registered Trade Mark (Form TM-No. 38) § 34:67 Application for the Approval by the Registrar under Section 22(8) and Regulation 39 (1) of a Proposed Assignment, or of a Transmission (On or After the Appointed Day), of a Trade Mark Resulting in Exclusive Rights in Dierent Persons for Dierent Parts of Ghana (Form TM-No. 39) § 34:68 Application for the Approval by the Registrar under Section 22 (8) or the Second Schedule (Paragraph 2) of the Act and Regulation 39 of An Assignment or Transmission of a Registered Trade Mark Before the Appointed Day, Resulting in Exclusive Rights in Dierent Persons for Dierent Parts of Ghana (Form TM-No. 40) § 34:69 Application to the Registrar under Section 22(9) and Regulation 40 for Directions for the Advertisement of An Assignment of Trade Marks Otherwise Than in Connection with the Good-Will of the Businesshttp://www.pbookshop.com (Form TM-No. 41) § 34:70 Application for Extension of Time in Which to Apply for the Registrar's Directions for the Advertisement of An Assignment of Trade Marks Otherwise Than in Conection with the Goodwill of the Business (Section 22 (9) and Regulation 40 (5) (Form TM-No. 42) § 34:71 Application to the Registrar under Regulation 63 (2) by the Proprietor of a Registered Trade Mark for the Conversion of the Specication From Part 3 of the Schedule to the Ordinance to Schedule 1 of the Trade Marks Regulations (Form TM-No. 43) § 34:72 Reclassication (Form TM-No. 44) § 34:73 Notice of Opposition to Application under Section 35 Regulation 46 (3) for Addition to or Alteration of a Registered Trade Mark (Form TM-No. 45) § 34:74 Notice of Order of Court for Alteration or Rectication of Register of Trade Marks (Form TM-No. 46) cxliv Table of Contents

§ 34:75 Request to the Registrar for Entry On the Register and Advertisement of a Note of a Certicate of Validity by the Court under Section 44, Regulation 45 (Form TM-No. 47) § 34:76 Application for Registration of Registered User (Form TM-No. 48) § 34:77 Application by the Registered Proprietor of a Trade Mark for Variation of the Registration of a Registered User thereof with Regard to the Goods or the Conditions or Restrictions (Section 28 (10) Paragraph (A); Regualtion 51 (1)) (Form TM-No. 49) § 34:78 Application by the Registered Proprietor of a Trade Mark or by Any of the Registered Users of the Trade Mark for the Cancellation or Entry of a Registered User thereof (Section 28 (10) Paragraph (B) Regulation 51(2)) (Form TM-No. 50) § 34:79 Application for Cancellation of Entry of a Registered User of a Trade Mark (Form TM-No. 51) § 34:80 Notice to the Registrar under Section 28 (11) and Regulation 51 (4) of intention to intervene in Proceedings for the Variation or Cancellation of An Entry of a Registered User of a Trade Mark (Form TM-No. 52)

VI. POST-REGISTRATION § 34:81 Renewal of registration—Duration of protection § 34:82 —Renewal before expiration § 34:83 —Renewal after expiration § 34:84 —Reinstatement § 34:85 —Advertisement of renewal § 34:86 Amendments, alterations or modications—Alteration or modication—To trade mark itself § 34:87 — —To goods § 34:88 — —To name or address § 34:89 — —Alteration as a result of petition by third party on grounds of violation of condition § 34:90 —Rectication of register § 34:91 —Cancellationhttp://www.pbookshop.com § 34:92 —Removal of trade mark for non-use § 34:93 Assignments—Rights to assign § 34:94 —Entry of assignment on register § 34:95 —Recordation of assignment § 34:96 —Legal documents § 34:97 Licensees or registered users—Right to grant use § 34:98 —Rights of the proprietor § 34:99 —Rights of the licensee § 34:100 —Recordation of license

VII. RESOURCES § 34:101 In general Appendix 34A. National Classication System cxlv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms CHAPTER 35. GREECE

I. OVERVIEW § 35:1 The basics § 35:2 Policies and trends—Trade and regulatory climate § 35:3 —Why register locally? § 35:4 —The future

II. REGISTRATION REQUIREMENTS § 35:5 What is a mark? § 35:6 Which marks may be registered?—Trademark for goods § 35:7 —Trademark for services § 35:8 —Associated (derived) mark § 35:9 —Defensive mark § 35:10 —Collective mark § 35:11 —Certication mark § 35:12 —Colored trademark § 35:13 What cannot be registered? § 35:14 —Identical or confusingly similar marks § 35:15 —Opposed mark § 35:16 —Marks with unauthorized content § 35:17 —Nominative or descriptive marks § 35:18 —Marks with prohibited matters § 35:19 —Marks with prohibited words or representations § 35:20 Who may register? § 35:21 —Proprietor or user § 35:22 —Related user § 35:23 —Authorized agent § 35:24 —Priority registrant III. TRADEMARKhttp://www.pbookshop.com REGISTER § 35:25 Where is the trademark registered?—Trademarks registry § 35:26 —Requirement of distinctiveness § 35:27 —Exclusive use rights § 35:28 —Enforcement

IV. INITIAL REGISTRATION § 35:29 Procedural timeline—Search and advice § 35:30 —Application § 35:31 —Review § 35:32 —Registration

V. REGISTRATION FORMS § 35:33 Information checklist cxlvi Table of Contents

§ 35:34 Common form requirements § 35:35 Power of attorney § 35:36 Power of attorney form § 35:37 Application for registration of trademark § 35:38 Application of foreign trademark

VI. POST-REGISTRATION § 35:39 Renewal of registration—Duration of protection § 35:40 —Renewal after expiration § 35:41 —Reinstatement § 35:42 Alteration or modication—Registration § 35:43 —Name or address § 35:44 Cancellation § 35:45 —Renunciation by proprietor § 35:46 —Non-use § 35:47 —Generic usage § 35:48 —Deception of public § 35:49 —Not registrable § 35:50 —Prior rights § 35:51 Assignments § 35:52 —Recordation of assignment § 35:53 —Legal documents § 35:54 Licensees or registered users § 35:55 —Recordation of license § 35:56 —Rights of the licensee § 35:57 —Cancellation of license § 35:58 Assignment and power of attorney for recordal—Use of form § 35:59 —Information required § 35:60 —Attachments to form § 35:61 Trademark assignment form VII. RESOURCEShttp://www.pbookshop.com § 35:62 In general CHAPTER 36. HONG KONG S.A.R.

I. OVERVIEW § 36:1 The basics § 36:2 Policies and trends—Trade and regulatory climate § 36:3 —Why register locally? § 36:4 —The Trade Marks Ordinance 2003 § 36:5 Law, rules and regulations

II. REGISTRATION REQUIREMENTS § 36:6 What is a mark? cxlvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 36:7 Which marks may be registered?—Trademark for goods § 36:8 —Trademark for services § 36:9 —Series of trademarks § 36:10 — —Associated trademarks § 36:11 — —Certication mark § 36:12 — —Collective mark § 36:13 — —Defensive trademark § 36:14 — —Colour trademark § 36:15 What cannot be registered—Absolute grounds for refusal § 36:16 —Relative grounds for refusal § 36:17 —Exceptions to relative grounds for refusal—Consent § 36:18 — —Honest concurrent use § 36:19 — —Disclaimers § 36:20 — —Claim to priority § 36:21 — —Licence § 36:22 — —Opposition to trademark by a third party

III. TRADEMARK REGISTER § 36:23 Where is the trademark registered?—Trade marks register § 36:24 —Exclusive use rights § 36:25 —Actual use § 36:26 —Special categories—Surnames § 36:27 — —Geographical names § 36:28 — —Letters

IV. INITIAL REGISTRATION § 36:29 Procedural timeline—Search and advice § 36:30 —Application § 36:31 —Examination § 36:32 —Registration

V. REGISTRATIONhttp://www.pbookshop.com FORMS § 36:33 Information checklist § 36:34 Common form requirements § 36:35 Request for search of records request for preliminary advice on registrability Form T1 § 36:36 Application for registration of a trade mark (including certication mark, collective mark and defensive mark) forms t2, t2a § 36:37 Notice of attendance at hearing request for statement of reasons Form T12

VI. POST-REGISTRATION § 36:38 Renewal of registration (Trade Marks Ordinance, Section 50)— Duration of protection § 36:39 —Renewal before expiration cxlviii Table of Contents

§ 36:40 —Late renewal after expiration § 36:41 —Restoration § 36:42 —Merger § 36:43 —Reclassication § 36:44 —Revocation, invalidity and variation—Revocation (Trade Marks Ordinance, Section 52) § 36:45 — —Declaration of invalidity of registration (Trade Marks Ordinance, Section 53) § 36:46 — —Variation of registration (Trade Marks Ordinance, Section 54) § 36:47 — —Assignment (Trade Marks Ordinance, Sections 27 and 29) § 36:48 —Licensing of registered trademarks § 36:49 — —A license may authorize a licensee to grant a sub-license § 36:50 — —A licence is not eective unless it is in writing and is signed by or on behalf of the grantor § 36:51 Post-registration documents § 36:52 —Request for renewal of a trade mark registration request for restoration and renewal of a trade mark registration Form T8 § 36:53 —Notice of opposition/objection application for revocation, declaration of invalidity, variation of a trade mark registration, or rectication of an error or omission in the register application for intervention in proceedings for revocation, declaration of invalidity, variation or rectication Form T6 § 36:54 —Application or notice to register registrable transaction (other than a licence) request to amend or remove registered particulars of security interest Form T10 § 36:55 —Application or notice to register a licence request to amend or remove registered particulars of a licence Form T11 CHAPTER 37. INDIA

I. OVERVIEW § 37:1 The basics § 37:2 Policies andhttp://www.pbookshop.com trends—Trade and regulatory climate § 37:3 —The Indian economy § 37:4 —Openness to foreign investment § 37:5 —Why register locally? § 37:6 Laws, rules and regulations

§ 37:14 —Colored trademark § 37:15 —Defensive trademark § 37:16 —Series of trademarks § 37:17 What cannot be registered?—Absolute grounds for refusal of registration § 37:18 —Relative grounds for refusal of registration § 37:19 What cannot be registered. § 37:20 Who can register? § 37:21 —Proprietor or user § 37:22 —Authorized agent § 37:23 —Priority registrant § 37:24 —Joint owners or users § 37:25 —Proposed corporation

III. TRADEMARK REGISTER § 37:26 Where is the trademark registered? § 37:27 —Trademark register § 37:28 —Requirement of distinctiveness § 37:29 —Exclusive use rights § 37:30 —Limitation on exclusive use rights § 37:31 —Enforcement § 37:32 —Validity

IV. INITIAL REGISTRATION § 37:33 Procedural timeline § 37:34 —Average processing times § 37:35 —Government fee schedule

V. REGISTRATION FORMS § 37:36 In general § 37:37 Informationhttp://www.pbookshop.com checklist § 37:38 Application for registration of trademark (initial registration form) § 37:39 General power of attorney form

§ 37:50 —Loss of exclusive use § 37:51 —Miscellaneous grounds for amendment § 37:52 Alteration or modication—Obvious errors—To trademark § 37:53 — —To goods and/or services § 37:54 — —To name or address § 37:55 Cancellation of registration—Action by registrar § 37:56 —At request of owner § 37:57 —Action by court § 37:58 —For violation of condition § 37:59 —Loss of exclusive use § 37:60 Miscellaneous grounds for amendment—Grounds for removal § 37:61 —Removal of trademark for non-use § 37:62 —Time of application § 37:63 —Notication § 37:64 —Opposition § 37:65 —Removal and restoration § 37:66 Assignments—Rights to assign § 37:67 —Recordal of assignment § 37:68 —Legal documents § 37:69 —Licensees or registered users § 37:70 —Right to grant use § 37:71 —Rights of the proprietor § 37:72 —Rights of the licensee § 37:73 —Recordal of license

VII. RESOURCES § 37:74 In general Appendix 37A. National Classication System

http://www.pbookshop.comVolume 2 CHAPTER 38. INDONESIA

I. OVERVIEW § 38:1 The basics § 38:2 Policies and trends § 38:3 —Trade and regulatory climate § 38:4 —Why register locally? § 38:5 —The future § 38:6 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 38:7 What is a mark? cli K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 38:8 Which marks may be registered? § 38:9 —Trademark for goods § 38:10 —Trademark for services (service mark) § 38:11 —Associated trademark § 38:12 —Collective trademark § 38:13 —Certication trademark § 38:14 —Colored trademark § 38:15 —Defensive trademark § 38:16 —Commercial mark § 38:17 —Series of trademarks § 38:18 What cannot be registered? § 38:19 Who can register? § 38:20 —Proprietor or user:

III. TRADEMARK REGISTER § 38:21 Where is the trademark registered? § 38:22 —Requirement of distinctiveness § 38:23 —Exclusive use rights § 38:24 —Limitation on exclusive use rights § 38:25 —Enforcement § 38:26 —Validity

IV. INITIAL REGISTRATION § 38:27 Procedural timeline—Application § 38:28 —Review § 38:29 —Registration

V. REGISTRATION FORMS § 38:30 In general § 38:31 Information checklist § 38:32 Power ofhttp://www.pbookshop.com attorney form § 38:33 Statement of trademark ownership VI. POST-REGISTRATION § 38:34 Renewal of registration § 38:35 —Duration of protection § 38:36 —Renewal after expiration § 38:37 —Reinstatement § 38:38 —Advertisement of renewal § 38:39 —Amendment § 38:40 —Action by registrar at request of owner § 38:41 —Change in classication by registrar § 38:42 —Correction of error or omission by federal court § 38:43 —Violation of condition clii Table of Contents

§ 38:44 —Loss of exclusive use § 38:45 Miscellaneous grounds for amendment—Alteration or modication—Obvious errors § 38:46 Cancellation of registration—Action by registrar § 38:47 —At request of owner § 38:48 —Action by court § 38:49 —For violation of condition § 38:50 —Loss of exclusive use § 38:51 Removal of trademark for non-use—Grounds for removal § 38:52 —Time of application § 38:53 —Notication § 38:54 —Opposition § 38:55 —Removal and restoration § 38:56 Assignments—Rights to assign § 38:57 —Recordation of assignment § 38:58 —Legal documents § 38:59 Licensees or registered users—Right to grant use § 38:60 —Rights of the proprietor § 38:61 —Rights of the licensee § 38:62 —Recordation of license

VII. RESOURCES § 38:63 In general CHAPTER 39. IRAN

I. OVERVIEW § 39:1 The basics § 39:2 Policies and trends—Trade and regulatory climate § 39:3 —Why register locally? § 39:4 —Madrid Agreementhttp://www.pbookshop.com and Protocol § 39:5 Laws, rules and regulations II. REGISTRATION REQUIREMENTS § 39:6 What is a mark? § 39:7 Which marks may be registered?—Trademark for goods § 39:8 —Trademark for services § 39:9 —Collective trademark § 39:10 —Color marks § 39:11 —Three-dimensional marks § 39:12 —Defensive trademarks: § 39:13 What cannot be registered? § 39:14 —Identical or similar marks § 39:15 —Marks with unauthorized content § 39:16 —Marks with prohibited matters cliii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 39:17 Who can register?—Proprietor or user § 39:18 —Authorized agent § 39:19 —Priority registrant § 39:20 —Joint owners or users

III. TRADEMARK REGISTER § 39:21 Where is the trademark registered?—Register of trademarks § 39:22 —Requirement of distinctiveness § 39:23 —Exclusive use rights § 39:24 —Limitation on exclusive use rights § 39:25 —Enforcement

IV. INITIAL REGISTRATION § 39:26 Procedural time line—Search and advice § 39:27 —Application § 39:28 —Review § 39:29 —Registration

V. REGISTRATION FORMS § 39:30 Information checklist § 39:31 Common form requirements § 39:32 Power of Attorney Form TM-3 § 39:33 Application for Registration of a Trademark Form TM-1

VI. POST-REGISTRATION § 39:34 Renewal of registration—Duration of protection § 39:35 —Renewal before expiration § 39:36 —Renewal after expiration § 39:37 —Reinstatement § 39:38 —Advertisementhttp://www.pbookshop.com of renewal § 39:39 Amendment § 39:40 —Action by register at request of owner § 39:41 —Obvious errors § 39:42 —To trademark § 39:43 —To goods and/or services § 39:44 —To name or address § 39:45 Cancellation of registration § 39:46 Assignments § 39:47 —Recordation of assignment § 39:48 —Legal documents § 39:49 Licenses or registered users § 39:50 —Right to grant use § 39:51 —Rights of the proprietor § 39:52 —Rights of licensee cliv Table of Contents

§ 39:53 —Recordation of license

VII. RESOURCES § 39:54 In general CHAPTER 40. ISRAEL

I. OVERVIEW § 40:1 The basics § 40:2 Policies and trends—Trade and regulatory climate § 40:3 —Why register locally? § 40:4 —The future § 40:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 40:6 What is a mark? § 40:7 Which marks may be registered?—Trademark for goods § 40:8 —Trademark for services (Service Mark) § 40:9 —Collective trademark § 40:10 —Certication trademark § 40:11 —Colored trademark § 40:12 What cannot be registered? § 40:13 Who can register? § 40:14 —Partnership § 40:15 —Corporation § 40:16 —Joint applicants § 40:17 —Trusts/conservatorships/estates § 40:18 —Foreign applicants III. TRADEMARKhttp://www.pbookshop.com REGISTER § 40:19 Where is the trademark registered?—Israel patents, designs and trademarks oce § 40:20 —Filing methods § 40:21 —Register § 40:22 —Exclusive use rights § 40:23 —Exclusive use of a ‘well known’ trademark § 40:24 —Limitation on exclusive use rights § 40:25 —Remedies; enforcement; infringement § 40:26 —Validity

IV. INITIAL REGISTRATION § 40:27 Procedure—Search and advice § 40:28 —Application § 40:29 —Filing receipt/serial number clv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 40:30 —Initial examination § 40:31 —Expedited examination § 40:32 —Response § 40:33 —Publication § 40:34 —Opposition § 40:35 —Grounds for opposition: § 40:36 —Competing claims to identical marks § 40:37 —Concurrent use § 40:38 —Registration § 40:39 —Average processing times § 40:40 Government fee schedule

VI. POST-REGISTRATION § 40:45 Renewal of registration § 40:46 —Duration of protection § 40:47 —Renewal before expiration § 40:48 —Renewal after expiration § 40:49 —Reinstatement § 40:50 Amendment—Action by commissioner at request of owner § 40:51 —Correction of error or omission by the commissioner § 40:52 —Alteration of trademark at owner's request § 40:53 —Cancellation of registration § 40:54 —Miscellaneous grounds for amendment § 40:55 —Removal of registration for non-use § 40:56 Assignments—Righthttp://www.pbookshop.com to assign § 40:57 —Recordation of assignment § 40:58 Licensees or registered users—Right to grant use § 40:59 —Recordation of license

VII. RESOURCES § 40:60 In general CHAPTER 41. ITALY

I. OVERVIEW § 41:1 The basics § 41:2 Policies and trends—Trade and regulatory climate § 41:3 —Why register locally? clvi Table of Contents

§ 41:4 —Why le an international registration? § 41:5 —The future § 41:6 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 41:7 What is a mark? § 41:8 Which marks may be registered?—Trademark for goods § 41:9 —Trademark for services § 41:10 —Certication mark § 41:11 What cannot be registered? § 41:12 —Identical and similar marks § 41:13 —Marks with unauthorized content § 41:14 —Nominative or descriptive marks § 41:15 —Marks with prohibited matters § 41:16 Who can register?—Proprietor or user § 41:17 —Foreign applicants § 41:18 —Priority registrant § 41:19 —Authorized agent § 41:20 International trademark registrations—Applicable international agreement § 41:21 —Registrable trademarks § 41:22 —The applicant § 41:23 —The trademark application § 41:24 —Priority § 41:25 —Where to le the application § 41:26 —Classication of goods and services § 41:27 —Ocial languages § 41:28 —Designation of countries § 41:29 —Rights conferred by the international registration § 41:30 —Examination and opposition § 41:31 —Duration and renewal § 41:32 —Assignment/licensinghttp://www.pbookshop.com § 41:33 —Documents to be provided for ling § 41:34 —Additional documentation which can be produced even after ling the application

IV. INITIAL REGISTRATION § 41:41 Procedural timeline—Search and advice clvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 41:42 —Application § 41:43 —Review § 41:44 —Registration

V. REGISTRATION FORMS § 41:45 Information checklist § 41:46 Common form requirements § 41:47 Initial registration documents—Power of attorney [form omitted] § 41:48 Application for registration of trademark

VI. POST-REGISTRATION § 41:49 Renewal of registration—Duration of protection § 41:50 —Renewal before expiration § 41:51 —Renewal after expiration § 41:52 —Reinstatement § 41:53 Alteration or modication—To trademark § 41:54 —To goods and/or services § 41:55 —To name or address § 41:56 By proprietor § 41:57 Revocation § 41:58 Nullication § 41:59 Assignments—Assignable rights § 41:60 —Recordation of assignment § 41:61 —Legal documents § 41:62 Licensees or registered users § 41:63 —Recordation of license § 41:64 —Rights of the licensee § 41:65 —Rights of the proprietor

VII. RESOURCES § 41:66 In generalhttp://www.pbookshop.com

CHAPTER 42. JAPAN

I. OVERVIEW § 42:1 The basics § 42:2 Policies and trends—Trade and regulatory climate § 42:3 —Why register locally? § 42:4 —The future § 42:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 42:6 What is a mark? § 42:7 Which marks may be registered?—Trademark for goods clviii Table of Contents

§ 42:8 —Service mark § 42:9 —Associated trademark § 42:10 —Defensive trademark § 42:11 —Collective trademark § 42:12 —Colored trademark § 42:13 —Three-dimensional marks § 42:14 —Regionally based collective trademarks § 42:15 —Trademark system for retail services or wholesale services § 42:16 What cannot be registered? § 42:17 —Identical or similar marks § 42:18 —Deceptively or confusingly similar marks § 42:19 —Opposed mark § 42:20 —Marks with unauthorized content § 42:21 —Marks with prohibited content § 42:22 —Public order § 42:23 —Nominative or descriptive marks § 42:24 —Common marks § 42:25 —Non-distinguishing marks § 42:26 —Well-known marks § 42:27 Who can register?—Proprietor or user § 42:28 —Authorized agent

III. TRADEMARK REGISTER § 42:29 Where is the trademark registered?—Trade marks register § 42:30 —Requirement of distinctiveness § 42:31 —Requirement of no conict § 42:32 —Exclusive use rights § 42:33 —Limitation on use rights § 42:34 —Validity of registered trademark § 42:35 —Enforcement IV. INITIAL REGISTRATIONhttp://www.pbookshop.com § 42:36 Procedural timeline—Search and advice § 42:37 —Application § 42:38 —Registration

V. REGISTRATION FORMS § 42:39 Information checklist § 42:40 Initial application documents—Application for registration of trademark § 42:41 —Application for registration

VI. POST-REGISTRATION § 42:42 Renewal of registration—Duration of protection § 42:43 —Renewal before expiration clix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 42:44 —Renewal after expiration § 42:45 —Restoration § 42:46 —Advertisement of renewal § 42:47 Invalidation and cancellation—Invalidation of registration § 42:48 —Cancellation of registration § 42:49 —Eect of cancellation § 42:50 —Defensive trademarks § 42:51 Assignments—Right to assign § 42:52 —Limitations on assignment § 42:53 —Registration of assignment § 42:54 Licensees or registered users—Right to grant use § 42:55 —Registration § 42:56 —Rights of registered user § 42:57 —Limitation on rights of registered user

VII. RESOURCES § 42:58 In general CHAPTER 43. KOSOVO

I. OVERVIEW § 43:1 The basics § 43:2 Policies and trends—Trade and regulatory climate § 43:3 —Why register locally? § 43:4 —The future § 43:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 43:6 What is a mark? § 43:7 Which marks may be registered—Trademark for goods § 43:8 —Trademarkhttp://www.pbookshop.com for services § 43:9 —Associated trademark § 43:10 —Collective trademark § 43:11 —Certication trademark § 43:12 —Color trademark § 43:13 —Series of trademarks § 43:14 What cannot be registered? § 43:15 What cannot be registered—Non-distinctive trademarks § 43:16 —Descriptive trademarks § 43:17 —Generic marks § 43:18 —Deceptive trademarks § 43:19 —Marks with unauthorized content § 43:20 —Marks that are immoral, unlawful or contrary to the public order § 43:21 —Confusingly similar marks clx Table of Contents

§ 43:22 —Exceptions § 43:23 Who can register—Proprietor or user § 43:24 —Authorized agent § 43:25 —Priority registrant

III. TRADEMARK REGISTER § 43:26 Where is the trademark registered—Trademark register § 43:27 —Requirement of distinctiveness § 43:28 —Exclusive use rights § 43:29 —Limitation on exclusive use rights § 43:30 —Validity § 43:31 —Enforcement

IV. INITIAL REGISTRATION § 43:32 Procedural timeline—Search and advice § 43:33 —Application § 43:34 —Formal examination § 43:35 —Publication of trademark application § 43:36 —Oppositions § 43:37 —Registration § 43:38 Government fee schedule

V. REGISTRATION FORMS § 43:39 Information checklist § 43:40 Registration forms—Power of attorney form § 43:41 —Application for registration of trademark § 43:42 —Notice of opposition § 43:43 —Request to amend a trademark application or registration § 43:44 —Notice of withdrawal of an application, notice or request § 43:45 —Paymenthttp://www.pbookshop.com of trademark registration fee VI. POST-REGISTRATION § 43:46 Renewal of registration—Duration of protection § 43:47 —Renewal before expiration § 43:48 —Renewal after expiration § 43:49 —Reinstatement § 43:50 —Advertisement of renewal § 43:51 Alteration or modication—Correction of technical mistakes § 43:52 —Alteration to trademark § 43:53 —Alteration to goods and/or services § 43:54 —Alteration to name or address § 43:55 Cancellation of registration § 43:56 Revocation of trademark registration for non-use § 43:57 Invalidation of trademark registration clxi K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 43:58 Assignments § 43:59 Licenses

VII. RESOURCES § 43:60 In general CHAPTER 44. LAOS

I. OVERVIEW § 44:1 The basics § 44:2 Policies and trends—Trade and regulatory climate § 44:3 —Why register locally? § 44:4 —The future § 44:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 44:6 What is a trademark? § 44:7 Which trademarks may be registered? § 44:8 —Associated trademark § 44:9 —Collective mark § 44:10 —Certication trademark § 44:11 —Colored trademark § 44:12 —Defensive trademark § 44:13 —Commercial trademark § 44:14 —Series of trademarks § 44:15 What cannot be registered? § 44:16 Who can register?

III. TRADEMARK REGISTER § 44:17 Where ishttp://www.pbookshop.com the trademark registered?—Trademark register § 44:18 —Requirement of distinctiveness § 44:19 —Exclusive use rights § 44:20 —Limitation on exclusive use rights § 44:21 —Enforcement § 44:22 —Validity § 44:23 —Classication § 44:24 —Marking

IV. INITIAL REGISTRATION § 44:25 Procedure § 44:26 Examination § 44:27 Assignment § 44:28 Documents required § 44:29 Fees clxii Table of Contents

V. REGISTRATION FORMS § 44:30 Application for registration of a trademark § 44:31 Checklist of information needed to complete application § 44:32 Application in several classes § 44:33 Application for several trademarks

VI. POST-REGISTRATION § 44:34 Renewal of registration—Duration of protection § 44:35 —Renewal § 44:36 —Termination for failure to renew § 44:37 —Restoration § 44:38 —Amendment

VII. RESOURCES § 44:39 In general CHAPTER 45. LEBANON

I. OVERVIEW § 45:1 The basics § 45:2 Policies and trends—Trade and regulatory climate § 45:3 —Why register locally? § 45:4 —The future § 45:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 45:6 What is a mark? § 45:7 Which marks may be registered?—Trademark (for goods) § 45:8 —Servicehttp://www.pbookshop.com mark § 45:9 —Trade names and establishment signboards § 45:10 —Collective mark § 45:11 —Geographical indications § 45:12 What cannot be registered? § 45:13 —Marks that are disparaging or that falsely suggest a connection § 45:14 —Marks that are immoral, deceptive or scandalous § 45:15 —Marks likely to cause confusion, or to cause mistake, or to deceive § 45:16 Who can register?

III. TRADEMARK REGISTER § 45:17 Where is the trademark registered?—Oce of protection of commercial, industrial, literary, and artistic property § 45:18 —Filing methods clxiii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 45:19 —Filing bases § 45:20 —Exclusive use rights § 45:21 —Incontestability § 45:22 —Remedies; infringement; enforcement

IV. INITIAL REGISTRATION § 45:23 Procedural timeline—Application led § 45:24 —Review

V. REGISTRATION FORMS § 45:25 In general CHAPTER 46. LIECHTENSTEIN

I. OVERVIEW § 46:1 The basics § 46:2 Policies and trends—Trade and regulatory climate § 46:3 —Why register locally? § 46:4 —The future § 46:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 46:6 What is a trademark? § 46:7 Which marks may be registered? § 46:8 What may not be registered? § 46:9 Who may register?

III. TRADEMARK REGISTER AND INITIAL REGISTRATION § 46:10 Trademarkhttp://www.pbookshop.com registration generally § 46:11 Searches and advice § 46:12 Initial examination § 46:13 Appeals of initial examinations § 46:14 Publication and opposition § 46:15 Registration § 46:16 Time frame

IV. REGISTRATION FORMS § 46:17 Filing requirements: trademark applications § 46:18 Checklist of information needed to complete application § 46:19 Applicable application fees

V. POST-REGISTRATION § 46:20 Renewal of registration—Duration of protection clxiv Table of Contents

§ 46:21 —Renewal before expiration § 46:22 —Renewal after expiration § 46:23 —Publication of renewal § 46:24 Alteration or modication § 46:25 Cancellation § 46:26 Removal of trademark for non-use § 46:27 Assignments § 46:28 Licensing § 46:29 Enforcement CHAPTER 47. LITHUANIA

I. OVERVIEW § 47:1 The basics § 47:2 Policies and trends—Trade and regulatory climate § 47:3 —Why register locally? § 47:4 —Other advantages § 47:5 —Community trade mark § 47:6 —Advantage § 47:7 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 47:8 What is a mark? § 47:9 Which marks may be registered?—Trademark for goods § 47:10 —Trademark for services [service mark] § 47:11 —Collective trademark § 47:12 —Colored trademark § 47:13 What cannot be registered? § 47:14 —Marks that are “Immoral, deceptive or scandalous” § 47:15 —Marks that are “disparaging” or that “falsely suggest a connection”http://www.pbookshop.com § 47:16 —Marks that suggest a false geographical indication § 47:17 —Marks that suggest a false geographical indication for wine and spirits § 47:18 —Marks that are descriptive § 47:19 —Opposed mark § 47:20 Who can register? § 47:21 —Authorized representative

§ 47:26 —Exclusive use rights § 47:27 —Limitation on exclusive use rights § 47:28 —Enforcement § 47:29 —Validity

IV. INITIAL REGISTRATION § 47:30 Procedure—Search and advice § 47:31 —Application/ling receipt/serial number § 47:32 —Initial examination/examination of application § 47:33 —Examination of the mark § 47:34 —Reexamination § 47:35 —Appeal § 47:36 —Publication § 47:37 —Opposition

V. REGISTRATION FORMS § 47:38 In general § 47:39 Power of attorney form for use in the Republic of Lithuania

VI. POST-REGISTRATION § 47:40 Renewal of registration—Duration of protection § 47:41 —Renewal before expiration § 47:42 —Renewal after expiration § 47:43 —Reinstatement § 47:44 —Advertisement of renewal § 47:45 Amendment—Correction of mistake in registration § 47:46 —Amendment to mark § 47:47 —Amendment to list of goods/services § 47:48 —Changes of name or address § 47:49 Assignments § 47:50 Licenseeshttp://www.pbookshop.com § 47:51 Cancellation—Invalidation of a registration § 47:52 —Revocation of a registration

VII. RESOURCES § 47:53 In general CHAPTER 48. MACEDONIA

I. OVERVIEW § 48:1 The basics § 48:2 Policies and trends—Trade and regulatory climate § 48:3 —Why register locally? § 48:4 —The future: clxvi Table of Contents

§ 48:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 48:6 What is a mark? § 48:7 Which marks may be registered?—Trademark for goods § 48:8 —Trademark for services [service mark] § 48:9 —Associated trademark § 48:10 —Collective trademark § 48:11 —Certication trademark § 48:12 —Colored trademark § 48:13 What cannot be registered? § 48:14 —Marks that are immoral or contrary to the public order § 48:15 —Graphical presentation § 48:16 —Deceptively or confusingly similar marks § 48:17 —Generic marks § 48:18 —Nominative or descriptive marks § 48:19 —Misleading trademarks § 48:20 —Marks with unauthorized content § 48:21 Who can register? § 48:22 —Authorized agent § 48:23 —Joint owners or users

III. TRADEMARK REGISTER § 48:24 Where is the trademark registered?—Trademark register § 48:25 —Requirement of distinctiveness § 48:26 —Exclusive use rights § 48:27 —Limitation on exclusive use rights § 48:28 —Validity § 48:29 —Enforcement IV. INITIAL REGISTRATIONhttp://www.pbookshop.com § 48:30 Procedural timeline—Search and advice § 48:31 —Application § 48:32 —Registration § 48:33 Average processing times § 48:34 Government fee schedule—Fees for searches § 48:35 —Fees for trademark prosecution

§ 48:41 Notice of withdrawal of an application, notice, or request § 48:42 Payment of trademark registration fee

VI. POST-REGISTRATION § 48:43 Renewal of registration—Duration of protection § 48:44 —Renewal before expiration § 48:45 —Renewal after expiration § 48:46 —Reinstatement § 48:47 —Advertisement of renewal § 48:48 Cancellation of registration § 48:49 Cancellation of trademark for non-use § 48:50 Assignments § 48:51 Licensees or registered users

VII. RESOURCES § 48:52 In general CHAPTER 49. MACAU

I. OVERVIEW § 49:1 The basics § 49:2 Policies and trends—Trade and regulatory climate § 49:3 —Why register locally? § 49:4 —The future § 49:5 Laws, rules, regulations

II. REGISTRATION REQUIREMENTS § 49:6 What is a mark? § 49:7 Which marks may be registered?—Marks for goods or services § 49:8 —Unity of application and registration of the marks § 49:9 —Colour marks § 49:10 —Collectivehttp://www.pbookshop.com marks § 49:11 What cannot be registered? § 49:12 —Identical marks § 49:13 —Deceptively or confusingly similar marks § 49:14 —Marks likely to be used for unfair competition § 49:15 —Nominative or descriptive marks § 49:16 —Marks with unauthorized content § 49:17 —Marks with prohibited words or representations § 49:18 Who can register?—Proprietor or user § 49:19 —Paris convention priority applicant § 49:20 —Priority application based on use in macau § 49:21 —Authorised agent or attorney

III. TRADEMARK REGISTER § 49:22 Where is the mark registered?—Marks register clxviii Table of Contents

§ 49:23 —Eect of registration

IV. INITIAL REGISTRATION § 49:24 Procedural timeline—Search and advice § 49:25 —Application § 49:26 —Review and publication § 49:27 —Registration

V. REGISTRATION FORMS § 49:28 Form requirements § 49:29 Authorisation of agent § 49:30 Application to register a mark § 49:31 Application to register mark

VI. POST-REGISTRATION § 49:32 Termination of registration—Surrender of mark registration § 49:33 —Revocation of mark registration § 49:34 —Lapse of mark registration § 49:35 —Publication of lapse § 49:36 Renewal of registration—Duration of protection § 49:37 —Renewal before expiration § 49:38 —Renewal following expiration § 49:39 —Renewal following extinction § 49:40 Correction or alteration of mark—Alteration of mark § 49:41 —Addition or substitution of goods or services § 49:42 —Change of address, registered oce, or proprietor's name § 49:43 Assignment—Right to assign § 49:44 —Deed of assignment § 49:45 —Prohibition on transfer of certain marks § 49:46 —Recording of assignment § 49:47 —Publication of assignment § 49:48 License tohttp://www.pbookshop.com use mark—Right to grant licence § 49:49 —Publication of licence § 49:50 —Rights of licenced user

VII. POST-REGISTRATION FORMS § 49:51 Application for other actions by the I.P. Oce

VIII. RESOURCES § 49:52 In general CHAPTER 50. MALAYSIA

I. OVERVIEW § 50:1 The basics clxix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 50:2 Policies and trends—Trade and regulatory climate § 50:3 —Why register locally? § 50:4 —The future § 50:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 50:6 What is a mark? § 50:7 Which marks may be registered?—Trademark for goods § 50:8 —Trademark for services § 50:9 — —Associated trademark § 50:10 —Series of trademarks § 50:11 —Certication trademark § 50:12 —Defensive trademark § 50:13 —Colored trademark § 50:14 What cannot be registered? § 50:15 —Identical marks § 50:16 —Deceptively or confusingly similar marks § 50:17 —Opposed mark § 50:18 —Marks with unauthorized content § 50:19 —Single chemical element or compound marks § 50:20 —Nominative or descriptive marks § 50:21 —Marks with prohibited content § 50:22 —Marks with prohibited words or representations § 50:23 —Well-known mark § 50:24 —Geographical indication § 50:25 Who can register?—Proprietor or user § 50:26 —Priority registrant § 50:27 —Proposed corporation § 50:28 —Authorized agent III. TRADEMARKhttp://www.pbookshop.com REGISTER § 50:29 Where is the trademark registered?—Trade marks register § 50:30 —Abolishment of part a & part b § 50:31 —Exclusive use rights § 50:32 —Requirement of distinctiveness § 50:33 —Enforcement § 50:34 —Validity

IV. INITIAL REGISTRATION § 50:35 Procedural timeline—Search and advice § 50:36 —Application § 50:37 —Review § 50:38 —Registration § 50:39 Special interim rules for renewal clxx Table of Contents

V. REGISTRATION FORMS § 50:40 Information checklist § 50:41 Common form requirements § 50:42 Initial registration documents—Statutory declaration of ownership § 50:43 —Request to enter, alter, or substitute an address for service Form TM-1 § 50:44 —Request for preliminary advice from registrar Form TM-4 § 50:45 —Application for registration of trademark Form TM-5

VI. POST-REGISTRATION § 50:46 Renewal of registration—Duration of protection § 50:47 —Renewal before expiration § 50:48 —Renewal after expiration § 50:49 —Restoration § 50:50 —Advertisement of renewal or restoration § 50:51 —Renewal of territorial registration (interim provision) § 50:52 Alteration or rectication—Rectication dened § 50:53 —Grounds for rectication § 50:54 —Alteration of entry § 50:55 Assignments—Right to assign § 50:56 —Registration of assignment § 50:57 Licensees or registered users—Right to grant use § 50:58 —Recordation § 50:59 —Rights of registered user § 50:60 —Alteration or cancellation § 50:61 Post-Registration documents—Renewal of registration of a trademark Form TM-12 § 50:62 —Application to register a subsequent proprietor Form TM-15 § 50:63 —Application to make, cancel, or vary an entry in the register Form TM-17 § 50:64 —Applicationhttp://www.pbookshop.com for registration of registered user Form TM-23 § 50:65 —Modied international classication of services VII. RESOURCES § 50:66 In general CHAPTER 51. MEXICO

I. OVERVIEW § 51:1 The basics § 51:2 Policies and trends—Trade regulatory climate § 51:3 —Why register locally? § 51:4 —The future § 51:5 Laws, rules and regulations clxxi K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms II. REGISTRATION REQUIREMENTS § 51:6 What is a mark? § 51:7 Which marks may be registered?—Trademark for goods § 51:8 —Services trademark § 51:9 —Collective marks § 51:10 What cannot be registered? § 51:11 Who can register? § 51:12 —Individuals § 51:13 —Entities

III. TRADEMARK REGISTRATION § 51:14 Where is the trademark registered?—Mexican industrial property institute § 51:15 —Filing methods § 51:16 —Registers § 51:17 —Single v. multi-class applications § 51:18 —Filing bases § 51:19 —Exclusive use rights § 51:20 —Constructive use § 51:21 —Incontestability § 51:22 —Marking § 51:23 —Remedies; infringement; enforcement

IV. INITIAL REGISTRATION § 51:24 Procedure—Search and advice § 51:25 —Application § 51:26 —Filing receipt/serial number § 51:27 —Initial examination § 51:28 —Response § 51:29 —Reexaminationhttp://www.pbookshop.com § 51:30 —Publication § 51:31 —Post-publication / registration § 51:32 —Trademark processing fees (2009)

V. REGISTRATION FORMS § 51:33 Application for registration of trademark

VI. DESIGNATION OF DOMESTIC REPRESENTATIVE § 51:34 Power of attorney

VII. POST-REGISTRATION § 51:35 Maintenance and renewal of registration—Maintenance § 51:36 —Duration of protection clxxii Table of Contents

§ 51:37 —Renewal before expiration § 51:38 —Renewal after expiration § 51:39 —Reinstatement § 51:40 —Alteration or the modication § 51:41 —Correction of mistake in registration § 51:42 —Amendment to mark § 51:43 —Amendment of registration, other than amendment of mark § 51:44 —Cancellation § 51:45 —Assignments § 51:46 —Licenses CHAPTER 52. MONTENEGRO

I. OVERVIEW § 52:1 The basics § 52:2 Policies and trends—Trade and regulatory climate § 52:3 —Why register locally? § 52:4 —The future § 52:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 52:6 What is a mark? § 52:7 Which marks may be registered?—Trademark § 52:8 —Service mark § 52:9 —Collective trademark § 52:10 —Certication trademark § 52:11 —Colored trademark § 52:12 —Three-dimensional marks § 52:13 What cannot be registered? § 52:14 —Public order § 52:15 —Generichttp://www.pbookshop.com mark § 52:16 —Marks with unauthorized content § 52:17 —Marks with prohibited content § 52:18 —Deceptive marks § 52:19 —Opposed mark § 52:20 —Non-distinguishing marks § 52:21 —Well-known marks § 52:22 Who can register?—Proprietor or user § 52:23 —Authorized agent

III. TRADEMARK REGISTER § 52:24 Where is the trademark registered?—Trademark register § 52:25 —Requirement of distinctiveness § 52:26 —Requirement of no conict § 52:27 —Exclusive use rights clxxiii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 52:28 —Limitation on exclusive use right § 52:29 —Enforcement § 52:30 —Validity

IV. INITIAL REGISTRATION § 52:31 Procedural timeline—Search and advice § 52:32 —Application and fees § 52:33 —Registration

V. REGISTRATION FORMS § 52:34 Information checklist § 52:35 Initial application documents § 52:36 —Application for registration of trademark

VI. POST-REGISTRATION § 52:37 Renewal of registration—Duration of protection § 52:38 —Renewal before expiration § 52:39 —Renewal after expiration § 52:40 —Reinstatement § 52:41 Amendment—Action by registrar during application stage § 52:42 —Action by registrar at request of owner § 52:43 Cancellation of registration—Revocation action § 52:44 —Cancellation action § 52:45 —Contestation of trademark registration § 52:46 Removal of trademark for non-use—Grounds for removal § 52:47 —Removal period § 52:48 —Removal and restoration § 52:49 Assignments—Right to assign § 52:50 —Recordation of assignment § 52:51 —Legal documents § 52:52 Licenseeshttp://www.pbookshop.com or registered users—Right to grant use § 52:53 —Rights of the trademark owner § 52:54 —Recordation of license

VII. RESOURCES § 52:55 In general CHAPTER 53. MOROCCO

I. OVERVIEW § 53:1 The basics § 53:2 Policies and trends—Trade and regulatory climate § 53:3 —Why register locally? § 53:4 —The future clxxiv Table of Contents

II. REGISTRATION REQUIREMENTS § 53:5 What is a mark? § 53:6 Which marks may be registered?—Trademark for goods § 53:7 —Trademark for services § 53:8 —Collective trademark § 53:9 —Colored trademark § 53:10 What cannot be registered? § 53:11 —Marks that are “immoral, deceptive or scandalous” § 53:12 —Marks that use emblems or authority distinction § 53:13 —Identical, similar, and deceptive trademarks § 53:14 Who can register?—Proprietor or user § 53:15 —Authorized agent § 53:16 —Priority registrant § 53:17 —Incorporation

III. INITIAL REGISTRATION § 53:18 Procedural timeline—Trademark register § 53:19 —Search and advice § 53:20 —Application § 53:21 —Response of ompic § 53:22 —Publication

IV. POST-REGISTRATION § 53:23 Duration of protection § 53:24 Amendment § 53:25 Cancellation of registration § 53:26 Removal of trademark for non-use—Grounds for removal § 53:27 Assignments § 53:28 —Rights to assign § 53:29 —Recordationhttp://www.pbookshop.com of assignment § 53:30 —Legal documents § 53:31 Licensees or registered users—Right to grant use § 53:32 —Rights of the proprietor § 53:33 —Rights of the licensee § 53:34 —Recordation of license

I. OVERVIEW § 54:1 The basics § 54:2 Policies and trends—Trade and regulatory climate § 54:3 —Why register locally? § 54:4 —The future § 54:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 54:6 What is a mark? § 54:7 Which marks may be registered?—Trademark for goods § 54:8 —Service mark § 54:9 —Property mark § 54:10 What cannot be registered? § 54:11 —Identical trademarks § 54:12 —Deceptively or confusingly similar marks § 54:13 —Marks with prohibited content § 54:14 Who can register?—Proprietor or user § 54:15 —Authorized agent

III. TRADEMARK REGISTER § 54:16 Where is the trademark registered?—Miscellaneous register § 54:17 —Registration creates evidence of use

IV. INITIAL REGISTRATION § 54:18 Proceduralhttp://www.pbookshop.com timeline—Search and advice § 54:19 —Application § 54:20 —Review § 54:21 —Registration

VI. POST-REGISTRATION § 54:27 Renewal of registration—Duration of protection clxxvi Table of Contents

§ 54:28 —Revocation or cancellation § 54:29 —Alteration § 54:30 Assignments and licenses—Right to assign or license § 54:31 —Registration of assignment or license § 54:32 —Registration procedure

VII. RESOURCES § 54:33 In general CHAPTER 55. NEW ZEALAND

I. OVERVIEW § 55:1 The basics § 55:2 Policies and trends—Trade and regulatory climate § 55:3 Why register locally? § 55:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 55:5 What is a mark? § 55:6 Which marks may be registered?—Trademark for goods and/or services § 55:7 — —Combined trademark § 55:8 — —Series of trademarks § 55:9 — —Certication trademark § 55:10 — —Collective trademark § 55:11 — —Collective trademark § 55:12 What cannot be registered? § 55:13 —Identical marks § 55:14 —Similar marks § 55:15 —Opposed mark § 55:16 —Marks withhttp://www.pbookshop.com unauthorised content § 55:17 —Geographical indications § 55:18 —Single chemical element or compound marks § 55:19 —Marks with prohibited matters § 55:20 —Marks with prohibited words or representations § 55:21 Who can register?—Proprietor or user § 55:22 —Priority registrant § 55:23 —Licensee § 55:24 —Joint proprietors § 55:25 —Authorised agent

III. TRADEMARK REGISTER § 55:26 Where is the trademark registered?—Register of trademarks § 55:27 —Exclusive use rights clxxvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 55:28 Registrability—General rule § 55:29 —Distinctiveness

IV. INITIAL REGISTRATION § 55:30 Procedural time line—Search and advice § 55:31 —Application § 55:32 —Review § 55:33 —Registration

V. REGISTRATION FORMS § 55:34 Information checklist § 55:35 Common form requirements § 55:36 Initial registration documents—Form 4: Authorisation of Agent § 55:37 —Form 1: Request for Trade Mark Information § 55:38 —Form 2: Application for Registration of Trade Mark § 55:39 —Form 2: Application for Registration of Certication Trademark § 55:40 —Form 2: Application for Registration of Collective Trade Mark

VI. POST-REGISTRATION § 55:41 Renewal of registration—Duration of protection § 55:42 —Renewal before expiration § 55:43 —Restoration § 55:44 Alteration of register—Alteration dened § 55:45 —Grounds for alteration § 55:46 Rectication of register—Rectication dened § 55:47 —Grounds for rectication § 55:48 Revocation of register—Revocation dened § 55:49 —Grounds for revocation § 55:50 Declaration of invalidity § 55:51 —Eect of declaration of invalidity § 55:52 Assignment—Right to assign § 55:53 —Deed ofhttp://www.pbookshop.com assignment § 55:54 —Recordation of assignment § 55:55 Licences (or registered user)—Right to grant use § 55:56 —Recordation of licensee § 55:57 Form 16: Application for Renewal of Registration of Trade Mark § 55:58 Form 12: Application for Rectication of Register § 55:59 Form 13: Application for Revocation of Register § 55:60 Form 14: Application for Declaration of Invalidity § 55:61 Form 17: Request for Alteration of Trade or Business Address or Address for Service § 55:62 Form 23: Application for Registration of Subsequent Proprietor § 55:63 Form 24: Application for Registration of Registered User

VII. RESOURCES § 55:64 In general clxxviii Table of Contents

CHAPTER 56. NICARAGUA

I. OVERVIEW § 56:1 The basics § 56:2 Laws, rules and regulations § 56:3 Policies and trends—Trade and regulatory climate § 56:4 —Why register locally? § 56:5 —The future

II. REGISTRATION REQUIREMENTS § 56:6 What is a mark? § 56:7 Which marks may be registered—Trademark for goods § 56:8 —Trademark for services [service mark] § 56:9 —Trade names § 56:10 —Collective trademark § 56:11 —Certication trademark § 56:12 —Slogans § 56:13 —Well-known mark § 56:14 —Geographical indication—Appellations of origin § 56:15 — —Indications of origin § 56:16 What cannot be registered? § 56:17 What cannot be registered—Intrinsic grounds of refusal—Signs devoid of distinctive character § 56:18 — —Misleading marks § 56:19 — —Ocial emblems and related signs § 56:20 — —Oensive marks § 56:21 — —Plant variety rights § 56:22 — —Nicaraguan pandora's box § 56:23 —Earlier rights grounds of refusal: prior rights in the sign § 56:24 Who can register? § 56:25 Who can register—Proprietor or user § 56:26 —Authorizedhttp://www.pbookshop.com agent § 56:27 —Priority registrant § 56:28 —Joint owners or users

IV. INITIAL REGISTRATION § 56:36 Procedure—Search and advice clxxix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 56:37 —Application and review § 56:38 —Serial number and publication § 56:39 —Opposition and entry § 56:40 —Substantial examination § 56:41 —Registration certicate and publication § 56:42 —Average processing times § 56:43 —Trademark processing fees (as of October 20, 2011)

V. REGISTRATION FORMS § 56:44 Information checklist § 56:45 Power of attorney form § 56:46 Application for registration of trademark (initial registration form) § 56:47 Trade name registration § 56:48 Notice of opposition form § 56:49 Request to amend a trademark application or registration § 56:50 Assignment recordation form/cover sheet § 56:51 Notication of change of name/address/address for service § 56:52 Notice of Withdrawal of an Application

VI. POST-REGISTRATION § 56:53 Maintenance and renewal of registration—Duration of protection § 56:54 —Renewal before expiration § 56:55 —Renewal after expiration § 56:56 —Advertisement of renewal § 56:57 Trademark renewal form § 56:58 Alteration or modication § 56:59 Cancellation of registration—Action by registrar § 56:60 —At request of owner and action by court § 56:61 —Genericness of the trademark § 56:62 Removal of trademark for non-use § 56:63 Assignmentshttp://www.pbookshop.com § 56:64 —Recordation of assignment § 56:65 Licensees or registered users—Right to grant use § 56:66 —Rights of the licensee § 56:67 —Rights of the licensor § 56:68 —Recordation of license

VII. RESOURCES § 56:69 In general CHAPTER 57. NIGERIA

I. OVERVIEW § 57:1 The basics clxxx Table of Contents

§ 57:2 Policies and trends—Trade and regulatory climate § 57:3 —Why register locally § 57:4 —The future § 57:5 Law, rules and regulations

II. REGISTRATION REQUIREMENTS § 57:6 What is a mark? § 57:7 Which marks may be registered?—Trade mark for goods § 57:8 —Service marks § 57:9 —Associated trade marks § 57:10 —Defensive trade marks § 57:11 —Certication trade marks § 57:12 —Coloured trade marks § 57:13 —Series of trade marks § 57:14 What cannot be registered? § 57:15 Who can register? § 57:16 Where is the trade mark registered?—The trade marks registry § 57:17 —The register § 57:18 —Rights conferred by registration § 57:19 —Limitation on exclusive use rights § 57:20 —Validity

§ 57:38 —Violation of condition § 57:39 Alteration or modication—To trademark § 57:40 —To goods and or services § 57:41 —To name or address § 57:42 Cancellation of registration—Action by registrar § 57:43 — —At request of owner § 57:44 —Action by court—For violation of condition § 57:45 — —Removal of trademark for non-use § 57:46 — —Notication § 57:47 — —Opposition § 57:48 — —Removal and restoration § 57:49 Assignments—Right to assign § 57:50 —Recordation of assignment § 57:51 —Legal documents § 57:52 Licensees or registered users—Right to grant use § 57:53 —Rights of the proprietor § 57:54 —Rights of the licensee § 57:55 —Recordation of license

VI. RESOURCES § 57:56 In general Appendix 57A. National Classication of Goods CHAPTER 58. NORTH KOREA (DEMOCRATIC PEOPLE'S REPUBLIC OF KOREA)

I. OVERVIEW § 58:1 The basics § 58:2 Policies and trends—Trade and regulatory climate § 58:3 —Why register locally? § 58:4 —The futurehttp://www.pbookshop.com § 58:5 Laws, rules and regulations II. REGISTRATION REQUIREMENTS § 58:6 What is a mark? § 58:7 Which marks may be registered?—Trademark for goods § 58:8 —Service mark § 58:9 What cannot be registered? § 58:10 Who can register?—Proprietor or user § 58:11 —Priority registrant § 58:12 —Authorized agent

III. TRADEMARK REGISTER § 58:13 Where is the trademark registered?—Trademark register clxxxii Table of Contents

§ 58:14 —Exclusive use rights of registration holder

IV. INITIAL REGISTRATION § 58:15 Procedure—Application eld § 58:16 —Review § 58:17 —Registration

V. REGISTRATION FORMS § 58:18 Information checklist § 58:19 Common form requirement § 58:20 Authorization of agent (power of attorney)

VII. RESOURCES § 58:31 In general CHAPTER 59. NORWAY I. OVERVIEWhttp://www.pbookshop.com § 59:1 The basics § 59:2 In general

II. OBTAINTING SOLE TRADEMARKS RIGHTS § 59:3 Registration § 59:4 Trademark use § 59:5 Assignment § 59:6 License agreement

III. REGISTRATION REQUIREMENTS § 59:7 Denition of a trade mark § 59:8 Who can register § 59:9 Prior trademarks clxxxiii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 59:10 National representation § 59:11 Registered trademark rights § 59:12 Unregisterable trade marks § 59:13 Consent § 59:14 Examination procedure

IV. TRADEMARK REGISTER § 59:15 In general § 59:16 Laws, regulations § 59:17 First division § 59:18 Division—Examination § 59:19 — —Absolute hindrances § 59:20 — —Relative hindrances § 59:21 — —Response § 59:22 — —Expiration § 59:23 — —Resumption § 59:24 — —Reinstatement § 59:25 — —Specication of goods § 59:26 First division—Publication § 59:27 —Opposition § 59:28 Appeal division

V. PROVISIONS REGARDING LEGAL PROTECTION § 59:29 Imprisonment § 59:30 Liability § 59:31 Conscation § 59:32 Notication to the patent oce

VI. REGISTRATION FORMS § 59:33 In general http://www.pbookshop.com CHAPTER 60. PANAMA I. OVERVIEW § 60:1 The basics § 60:2 —Trade and regulatory climate § 60:3 —Why register locally? § 60:4 —The future § 60:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 60:6 What is a mark? § 60:7 Which marks may be registered?—Trademark for goods and services clxxxiv Table of Contents

§ 60:8 —Collective trademark § 60:9 —Warranty trademark § 60:10 —Mark of origin § 60:11 —Denomination of origin § 60:12 —Commercial name or trade name § 60:13 —Slogans or advertisement signs § 60:14 What cannot be registered? § 60:15 —Identical, similar, and deceptive trademarks § 60:16 —Nominative or descriptive marks § 60:17 —Marks with unauthorized content § 60:18 —Marks with prohibited content/words/representations § 60:19 Who can register?

V. REGISTRATION FORMS § 60:36 Information checklist § 60:37 Power of attorney form § 60:38 Application for registration of trademark (initial registration form); trademark/service mark application form § 60:39 A davit of use § 60:40 Request to amend, change of name/address, withdrawal or renew a trademark application or registration assignment recordation form/cover sheet

VI. POST-REGISTRATION § 60:41 Renewal of registration clxxxv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 60:42 Amendment § 60:43 Alteration or modication § 60:44 Cancellation of registration and removal of trademark for non-use § 60:45 Assignments § 60:46 Licensees or registered users

VII. RESOURCES § 60:47 In general CHAPTER 61. PAPUA NEW GUINEA

I. OVERVIEW § 61:1 The basics § 61:2 Policies and trends—Trade and regulatory climate § 61:3 —Why register locally? § 61:4 —The future § 61:5 Laws, rules and regulations

III. TRADEMARK REGISTER § 61:25 Where is the trademark registered?—Trade marks register § 61:26 —Register Parts A and B § 61:27 —Exclusive use rights § 61:28 —Distinctions in enforcement clxxxvi Table of Contents

§ 61:29 Register Part A—General rule § 61:30 —Distinctiveness § 61:31 Register Part B—General rule § 61:32 —Distinctiveness

IV. INITIAL REGISTRATION § 61:33 Procedural timeline—Search § 61:34 —Application § 61:35 —Review § 61:36 —Registration

V. REGISTRATION FORMS § 61:37 Information checklist § 61:38 Common form requirements § 61:39 Initial registration documents—Application for Registration of Trade Mark Form 4

VI. POST-REGISTRATION § 61:40 Renewal of registration—Duration of protection § 61:41 —Notice before expiration § 61:42 —Renewal before expiration § 61:43 —Renewal after expiration § 61:44 Alteration of register or trademark—Alteration dened § 61:45 —Alteration of register § 61:46 —Alteration of trademark § 61:47 Rectication of register—Rectication dened § 61:48 —Grounds for rectication § 61:49 Assignment—Right to assign § 61:50 —Recordation of assignment § 61:51 Registered user—Right to grant use § 61:52 —Renewalhttp://www.pbookshop.com of registered use § 61:53 —Rights of registered user § 61:54 —Variation, extension, or cancellation of registered use § 61:55 Post-Registration documents—Application for Renewal Registration of Trade Mark Form 6 § 61:56 —Application for Registration of Registered User Form 7 § 61:57 —Application by Person Entitled by Assignment or Transmission to Registered Trade Mark for Registration Form 11 § 61:58 —Application for Renewal of Registration of Registered User Form 8 § 61:59 —Application for Variation or Extension of Registration of Registered User Form 9 § 61:60 —Application for Cancellation of Registration of Registered User Form 10 § 61:61 —Application for Amendment or Alteration of the Register Form 2 clxxxvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 61:62 —Application to Alter a Registered Trade Mark Form 3

VII. RESOURCES § 61:63 In general CHAPTER 62. PERU

I. OVERVIEW § 62:1 The basics § 62:2 Policies and trends § 62:3 Why register locally? § 62:4 The future § 62:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 62:6 What is a mark? § 62:7 Which marks may be registered?—Trademark (for goods) § 62:8 —Service mark § 62:9 —Collective marks § 62:10 —Certication mark § 62:11 —Colored marks § 62:12 What cannot be registered? § 62:13 —Marks that consist solely of the everyday shape of products § 62:14 —Marks that are merely descriptive § 62:15 —Identical or similar marks § 62:16 —Marks that contain an indication of origin or appellation of origin § 62:17 —Marks that consist of ags, coats of arms or emblems § 62:18 —Marks likely to create confusion or deceive § 62:19 —Marks contrary to public order § 62:20 —Marks that are identical or similar to a well-known mark § 62:21 —Marks thathttp://www.pbookshop.com contribute with unfair competition practices § 62:22 Who can register? § 62:23 —Authorized attorney § 62:24 —Claiming priority

III. TRADEMARK REGISTER § 62:25 Where is the trademark registered? § 62:26 Filing method § 62:27 Single-class applications § 62:28 Filing bases § 62:29 Exclusive use rights § 62:30 Remedies, infringement and enforcement

IV. INITIAL REGISTRATION § 62:31 Procedure—Search and advice clxxxviii Table of Contents

§ 62:32 —Application § 62:33 —Filing receipt/ serial number § 62:34 —Initial examination § 62:35 —Publication § 62:36 —Registration

V. REGISTRATION FORMS § 62:37 Information checklist § 62:38 Initial registration documents—Power of attorney form § 62:39 —Application for registration of trademark § 62:40 —Application for registration of trademark form

VII. RESOURCES § 62:49 In general CHAPTER 63. THE PHILIPPINES

I. OVERVIEW § 63:1 The basics § 63:2 Policies andhttp://www.pbookshop.com trends—Trade and regulatory climate § 63:3 —Why register locally? § 63:4 —The future

§ 63:15 —Marks with unauthorized content § 63:16 —Nominative or descriptive marks § 63:17 —Marks with prohibited matters § 63:18 —Shapes and colors § 63:19 Who can register?—Proprietor or user § 63:20 —Priority registrant § 63:21 —Authorized agent

III. TRADEMARK REGISTER § 63:22 Where is the trademark registered?—Trademarks register § 63:23 —Distinctiveness

IV. INITIAL REGISTRATION § 63:24 Procedural timeline—Search § 63:25 —Application § 63:26 —Review § 63:27 —Registration

VI. POST-REGISTRATION § 63:34 Renewal of registration—Duration of protection § 63:35 —Renewal before expiration § 63:36 —Renewal after expiration § 63:37 Alterationhttp://www.pbookshop.com or modication—By registrant § 63:38 Cancellation—By registrant § 63:39 —By third party § 63:40 —Entry of order § 63:41 Assignments—Right to assign § 63:42 —Deed of assignment § 63:43 —Recordation of assignment § 63:44 Licensees or registered users—Right to grant use § 63:45 —License agreement § 63:46 —Recordation § 63:47 Assignment of trademark—Use of form § 63:48 —Information required

VII. RESOURCES § 63:49 In general cxc Table of Contents

CHAPTER 64. POLAND

I. OVERVIEW § 64:1 The basics § 64:2 Policies and trends—Trade and regulatory climate § 64:3 —Why register locally? § 64:4 Laws, rules and regulations

III. TRADEMARK REGISTER § 64:18 Where is the trademark registered?—Trademark register § 64:19 —Requirement of distinctiveness § 64:20 —Exclusive use rights § 64:21 —Limitation on exclusive use rights § 64:22 —Enforcementhttp://www.pbookshop.com IV. INITIAL REGISTRATION § 64:23 Procedural timeline—Search and advice § 64:24 —Application § 64:25 —Publication § 64:26 —Review § 64:27 —Registration

V. REGISTRATION FORMS § 64:28 Information checklist § 64:29 Common form requirements § 64:30 Power of attorney § 64:31 Application for registration of trademark § 64:32 Application for registration of trademark cxci K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 64:33 Power of attorney

VI. POST-REGISTRATION § 64:34 Renewal of right of protection—Duration of right of protection § 64:35 —Renewal before expiration § 64:36 —Renewal after expiration § 64:37 Alteration or modication—Obvious errors § 64:38 —To trademark § 64:39 —To goods and/or services § 64:40 —To name or address § 64:41 —Invalidation § 64:42 —Lapse § 64:43 Assignments § 64:44 —Recordation of assignment § 64:45 —Legal documents § 64:46 Licensees or registered users § 64:47 —Recordation of license

VII. RESOURCES § 64:48 In general CHAPTER 65. PORTUGAL

I. OVERVIEW § 65:1 The basics § 65:2 Policies and trends—Trade and regulatory climate § 65:3 —Why register locally? § 65:4 —The future § 65:5 Law, rules and regulations http://www.pbookshop.com II. REGISTRATION REQUIREMENTS § 65:6 What is a mark? § 65:7 Which marks may be registered?—Trademark for goods and trademark for services [service mark] § 65:8 —Collective trademark § 65:9 —Associated trademark § 65:10 —Certication trademark § 65:11 —Colored trademark § 65:12 What cannot be registered? § 65:13 —Indistinctive marks § 65:14 —Marks with unauthorized content/words/representations § 65:15 —Identical, similar, and deceptive trademarks marks or that “falsely suggest a connection” § 65:16 —Marks that are “immoral, deceptive or scandalous” cxcii Table of Contents

§ 65:17 Who can register?—Proprietor or user § 65:18 —Authorized agent or lawyer § 65:19 —Priority registrant

III. TRADE MARK REGISTER § 65:20 Where is the trademark registered?—Trademark register § 65:21 —Filing methods § 65:22 —Single v. multi-class applications § 65:23 —Validity § 65:24 —Exclusive use rights § 65:25 —Limitation to exclusive use rights § 65:26 —Marking § 65:27 —Remedies; infringement; enforcement

V. REGISTRATION FORMS § 65:41 General informationhttp://www.pbookshop.com § 65:42 Power of attorney form [draft] § 65:43 Application for registration of trademark (initial registration form) § 65:44 Assignment form [draft] § 65:45 Licensing form [draft] § 65:46 Trademark license agreement § 65:47 Payment of trademark registration fee

VI. POST-REGISTRATION § 65:48 Maintenance and renewal of registration—Duration of protection and renewal before expiration § 65:49 —Renewal after expiration § 65:50 Maintenance § 65:51 Reinstatement § 65:52 —Alteration or modication cxciii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 65:53 Annulment § 65:54 Cancellation of registration—Grounds for cancellation § 65:55 —Proceedings for cancellation § 65:56 Assignments—Rights to assign § 65:57 —Recordation of assignment § 65:58 —Legal documents § 65:59 Licensees or registered users—Right to grant use § 65:60 —Recordation of license § 65:61 —Legal documents § 65:62 —Abandonment

VII. RESOURCES § 65:63 In general CHAPTER 66. PUERTO RICO

I. OVERVIEW § 66:1 The basics § 66:2 Policies and trends—Trade and regulatory climate § 66:3 Why register locally? § 66:4 —The future § 66:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 66:6 What is a mark? § 66:7 Which marks may be registered?—Trademark for goods § 66:8 —Trademark for services § 66:9 —Certication trademark § 66:10 —Collective trademark § 66:11 What cannot be registered? § 66:12 —Marks that are contrary to the law, the morale and public policy—Markshttp://www.pbookshop.com that are symbols of puerto rico § 66:13 —Marks that are the full name, one or two last names, image, nickname,signature, or a combination of these, of a person § 66:14 —Words that are descriptive of the goods and services for which they are used § 66:15 —Words indicating the genre of the goods and services § 66:16 —Shapes and labels § 66:17 —Geographic names and terms § 66:18 —Identical, similar, and deceptive trademarks § 66:19 —Marks similar to famous marks § 66:20 Who can register?—Proprietor or owner § 66:21 —Representative § 66:22 —Foreign applicants or corporations

III. TRADEMARK REGISTER § 66:23 Where is the trademark registered?—Puerto Rico trademark oce cxciv Table of Contents

§ 66:24 —Filing methods § 66:25 —Single and multi-class applications § 66:26 —Filing bases § 66:27 —Requirement of distinctiveness § 66:28 —Continuous use or incontestability § 66:29 —Exclusive use rights § 66:30 —Enforcement and remedies

V. REGISTRATION FORMS § 66:41 Information checklist § 66:42 Application for registration of trademark (initialregistration form)

VI. POST-REGISTRATION § 66:43 Maintenance § 66:44 Renewal of registration—Duration of protection § 66:45 —Renewal before expiration § 66:46 —Renewal after expiration § 66:47 —Reinstatement § 66:48 —Advertisementhttp://www.pbookshop.com of renewal § 66:49 Amendments—Amendments to the registration § 66:50 —Correction of error in registration § 66:51 —Cancellation of registration § 66:52 —Assignments

VII. RESOURCES § 66:53 In general CHAPTER 67. QATAR

I. OVERVIEW § 67:1 The basics § 67:2 Policies and trends—Trade and regulatory climate cxcv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 67:3 —Why register locally? § 67:4 —The future § 67:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 67:6 What is a mark? § 67:7 Which trademarks may be registered? § 67:8 —Associated trademark § 67:9 —Collective mark § 67:10 —Group mark § 67:11 —Certication trademark § 67:12 —Defensive trademark § 67:13 —Commercial trademark § 67:14 —Geographical indication § 67:15 —Series of trademarks § 67:16 —Other types of trademarks § 67:17 What cannot be registered? § 67:18 Who can register?

IV. INITIAL REGISTRATION § 67:26 Procedure—Search and advice § 67:27 —Applicationhttp://www.pbookshop.com § 67:28 —Initial examination § 67:29 —Response § 67:30 —Publication § 67:31 Average processing times § 67:32 Trademark fees

V. REGISTRATION FORMS § 67:33 In general § 67:34 Power of Attorney form

VI. POST-REGISTRATION § 67:35 Maintenance and renewal of registration—Duration of protection § 67:36 —Renewal before expiration cxcvi Table of Contents

§ 67:3y —Renewal after expiration § 67:38 Cancellation—Action by registrar § 67:39 —Action by owner § 67:40 —Action by court § 67:41 Removal of trademark for non-use § 67:42 Assignments § 67:43 Licenses

VII. RESOURCES § 67:44 In general CHAPTER 68. ROMANIA

I. OVERVIEW § 68:1 The basics § 68:2 Policies and trends—Trade and regulatory climate § 68:3 —Why register locally? § 68:4 —The future § 68:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 68:6 What is a trademark? § 68:7 Which marks may be registered? § 68:8 What cannot be registered? § 68:9 Who can register?

III. TRADEMARK REGISTER § 68:10 Where is the trademark registered?—State oce for patents and trademarks § 68:11 —Filing methodshttp://www.pbookshop.com § 68:12 —Registers § 68:13 —Single/multi-class application § 68:14 —Requirement of distinctiveness § 68:15 —Rights over a registered trademark. validity. enforcement § 68:16 —Limitations of the rights over a registered trademark

IV. INITIAL REGISTRATION § 68:17 Procedural timeline—Search and advice § 68:18 —Application § 68:19 —Preliminary examination § 68:20 —Decisions further to the examination § 68:21 —Opposition § 68:22 —Reexamination § 68:23 —Final decision cxcvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 68:24 —Taxes/fees

V. REGISTRATION FORMS § 68:25 Information checklist § 68:26 Registration forms § 68:27 Trademark Registration Application § 68:28 Trademark Renewal Application

VII. RESOURCES § 68:38 In general Appendix 68A. Schedule of Fees for Trademark-Related Procedures CHAPTER 69. RUSSIA

I. OVERVIEW § 69:1 The basics § 69:2 Policies and trends—Trade and regulatory climate § 69:3 —Why register locally? § 69:4 Laws, ruleshttp://www.pbookshop.com and regulations

II. REGISTRATION REQUIREMENTS § 69:5 What is a mark? § 69:6 Which marks may be registered?—Trademark for goods § 69:7 —Trademark for services [service mark] § 69:8 —Trademark for executed works § 69:9 — —Word mark § 69:10 — —Graphic mark § 69:11 — —Volume mark § 69:12 — —Combined mark § 69:13 —Famous trademark § 69:14 —Collective trademark § 69:15 —Other marks cxcviii Table of Contents

§ 69:16 What cannot be registered § 69:17 —Absolute grounds for rejecting the registration of a trademark— Indistinguishable marks § 69:18 — —Commonly used marks § 69:19 — —Commonly accepted marks § 69:20 — —Characteristic marks § 69:21 — —Marks representing form of goods § 69:22 — —Marks that consist of ags, coats of arms or other insignia § 69:23 — —False and immoral marks § 69:24 — —Marks identical or similar to ocial marks to the point of confusion § 69:25 — —Marks comprising designations identifying wines and other liquors § 69:26 —Other grounds for rejection of registration of a trademark— Identical and similar trademarks § 69:27 — —Nominative marks and marks containing industrial designs § 69:28 Who can register § 69:29 —Individuals who are russian residents and legal entities registered in russia § 69:30 —Foreign applicants § 69:31 —Patent attorneys § 69:32 —Other representatives

IV. INITIAL REGISTRATION § 69:38 In generalhttp://www.pbookshop.com § 69:39 Procedural timeline § 69:40 —Formal examination § 69:41 —Examination of pending designation § 69:42 —Issue of resolution on registration § 69:43 —Federal register of trademarks § 69:44 —Trademark registration certicate § 69:45 —Notication of registration § 69:46 —Registration validity period § 69:47 —Registration fees

V. REGISTRATION FORMS § 69:48 In general § 69:49 Power of attorney cxcix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 69:50 Application for registration of trademark § 69:51 Application for amendment of name, address of tm designation § 69:52 Application for amendment of errors § 69:53 Application to change the applicant § 69:54 Application to register the transfer of exclusive right agreement § 69:55 Application to register the license agreement

VI. POST-REGISTRATION § 69:56 Renewal of registration—Duration of protection § 69:57 —Renewal before expiration § 69:58 Form for prolongation of a trademark § 69:59 Renewal after expiration § 69:60 Amendment—Action by registrar at request of owner § 69:61 Cancellation of registration § 69:62 Assignment and license agreements—Assignment of a trademark § 69:63 —License agreements § 69:64 —Registration of assignment and license agreements

VII. RESOURCES § 69:65 In general CHAPTER 70. SAUDI ARABIA

I. OVERVIEW § 70:1 The basics § 70:2 Policies and trends—Trade and regulatory climate § 70:3 —Why register locally? § 70:4 —The future § 70:5 Laws, rules and regulations

II. REGISTRATIONhttp://www.pbookshop.com REQUIREMENTS § 70:6 What is a mark? § 70:7 Which marks may be registered?—Trademark for goods § 70:8 —Trademark for services § 70:9 —Collective mark § 70:10 What cannot be registered? § 70:11 Who can register? § 70:12 —Authorized agent § 70:13 —Priority registrant

III. TRADEMARK REGISTER § 70:14 Where is the trademark registered?—Trademark register § 70:15 —Requirement of distinctiveness § 70:16 —Exclusive use rights cc Table of Contents

§ 70:17 —Enforcement

IV. INITIAL REGISTRATION § 70:18 Procedural timeline—Search and advice § 70:19 —Application § 70:20 —Review § 70:21 —Registration

V. REGISTRATION FORMS § 70:22 Information checklist § 70:23 Common form requirements

VI. INITIAL REGISTRATION DOCUMENTS § 70:24 Application for registration of trademark

I. OVERVIEW § 71:1 The basics § 71:2 Policies and trends—Trade and regulatory climate § 71:3 —Why register locally? § 71:4 —Future § 71:5 Laws, rules and regulations cci K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms II. REGISTRATION REQUIREMENTS § 71:6 What is a mark? § 71:7 Which marks may be registered?—Trademark for goods & services § 71:8 —Associated trademark § 71:9 —Series of trademarks § 71:10 —Certication trademark § 71:11 —Well known marks § 71:12 —Collective marks § 71:13 —Colored trademark § 71:14 —Multiclass applications § 71:15 Grounds for refusal of registration—Absolute grounds for refusal § 71:16 —Relative grounds for refusal § 71:17 —Division of application § 71:18 —Protection for geographical indications § 71:19 —Marks with prohibited matters § 71:20 —Marks with prohibited words or representations § 71:21 Who can register?—Proprietor or user § 71:22 —Priority registrant § 71:23 —Proposed corporation § 71:24 —Licensee § 71:25 —Joint proprietors/co-owners § 71:26 —Deceased persons § 71:27 —Authorized agent

III. TRADEMARK REGISTER § 71:28 Trade marks register § 71:29 Register parts a and b

IV. INITIAL REGISTRATION § 71:30 Procedural timeline—Application § 71:31 —Reviewhttp://www.pbookshop.com § 71:32 —Registration V. REGISTRATION FORMS § 71:33 Information checklist § 71:34 Common form requirements § 71:35 Trademark representation requirements § 71:36 Application for Registration of Trade Mark Form TM-4 § 71:37 Application for Registration of Collective or Certication Trade Mark Forms TM-4 and TM-10 § 71:38 Request for Grounds of Decision Form TM-7

VI. POST-REGISTRATION § 71:39 Renewal of registration—Duration of protection ccii Table of Contents

§ 71:40 —Notice before expiration § 71:41 —Renewal before expiration § 71:42 —Renewal after expiration and restoration § 71:43 —Removal of trade mark from register § 71:44 Alteration of register or trademark—Alteration of register § 71:45 Rectication, revocation and invalidation—Rectication § 71:46 —Revocation § 71:47 —Invalidation § 71:48 Assignment—Right to assign § 71:49 —Recordation of assignment § 71:50 Licenses—Right to grant use § 71:51 —Recordation of license § 71:52 —Consequences of failure to record a license § 71:53 —Variation or cancellation of license § 71:54 Application for Renewal of Registration Form TM-19 § 71:55 Late Application for Renewal of Registration Form TM-24 § 71:56 Application for Restoration and Renewal of Registration Form TM-21 § 71:57 Application to Register a Subsequent Proprietor Form TM-22 § 71:58 Request to Amend Name or Address Form TM-26 § 71:59 Application for Revocation or Declaration of Invalidity of Registration or Rectication of Register Form TM-28 § 71:60 Request for Variation of Regulations for Collective or Certication Trademark Form TM-30 § 71:61 Request for Cancellation of Trademark Entry in the Register Forms TM-31 and TM-32 § 71:62 Request for Entry of Disclaimer or Limitation in the Register Form TM-33 § 71:63 Application for Registration of Grant of a Licence Form TM-37 § 71:64 —Madrid protocol VII. RESOURCEShttp://www.pbookshop.com § 71:65 In general CHAPTER 72. SLOVAK REPUBLIC

I. OVERVIEW § 72:1 The basics § 72:2 Policies and trends—Trade and regulatory climate § 72:3 —Why register locally? § 72:4 —The future § 72:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 72:6 What is a mark? cciii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 72:7 Which marks may be registered?—Trademark for goods § 72:8 —Trademark for services § 72:9 —Collective trademark § 72:10 —Colored trademark § 72:11 What cannot be registered? § 72:12 Who can register?—Proprietor or user § 72:13 —Authorized agent § 72:14 —Priority registrant § 72:15 —Observations

IV. INITIAL REGISTRATION § 72:21 Procedure—Search and advice § 72:22 —Application § 72:23 —Review § 72:24 —Registration

V. REGISTRATION FORMS § 72:25 Information checklist § 72:26 Registration forms § 72:27 Initial registration documents—Power of attorney form § 72:28 —Application for registration of trademark (initial registration form) VI. POST-REGISTRATIONhttp://www.pbookshop.com § 72:29 Renewal of registration—Duration of protection § 72:30 —Renewal § 72:31 Alteration or modication—Obvious errors § 72:32 —To trademark § 72:33 —To goods and/or services § 72:34 —To name or address § 72:35 Revocation of the trademark § 72:36 Declaration of invalidity of the trademark § 72:37 Pledge § 72:38 Transfer of trademarks § 72:39 Licensees or registered users

VII. RESOURCES § 72:40 In general cciv Table of Contents

CHAPTER 73. SOUTH AFRICA

I. OVERVIEW § 73:1 The basics § 73:2 Policies and trends—Trade and regulatory climate § 73:3 —Relevant legislation § 73:4 —Why register locally? § 73:5 —The future § 73:6 Laws, rules, and regulations

II. REGISTRATION REQUIREMENTS § 73:7 What is a mark? § 73:8 Which marks may be registered—Trade mark for goods § 73:9 —Service mark § 73:10 —Collective trade mark § 73:11 —Certication trade mark § 73:12 —Defensive trade mark § 73:13 —Series trade marks § 73:14 What cannot be registered—Absolute grounds for refusal § 73:15 — —Marks inherently unregistrable by reason of their nature § 73:16 — —Lack of a bona de claim to proprietorship § 73:17 — —A lack of bona de intention to use the trade mark as a trade mark § 73:18 — —Applications made mala de § 73:19 — —Prohibitions against registration of shape, conguration, colour and containers as trade marks § 73:20 — —Marks containing national symbols § 73:21 — —Marks indicating state patronage § 73:22 —Relative grounds for refusal § 73:23 — —Protection of well-known trade marks § 73:24 —Other groundshttp://www.pbookshop.com for refusal § 73:25 Who can register § 73:26 —Authorized agent § 73:27 —Priority registrant § 73:28 —Joint owners or users § 73:29 —Proposed corporation/company about to be formed

III. TRADE MARK REGISTER § 73:30 Where the trade mark is registered: Trade Mark Register § 73:31 Exclusive use rights § 73:32 —Limitation on exclusive use rights § 73:33 —Marking § 73:34 —Enforcement § 73:35 —Infringement § 73:36 — —Defences ccv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 73:37 — —Remedies § 73:38 Validity

IV. INITIAL REGISTRATION § 73:39 Procedure—Search § 73:40 —Timeline § 73:41 —Averaging processing times § 73:42 —Advertisement

V. REGISTRATION FORMS § 73:43 Information checklist—The applicant § 73:44 —The mark § 73:45 —Agents and service § 73:46 Sample Power of Attorney form § 73:47 Sample Application for Registration of trade mark (initial registration form) § 73:48 Other forms

VI. POST-REGISTRATION § 73:49 Renewal of registration—Duration of protection § 73:50 —Renewal before expiration § 73:51 —Renewal after expiration § 73:52 —Reinstatement § 73:53 —Advertisement of renewal § 73:54 Amendment—Action by the Registrar at the request of the owner § 73:55 —Alteration or modication to correct obvious errors § 73:56 Cancellation of registration—Action by Registrar § 73:57 —At request of the owner § 73:58 —Action by the Court § 73:59 —For violation of a condition § 73:60 —Loss of exclusive use § 73:61 —Removalhttp://www.pbookshop.com of a trade mark for non-use § 73:62 — —Time of application § 73:63 — —Notication § 73:64 — —Opposition § 73:65 Removal and restoration § 73:66 Assignments—Rights to assign § 73:67 —Recording the assignment § 73:68 —Legal documents § 73:69 Licensees or registered users—Right to grant use § 73:70 —Rights of the proprietor § 73:71 —Rights of the licensee § 73:72 —Recording the license

VII. RESOURCES § 73:73 In general ccvi Table of Contents

CHAPTER 74. SOUTH KOREA

I. OVERVIEW § 74:1 The basics § 74:2 Policies and trends—Trade and regulatory climate § 74:3 —Why register locally? § 74:4 —The future § 74:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 74:6 What is a mark? § 74:7 Which marks may be registered?—Trademark for goods § 74:8 —Trademark for services § 74:9 —Collective trademark § 74:10 —Business mark § 74:11 —Colored trademark § 74:12 —Geographical indication § 74:13 What cannot be registered?—Non-distinctive trademarks § 74:14 —Identical or similar trademarks § 74:15 —Deceptive or confusing marks § 74:16 —Opposed mark § 74:17 —Mark with unauthorized content § 74:18 —Marks with prohibited matters § 74:19 —Marks with prohibited words or representations § 74:20 Who can register?—Proprietor or user § 74:21 —Priority registrant § 74:22 —Authorized agent

III. TRADEMARK REGISTER § 74:23 Where is the trademark registered?—Trademarks register § 74:24 —Requirementhttp://www.pbookshop.com of distinctiveness § 74:25 —Application must comply with international treaties § 74:26 —Rights of a registered owner § 74:27 —Validity § 74:28 —Enforcement

IV. INITIAL REGISTRATION § 74:29 Procedural timeline—Application § 74:30 —Review § 74:31 —Registration § 74:32 Procedural timeline

V. REGISTRATION FORMS § 74:33 Information checklist ccvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 74:34 Specimen requirements § 74:35 Initial registration documents—Power of attorney § 74:36 —Application for applicants code § 74:37 —Application for registration § 74:38 —Submission of priority document

VI. POST-REGISTRATION § 74:39 Renewal of registration—Duration of protection § 74:40 —Renewal before expiration § 74:41 —Renewal after expiration § 74:42 —Application to register the reclassication of goods § 74:43 Modications and additions—Modication of registration § 74:44 —Procedure § 74:45 —Change of name and/or address of trademark holder § 74:46 —Addition of goods/services § 74:47 —Rejection of application for addition § 74:48 Cancellation, invalidation, abandonment, extinction—Cancellation § 74:49 —Invalidation trial of a trademark registration § 74:50 —Abandonment of trademark § 74:51 —Extinction of trademark right § 74:52 Assignments—Right to assign § 74:53 —Registration of assignment § 74:54 Licensees or registered users—Right to grant use § 74:55 —Duration § 74:56 —Rights of registered user § 74:57 —Right to use a trademark after the term of a patent right expires § 74:58 —Presumption of the amount of damages § 74:59 —Alteration or cancellation § 74:60 —International application under the madrid protocol § 74:61 Post-Registrationhttp://www.pbookshop.com forms—Deed of Assignment § 74:62 —Certicate of Nationality/Corporation VII. RESOURCES § 74:63 In general CHAPTER 75. SPAIN

I. OVERVIEW § 75:1 The basics § 75:2 Policies and trends—Trade and regulatory climate § 75:3 —Why register locally? § 75:4 —The future § 75:5 Laws, rules and regulations ccviii Table of Contents

II. REGISTRATION REQUIREMENTS § 75:6 What is a mark? § 75:7 Which marks may be registered?—Trademark for goods § 75:8 —Trademark for services § 75:9 — —Defensive mark § 75:10 — —Collective mark § 75:11 — —Certication mark § 75:12 — —Colored trademark and sound trademarks § 75:13 What cannot be registered? § 75:14 —Identical or similar mark § 75:15 —Marks with unauthorized content § 75:16 —Nominative or descriptive marks § 75:17 Who can register?—Proprietor or user § 75:18 —Authorized agent § 75:19 —Priority registrant

III. TRADEMARK REGISTER § 75:20 Where is the trademark registered?—Trademarks register § 75:21 —Exclusive use rights § 75:22 —Obligatory use of the trademark § 75:23 —Enforcement

IV. INITIAL REGISTRATION § 75:24 Procedural timeline—Search § 75:25 —Application § 75:26 —Review § 75:27 —Registration § 75:28 —Notications

V. REGISTRATION FORMS http://www.pbookshop.com § 75:29 Information checklist § 75:30 Common form requirements § 75:31 Initial registration documents—Power of attorney § 75:32 —Application for registration of trademark

§ 75:41 Assignments § 75:42 —Recordation of assignment § 75:43 —Legal documents § 75:44 Licensees or registered users § 75:45 —Recordation of license § 75:46 —Rights of the parties § 75:47 —Cancellation of assignment or license § 75:48 Post-Registration documents—Contract of Assignment (Deed of Assignment)

VII. RESOURCES § 75:49 In general CHAPTER 76. SWEDEN

I. OVERVIEW § 76:1 The basics § 76:2 Policies and trends—Trade and regulatory climate § 76:3 —Why register locally? § 76:4 —The future § 76:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 76:6 What is a mark? § 76:7 Which marks may be registered?—Trademark for goods § 76:8 —Trademark for services § 76:9 —Collective trademark § 76:10 —Colored trademarks, sound marks and three-dimensional marks § 76:11 —Company names § 76:12 What cannot be registered? § 76:13 —Conicting trademarks § 76:14 —Nominativehttp://www.pbookshop.com or descriptive trademarks § 76:15 —Trademarks that are immoral, deceptive, unauthorized content or opposed trademark, etc § 76:16 Who can register?—Proprietor or user § 76:17 —Authorized agent § 76:18 — —Priority registrant

III. TRADEMARK REGISTER § 76:19 Where is the trademark registered?—Trademark register § 76:20 —Requirement of distinctiveness § 76:21 —Exclusive use rights § 76:22 —Enforcement

IV. INITIAL REGISTRATION § 76:23 Procedure—Search and advice ccx Table of Contents

§ 76:24 —Application § 76:25 —Review § 76:26 —Registration

VII. RESOURCES § 76:47 In generalhttp://www.pbookshop.com CHAPTER 77. TAIWAN

I. OVERVIEW § 77:1 The basics § 77:2 Policies and trends—Trade and regulatory climate § 77:3 —Why register locally? § 77:4 —The future § 77:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 77:6 What is a mark? § 77:7 Which marks may be registered?—Trademark ccxi K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 77:8 — —Associated trademark § 77:9 — —Defensive trademark § 77:10 —Service mark § 77:11 —Collective mark § 77:12 —Certication trademark § 77:13 What cannot be registered?—Identical, similar, and deceptive trademarks—Identical or similar trademarks § 77:14 — —Deceptive trademarks § 77:15 —Opposed mark § 77:16 —Nominative or descriptive marks § 77:17 —Marks with unauthorized content § 77:18 —Marks with prohibited content/words/representations— Prohibited content § 77:19 — —Prohibited words or representations: § 77:20 Who can register?—Proprietor or user § 77:21 —Authorized agent § 77:22 — —Registration by foreign nationals § 77:23 —Priority registrant § 77:24 — —Priority before WTO accession § 77:25 —Joint owners or users/proposed corporation

III. TRADEMARK REGISTER § 77:26 Where is the trademark registered?—Trademark register § 77:27 —Requirement of distinctiveness § 77:28 —Exclusive use rights § 77:29 —Limitation on exclusive use rights § 77:30 —Enforcement § 77:31 —Civil remedies: § 77:32 —Civil remedies—Monetary damages § 77:33 — —Injunctive relief § 77:34 —Criminal liabilities § 77:35 — —Enforcementhttp://www.pbookshop.com by licensee § 77:36 — —Enforcement by foreign trademark owners IV. INITIAL REGISTRATION § 77:37 Procedural timeline—Search and advice § 77:38 —Application § 77:39 —Review § 77:40 —Publication § 77:41 —Opposition § 77:42 —Revocation

V. REGISTRATION FORMS § 77:43 Information Checklist § 77:44 Common form requirements ccxii Table of Contents

§ 77:45 Initial registration documents—Authorization of agent (power of attorney) § 77:46 — —Form § 77:47 —Application for registration of trademark § 77:48 — —Form § 77:49 —Adavit of intent to use § 77:50 Renewal of registration—Adavit of intent to use—Form

VI. POST-REGISTRATION § 77:51 Renewal of registration—Duration of protection § 77:52 —Renewal § 77:53 —Renewal after expiration § 77:54 —Reinstatement § 77:55 —Advertisement of renewal § 77:56 Change of registration—Change in registration particulars § 77:57 —Change in the type of a registration § 77:58 —Change in designated goods/services § 77:59 —Change in the trademark design § 77:60 Cancellation of registration § 77:61 —At request of owner § 77:62 —Action by interested party § 77:63 —Action by registrar § 77:64 Removal of trademark registration for improper use or non-use § 77:65 —Grounds for removal § 77:66 —Procedure and response § 77:67 — —Appeals § 77:68 —Eect of removal § 77:69 Assignments—Rights to assign § 77:70 — —Right to assign the application § 77:71 —Recordation of assignment § 77:72 —Legal documentshttp://www.pbookshop.com § 77:73 Licensees or registered users—Right to grant use § 77:74 —Recordation of license § 77:75 —Rights of licensee § 77:76 —Termination of license § 77:77 Post registration forms—Use of form § 77:78 —Information required § 77:79 —Application for extending the term of the trademark—Form § 77:80 Assignment—Use of form § 77:81 —Information required § 77:82 —Form

VII. RESOURCES § 77:83 In general ccxiii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms CHAPTER 78. THAILAND

I. OVERVIEW § 78:1 The basics § 78:2 Policies and trends—Trade and regulatory climate § 78:3 —Why register locally? § 78:4 —The future § 78:5 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 78:6 What is a mark? § 78:7 Which marks may be registered?—Trademark for goods § 78:8 —Trademark for services § 78:9 — —Collective trademark (set) § 78:10 — —Certication trademark (Mark of Guarantee) § 78:11 — —Defensive trademark § 78:12 — —Colored trademark § 78:13 — —Three-dimensional marks § 78:14 — —Well-known marks § 78:15 What cannot be registered?—Identical trademarks § 78:16 —Deceptively or confusingly similar marks § 78:17 —Opposed marks § 78:18 —Marks with unauthorized content § 78:19 —Marks with prohibited words or representations § 78:20 —Pharmaceutical marks § 78:21 —Marks with prohibited content § 78:22 —Well-known trademarks § 78:23 —Generic and descriptive marks § 78:24 Who can register?—Proprietor or user § 78:25 —Priority registrant § 78:26 —Authorized agent

III. TRADEMARKhttp://www.pbookshop.com REGISTER § 78:27 Where is the trademark registered?—Trademark register § 78:28 —Necessary characteristics § 78:29 —Distinctiveness § 78:30 —Exclusive use rights

IV. INITIAL REGISTRATION § 78:31 Procedural timeline—Search and advice § 78:32 —Application § 78:33 —Review § 78:34 —Registration

V. REGISTRATION FORMS § 78:35 Information checklist ccxiv Table of Contents

§ 78:36 Common form requirements § 78:37 Initial registration documents—Application for registration of trademark § 78:38 —Disclaimer § 78:39 —Application for priority claim § 78:40 —Request for extension of time—priority claim § 78:41 —Authorization of agent (power of attorney) § 78:42 —Power of attorney

VI. POST-REGISTRATION § 78:43 Renewal of registration—Duration of protection § 78:44 —Renewal before expiration § 78:45 Rescission and rectication—Amendment to registration § 78:46 —Rescission by owner § 78:47 —Rescission by registrar § 78:48 —Rescission of license § 78:49 —Certication marks § 78:50 Assignments—Right to assign § 78:51 —Registration of assignment § 78:52 Licensees or registered users—Right to grant use § 78:53 —Amendment of licensing agreement § 78:54 —Alteration or cancellation § 78:55 Post-Registration documents—Petition to transfer or inheritance of rights § 78:56 —Application for registration of license § 78:57 —Application to enter changes § 78:58 —Application for renewal § 78:59 —Application to cancel

VII. RESOURCES § 78:60 In general CHAPTER 79.http://www.pbookshop.com TUNISIA

II. REGISTRATION REQUIREMENTS § 79:9 What is a mark? ccxv K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 79:10 Which marks may be registered?—Trademark for goods § 79:11 —Trademark for services § 79:12 —Collective trademark § 79:13 —Colored trademark § 79:14 What cannot be registered? § 79:15 Who can register?—Proprietor or user § 79:16 —Authorized agent § 79:17 —Priority registrant § 79:18 —Incorporation

III. TRADEMARK REGISTER § 79:19 Where is the trademark registered?—Trademark register

IV. INITIAL REGISTRATION § 79:20 Procedural timeline—Search and advice § 79:21 —Application § 79:22 —Review § 79:23 —Publication

V. POST-REGISTRATION § 79:24 Duration of protection § 79:25 Renewal § 79:26 Cancellation of registration § 79:27 Assignments—Right to assign § 79:28 —Recordation of assignment § 79:29 —Legal documents § 79:30 Licensees or registered users—Right to grant use § 79:31 —Rights of the proprietor § 79:32 — —A penalties § 79:33 — —Damages § 79:34 — —A seizure § 79:35 — —A destruction of the imitated products § 79:36 — —A publicationhttp://www.pbookshop.com of the judgment in newspapers § 79:37 —Rights of the licensee § 79:38 —Recordation of license § 79:39 Registration forms—Power of attorney form § 79:40 —Deed of assignment form

VI. RESOURCES § 79:41 In general Appendix 79A. National Classication CHAPTER 80. TURKEY

I. OVERVIEW § 80:1 The basics ccxvi Table of Contents

§ 80:2 Policies and trends—Trade and regulatory climate § 80:3 —Why register locally?

II. REGISTRATION REQUIREMENTS § 80:4 What is a mark? § 80:5 Which marks may be registered?—Trademarks § 80:6 —Service marks § 80:7 —Certication marks § 80:8 —Collective marks § 80:9 What cannot be registered? § 80:10 —Absolute grounds for refusal of registration for Refusal of Registration § 80:11 —Relative grounds for refusal of registration for Refusal of Registration § 80:12 Who can register? § 80:13 —Representation of an applicant or registrant

IV. INITIAL REGISTRATION § 80:23 Search § 80:24 Communicationhttp://www.pbookshop.com of the ling details § 80:25 Examination and allowance of application § 80:26 Re-examination § 80:27 Re-consideration and appeal § 80:28 Publication § 80:29 Who may oppose? § 80:30 Opposition procedure § 80:31 Registration § 80:32 Average processing times § 80:33 Government fee schedule § 80:34 Marking

V. REGISTRATION FORMS § 80:35 In general § 80:36 Initial application form ccxvii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 80:37 Form for opposing a published application § 80:38 Power of attorney form § 80:39 Trademark assignment form § 80:40 License agreement

VI. POST-REGISTRATION § 80:41 Renewal of registration § 80:42 —Duration of protection § 80:43 —Renewal before expiration § 80:44 —Renewal after expiration § 80:45 —Reinstatement § 80:46 —Advertisement of renewal § 80:47 —Classication § 80:48 Amendment—Action by the tto at request of owner § 80:49 —Amendment of classication § 80:50 Alteration or modication—Obvious errors § 80:51 Cancellation of registration—At request of owner § 80:52 —Action by tto § 80:53 Invalidation of trademark for non-use § 80:54 —Time of commencement of invalidation action for non-use § 80:55 —Enforcement § 80:56 Change in legal status, name and address § 80:57 Assignments—Rights to assign § 80:58 —Mandatory disclosure of terms in assignment document § 80:59 —Non-mandatory disclosure of terms in assignment document § 80:60 —Recordal of assignment § 80:61 —Documents required for recordal of assignment § 80:62 Licenses § 80:63 —Recordation of license § 80:64 —Minimum disclosure for recordal of license agreement

VII. RESOURCEShttp://www.pbookshop.com § 80:65 In general CHAPTER 81. UKRAINE

I. OVERVIEW § 81:1 The bascis § 81:2 Policies and trends—Trade and regulatory climate § 81:3 —The future § 81:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 81:5 What is a mark? ccxviii Table of Contents

§ 81:6 Which marks may be registered? § 81:7 What cannot be registered? § 81:8 Who can register? § 81:9 —Ukrainian applicants § 81:10 —Foreign applicants

III. TRADEMARK REGISTER § 81:11 Where is the trademark registered?—Trademark register § 81:12 —Exclusive use rights § 81:13 —Validity

V. REGISTRATION FORMS § 81:21 Power of attorney § 81:22 The application for registration § 81:23 Application for registration

VI. POST-REGISTRATION § 81:24 Renewal of registration § 81:25 Alteration or modication § 81:26 Cancellation of registration § 81:27 —At request of the owner § 81:28 —If the tax is not paid § 81:29 —Followinghttp://www.pbookshop.com court procedure § 81:30 Removal of Trademark for Non-Use § 81:31 Assignments and license agreements CHAPTER 82. UNITED KINGDOM

I. OVERVIEW § 82:1 The basics § 82:2 Background § 82:3 Economy overview § 82:4 Laws, rules and regulations

II. REGISTRATION REQUIREMENTS § 82:5 What is a mark and which marks may be registered? ccxix K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 82:6 —International registrations § 82:7 —Collective marks § 82:8 —Certication marks § 82:9 —Defensive marks § 82:10 What cannot be registered—Marks which are not registrable in view of relative grounds § 82:11 —Marks which are not registrable in view of inherent grounds § 82:12 Who can register?

III. TRADE MARK REGISTER § 82:13 Where is the trade mark registered and what does it contain: § 82:14 Exclusive use rights § 82:15 Enforcement

V. APPLICATION DOCUMENTS § 82:23 Application form § 82:24 Power of attorney § 82:25 Certied copy § 82:26 Fees § 82:27 Documents—Tm3 application to register a trade mark § 82:28 —Tm7 notice of opposition and statement of grounds § 82:29 —Tm21 changehttp://www.pbookshop.com of proprietor's name or address or other change to an application § 82:30 —Tm11 renewal of trademark registration

VI. POST REGISTRATION § 82:31 Renewal § 82:32 Amendment of a trade mark registration § 82:33 Removal of trade marks for non-use § 82:34 Removal for other reasons § 82:35 Acquiescence § 82:36 Infringement § 82:37 Relief § 82:38 Groundless threats of infringement § 82:39 Passing o § 82:40 Assignments ccxx Table of Contents

§ 82:41 Licencing

VII. RESOURCES § 82:42 In general CHAPTER 83. UNITED STATES

I. OVERVIEW § 83:1 The basics § 83:2 Policies and trends—Trade and regulatory climate § 83:3 —Why register locally? § 83:4 —The future

II. REGISTRATION REQUIREMENTS § 83:5 What is a mark? § 83:6 Which marks may be registered?—Trademark (for goods) § 83:7 —Service mark § 83:8 —Certication mark § 83:9 —Collective mark § 83:10 —Colored marks § 83:11 What cannot be registered? § 83:12 —Marks that are “immoral, deceptive or scandalous” § 83:13 —Marks that are “disparaging” or that “falsely suggest a connection” § 83:14 —Marks that suggest a false geographical indication for wine or spirits § 83:15 —Marks that consist of ags, coats of arms or other insignia § 83:16 —Marks that are names, portraits or signatures of living individuals (or deceased presidents) § 83:17 —Marks likely “to cause confusion, or to cause mistake, or to deceive”http://www.pbookshop.com § 83:18 —Marks that are “merely descriptive” or “deceptively misdescriptive” § 83:19 —“Primarily geographically descriptive”/“Primarily geographically deceptively misdescriptive” marks § 83:20 —Marks that are “primarily merely” a surname § 83:21 —Congurations of products or containers that, as a whole, are functional matter which is incapable of functioning as a mark under §§ 1, 2 and 45 of the Trademark Act § 83:22 —“Generic” marks § 83:23 Who can register?

III. TRADEMARK REGISTER § 83:24 Where is the trademark registered?—United States Patent and Trademark Oce ccxxi K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms

§ 83:25 —Filing methods § 83:26 —Registers § 83:27 —Single v. multi-class applications § 83:28 —Filing bases § 83:29 —Exclusive use rights § 83:30 —Constructive use § 83:31 —Incontestability § 83:32 —Marking § 83:33 —Remedies; infringement; enforcement

V. REGISTRATION FORMS § 83:42 In general § 83:43 Designation of domestic representative § 83:44 Power of attorney

VI. POST-REGISTRATION § 83:45 Maintenance and renewal of registration—Maintenance § 83:46 —Duration of protection § 83:47 —Renewal before expiration § 83:48 —Renewal after expiration § 83:49 —Reinstatement § 83:50 Alteration or modication—Correction of mistake in registration § 83:51 —Amendmenthttp://www.pbookshop.com to mark § 83:52 —Amendment of registration, other than amendment of mark § 83:53 Cancellation § 83:54 Assignments § 83:55 Replacement § 83:56 Recordation form cover sheet

VII. RESOURCES § 83:57 In general CHAPTER 84. VIETNAM

I. OVERVIEW § 84:1 The basics ccxxii Table of Contents

§ 84:2 Policies and trends—Trade and regulatory climate § 84:3 —Why register locally? § 84:4 —The future § 84:5 Laws, rules and regulations

III. TRADEMARK REGISTER § 84:26 Where is the trademark registered?—Trademark register § 84:27 —National registry § 84:28 —Validityhttp://www.pbookshop.com of the mark § 84:29 —Enforcement § 84:30 Registration—Requirement of distinctiveness

IV. INITIAL REGISTRATION § 84:31 Procedural timeline—Application § 84:32 —Review § 84:33 —Registration

V. REGISTRATION FORMS § 84:34 Documents § 84:35 Initial registration documents—Authorization of agent (power of attorney) § 84:36 —Application for registration of trademark ccxxiii K 2012 Thomson Reuters/West, 4/2012 Trademark Practice & Forms VI. POST-REGISTRATION § 84:37 Renewal of registration—Duration of protection § 84:38 —Renewal § 84:39 —Suspension for failure to renew § 84:40 —Restoration § 84:41 Alteration or rectication—Rectication dened § 84:42 —Suspension § 84:43 —Cancellation § 84:44 Assignments—Right to assign § 84:45 —Deed of assignment § 84:46 —Recordation of assignment § 84:47 —Suspension or invalidation § 84:48 Licensees or registered users—Right to grant use § 84:49 —Recordation § 84:50 —Rights of licensee § 84:51 —Required information § 84:52 —Necessary documents § 84:53 Post-Registration documents—Application for extension of validity of certicate of registration of mark § 84:54 Deed of Assignment—Deed of assignment

VII. RESOURCES § 84:55 In general

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