Trademark Examination Guidelines
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EXPERT DETERMINATION LEGAL RIGHTS OBJECTION Merck & Co
ARBITRATION AND MEDIATION CENTER EXPERT DETERMINATION LEGAL RIGHTS OBJECTION Merck & Co, Inc. v. Merck KGaA Case No. LRO2013-0068 1. The Parties Objector/Complainant is Merck & Co, Inc., United States of America, represented by Reed Smith LLP, United States of America. Applicant/Respondent is Merck KGaA, Germany, represented by Bettinger Schneider Schramm, Germany. 2. The applied-for gTLD string The applied-for gTLD string is <.emerck> (the “Disputed gTLD String”). 3. Procedural History The Legal Rights Objection (“LRO”) was filed with the WIPO Arbitration and Mediation Center (the “WIPO Center”) on March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the “Procedure”). An amended Objection was filed with the WIPO Center on March 27, 2013. In accordance with Article 9 of the Procedure, the WIPO Center has completed the review of the Objection on March 28, 2013 and has determined that the Objection complies with the requirements of the Procedure and the World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal Rights Objections (the “WIPO Rules for New gTLD Dispute Resolution”). In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified Applicant of the Objection, and the proceedings commenced on April 16, 2013. In accordance with Article 11(b) and relevant communication provisions of the Procedure, the Response was timely filed with the WIPO Center on May 15, 2013. The WIPO Center appointed Willem J.H. Leppink as the Panel in this matter on June 14, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance with Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution. -
Mere Allegations of Bad Faith Insufficient Under UDRP, Even in Obvious Cybersquatting Cybersquatting Cases International - Hogan Lovells LLP
Mere allegations of bad faith insufficient under UDRP, even in obvious Cybersquatting cybersquatting cases International - Hogan Lovells LLP June 10 2013 In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), the panel has held that the mere registration of domain names consisting of obvious misspellings of a trademark, without supporting evidence of bad-faith registration and use, is insufficient to obtain the transfer of the domain names. The complainant, Ticket Software LLC (Connecticut, United States), owned the US trademark TICKETNETWORK (Registration No 2,956,502), registered on May 31 2005 and used in connection with computer software for the purchase and sale of entertainment tickets. The complainant operates a website at ‘www.ticketnetwork.com’, where it has created an online marketplace for sale of entertainment tickets. The respondent was Stephen Troy, a private individual from Florida, United States, who had registered the domain names ‘ricketnetwork.com’, ‘ticketneteork.com’, ‘ticketnetwirk.com’, ‘ticketnetworj.com’ and ‘tivketnetwork.com’ using a proxy service provided by the domain name registrar. The domain names were registered on January 13 2011 and did not point to an active website. The complainant contended that the respondent had engaged in typosquatting, given that the domain names consisted of common typographical errors made by internet users when attempting to reach the complainant's official website, and thus filed a complaint under the UDRP to recover the domain names. To be successful in a complaint under the UDRP, a complainant must satisfy all of the following three requirements: l The domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights; l The respondent has no rights or legitimate interests in respect of the domain name; and l The domain name has been registered and is being used in bad faith. -
Introduction to Trademark Law and Practice
WORLD INTELLECTUAL PROPERTY ORGANIZATION INTRODUCTION TO TRADEMARK LAW & PRACTICE THE BASIC CONCEPTS A WIPO TRAINING MANUAL GENEVA 1993 (Second Edition) ( ( WIPO PUBLICATION No 653 (El ISBN 92-805-0167-4 WIPO 1993 PREFACE The present publication is the second edition of a volume of the same title that was published by the World Intellectual Property Organization (WIPO) in 1987 and reprinted in 1990. The first edition was written by Mr. Douglas Myall, former Assistant Registrar of Trade Marks, United Kingdom. The present revised edition of the publication has been prepared by Mr. Gerd Kunze, Vevey, Switzerland, and reflects his extensive expertise and experience in the administration of the trademark operations of a large international corporation, Nestle S. A., as well as his intensive involvement, as a leading representative of several international non-governmental organizations, in international meetings convened by WIPO. This publication is intended to provide a practical introduction to trademark administration for those with little or no experience of the subject but who may have to deal with it in an official or business capacity. Throughout the text, the reader is invited to answer questions relating to the text. Those questions are numbered to correspond to the answers that are given, with a short commentary, in Appendix I. Arpad Bogsch Director General World Intellectual Property Organization February 1993 ( ( LIST OF CONTENTS CHAPTER 1. TRADEMARKS AND OTHER SIGNS: A GENERAL SURVEY 7 1.1 Use of trademarks in commerce . 9 1.2 What is a trademark?. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 9 1.3 Need for legal protection .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. .. 10 1.4 How can a trademark be protected? . -
Trademark Examination Guidelines
STATE INTELLECTUAL PROPERTY OFFICE OF THE REPUBLIC OF CROATIA TRADEMARK EXAMINATION GUIDELINES December 2014 SIPO Trademark Examination Guidelines Contents Contents CHAPTER I INTRODUCTION AND LEGAL FRAMEWORK 1 1.1 Introduction 1 1.2 Legal Framework 1 CHAPTER II RECEIPT OF APPLICATIONS AND FORMALITIES EXAMINATION 3 2.1 Receipt of Application 3 2.2 Accordance of a Filing Date of an Application 3 2.2.1 Requirements 3 2.2.2 Remedy of Deficiencies (Article 22 of the Act) 4 2.3 Additional Requirements 4 2.3.1 Applicant 5 2.3.1.1 Applicant’s Name and Address (Article 32 of the Regulations) 6 2.3.2 Representative 6 2.3.2.1 Representative’s Name and Address (Article 32 paragraphs 2 and 4 of the Regulations) 7 2.3.2.2 Power of Attorney 7 2.3.3 Indication and List of the Goods and Services (Article 2, paragraphs 1 and 2, and Article 10, paragraph 1 of the Regulations) 7 2.3.4 Priority Right 7 2.3.4.1 Union Priority Right (Article 18 of the Act) 7 2.3.4.2 Exposition Priority Right (Article 19 of the Act) 8 2.3.5 Indication and Representation of a Sign 9 2.3.5.1 Verbal Sign (Article 3 of the Regulations) 9 2.3.5.2 Figurative Sign (Article 4 of the Regulations) 9 2.3.5.3 Three-dimensional Sign . (Article 5 of the Regulations). 9 2.3.5.4 Signs Consisting of one Colour or of a Combination of Colours (Article 6 of the Regulations) 10 2.3.5.5 Other Types of Signs (Article 7 of the Regulations) 10 2.3.5.6 Other Requirements Concerning the Representation of a Sign (Article 8 of the Regulations) 10 2.3.5.7 Attachments to the Application (Article 9 of the -
Guidelines for Examination in the European Patent Office
GUIDELINES FOR EXAMINATION IN THE EUROPEAN PATENT OFFICE Published by the European Patent Office Published by the European Patent Office Directorate Patent Law 5.2.1 D-80298 Munich Tel.: (+49-89) 2399-4512 Fax: (+49-89) 2399-4465 Printed by: European Patent Office, Munich Printed in Germany © European Patent Office ISBN 3-89605-074-5 a LIST OF CONTENTS page General Part Contents a 1. Preliminary remarks 1 2. Explanatory notes 1 2.1 Overview 1 2.2 Abbreviations 2 3. General remarks 3 4. Work at the EPO 3 5. Survey of the processing of applications and patents at the EPO 4 6. Contracting States to the EPC 5 7. Extension to states not party to the EPC 5 Part A – Guidelines for Formalities Examination Contents a Chapter I Introduction I-1 Chapter II Filing of applications and examination on filing II-1 Chapter III Examination of formal requirements III-1 – Annex List of Contracting States to the Paris Convention (see III, 6.2) III-20 Chapter IV Special provisions IV-1 Chapter V Communicating the formalities report; amendment of application; correction of errors V-1 Chapter VI Publication of application; request for examination and transmission of the dossier to Examining Division VI-1 Chapter VII Applications under the Patent Cooperation Treaty (PCT) before the EPO acting as a designated or elected Office VII-1 Chapter VIII Languages VIII-1 Chapter IX Common provisions IX-1 Chapter X Drawings X-1 Chapter XI Fees XI-1 Chapter XII Inspection of files; communication of information contained in files; consultation of the Register of European -
Patent Cooperation Treaty for Private Applicants | 19
Patent Cooperation Treaty (PCT) for Private Applicants 1 June 2021 Intellectual Property Office is an operating name of the Patent Office 1 | Intellectual Property Office Patent Cooperation Treaty (PCT) GB Receiving Office Notes for Private Applicants This note is intended to serve as a basic introduction to filing International patent applications under the Patent Cooperation Treaty (PCT) with the GB Receiving Office at the Intellectual Property Office. Whilst we have made every effort to cover important aspects this note is not comprehensive and you are advised to read the various PCT Guides issued by WIPO (World Intellectual Property Organisation) and to seek advice when in doubt. THE PCT SYSTEM IS COMPLEX. YOU ARE STRONGLY ADVISED TO SEEK THE HELP OF A CHARTERED PATENT AGENT. Deadlines A chart showing the timelines for action on your application is attached at ANNEX B. Reminders will not be issued at any stage during the processing of your application and failure to meet deadlines may mean you incurring surcharges or even losing your application. 2 | Intellectual Property Office Introduction The Patent Cooperation Treaty (PCT) system allows applicants seeking patent protection, in a number of countries, to file a single international application in English with the Intellectual Property Office. The International Unit at the Intellectual Property Office acts as the GB Receiving Office under the PCT. A PCT application has the same effect as a regular filing in each of the national or regional Offices of the PCT Contracting States that you select or designate when you complete the PCT Request form PCT/RO/101. Your PCT application is processed through 2 basic stages, the International Phase and the National (for example: seeking a national UK patent) or Regional Phase (for example: seeking a regional European patent). -
Taking Care of Article 6Bisness: How Belmora LLC V. Bayer Consumer Care AG Made the Well-Known Mark Doctrine Inevitable in the U.S
Washington Journal of Law, Technology & Arts Volume 12 | Issue 4 Article 4 4-1-2017 Taking Care of Article 6bisness: How Belmora LLC v. Bayer Consumer Care AG Made the Well-Known Mark Doctrine Inevitable in the U.S. Gwen Wei Follow this and additional works at: https://digitalcommons.law.uw.edu/wjlta Part of the Intellectual Property Law Commons Recommended Citation Gwen Wei, Taking Care of Article 6bisness: How Belmora LLC v. Bayer Consumer Care AG Made the Well-Known Mark Doctrine Inevitable in the U.S., 12 Wash. J. L. Tech. & Arts 501 (2017). Available at: https://digitalcommons.law.uw.edu/wjlta/vol12/iss4/4 This Article is brought to you for free and open access by the Law Reviews and Journals at UW Law Digital Commons. It has been accepted for inclusion in Washington Journal of Law, Technology & Arts by an authorized editor of UW Law Digital Commons. For more information, please contact [email protected]. Wei: Taking Care of Article 6<i>bis</i>ness: How <i>Belmora LLC v. Bay WASHINGTON JOURNAL OF LAW, TECHNOLOGY & ARTS VOLUME 12, ISSUE 4 SPRING 2017 TAKING CARE OF ARTICLE 6BISNESS: HOW BELMORA LLC V. BAYER CONSUMER CARE AG MADE THE WELL-KNOWN MARK DOCTRINE INEVITABLE IN THE U.S. Gwen Wei* © Gwen Wei CITE AS: 12 WASH. J.L. TECH. & ARTS 501 (2017) http://digital.law.washington.edu/dspace-law/handle/1773.1/1793 ABSTRACT In Belmora LLC v. Bayer Consumer Care AG, the Fourth Circuit held that a foreign company with no U.S. federal trademark registration for "FLANAX" could nevertheless demand cancellation of its competitor's U.S. -
Patent Cooperation Treaty and Regulations Under the PCT
Appendix T Patent Cooperation Treaty and Regulations Under the PCT Article 24 Possible Loss of Effect in Designated States Done at Washington on June 19, 1970, amended Article 25 Review by Designated Of®ces on September 28, 1979, modi®ed on February 3, Article 26 Opportunity to Correct Before 1984, and October 3, 2001 (as in force from April Designated Of®ces 1, 2002) Article 27 National Requirements Article 28 Amendment of the Claims, the TABLE OF CONTENTS 1 Description, and the Drawings, Before Designated Of®ces Article 29 Effects of the International Publication : Introductory Provisions Article 30 Con®dential Nature of the International Article 1 Establishment of a Union Application Article 2 De®nitions CHAPTER II: International Preliminary CHAPTER I: International Application and Examination International Search Article 31 Demand for International Preliminary Article 3 The International Application Examination Article 4 The Request Article 32 The International Preliminary Article 5 The Description Examining Authority Article 6 The Claims Article 33 The International Preliminary Article 7 The Drawings Examination Article 8 Claiming Priority Article 34 Procedure Before the International Article 9 The Applicant Preliminary Examining Authority Article 10 The Receiving Of®ce Article 35 The International Preliminary Article 11 Filing Date and Effects of the Examination Report International Application Article 36 Transmittal, Translation, and Article 12 Transmittal of the International Communication, of the International Application to the -
Priority Under the Paris Convention(PDF:128KB)
(Draft) Part V Chapter 1 Priority under the Paris Convention Chapter 1 Priority under the Paris Convention 1. Overview The priority under the Paris Convention is the right of a person who has filed a patent application in one of the member countries of the Paris Convention (the first country) to receive the same treatment as that at the date when the patent application was filed in the first country (hereinafter referred to as "priority date") in determination of novelty, inventive step, etc. for patent applications in another member country of the Paris Convention (the second country) regarding the content described in the filing documents of the first patent application. Where patent applications etc. are filed in multiple countries for the same invention, simultaneous filing of patent applications etc. places a great burden on an applicant because preparation of translation etc. or different procedures for each country are required. To reduce the burden of an applicant, the Paris Convention provides a system of the priority (Paris Convention Article 4(A) to (I)). The Patent Act Article 43 also prescribes the procedures in Japan for claiming the priority based on the Paris Convention. In this Chapter, the application filed in Japan as the "second country" is sometimes and simply referred to as an "application in Japan". 2. Requirements and Effects of Priority Claim under the Paris Convention 2.1 Person who can claim the priority under the Paris Convention A person who can claim priority under the Paris Convention shall be the national of one of the member countries of the Paris Convention (including a person who is recognized as the national of one of the member countries by the provision of Paris Convention Article 3) and who has regularly filed a patent application to one of the member countries of the Paris Convention or his/her successor (Paris Convention Article 4A (1)). -
Patents, EAPO (Regulations)
Patent Regulations Under the Eurasian Patent Convention* (adopted by the Administrative Council of the Eurasian Patent Organization (EAPO) at its second (1st ordinary) session on December 1, 1995, with the amendments and additions adopted by the Administrative Council of the EAPO at its sixth (4th ordinary) session on November 25 and 26, 1997, its eleventh (8th ordinary) session from October 15 to 19, 2001, and fourteenth (10th ordinary) session from November 17 to 21, 2003) LIST OF RULES Rule Chapter I: General Provisions Subject Matter of Regulations....................................... 1 Interpretation of Basic Terms........................................ 2 Chapter II: Substantive Patent Law Criteria of Patentability of an Invention........................ 3 Requirement of Unity of Invention ............................... 4 Filing of the Eurasian Application by Two or More Applicants ..................................................................... 5 Right of Priority ............................................................ 6 Effects of Filing of the Eurasian Application by Non- Entitled Persons ............................................................ 7 Right of the Inventor to be Mentioned in the Eurasian Application and the Eurasian Patent ............................. 8 Right to a Eurasian Patent............................................. 9 Provisional Legal Protection ......................................... 10 Disclosure of the Subject Matter of the Invention......... 11 Interpretation of Claims in Case of Use -
Intellectual Property Right Assignments Q&A: US
Intellectual property right assignments Q&A: US, Practical Law Country Q&A w-026-1550 Intellectual property right assignments Q&A: US by Michael S. Palmisciano, Christopher T. McWhinney and Kimberly B. Herman, Sullivan & Worcester LLP Country Q&A | Law stated as at 31-May-2020 | United States This Q&A provides country-specific commentary on the following standard documents: Assignment of intellectual property rights: Cross-border. Assignment of trade marks: Cross-border. Assignment of copyright: Cross-border. Assignment of patents: Cross-border. Assignment of industrial designs: Cross-border. Waiver of moral rights: Cross-border. Letter confirming assignment of intellectual property rights: Cross-border. and forms part of Cross-border Intellectual property. Key aspects of intellectual property right assignments Definition of IP rights Assigning the benefit of licences to use IP rights Assigning future intellectual property rights Implied covenants Right to sue for past infringement Right of priority Tax considerations Power of Attorney Assistance with future proceedings Perfecting the assignment Liability Guarantor Formalities for assignment Compliance with local law and practice © 2020 Thomson Reuters. All rights reserved. 1 Intellectual property right assignments Q&A: US, Practical Law Country Q&A w-026-1550 Brexit Registration and recordal aspects of intellectual property right assignments Registrable intellectual property rights Assignment recordal / registration Warranties and indemnities in intellectual property right assignments -
Wipo Intellectual Property Handbook Wipo Publication
WIPO INTELLECTUAL PROPERTY HANDBOOK WIPO PUBLICATION No. 489 (E) ISBN 978-92-805-1291-5 WIPO 2004 Second Edition Reprinted 2008 Detailed Table of Contents Chapter 1 Introduction The Concept of Intellectual Property 3 The World Intellectual Property Organization (WIPO) 4 History 4 Mission and Activities 5 Structure 7 Administration 8 Membership 9 Constitutional Reform 9 Wider Consultation and Outreach 12 Chapter 2 Fields of Intellectual Property Protection Patents 17 Introduction 17 Conditions of Patentability 17 Drafting and Filing a Patent Application 22 Examination of a Patent Application 24 Infringement 27 Exploitation of the Patented Invention 33 Compulsory Licenses 34 Utility Models 40 ii WIPO Intellectual Property Handbook: Policy, Law and Use Copyright and Related Rights 40 Introduction 40 Copyright Protection 41 Subject Matter of Copyright Protection 42 Rights Comprised in Copyright 43 Related Rights 46 Ownership of Copyright 49 Limitations on Copyright Protection 50 Piracy and Infringement 51 Remedies 52 Intellectual Property and Traditional Cultural Expressions 56 Trends and Experiences in the Protection of TCEs 64 Conceptual and Policy Questions 66 Recent and Possible Future Developments 67 Trademarks 67 Introduction 67 Definitions 68 Signs Which May Serve as Trademarks 70 Criteria of Protectability 71 Protection of Trademark Rights 77 Use Requirements 77 Trademark Registration 79 Removal of the Trademark from the Register 82 Trademark Piracy, Counterfeiting and Imitation of Labels and Packaging 90 Change of Ownership 92 Trademark