Miami Beach, FL, April 23-27, 2012 – upon its return to Europe from Miami, FL, where the latest Annual General Meeting of the association took place, CIOPORA draws a balance of the productive and intensive work & fun week in Miami.

The CIOPORA AGM Week 2012 was extraordinary in many regards: the intensive educational program provided by the association for the members, the exotic geographic setting and the spectacular venues – all of these made the AGM 2012 very special for the CIOPORA community. The main focus of the week was also of a particular character. As the President of the association Andrea Mansuino emphasized in his welcome speech at the AGM on April 24, this year CIOPORA went to USA pursuing two goals: to increase the visibility of the association and its activities beyond the big pond as well as to provide the members with an update on the latest developments of IP protection for plant innovation in the U.S. and the Americas in general. Both objectives were successfully achieved during the AGM week.

The AGM concentrated on the discussion of the internal matters of the association. During the event a new contribution scheme and fee levels were approved by the members. Furthermore, the reports on the latest developments of the CIOPORA Working groups were delivered. Jan de Riek,  the chairman of the Working Group on Molecular Techniques, informed the meeting about the intention of the group to initiate a CIOPORA driven molecular marker project. Lars Henriksen, the chairman of Working Group on DUS, made an announcement about the intention of his group to put a new paper on DUS on vote at the AGM 2013. During the closing part of the AGM, which was open for non-member breeders, the Vice Secretary General of UPOV, Peter Button, and the Vice- President of the CPVO, Carlos Godinho, held speeches on the latest developments in UPOV and the CPVO respectively. The AGM was wrapped up in the AGM Dinner in the spectacular location of the Smith & Wollensky Restaurant in southernmost point of Miami Beach.

During the International IP Conference on April 25, which served as the culmination of the week’s events and attracted 73 participants, speakers from the U.S., Canada and South America continued informing the attendees about the important IP protection matters in their countries. Mrs. Kitisri Sukhapinda from the USPTO kindly overtook the role of the chairwoman of the conference. The morning session of the IP Conference was dedicated to the IP topics in the U.S., such as novelties brought to the Plant Patents by the America Invents Act. The afternoon session covered issues of IP protection in UPOV, Latin America and Canada. Of a special significance for CIOPORA were the presence and the presentations given by the President of ASOCOFLORES Mr. Augusto Solano and by a representative of EXPOFLORES, Mr. Remigio Davalos. Both speakers emphasized the high significance of plant innovation and its effective protection for the successful development of the horticultural sector in Columbia and Ecuador, countries with a leading position in the world’s floricultural production and export.

The presentations by the representatives of growers from the Latin America had heralded the shift of the events’ focus from IP matters towards the producers of horticultural crops who hosted the CIOPORA group during the business excursion on April 26. More than 40 participants received a unique possibility to visit the logistic center of ESMERALDA Farms, the family owned and driven 600 ha premises of COSTA farms, and KERRY’s Bromeliads, which apart from being one of the leading growers of orchids in the area has developed its own breeding program.

The CIOPORA AGM Week 2012 in Miami became another successful attempt of the association to unite all the parts of production chain behind the idea of value and the necessity of a strong protection of plant innovation. The presence of the special guests from USPTO, UPOV, CPVO, ASOCOFLORES and EXPOFLORES emphasized the strength of CIOPORA’s position in its relations with governmental and intergovernmental bodies, as well as with the associations of the leading growers of the market. CIOPORA is looking forward to further successful cooperation and knowledge exchange with breeders, growers and authorities from the Americas and other continents.

CIOPORA is the International Association of Breeders of Vegetatively Reproduced Ornamental and Fruit Varieties. Breeders of such crops hold ca. 2/3 of all PVR titles in the world. Since more than 50 years CIOPORA represents them in all matters of Intellectual Property Protection.

Contact : CIOPORA, P.O. Box 13 05 06, 20105 Hamburg, Germany
Administrative Office: Gaensemarkt 45, D – 20354 Hamburg, GERMANY
Phone: +49 40 555 63 702, Fax: +49 40 555 63 703,
gro.aropoicnull@ofni
www.ciopora.org

Author: Anna Kähne

The aim of the Seminar is to increase awareness and practical knowledge of the Hague system among actual and potential users, whether in industry or in private practice, and to focus on the needs of independent and in-house industrial property agents (paralegals as well as attorneys) who file applications for international industrial design registrations and who administer such registrations. The Seminar will cover all aspects of the Hague system including legal and practical matters (main features and advantages of the Hague system, different procedures, etc.), as well as the latest trends in the field of international industrial design registration.

To view the Provisional Program, General Information document and to register online, please visit: http://www.wipo.int/hague/en/meetings/seminars.html” target=”_blank”>http://www.wipo.int/hague/en/meetings/seminars.html

Language: English, French
Organiser: The World Intellectual Property Organization (WIPO)

For further information and online registration, please, click HERE

‘Crayon Shin-chan’ is a cartoon character in a series created by a Japanese cartoonist, the late Yoshito Usui. With copyright solely authorised by Yoshito Usui in 1992, Futabasha Co Ltd of Japan, believed that three Chinese companies, including Shanghai Enjia, used images of Crayon Shin-chan in many goods, promotional activities and trademarks without authorisation, and conducted franchising activities in the market in respect of Crayon Shin-chan products via various media so that these companies had infringed its copyright and seriously affected its authorised business and commercial promotion of cartoon images of Crayon Shin-chan. Therefore, Futabasha brought a lawsuit against the three Chinese companies to the court and asked for RMB 1.06 million ($167,615) in compensation for its loss.

 At the hearing, Shanghai Enjia argued that it legally used the trademarks that had been approved for registration, and so it had properly exercised its trademark right. The other two defendants, Guangzhou Chengyi Optical Co Ltd and Jiangsu Xiangshui Shifu Economic Development Co Ltd, argued that they had legally obtained the trademark registrations of the word and the design concerning Crayon Shin-chan, so their use didn’t constitute an infringement of the copyright.

 The Shanghai Municipal No. 1 Intermediate People’s Court held that the images and calligraphic works of Crayon Shin-chan have originality and belong to works of fine arts under the Copyright Law of China. The facts that the defendant, Shanghai Enjia, used and reproduced the images and characters of Crayon Shin-chan on its products and sold the products and also promoted them for sale via the Internet constituted the acts of reproducing, distributing, and communicating through an information network under the Copyright Law of China. The defendant, Shanghai Enjia, implemented the exclusive right of the prior copyright owner without authorisation in the process of exercising the right of licensed trademarks, so it did constitute an infringement of the copyright and the company should bear relative liability for the infringement.

 The other two defendants’ activities—registering and holding the trademarks—are not exclusive rights the copyright owner should enjoy, so they did not constitute copyright infringement under the law. Therefore, the court ordered Shanghai Enjia to stop infringement and pay compensation to Futabasha.

 Trade secrets can apply for a closed hearing

 The National People’s Congress passed the Amendment to the Criminal Procedure Law of the People’s Republic ofChinaon March 14, 2012. The new law will come into force on January 1, 2013.

 The present Criminal Procedure Law of China was enacted in 1979 and first amended in 1996; this is the second important amendment. The number of articles in the amended Criminal Procedure Law increases from 225 to 290 and the contents relating to the amendment involve evidence systems, compulsory measures, defence systems, investigative measures, trial procedures, enforcement procedures, etc, and a special procedure is added.

 According to Article 152 of the present law, cases of first instance in a people’s court shall be heard in public, but cases involving state secrets or personal privacy shall not be heard in public. The amended law changes Article 152 to a new Article 183 and adds a provision that where the party applies for a closed hearing in a case involving trade secrets, a closed hearing may be conducted.

 This amendment further enhances the feasibility of criminal law protection and strengthens the IP rights-related criminal trial’s functions of punishing and deterring criminals.

Author: Xiang Gao

Peksung Intellectual Property Ltd

Xiang Gao is a partner at Peksung Intellectual Property Ltd and head of Peksung’s trademarks department.

 The cause of this dispute can be traced back 11 years. ProviewTaipei, like Proview Shenzhen a subsidiary of Proview International, registered the iPad trademark in a number of countries and regions as early as 2000. Proview Shenzhen registered the trademark in two classes in mainlandChinain 2001. At that time Apple had not yet launched its tablet PC product iPad.

 In 2009, Apple founded IP Application Development Limited (IPADL), a company registered in theUKseemingly for the sole purpose of buying the iPad trademark on a global scale. Because this company’s name has the same abbreviation as iPad, as alleged by IPADL, IPADL contacted Proview and asked to buy the trademark. In 2009, Proview Taipei sold the global trademark right of iPad to IPADL and then Apple bought the rights to use the trademark from IPADL. However, Proview said that the iPad trademark right inChinawas not included in the transfer. Proview Shenzhen claims it still owns the iPad trademark right inChinaand Proview Taipei has no right to sell it.

 Apple and IPADL brought a lawsuit against Proview Shenzhen to the Shenzhen Intermediate People’s Court, claiming the iPad trademark and RMB4 million ($630,000) compensation. The Shenzhen Intermediate People’s Court accepted the case in April 2010. After three hearings were held, the court made the first instance ruling in December last year, rejecting the claim of Apple and IPADL. Proview Shenzhen won at the first instance.

 Shenzhen Intermediate People’s Court held that if the plaintiff, Apple and IPADL, would like to obtain another’s trademark via business means, they should bear a higher duty of care and conclude a trademark assignment contract with the trademark holder as well as going through the necessary procedure of trademark assignment in accordance with Chinese laws. The court further held that in this case, the trademark assignment contract was signed between the plaintiff, IPADL and Proview Taipei, and that ‘apparent-agency’ was not established between IPADL and the defendant, Proview Shenzhen. Therefore, the court held that the plaintiff’s claims lack factual and legal basis and thus should be rejected.

 Apple appealed to the Guangdong High People’s Court in January 2012. The court held the second instance hearing of this trademark dispute on February 29, 2012. Apple and Proview Shenzhen provided new evidence and debated fiercely in the court. The chief judge summarised two key points in this case: first, whether trademark assignment can be established between Proview Shenzhen and IPADL; and second, whether Proview Shenzhen is bound by the trademark assignment contract between Proview Taipei and IPADL. After a five-hour hearing, the court was adjourned.

 The chief judge mediated between Apple and Proview Shenzhen at the end of the hearing. The two sides had only attorneys present in the court hearing, who said they would make final decisions after discussion with their clients. A final ruling by the high court is expected to take several weeks. Although the two sides debated fiercely in the court, it is believed that this case may still be concluded via mediation.

 Author:  Stephen Yang

Peksung Intellectual Property Ltd

 A utility model is a new technical solution relating to the shape, structure, or combination of the two, of a product, which is fit for practical use. In other words, utility model patents protect products, but not methods. A Chinese utility model is valid for 10 years from the filing date. There is no substantive examination for a utility model. Hence, a utility model patent is usually granted much quicker than an invention application. Under the current electronic examination system in SIPO, a utility model patent can be granted in as quickly as three months whereas an invention needs on average two and half years

The patent law and implementing regulations have new provisions which address the issue related to the situation where an applicant files a utility model application and an invention application for the same invention-creation on the same day. The utility model is usually granted first and when the invention application is ready to be allowed and the utility model is still valid at that time, the applicant may abandon the utility model and choose the invention patent. The utility model is then abandoned on the issue day of the invention patent.

In fact, these provisions are put in place as an exception to double patenting, as only one patent shall be granted for one invention-creation. These provisions clearly allow one utility model patent and one invention patent to be granted for the same invention-creation, as long as they are not in force at the same time. According to the Guidelines for Examination, double patenting means claims in two or more patents having the same scope of protection, in that they protect the same technical solution. In other words, if an applicant gets a utility model patent and an invention patent for the same product, but with different scope, it can keep both as they will not be considered double patenting, even if the scope of their claims overlap.

In reality, if an applicant files a utility model application and an invention application, it is more than likely that it will obtain claims in utility model patents and invention patents with differing scopes, even if both applications have exactly the same set of claims at the time of filing. Usually, the claims of the invention application have been amended, often narrowed, during prosecution when the claims are ready to be allowed. In contrast, utility model applications are often granted with the same claims as filed as no substantive examination is conducted, assuming the utility model application complies with relevant provisions, such as formality, and patentable subject matter. In this case, the applicants do not need to abandon the utility model and could keep both the utility model and the invention.

However, if the claims of the invention application have to be narrowed in substantive examination probably in light of prior art references cited by the examiner, then the granted claims of the utility model patent may not have novelty or inventiveness as they are the same as the invention application at filing. In many cases, this is true, especially if the claims of the invention application are found to have no novelty, which means one piece of prior art reference discloses all the technical features of the claims. However, if the claims of the invention application are narrowed due to alleged lack of inventiveness by the examiner, often using a combination of prior art references, then the claims of the utility model patent may still be valid, due to differing requirements of inventiveness for the invention and utility models.

A Chinese utility model has a lower requirement of inventiveness than that for an invention patent. The patent law prescribes that the inventiveness of invention means as compared with prior art, the invention has prominent substantive features and represents notable progress. The inventiveness of the utility model means as compared with prior art, the utility model has substantive features and represents progress. As can be seen, inventiveness of invention or utility model includes two aspects: (prominent) substantive features and (notable) progress. To determine (prominent) substantive features is to determine whether an invention or a utility model is obvious in light of prior art. Notable progress basically means advantageous technical effects achieved by the invention or utility model. Clearly, the requirements for utility models are lower in both aspects. The same method of assessing (prominent) substantive features, the so-called problem-solution approach, is used for both invention and utility model. Specifically, the following steps are followed: determining the closest prior art, identifying distinguishing features and the technical problem actually solved by the invention or utility model and then determining whether or not there exists a technical motivation in the prior art so that one skilled in the art would apply the distinguishing features to the closest prior art to solve the technical problem.

The difference between the requirements of inventiveness for invention and utility model is embodied mainly by whether the existence of technical motivation in the prior art can be determined. The Guidelines for Examination prescribe that determining the existence of technical motivation for invention and utility model differs in the following two aspects

1 Field of prior art references

For an invention, the examiner shall consider not only the technical field to which the invention belongs, but also the proximate or relevant technical fields, and those other technical fields that may give technical motivation. In contrast, for a utility model, the examiner usually focuses on the technical field to which the utility model belongs, unless there is a clear technical motivation in a proximate or relevant technical field, in which case such field may be considered.

2 Number of prior art references

For an invention application, no restriction is put on the number of prior art references that may be cited to assess its inventiveness. However, for a utility model, usually one or two prior art references may be cited to assess its inventiveness. Where a utility model is made by simply juxtaposing some prior art means, the examiner may cite more than two prior art references to assess its inventiveness, depending on the circumstances of the case.

A few examples are given here for better understanding of the inventiveness requirements of a utility model. In the invalidation decision (no WX11627) made by the Patent Re-examination Board (PRB) on May 19 2008, utility model patent no 200420028451.8 entitled Carpet for Martial Arts was declared valid. A third party tried to invalidate the utility model patent and provided three prior art references, US20030072911A1 which is directed to a residential carpet, Chinese utility model patent No 96229637.6 which is directed to a composite carpet and WO02094616A1 which is directed to sound absorptive protective mats used in automobiles. The PRB found none of them belonged to the same technical field of the utility model patent, as the required features of a carpet for martial arts are different from those of a carpet used in a residence or an automobile.

In a final ruling (no (2010)686) made by Beijing High Court on November 24 2010, the court overturned the decision of the first instance court, Beijing No1 Intermediate Court, which maintained the PRB’s decision (no WX13590). A utility model patent no 200420003299.8 entitled Electronic Audio Book was declared invalid by PRB in this decision made on June 23 2009, on the grounds that the claims lacked inventiveness in light of the combination of US2003/0016210A1 which is directed to 3D interactive books, Chinese invention patent application CN1202671A which is directed to a radio index device, and three features which are deemed as common knowledge in the art. The PRB also found that the utility model patent could be invalidated in light of the combination of Chinese utility model patent no 02273039.7 which is directed to an electronic audio book, Chinese invention patent application CN1202671A and common knowledge in the art. The Beijing High Court ruled that the use of the first two references and three pieces of common knowledge by PRB violated the principle in the Guidelines for Examination and was too strict, also in the use of the latter two references plus common knowledge in the same decision.

As can be seen from these cases, in practice it may not be easy to invalidate a utility model on the grounds of inventiveness, due to its lower requirements. According to statistics from SIPO, up until August 31 2008, approximately 25% of invention patents were declared completely invalid compared with 33.3% of utility models –a less than significant difference. In fact, many utility models filed by Chinese applicants are not drafted by sophisticated professionals and often leave little room for the patentee to make amendments during invalidation proceedings. The statistics for the utility model could have been even better otherwise.

It follows that owners of Chinese utility model patents may be in a strategically advantageous position as the utility model patent may withstand attack on validity, with a broader scope than any invention patent owned by the same owner for the same product, due to the different standards of inventiveness for utility model and invention patents.

It is suggested that applicants seriously consider Chinese utility models, whether or not they could take advantage of the new provisions mentioned above. If these provisions apply to them, they could effectively extend the period during which an enforceable patent right is available. As the cost of prosecuting and maintaining a utility model is far less than that for an invention, filing two applications will not significantly increase the cost to the applicant. For a foreign applicant, since the texts of the applications are the same, translation cost will be the same as filing only one application.

It is very important for an applicant to note that in these new provisions the phrase “same day” refers to the same filing date. These provisions apply when both applications are the first filings. These provisions also apply when both applications are filed in China on the same day and claim priority through Paris convention from same previous foreign applications. If they are not filed on the same day or have different priority dates, under the current Chinese patent law, the earlier one constitutes a conflicting application against the novelty of the latter.

It is to be noted that one cannot take advantage of these provisions when it files a PCT international application and a Chinese utility model application on the same day, even if both are filed with SIPO, since the type of application cannot be determined at the time of filling the PCT application and it is not certain the PCT application will enter Chinese national phase. These provisions do not apply when an applicant files a Chinese utility model application and enters national phase of a PCT application on the same day, as they have different filing dates, one being the international filing date and the other Chinese filing date. In the worse case scenario, the applicant may end up with no patent, as most likely, the utility model will be granted which bars the PCT national phase application from being granted on the ground of double patenting and the PCT publication will destroy the novelty of the utility model in potential invalidation proceedings.

Despite the above limitations, applicants may still want to file Chinese utility model applications and an invention application through the PCT route, due to the lower requirements on inventiveness for a utility model, and the definition of double patenting. As mentioned above, in reality it is possible for applicants to keep both an invention patent and a utility model patent, with the latter having broader claims which may well be valid. If applicants choose to do so, it is crucial to ensure that both applications have the same priority date. Otherwise, one will constitute a conflicting application for the other and destroy its novelty.

Applicants could file the PCT application and the Chinese utility model application with different sets of claims. Alternatively, they could be filed with same set of claims and as long as they end up with allowable claims having different scope, they both can be granted.

 Author Stephen Yang

Peksung Intellectual Property Ltd.

Website: http://www.amr.co.id or http://www.amrpartnership.co.id

Ivan

In some spheres, the academic entrepreneurship is still a dirty word and there are reasons for that. After 1989 the party nomenclature in science in collaboration with its „supervisors“ from State security, created the first spin-off companies in BAS,AcademyofAgriculture, institutional institutes, universities. Many of these companies are a form of „private embezzlement of public assets”, which was then used in economics. Intellectual property, valuable scientific equipment, experimental-industrial installations and small high-technology lines were transferred by them to new companies, who received the earnings, and parent institutes paid the costs. Contrary to the rest of the economics, in science this scheme proved to be short-term – after 1992 the science societies almost everywhere replaced old management bodies and ceased the plundering of assets. Under the penalty of dismissal bans were introduced on participation in commercial firms and on association with private companies. Scientific assets were saved…

This story is however too simplified and hides significant parts of the problem of academic entrepreneurship. In order to really know it, we must consider at least three more processes – the enduring tension between fundamental (science because of the science itself) and an applied science, the transition from administrative to market economy and its reflection in science, as well as the global competition between companies and innovations as a resource in this competition.

I came across the tension between „pure” and „practical” scientists some years ago, when a young scientist in the holographic laboratory explored by me, said „… Technology is the supreme science. Not that I do not appreciate the fundamental researches, but I really do not like pure science, science for the science itself. For me, the real challenge is to see a new thing to start working“. Very often, however in the same field, it seems that scientists belong to two different „cultures”. The first one studies wild creatures and believes that the job ends with scientific publications, describing these creatures and their characteristics. For the other group, however, this is just the first step towards the final aim – the „taming” of these creatures, making them part of a marketable product. These two cultures can be combined in one person or in one scientific society, but they can also be two worlds being at enemy with each other. In this context the „depletion” of scientific assets is just a transitional moment in the saga of East European transition, camouflaging the authentic striving of part of the scientists to realize by themselves their research results in products and technologies, which are useful for people and create added value. A striving, which has nothing to do with orders and instructions given by shady structures.

Because, similar to the army, the pure science can exist only if it is constantly filled with resources from outside. They are historically identifying themselves differently (ancient science brings up young people in the spirit of „welfare”, in early modernity to decipher „the book of nature” is a form of the biblical exegesis), but along with that the utility of scientific knowledge is always a key resource of identification. It is not rejected by the „pure” scientists, but they prefer to leave this job to engineers and technologists.

In nowadays global economy, the main competitive advantage is namely the innovations based on original research results, but not the cheap labour and the natural resources. One of the most effective ways to speed-up the transition from a scientific discovery to an innovation is the engagement of the scientists in this process – merging of science and business into one another, turns out to be the environment, from where the industries of 21^st century are born. Researches show, that it is better to remove the barrier between science and economics and every time they want, the scientists to be able to go beyond that barrier – to establish companies or to work as consultants there, to go back to the research departments, etc. This process is not smooth and trouble-free, but the countries which provided for this motion and learned how to manage it, predominate in global economy.

Analyzing the experience of these countries, articles show the traditions of academic entrepreneurship inBulgaria, its modern trends and problems. They put on record the fact of intensifying the tension between the scientists with entrepreneurship attitude and those, who remain in the fortress of „pure” nature, during periods of economic crisis and pose the issue of searching political, institutional and financial solutions, which to enable the scientists to introduce their achievements without leaving their scientific organization. Solutions, which to protect their rights as well as the interests of the scientific organizations.

Data were collected within the project PROKNOW under the 6^th Framework programme of EU. The authors were associates of the Group for research of technologies of the formerInstitute ofSociology in BAS and as the only Eastern European partner in the consortium, consisting of colleagues fromGermany,France,United Kingdom,Netherlands,Switzerland andFinland.

Ivan Chalakov,Sofia, 20 May 2011

I am grateful to Mimi Vasileva and Venelin Petrov for their notes and comments.

Сходни публикации от IP Bulgaria:

• Mr.Alexnader Boshkov, co-chairman of Center for Economic Development, Bulgaria: „Bulgaria will be an honoroble member of united Europe“ – an exclusive interview for IP Bulgaria
• Director General of WIPO and President of Bulgaria highlight the economic importance of creative industries
• Tjanko Stoilov: It’s necessary very soon the country to create legislatively preferential conditions for persons and organizations which invest funds in creative development which are the subject of an industrial property – basis of innovations.

Richard Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC
4813-B Eisenhower Avenue
Alexandria Virginia 22304
Tel: 703-415-0012
Fax: 703-415-0013
Home Page: http://www.Neifeld.com

Exclusion of the ex-officio examination for relative grounds of refusal

Perhaps the most important change brought by the new legislation is the exclusion of the ex-officio examination for relative grounds of refusal. This, in turn, implies a lot of changes in the registration procedure.

According to the new law, the trademark application is published for oppositions within 7 days from the application date. The opposition period is of 2 months (as opposed to 3 months in the previous legislation). Within the same period of time, observations based on absolute grounds of refusal can also be submitted. The oppositions are communicated to the applicant who has a 30-day period to submit its reply.

The oppositions are examined by an Opposition Commission, which will issue a decision compulsory for the examination process.

The examination process (until a first decision is issued) must not take more then 6 months. The new law also provides for the possibility to request an expedite procedure (against the payment of a surtax) that will bring the examination procedure down to a maximum of 3 months. All the details regarding the particulars of the procedure are to be laid down by the Implementing Regulations that are not available at the time of this article.

Community exhaustion of trademark rights

The previous legislation provided for international exhaustion of trademark rights for the national and international trademarks valid in Romania. The new trademark law provided for Community exhaustion of trademark rights, in an attempt to eliminate any discrimination between the Community Trademark owners and the owners of national and international trademarks valid in Romania.

Since Romania is one of the border states of the European Union, this modification in legislation is bound to have an impact on the parallel imports that have been entering Romania and subsequently the rest of the European Union in the last few years.

Community trademarks. Community trademark courts.

The new law dedicated an entire chapter to the Community Trademarks, the scope of their protection and the conflicts with national rights. All these provisions are taken from the CTM Regulations and their presence in the national law was not particularly necessary.

However, one provision that was absolutely necessary and was long awaited by practitioners was the appointment of a Community Trademark court. The law solved this lack in the Romanian legislation by appointing the Bucharest Municipal Court as the only Community Trademark court in Romania. This was a logical decision since this court is the most experienced court in the country in dealing with intellectual property matters and is the Romanian court that deals with all the trademark cancellation actions and all the appeals against the decisions of the Romanian PTO.

Provisional protection granted for the trademark application

According to the previous legislation a trademark enjoys provisional protection subject to registration once the trademark is published for oppositions after the examination procedure is completed.

The new law presents a different approach to this issue, and provides for a provisional protection for the trademark application from its first publication (7 days from the application date) before any examination is performed (not even the examination for absolute grounds of refusal).

Practically, the new law grants a provisional protection to the trademark application, subject to registration within a week from the application date. How exactly will this work in practice, remains to be seen, with a lot of problems being foreseen for, at least, the fist few months after the new law comes into force.

Wider protection against counterfeiting and infringement

The new legislation responded to the requests of practitioners, police officers and prosecutors alike and provided for a wider incrimination of counterfeiting and infringement.

According to the previous legislation, counterfeiting was considered a crime only if it was proved that the products were placed on the market by the defended. This sometimes was an issue when the products were seized in one’s house or car, or in a truck or container in customs.

This problem is eliminated by the new law, which goes so far as to incriminating the mere possession with the intent of selling of counterfeited products.

The law also provides for the possibility of a considerable criminal fine being imposed as an alternative to imprisonment (up to 40.000 EUR as opposed to a maximum of 400 EUR in the previous legislation).

These new provisions promise to make this new law a much more effective anti-counterfeiting tool at the disposal of trademark owners, police and prosecutors alike.

Transitory provisions

All the trademark applications still under examination will follow the procedure set forth by the new law. This includes all the trademark applications that have been provisionally refused (based on relative grounds of refusal) as long as the decision has not become final. In these cases the provisional refusal will be withdrawn and the trademark application will be published for oppositions.

The Implementing Regulations are due to be adopted within 3 months form the date the law comes into force.

Update – Implementing Regulations

The long awaited Implementing Regulations have been published and entered into force more than six months after the new Trademark Law, namely on December 03, 2010. 
The Implementing Regulations are expected to clarify some of the problems caused by some of the rather controversial provisions of the new Trademark Law.

The most important provisions of the Implementing Regulations are the ones regarding the opposition procedure. The new law has brought what was intended to be a very expedite registration procedure. However, it was a concern that this fast pace will be accomplished at the expense of the prior right holders, who will have a limited period of time to file oppositions. The Implementing Regulations provide for an additional two months to the two months opposition period in which the opponent can substantiate the opposition and file documents in support. This provision does not prolong the opposition deadline, which is still two months form the publication date of the application, but provided the opponent with additional time necessary in order to submit all the relevant arguments and documents in support of his opposition. The extension of time is granted only subject to the payment of an official fee.

For equity reasons, the 30 days period granted for the applicant to respond to the opposition can also be prolonged with and additional 30 days, in order to provide the applicant with sufficient time to prepare its defense in more complicated cases. The extension of time is not subject to any additional official fees.

In order to complete the new trademark system, the Government must also modify the legislation regarding the official fees, which is set by a different law.

By Dragosh Marginean

Dragosh Marginean, 32, has been working in the Intellectual Property field since 2000. Graduated from Law School in 2002. In 2003, he co-founded the fastest-growing IP firm in Romania, Ratza & ratza, which provides a full range of intellectual property prosecution and litigation services. Currently, Mr. Dragosh Marginean is primarily involved in trademark and patent litigation work, but also dedicates time to law reforms as well as writing articles on various IP topics.

Trier, 10-11 May 2012

Objective
This conference will analyse the increasing role played by the ECJ in interpreting EU copyright law and will provide intellectual property law practitioners with an in-depth analysis of the landmark judgments of the ECJ in the field of copyright and related rights.
Key topics
       Exhaustion of copyrights
       Relationship between copyright and competition law: from the ECJ judgments Coditel II (C-262/81) and Magill (C-418/01) to the European Commission‚s CISAC decision
       Exceptions and limitations in the Information Society Directive (Directive 2001/29), including fair compensation for reproductions (C-467/08 Padawan), copying for private use (C-462/09 Stichting de Thuiskopie) and remuneration of authors for public lending (C-271/10 VEWA v Belgium)
       The concept of communication to the public (C-306/05 SGAE v Rafael Hoteles)
       The notion of originality and the scope of exception for the purpose of public security: ECJ case Maria-Ewa Painer (C-145/10)
       The future of exclusive licence agreements and the accessibility of broadcasting services (C 403/08 and C 429/08 Football Association Premier League Ltd and Media Protection Services Ltd)
       Copyright versus the protection of privacy in electronic communications: the responsibility of internet service providers (C-70/10 SABAM)

Who should attend?

Lawyers in private practice, in-house counsel and other practitioners of law dealing with copyright and intellectual property law, internet law and consumer law.

Language: English, German
Organiser: Florence Hartmann-Vareilles, ERA
Event number: 212R19

For further information and online registration, please, click HERE

Source: ERA

(Source: TIPO News published on March 27, 2012)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=5847)

The PPH pilot program between the Taiwan Intellectual Property Office (TIPO) and the United States Patent and Trademark Office (USPTO) started on September 1, 2011. The PPH pilot program enables an applicant, whose claims are determined to be allowable/patentable in the Office of First Filing (OFF), to have the corresponding application filed in the Office of Second Filing (OSF) advanced out of turn for examination while at the same time allowing the OSF to exploit the search and examination results of the OFF. However, due to the long examination pendency at TIPO, search and examination results of applications whose OFF is TIPO could not be provided before the initiation of examination in the OSF. In other words, the making use of search and examination results of the OFF cannot be fully achieved. In order to promote international work-sharing in patent examination, and to encourage applicants to take advantage of expedited examination under the PPH pilot program, the TW-Support Using the PPH Agreement (TW-SUPA) examination pilot program has commenced on March 1, 2012.

Where TIPO is the OFF of a TW application and a corresponding foreign application is later filed in the Patent Office which has a PPH agreement with TIPO, the applicant may request participation in the TW-SUPA pilot program and request the TW application be advanced out of turn for examination. TW-SUPA pilot program is expected to support patent acquisition through PPH and to promote international work-sharing by providing search and examination results of TIPO at an early stage. TW-SUPA pilot program will be carried out on a trial period of six months. TIPO will evaluate the result of this program to determine whether and how the program should be fully implemented after the trial period. TIPO may also change or terminate this program early if the volume of participation exceeds a manageable level, or for any other reason.

Should you need more information, please feel free to contact us.

(Sources: TIPO News dated March 3 & 27, 2012)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=5758
http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=5850)

Description

The seminar is scheduled as a two-day event. It will take place in Istanbul on June 18-19, 2012

Speakers: Daniel Thomas (EPO), Claude Quintelier (epi)

The target group: Patent attorneys and patent professionals

The seminar will be a combination of podium discussion and practical exercises.

Following topics will be discussed:

- Disclaimer  with a practical excercise
- Priority, partial priority, withdrawal of priority
- Articles 121 and 122 with practical excercises
- Patent applications filing strategies

Venue details

Point Hotel Taksim
Topcu Cad. No: 2
34437 Taksim / Istanbul
Turkey

For more information and contact details: PATENTEPI

We anticipate that the roundtable discussion will focus on the following issues related to identification and classification of goods and services:

•       The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual):  The USPTO plans to redesign the ID Manual to better meet user needs and we are seeking suggestions regarding desirable features and content for the Manual.  We are also seeking feedback on whether presenting the ID Manual in a hierarchical format using a drop-down list, where identifications are organized by general categories that are then divided into more specific categories, would be useful.

• The USPTO’s practice regarding the level of specificity required in describing goods and services:  The USPTO seeks user feedback on whether modification of current practice is desirable.  For example, rather than requiring a list of individual clothing items, should the USPTO accept a more general description of a category of clothing, such as “casual wear” or “sportswear”?
• Collaboration with industry groups:  The USPTO would like to discuss the possibility of creating ongoing working relationships with key industries to ensure that the USPTO ID Manual is promptly updated with new products and services, and contains comprehensive lists of the most common goods and services in each industry.
• International databases of acceptable identifications of goods and services:  Efforts are underway to develop a harmonized list of identifications that all participating countries or international organizations accept, and also to create a non-harmonized list of identifications with an indication of which countries or international organizations accept each listed item.  The USPTO seeks user input on the potential value of these projects to trademark owners who seek registration in multiple jurisdictions.

There is a common assumption in innovation policy circles that firms in high cost production locations that do not innovate will lose market share to import competition, so jobs will move to producers in developing countries with lower labour costs. Domestic firms are encouraged to innovate and to obtain intellectual property assets to protect their innovations, so that they can sustain local employment and pay high wages.

The study, “Trade Mark Incentives”, demonstrates that employment is significantly higher in firms that are trade mark active and that firms engaged in trade mark and patent activity are offering higher average take home pay to their employees than other firms in their industry.

The benefit of innovation and the associated use of intellectual property flow through a number of channels. Process innovation lowers costs of production by raising efficiency and productivity and this ultimately lowers the price of the item under production. Product innovations see firms offering consumers new varieties of products. This is sometimes characterized as a general process of increasing product quality.

The study highlights that trade marking firms have a 21% higher productivity level; this should encourage domestic producers to compete on product quality and variety, rather than simply cost and price and to register ownership of their innovations using the intellectual property system.

Summary of the notice
The notice updates the practice in relation to UK or International trade marks designating the UK where there is a partial refusal, in other words a refusal for some of the goods or services covered by the trade mark application or registration. Such a refusal could be the result of an objection by the Examiner during the prosecution stage, or as a result of a successful (or partially successful) opposition, invalidation or revocation action.
In summary, where there is a partial refusal the UK IPO will now:
a) if it is easy to separate the refused goods/services from the remaining ones: simply delete those goods/services (so-called “blue-pencilling”); or
b) if such a deletion would not be clear: add the limitation “save for…”; or
c) if even the limitation “save for…” would not be sufficiently clear: invite the parties to provide submissions and/or proposals for the appropriate wording, after which the UK IPO will decide on the appropriate wording.

History of the case
The case arose from an opposition where the UK IPO Hearing Officer refused a trade mark application for an entire group of goods despite the opposition only being directed towards some specific goods falling within that group. At no point were the parties consulted by the Hearing Officer as to suggestions for alternative appropriate wording of the list of goods.

Upon appeal to the High Court of England and Wales, Justice Mann reviewed guidance given in Sensornet Trade Mark [Case O/136/06] and Citybond Trade Mark [2007] in seeking to find a solution to the situation where there were grounds for partial refusal but where the “blue pencil” approach would not be suitable and no unconditional restriction had been offered by the applicant. Due account was also taken of Article 13 of the First Council Directive 89/104 of December 21, 1988, to approximate the laws of the Member States relating to trade marks, which states that:

“Where grounds for refusal of registration or for revocation or invalidity of a trade mark exist in respect of only some of the goods or services for which that trade mark has been applied for or registered, refusal of registration or revocation or invalidity shall cover those goods or services only.”

Justice Mann concluded that the Hearing Officer should provide a mechanism for ensuring that he is able to give a fair ruling as to the list of goods/services that remain in a trade mark registration after an opposition. Consequently, the Hearing Officer’s decision was overturned, the parties were invited to provide submissions and proposals for alterative wording of the remaining goods, and a court order was made accordingly for re-wording of the list of goods. Subsequently, the above-mentioned procedure notice was issued.
Consequences
This Tribunal practice amendment is a welcome change to the UK trade mark system and will prevent trade marks from being refused in their entirety when only some of the goods/services are objected to or opposed. It is also a useful step towards further harmonising trade mark practice across EC member states. Above all, it provides trade mark proprietors with more certainty regarding the scope of their trade mark applications and registrations.

Trier, 15-16 March 2012
Objective
This conference will provide intellectual property law practitioners with an in-depth analysis of the legal framework applicable to geographical indications at international and at EU levels as well as on landmark judgments of the ECJ.
Key topics
· International framework of protection for geographical indications
· Protection of geographical indications in the European Union
· Strategies in setting up geographical indications
· Relationship between geographical indications and trade marks
· Practices misleading the consumer and comparative advertising
· EU labelling rules applicable to geographical indications
· Impact of the „Quality package 2010‰ for geographical indications
· Modification of the Regulation on customs enforcement of IP rights (COM(2011) 285)

Who should attend:

Lawyers in private practice, in-house counsel, civil servants and other practitioners of law dealing with geographical indications, trade marks and industrial property.
Languages: English, German (simultaneous interpretation)

Organiser: Florence Hartmann-Vareilles, ERA

Event number: 212D50

Please click here for further information and online registration <https://www.era.int/cgi-bin/cms?_SID=NEW&_sprache=en&_bereich=artikel&_aktion=detail&idartikel=122734>

Speakers:
Luc Berlottier, Deputy Head of Unit, DG Agriculture, European Commission, Brussels
Bernard O‚Connor, Partner, NCTM O’Connor, Milan/Brussels
Eric De Gryse, Partner, Simont Braun, Brussels
Dr Gail Evans, Reader in International Intellectual Property Law, Centre for Commercial Law Studies, Queen Mary University of London
Benjamin Fontaine, Attorney-at-law, Ernest Gutmann & Yves Plasseraud S.A.S., Alicante
Imre Gonda, Deputy Head of Trade Mark and Design Department, Hungarian Intellectual Property Office, Budapest
Irina Kireeva, Lawyer, NCTM O’Connor, Brussels
Dr Roland Knaak, Head of Unit at the Max Planck Institute for Intellectual Property and Competition Law, Munich
Marie-Paule Rizo, Head of Industrial Designs and Geographical Indications Law, Trademark and Design Law Division, WIPO, Geneva*
Dr Volker Schoene, Loschelder Rechtsanwälte, Bonn
Olivier Vrins, ALTIUS, Brussels

Source: ERA

Сходни публикации от IP Bulgaria:

• Law on Marks and Geographical Indications
• 125 ANNIVERSARY OF THE SIGNING OF PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY
• EUROPEAN COMMISSION DISAPPROVES THE LAST AMENDMENTS IN BULGARIAN LAW ON PATENT. BULGARIA SHOULD NOT LIMIT ALREADY GRANTED RIGHTS.

The conference flyer

The next Annual General Meeting of CIOPORA will take place in Miami Beach, FL from April 23 to 27, 2012. The traditional meetings of the Board, Working Groups, Crop Sections, the AGM, which shall take place in the afternoon of April 24, the IP seminar, the International IP Conference, as well as a meeting with US-breeders, are on the current agenda.

In the evenings, the hard work and commitment of the participants will be rewarded in get-together events under palms. On April 26 the members and their guests will be invited to join in on a business excursion, whereas April 27 will be dedicated to a networking event offering great opportunities for business talks and finding new business contacts. A side program will be organized for accompanying persons. The venue of the event will be announced in a circular letter in short, but the curious are welcome to look for a hint in the title of the article.