IP MoNIToR 3-3 Title06

Who filed the most Madrid trademark applications in 2016?  PDF, Who filed the most Madrid trademark applications in 2016?

Among the top 15 origins, China saw the fastest growth (+68.6%) in 2016, followed by the Russian Federation (+32.7%), Italy (+14.4%) and the Netherlands (+14.1%). Austria (-3.8%), France (-0.4%), the Republic of Korea (-0.5%) and Switzerland (-2.4%) saw filing declines.

L’Oréal of France with 150 applications headed the list of top filers, followed by Glaxo Group of the U.K. (141), Germany’s BMW (117) and Lidl (112). Swiss company Novartis, which was ranked in first position in 2015, filed 100 fewer applications in 2016 and with its 94 applications now ranks in fifth position.

Computers and electronics was  the most specified class in international applications accounting for 9.4% of the total, followed by services for business (7.6%) and technological services (6%). Among the top 10 classes, technological services (+11.3%), and computers and electronics (+10.6%) saw the fastest growth.

China (with 22,314 designations), the European Union (21,526) and the U.S. (20,979) were the three most designated members in international Madrid applications. Middle-income countries such as the Russian Federation (14,604), India (11,105), Mexico (9,098) and Turkey (8,679) also received substantial numbers of designations in 2016. China has been the top designated country since 2006.

Trademarks of U.S. companies in Cuba. Difficult U.S.-Cuba relations also effect American companies trademark policy. The expectation of increased trade between the countries has led to more unauthorized registrations of trademarks used by American companies. Even if companies have no immediate plans to do business in Cuba, they should protect their brands by registering their trademarks there because the law provides for a three-year grace period where a registered trademark can’t be canceled for nonuse.

Trademark owners filed an all-time record 3,036 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with World Intellectual Property Organization (WIPO) in 2016. That is an increase of 10% over the previous year, with over 1,200 new generic Top-Level.Country code Top-Level Domains (ccTLDs) accounted for some 14% of WIPO filings, with 74 national domain registries designating this WIPO dispute resolution service. WIPO UDRP cases in 2016 involved parties from 109 countries.  Among the countries where filings originated, the U.S. remained first with 895 cases filed, followed by France (466), Germany (273), the U.K. (237) and Switzerland (180).

Russia’s arms manufacturing concern Kalashnikov will seek registration of its brand and trade marks in the United States and Europe. “We have been taking measures to protect our brand and our trademarks in all markets, including China, Europe and the United States. The concern’s brand and trademarks must belong to us, and not some companies that have nothing to do with our products,” CEO Aleksey Krivoruchko said.

New Trademark Rules for India: The government of India published recently a notification replacing the Trade Mark Rules from 2002. It brought down the application fees for individuals, start-ups and small enterprises to Rs 4,500, the Commerce and Industry Ministry said in a press release. All in all fees have been rationalized by reducing the number of entries in Schedule I from 88 to just 23.

EU Emblem rejected in Turkey: The Turkish Patent and Trademark Office (“TPTO”) recently rejected a trademark application involving the EU Emblem. The Board ultimately found the Emblem cannot be registered as a trademark, recognizing the European Commission’s genuine ownership right. The Board also referred to the Emblem’s commercial value.In principle, using the European emblem or any of its elements is permitted, so long as such use is within rules set by the Council of Europe. Therefore, third parties can use a circle of twelve gold stars against a blue background, representing the union of the people of Europe, without obtaining any specific written consent.

New proposed Eurasian trademark system:  On March 28 2017 Gowling WLG, together with the American Chamber of Commerce in Russia, convened a roundtable on parallel imports and IP rights as part of the International Trade Association pre-annual meeting events around the globe. One of the panel members, Deputy Head of the Eurasian Economic Commission (EEC) Sergei Shurygin, confirmed that the Eurasian Economic Union (EAEU) intends to move forward with plans to introduce a new Eurasian regional trademark.

Much like the European Union, the EAEU is a political and economic union of five member states: Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. It was established on January 1 2015. The EEC is the permanent regulating body of the EAEU.

On February 2 2017 Russia announced that it would seek to ratify the draft Agreement on Trademarks, Service Marks and Appellations of Origin that had been proposed by the EAEU. The agreement introduces the concept of the Common Economic Space (CES) trademark. Much like the European trademark, the proposed CES trademark is a regional Eurasian trademark that covers the territories of all EAEU member states.

The CES Trademark Register will co-exist alongside national registers, which will continue as before. Brand owners will have the option of applying to register a CES trademark, a national trademark, or both.

If the mark is deemed to be registrable on absolute and relative grounds, the applicant is informed and can pay the final fee. Each registration is valid for 10 years, and this term can be renewed.

Enforcement-A CES trademark registration can be enforced or invalidated in each member state under the local laws of that country.

Comment-The creation of the CES trademark system will ultimately be advantageous for brand owners and is consistent with the creation of the EAEU free trade zone and unified customs register. All member states are expected to ratify the draft agreement by the end of 2017. Shurygin said that he expected that implementation of the new CES trademark regime would be as early as 2018.


Trade Mark Scams – Beware of Unofficial Notices

It is important that applicants, proprietors and agents authenticate all requests for payment that are received in relation to their intellectual property.

It is apparent from warnings issued by the Irish Patents Office (“IPO”), the European Union Intellectual Property Office (“EUIPO”), and the World Intellectual Property Organisation (“WIPO”) that stakeholders have been receiving fraudulent fee requests purporting to be from an official office. This is on a world-wide scale and other intellectual property offices such as the United States Patent and Trademark Office (“USPTO”) have issued similar warnings.

While an unofficial notice may come from a legitimate company, there is a likelihood that it may be a scam and stakeholders should be vigilant.


How is this information gleaned? When a trade mark application is submitted, it contains information such as the applicant’s physical address or the email address of the applicant or its representative. Once a trade mark is registered, the official register will outline the particulars of the trade mark including registration date, registration number and renewal dates. This is easily accessible information which has the potential to be used by scammers.

Examples of Scams

The EUIPO, WIPO and USPTO have set out examples of unofficial notices received. Typically, the notice will appear to be issued by an intellectual property office and seek payment of a fee in relation to the trade mark.

Other types of scams include domain name scams in which the scammer will state that the protection of your registered domain name is in jeopardy and seeking instructions to vindicate your intellectual property rights.

USPTO has also set out some examples of Non-USPTO solicitations. Additionally, the USPTO has published a list of complaints that they have received in relation to unscrupulous practices, please click here.

What should you do when you receive a request for payment or correspondence from an unfamiliar entity? In the first instance, please forward any requests for payment to a trade mark professional such as FRKelly who will assess the validity of the correspondence. If the correspondence is suspect, it will then be reported to the relevant intellectual property office.

As stated previously, scams may not just take the form of requests for fees. You may be contacted by an individual or company who states that your intellectual property is under threat and that they can assist you. Please research anyone you are not familiar with to ensure they are legitimate

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.