Articles

Trademark office

[TW] Reason for dismissal prior notice processing policy

When we receive the notice of refusal, we can first look at whether the quoted trademark provided by the Commissioner is similar to the trademark registration we applied for, and can be used to determine the appearance, sound and trademark significance of the trademark, that is, the so-called “form, pronunciation and meaning”. Respond to: The…
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register trademark Taiwan

[TW] Receiving a trademark opposition statement?

When our meticulous trademark application was approved by the Intellectual Property Office, but we receive an official letter shortly after we received the certificate, informing us that the trademark has been challenged by others, and we are requested to reply within a specified period. At such a moment, we would feel very helpless. According to…
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Trademark Search

[TW] What else to do after trademark registration?

After the successful registration of a trademark, the neglect of management and maintenance may result in the loss of the exclusive right to use the trademark; therefore, the maintenance of the registered trademark is very important for the enterprise. Maintenance of your Trademark: 1. Trademark owners need to change In the event of trademark transfer,…
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How to trademark Korea

[KR] How To Respond To KIPO If An Application is Rejected

The Two Common Reasons For Rejection of an Application: 1) when the trademark is not distinctive 2) when the trademark is distinctive, but the cited mark is found before the application. When the application is rejected because of the first reason, you need to be sure that the trademark you are applying is indeed not…
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Apply for trademark Korea

Prevent similar trademark registration

How to prevent similar trademark registration in Korea There are two ways to prevent similar trademark registration: opposition and providing information. The opposition can be raised when the application is published after KIPO examiner has reviewed the application. You can provide the information during the examination. You can also file the invalidation in order to…
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International Trademark search China

[CN] How to determine whether the word marks are similar?

To determine if two-word marks are similar, the Trademark Office has a complete set of censorship standards in regards to an existing trademark search. 1. Chinese work marks are of the same composition of Chinese characters. Only the font or design, phonetic transcription, and arrangement order are different. 2. Work marks consist of the same…
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How to trademark China

[CN] Trademarks rejected for “lack of distinctiveness”

In examining the trademark application, except similarity, “lack of distinctiveness” of the trademark is one of the reasons for the rejection of the trademark. The distinctive feature of a trademark is the feature that the trademark should possess so that the relevant public can distinguish the source of the product. Judging whether or not a…
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Trademark registration China

[CN] Rejection of a trademark is not the end result!

The review of the trademark refusal is that after the trademark registrant submit an application for registering the trademark to the Trademark Office, and the Trademark Office refuse the application based on that the trademark does not meet the requirements of the Trademark Law, the registrant disagree with the reasons for the refusal and the…
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Hong Kong trademark search

[HK] Update of the Madrid System in Hong Kong

The Madrid International Trademark Registration System (hereafter “the Madrid System”) will apply to Hong Kong as early as in 2019. This article is to provide a brief introduction of the Madrid System and the update of the same. Introduction: The Madrid System is a major international system that promotes the registration of trademarks throughout the…
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Hong Kong trademark search

[HK] Defects in Evidence for Hong Kong Trademark Cases

In all the proceedings before the Hong Kong Trademarks Registry, “evidence” is how the Registrar is to consider any fact, either alleged in any statement of the case or counter-statement or of factual distinctiveness of a trademark, upon which he has to adjudicate. From time to time, there are cases that parties in the relevant…
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Hong Kong trademark application

[HK] Opposition to Hong Kong Trademark Application

Oppositions should be filed within 3 months beginning from the date of publication of the trademark application in the Hong Kong Trademark Official Journal (if an application is published on 1 March, the deadline to oppose will fall on 31 May). The deadline is extendable once only for 2 months subject to the discretion of…
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International trademark

[UK]How are trademarks around the world are obtained?

Obtaining a trademark may seem like a complicated and drawn-out process. At BKIP, we aim to demystify the process and give you an insight into how a trademark is actually registered UK: To begin with, a trademark must be registered with the United Kingdom Intellectual Property Office based in Newport. The logo, word or subject…
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International trademark Registration

[HK] Invalidation of Trademark Registration in Bad Faith

Trademark squatting has been phenomenal in many countries and regions and Hong Kong is no exception. Fortunately, there are provisions in the Trademark Laws in Hong Kong which stipulate the situations at which a declaration of invalidity can be sought to cancel a trademark registration made in bad faith. In particular, section 11(5)(b) of the…
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Trademark a name

[UK] Looking into non-traditional trademarks

There is no worldwide set legal definition of a trademark but in the UK, the definition can be found in S.1(1) TMA 1994 which transposed the EU trademark directive into UK law. From the UK and EU definition of trademarks that there are three elements; it must be a sign, that is capable of being…
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EU trademark

[UK] How Will Brexit Affect My EU Trademark?

It has now passed the two-year mark since the decisive referendum where the UK public voted to leave the EU. With the official leaving date set as Friday 29th March 2019, and intellectual property rights low priority on the negotiating table, it is understandable that there is much confusion around existing Trademarks, and the future…
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bench brand trademark

How will changes to the Trademark Act affect you?

The new changes to the Trademark Act will allow some useful new options for businesses to protect their brands as well as enforce their intellectual property rights. The changes which businesses should be aware of include: Increased power against counterfeiters Previous to the changes, if a counterfeit product was imported into the EU, the onus…
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Trademark on a tablet

Changes To The Trademark Act

How will changes to the Trademark Act affect you? The new changes to the Trademark Act will allow some useful new options for businesses to protect their brands as well as enforce their intellectual property rights. The changes which businesses should be aware of include: Increased power against counterfeiters Previous to the changes, if a counterfeit…
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Changes To The Trademark Act? (CN)

商標法的變更會如何影響您? 商標法的新變化將增強對企業知識產權的保護。企業應該注意的變化包括:   加強打擊造假者 修法之前,如果假冒產品被導入歐盟,舉證責任由商標所有者承擔,以證明該產品佔用其商標。但是,現在是由進口被指侵權貨物的一方證明他們有合法進口權。對於經常與造假者抗爭的企業來說,這是一個可喜的變化。   更大的權利執行範圍 現在,所有公司和企業都更容易保護企業名稱不被複製。 商標法的最新變更使得在公司名稱中使用註冊商標成為一種特定的侵權行為。現有企業對選擇公司名稱時沒有進行必要盡職調查的新企業採取行動時,將會更加容易。新企業需要避免無意中侵權,否則他們會被迫重新打造自己的品牌。這是因為「own name defence (為自己的名字辯護)」現在只允許個人使用,而非公司。   當比較廣告構成商標侵權時的新條文 商標法增加了新的條文,指明如果比較廣告的使用違反了2008年誤導性營銷法規中的商業保護規定,那麼廣告將構成商標侵權。這些法規定義了誤導性廣告,給予其他企業的信息以及企業如何將其產品與其他公司生產的產品進行比較的限制。   可以註冊新的商標格式 商標的定義經過調整和擴展後,現在允許註冊不能進行以圖形表示的商標。以前需要的圖形表示的具體要求已從該法案中刪除。現在,法律允許以MP3和MP4等數字格式,以及更多氣味、味道、顏色和更多不尋常的格式來註冊商標。。
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EUTM Application

‘Relative Grounds’ for Refusal of a EUTM Application EUTM publication Once the EUTM application is approved on the absolute grounds, it will be published in the EUTM Bulletin for opposition for a period of 3 months.   ‘Relative Grounds’ for refusal Opposition to the EUTM application shall rely on the relative grounds for refusal.  Article…
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EUTM Application (CN)

拒絕EUTM申請的“相對理由”   EUTM出版物 一旦EUTM申請獲得絕對理由的批准,將在EUTM公告內提出異議通知,為期3個月。   “相對理由”拒絕 反對EUTM申請應依賴相對的拒絕理由。“歐盟商標條例”(“EUTMR”)第8條規定拒絕的相對理由如下: –   在先前的商標所有人提出異議時(“在先商標”),申請的商標不得註冊:   如果與前一商標相同,申請註冊的商品或服務與前一商標受保護的商品或者服務相同的;   如果由於與先前商標的認同性或相似性以及商標所涵蓋的商品或服務的特性或相似性,在先前的領土內公眾可能會混淆商標受到保護;混淆的可能性包括與早先的商標相關聯的可能性。   異議的目的,“以前的商標”是指: 社區商標; 成員國(還有申請)的註冊商標,包括IR商標 未經註冊的商標(受國家法律保護) 馳名商標 未經登記的標誌(受國家法律保護),例如公司或商號,出版物的標題   商標所有人提出異議時,商標所有人的代理人或者代理人在未經所有人同意的情況下,以自己的名義申請註冊的,商標不予註冊,除非代理人或者代理人有正當理由他的行動。   在非註冊商標的所有人或在交易過程中使用的另一個不只是具有當地意義的標誌的異議下,所申請的商標不得在以下情況下註冊:根據社區立法或管理該標誌的成員國法律。   此外,在前商標所有人提出異議的情況下,所申請的商標在與前一商標相同或者近似的情況下,不得進行註冊,並且要註冊與該商標不相似的商品或服務對於先前的商標已經註冊的商標,在早期的共同體商標的情況下,該商標在共同體中享有聲譽,而在先前的國家商標的情況下,該商標在成員中享有聲譽有關國家以及在沒有正當理由申請商標的情況下,將對先前商標的顯著性質或聲譽造成不公平的利害或損害。   根據有關法律授權的任何人士反對行使指定原產地或地理標誌產生的權利時,所申請的商標不得在以下情況下進行登記:根據聯盟立法或國家規定保護原產地名稱或地理標誌的法律:  
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EUTM Application (KR)

‘Relative Grounds’ for Refusal of a EUTM Application EUTM 신청 거절에 대한 ‘상대적 근거’   EUTM publication EUTM 공고 Once the EUTM application is approved on the absolute grounds, it will be published in the EUTM Bulletin for a period of 3 months. EUTM 출원 신청서가 절대적 근거로 승인되면, 출원서는 3개월동안 공고됩니다.   ‘Relative Grounds’…
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Peppa Pig – Declaring Trademark Invalid with Copyright

Peppa Pig – Declaring Trademark Invalid with Copyright On the ninth day of December 2013, 福建省晋江市池店赤塘制鞋七厂obtained a class 35 “Advertising and Marketing Service” trademark “Peppa Pig” from Trademark Office of National Intellectual Property Administration. After receiving objections, the said trademark was allowed to register on the seventh day of September 2016. On the sixteenth day…
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trademark protection

Yi Kwong Wonton – Registered Trademark

“Fodder and provisions should arrive prior to the troops” An important lecture to businesses   At two o’clock on the 20th July 2018, an uninvited guest made an appearance at a wonton shop located at Huangpu District, Shanghai.   The uninvited guest asserted, “I have耳光餛飩 (Yi Kwong Wonton)’s trademark. Let’s have a chat.”   The…
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LEGO’s Interllectual Property

SECOND BITE OF TOYMAKER LEGO IN INFRINGING BATTLES IN CHINA Subsequent to the successful landmark infringement case of LEGO in china in 2017, whereas it was the first time the Danish toys maker has ever triumphed in a copyright claim in China, LEGO has subsequently initiated another substantial infringing battle against the LEPIN building blocks…
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USPTO New Trademark Rule

USPTO –  U.S License Attorney USPTO requires foreign-domiciled applicants and registrants to appoint a U.S.-licensed attorney as of August 3, 2019 New trademark rule (C.F.R. Title 37) by United States Patent and Trademark Office (USPTO) requiring all trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United…
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Budweiser Trademark Application

Example from Budweiser regarding the trademark application The recent of news in Taiwan is that “Budweiser” has filed the trademark applications for “the official beer of esports,” “the official beer of gaming,” and “the official beer of gamers.” In order to have the protections in eSports industry.   Throughout this news, we could realize the…
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US Trademark Filing Basis

US Filing Basis As one of the worlds biggest marks, a US trademark is crucial for any foreign firm with worldwide ambitions. However, due to the amount of applications in the US, the applicant must demonstrate that the mark has been used in commerce. This is known as the filing basis. At the time of…
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United States Trademark Application

Will my domicile affect my U.S trademark? The above question applies to foreign trademark applicants that are not US nationals. There have been recent changes proposed by the United States Patent Trademark Office (USPTO) which you should be aware of when it comes to filing your trademark application. Compliance of the new rule is required…
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Brexit

Brexit and Trademarks

Brexit and Trade Marks  February 2020 Update As of 23:00 Friday 31st January 2020, nearly four years after the divisive referendum, the UK has formally left the European Union. For the remainder of 2020, the UK is now in what is known as the transition period, to allow the UK and EU to iron out…
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Data and Research

Trademark Opposition Guide

Trademark Opposition The underlying purpose of the procedure of trademark opposition is: to provide the public with an opportunity to dispute with the legality of the trademark registration. To put it simply, anyone, who doubts an approved trademark, is entitled to oppose to that particular trademark after trademark registration, to ensure the legitimacy and legality…
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Lady justice

Transfer Your US Trademark

Giving your US trademark to another The United States Patent Trademark Office provides that you can give your US trademark to another by way of an assignment. Therefore, transferring your trademark rights to another is possible. An assignment is the transfer of a trademark owners rights, title and interest in their trademark or service mark…
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Library

Trademark Opposition and Declaration of Invalidation

Trademark Opposition and Declaration of Invalidation Explained In the course of business of companies, they may face trademark opposition and trademark invalidation. So, what are the distinctions between trademark opposition and invalidation? What are their respective examination subjects and standards of examination? This article will provide comparisons to explain about the two major procedures of…
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Student on computer

Trademark Opposition, Cancellation & Declaration of Invalidity Explained

Trademark Opposition, Cancellation and Declaration   The process of trademark registration may not be incessantly simple. First, you need to submit the information to the Trademark Office (through an agency); then Trademark Office will conduct the preliminary review; if the application passes the preliminary review, then it will enter into a three-month announcement publication period,…
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Blank notebook

Trademark Applications and Registation in Hong Kong

Trademark Applications and Registrations in Hong Kong   Amendment of Trademark applications Soon after submitting an application for trademark registration, the representation of the trademark and its particular information are entered into the official database and can be searched online. It is crucial for the applicant to accurately list out what are applying for in…
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Man doing paperwork

Korea Trademark Opposition Explained

Opposition   If a trademark is filed, the filed application will be assigned to examiners and the examiner in charge will examine the application. If the examiner finds no grounds to reject the trademark application, the application will be published. Any third party who opposes registration of the published application can file an opposition at…
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