Global View
Belarus
The Belarusian National Centre for Intellectual Property has implemented new fees for various IP actions which came into force at the start of the year – the new prices are on average 15% higher. The change is reportedly due to the de-dollarisation of the Belarusian economy, with the new fee schedule having been transferred from dollars to the national currency of new Belarusian rubles. A single-class trademark application will now cost Brb230 ($118, previously $100), while examination is now Brb644 ($350, up from $330) and registration Brb437 ($224, previously $200).
Canada
The Canadian Intellectual Property Office has issued a practice notice which provides guidance as to when a trademark which is a geographic name will be considered descriptive and therefore unregistrable. The issue arose further to the Federal Court decision in MC Imports Inc v AFOD Ltd and indicates that the following three-part test will be conducted during examination to determine whether a trademark has a meaning other than a geographic name:
- Is the trademark comprised of or does it contain a geographical name?
- Do the relevant goods or services originate from that geographical area?
- If the answer to the above questions is yes, the trademark may nevertheless be registrable if it has been used sufficiently in Canada to be distinctive.
India
The Indian Parliament is to enact strict regulations on celebrity endorsements, with heavy penalties imposed if a promoted advertisement is subsequently found to be misleading. In addition to fines, amendments to the pending Consumer Protection Bill could ban offenders from endorsing products for up to three years.
International
The International Anti-counterfeiting Coalition (IACC) has enlisted the University of Trento in Italy to conduct an independent review of its upcoming MarketSafe Expansion Programme. The initiative, due to launch in the first quarter of 2017, is designed to support rights holders on Alibaba’s online marketplaces. The review will involve an impartial assessment of the programme’s effectiveness, with professors set to interact directly with participating brands, the IACC and Alibaba staff.
Iran
Iran has confirmed that a legalised extract from the commercial register will now be required to support new trademark applications and oppositions. This must be submitted within 60 days of the filing date, while a signed copy must be sent at the time of filing. Trademark renewals, on the other hand, require only a notarised extract from the commercial register.
Kazakhstan
Kazakhstan’s Ministry of Justice has drafted a new law amending and adding to existing IP laws and regulations in order to bring the domestic regime into line with international standards. There is now a single-level system for registering IP rights, administered by the National Institute of Intellectual Property – previously, some rights were handled by the ministry. In addition, the law establishes an appeal board to handle challenges to the institute’s decisions, while clarification has been provided regarding proof of use for trademarks.
Philippines
The Philippines Intellectual Property Office has revised its fees for various IP services. From January 1 2017 the cost of filing a trademark rose to Ps1,200 ($24) for small entities, while large entities are now charged Ps2,592 ($52). Fees for utility model and design filings have also increased, with small entities now having to pay Ps1,720 ($35) and large entities Ps3,600 ($72).
United States
The US Patent and Trademark Office has implemented a number of fee increases for trademark applications and other trademark actions. From January 14 2017 the new fee schedule primarily affects trademark applicants and holders that use paper filings and includes the cost of a paper trademark application (which rises from $375 to $600 per class). Some electronic fees have also increased, including those for applications filed through the Trademark Electronic Application System, which have climbed from $325 to $400.
Vietnam
In January 2017 the Vietnamese Ministry of Finance confirmed that it is significantly increasing government fees for IP services. A trademark examination now costs D670,000 ($30), up from D360,000 ($16), while renewals are now D800,000 ($36 – a rise of 48%) and oppositions D600,000 ($27 – a rise of 100%). These are the first trademark fee increases since 2009; new application forms will be issued to reflect the changes.