As a result, since May 6, 2019, the United Kingdom Office no longer collects and forwards to the International Bureau of WIPO (World Intellectual Property Organization) the fees due under these regulations.
In other words, any payment of these fees pursuant to a registration requested of the United Kingdom Office must be made directly to WIPO, as is already the case in France. As a result of this administrative change, a payment can now be made in four ways:
– By debiting a WIPO current account;
– By credit card, but only for payments of fees related to renewal of registered marks, notification of irregularities issued by the Office, or for additional fees relating to the designation of additional contracting parties after the trademark has been registered. Such payments are made in Swiss francs and require a WIPO reference number;
– By bank transfer;
– By postal transfer for inter-European payments.
To be handled correctly, payments by bank transfer must include the name and complete address of the payer, the transaction code (EN), the trademark number, the trademark name, if available, or its verbal elements, and the name of the trademark holder, if different from the payer. In the case of multiple requests, a list containing each request and the amount paid for each request is also required.
It is important to pay all fees in full, otherwise an irregularity notification will be issued. This notification shall specify a payment period beyond which the request shall be deemed to have been abandoned.
As the United Kingdom Registrar no longer makes these payments to WIPO, it is up to the applicant or his representative to be vigilant and diligent when making them.
This decree modifies the rules of protection of confidentiality for seized documents. From now on a provisional sequestration will include protection of documents that may contain information related to trade secrets.
Prior to the entry into force of the French act on the protection of trade secrets judges actively used the sequestration to protect confidentiality of seized documents. This decree legalizes the jurisprudential practice by introducing the provisional sequestration of seized documents.
The decree amends articles R. 521-2, R. 615-2, R. 623-51, R. 716-2 and R. 722-2 of the Intellectual Property Code in the same way in order to give the same powers to the judges who authorize infringement seizures.
However, it is only a temporary sequestration of seized documents. For a period of one month, the party or third party claiming that documents contain trade secrets may ask the judge to amend or withdraw his order.
According to Article R. 153-3 of the French Commercial Code, it is the responsibility of the party or third party claiming trade secrets to ask the judge to withdraw his order before a deadline set by the judge. It is up to the party to provide the following:
– The full confidential version of the document
– A non-confidential version or a summary of the document
– A statement specifying the reason why the document or a portion of the document is considered a trade secret
The judge may also hear separately the holder of the document, assisted or represented by an authorized person, and the party that appeals the order.
In case the party claiming that the document contains trade secrets has not sent an application to withdraw or amend the order within one month, the judge may rule on the total or partial lifting of the sequestration. If it is lifted, the documents can then be sent to the applicant.[/vc_column_text][/vc_column][/vc_row]
After the filing of an intellectual property right, several types of changes are likely to occur, such as the owner’s move, the change of his name in a legal way or the assignment of his rights. Such corrections must be recorded in the relevant register, as this could have very damaging consequences for the holder.
Appropriateness of registration by the rights holder
By definition, registration is an approach made with the National Register of Trademarks, Designs and Patents by means of a paper or electronically, allowing the owner to notify changes in his intellectual property rights. This is important because it enables third parties to be informed of the ownership of trademarks, patents, designs and models as well as of the operations carried out on them.
Registries are national
In France, the National Registry of Trademarks only accepts registrations of trademarks whose effects are effective in France. Registrations concerning international trademarks are also impossible except in cases where they cannot be effected at the International Office (OMPI). This is particularly the case for the license, which must be registered directly with the National Registry in accordance with its own legislation. This is because the legislation of certain states such as Germany, Australia or New Zealand does not provide for the registration of trademark licenses, thus rendering their registration in the international register ineffective.
Changes affecting ownership or enjoyment of the trademark
According to Article L. 714-7 of the Intellectual Property Code, “any transmission or modification of the rights attached to a trademark must be registered in the National Register of Trademarks in order to be effective against third parties”. This article shows that if the assignee fails to register its assignment or trademark license, the assignee may not oppose these acts against third parties. On the one hand, this will prevent him/her from taking opposition action against a subsequent filing or in the context of a legal action and on the other hand, he/she may be held liable in the event of a mistake committed by the beneficiary of a trademark license, as stated in a judgment handed down by the European Court of Justice on 4 February 2016.
On the other hand, other more rare deeds such as mortgages, pledges or guarantees also deserve to be registered with the Registry, otherwise these deeds will not be enforceable against third parties.
Thus, licenses and assignments are not the only amendments requiring registration by the rights holder. The latter may indeed be affected by other operations although they are not expressly covered by Article L. 714-7 of the Intellectual Property Code.
These transactions include the following:
–Total or partial withdrawal of trademark rights: where the trademark has not been registered, it is possible to withdraw or specify some goods and/or services, or to withdraw the entire trademark. You may find yourself in this situation if the proprietor of an earlier trademark believes, for example, that this new application infringes his rights and requires the withdrawal of certain goods or services or, more significantly, the withdrawal of the trademark.
–The total or partial renunciation of the trademark: even if it is less common, these are cases in which modifications are requested after the registration of your trademark.
From a practical point of view, the right holder must also register in the Trademark Register:
–The change of address explained by the fact that if the INPI is not informed and the owner of the rights is not represented by an agent, he may never receive a reminder letter to renew his trademarks.
–The change of legal form (a SAS becomes an SA for example) because if the INPI is not informed of this change, it will refuse the renewal of the trademarks with the new data without justification.
–The change of name as illustrated by the harsh decision of the European Court of Justice of September 8th, 2016 confirming that the holder must register his change of name in order to avoid being deprived of his rights.
Limits of registration by the owner of the trademark right
The corrections that the holder may enter are limited, and are limited to the possibility of limiting the protection of his rights. Therefore, it is impossible to modify your sign, name or logo, nor is it possible to extend the protection of your right by adding products and/or services through registration.
Registration: the solution against the loss of rights
Failure to register the above-mentioned changes can have very damaging consequences such as forfeiture of rights. Moreover, the positions adopted by the courts continue to be increasingly rigorous, prompting companies to systematically register events affecting all intellectual property rights or their holders in order to avoid all types of damage.
Registering changes affecting your intellectual property rights is an essential step in terms of protection. Dreyfus & Associés has experts in trademark law, as well as in national, European and international trademark registrations. Dreyfus & Associés is the ideal partner to support you in this process of securing and updating your intellectual property rights.
Like every “wash-up period” preceeding the dissolution of the British Parliament and the election of a new one, this latest period witnessed the rushed adoption of a new intellectual property Act, which received Royal Assent on April 27, 2017.
As its name implies, the Act is specific to threats issued by intellectual property rights owners. It devotes a chapter for each right, namely patents, trademarks, and designs. It therefore harmonizes the status of the threats communicated by rghts holders, leaving copyright aside.
First, the Act defines a threat of legal action for infringement. Accordingly, communications contain such a threat if a reasonable person in the position of a recipient understands that an intellectual property right (patent, trademark or design) exists, and that the holder of these rights intends to bring legal action.
The Act focuses on the possibility for intellectual property rights holders to address their threat of legal action for infringement to the primary actors (i.e. manufacturers or importers) directly, without risk of liability for unjustified threats. The rights’ owners will also be able to require these actors to cease secondary acts such as product sale.
Furthermore, the Act describes the actor’s defence once he has been threatened, namely declaring that the threat is unjustified, seeking an injunction to cease the threat, or requesting damages for the harm suffered. This defense does not hold if the owner demonstrates his right along with the measures taken and communicated to the perpetratof of the infringement.
Finally, the Act introduces a new provision preventing the owner from addressing threats to professional advisers who act upon instructions and who identify their clients in the communication.
This new “Intellectual Property (Unjustified Threats) Act” is perceived as a positive step towards harmonizing the British legal system with regards to intellectual property. The owner must nevertheless remain vigilant before bringing a threat against a potential infringer so as not to suffer the consequences of qualification of an unjustified threat.
Dreyfus & associés is specialized in the field of intellectual property. The Dreyfus team closely follows new legal developments in Europe. We can help and advise you regarding all intellectual property rights within Europe.
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The United Kingdom Office has withdrawn its notification made under Rule 34 (2) (b) of the Common Regulations applicable to the Madrid Agreement and the Madrid Protocol.
After the filing of an intellectual property right, several types of changes are likely to occur, such as the owner’s move, the change of his name in a legal way or the assignment of his rights. Such corrections must be recorded in the relevant register, as this could have very damaging consequences for the holder.