The Office abolished the requirement to physically file a hard copy of a trademark application. Furthermore, from January 2, 2012, the Office will accept filings of trademark applications along with a copy of the search payment receipt. It will no longer be necessary to enclose the search results.

The main aim of these changes is to make the filing and examination process easier, quicker, more efficient, modern and also to reduce paper waste.

New laws concerns the creation of the Court for Intellectual Property Rights in Russia, a specialized arbitration court for IP disputes which could be operating from February 2013. The jurisdiction of the new IP Court will include, for example, invalidation of a trademark due to non-use (now under the competence of Russian National Office Rospatent). Disputes concerning copyright will be settled by other courts, as usual.

The new edition will be applicable to all trademark applications filed on or after January 1, 2012 and shall be used by any country which is party of the Nice Agreement, including WIPO and OHIM.

Accordingly, it is possible to designate Qatar in any international patent application filed on or after as of 3 August 2011.

However, the Qatari Patent Office will be ready to receive national phase applications starting from middle October 2011.

The official fees and date of annuity have not yet be decided.

Furthermore, the new Law is compliant with international conventions and with the EU’s directives on the subject matter.

One of the main amendment concerns the time to object a domain name registration: trademark owners have now eight days (instead of fourteen days as in the old provisions) to object if a third party registers a domain that infringes their rights. Now, all the domain name applications are published online on the webiste of the Council of Hungarian Internet Providers, so that it is easy for trademark owners to find out possible violations.

Before the entry into force of such database, Customs Authorities did not have any official source which could be consulted to review the information of trademarks holders, but they were forced to use an informal database containing information collected from past actions and details which trademark owner informally provided about their trademark portfolios.

The request of recording the information of a particular trademark into the Official Database is optional; the beginning of the registration into the new database is scheduled from January 2, 2012.

The opposition procedure allows the owners or exclusive licensees of a prior Italian or CTM trademark application or  registration or of a prior International Registration designating Italy or the CTM, to oppose the registration of any identical or similar trademark covering identical or similar goods or services that they deemed to be in conflict with or that could be detrimental to their exclusive prior rights. The opposition, which is an administrative procedure before the Italian Patent and Trademark Office (UIBM), can be filed with respect to any trademark applications filed on or after 1st May 2011 provided that they have already been examinated and no absolute grounds against their registration have been found. The applications filed on or after 1st May 2011 have been published on July 11, 2011 on the first official Bullettin of the UIBM (Bollettino Ufficiale dei Marchi). The opposition procedure can be also performed against any International Registration designating Italy starting from the registrations published on the first number of July 2011 of the official Gazette of WIPO, irrespective of which is their filing date.   Oppositions can be filed also by anyone having exclusive rights concerning portraits, person’s names and well-known signs, when there is no consent to the registration as trademark.

The non-extendible deadline for filing opposition – both by digital means and by certified e-mail – is of three months from the publication date of the national trademark applications or from the first day of the month following that of the publication of the International Registrations.

The operating rules of the opposition procedure are basically the same applied for CTM oppositions before the Office for Harmonization in the Internal Market (OHIM), but there are some relevant differences concerning the prior rights upon which an opposition can be based before the UIBM. These rights do not include well-known trademarks, known trademarks according to art. 6-bis of the Convention of Union of Paris, the use of a non registered trademark (so called “prior use”) or rights arising from the use of company names and denominations, company signs or domain names. These rights can be enforced only before the special Intellectual Property sections of Italian Civil Courts in order to obtain the invalidity – and thus the cancellation – of a registered trademark.

In the opposition procedure, the applicant can request the proof of use of the prior trademark upon which the opposition is based, provided that that trademark is registered from at least five years. If the effective use made by the owner (the opponent) or with its consent of this trademark for the goods or services for which it has been registered can not be demonstrated,  or in case the opponent is not able to demonstrate the existence of well-founded grounds for non-use, the opposition is rejected and the application can proceed forward to registration.

Considering the above, as the lack or insufficient proof of use could lead to the rejection of an opposition, we advise to arrange and store any useful documentation showing the use of its own trademarks.

The procedure, which can have a maximum term of 24 months, can lead to the rejection of the registration of the trademark against which the opposition has been filed. The decisions on oppositions of the Italian Patent and Trademark Office can be subject to appeal before the Board of Appeal within the maximum term of 60 days from the communication of the decision on the opposition.

Considering that only the owner of trademarks applications or registrations valid in Italy can use the administrative procedure before the UIBM and thus the mark “de facto” which is merely used  does not constitute a valid title to oppose the registration of a later conflicting mark, it is highly advisable to file as soon as possible any prior used trademarks.

Furthermore, considering the non-extendable term for filing oppositions, it is also advisable to have a watching service on trademarks applications or registrations, with the purpose to timely individuate any filing of a trademark which is identical or could be confusingly similar with its own prior marks put under watching.

Our office is ready to assist you concerning opposition procedure and to provide you with any other useful information about watching service.

The Treaty will enter into force on August 31, 2011.

Rwanda became the 144th PCT Contracting State.