Right-Safeguard Abroad / Information of Overseas Trademark
2019-09-10 IP News

I. Australia Trademark Amendment Act comes into Effect

Partial amendment related to the Trademark Law made by IP Australia had come into effect on 24th February 2019, the change mainly reduced the duration of cancellation for non-use from 5 years to 3 years, the period will be calculated from the date the trade mark is entered on the Register, instead of the filing date. This amendment is only applied for application of trademarks after 24th February 2019, while the previous application and registration of trademarks will remain the system of continuous 5-year calculation for non-use

Australia cancellation for non-use mainly based on following two reasons:

1. Counting back 3-year from one month prior to the raising date of cancellation, the trademark owner did not practically use the trademark within 3 years, if the cancellation is submitted based on this reason, the application for cancellation must be submitted within 5 years after the filing date, i.e. the applicant applies for the cancellation of non-use against a registered trademark on 1st December 2016 based on the above reason, then the trademark owner must prove use evidence to prove the use between 1st November 2013 and 1st November 2016.

2. The trademark owner has no intention to the trademark, i.e. the owner has no intention to use the trademark upon the application, also has not use the trademark after the registration. A cancellation can be submitted at any time after the registration based on the reason above; After the amendment to the trademark law, application for registration of trademark after 24th February, 2019, 3 years after the practical registration date, other person can submit the application for cancellation based on reason 1).

II. Canadian New Trademark Law came into effect on 17th June 2019

Update and amendment to Canadian trademark law have come into effect on 17th June 2019. Of particular noting, Canada has already included in the Madrid Protocol, and the international registration is allowed to extend to Canada, furthermore, Canada also joined Nice Agreement and the international classification system has been adopted by Canada. Update of Canadian trademark law also including following key changes:

1. Before approval of the application for the registration, or in any pending application prior to 17th June 2019, the statement of use will not to be submitted anymore.

2. After 17th June 2019, the application of the trademark will not submit Canadian trademark use statement (i.e. the intent-to-use or practical use in Canada).

3. The registration certificate issued after 17th June 2019, and all renewal trademark which expired on 17th June 2019, the valid period is amended as 10 years instead of 15 years.

III. Performance of Croatia New Trademark Law

Croatia new trademark law has been implemented on 15th February 2019. The new law aims to change EU 2015/2436 Act into single country legislation, also provide foundation to further perform 2004/48/EC Act. Main amendments are as follows:

1. The requirement of trademark design sample has been cancelled, it has created conditions for the registration of new type trademarks, i.e. direction, location, design, act and multi-media trademark.

2. Introducing absolute reason for refusal of trademark registration, setting proper legal framework for protection of geographical indications, country of origin, name of traditional feature food and traditional wine terms.

3. Setting detailed articles of protection of collective trademark and guarantee trademark.

4. The detailed description for goods and services that are need protection is required, in order to competent department can confirm the protection level.

5. Owners can obtain proper legal protection against the fake goods that passing through EU territory. The owner of trademark can prevent the third party to bring goods with similar or the same trademark into EU, even though the goods only in the course of transportation.

6. The trademark owner has right to prohibit other person to stick the same or similar trademark on packages and put them into the market.

IV. Republic of Korea abolished “Joint trademark right shall be renewed by all owners”

According to the current trademark law in the Republic of Korea, as for the joint ownership of the trademark, the renewal of such kind of trademarks shall be submitted and applied by all co-owners together (Article 48-3 of the Trademark Law). Where a trademark is renewed in violation of such provisions, the renewal shall be for reasons of invalidity and may be invalidated through the judge, moreover the renewal of the trademark may be invalided. (article118-1-2 of the trademark law)

However, South Koreas National Assembly has abolished the system “co-owners shall transact together the renewal”, and passed the amendment that only one of the co-owners can apply for renewal of the trademark, this amendment has been published on 23rd April 2019 and to be performed from 24th October 2019. From the implementation date, only one of co-owners of the trademark can transact renewal issues. KIPO has explained the background for broadening the renewal condition: some of persons among joint ownership or one of parties malicious refuse the application for renewal, the trademark right will be hard to renew and moreover to result in cancellation of trademark right. Re-registration of the same trademark is not only a waste of time, but also of cost, and the trademark may be not to be used if the third person rush registered the same of similar trademark in the course of re-registration. Additionally, in recent 3 years, there were 43 (23%) refusal of applications for renewal caused by non-full-co-owners’ application among 179 such cases.

As a result, this amendment to the trademark law is expected to provide convenience for individual business to renew trademark fast, guarantee the stable operation, without concern for losing the trademark right.

V. Amendment of Tajikistan Trademark Law comes into effect

Tajikistan amended trademark law had been implemented on 2nd January 2019. Main changes after the amendment are as follows:

1. The publication will be arranged after the applied trademark pass the formal examination, any person can pose opposition against the applied trademark during the publication period. Previously, Tajikistan only publishes the approved trademark for registration, without real opposition system.

2. Trademarks that are similar to or the same with following signs are prohibited for the registration, i.e. religious sign, national flag, emblem or other countries’ signs, stamp of international organization, governmental organization, as well as their emblems, flags and abbreviation, full names of other signs. Signs, trademarks, stamps and other signs or emblems controlled by officials (except for the applicant obtains approval from the authority, however, needs to abandon request of exclusive use right). The industrial design registered in Tajikistan prior to the trademark’s priority date.

3. The registered trademark does not apply for renewal on the expiration date, within 1 year from the expiration date, this trademark will not be re-registered under the former right owner or applicants other than lawful successor. (the former period is 3-year).

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