Thailand acceded to the Madrid Protocol on August 7, 2017. The Protocol will enter into force with respect to Thailand on November 7, 2017. Thailand will be the 99th member of the Madrid System. See more at WIPO.More
South Korea, Taiwan, Turkey: Design Law Updates
Significant recent changes to the local design laws in the Republic of Korea, Taiwan, and Turkey, are discussed below. Each of these may help design owners expand the range of protectable designs and of available design protections.
South Korea—Broadened Scope of Designs Eligible for Registration
The Korean Intellectual Property Office recently amended its examination guidelines for registered designs,More
South Korea: Keyword Advertising Constitutes Valid Trademark use in Non-Use Cancellation Proceeding
Dong-Hun Lee V. Tae-Sun Park, Intellectual Property Trial And Appeal Board (Case No. 2016 HEO 5439, March 15, 2017).
In June 2015, Tae-Sun Park, a Korean individual, filed a non-use cancellation action before the Intellectual Property Trial and Appeal Board (“IPTAB”) against a registration for FILLTOX &More
Germany: Cease-and-Desist Orders Include Implicit Obligation to Recall Infringing Products
By Katherine Lyon Dayton
Obligation of the Respondent to Recall Infringing Products – “Rescue Tropfen,” Case I ZB 34/15, Federal Court of Justice, September 29, 2016 (published January 10, 2017)
In a landmark decision, the Federal Court of Justice,More
European Union: EUTM Registrations May be Enforced within First Five Years without Proving Use
By Ashford Tucker
Länsförsäkringar AB v Matek A/S, C-654/15, EU:C:2016:998, December 21, 2016
The Court of Justice of the European Union (ECJ) recently held that the actual use of a trademark does not affect the extent to which an owner of an EUTM registration can enforce its rights within the first five years following registration. More
China: Trademark Official Fees Halved
By Karen Lim
Official trademark fees in China were reduced by 50% from April 1, 2017. The current fees are listed below:
Action
Fee (RMB)
Fee (USD)*More
Filing trademark application (per class)
300
44
Additional fees for goods/services in excess of ten items per class
30
4
Applying for re-issuance of a registration certificate
500
74
Applying for assignment / transfer of a trademark registration/application
500
74
Renewal of trademark registration (per class)
1000
147
Late filing of renewal documents during grace period
250
37
Applications for trademark review before the Trademark Review and Adjudication Board (“TRAB”) (refusal appeal,
China: Supreme People’s Court Provides Guidance on Merchandising Rights
By Janet L. Hoffman
In 2008, shortly after release of Dreamworks’ Kung Fu Panda film in China, a local individual filed a trademark application for KUNG FU PANDA covering various vehicle-related goods (e.g., steering wheel covers, seat covers, and car seats for infants). More
Canada: Rare Interlocutory Injunction by Federal Court in Trademark Infringement Case
By Hindy Dym
Sleep Country Canada Inc. v. Sears Canada Inc., 2017 FC 148 (February 9, 2017).
The Canadian Federal Court recently issued a rare interlocutory injunction to a plaintiff in a trademark case. Interlocutory injunctions are often sought in trademark infringement cases as it can take many months or even years before the case goes to trial.More
Supreme Court: New Copyright Eligibility Test for Clothing Designs and Useful Articles
By Laura Popp-Rosenberg
Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S.Ct. 1002 (2017)
United States issued a decision in a highly-anticipated case concerning the copyrightability of clothing designs, concluding that designs on cheerleading uniforms could be protected by U.S.More
WIPO: Freeze on Accessions to Madrid Agreement
By Erica Gould McCurdy
During the 50th session of the Madrid Union Assembly, a landmark decision was made to freeze accessions to the Madrid Agreement (the “Agreement”), except in cases where a contracting party is already a party to the Madrid Protocol (the “Protocol”) or is simultaneously acceding to both the Agreement and the Protocol. More