Durán-Corretjer SLP

On December 27, 2021, Jamaica deposited its instrument of accession to the Madrid Protocol with WIPO, becoming a 110th member of the Madrid System.

The Protocol will enter into force for the country on March 27, 2022. As of this date, it will be possible for companies and trademark owners who decide to sell their products and services in Jamaica to request the protection of their trademarks through this international trade mark registration system.

Some amendments have been introduced into the Harare Protocol (patents and industrial designs) and into the Banjul Protocol (trade marks) that came into effect on 1 January 2022.

As per the Harare Protocol the main amendments affect the disclosure requirement in a patent application which now requires accompanying a description and drawings. Moreover, there is the possibility to file observations by third parties after the publication of the patent or the utility model as per their patentability.

Regarding utility models, the changes concern a clarification of the terms new and industrially applicable in the context of a utility model, an amendment of the content of an application as per the explicit request for registration of a utility model, as well as a description of the utility model, a claim, a drawing or drawings, and an abstract.

The amendments of industrial designs are related with the content of an application which now shall contain a request for registration of an industrial design as well as a reproduction of the industrial design. Also the term of protection is extended from 10 years to 15 years.

Finally, the amendments introduced into the Banjul Protocol (trade marks) are related with the appointment of representatives and the cancellation of a designated State or reduction of classes.
 

Christian Durán was appointed to a two-year term on the International Trade Mark Association’s (INTA) Harmonization of Trademark Law and Practice Committee for 2022-2023.

The main tasks of the Committee are to evaluate efforts on national, regional, and international levels through treaties, trade agreements, special conventions, and other non binding instruments that relate to trademark law and practice.

The Committee then proposes policy recommendations to the Board including drafting proposed treaty language and advocating INTA’s existing policy positions to relevant government officials.

Last April 19, 2021, the Government of Belarus deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement bringing the total number of countries covered by the Hague System to 92.

Belarus becomes the 66th contracting party to the 1999 Act and 75th member of the Hague Union.

Since last July 19, 2021, users of the Hague System can already apply for international protection of designs in Belarus in international applications.

On May 3, 2021, The Gambia deposited its Instrument of Accession to the Banjul Protocol on Trademarks with the African Regional Intellectual Property Organization (ARIPO).

The Banjul Protocol allows applying for single trademark application covering the following countries: Botswana, Lesotho, Liberia, Malawi, Mozambique, Namibia, São Tomé and Príncipe, Swaziland, Tanzania, Uganda and Zimbabwe.

The Gambia is eligible for designation under de Banjul Protocol as from August 3, 2021.

On June 4, the event "Colloque: Consequences of the transposition in Europe et en France of the Directive« Paquet Marques "of 2015" organized by ICC France took place.

In this event, Luis Alfonso Durán, Managing Director of DURÁN-CORRETJER, participated as a speaker, in which he made a presentation on the most relevant aspects from the point of view of the transposition of the Trademark Directive into Spanish law.

Among the issues raised by Luis Alfonso Durán, highlight those relating to absolute grounds for refusal of trade marks, the procedure for proof of use of trade marks in the opposition procedure, the actions for nullity and cancellation and the appeal procedure against decisions of the Spanish Patent and Trade Mark Office.

On May 31, took place the event "Geographical Indications: the International point of view in the light of the Geneva Act" organized by AMPPI together with the EUIPO's IPKey Latin America program.

In this event, Ada Torras participated as a speaker providing some insight on current and future key aspects of the Geneva Act in relation to the European Union.

On February 18, 19, 25 and 26, 2021 the XXXVI Study Sessions on Industrial and Intellectual Property took place, in which current issues in the sector were discussed.

Among the different sessions that were organized, highlight the one related to the Round Table on Updates on Brexit and IP, in which Christian Durán had the opportunity to participate as a speaker.

On September 14, 2020, the European Union and China signed a bilateral agreement for the protection of Geographical Indications in both countries. In this way and by virtue of it, both countries recognize the protection of 100 Geographical Indications originating from each country in the other reciprocally.

This agreement, the purpose of which is to prevent the imitation and usurpation of Geographical Indications of said countries in the other, will entail commercial benefits as well as the introduction of quality standards for consumers in both countries.

Since last September 15, 2020, economic operators in the EU must make use of the so-called EORI number (Economic Operators Registration and Identification) in all information exchange procedures with EU customs authorities.

The introduction of the EORI number will allow the unique identification of the holders of intellectual property rights in a secure manner, as well as compliance with the regulations on data protection.

The most far-reaching effect is the obligation to include the EORI number in requests for customs intervention in procedures to determine whether intellectual property rights have been infringed.