The new Standards improve upon the old version from the following aspects:
- added the examination of a sound trademark,
- added the CTO’s issuing of the Examination Opinion during the examination,
- added the application of Paragraph 4 of Article 19, Article 50, Paragraph 2 of Article 15 of the Trademark Law,
- added the identification of the “interested party”,
- amended the standard for examination under Article 10 of Trademark Law, and
- deleted and added some cases.
Soundmarks
It is now possible to register soundmarks. The rules for registering these are conceptually similar to registering traditional trademarks in some ways.
When making the application, a sound sample that meets prescribed requirements must be submitted. The submission should include a written description, musical notations iff possible and a sample in .wav or .mp3 that has been placed onto CD.
Certain things such a sound that are similar to national anthems, offensive things or generic everyday sounds, like dogs barking cannot be registered.
Finally it is possible for a sound mark to be considered similar to a word mark – yahoo!
Examination Opinions
Examiners can now render opinions. They can only do this once however.
One situation in which they may render an opinion is to request further information from an applicant. This can be used to rectify defects or omissions in the application process and prevent the need for applications to begin the application process all over again. Additionally, it is useful to the examiner when they simply need to know more.
Opinions should also be issued when the CTO considers that a trademark registration application violates relevant provisions of the Trademark Law, but there is a possibility that the application may fall within a legal exception. Such situations include:
- Similarities to national emblems;
- Similarities to inter-governmental insignia;
- Similar to a government seal, stamp or quality mark;
- Place names are included in the registration;
- The registration seem indistinct; and
- Other situations as required on a case by case basis.
Article 50
Cancelled, invalidated, expired or abandoned trademarks cannot be registered for one year after they cease to be registered. Additionally, similar trademarks may also be blocked.
As the purpose of trademarks involves protecting brand integrity and consumers, Article 50 ensures that when a business loses its Trademark rights, sufficient time is given to allow for any trademarked goods on the market to be phased out.
The only exception to article 50 is where the prior registered owner re-applies for the trademarks, which they lost ownership of “accidentally.”
Bad Faith
Trademarks filed for registration in Bad Faith should not be granted, if genuine objections are made.
For an application to have been made in bad faith it must be made by a party who has a relationship with a person who had a prior interest in having the trademarks registered.
Recognised prior interests include:
1) The licensee of prior trademark right and other prior right;
2) The successor of prior trademark right and other prior right;
3) The pledgee of prior trademark right;
4) Other subjects who can establish that it has an interest in prior trademark right and other prior right.
The status of the applicant at the time of filing an opposition or invalidation action is important.
Summary
There are new rules for filing and opposing trademarks. If you are unsure of their impact on your IP please feel free to contact us. We are willing so give a short no-cost, no commitment consolation in the first instance.