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January 2018

As is often the case, the coming of the New Year brings its set of changes. In this, trade mark law is no exception. Among the changes announced, the following are some of those to come in 2018 :

1.The accession of Indonesia to the Madrid System :
When it joins on January 2, 2018, Indonesia will be the 100th member state of the international system for trade mark registration (governed by the Madrid Arrangement and its Protocol) which makes it possible to apply for protection of a trade mark in numerous member states by filing a single application at WIPO (the “World Intellectual Property Organization”, based in Geneva) of which the effects (after registration) extend to each designated contracting party. Much less costly than a national filing (between 2 to 4 times cheaper, depending on the country designated), and not requiring any translation into local languages, the advantage of an international designation in such a strategic Asian country as Indonesia, and one with such a rate of development, cannot long be ignored. It is probably worth waiting until January 2 to extend protection for your trade marks to this country. The recent accession of Thailand, on November 7, is also to be noted. The international trade mark system has undeniably a bright future ahead of it..

2.The new “Nice Classification” 2018:
On November 23, 2017, WIPO announced (Information Notice No. 25/2017) that a new version of the eleventh edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks ( “Nice Classification ”) will enter into force on January 1, 2018. The 2018 version of the eleventh edition of the Nice Classification (dating from January 1, 2017) includes a certain number of changes relative to the preceding version and will be designated by the abbreviation “NCL (11-2018)” in relation to the previous original version “NCL (11-2017)”. The International Bureau of WIPO will apply version 2018 of the eleventh edition of the Nice Classification to:

– any application for international registration received by the original Office on January 1, 2018 or after that date;

– any application for international registration received by the International Bureau of WIPO on January 1, 2018 or after that date, when said application is received by the International Bureau of WIPO after the period of two months specified in Article 3.4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;

In accordance with its standing practice, the International Bureau of WIPO will not reclassify, in accordance with the version 2018 of the Eleventh Edition of the Nice Classification, the list of Goods and Services of an international registration that is the subject, after 31 December 2017, of a renewal, subsequent designation or any other change affecting the said list.

3.Brexit: when will it be definitive and what future for trade marks in the UK ?
The United Kingdom gave notification of its exit from the European Union on 29 March 2017 impacting all intellectual property rights, including European Union Trade Marks (EUTMs). Even though the European Council specified the general conditions for leaving on April 29, 2017, uncertainty remains as to the future of IP rights in this country of which the definitive exit is programmed in principle for 29 March 2019. Admittedly, discussions by the European bodies appear to indicate the adoption of a system for automatic conversion of EUTMs into UK trade marks (national trade marks) with entitlement to a “priority“ right, that is to say keeping the date of filing of the EUTM without reexamination and without fee (also known as the “Montenegro” model). However, nothing has yet been decided, and other questions and consequences for the post-Brexit period are pending, such as that of the exhaustion of rights, the address for service of the owner of the rights in the UK, and genuine use of the trade mark currently validated in the EU but not used in UK territory. In short, the strategy for filing, defense and use of trade marks in the UK will have to be adapted to the new scenario. We can be sure to learn more as 2018 progresses !

We can also note in passing the recent practice of applicants who have attempted to register the trade mark “BREXIT” as a EUTM for a wide variety of goods and services such as tobacco products (class 34), energy beverages and fruit juices (class 32). These trade mark applications have been refused in all cases by the Examining Division of the EUIPO on the absolute grounds that they “are devoid of any distinctive character” and “are contrary to public policy or to accepted principles of morality” pursuant to Article 7 (1) (b) and (f) of the Regulation on the European Union Trade Mark. As a matter of fact, the term “BREXIT” (which is a contraction of “British” and “exit”) cannot be protected considering the very close link this name represents for European citizens on account of the high-profile debate linked to the exit of the United Kingdom from the EU. Furthermore, according to the examiner, registration is liable to cause offense, especially if authorized for goods such as energy drinks and cigarettes. That being said, the Board of Appeal of the EUIPO appears on the contrary to have validated the distinctive character of the said term which is neither contrary to public policy nor to morality, and is still less a laudatory denomination (decision of 17/07/2017 R2244/2016-2). This is a case to watch! It is to some extent reminiscent of the debate the French IP Office faced over applications for registration of “JE SUIS CHARLIE” (I AM CHARLIE) further to the terrorist attacks in Paris, which also raised the delicate question of the public policy: we can observe that, in both cases, the ground of public policy was not objected. However, the French IP Office (in contrast to the EUIPO regarding “BREXIT”) refused the registration of said trademark applications, since they did not meet the requirement for distinctive character: it was decided that the slogan “JE SUIS CHARLIE” could not be appropriated by an economic entity on account of its broad use by the public.

Séverine Bruco

Trade mark and design attorney