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04 April 2003

Trademarks Ordinance implemented after three-year delay

The Trademarks Ordinance has been implemented today after a series of technical set-backs. The last hurdle was removed when the government amended Rule 13 of the Trademarks Rules implementing the ordinance. The rule's original draft, limiting the time to satisfy the registrar that a mark meets the registration requirements, was considered too rigid.

31 March 2003

Trademark renewal procedures simplified

Indonesia has implemented new, simplified procedures for the renewal of trademark registrations. Trademark owners are no longer required to submit evidence of commercial use at the time of renewal, and an application for renewal may be filed at any time during the year prior to the registration's expiration.

27 March 2003

Assignment without business goodwill annuls opposition

The trademarks commissioner has dismissed an opposition and allowed the registration of ELEMENT. The case involved the assignment of unregistered marks incorporating the word 'element' and the substitution of opponents during proceedings. It serves as a reminder of the importance of following the correct procedure when recording assignments.

25 March 2003

Colouring in a grey area of trademark law

Ruling for the first time on the issue of single-colour trademarks, the Federal Court has stated that such a mark, if not having an inherent capacity to distinguish, may still be registered if it has a factual capacity to distinguish at the date of application.

24 March 2003

Registration of '.sg' as a trademark abandoned

The Singapore Network Information Centre, the registry for the '.sg' domain space, has decided to abandon its application to register '.sg' as a trademark. This decision is welcomed by critics of the registration who feared that the government was seeking to strengthen its control over the country-code top-level domain.

14 March 2003

Florists win lawsuit filed by German rose giant

In Korean Florist Association v Kordes, a group of Korean flower producers has won a lawsuit filed by German rose giant Kordes in connection with its trademark rights in 'Red Sandra' and 'Kardinal', two rose breeds. The Supreme Court overruled the Patent Court's decision to grant Kordes trademark rights.

13 March 2003

Power of attorney is required case by case, say chief justices

The Supreme Administrative Court has issued a resolution which provides that an agent, acting on behalf of a trademark owner who has no domicile or place of business in Taiwan, must submit the power of attorney which gives the agent its authority to act on behalf of that party, each time a trademark-related case is brought before the courts.

06 March 2003

New hearing procedure benefits trademark applicants

The Directorate General of Intellectual Property Rights has introduced a hearing as part of the trademark registration process. As a result, if an application is to be rejected, the applicant may now file a response. If the response is dismissed and the trademark application rejected, the applicant may appeal.

04 March 2003

BSkyB granted last gasp extension to oppose trademark registration

The Federal Court of Australia has ordered the registrar of trademarks to consider the late application for an extension of time to oppose a trademark registration. The court held that the registrar's practice of refusing to consider such extensions was based upon an incorrect interpretation of Section 68(1) of the Trademarks Act 1995.

21 February 2003

Last waltz for Winton opposition

In Lomas v Winton Shire Council, the Full Court of the Federal Court has reversed a first instance decision, and therefore allowed the registration of the words 'Waltzing Matilda' as a service mark in relation to food outlets. The decision is a reminder that a clear intention to use is a key factor in determining prior ownership of a mark.

19 February 2003

New geographical indications regulations issued

The Department of Intellectual Property has issued regulations, under the new Geographical Indications Law, governing applications to register the use of geographical indicators. The regulations essentially follow the provisions set out in TRIPs and clarify administrative and procedural issues.

18 February 2003

Competition law amended to restrict trademark monopolies

The Russian government has amended the country's competition legislation so as to reduce the anti-competitive effects of trademark acquisitions and licence agreements.

12 February 2003

New Trademarks Act receives royal assent

The Trademarks Act 2002 has received royal assent. The new act replaces the Trademarks Act 1953, brings New Zealand into compliance with several obligations under TRIPs and increases protection of indigenous rights.

07 February 2003

Senate passes geographical indications law

The Senate has approved the Department of Intellectual Property's Geographical Indications Bill. The new law will considerably improve the protection of Thai geographical indications and help fulfill the country's obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights.

03 February 2003

Implementation of Trademarks Ordinance put on hold

The implementation of the new Trademarks Ordinance has been delayed. The set-back is due to a request by trademark law practitioners that the Legislative Council Panel on Commerce and Industry review the ordinance's rule that decisions by the Trademark Registry be appealed within nine months.