trade marks explained

We are pleased to report that the Bermuda Registry General has now issued an Industry Notice confirming that the new Trade Mark Act has been approved by the Bermudan Parliament.

In Iraq and the Kurdistan region, effective trade mark registration is increasingly critical as the economy grows and foreign investment rises. An important development in this field will be the adoption of the 11th edition of the Nice Classification in both regions from January 2025.

On 11 November 2024, the Ministry of Economy and Industry and Investment Trade in Sana'a issued Ministerial Decision No. 56 of 2024 which relaxes some of the restrictions previously imposed on Swedish and American trade mark applicants and owners. This Decision now permits the renewal of trade mark registrations owned by entities in the US and Sweden. Whilst it is not clear whether the restrictions have also been removed for UK-based right holders, we believe that the removal of the ban also applies here.

On 1 October 2024, Ethiopia’s Council of Ministers approved the country’s accession to the Paris Convention for the Protection of Industrial Property and the Madrid Protocol for the International Registration of Marks.  Ethiopia’s accession to these IP treaties and to trade agreements such as the World Trade Organization (WTO)’s Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), along with the necessary modernisation of Ethiopia’s IP  laws, will serve to bring Ethiopia onto the global stage for IP and help to stimulate trade and investment in the country.

The Lebanese Intellectual Property Office (IPO) is currently facing significant operational difficulties due to the ongoing economic and political instability in the country. The challenging environment has led to staff shortages, as many employees are unable to attend work. In addition, technical issues with the online portal have further complicated the IPO’s ability to process applications efficiently.

We remind all applicants and owners of Cayman Islands patent, trade mark and design registrations, and all owners of trade marks in the Turks & Caicos Islands, that the next annual maintenance fees (AMFs) for such cases are due for payment on 1 January 2025.  If these annual fees are not paid by 31 March 2025, penalty fees will accrue. 

IP Australia has just announced some changes to the official fees for patents, trade marks, designs and plant breeder’s rights, which will come into effect on 1 October 2024.  Inter alia, the filing fees for patents and plant breeder’s rights will increase, trade mark filing fees will remain unchanged, and designs filing fees will decrease.  

The Intellectual Property Office of the Philippines (IPOPHL) has issued a memorandum which requires that the fees for the issuance and publication of a trade mark renewal must now be remitted along with the payment of the renewal fee instead of upon receipt of a Notice of Issuance.  This new practice took effect on 25 July 2024 and it should serve to expedite the renewal process.

The Legislative Assembly of El Salvador has recently approved a new Intellectual Property Law, which will replace, update and combine into a single body the current  "Law of Trademarks and Other Distinctive Signs" and the 1993 "Law of Intellectual Property".  It will also create the Salvadoran Institute of Intellectual Property (IPSI) which will be in charge of managing procedures and mediating conflicts arising from IP rights.

The Libyan Trade Mark Office has announced that it will resume accepting new trade mark applications, as of 2^nd September 2024. 

A new Law on the Protection of Intellectual Property was published in Rwanda on 31 July 2024 and came into force on the same day. The Law paves the way for a more streamlined approach for the filing of patent and trade mark applications, as well as clarifying aspects of their prosecution and registrability.

An official circular was issued by the Qatari Intellectual Property Department on 25 June 2024, outlining changes to the requirements for Powers of Attorney (POA) for IP matters

Qatar becomes the 131st member of the Madrid Protocol, enabling international trade marks to designate this Gulf state from 3rd August 2024.

All new UK applications for patents, trade marks or designs must appoint an address for service in the UK, Gibraltar or the Channel Islands. Since 01 January 2024, all comparable trade marks and re-registered designs derived from EU rights post-Brexit must have a UK address for service to respond to challenges filed by third parties.

The Intellectual Property Office based in Sana’a, Yemen has announced that trade mark rights owned by US and British companies are now invalid, and that they will no longer accept new applications. Furthermore, ongoing civil unrest has led to a de facto two-state country. To obtain trade mark, design and patent protection across the whole country, it is necessary to file applications in both Sana’a and Adan Registries.

Some new trade mark regulations came into force in Uganda on 2 February 2024 which, inter alia, have introduced the requirement that trade marks and notices be published in the Uganda Gazette, as was the case pre-2021.

The Government of Jersey has clarified its position on whether EU trade marks automatically extend to Jersey under current legislation, confirming that no such coverage has existed since April 2009. Trade mark owners wishing to obtain protection in Jersey should re-register UK national trade marks, or rely on the automatic coverage granted to IR(UK) designations.

We summarise here some recent amendments to the Trade Mark Regulations in Lebanon, which have brought about changes to the term of protection and some of the official fees associated with trade marks.

The Trade Marks Act 2023 and Trade Marks and Service Marks Regulations Amendment and Validation Act 2023 received formal approval in Bermuda on 13 October 2023.

Our Senior Trade Mark attorney, Martin Chinnery, will shortly be retiring. Whilst this is sad news for all of us here at Lysaght, it marks the start of an exciting new chapter for Martin.

Find out more about the conferences we are attending this year.

We are pleased to announce the Trademarks Office in Sudan has resumed operations after a 10-month hiatus. Read here for more information.

At long last, the implementing regulations for the 2010 Trade Mark Act have been brought into force in Libya. These provide some much needed clarity to the practical considerations of trade mark applications, as well as bringing an increase in the official fees

Jersey is proposing a shift from a secondary trade mark framework dependent on the UK, by implementing an independent registration system and accession to the Madrid Protocol. A recent consultation invited stakeholders for comment on the proposed changes, to which we duly obliged. Read more in our article.

From 1 January 2024, it will be necessary to record an address for service in the UK, the Channel Islands or Gibraltar against comparable rights when they are subject to challenge by third parties.

Ahead of the commencement date of Fiji’s new IP laws, the IPO has recently enacted a change in practice regarding the filing of second applications, and acceded to the Paris Convention - our article has full details.

Tim Noel and Richard Stilwell represented Lysaght at INTA 2023 in Singapore. This gave the pair the opportunity to meet current and new clients and agents within the impressive surroundings of the city. It was a welcome return to face-to-face meetings as well as networking events throughout the busy week.

Richard Stilwell will be representing Lysaght at FICPI’s 21st Open Forum, being held in London this October. This conference is a great opportunity to take part in high-quality working sessions, as well as meet up with like-minded individuals in private practice, across all forms of IP.

We are six months on from the deadline for lodging Anti-Counterfeiting Recordals (“ACAs”) with the Kenyan IPO. Our articles takes a deep dive into what progress has been made, and what challenges have arisen in this process.

The Ministry responsible for IP in South Sudan has just announced that it is now allowing the reservation of trade marks in advance of the long-awaited enactment of the new law. Read our full article for further details.