All trademark news that you might have missed last month in one convenient overview. Read up on the latest news reported by the Kluwer IP Reporter.

Image search functionality in TMview extended to TM5 offices

On 15 May 2023, the China National Intellectual Property Administration (CNIPA), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO) made available their registered trademark images in TMview’s image search function.

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Croatia implements trademarks e-filing mechanism

The State Intellectual Property Office of Croatia recently implemented a trademark e-filing tool called the Software Package Front Office, raising the number of national offices to implement this e-filing software to 21.

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Libya reopens trademark office after hiatus

On 28 May 2023, Libya resumed the full operation of its trademark office, which had been limited to trademark applications filed only by Libyan applicants since 1 November 2022.

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Madrid Protocol fees revised for Pakistan

Pursuant to the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization has notified the amounts of individual fees applicable when Pakistan is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.

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Russia accedes to Geneva Act of Lisbon Agreement

On 11 May 2023, the Government of the Russian Federation joined the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act) by depositing its instrument of accession with the Director General of the World Intellectual Property Organization.

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Madrid Protocol fees revised for Türkiye

Pursuant to the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization on 2 June 2023 notified revised individual fees applicable when Türkiye is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.

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Albanian IP Office implements EUIPO’s practice paper CP12

With an aim to enhance transparency, legal certainty and predictability for the benefit all stakeholders, the General Directorate of Industrial Property (GDIP) of the Republic of Albania implemented common practice paper CP12, “Evidence in Trade Mark Appeal Proceedings: Filing, Structure and Presentation of Evidence, and the Treatment of Confidential Evidence” with effect from 7 June 2023.

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Benelux implements new trademark e-filing tool

On 4 May 2023, the Benelux Office for Intellectual Property (BOIP) became the first IP office to implement the new Front Office 3.0 tool, which was , developed in cooperation with the European Union Intellectual Property Office, for e-filing of trademarks.

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Croatia implements trademarks e-filing mechanism

The State Intellectual Property Office of Croatia recently implemented a trademark e-filing tool called the Software Package Front Office, raising the number of national offices to implement this e-filing software to 21.

Read the full story here

EUIPO introduces trademark application pre-assessment checks

The European Union Intellectual Property Office (EUIPO) has recently launched a “pre-assessment checks” tool that allows trademark applicants to run checks, usually conducted by EUIPO examiners, before filing their applications in order to detect issues, reduce delays and avoid rejection of their applications.

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EUTM applicants can now do pre-assessment checks before filing

With the aim of eliminating errors in the trademark examination process and making the process more simple and easy, the European Intellectual Property Office (EUIPO) has now made available a new feature called pre-assessment checks to its trademark applicants.

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Madrid Protocol fees revised for Iceland

In accordance with the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization on 15 June 2023 notified the revised individual fees payable when Iceland is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.

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Madrid Protocol fees revised for UK

Pursuant to the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization on 12 June 2023 notified revised individual fees applicable when the United Kingdom is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.

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Parody can’t be used as excuse for trademark infringement, rules U.S. apex court

On 8 June 2023, the U.S. Supreme Court (SC) in Jack Daniels Properties, Inc. v. VIP Products LLC (No. 22-148) reversed a decision of the U.S. Court of Appeals for the Ninth Circuit (CANC) holding that parody cannot be used as a shield when an infringer uses a mimicking mark for identifying a product’s source.

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USPTO delays non-DOCX fee and allows PDF submissions

On 6 June 2023, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register announcing that although users are encouraged to file their nonprovisional applications for utility patents in DOCX format, they can also submit a backup PDF version with it to verify the original filing.

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USPTO publishes final 2022-2026 Strategic Plan

On 7 June 2023, the U.S. Patent and Trademark Office (USPTO) issued its 2022-2026 Strategic Plan, based on the feedback received from the public and USPTO employees on the plan’s draft version.

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Madrid Monitor adds “designation status” feature

With the aim of providing users a clearer view of the status of protection of any international trademark registration in each Madrid System country, the World Intellectual Property Organization (WIPO) has recently added a “Designation status” feature to its Madrid Monitor tool under the eMadrid portal.

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