As of the 3rd January, there are new IPO guidelines to adhere to when submitting a statement of case as part of a trade mark opposition or application for invalidation. The new rules apply to a statement of case filed with forms:
TM7 ‘Notice of opposition and statement of grounds’
TM7F ‘Notice of fast track opposition and statement of grounds’
TM26(I) ‘Application to declare invalid a registration or a protected international trade mark (UK)’.
The new practice dictates that if a statement of case with a notice of opposition or application for invalidity is filed, it must have numbered paragraphs. Additionally, the term ‘Please see attached statement of case’ on the opposition/invalidation forms will no longer be accepted. Instead, if the filer chooses to attach a statement of case rather than filling in the answers in the correct space provided in the form, they must insert the relevant paragraph number.
According to the IPO, this change has been implemented as a result of “a growing increase in the number of cases where parties, when completing the forms, are not answering the questions by inserting the information required in the boxes provided. Instead, the registrar is being referred to the statement of case.” It continues: “It is often difficult, especially when the paragraphs have not been numbered, to clearly identify where the relevant information appears within the statement of case. This can lead to additional work and costs for the registrar and the parties.”
This update to practice should assist with the efficiency of the trade mark opposition and application for invalidation procedures.
Representatives of the UK and Brazilian governments have signed a renewed Memorandum of Understanding between the intellectual property offices of each country. The Memorandum was signed by the UK’s Ambassador to Brazil, Alex Ellis, and President Luis Otavio Pimentel of the Brazilian National Institute for Intellectual Property (INPI) at the Brazil Joint Economic and Trade Committee (JETCO) meeting on 7 December in Brasília.
The goal of the JETCO meeting was to discuss strategies to support mutual economic development, including a commitment to strengthen bilateral commercial ties between both countries and to promote bilateral investment and trade relations. The Memorandum on IP includes a working plan for sharing best practices in both IP office management and patent examination methods. With Brexit approaching, it is likely that the UK government will seek to strengthen similar agreements with other non-EU countries.
UK clients wishing to safeguard their inventions in Brazil will be pleased to learn that Brazilian patent protection is possible through the Patent Cooperation Treaty (PCT) system, although in our experience the examination procedure is very slow. However, Brazil is yet to become a member of the Madrid Protocol system for trade marks or the Hague system for registered designs. This means that seeking trade mark or registered design protection in Brazil can be a relatively costly process compared to some other territories.
The Brazilian government has recently confirmed its intention to join the Madrid Protocol in the future, potentially as soon as 2018. One potential stumbling block is the requirement that a Madrid Protocol trade mark application be processed nationally within 18 months, when the INPI currently takes around 4 years to publish a trade mark application. Another issue is language – Madrid Protocol applications are processed in English, French and Spanish whereas the INPI currently only accepts communications in Portuguese.