New regulatory framework for patent attorneys

Version française disponible ici – Nederlandse versie beschikbaar hier.

On 1 December 2020, the first part of the law of 8 July 2018 reforming the profession of patent attorney and creating a Belgian Institute for Patent Attorneys, entered into force.

This law is an addition to the existing regulations on the profession of patent attorney. The second part of the law will come into force in 2021.

Two royal decrees were adopted on 30 September 2020 to implement this law. The first one is a royal decree on patent representation. The second one is a royal decree establishing the disciplinary regulations applicable to patent attorneys.

Access to the profession of patent attorney

 Any person who establishes in Belgium to practise the profession of patent attorney must first be registered in the register of recognised patent attorneys. Natural persons wishing to appear in this register must satisfy various conditions, in particular:

  • be a natural person;
  • be a national of an EU Member State;
  • be domiciled in an EU Member State;
  • satisfy the conditions relating to training and professional qualification.

These requirements came into force on 1 December 2020.

The law also determines the conditions under which a person who is a national of a Member State, who is legally established in a Member State to practise the profession of patent attorney, and who comes to Belgium for the first time to practise as a patent attorney on a temporary or occasional basis, or who is practising as a patent attorney in Belgium for the first time without coming to Belgium, may act as a professional representative before the Belgian Office for Intellectual Property (“OPRI”) in the same way as a recognised patent attorney.

The date of entry into force of these provisions has yet to be determined by royal decree. Currently, these persons are authorised to practise in Belgium pursuant to the principle of the freedom to provide services: any attorney and patent attorney who is a national of an EU Member State can practise this profession in an EU Member State, as well as any attorney authorised to practise this profession in Belgium pursuant to a law or an international convention, may act in the same capacity as a recognised patent attorney before the OPRI.

The register of recognised patent attorneys is regulated by the royal decree on patent representation. It is freely available for consultation. It is maintained by the OPRI within the FPS Economy (Belgian Federal Public Service for Economy). For each registered person, this register contains certain data. The registered person must notify the OPRI of any modification of their data within fifteen days, as well as any modification of their situation with regard to the conditions of registration in the register. This part of the reform entered into force on 1 December 2020.

Creation of the Institute for Patent Attorneys

The law creates an Institute for Patent Attorneys.

This Institute has legal personality, is self-financed and has its headquarters in the Brussels-Capital Region. Its purpose is the study, protection and development of the professional, socio-economic, moral and scientific interests of patent attorneys.

The Institute for Patent Attorneys is composed of three bodies:

1. The General Assembly, composed of all the members of the Institute, including a president and a vice-president who are elected for a period of six years.

2. The Council, composed of four members, elected by the General Assembly from among its members for a period of six years. The Board is notably in charge of the management of the Institute for Patent Attorneys.

3. The Disciplinary Commission, composed of three members and three substitute members elected by the General Assembly from among its members for a period of six years. The Disciplinary Commission ensures that the disciplinary regulations and rules of conduct are applied by the members of the Institute.

A government commissioner and a deputy who assists him/her are appointed by royal decree on the proposal of the Minister in order to control the acts of the General Assembly and the Council of the Institute for Patent Attorneys.

The mission of the Institute for Patent Attorneys consists of:

1. Establishing a list of its members;

2. Coordinating the continuous training of its members;

3. Ensuring compliance with the disciplinary rules and the rules of conduct;

4. Expressing, on its own initiative, or at the request of public authorities or public or private institutions, opinions on matters within its competence; and

5. Sharing information with the Patent Agent Accreditation Commission existing within the OPRI concerning the status of the affiliation of the members of the Institute.

All patent attorneys in the register of recognised patent attorneys, as well as all patent attorneys who practise the profession of patent attorney in Belgium on a temporary or occasional basis, will automatically be affiliated to the Institute for Patent Attorneys.

This part of the reform also came into force on 1 December 2020.

Aspects related to the registration of patent attorneys

The law enacts the aspects related to the registration of patent attorneys.

Patent attorneys who are members of the Institute for Patent Attorneys must comply with the Institute’s disciplinary rules, rules of conduct, continuous training obligations and internal policies. This obligation comes into force on 1 December 2020.

The members of the Institute must also be covered by an insurance policy for any liability that may arise within the exercise of their profession as a patent attorney. The terms and conditions of this insurance are laid down in the royal decree on patent representation. The date of entry into force of this obligation has yet to be determined.

The professional title of  “mandataire en brevets” – “octrooigemachtigde” – “Patentanwalt” will become a legally protected title on a date that has yet to be determined by a future implementing decree. However, members of the Institute who only temporarily or occasionally work in Belgium will do so under the professional title (or the academic title) of their Member State of origin.

Professional secrecy and right to speak before Belgian courts and tribunals

Professional secrecy will be applicable to patent attorneys in the context of their intervention in judicial or administrative proceedings from a date yet to be determined. No one may disclose or be compelled to disclose communications exchanged between the patent attorney, acting in such capacity, and their client unless the latter has expressly waived this right.

Patent attorneys are recognised as having a right to speak before courts. At the request of the party or their attorney, they may provide written or oral explanations of factual matters, technical considerations or questions relating to the application of patent law. The date of entry into force of this right has yet to be determined.

Disciplinary rules

A set of Disciplinary Rules has been established by a royal decree of 30 September 2020, which came into force on 1 December 2020.

Since 1 December, members of the Institute are subject to certain ethical obligations such as the obligation to exercise their profession with dignity and integrity, an obligation of discretion (independently of professional secrecy), the obligation to notify the principal of a refusal of mandate and the obligation to refuse the mandate in the event of a conflict of interest, and the prohibition to limit their professional civil liability to an amount inferior to the amount of their basic insurance cover.

Any breach will be examined by the Disciplinary Commission, which is seized by a complaint from any interested party. It can also be seized ex officio, or on the reporting of facts by the Chairman of the Council of the Institute or by the Minister in charge of the Economy. The disciplinary procedure is detailed in the royal decree.

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For any question or request for assistance, please contact the authors:

Emmanuel Cornu
emmanuel.cornu@simontbraun.eu

Charlotte Behets Wydemans
charlotte.behetswydemans@simontbraun.eu

+32 (0)2 543 70 80

Trademarks & Designs | Fake application or renewal invoices!

Trademark applicants and owners often receive documents asking for payments related to a trademark or design application or renewal. Cautiousness is highly recommended in this respect!

For example, a new misleading invoice is in circulation, which takes the form of a fake European Union Intellectual Property Office (EUIPO) renewal invoice. The misleading invoice has recently been reported to the EUIPO. This fake invoice uses the EUIPO’s logo, name, acronym and address, and purports to be a EUTM renewal invoice issued by the EUIPO. It is mailed from Geneva, Switzerland, and includes a demand for a “registration and entry fee” to be transferred to a Polish bank account with a PL IBAN prefix.

Trademark applicants and owners should be aware of these practices.

The EUIPO has published a list of the firms or registers that users have complained of as having sent misleading invoices. The list is available here.

As can be seen from the list, the same applies to designs applications and renewals.

The list is not exhaustive.

For any question of guidance, please do not hesitate to contact:
Emmanuel Cornu: emmanuel.cornu@simontbraun.eu
Julie Kever: julie.kever@simontbraun.eu

The CJEU Testarossa judgement | Clarification of the contours of genuine use & the burden of proof

A trademark which has not been put to Genuine use by its owner or an authorised third party within five years after its registration is liable to revocation unless there are proper reasons for its non-use.

On 22 October 2020, the Court of Justice of the European Union (“CJEU”) clarified the contours of the notion Genuine use of a trademark, and in particular when the trademark is used only for some of the goods protected by such trademark. The CJEU also clarified the question of the burden of proof of Genuine use in revocation proceedings. A long-expected and welcome decision (available here) for all practitioners and trademark owners.

Relevant facts

Ferrari had registered the “Testarossa” trademark as both an international and a national (German) trademark in 1987 and 1990 respectively. The registrations notably cover vehicles, motor cars and parts thereof. Ferrari sold a luxury sports car model under the “Testarossa” trademarks between 1984 and 1991 and sold the follow-up models until 1996. During the period relevant to the assessment of Genuine use of the “Testarossa” trademarks, these were used only to identify replacement and accessory parts of luxury sports cars previously sold under those trademarks.
In the first instance proceedings, the Regional Court of Düsseldorf (Germany) cancelled the trademarks on the grounds of revocation, as it considered that Ferrari had not made Genuine use thereof. Ferrari launched an appeal before the Higher Regional Court of Düsseldorf which referred several questions to the CJEU for a preliminary ruling on the interpretation of Article 12(1) of Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trademarks (this directive is no longer in force; it was repealed and replaced by Directive (EU) 2015/2436 (see Article 16).


Highlights of the ruling

1. To use the trademark for some of the goods can suffice

To use the trademark for some of the goods covered by the registration may be sufficient to maintain the trademark protection for all the goods covered, unless the former are perceived by the consumer as an independent subcategory of the latter.

If independent sub-categories within a broad category of goods can be identified, Genuine use must be established for each sub-category. The purpose and intended use of the goods or services at hand is the essential criterion to determine the existence of an independent subcategory of goods. As an example, in a recent decision (T-49/20 of 15 October 2020), the General Court of the European Union considered “plastic safety boxes and closures thereof” as an independent sub-category of the broad category “goods of plastic” protected by a trademark.

The fact, for goods or services, to belong to a “particular market segment” such as, in the case at hand, “sports cars” or “luxury cars”, within the broader category of “cars”, is not relevant to establish if they constitute an independent subcategory.

Hence, Genuine use of the trademark for luxury sports cars and replacement parts or accessories of those cars may be considered as Genuine use of the trademark for “vehicles” and “replacement parts” per se (in its broad sense).

2. Use of the trademark for related services and for second-hand goods is relevant

The use of the trademark for services (maintenance, repair) in relation to those goods is relevant to assess the existence of Genuine use.

When the trademark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it was registered, there is Genuine use, even if this use relates to second-hand goods. The principle of exhaustion of trademark rights does not alter this consideration.

3. The trademark owner has the burden of proof in revocation proceedings before national courts.

The trademark owner has to prove Genuine use of its trademark.

The owner of the trademark at issue is best placed to give evidence that its mark has been put to Genuine use. National rules stating otherwise shall be set aside as they could harm the fundamental EU law objective of “the same protection under the legal systems of all the Member States”. In so doing, the Court unifies the principle of the burden of proof on an EU level.

Lessons for the Benelux trademark owners

The Court’s lessons are valuable for Benelux trademark owners, particularly with regard to the burden of proof.

Revocation proceedings against a Benelux trademark can be brought either before the Benelux Office for Intellectual Property, through administrative proceedings, or before the national courts, through judicial proceedings.

Before the Office, it is up to the owner of the trademark threatened by revocation to prove that his trademark has been put to Genuine use. Therefore, the burden of proof falls directly on the defendant.

Before the national courts and, in particular, before the Belgian courts, the burden of proof falls on the claimant (the same applies in Germany): the party invoking the revocation of a trademark for non-use has to prove such non-use. However, as providing evidence of a negative fact is particularly difficult, the judge often reverses the burden of proof and transfers it to the trademark proprietor or, at least, obliges the defendant to loyally participate in the administration of evidence.

After the “Testarossa judgment”, there will no longer be any question of applying the principles of civil procedure before the national courts, but only the teaching of the CJEU. The owner of the trademark threatened with revocation will have to provide all evidence of Genuine use. Therefore, in its daily business management, the trademark owner should pay particular attention to preserve all relevant documents and archives in case such a claim would arise.

***

For any question or assistance, please contact the authors:

Julie Kever
julie.kever@simontbraun.eu
+32 (0)2 533 17 08

Emmanuel Cornu
emmanuel.cornu@simontbraun.eu
+32 (0)2 533 17 22

Have you thought of mediation to solve your disputes?

As part of our objective to offer tailored and efficient solutions to our clients, we are happy to announce that Fanny Laune has become a registered mediator in civil and commercial matters.

Mediation offers many advantages, in particular, the confidentiality of the process, and the possibility to create tailor-made and pragmatic solutions close to every party’s needs.

Simont Braun gathers lawyers having longstanding experience in mediation (as mediator or counsel), notably in civil and commercial matters, real estate, construction, intellectual property and corporate law.

Did you know?

Thomas Braun is a member and former president of the Belgian Chamber of Conciliation, Arbitration and Mediation in Real Estate matters (CCAI).

Emmanuel Cornu acted in the first mediation proceedings organised by the Board of Appeal of the EUIPO (European Union Intellectual Property Office).

Any question?

Do not hesitate to contact Thomas Braun, Emmanuel Cornu or Fanny Laune.

Visit our mediation page.

COVID-19 – IP Offices take measures to face the pandemic – Update 7 July

Update 7 July 2020  |  The COVID-19 pandemic has been progressing worldwide. In an effort to control its expansion, public authorities have taken restrictive measures that impact both people and companies on their territory. In this context, IP Offices have adopted decisions to secure their users’ rights and the safety of their staff. Here are the key takeaways from these recent decisions.

I.   COVID-19 MEASURES TAKEN BY INTERNATIONAL AND REGIONAL IP OFFICES

This section focuses on the main International and Regional IP Offices in Europe, namely the World Intellectual Property Office (WIPO), the European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO) and the Benelux Office for Intellectual Property (BOIP).

Measures taken by the WIPO

1. All time limits under the Madrid System that concern the IP Office of a Contracting Party that is closed due to the COVID-19 pandemic are automatically extended to the first subsequent day on which that Office reopens.

2. Holders and applicants who have failed to meet a time limit may request the WIPO to continue processing the international application, subsequent designation, payment or request concerned, by presenting the official form MM20 within two months from the expiry of the time limit, without any reason or evidence needed (the form is available here).

3. The International Bureau of the WIPO has provided an interpretation of the COVID-19 pandemic as an excuse for delays in meeting PCT time limits which relate either to the submission of documents or to the payment of fees. However, this interpretation does not apply to international patent applications.

4. The International Bureau of the WIPO has announced that users of the Madrid System (trade marks) and the Hague System (industrial designs) will be excused from failure to meet a time limit due to the COVID-19 pandemic, provided they make a request for relief within six months from the expiry of the time limit concerned. This measure applies to time limits for the transmission of a communication, the submission of information to correct an irregularity and the payment of fees. However, this measure does not apply to the payment of the second part of the individual designation fee through the International Bureau.

5. The processing of applications and other IP and related systems has not been affected by the pandemic. However, the International Bureau of the WIPO will only receive and transmit documents via email until further notice. Therefore, applicants, holders and their representatives are strongly encouraged to provide an email address and use electronic communication services.

6. All events and meetings organized or co-organised by WIPO until the end of May will be postponed and, should that not be possible, cancelled.

Measures taken by the EPO

1. All time limits expiring on or after 15 March 2020 in proceedings under the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) were extended until 2 June 2020.

2. All oral proceedings scheduled until 14 September 2020 before the EPO Examining and Opposition Divisions are postponed until further notice unless they have been confirmed to take place by videoconferencing.

3. The EPO Boards of Appeal have resumed the holding of oral proceedings to a limited extent from Monday 18 May 2020. Concerned parties will be contacted accordingly. They will be requested to confirm as soon as possible their ability to attend in person and the absence of travel restrictions.

4. All EPO organised live events until 14 September 2020 have been postponed until further notice. Participants will be contacted on an individual basis and, where possible, be informed of the news dates. The EPO will otherwise continue its other activities without interruption.

5. Professional representatives and users are encouraged to make use of the EPO online services.

Measures taken by the EUIPO

1. All time limits expiring between 9 March 2020 and 17 May 2020 inclusive were automatically and with immediate effect extended until 18 May 2020. This applied to time limits set by the EUIPO and those imposed to the EUIPO by the EU framework on trademarks and designs. This did not apply to time limits before other authorities, such as the time limit to bring an action before the General Court against decisions of the EUIPO Boards of Appeal.

2. As of 18 May 2020, extensions have come to an end. Nevertheless, parties are reminded that they may request :

  • a six months extension of a time limit set by the EUIPO before that time limit expires and if exceptional circumstances justify it. Exceptional circumstances include (1) difficulties arising from measures taken by public authorities against the pandemic and (2) sickness of the party or its representative. The EUIPO may subject the extension to the agreement of the other party. Additional extensions may also be granted upon request.
  • a six months suspension of the proceedings before the EUIPO if exceptional circumstances justify it. In that case, exceptional circumstances also include the financial difficulties preventing the party from obtaining or securing continued professional representation before the EUIPO that are cause by the pandemic. In trademark proceedings, the suspension may be extended upon joint request for a total maximum of two years. In design invalidity proceedings, the suspension will be granted for periods of six months regardless of the period requested by the parties.
  • the continuation of proceedings within two months of the expiry of the unobserved time limit, even without giving any justification, provided that the omitted act is carried out in the meantime and a fee of 400 euros is paid. However, this option is not available in design proceedings and does not apply to certain time limits, including the time limit to file an appeal against a decision of the Boards of Appeal before the General Court.
  • the reinstatement of rights when a time limit to perform a procedural act was missed, despite taking all due care required by the circumstances. A request must be submitted within two months of the removal of the cause of non-compliance and no later than one year after the expiry of the missed time limit. Evidence must be provided that all due care was taken, that the omitted act was carried out in the meantime and that a 200 euros fee was paid. However, it is not applicable to certain time limits, including the time limit to file an appeal against a decision of the Boards of Appeal before the General Court.

Procedural time limits for lodging appeals at the General Court remained unchanged. Parties are however reminded that, in the event of unforeseeable circumstances or force majeure, they may request an extension to the General Court on the basis of Article 45 of the Protocol on the Statute of the Court of Justice. By contrast, in ongoing proceedings, the CJEU has specified that time limits are automatically extended by one month until further notice. However, this does not apply to time limits for instituting proceedings before the CJEU.

3. With the ending of the extension period, the EUIPO Executive Director confirmed that the last of the 21 000 delayed EU trade marks were published in the Bulletin. In addition, the EUIPO has gradually sent approximately 1.000 letters that were delayed due to the pandemic.

4. From 8 June 2020 on, all communications to the EUIPO can be carried out online. A “Reply” button is now available for all e-communications where a reply is permitted. A “Fax Alternative” option has been added as an additional fall-back solution.

5. All meetings and events taking place in March have been postponed until further notice. The participants having incurred expenses will be fully reimbursed by the EUIPO.

6. The EUIPO has guaranteed that it is “business as usual” for all its activities, thanks to its digital tools and its teams working from home. It has put in place a dedicated monitoring committee to follow the situation and take further measures where necessary. In the first phase of the return plan, 70 volunteers have returned to work on the EUIPO premises, while the rest of the staff continues to telework.

 

Measures taken by the BOIP

1. From 16 March 2020 to 25 May 2020 (“BAU date”), the BOIP has not withdrawn any requests or procedures for not meeting a given deadline.

An additional period of one month calculated from the BAU date has been given for all requests and procedures whose deadlines (1) have expired between 16 March 2020 and the BAU date, or (2) were less than one month from the BAU date, hence until 25 June 2020.

The BOIP has specified that:

  • All time limits that were set to expire between 16 March 2020 and 24 June 2020 have expired on 25 June 2020, including time limits for payments and time limits to file an opposition against a trademark application ;
  • All time limits that were set to expire on or after 25 June 2020 have remained unchanged ;
  • All time limits set from 25 May 2020 onwards will remain unchanged, even if they were set to expire before 25 June 2020.

It is important to note that this extension does not cover time limits to bring an action before the Benelux Court of Justice.

2. Until further notice, the register may not reflect the accurate status of certain trademarks. This is because the IT system of the BOIP applies the provisions of the Benelux Convention on Intellectual Property automatically.

3. The telephone accessibility of the BOIP was restored on 15 May 2020. Its staff will nevertheless continue to work from home as much as possible.

4. During the month of June 2020, it was possible to file i-DEPOTs free of charge. This system allows the applicant to have legal, date-stamped proof of an idea within minutes of the filing.

 

II.     COVID-19 MEASURES TAKEN BY NATIONAL IP OFFICES

This section focuses on the measures adopted by several national IP Offices, namely the US IP Office (USPTO), the German IP Office (DPMA), the UK IP Office (UKIPO), the French IP Office (INPI), the Italian IP Office (UIBM) and the Belgian IP Office (OPRI).

Measures taken by the USPTO

1. Time limits expiring between 27 March 2020 and 31 July 2020 concerning the petition for restoring priority or benefit rights in relation to patent applications and the payment of the associated petition fees to the USPTO are extended until 1 August 2020, provided that the filing or payment is accompanied by a statement that the delay was due to the COVID-19 outbreak. Until further notice, patentees may file initial patent term extension applications may be filed through the USPTO patent electronic filing system.

2. For small and micro entities only, the USPTO has also extended time limits expiring between 27 March 2020 and 29 September 2020 concerning the payment of certain fees (including basic filing fees, search fees, examination fees, late filing surcharge, basic national fee, issue fee and maintenance fee) until 30 September 2020.

3. In other cases, the USPTO will grant relief to those who need it on a case-by-case basis. Applicants should file a “petition to revive” in the forms prescribed if (1) they were unable to submit a timely response or fee in response to an Office communication, (2) they missed the 36-months statutory deadline for filing a Statement of Use resulting in an abandoned application or (3) they missed a statutory deadline resulting in a cancelled/expired registration. With regard to proceedings before the Trademark Trial and Appeal Board, if the COVID-19 outbreak has prevented or interfered with a filing, parties can make a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate.

4. Oral hearings at the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), interviews of patent examiner and trademark examining attorneys and meetings will be solely conducted by phone or videoconference until further notice. Although the USPTO offices will remain closed to the public until further notice, its activities will nevertheless continue without interruption.

5. Under the new COVID-19 Prioritized Examination Pilot Program :

  • Small or micro entities may file a request for prioritized examination, without payment of the typical fees, in relation to patent applications covering a product or process that is subject to U.S. Food and Drug Administration approval for use in the prevention and/or treatment of COVID-19. Up to 500 qualifying patent applications will be accepted for prioritized examination and exempted from the usual fees.
  • Applicants may file petitions to advance the examination of trademark applications covering medical products and services linked to the prevention and/or treatment of COVID-19. Such petitions may be filed free of charge.

6. The filing of plant patent applications and follow-on documents is temporarily permitted via the USPTO patent electronic filing systems until further notice. Filers are reminded that only registered users may benefit from that option.

7. The USPTO will accept copies of handwritten signatures (instead of originals) for correspondence relating to “registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings” and payments by credit card “where the payment is not being made via the USPTO electronic filing systems”.

8. The USPTO launched the COVID-19 Response Resource Center in order to provide improved access to its initiatives, programs and IP-related information concerning the COVID-19 outbreak. To access this Center, click here.

Measures taken by the DPMA

The DPMA has confirmed its ability to perform its activities, but its services should come with delays. During the COVID-19 crisis, the following measures will be applicable:

1. All time limits prescribed by the DPMA with regard to all pending IP procedures were extended until 4 May 2020. However, this extension did not apply to time limits provided by German law, as the DPMA competence does not extend to those time limits, nor to time limits in connection with applications or requests concerning the international registration of trademarks. Any person who has failed to meet a time limit imposed by law due to the current situation may request to benefit from the option of re-establishment of rights. The unit in charge will check these requests on an individual basis.

2. Hearings and oral proceedings were cancelled ex officio until 30 June 2020. From 1 July 2020 on, the DPMA has started to gradually grant access to invited individuals. If the number of infections does not rise uncontrollably, hearings and orals proceedings will take place at the DPMA from that date. To this day, the DPMA has not issued any further guidance in that regard.

3. The DPMA can no longer guarantee the immediate transfer of international design applications to the WIPO. Applicants are advised to file such applications directly to the WIPO.

Measures taken by the UKIPO

1. The UKIPO has declared that from 24 March 2020 and until 29 July 2020, all days are considered “interrupted days”. All time limits that expire on an interrupted day are automatically extended to the next day. As a result, the first “normal day of operation” will be 30 July 2020, when all time limits that benefited from an extension will expire. This extension applies to all time limits set out by the UKIPO or by UK statutory rules.

2. From 30 July 2020 to 31 March 2021, the UKIPO has announced temporary fee changes to support businesses. In particular, fees for extension, reinstatement or restoration will be zero.

3. No physical hearings will be booked or take place until further notice. These hearings will be operated via telephone, videoconference or other virtual methods.

4. The time limit for responding to examination reports has been automatically extended to four months for all UK trademark applications. However, that time limit remains two months for UK design applications, although extensions may be requested by applicants.

5. With its staff currently working from home, the UKIPO is now able to process paper forms, faxes and paper correspondence in a limited capacity.

That being said, the UKIPO is currently unable to issue letters in relation to renewals. This may result in some users experiencing shorter timeframes from receipt of their letters to the expiry of the renewal period. Users are therefore encouraged to proactively manage their renewals rather than relying on these letters.

The address paperformcontingency@ipo.gov.uk can be used instead of faxing, posting or delivering documents by hand at the UKIPO. Forms should be sent in separate e-mails, accompanied with a fee-sheet if a fee is due. New applications should be made using the UKIPO online system, as delays should be expected for any other form of filing. Electronic signatures on forms and other documents will be accepted..

Measures taken by the INPI

1. The INPI buildings will remain closed to the public until further notice. In the meantime, its staff remains available by phone and e-mail. Its online services remain fully functional, whereas official copies of documents may only be provided by the INPI in a pdf format signed electronically. Finally, its trainings will remain suspended, with the exception of online webinars.

2. After the first measures taken by the INPI on 16 March 2020, the French Government has adopted an ordinance n°2020-306 on 25 March 2020 (as consolidated on 15 May 2020) that extends all time limits expiring between 12 March 2020 and 23 June 2020 to:

  • 23 July 2020 if the initial time limit was one month; or
  • 23 August 2020 if the initial time limit was two months or more.

The INPI has communicated that this extension applies to all time limits prescribed by the French Code of Intellectual Property, including time limits applicable to trademark opposition proceedings and to the renewal of IP rights. However, this extension does not apply to time limits prescribed by International and European legal texts such as priority deadlines for an international extension, time limits applicable to the payment for the filing of a patent and time limits for the filing of a supplementary protection certificate.

In proceedings where a suspension was requested or comes to an end, a letter will be addressed to the parties with the date on which the procedure is to be resumed. As a rule, the following will apply :

  • If a suspension is requested or renewed between 12 March 2020 and 23 July 2020 inclusive, it will be calculated from 24 June 2020 inclusive in its entirety.
  • If a suspension requested jointly by the parties ends between 12 March 2020 and 23 July 2020 inclusive, the number of days of suspension remaining on 12 March 2020 will be calculated from 24 June 2020 inclusive.

The INPI has also clarified the impact of the extension period on opposition proceedings:

  • The time limits to file an opposition that were due to expire before 12 March 2020 have not been extended.
  • The time limits to provide reasons for an opposition filed before 12 March 2020 have been extended until 23 July 2020.
  • The time limits to file an opposition that were due to expire between 12 March 2020 and 23 July 2020 have been extended until 23 August 2020.
  • The time limits to provide reasons for an opposition filed between 12 March 2020 and 23 July 2020 have been extended until 23 September 2020.

3. All notifications sent by the INPI Trade mark and Design Department to its users will be accompanied by an e-mail copy until further notice. This measure applies to certain notifications relating to opposition proceedings, namely (1) the opposition notification, (2) the notification setting a time limit for providing proof of use of the earlier trademark, (3) the draft decision notification and (4) the decision notification. Parties are reminded that notifications are also available on the INPI online portal and that they should check the e-mail address communicated to the INPI to avoid e-mail delivery failures.

4. All notifications that were not answered in time between 12 March 2020 and 23 June 2020 will remain on hold until the end of the extension period. To ensure the efficiency of the decision-making process, parties are advised to inform the INPI if they do not want to answer to a notification, or if they do not intend to benefit from a time limit extension.

Measures taken by the UIBM

The Italian Decree-Law No. 23 of 8 April 2020 provides for the following measures:

1. All time limits relating to administrative proceedings at UIBM pending on 23 February 2020 or commenced after that date are suspended until 15 May 2020. This does not apply to time limits applicable to appeals before the Board of Appeal, nor to time limits applicable to international patent and trademark applications (first filings and renewals).

2. All IP rights expiring between 31 January 2020 and 31 July 2020 remain valid until the 90th day following the end of the state of emergency. The UIBM will promptly inform users about that date. After that date, it is the responsibility of the interested party to take action in order to obtain their maintenance or renewal.

The UIBM has also taken its own internal measures to face the pandemic:

1. The UIBM offices have been closed from 12 March 2020 and until further notice, but its staff remains active. The processing of paper documents forwarded by post will only be possible upon the reopening of the UIBM offices. Applicants and holders are advised to use the electronic filing system.

2. The release of authenticated copies has been temporarily suspended. Applicants and holders may only receive simple copies by email. All requests in that regard must be addressed to the following address: mirella.smecca@mise.gov.it.

3. The filing of international patent applications may still be made through the ePCT platform on which the UIBM is fully operational. The filing of international trademark applications should be made via a dedicated certified legal e-mail address: dglcuibm.div08@pec.mise.gov.it. In addition, applications in paper format have to be sent to the UIBM as soon as possible.

Measures taken by the OPRI (Belgium)

1. After announcing that it was prepared to accept, as far as possible and on a case by case basis, individual requests for extension of time limits, the OPRI has stated that it does not currently have a legal basis to grant time limits extensions before the Office in the event of a crisis.

2. Since 1 July 2020, the OPRI has resumed its normal functioning with regards to notifications. Previously, the OPRI had decided to stop sending legal notifications to its users, that would have the effect of setting a new binding time limit sanctioned by a loss of rights in the event of non-compliance. On 25 May 2020, the OPRI had resumed sending such notifications to its users, accompanied by an e-mail copy as a courtesy measure. Since 1 July 2020, the OPRI has stopped practising this courtesy measure, and therefore resumed its normal functioning in that regard.

3. The search service “EPOQUE” provided by the OPRI Information Section has remained suspended until 25 May 2020. Since then, searches may only be conducted through that service in limited amounts as a first step.

4. With its staff working from home, the OPRI has urged users to give preference, where possible, to electronic channels of communications. Applicants and holders are advised to use the OPRI online filing tool (eOLF) or its fax number (+32 2 277 52 62). The use of emails is recommended as well, except for the filing of formal acts.

CONCLUSION

In the last months, IP Offices around the globe have taken measures to secure their users’ rights in the midst of the COVID-19 outbreak. Although most Offices have announced the extension of procedural time limits, these announcements call for caution: depending on the case, those extensions may be limited to some instances of the Office concerned, or to some provisions of the legal texts applicable. Therefore, we advise IP professionals and companies to take extreme care in the way they handle IP assets in these troubled times.

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For any question, please contact the authors:

Emmanuel Cornu: emmanuel.cornu@simontbraun.eu
Romain Meys: romain.meys@simontbraun.eu

 

The information presented in this site is not legal advice or opinion. You should seek advice from a legal counsel of your choice before acting upon any of the information in this site.

Simont Braun recognised again for its patent expertise by iAM 1000

Our IP team has again been highly recognised in Silver Band for its expertise in patents by iAM Patent. The department is ranked in Silver with the following mention:

“Complex global patent litigation is meat and drink to the lawyers at Simont Braun, who conjure up ingenious solutions to contentious challenges in the life sciences, medical device, electronics sectors. Fernand de Visscher recently played a hand in a high-profile matter for weapons manufacturer FN Herstal, ensuring that his client could keep its key product on the international market. He also teamed up with colleague Eric De Gryse to represent OGI Systems, a diamond and gemstone manufacturer, in parallel infringement proceedings which are also ongoing in Israel and India. They both possess significant trial strength and an intuitive feel for the intricacies of each brief, giving every angle the attention it deserves to cover all bases and construct bulletproof arguments.”

Fernand de Visscher and Eric De Gryse are also individually ranked in Silver for their experience and capabilities.

Thank you to our clients and peers for your trust!

IP & Covid-19: A 2-minute overview of the IP measures in Belgium by Emmanuel Cornu

The current context of the Covid-19 outbreak has many consequences for the world of intellectual property: the deadlines of the courts and offices have been extended, the authorities have reorganised their control activities, etc.

As governmental measures differ from country to country, the UNIFAB invited Emmanuel Cornu to present a summary of the situation in Belgium.

He explains, in 2 minutes, the exceptional measures taken by the BOIP and the OPRI, as well as the measures applicable before the Belgian Customs authorities. The video is available here.

A summary in English is available here, and in French here.

For a complete overview of the measures taken by international, regional and national IP offices, please read our regular updates here.

Simont Braun authors ICLG Belgian Chapter on Trademarks

Emmanuel Cornu, Eric De Gryse, Julie Kever and Romain Meys authored the Belgian chapter on Trademarks in the International Comparative Legal Guides 2020, providing a high-level and easy-to-read overview of the key issues and legal principles applicable to this field.

The Belgian chapter is available here.

For any question in this area, do not hesitate to contact the authors.

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