International Ip Developments

• Citation: Vol. 40 No. 3
• Publication year: 2015
• Author: AURELIA J. SCHULTZ

International IP Developments

AURELIA J. SCHULTZ

TRADEMARK UPDATES

'Tis the season pgr trademarks. This quarter's report deals almost exclusively with changes to and clarifications from trademark systems around the world. However, just to make sure the trademark lawyers are not the only ones having fun, there are some updates irom other areas related to intellectual property as well.

Canada Using Nice Classification

Last year at this time, we discussed Canada's planned changes to bring the country's trademark law in-line with the Madrid System. Those changes are now happening. Beginning around now, the Canadian Intellectual Property Office (CIPO) is accepting applications using the Nice Classification System.¹ CIPO is planning a redesign of its web search and Goods and Services Manual in conjunction with the transition. It is important to remember that the changes include an adjustment of the trademark term from 15 years to 10 years, including for renewals. Trademarks with a term ending before the new bill goes into effect can renew for 15 years.² Trademarks with a renewal due after the new bill comes into effect can only renew for 10 years.³

Brazilian Court Cancels Trademark Without Administrative Procedure

In Brazil, a case involving Namco Baidai Games of Japan has made some big waves. The court cancelled a challenged trademark even though the challenger had not exhausted, or even used any of the available administrative remedies.⁴ The case involved a request by Japanese video game maker Bandai Namco to cancel a Brazilian trademark registration for the word "Tekken" made by defendant, Ghassan Ali Nahle - ME ). Bandai Namco established not only that it had registered the brand "Tekken" in many countries, but also that "Tekken" is a well-known brand.⁵ In reaching its conclusion that judicial relief without application to administrative remedies is appropriate, the court relied on Article 5 of the Introduction to Brazilian Law Standards Act.⁶ The court excused Bandai Namco's noncompliance with Brazil's preclusion rules by explaining that the rules were meant for companies coexisting within a brand space in Brazil, not for foreign companies doing business all around the world.⁷ The court states that well-known global brands should not be required to monitor the granting of trademarks in all those countries.

Columbia Clarifies Limitations on Cancelling Marks for Non-Use

Also dealing with trademark cancellation issues, the Columbian Council of State clarified rules for partial cancellation. Molino El Lo-bos (The Wolf Mill) owned a registration for El Lobos (the wolf) for a number of goods in one class.⁸ Molino El Lobos did not use the mark on some of the goods for which it had a registration. In 2008, Museum Turron SL sought and obtained a partial cancellation for the mark on those goods. The Superintendent of Industry and Commerce granted Museum Turron a registration for the same mark in those goods.⁹ The Council of State found that...