E-Mark Newsletter - March 2006

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E-Mark Newsletter
March 2006

This E-Mark Newsletter will quartely keep you up-to-date about worldwide trademark law.

CHILE – December 2005: New Industrial Property Law
LIBYA – December 2005: Application Filing Requirements modified
BENELUX – January 2006: Opposition – all classes fully open
JAMAICA – February 2006: Nice Agreement and Vienna Agreement
CROATIA – May 2006: Vienna Agreement
SYRIA – In the course of 2006: New Industrial Property Law expected

CHILE – December 2005: New Industrial Property Law

A new Industrial Property Law came into force in Chile on 1 December 2005, which harmonizes the Chilean legislation with the Agreements on Trade Related Aspects of Industrial Property Rights (TRIPS). This new law which modifies the present law N°19.039 on Industrial Property was published on 11 March 2005, in the Chilean Official Gazette.

In general terms, the new Law:

extends its protection to objects not recognized in the former code
amends the protection statute for existing industrial privileges
awards improved protection tools to owners affected by infringements to their rights
expedites the procedure for the obtainment of an Industrial Privilege

1) Extension of the protection to:
- geographic Indications and Designations of Origin
- layout or topography schemes of integrated circuits
- industrial Drawings
- industrial Secrets

2) With respect to Trademarks, a new requisite is added to the distinctiveness requisite, which allows registration of marks that are not intrinsically distinctive, provided that they have acquired distinctiveness from their use in the national market. This reinforces the protection of the famous and well-known trademarks.

3) New civil actions are added entitling the owner of a breached Industrial Property right to claim:
- the ceasing of acts that violate the protected right
- compensation for damages
- adoption of the measures needed to prevent any continuance of the infraction
- publication of the court decision at the defendant’s expense

4) The amendments marginally raise the required fees and tend towards increased expeditiousness of the same, essentially through the limitation of the intermediate terms applicable to procedural stages. The preliminary examination carried by the Trademark Examiner is eliminated and replaced by a formal examination.

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LIBYA – December 2005: Application Filing Requirements modified

As from 20 December 2005, the requirements for filing trademark applications in Libya have been changed.

A certified copy of the certificate of registration in the home country or any foreign country is no longer required for the registration of trademarks in Libya.

The requirements for filing a trademark application in Libya are:

1. Power of Attorney, legalized up to a Libyan Consul.
2. Extract from the Commercial Register or Certificate of Incorporation, likewise legalized.

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BENELUX – January 2006: Opposition – all classes fully open

Since 1 January 2006, all classes are fully open for opposition in regards to trademarks introduced after this date.
As from this date, all applications are not subject anymore to the principle of the phased opening of the classes.

For all trademarks filed the 1st of January 2004, the entry into force of the opposition procedure was progressive by reference to the classes of the Nice Agreement claimed in the trademark application.

For all trademarks filed before this date, the time table was as follows:

as the trademarks as 1 January 2004: classes 2-20 and 27
as from 1 January 2005: classes 6, 8, 13, 15, 17, 19, 21
as from 1 January 2006: all classes

It is pointed out that opposition was not restricted to the "open" classes but to trademark applications in one of these classes.

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JAMAICA – February 2006: Nice Agreement and Vienna Agreement

The Nice Agreement for the International Classification of Goods and Services and The Vienna Agreement for the International Classification of the Figurative Elements of Marks entered into force, with respect to Jamaica, on 7 February 2006.

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CROATIA – May 2006: Vienna Agreement

The Vienna Agreement for the International Classification of the Figurative Elements of Marks will enter into force, with respect to Croatia, on 9 May 2006.

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SYRIA – In the course of 2006: New Industrial Property Law expected

A new Trademark Law is expected to be promulgated in Syria in a few months. Normally, this new law was expected for the end of the year 2005 but certain legislative issues delayed the promulgation of this new law.

Please find below the main changes according to this law:

a separate application will have to be filed for each class of goods or services. For a multi-class trademark registered under the existing law same will be sub-divided upon renewal into separate applications according to the number of classes in respect of which it was originally registered.
applications filed will be published in a special trademark bulletin twice, the first time after acceptance for opposition purposes and the second time after registration.
oppositions may be filed against a published trademark within 90 days from publication before an Objections Committee. Appealing a Registrar’s decision regarding an application for registration will be carried out before the same Committee.
the courts shall recognize famous marks that are well known in Syria and abroad and shall ensure protection therefore even if the marks are not registered.
a special chamber/department shall be set up at the Court of First Instance for IP-related matters.
all oppositions will now be the heard at the courts of first instance and appeal only and not at the State Council as is the case now.
all applications for renewing trademarks that were registered under the existing law will be published for opposition purposes.
international applications filed under the Madrid Protocol and designating Syria will be treated as national applications and will hence be subject to the same examination and opposition procedures as national applications.
the holder of a trademark right shall be entitled to request the Customs authorities to monitor imports for infringing trademarks. Customs will have the authority to seize suspected goods and give the parties concerned ten days to bring a lawsuit.

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E-Mark is an online, worldwide trademark law information source covering over 200 dependent and independent jurisdictions and provided by our worldwide network of agents.

For more information on E-Mark: go to www.edital.com or contact your closest sales manager.

United States

Washington, DC
Questel•Orbit, Inc.
1725 Duke Street - Suite 625
Alexandria, VA 22314
Phone : +1 (703) 519-1820
Fax: +1 (703) 519-1821
help@questel.orbit.com

Chicago, IL
Edital Intellectual Property Network
19 S. LaSalle Street, Suite 601
Chicago, IL 60603
Phone: +1 (312) 857-7000
Fax: +1 (312) 857-7001
support.usa@edital.com

Europe

Belgium
Edital
Berkenlaan 1
B - 1831 Brussels
Phone: +32 (0)2 716 32 32
Fax: +32 (0)2 716 32 30
support.europe@edital.com

France
Edital France
4, rue des Colonnes
75082 Paris Cedex 02
Phone: +33 (0)1 53 43 85 53
Fax: +33 (0) 1 53 30 00 60
info.france@edital.com

If you do not wish to receive any future newsltetter from us, please reply to this address.


a		E-Mark Newsletter March 2006 This E-Mark Newsletter will quartely keep you up-to-date about worldwide trademark law. CHILE – December 2005: New Industrial Property Law LIBYA – December 2005: Application Filing Requirements modified BENELUX – January 2006: Opposition – all classes fully open JAMAICA – February 2006: Nice Agreement and Vienna Agreement CROATIA – May 2006: Vienna Agreement SYRIA – In the course of 2006: New Industrial Property Law expected CHILE – December 2005: New Industrial Property Law A new Industrial Property Law came into force in Chile on 1 December 2005, which harmonizes the Chilean legislation with the Agreements on Trade Related Aspects of Industrial Property Rights (TRIPS). This new law which modifies the present law N°19.039 on Industrial Property was published on 11 March 2005, in the Chilean Official Gazette. In general terms, the new Law: extends its protection to objects not recognized in the former code amends the protection statute for existing industrial privileges awards improved protection tools to owners affected by infringements to their rights expedites the procedure for the obtainment of an Industrial Privilege 1) Extension of the protection to: - geographic Indications and Designations of Origin - layout or topography schemes of integrated circuits - industrial Drawings - industrial Secrets 2) With respect to Trademarks, a new requisite is added to the distinctiveness requisite, which allows registration of marks that are not intrinsically distinctive, provided that they have acquired distinctiveness from their use in the national market. This reinforces the protection of the famous and well-known trademarks. 3) New civil actions are added entitling the owner of a breached Industrial Property right to claim: - the ceasing of acts that violate the protected right - compensation for damages - adoption of the measures needed to prevent any continuance of the infraction - publication of the court decision at the defendant’s expense 4) The amendments marginally raise the required fees and tend towards increased expeditiousness of the same, essentially through the limitation of the intermediate terms applicable to procedural stages. The preliminary examination carried by the Trademark Examiner is eliminated and replaced by a formal examination.		a
		Top LIBYA – December 2005: Application Filing Requirements modified As from 20 December 2005, the requirements for filing trademark applications in Libya have been changed. A certified copy of the certificate of registration in the home country or any foreign country is no longer required for the registration of trademarks in Libya. The requirements for filing a trademark application in Libya are: 1. Power of Attorney, legalized up to a Libyan Consul. 2. Extract from the Commercial Register or Certificate of Incorporation, likewise legalized.
		Top BENELUX – January 2006: Opposition – all classes fully open Since 1 January 2006, all classes are fully open for opposition in regards to trademarks introduced after this date. As from this date, all applications are not subject anymore to the principle of the phased opening of the classes. For all trademarks filed the 1st of January 2004, the entry into force of the opposition procedure was progressive by reference to the classes of the Nice Agreement claimed in the trademark application. For all trademarks filed before this date, the time table was as follows: as the trademarks as 1 January 2004: classes 2-20 and 27 as from 1 January 2005: classes 6, 8, 13, 15, 17, 19, 21 as from 1 January 2006: all classes It is pointed out that opposition was not restricted to the "open" classes but to trademark applications in one of these classes.
		Top JAMAICA – February 2006: Nice Agreement and Vienna Agreement The Nice Agreement for the International Classification of Goods and Services and The Vienna Agreement for the International Classification of the Figurative Elements of Marks entered into force, with respect to Jamaica, on 7 February 2006.
		Top CROATIA – May 2006: Vienna Agreement The Vienna Agreement for the International Classification of the Figurative Elements of Marks will enter into force, with respect to Croatia, on 9 May 2006.
		Top SYRIA – In the course of 2006: New Industrial Property Law expected A new Trademark Law is expected to be promulgated in Syria in a few months. Normally, this new law was expected for the end of the year 2005 but certain legislative issues delayed the promulgation of this new law. Please find below the main changes according to this law: a separate application will have to be filed for each class of goods or services. For a multi-class trademark registered under the existing law same will be sub-divided upon renewal into separate applications according to the number of classes in respect of which it was originally registered. applications filed will be published in a special trademark bulletin twice, the first time after acceptance for opposition purposes and the second time after registration. oppositions may be filed against a published trademark within 90 days from publication before an Objections Committee. Appealing a Registrar’s decision regarding an application for registration will be carried out before the same Committee. the courts shall recognize famous marks that are well known in Syria and abroad and shall ensure protection therefore even if the marks are not registered. a special chamber/department shall be set up at the Court of First Instance for IP-related matters. all oppositions will now be the heard at the courts of first instance and appeal only and not at the State Council as is the case now. all applications for renewing trademarks that were registered under the existing law will be published for opposition purposes. international applications filed under the Madrid Protocol and designating Syria will be treated as national applications and will hence be subject to the same examination and opposition procedures as national applications. the holder of a trademark right shall be entitled to request the Customs authorities to monitor imports for infringing trademarks. Customs will have the authority to seize suspected goods and give the parties concerned ten days to bring a lawsuit.
		Top E-Mark is an online, worldwide trademark law information source covering over 200 dependent and independent jurisdictions and provided by our worldwide network of agents. *For more information on E-Mark: go to www.edital.com or contact your closest sales manager.*
		United States Washington, DC Questel•Orbit, Inc. 1725 Duke Street - Suite 625 Alexandria, VA 22314 Phone : +1 (703) 519-1820 Fax: +1 (703) 519-1821 help@questel.orbit.com Chicago, IL Edital Intellectual Property Network 19 S. LaSalle Street, Suite 601 Chicago, IL 60603 Phone: +1 (312) 857-7000 Fax: +1 (312) 857-7001 support.usa@edital.com	Europe Belgium Edital Berkenlaan 1 B - 1831 Brussels Phone: +32 (0)2 716 32 32 Fax: +32 (0)2 716 32 30 support.europe@edital.com France Edital France 4, rue des Colonnes 75082 Paris Cedex 02 Phone: +33 (0)1 53 43 85 53 Fax: +33 (0) 1 53 30 00 60 info.france@edital.com
	If you do not wish to receive any future newsltetter from us, please reply to this address.