This is intended for experienced IP practitioners. If you would like any more information on any of the following subjects please contact us.
Surnames now registerable as Trade Marks
Trade marks including or consisting of surnames are now registrable without evidence of use if they appear no more than 100 times in the Hong Kong Telephone Directory. In the past, the Hong Kong Trade Marks Registry raised registrability objections against trade marks on the basis of entries in foreign telephone directories. Under the Registry Circular No. 11 of 1996 issued on 13th December 1996, this practice has now been abolished.
The new practice will apply to all trade mark applications filed on or after 1st January 1995 which have not yet been accepted for advertisement. In practice, all but the most common of Western surnames will now be registrable.
This change in practice will be of particular interest to:-
A. Owners of trade marks which have been totally unregistrable up till now due to surname significance.
B. Owners of existing trade mark registrations which include surnames in which monopoly rights in the use of the surname have been disclaimed.
C. Owners of trade marks consisting of surnames which have been registered upon evidence of use, but for a limited specification of goods (if a trade mark is registered by filing evidence of use the specification of goods is restricted to the particular goods for which a minimum level of use has been proven).
D. Companies whose trading names consist of or include a surname which was not previously registrable.
Three-Dimensional Marks now Registrable
Shapes of products and their packaging are now registrable as trade marks in Hong Kong. Under amendments to the Hong Kong Trade Marks Ordinance which came into force on 20th December 1996, the definition of a mark now includes any sign capable of being represented graphically including in particular distinctive shapes of goods or packaging.
The new practice will be of particular interest to:-
A. Cosmetics and perfume manufacturers, who may now register the distinctive shapes of their packaging.
B. Manufacturers of pharmaceutical products, who may now register the distinctive shapes of pills or capsules, embossed lettering or unusual textures on pills.
C. Manufacturers of footwear, who may now more easily register the shapes of footwear or sole patterns and other decorative features.
D. Manufacturers of food products, who may now register the shapes of biscuits, cheeses, confectionery or distinctive container shapes or decoration or texture on packaging.
E. Manufacturers of alcoholic and non-alcoholic beverages, who may now register bottle shapes, textures on bottles, labels on bottles, etc.
For further information, please contact the Intellectual Property Group at our Hong Kong Office.
Source and copyright 1997 DEACONS GRAHAM & JAMES.
Reconciling conficting interpretations of amendment to Rules of Practice in Trade Mark cases.
In a move to arrest the confusion in the interpretation of the amended Rule 9 of the rules of Practice in Trademark Cases, the Board of Directors of the Intellectual Property Association of the Philippines (IPAP), at its meeting of January 23, 1997, resolved to repair to the director of the bureau of Patents Trademarks & Technology Transfer for a formal opinion on whether or not the amendatory provision effectively dispensed with the authentication requirement in the filing of new trademark applications.
The confusion stemmed from incongruent interpretations accorded by examiners to the amended Rule 9 which provides that Unless required by the provisions of Republic Act No. 166, no attestation, notarisation, authentication, legalisation, or other certification of any signature or other means of self-identification referred to (in the preceding paragraphs), will be needed.
IP practitioners have encountered delays in the processing of trademark applications in as much as certain examiners have insisted on the authentification of filing documents, while others have dispensed with the same. The Director is expected to render an immediate ruling on request.
Source and copyright 1997 POBLADOR AZADA AND BUCOY MANILA.