trade marks explained

The Intellectual Property Office based in Sana’a, Yemen has announced that trade mark rights owned by US and British companies are now invalid, and that they will no longer accept new applications. Furthermore, ongoing civil unrest has led to a de facto two-state country. To obtain trade mark, design and patent protection across the whole country, it is necessary to file applications in both Sana’a and Adan Registries.

Some new trade mark regulations came into force in Uganda on 2 February 2024 which, inter alia, have introduced the requirement that trade marks and notices be published in the Uganda Gazette, as was the case pre-2021.

The Government of Jersey has clarified its position on whether EU trade marks automatically extend to Jersey under current legislation, confirming that no such coverage has existed since April 2009. Trade mark owners wishing to obtain protection in Jersey should re-register UK national trade marks, or rely on the automatic coverage granted to IR(UK) designations.

We summarise here some recent amendments to the Trade Mark Regulations in Lebanon, which have brought about changes to the term of protection and some of the official fees associated with trade marks.

The Trade Marks Act 2023 and Trade Marks and Service Marks Regulations Amendment and Validation Act 2023 received formal approval in Bermuda on 13 October 2023.

Our Senior Trade Mark attorney, Martin Chinnery, will shortly be retiring. Whilst this is sad news for all of us here at Lysaght, it marks the start of an exciting new chapter for Martin.

Find out more about the conferences we are attending this year.

We are pleased to announce the Trademarks Office in Sudan has resumed operations after a 10-month hiatus. Read here for more information.

At long last, the implementing regulations for the 2010 Trade Mark Act have been brought into force in Libya. These provide some much needed clarity to the practical considerations of trade mark applications, as well as bringing an increase in the official fees

Jersey is proposing a shift from a secondary trade mark framework dependent on the UK, by implementing an independent registration system and accession to the Madrid Protocol. A recent consultation invited stakeholders for comment on the proposed changes, to which we duly obliged. Read more in our article.

From 1 January 2024, it will be necessary to record an address for service in the UK, the Channel Islands or Gibraltar against comparable rights when they are subject to challenge by third parties.

Ahead of the commencement date of Fiji’s new IP laws, the IPO has recently enacted a change in practice regarding the filing of second applications, and acceded to the Paris Convention - our article has full details.

Tim Noel and Richard Stilwell represented Lysaght at INTA 2023 in Singapore. This gave the pair the opportunity to meet current and new clients and agents within the impressive surroundings of the city. It was a welcome return to face-to-face meetings as well as networking events throughout the busy week.

Richard Stilwell will be representing Lysaght at FICPI’s 21st Open Forum, being held in London this October. This conference is a great opportunity to take part in high-quality working sessions, as well as meet up with like-minded individuals in private practice, across all forms of IP.

We are six months on from the deadline for lodging Anti-Counterfeiting Recordals (“ACAs”) with the Kenyan IPO. Our articles takes a deep dive into what progress has been made, and what challenges have arisen in this process.

The Ministry responsible for IP in South Sudan has just announced that it is now allowing the reservation of trade marks in advance of the long-awaited enactment of the new law. Read our full article for further details.

There have been further developments regarding the Trade Mark Office in Myanmar; please refer to the details in our article.

The Libyan Trade Mark Office (TMO) has officially resumed its full activities after a 6-month suspension.

The Burundi IP Law came in to force on 28 July 2009, and all trade marks registered before the enactment of the law were set to be renewed by 28 July 2019. The Burundi Industrial Property Office (BIPO) has now issued a notice setting a new deadline for the renewal of trade marks registered prior to 28 July 2009.  A Notice dated 27 February 2023 has been issued by BIPO and this extends the deadline for the renewal to 01 January 2025 for all trade marks which were registered prior to 28 July 2009. Read our full article for further details.

Mauritius has joined the Hague System for the International Registration of Industrial Designs, becoming the 95th member state. The Hague System will enter into force in Mauritius on 6th May 2023.

On 14th July 2022, the Republic of Cabo Verde (commonly known as Cape Verde) deposited instruments of accession to the Lusaka Agreement, Banjul and Harare Protocols of ARIPO. Consequently, Cape Verde has become the 22nd contracting state to the ARIPO Agreement.

A new IP law, No. 21.355, entered into force on 9th May 2022, in which various articles of the current IP Law No. 19.039 dated 1991 and its subsequent iterations were amended. This blog details the most significant changes introduced for trademarks, patents and industrial designs.

Following the recent commencement of a recordation process for IP rights with the Kenyan Anti-Counterfeiting Authority (ACA), a deadline of 01 July 2022 has now been set for rights holders to have completed this process. Please review our article for further information.

It has just been announced that the new OAPI IP Laws concerning Trade Marks, Designs, Utility Models, and Geographical Indications, will enter into force on 1 January 2022. Please review our article for further information.

Kiribati deposited its instrument of accession to the Paris Convention for the Protection of Industrial Property on 5 November 2021. Please review our article for further information.

Fiji has passed into law the Trade Marks Act 2021, the Patents Act 2021, and the Designs Act 2021. Please review our article for further information.

The Nauru Trade Marks Act came into force in November 2020. However, due to an initial lack of official forms, or a procedure for payment of official fees, it has not been possible to file trade mark applications until now.

At the beginning of 2020 we reported that the Somali Ministry of Commerce and Industry had once again started accepting trade mark applications for the first time since the civil war in 1991. We understand that these applications are now to be cleared via a pre-filing search, examined on absolute grounds and published for opposition purposes prior to grant. It is no longer recommended, or necessary, to publish cautionary notices. Please review our article, for further information.

With effect from 1st January 2021, the UK’s membership of various WIPO-administered treaties, including the Paris Convention, the Berne Convention and the PCT, was extended to include the territory of Gibraltar.

The Gibraltar authorities have enacted a revision of the Trade Marks Act, which entered into force on 1 January 2021. Our full article contains further information.