International Trademark Issues: Winter 2011

By Ann Ford on February 15, 2011

One of the advantages to being an international firm is that our expertise and experience is global. We are delighted and eager to share our European, Asian, and African colleagues’ recently published Winter Design and Trademark Newsletter.

Here are just some of the important alerts relevant to our clients worldwide.

Trademark and design

newsleTTer

South Africa: New labelling law on foodstuffs may affect trademark application or registration

A new regulation relating to the labelling and advertising of foodstuffs, made under the Foodstuffs, Cosmetics and Disinfectants Act (Act No. 54 of 1972), will come into effect on March 1, 2011. For instance, it provides that the use of certain words, such as, among others, “fresh,” “natural,” “nature’s,” “pure,” “real,” “authentic,” “original,” “genuine,” “finest,” “best” and “traditional,” will be permitted only if compliant with the criteria stipulated in Guideline 7.

Therefore, trademarks including laudatory or descriptive words such as those mentioned above, must comply with the regulations or the provisions of Guideline 7, otherwise such trademarks may be vulnerable to opposition on the basis of, for example, Section 10(12) of the Trade Marks Act (Act No. 194, Dec. 22, 1993), or, in the case of a registered trademark, vulnerable to removal on the basis that it is an entry wrongly remaining on the Trade Marks Register.

South Africa: New labelling law on foodstuffs may

affect trademark application or registration

A new regulation relating to the labelling and advertising

of foodstuffs, made under the Foodstuffs, Cosmetics

and Disinfectants Act (Act No. 54 of 1972), will come

into effect on March 1, 2011. For instance, it provides

that the use of certain words, such as, among others,

“fresh,” “natural,” “nature’s,” “pure,” “real,” “authentic,”

“original,” “genuine,” “finest,” “best” and “traditional,”

will be permitted only if compliant with the criteria

stipulated in Guideline 7.

Therefore, trademarks including laudatory or descriptive

words such as those mentioned above, must comply with

the regulations or the provisions of Guideline 7, otherwise

such trademarks may be vulnerable to opposition on the

basis of, for example, Section 10(12) of the Trade Marks

Act (Act No. 194, Dec. 22, 1993), or, in the case of a

registered trademark, vulnerable to removal on the basis

that it is an entry wrongly remaining on the Trade Marks

India: Restoration of lapsed trademarks

The deadline for proprietors whose marks were unfairly removed from the Register of Trademarks on account of non-payment of renewal fees to file a petition for restoration of their trademarks, has been extended to March 31, 2011.

Montenegro: New law imposing to request entrance of trademarks registered before the Serbian IPO into Montenegrin IPO

The new Montenegrin Trademark Law, adopted on November 30, 2010, gives a 12-month deadline to owners of trademarks registered before the Serbian office to request entrance of their rights into the Montenegrin trademarks register. It goes back on a previous decree which held a continuous validity of these trademarks on the territory of Montenegro.The new Law also shortens the registration process and achieves full compliance with EU regulations by limiting the examination process to absolute grounds only and also by introducing opposition proceedings.