Brainscape's Knowledge GenomeTM

Browse over 1 million classes created by top students, professors, publishers, and experts.


See full index

CITMA > Post Registration, Renewals And Maintance > Flashcards

Post Registration, Renewals And Maintance Flashcards

1
Q

Explain triple-identity” criteria with respect to making seniority claims against EU trade marks

A
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
2
Q

What is a security interest?

A

An agreement between two parties. These two parties are usually a creditor and an IP right owner.

The security interest agreement outlines the terms and conditions under which a creditor with make a loan to an IP right owner in which IP rights are used as collateral (security)

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
3
Q

Why is security interests useful to TM owners?

A

A TM owner may want to secure funds to expand their business.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
4
Q

Why do we record a security intrest against a TM?

A

It serves to notify third parties that there is a financial obligation to a creditor which restricts the TM owners rights

A TM owner cannot usually assign, sell or abandon a trade mark right which is included in a security interest.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
5
Q

What happens if you do not record a security interest against a trade mark?

A

If unrecorded a security intrest will not be effective if someone were to obtain a conflicting right without any knowledge of it and the security intrest would not be enforceable. A creditor will usually want to protect themselves by recording a security intrest on the register as soon as possible.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
6
Q

What forms are used to record security interests and the UKIPI and WIPO?

A

UKIPO - TM24 - record £50
UKIPO - TM24C- cancel £50

WIPO - MM19 or letter no fee
WIPO - letter - cancel no fee

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
7
Q

How long do UK TM registrations last?

A

10 years from the filing date and they can be renewed for further periods of 10 years indefinitely. 6 month grace period of deadline is missed. And can renew 6 months early. You have to pay an extra £50 if you renew late.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
8
Q

What are the fees for a UK renewal?

A

£200 for first class and £50 for each extra class.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
9
Q

What is restoration?

A

If renewal is not applied for in the grace period then the mark is removed from the register. There is an additional 6 months (12 months from the renewal date) in which to apply for restoration. Done on form TM13 paper form only
Must provide a statement fully explaining why renewal did not take place in time the fees are:
£100 restoration
£200 renewal
£50 each extra mark

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
10
Q

What is a merger?

A

You can merge UK TMs together there is no fee. Merger should be requested at least one month before renewal is due.
Done on form TM17

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
11
Q

What are the requirements of a merger?

A
  • all TMs must be registered
  • the trade marks must be identical
  • must all have the same filing date
    -must all be the same type of mark
    -none of the TMs can be a base trade mark for an international application that is within the five year period.
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
12
Q

What are the benefits of merging?

A
  • reduction in overall renewal fees
  • reduced administration
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
13
Q

What are the renewal fees for EU marks?

A

850 for one class
50 for second class
150 for each additional class
Late renewal fees carry a surcharge calculated at 25% of the regular renewal fees

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
14
Q

Is restoration available for EU TMs?

A

No, but restitutio can be filed in writing for a fee of 200 euros.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
15
Q

How often are international registrations renewed?

A

Every 10 years. Filed directly with WIPO form M11. Late renewals carry a surcharge calculated at 50% of the basic renewal fees. Can drop designated confides at renewal. Restoration is not available for IR

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
16
Q

When must you file a DOU and / or excusable no use under section 8 for US?

A

Between the 5/6 years after the registration date for an additional fee the owner may file the declaration within the six month grace period.

Then again between the 9/10 years after the registration date along with renewal application and every 9/10 year period thereafter

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
17
Q

What is a section 15 US?

A

If the registration meets the requirements of section 15 of the TMs act owners may file an optional declaration of incontestability under section 15 to enhance their rights.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
18
Q

What must owners of US designations under international registrations file?

A

Declaration of use and or excusable non use under section 71 filed between 5/6 years of the date the USPTO issued the certificate of registration (the local registration date)

Again section 71 between 9/10 year and every 9/10 year thereafter if the registration meets the requirements of section 15 they may additionally file an optional declaration of incontestability to enhance their rights.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
19
Q

What is a declaration of incontestability?

A

A signed statement that the owner claims incontestable rights in a trade mark and continuous use of the mark for 5 years. Once a trademark becomes incontestable various aspects of the mark cannot be challenged by third parties

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
20
Q

What do you need to provide for DOU in US?

A
  • a statement that the TM is in use in commerce
    -a list of goods and services
  • one specimen for example tags/labels or advertisements
How well did you know this?
1
Not at all
2
3
4
5
Perfectly
21
Q

What is reclassification?

A

The process of changing from an old classification system to the international classification system. This is often carried out at renewal.

How well did you know this?
1
Not at all
2
3
4
5
Perfectly
22
Q

Why is it a good idea to reclassify?

A

So that your own registration may be more easily picked up by third parties in searches or by an examiner during examination.

23
Q

What is replacement?

A

Relates to the Madrid system ( it is like seniority to EU marks) if you have an older national registration in a country and then you designate the same country in an international reg, the international designation will replace the national reg.

It requires triple identity
- same mark
- same owner
- same goods/services

This technically happens automatically unlike seniority.

24
Q

Why does replacement of international regulations happen?

A

Avoid duplication of protection

25
Q

What is the risks of replacement?

A

Replacement does not allow a designation within an IR to be backdated to the same date as the national registration

26
Q

Where is replacement requested?

A

At each relevant national or regional office making it more expensive as you would need to use overseas agents.

27
Q

What form is used for replacement at UKIPO?

A

Form TM28 no fee

28
Q

Why should titles be updated for IP?

A
  • deadlines may be missed if the address for service is not updated
    -TM searching can be more accurate if registers are correct
  • you will not be able to take actions against any possible infringement if ownership of the mark is not up to date.
  • some overseas countries charge a fine if file updates are not recorded within a certain timescale.
29
Q

What is an assignment?

A

Formal transfer of ownership of the rights in a trade mark from the registered proprietor to someone else.

30
Q

What is an assignor and an assignee?

A

Assignor- the party who currently owns the rights
Assignee- the new owner

31
Q

What is required for an assignment?

A
  • name and address details of the assignor
    -name and address of the assignee
  • details of the marks being assigned
    -the sun being paid
    Date of assignment
    -signatures of authorised signatories of both parties.

Recommend time frame for recordal is 6 months of the efffective date on the deed of assignment.

32
Q

What is a company merger?

A

Can require both CON and assignment

33
Q

What is a TM16P

A

partial assignment, also known as splitting a mark. Not possible to split a series mark. £50 fee

34
Q

What form is used to correct the owners name or address due to a clerical error?

A

TM26(R)

35
Q

What form is used to file an assignment at WIPO?

A

MM5, 177 per registration

36
Q

What form is used to request CON at WIPO?

A

MM9 or online through portal 150 regardless of how many marks

37
Q

What form is used to appoint rep at WIPO?

A

MM12 - needs to be signed by the holder no fee

38
Q

Can EU trademarks be partially assigned?

A

No

39
Q

What is goodwill?

A

Recognition that a trade mark has with consumers and the extra value this represents. Customers will want to buy a certain product because they recognise that and value the brand name.

40
Q

What is a public notary?

A

A qualified lawyer who is admitted to certify documents for use abroad.

41
Q

What will a notary do?

A
  • witness and confirm signatures
  • confirm the identity of an individual
  • confirm details of incorporated companies
  • confirm the power of an individual to sign for a company. In other words AUTHENTICATE
42
Q

What is apostille?

A

This involves sending the documents to legalisation office at the foreign, commonwealth and development office who authenticate the notary’s signature and seal.

43
Q

Name a country where POA requires apistille legalisation

A

Argentina
Ecuador

44
Q

What is consular legislation?

A

Refers to legalisation carried out at consulate

45
Q

What is seniority?

A

Before the EUTM came into existence to obtain protection across the EU it was necessary to file national applications. They can consolidate their rights under and EUTM and backdate their claims in a specific country.

46
Q

What are the benifits of seniority?

A

Save costs at renewal as not inciting separate renewal costs for individual countries

47
Q

When can seniority be claimed?

A
  • at the time of filing
  • within 2 months of filing an EUTM or at any time once the EUTM is registered.
48
Q

What is triple identity?

A
  1. It is used to describe the requirements for seniority.

1.Identical mark - marks must be the same
2.identical proprietor - must be the same for the earlier national registration and the EUTM.
3.identical specification - goods/services must be the same however national registrations can be wonder or narrower that the EUTM but if it is wider seniority can only be claimed for the goods and services falling within the scope of the EUTM.

The earlier right must be registered cannot be an application, lapsed or be in the grace period for renewal.

49
Q

What needs to be included in on a seniority request?

A

-eu member state of the earlier mark
- filing date of the relevant registration
-the number of the relevant registration
- the goods/services fir which the mark is registered

50
Q

Is there an official fee for seniority claim?

A

No fee

51
Q

What types of fees could be due in the Cayman Islands?

A

Annuities or annual maintenance fees. To keep a registration in force. Marks cannot be renewed assigned or enforced until they are paid.

52
Q

What types of fees could be due in Honduras?

A

Rehabilitation taxes, if paid then an index mark cannot be cancelled on the grounds of non-use. They are optional. Non use period is 3 years so the fees can be paid annually after the 3 years

53
Q

What fees may be sue in Cabo Verde and Mozambique?

A

Declarations of intention to use. Sue 5 years after registration and each five years thereafter

54
Q

What countries are annual maintenance fees (or annuities) due in order to maintain trade mark registrations?

A

Cayman Islands
Honduras
Nauru
Turks
Caicos islands
Vanuatu

CITMA (18 decks)

Brainscape helps you reach your goals faster, through stronger study habits.
© 2024 Bold Learning Solutions. Terms and Conditions