Week’s news headlines – Jan. 13th 2017

The web of deceit: how we can combat online IP crime
There are various avenues for brand owners to tackle the issue of online fraud in an attempt to make national and international legal regulation of internet  commerce more effective, as John Anderson of the Global Anti-Counterfeiting Groups Network describes.

Asian brokers made a patent market breakthrough in 2016, signalling future growth potential
The most recent issue of IAM features our annual appraisal of the past year’s brokered patent market, put together by Kent Richardson, Erik Oliver and Michael Costa of ROL Group. Subscribers can read the full article here.

Non-traditional trademarks: more hurdles to jump
There are at least three barriers to obtaining non-traditional trademarks in the EU, despite a revised definition of those marks, as Lenneke van Gaal of Ploum Lodder Princen explains.

International report – Patronymic trademarks in the fashion industry: what’s in a name?
In the fashion industry it is common to use and register the name of a designer as a trademark. But what happens when a designer assigns his or her company’s IP assets, including trademarks associated with his or her own name, to a third party, and then continues using the name in new trademarks?

The pitfalls of second medical use patents
It appears necessary and perhaps inevitable that further guidance from the UK Court of Appeal will be provided on the issue of second medical use patents, following the high-profile dispute between Warner-Lambert and Actavis. Geoff Hussey and Christopher Burnett of AA Thornton & Co report.

Patent litigation falls dramatically in 2016 as NPEs shift their focus away from the richest companies
That is the lowest volume of new cases since 2011 when the America Invents Act (AIA) came into effect and a change in joinder rules led to an immediate increase in the number of suits. According to Unified, disputes at the Patent Trial and Appeal Board (PTAB) saw a slight drop down to 1,723 from 1,793, although last year was still the second busiest on record.

Chinese companies to pay Disney $194,000 in copyright dispute
Two China-based companies have been ordered to pay Disney and Pixar RMB 1.35 million ($194,000) in a copyright infringement dispute.

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Brazil adopts 11th edition of Nice Classification

The turn of the year brought not only the possibility of new beginnings, but also a new edition of the International (Nice) Classification of Goods and Services (NCL), which became effective on January 1, 2017.

The Classification – used to categorize goods and services for the purposes of the registration of trademarks – was established in 1957 by means of the Nice Agreement and was adopted by the Brazilian Patent and Trademark Office (BPTO), as well as by another 150 Trademark Offices from various countries around the world.

The Nice Classification is continuously revised in order for it to always be updated. A new version of each edition has been published annually since 2013.

Among the modifications contained in the new Classification, we highlight the following:

• Revision of the headings of classes 3, 6, 10, 14, 16, 17, 18, 20, 21, 22, 24, 26, 28, 31 and 45;
• Revision of the Explanatory Notes for classes 5, 11, 29, 30, 35, 42 and 44; and
• Addition of 334 new terms, such as body composition monitors (Class 10), and herbal extracts for medical purposes (Class 5).

At the international level, the 11th edition of the Nice Classification will be applied by the World Intellectual Property Organization (WIPO) to all applications for international registration received by an Office of Origin. WIPO also clarifies that it will not reclassify the list of goods and services under international registrations that are subject to renewal after December 31, 2016. Finally, it states that it will include the abbreviation “NCL(11-2017)” on registration certificates, official publications and notifications sent to the countries which are parties to the agreement.

In Brazil, the BPTO recently issued the following statement: “The Trademarks, Industrial Designs and Geographical Indications Board clarifies that it is adapting its computerized systems for filing trademark applications to the 11th edition of the Nice Classification – NCL ( 11). As soon as the new edition comes into force, updated information will be made available to users on the BPTO’s website”.

The new edition is available on the WIPO’s website.

For further information, please feel free to contact us at diblasi@diblasi.com.br.

Brazil adopts 11th edition of Nice Classification – click to read it in PDF

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