Author: PGA

PGA Intellectual Property Newsletter – 13/07/2020

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Infringement of IP and internet provider liability

The Swedish Court of Appeal condemned the provider Telia Company for having favoured certain internet sites in the infringement of intellectual property. The ruling was issued following an action taken in 2018 by Disney, Universal Studios, Warner Bros. and several other multinational companies. In particular, the Swedish Court had already intervened in the past by issuing a so-called dynamic injunction against Telia Company. The provider was ordered to block access to The Pirate Bay, Dreamfilm, Nyafilmer, Fmovies and many other sites for violation of section 53B of the Swedish Act on Copyright in Literary and Artistic Works. The applicants submit, therefore, that Telia, by providing internet access to its customers and also allowing access to those sites, cooperated in the infringements found.
The decision confirms the approach adopted by many countries and the recent growth in the use of dynamic injunctions to paralyze IP infringements.


The use of patronymic as a company name

In a recent ruling, the Italian Supreme Court of Cassation clarified the scope of Article 21, paragraph 1, letter a), of the Italian IP Code, regarding the use of patronymics in economic activity. This is the final event in a complex dispute brought by Salini Costruzioni S.p.a. against Salini LocateIli (now ICS Grandi Lavori S.p.a.), Salini Global Service S.r.l. and Claudio Salini. In particular, Salini Costruzioni acted in order, among other things, to prevent its counterparties from using the patronymic “Salini” as a company name.

On the basis of consolidated jurisprudence on the matter, the Italian Supreme Court has ruled that where two companies with share capital have the same name, the priority must be given to registration in the company register. On the contrary, neither the mere past use of the same name by another company, which has long ceased to operate and which was owned by family members of the partner of one of the companies registered second, nor the fact that the name of the latter coincides with the surname of one of those partners is relevant.


The registrability of commercial slogans

In a recent judgment (T-156/19, 13/05/2020, Koenig & Bauer), the General Court (EU) refused registration as a Community trade mark of the English language idiomatic expression ‘We’re on it’ to distinguish goods and services in classes 1 to 4, 7, 9, 11, 16 and 35 to 42.
According to the decision, in particular, the expression “We’re on it” would convey the idea that the applicant “will take care of it” or that it is worthy of trust or confidence. However, according to the Court, the message in question would be applicable to any type of product or service. The sign would therefore lack the necessary distinctive character.
With regard to the registration of slogans, reference is made to the famous judgment of the Court of Justice in the “AUDI” case. On that occasion, the CJEU ruled that the distinctive function of the mark may be compatible with that of the slogan provided that it is assessed on the basis, on the one hand, of the nature of the goods or services for which registration is sought and, on the other hand, of the perception of the relevant public.

PGA Intellectual Property Newsletter – 06/07/2020

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The trademark “booking.com” cannot be considered generic

A trademark consisting of a generic term for the class of goods or services offered alongside the “.com” portion is not necessarily generic. On the contrary, if consumers do not perceive the mark as generic for the class of goods or services to which it refers, the mark can be considered distinctive and therefore registrable.
In this sense, the Supreme Court of the United States of America, in its ruling of 30 June 2020, ruled on the trademark “Booking.com” in the United States Patent and Trademark Office v. Booking.com.

As is well known, a trademark can be generic, descriptive, suggestive, arbitrary or imaginative. Suggestive, arbitrary and imaginative trademarks are inherently distinctive. Descriptive trademarks can only be registered if they have “acquired distinctiveness” in the assessment of the consumer public. On the contrary, generic marks do not qualify for registration because any economic operator may use the generic term of the mark itself to refer to the designated good or service without being the exclusive owner of the generic distinctive sign.

On this basis, the US Supreme Court has specified that a term is defined as generic when, taken as a whole, it indicates to consumers the class of goods or services offered under the mark. Since consumers do not perceive “booking.com” as the class of online travel booking services, “Booking.com” is normally not a generic mark. It is the consumer’s impression of the brand that determines whether the brand is generic or not. Consequently, the Court held that trademarks consisting of a generic term and “.com” are not necessarily generic.


The “Trentino apples” become PGIs

With the approval by the European Commission of the relevant implementing regulation, “Mele del Trentino” are officially recognised as a protected geographical indication.
In particular, with Regulation (EU) no. 2020/890 of 23 June 2020, published in the Official Journal of the European Union no. L 206 of 30 June 2020, the name “Mele del Trentino” was entered in the European Register of Protected Designations of Origin and Protected Geographical Indications, as a product in class 1.6. Fruit, vegetables and cereals, fresh or processed, listed in Annex XI to Commission Implementing Regulation (EU) No 668/2014.


Protection of the distinctive signs of political parties

Outside the business activity, the protection of the distinctive signs against the risk of confusion aims, not to guarantee economic interests, but to protect that set of values and aims pursued by the group through its participation in collective life. In relation to political parties, in particular, the protection of identity, summarized in the name and distinctive signs, finds its constitutional basis in Articles 2, 21 and 49 of the Constitution and expresses the need to avoid, precisely in relation to public debate, confusion, as regards the elements that characterize them as autonomous centers of expression of ideas and actions.

In this sense, the Italian Supreme Court ruled in its decision no. 11635, filed on 16 June 2020, by which the Court upheld the appeal brought by the Associazione Alleanza Nazionale and the Fondazione Alleanza Nazionale against the association Movimento Sociale Italiano – Destra Nazionale – Nuovo MSI.


Cyprus: new trademark law approved

On 05.06.2020 the Republic of Cyprus adopted the new Trademark Law, published on 17.06.2020. The European Intellectual Property Office (EUIPO), within the framework of the European Cooperation Programme (ECP2), has actively participated in the achievement of this goal, offering legal assistance throughout the process of drafting the new text.

Among the topics addressed in the new Cypriot Intellectual Property Act are included:
– the transposition of Directive (EU) No 2015/2436;
– the introduction of the multi-class system;
– the discontinuation of the need for the power of attorney document;
– new paper applications;
– fees.
Cyprus’ new Trademark Law has simplified the whole application and registration procedure. Deadlines have been introduced for the completion of opposition, cancellation and revocation procedures and putting an end to excessively lengthy processes.

PGA Intellectual Property Newsletter – 22/06/2020

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Influencer marketing and unlawful use of trademarks

By judgment of February 4, 2020, the Court of Genoa faced the issue of a well-known fashion company and its designer who had repeatedly published on their respective Instagram profiles contents in which footwear and clothing products were combined with luxury cars (with the related intellectual property rights in the foreground).

The Court found that the positioning of the products suggested the existence of a (non-existent) relationship between the clothing brand and the car manufacturer. All of which led to unlawful use of the latter’s trade mark.
This is one of the first social applications of the new Article 20(1)(c) of the Italian intellectual property code. The provision now provides that it is unlawful to use a well-known trademark also for purposes other than that of distinguishing goods and services where without due cause it takes unfair advantage of the distinctive character or repute of the trademark.

Although the Court of First Instance did not consider the use of the trademark to be distinctive, it held that there is a commercial use which, in the context of the activities of influencers, is lawful only if authorised by the proprietor of the distinctive sign or in cases where the images displayed may communicate – to the public – a meaning other than advertising and commercial meaning, that is to say, they are descriptive of scenes from the life of the influencer or of third parties. Such lawfulness would derive from the obvious consideration that the publication of scenes of everyday life imply the inevitable display of the distinctive signs of the products normally used by the represented subject to perform the published action.


Unified Patent Court: AIPPI in favour of Milan’s nomination

The International Association for the Protection of Intellectual Property has expressed its support for the nomination of Milan to host a Division of the Unified Patent Court.
In the document released, AIPPI, after recalling that Italy is among the signatories of the agreement establishing the Unified Patent Court signed on February 27, 2013 and subsequently ratified following the entry into force of Law no. 214 of November 3, 2016, stresses that this agreement has not yet entered into force. Germany, in fact, the country with the highest number of European patents in the year prior to its signature, has not yet validly ratified it.
The instrument of ratification has in fact been declared null and void by the German Constitutional Court due to defects in the adoption procedure.


Preventing new arguments before the EU Court: the Court of Justice ruling

The CJEU has ruled on the range of the review to be carried out by the EU General Court on the decisions of the Boards of Appeal of EUIPO in the EU trademark registration proceedings. The specific issue raised was examined by the CJEU in its judgment of June 18, 2020 (case C 702/18 P).
In the case at hand, the EU General Court had found the arguments of a party to opposition proceedings inadmissible. These elements were related to the allegedly weak distinctive character of the earlier trademark, not raised before the Board of Appeal. The CJEU overturned the judgment of the General Court, finding an error of law in its decision of inadmissibility.

In particular, according to the Court:
– the elements which may be validly submitted for assessment by the General Court depend on the subject-matter of the dispute before the Board of Appeal;
– the Board is nevertheless required to rule on all questions which, in the light of the parties’ arguments, are necessary for a proper decision;
– the assessment of the inherent distinctiveness of the earlier mark constitutes a matter of law necessary to ensure a correct decision, so that the bodies of EUIPO are obliged to examine that question, if necessary of their own motion.


Is Brompton’s bike eligible for protection under copyright law?

The Court of Justice of the European Union has ruled on the request for a preliminary ruling concerning the well-known folding bike model, called Brompton.
The decision is set out in Judgment C 833/18 of June 11, 2020, in which the creator of the folding system and a Korean company, which markets similar bicycles, are opposed.
The question which led the referring court to refer the matter to the Court of Justice is whether a bicycle, whose folding system was protected by a patent which has now expired, can be classified as a work protected by copyright.
According to the ECJ, it should only be assessed whether, through the shape of the product, its author has expressed his creative capacity in an original way. The existence of an earlier patent is relevant only where it would adversely affect that assessment.

PGA Intellectual Property Newsletter – 15/06/2020

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Mediaset wins against live streaming platform “Calcion”

The Court of Milan ordered the owner of the “Calcion” website to pay a millionaire compensation for infringement of Mediaset S.p.A.’s intellectual property rights.
In particular, the website had broadcast live streaming of the Serie A 2015/2016 football championship. All this in violation of Mediaset’s copyright and trademarks, which identify its television networks.


From WIPO a tool to certify digital content with legal proof value

The World Intellectual Property Organization (WIPO) launched a new service on May 27th: WIPO PROOF. It is a tool that provides a fingerprint with the date and time of any file, demonstrating its existence at a given time. The evidence obtained, therefore, has legal effect, as it is not exposed to possible falsification.
WIPO PROOF can therefore help intellectual property rights holders to safeguard their intangible assets and prevent misuse and embezzlement. In particular, the service can be especially useful in terms of copyright and trade secret protection.


Sold out also for the “Marchi +3” call

As with the “Disegni +4” call, the “Marchi +3” window to access incentives for the extension of the national trademark internationally and the European trademark registration closed a few minutes after opening.
In fact, it took only 20 minutes to exhaust all the resources allocated, amounting to €3.5 million. But that is not all. The number of protocols booked for as many applications to be finalised over the next five days is 1,768.


World’ s best intellectual property offices published: first place for the EPO

The European Patent Office (EPO) ranked for the ninth consecutive time among the largest patent offices in the world for the quality of its patents and services in the annual benchmarking survey conducted by Intellectual Asset Management (IAM).
The survey was conducted in February and March among several hundred intellectual property professionals in both intellectual property companies and law firms.
Participants were interviewed at the following IP offices: EPO, Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), US Patent and Trademark Office (USPTO) and China National Intellectual Property Administration (CNIPA).

PGA Intellectual Property Newsletter – 08/06/2020

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Nestlé v. Impossible Food: vegan hamburger can no longer be called “Incredible”

Nestlé will have to find a new name for its vegan “Incredible Burger”. In fact, according to the Hague District Court, the trademark chosen by the food giant would produce confusion with the signs of its American competitor Impossible Foods.
In particular, Nestlé had initially launched its Incredible Burger in Europe in April 2019 under the brand “Garden Gourmet”. Subsequently, the multinational would turn to Impossible for a possible licensing agreement in the summer of 2018. However, without entering any agreement, the Swiss giant would still have launched the new “Incredible” brand. According to the Court, the choice of the trademark was an attempt to frustrate Impossible Foods’ entry into the European market by offering its plant-based foods under a similar name. However, Nestlé planned to challenge the decision.


The European Court of Justice on the “use of the trademark in the course of trade”

By judgment of 30/04/2020 (Case C-772/18), the Court of Justice of the European Union was called upon to clarify whether “use of a trade mark in the course of trade” constitutes “use of a trade mark in the course of trade” by a person who – while not carrying on a commercial activity in a professional capacity – receives, releases for free circulation in a Member State and keeps goods manifestly not intended for private use, sent to his address from a third country and to which, without the consent of the proprietor, a trade mark is affixed.
The Court of Justice concluded that “a person who does not engage in trade as an occupation, who takes delivery of, releases for free circulation in a Member State and retains goods that are manifestly not intended for private use, where those goods were sent to his or her address from a third country and where a trade mark, without the consent of the proprietor of that trade mark, is affixed to those goods, must be regarded as using that trade mark in the course of trade”.


Piracy on Telegram: new AGCOM decision

By resolution 164/20/CONS the Italian Authority AGCOM ordered the rejection of the proceedings initiated at the request of FIEG against Telegram.
In fact, a recent FIEG monitoring activity showed that at least ten channels were active on Telegram, followed on average by about 60,000 users each, dedicated to the illegal distribution of newspapers. The same messaging platform had intervened by ordering the operators of the channels in question to cease their illegal activities. As a result of this intervention, as many as 7 out of 8 channels actually ceased to make available editorial works in violation of the Intellectual Property Rights of third parties.
On the contrary, AGCOM’s activity was essentially limited to taking note of this spontaneous adjustment, without which the Authority itself could not have intervened directly against Telegram.

All this, because “due to the location abroad of the servers used, pursuant to art. 8, paragraph 2, of the Regulation, the Authority cannot proceed with the removal of illegally uploaded content, as this would involve the use of filtering techniques that the European Court of Justice has deemed incompatible with EU law”. “It would be possible to disable access to the site only according to the criteria of gradualness, proportionality and appropriateness that the cited article. 8, paragraph 2, of the Regulation has borrowed from European directives”. However, in the case of the Telegram – “qualifiable as an entity offering instant messaging as the main service” – precisely these conditions of proportionality would not exist. Any intervention would in fact lead to the disabling of the entire instant messaging service.


Golden year for EUIPO: 2019 Annual Report has been published

The 2019 Annual Report of the European Intellectual Property Office (EUIPO) has been published. As highlighted in the report, a number of relevant events took place during that year:
– the celebration of the 25th year of activity,
– the filing of the two millionth Community trade mark application,
– the development of a new strategic plan (SP2025).
– the cooperation agreement with Europol on the fight against crime in the field of intellectual property,
– the big Horizon 5.0 IP conference,
– the extension of EU-funded projects in Africa, the Caribbean and Georgia,
– the increased use of innovative and mobile working methods within the Office.

PGA Intellectual Property Newsletter – 01/06/2020

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Vespa design wins again at EUIPO

In 2019 the Court of Appeal of Turin had ruled that the unmistakable design of Vespa is protectable both in terms of the three-dimensional trademark and in terms of copyright. The European Union Intellectual Property Office (EUIPO) has recently returned to the topic. The cancellation division has in fact declared the design registered by a person of Chinese nationality null and void. The story began at the famous EICMA 2019 exhibition in Milan. At that event, the competitor had started promoting vespa-like motorcycles, which had been promptly removed by the competent authorities of the exhibition centre on Piaggio’s initiative.


Kiko v. Wycon: copyright and interior design

The Italian Supreme Court of Cassation, with judgement no. 8433 of 30.04.2020 issued between Wycon S.p.a., formerly Wjcon S.r.l. (“WYCON”) and Kiko S.p.A. (“KIKO”) has ruled that a project or a work of interior designis protectable, under certain circumstances, also as a work of architecture within the meaning of Article 2, no. 5 l.a.


Incredible result for the “Disegni +4” incentives: sold out only a few minutes after opening

From 9.00 a.m. on 27 May 2020, it has been possible to apply for access to the Designs +4 measure, a recognized incentive to support SMEs for the purchase of specialized services aimed at the enhancement of designs. However, the applications submitted for access to the facility were numerous until the allocated resources were exhausted in a few minutes. In a very short time, a sufficient number of applications were sent to Unioncamere, via the portal www.disegnipiu4.it, to exhaust the total funding allocated of €13 million.


Common Practice CP8: when a trademark is used in a different form from the registered one?

EUIPO has adopted the CP8 common practice on the use of the trademark in a form other than the registered one. The CP8 project is part of the European Cooperation Projects under the name ECP4. The purpose is to establish common criteria and principles for assessing whether or not changes in the trademark used lead to an alteration of the distinctive character of the registered sign.

PGA Intellectual Property Newsletter – 25/05/2020

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Copyright: Daniel Cox’s wolf is a work of art

The Court of Milan upheld the claims of photographer Daniel Cox in the dispute with fashion designer Antonio Marras. In particular, Marras reproduced the iconic photograph of the wolf howling among the snowflakes taken by Daniel Cox on some garments. The photo was found on Google and reproduced by Antonio Marras without asking Cox’s authorization and without mentioning his name.
The Italian judges in Milan have therefore followed an approach already expressed by other Italian Courts which, implicitly referring to the criterion of the “worthiness” of the work, refers to meta-legal criteria and in particular to the theory that a creation can be defined “art” only if the art world defines it as such.
The Court therefore prevented Marras from reproducing, marketing or further distributing the photograph in any form whatsoever, and ordered him to pay damages and legal costs.


Voucher 3i

The Italian Ministry of Economic Development has adopted the executive decree establishing the opening of the deadline for applying for the “Voucher 3i – Investing in innovation”.
You can find further information here.


EUIPO: new indications for the post-COVID phase

In response to the exceptional circumstances created by the Covid-19 outbreak, the Executive Director of the European Intellectual Property Office (EUIPO) issued Decision No EX-20-3 and the subsequent Decision No EX-20-4, both concerning the extension of time limits in proceedings before the Office.
However, with effect from 18 May 2020, those extensions ceased to apply. EUIPO therefore issued a guidance note on time limits after the end of the extension period.


EBA: Patentability of plants and animals

On 14 May 2020, the Enlarged Board of Appeal (EBA), the highest level of judicial authority of the European Patent Office (EPO), issued its opinion G 3/19 (Peper) on the patentability of plants and animals.
After the decision of 5 December 2018 (Case T 1063/18), the EPO’s attention was again drawn to the issue of the patentability of plants and animals obtained exclusively by an essentially biological process. The EBA’s opinion had been sought on this issue.
The EBA therefore adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and stated that the non-patentability of essentially organic processes for the production of plants or animals also extends to plant or animal products obtained exclusively by an essentially organic process.

Voucher 3i: incentives for innovative startups

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The Italian Ministry of Economic Development has promoted the “Voucher 3i” program, an incentive for innovative startups that finances patent consulting services with a budget of 19.5 million euros for the three-year period 2019-2021.

The incentive is provided for companies with share capital, including cooperatives, whose equity is not listed on a regulated market or an MTF and it is aimed at the acquisition of consulting services for patenting, through the granting of vouchers for:
– patentability check and researches before the filing of the patent application (up to 2,000 Euro + VAT);
– drafting of the patent application and filing with the Italian Patent and Trademark Office (up to 4,000 Euro + VAT);
– filing abroad of a patent application claiming the priority of a previous italian patent application (up to 6,000 euros + VAT).

It is possible to request in one year up to three vouchers for each type of service and for different inventions, for a maximum total of nine vouchers. Applications may be filed from 15 June 2020, on the specific page of Invitalia website.
The services can only be provided by Industrial Property Consultants registered on the list managed by the Order of Industrial Property Consultants.

Our firm, in the person of Dr. Roberto Allaix, is registered on this list and is available to provide further information.

PGA Newsletter – 18/05/2020

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Il Sole 24 Ore against L’Eco della Stampa: copyright on digital publishing

Upon request of Il Sole 24 Ore S.p.A., by resolution no. 169/20/CONS of May 5, 2020, the Italian Authority AGCOM ordered L’Eco della Stampa S.p.A. to remove several digital publications posted in its online press release. In particular, the italian newspaper reported the presence on the site “new.ecostampa.net” of many articles published in violation of its copyright. AGCOM, therefore, agreed with the claims raised by Il Sole 24 Ore. The reproduction of the contents in question was in fact reserved.


Ambush marketing in the Italian Official Gazette

With the publication in the Italian Official Gazette of the Law no. 31/2020, provisions on “ambush marketing” have entered into force. By this term is meant the association of a brand to a media event without the consent of the organizers.
The Decree Law 11 March 2020, n. 16, dedicates an entire chapter, i.e. Articles 10-14, to the regulation of the prohibition of parasitic activities at sports events and events of national and international importance.


EUIPO Observatory: the new orientations of Europe case-law

The European Observatory on Infringements of Intellectual Property Rights has published the latest version of its case law collection.
In particular, the Observatory gathers the main opinions on the protection of intellectual property rights and makes them available to users through a single database. The Observatory also frequently follows the evolution of European case law in relation to infringements of the same rights.


US Supreme Court: Georgia’s annotated code of law is not protected by copyright.

The Supreme Court of the United States of America, in a recent decision, ruled that annotations of a legislative code cannot be protected by copyright.
The case concerns the Annotated Code of the State of Georgia, which combines normative provisions with doctrinal comments, case law and legislative references. Well, anyone who wants access to such annotations must purchase a specific subscription.
The Supreme Court has therefore ruled that copyright cannot be applied to works created by judges and legislators in the exercise of their functions.
On the other hand, it would be worrying a scenario in which the public would have access only to the “economic” version of the law, whereas the full version, containing the interpretation of the above rules, would be available only to paying customers.

PGA Newsletter – 11/05/2020

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Parmigiano Reggiano against Campbell’s

The American multinational Campbell’s has accepted the request of the Parmigiano Reggiano Consortium to remove from the packaging of its products any image that could violate the intellectual property of the Italian company. In particular, on the packaging of the “Prego” line of sauces were pictures of cheese with the well-known dots that are impressed on every Parmigiano Reggiano cheese. Among the ingredients, however, there was not the Italian product, but a local imitation of it.
This is not the first battle that the Parmigiano Reggiano Consortium has fought to protect its IP rights. The action against Kraft Foods Group Brands LLC was filed only a few months ago. The multinational company is trying to register the “KRAFT PARMESAN CHEESE” trademark in New Zealand, where the Consortium holds the “Parmigiano Reggiano” trademark. Similar disputes are also pending against Kraft in Australia, Uruguay, Paraguay, Chile, Thailand and Ecuador.


Sky/SkyKick: the ruling of the High Court of Justice

Following the judgement of the Court of Justice of the European Union earlier this year, the case was returned to the English High Court of Justice. The ruling is the first application of the European Court’s decision on the alleged infringement of Sky’s trademarks.
By judgment of April 29, 2020, the English Court ruled that SkyKick had infringed Sky’s trade marks for “e-mail services”.


EPO: new extension of deadlines due to COVID-19

In its Communication of May 1, 2020, the EPO stated that in view of the difficult situation in the Federal Republic of Germany, under Article 134(2) of the EPC, the deadlines expiring on March 15, 2020 or later are extended to June 2, 2020. This extension also applies to applications for international PCTs.


EUIPO: further extension of deadlines due to COVID-19

On April 29, 2020, by Decision No EX-20-4, the Executive Director of the EUIPO further extended all deadlines expiring between May 1, 2020 and May 17, 2020 until May 18, 2020. The Office has therefore prepared an information note containing all clarifications in this respect.


“Cura Italia” law: extended validity of the IP rights

With the conversion of the “Cura Italia” decree into law, the validity of the expiring industrial property rights has been extended. Among the numerous changes made during the conversion is, in fact, the amendment of Article 103 of Decree Law No. 18 of 2020.
In the light of this amendment, the UIBM has indicated that:
“All certificates, attestations, permits, concessions, concessions, authorizations and authorization acts however named, including those relating to industrial property rights, which expire between January 31, 2020 and July 31, 2020, shall remain valid for ninety days after the declaration of cessation of the state of emergency”.
In the case of industrial property rights, at the expiry of this term, it will be the responsibility of the interested party who intends to extend the duration of a title, intervene with payments, in the forms already provided by law, to obtain the maintenance or renewal”.