Author: PGA

We inform you that a notice of suspension of the possibility of submitting applications for subsidies in favor of micro, small and medium-sized enterprises for the registration of European Union and international trademarks (MARCHI+3) was published in the Official Gazette of the Italian Republic no. 62 of March 14, 2019, due to the exhaustion of the allocated resources following requests received.

Starting February 26, 2019, the Italian Patent and Trademark Office (U.I.B.M.) will allow new trademark applications to be filed in Fast Track mode, in order to reduce the time required for the examination and, in absence of objections, to publish them for the opposition period in 7 days after filing.

Reducing publication times means being able to obtain registration much more quickly; in fact, we remind you that publication opens the opposition period of 3 months and that, in the absence of disputes, the Office can proceed to the granting in few weeks.

Here below the requirements for the Fast Trackprocedure:

1. Individual trademark (not collective)
2. Word or figurative trademark;
3. No priority claim;
4. Goods and services included in the list of the Nice Classification in force;
5. Payment of the Grant Fee through the PAGOPA platform at the same time as the application is filed.

We are at your disposal for any further information and to draw up lists of goods and services that can allow you to access this procedure.

On June 17, 2019 the new Act and Rules will come into force in Canada, substantially modifying the national trademark system.

The most important changes are as follows:

1. Introduction of the obligation to use the Nice Classification; this means that – while until June 17, 2019 it will still be possible to file trademarks corresponding a fixed official fee – while with the entry into force of the reform  the official fees will depends on the  number of classes of goods and services claimed (this will apply to trademark filing and renewal)
2. Accession to the Madrid Protocol; trademarks can therefore also be protected in Canada through the designation of an international registration;
3. Introduction of new types of so-called non-traditional trademarks, such as movement marks and holograms;
4. Granting three-dimensional trademarks only on the basis of acquired distinctiveness;
5. Trademark protection and therefore renewal terms reduced from 15 to 10 years;
6. No further declaration of use will be required to obtain registration; therefore, even at the filing stage, it will no longer be necessary to indicate the current use or the intention to use basis;
7. Claims for use and registration of the mark in third countries will no longer be accepted. However, the right to claim priority remains;
8. Introduction of the possibility to base oppositions on bad faith.

The changes described above will also apply from June 17, 2019 to pending applications, thus without any transitional period and overlap between the two different systems.

We are at your disposal to explore the consequences of these changes on your current portfolio.