Trademark developments in Austria

In accordance with the latest EU Directive on trademarks, the trademark legislation in Austria has recently been updated.

In come Certification marks and the ability to divide applications. Out goes a need for notarised documents when recording trademark assignments.

It's all change with respect to renewal fees. Austria applied a unique approach to trademark renewals, more commonly seen with patents, in that the renewal fee increased over time i.e. the renewal for the second term of 10 years was lower than that for the third term of 10 years, which was in turn lower than the fourth term of 10 years.

These fees still apply to registrations falling due for renewal before 1 September 2018, but then a new fee system will come in. This will see a set fee irrespective of whether this is the registration's first renewal, second, third or 10th renewal.

However, it's not all that simple. Registration terms will change to being calculated from the application date. They have until now been calculated from a later registration date - and just for a bit of added complexity, the renewal date would be 'extended' to the last day of that month.

Existing registrations falling due for renewal on or after 1 September 2018 will have their renewal dates shortened so they are calculated from the application date.

Example

Therefore, if you have a case that was applied for on 23 November 2007 and matured to registration on 2 October 2008, it would fall due for renewal on 31 October 2018.

If it is renewed it will then remain in force until 23 November 2027.

To compensate trademark owners, if the term is shortened by one year or more, there is a fee discount available of €70 per year.

Austrian trademarks registered from 1 September 2018 will fall due for renewal 10 years from their application date. Until then, the term will be calculated from its registration date.

We will have nearly one more year where Austrian trademark renewal fees are calculated on a sliding scale and then after this still a number of years where the calculation of Austrian renewal fees will require careful checking.

Information from the Austrian Patent Office regarding renewal/maintenance fees is contained here (see page 5).

Indonesia makes the Madrid System a '100 Club'

Last week Indonesia deposited its instrument of accession to the Madrid Protocol and brought the number of contracting parties into triple figures.

It follows hot on the heels of Thailand, which will be available for designation in International applications in less than a month.

The ASEAN (Association of Southeast Asian Nations) countries are committed to joining the Madrid Protocol and now eight out of the 10 countries are on board. Brunei, Cambodia and Laos joined up in the last two years leaving Malaysia and Myanmar as the only ASEAN countries not a part of Madrid. Malaysia has undergone consultations and appears to be in the process of taking steps to ready itself to accede.

In Myanmar, the IP world is still waiting for the country to adopt a formal trademark law. Currently, a deposit registration system with a Cautionary Notice publication supports Common Law rights in trademarks. After years of waiting, there are now indications that Myanmar will be opening a new IP Office to operate a formal trademark law. It appears the new law may be a stepping stone towards Madrid membership or, in other words, first of all there will only be a national system for registration but presumably once the Office is up to speed it can look to accede to the Madrid Protocol and have International Registrations designate Myanmar.

There are some concerns on how well Indonesia may manage meeting the strict timelines for examining International applications. It has made a declaration under Article 5(2)(b) of the Protocol to extend the refusal period to 18 months but it could be they still struggle to meet this given an expected increase of applications now it will be easier for foreign parties to simply tick a box to file in Indonesia in an International application. Could this therefore see a backlog in the examination of national applications?

It will be interesting to see how much Indonesian businesses use the Madrid system. Domestic applicants make a lot of trademark applications in their home market. Now they will have easier access to designate most of their ASEAN partners in an International application, Australia, just to the south may also be an attractive market, as well as the powerhouse economies of Asia, Europe and the United States.