NEWS - MAY 2007

TRADEMARKS JAPAN:
With effect from 1 April 2007 it is now possible to register trade marks in Japan for "retail services" or "wholesale services" in class 35. Previously it has not been possible to protect trade marks for such services in Japan.

Ideally the specific goods of interest to the applicant should be specified, e.g. “retail services for clothing”, “retail or wholesale services for vegetables and fruits” etc.

Where the retail services or wholesale services deal with a variety of goods handled in a single business establishment (e.g. retail services provided by a department store) it is possible to designate general retail / wholesale services using the wording “providing retail services / wholesale services for a variety of goods in each field of “clothing”, “food and beverages” and “livingware”, those goods being handled together”. However, the general specification of services cannot be limited post-filing, e.g. to wholesale services to specific goods.

Under the transitional provisions any new trademark application for retail and/or wholesale services filed on or before 30 June 2007 will be given a filing date of 01 April 2007. Priority will be given to an application whose trademark can be shown to have been used in Japan for retail and/or wholesale services prior to 01 April 2007.

EPO UPDATE:
Further to our October news article “Enlarged Board of Appeal referrals concerning divisional applications”, the referral proceedings G 3/06 have been terminated.
G 3/06 referred to the Enlarged Board of Appeal the question as to whether a patent granted on a divisional application, which at its actual date of filing contained subject-matter which extended beyond the content of the earlier application, can be amended during opposition proceedings to fulfil the requirements of Art 76(1) EPC. Following the withdrawl of the remaining appeals in the referring decision T 1040/04, resulting in closure of the appeal proceedings, the referral proceedings G 3/06 have been terminated.

The remaining consolidated referral proceedings G 1/05 and G 1/06 remain pending before the Enlarged Board of Appeal.

The text of the Enlarged Board of Appeal communication may be found at:
http://www.european-patent-office.org/epo/pubs/oj007/05_07/05_3127.pdf