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Can infringement be avoided by performing part of a diagnostic method claim in another jurisdiction?
In a recent interlocutory decision, the Federal Court of Australia considered the novel question of whether infringement of a process claim that does not result in a product (e.g., a diagnostic method) requires all the essential integers to performed entirely within the patent jurisdiction.
Sunday Surprises
The IPKat brings you the latest IP news, events, and opportunities.
Best-case scenario for Puma?
As part of an opposition dispute between Puma (applicant) and CMS Costruzione macchine speciali SpA (proprietor of the contested sign), the Sixth Chamber of the EU General Court (Court) ruled on 22 October that the Board of Appeal (BoA) had erred in law when assessing Puma’s reputation.
Key Developments and Trends from the BPTO Statistical Yearbook - Technology Transfer Agreements
The recently released BPTO Statistical Yearbook 2024 highlights important developments regarding Technology Transfer agreements recorded before the BPTO. In 2024, a total number of 355 agreements were recorded, reflecting the evolving regulatory landscape that now grants greater flexibility to companies operating across borders. Recent amendments to the Brazilian Tax Law and Transfer Pricing Law have simplified procedures for royalty remittances abroad and for tax deductibility purposes, reshaping how intellectual property and technology transactions are structured in Brazil.
Legal Framework Proposal for the Acceptance of Letter of Consent in Trademark Registration in Vietnam
Legal Framework Proposal for the Acceptance of Letter of Consent in Trademark Registration in Vietnam
Overview of Information Submission System and Points to Note
The system for submission of information on patent applications by third parties allows anyone to provide examiners with information relevant to the novelty, inventive step, or other aspects of the invention of a patent application. This year, the Japan Patent Office (JPO) released a manual (handbook) of the information submission system and its summary (quick reference guide). In this month’s issue, we introduce an overview of the information submission system and key points to note.
AI in Legal Operations: Transforming Corporate Legal Departments
Artificial intelligence is transforming legal operations by automating routine tasks, enhancing legal research, and improving contract and matter management. AI in legal operations improves efficiency, accuracy, and access to legal services while raising new ethical and data privacy questions. Rather than replacing attorneys, AI supports legal professionals and legal ops teams so they focus on strategic, human-centered work, making legal technology adoption essential for the future of legal practice.
The EUIPO’s Management Board and Budget Committee meetings took place from 18 to 20 November at the EUIPO
The EUIPO’s Management Board and Budget Committee are made up of representatives from the EU Member States, the European Commission and the European Parliament. Representatives from the Benelux Office for Intellectual Property, the European Patent Office, the World Intellectual Property Organization, the Community Plant Variety Office and user associations attend as observers during the non-confidential parts of the meetings.
One-stop shop: key figures October 2025
In October 2025, nearly 600,000 procedures were carried out on the One-stop shop.
Planned commencement date of the patent law revision
The upcoming revision of patent law, which will introduce a mandatory search for all applications and an optional examination of novelty and inventive step, is one of the most complex and resource-intensive projects undertaken by the Swiss Federal Institute of Intellectual Property (IPI) in recent years.
Why you still can't have your cake and eat it too: "best method" lives on in Australia
This OzKat recently attended a series of international IP conferences and was alarmed to hear (more than once) advice to leave certain proprietary information relating to the performance of the invention out of a patent specification. While most jurisdictions have relaxed or dispensed with the "best method" requirement, it remains strictly enforced in Australia.
Intellectual Property Office fees to increase from April 2026
The Intellectual Property Office (IPO) is increasing fees for patents, trade marks and designs from 1 April 2026, subject to parliamentary approval .
First use of G 1/24 to broaden clear claim language
T 1849/23 is the first decision from the Boards of Appeal to apply G 1/24 to the use of information from the description to broaden otherwise clear claim language (many thanks to eagle-eyed Katfriend Alessandro Cossu for spotting this!). The approach of the Board of Appeal in T 1849/23 contrasts sharply with the many decisions confirming that "consulting" the description does not permit the narrowing of otherwise clear claim language. The Board of Appeal in T 1849/23 found that a broader interpretation of otherwise clear claim language could be imported from the description. The self-expressed aim of the EPO in its application of G 1/24 is legal certainty and harmonisation.
Influencers recognise risks of promoting pirated content and counterfeits, new study finds
The European Union Intellectual Property Office (EUIPO) released ‘Influencers and IP’, the first study to examine how online creators across the European Union (EU) understand and engage with intellectual property (IP), and how this shapes what millions of young people see, access and/or buy online.
Trade mark piracy does not constitute bad faith – Really?
For more than three decades, Ferrari has not sold a single new Testarossa, yet, the trade mark ‘Testarossa’ is keeping the courts quite busy. The Court of Justice of the EU (‘CJEU’) issued a ground-breaking decision on genuine use by selling used cars and spare parts (Ferrari, IPKat here and me here). The General Court confirmed that the sale of second-hand cars can be sufficient to constitute genuine use (T-1103/23, IPKat here). The cause for these decisions is a dispute between Ferrari and a model car maker, who applied for ‘Testa Rossa’ trade marks. The German Patent Court found that these marks were not filed in bad faith (29 W (pat) 14/21, IPKat here). Now, the German Supreme Court has weighed in on the issue of bad faith (case I ZB 6/25).
[Guest Post] USPTO Director orders re-examination of video game patent, citing prior art not considered by the Examiner
The IPKat is pleased to share the below guest post from Kat Friend (and this Kat's colleague) Aaron Trebble (Lewis Silkin) on his favourite subject of IP and video games.
Global IP Exchange Europe returns to Amsterdam in March 2026
The IPKat has learned and wishes to inform interested readers about the upcoming IQPC Global IP Exchange Europe, taking place on 16-17 March 2026 at the Leonardo Royal Hotel Amsterdam, Netherlands. The Exchange is especially, though not exclusively, for those working in-house.
BlockTexx®: Innovating textile recycling through intellectual property
In the heart of Australia's clean technology sector, BlockTexx® is revolutionising textile recycling with its innovative approach to IP. Co-founded by Graham Ross and Adrian Jones, BlockTexx® has developed a proprietary technology that addresses the pressing issue of textile waste. Their journey, marked by a strong IP strategy, offers valuable insights into how IP can drive innovation and sustainability.
Handling of Yangtze Memory-led patent challenges a slippery slope for USPTO
An order to show cause this week by US Patent and Trademark Office Director John Squires has rankled some in the intellectual property space, domestically and abroad.
England and Wales: legal privilege in the age of AI
Under English law, legal professional privilege will apply to confidential communications/documents that meet the tests of legal advice privilege or litigation privilege. Both tests are derived from the common law; privilege has not been codified in statute.
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{{enterWhos.enText}} Trademark Registration
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Principle of trademark protection:Principle of trademark protection;
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Classification system of goods and services:Nice Classification; multi-class application is available;
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Requirements for trademark use:The applicant shall provide evidence showing use of the trademark on the designated goods/services. Evidence of use for goods includes but not limited to: product photos printed with trademarks, product packaging, product labels, exhibition pictures, brochures, sales contracts and other purchase documents and information; but advertisements or media reports cannot be used as evidence of effective use. Evidence for services includes but not limited to: the brochures printed with trademarks, web page introductions, contracts for provision of services and other documents.
It is important to preserve the evidence when use a trademark in United States; otherwise the trademark will be partially or totally invalidated over the designated goods and services for not submitting sufficient mark use evidence during the stage of submitting the statement of use. -
An application for trademark registration shall be filed before the U.S. Intellectual Property Office (USTPO), and there must be a basis for filing application in the United States. There are mainly three types:(1)"Intended Use": This basis applies to cases where the trademark has not been used in the United States at the time of filing the application for registration. Based on "intention to use" to file an application for trademark registration, the application can be submitted directly without providing evidence of trademark use. However, when the official passes the trademark examination, an official notice will be issued requesting the applicant to submit evidence of use and the time of first use in the world and the United States in order to obtain a trademark registration certificate. If the trademark has not been used before it is approved for registration, the applicant may postpone the submission of the statement of use for a period of 6 months at a time, for a total of 5 times. If the use evidence cannot be provided in the end, the trademark will be invalid.
(2)"Actual Use": This basis is applicable to the case where the trademark was already used in the United States when the application for registration was submitted. When filing an application for trademark registration on the basis of "already used", evidence of the use of the trademark in the United States and the earliest date of use shall be provided.
(3)"Registration in Other Countries": This basis is used when an application for registration of the same trademark has been submitted in the origin country and the applicant cannot provide mark use evidence in the United States for a short period of time. Application information (including designated goods/services) in the US application should be consistent with those in the application of origin country, and a copy of registration certificate in the origin country should be provided.
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