European Trade Mark and Design Network (ETMDN) [[{"type":"media","fid":"4554","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2329 alignright","typeof":"foaf:Image","style":"","width":"136","height":"65"}}]]is a network connecting national and regional Intellectual Property Offices, User Associations and other IP Organisations. The network has on 2 October 2015 published a communication on a common practice in relation to when a figurative mark containing purely descriptive or non-distinctive words passes the absolute grounds examination. The aim of the common practice is to establish and communicate clarity, legal certainty, quality and usability for both applicant and office. According to Article 3(1)(b) and (c) of the Directive 2008/95/EC trade marks which are devoid of any distinctive character, and trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services, shall not be registered, or if registered shall be liable to be declared invalid. The distinctiveness of the mark is assessed by reference to the goods or services in respect of which registration is sought and by reference to the perception of the relevant public. The common practice introduces principles to be generally applied and to cover large majority of cases. The distinctiveness of the mark is still assessed on a case-by-case basis and the principles serve as guidance in order to ensure that the different offices come to a similar outcome. In order to determine if the threshold of distinctiveness is met due to the figurative features in the mark the following criteria are considered:

A. With respect to the word elements in the mark:

• Typeface and font
• Combination with colour
• Combination with punctuation marks and other symbols
• Position of the word elements (sideways, upside-down, etc.)

Non-distinctive examples:

[[{"type":"media","fid":"4553","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-full wp-image-2328 alignnone","typeof":"foaf:Image","style":"","width":"352","height":"53"}}]]

Distinctive examples:

[[{"type":"media","fid":"4552","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-full wp-image-2327 alignnone","typeof":"foaf:Image","style":"","width":"361","height":"36"}}]]

B. With respect to the figurative elements in the mark:

• Use of simple geometric shapes
• The position and proportion (size) of the figurative element in relation to the word element
• Whether the figurative element is a representation of, or has a direct link with, the goods and/or services
• Whether the figurative element is commonly used in trade in relation to the goods and/or services applied for

Non-distinctive examples:

[[{"type":"media","fid":"4551","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-full wp-image-2326 alignnone","typeof":"foaf:Image","style":"","width":"477","height":"86"}}]]

Distinctive examples:

[[{"type":"media","fid":"4550","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-full wp-image-2325 alignnone","typeof":"foaf:Image","style":"","width":"188","height":"72"}}]]

C. With respect to both the word and figurative elements in the mark:

• How combinations of the criteria affect distinctiveness

Non-distinctive examples:

[[{"type":"media","fid":"4549","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-full wp-image-2324 alignnone","typeof":"foaf:Image","style":"","width":"202","height":"45"}}]]

Distinctive examples:

[[{"type":"media","fid":"4548","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-full wp-image-2323 alignnone","typeof":"foaf:Image","style":"","width":"428","height":"48"}}]] The Common Practice will take effect within three months of the date of publication of the Common Communication. Germany has implemented the common practice both for applications pending on the implementation date and applications filed after the implementation date. For invalidity proceedings the common practice has been implemented only for the requests for invalidity of trademarks which were examined under the common practice. The complete communication with more examples of distinctive and non-distinctive elements can be found here.

The Court of Justice of the European Union (CJEU) has given a preliminary ruling on questions relating to Nestlé’s three-dimensional trademark application representing the shape of a four finger chocolate-coated wafer without the embossed words Kit Kat. The questions were forwarded to the CJEU by English courts (Case C‑215/14 Judgement of 16 September 2015). Background of the case and subject matter The product was placed on the market in the United Kingdom in 1935; in 1937 the name of the product was changed to ‘Kit Kat Chocolate Crisp’, and then shortened to ‘Kit Kat’. In 1988 the company was acquired by Nestlé. On 8 July 2010 Nestlé filed an application (No.: UK00002552692) for registration of the three-dimensional sign as a trade mark in the United Kingdom in respect of the following goods in class 30: ‘Chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; pastries; biscuits; biscuits having chocolate coating; chocolate coated wafer biscuits; cakes; cookies; wafers’.

[[{"type":"media","fid":"4547","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone size-full wp-image-2319","typeof":"foaf:Image","style":"","width":"293","height":"159"}}]]

The Trade Marks Registry of the United Kingdom Intellectual Property Office accepted the application. However, on 28 January 2011, Cadbury filed a notice of opposition to the application for registration. The examiner of the United Kingdom Intellectual Property Office found that the trade mark at issue was devoid of inherent distinctive character and rejected the application in respect of all goods except ‘cakes’ and ‘pastries’. Both Nestlé and Cadbury appealed against the decision. The High Court of Justice of England & Wales referred the following questions to the Court of Justice for a preliminary ruling:

1. In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95 ..., is it sufficient for the applicant to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?
2. Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of Directive 2008/95 ...?
3. Should Article 3(1)(e)(ii) of Directive 2008/95 ... be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?

Decision of the CJEU The CJEU found it necessary to change the order in which the questions are to be examined, first analysing the second and third questions and then examining the first question.

1. Article 3(1)(e) of Directive 2008/95/EC must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue.
2. Article 3(1)(e)(ii) of Directive 2008/95/EC must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured.
3. In order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.

The national proceedings will now resume and the UK High Court will give its final decision on the matter in the near future.

LexDellmeier IP Law Firm is looking for a German qualified Attorney at Law (Rechtsanwalt/Rechtsanwältin) as of 1 March 2016 or earlier. For more information please see our ad in German under: https://lexdellmeier.wordpress.com/jobs/ [[{"type":"media","fid":"4098","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image aligncenter size-large wp-image-2311","typeof":"foaf:Image","style":"","width":"600","height":"349"}}]]

This year LexDellmeier has accepted two interns through the European Law Student’s Association (ELSA) Student Trainee Exchange Programme. It is my pleasure to be working with the LexDellmeier team from late-October until Christmas. My name is Nina Seitz and I come from Helsinki, Finland. I am currently in my fourth year of law school in the University of Helsinki. Before my studies in law I have completed a Bachelor’s Degree in Economics. I started working in the field of Intellectual Property already during my studies in economics. After a few years of working as a trademark and design assistant I decided to pursue a career in the legal field. During my law studies I have continued working for an IP law firm in Helsinki, mainly focusing on trademark and design matters. In order to gain some international experience I spent a year studying at the University of Warwick in England. I have also volunteered at a conference held by the International Association for the Protection of Intellectual Property (AIPPI) in Helsinki in 2013 and I am a student member of The International Trademark Association (INTA). Having been interested in IP law from the start of my studies I was delighted to be offered this opportunity to work for an intellectual property law firm in Munich. During my stay in Germany my aim is to improve my language skills both in English and in German. I am looking forward to expanding my viewpoints and receiving more in-depth knowledge about the German and EU trademark systems. Besides deepening my knowledge of IP Law, I am also excited to meet new people and to get to know the city of Munich and the local culture.

The European General Court (EGC) rejected the application for registration as a Community Trademark (CTM) of a three-dimensional sign of the shape of a rectangular games box consisting of a system of sliding racks for assembly and disassembly, for games and toys, because it is devoid of any distinctive character (Case T‑547/13, Judgement of 8 October 2015). Background of the case and subject matter On 11 September 2012, the company Rosian Express SRL filed an application for registration for the following three-dimensional CTM Application (No.: 532940) at the Office for Harmonization in the Internal Market (OHIM) for, inter alia, games and toys: [[{"type":"media","fid":"4546","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2305 aligncenter","typeof":"foaf:Image","style":"","width":"226","height":"256"}}]] In February 2013 the examiner rejected the application for registration. Therefore, the applicant lodged an appeal with OHIM against the examiner’s decision on 28 March 2013. By decision of 11 July 2013, the Fifth Board of Appeal (BoA) of OHIM dismissed the appeal because the three-dimensional application lacks of any distinctive character. Therefore, the Rosian Express SRL appealed further to the EGC. Decision of the EGC The EGC upheld the decision of the BoA. Initially, the EGC stressed that the products are intended for general consumption and professionals. Therefore, the degree of knowledge of the relevant public varies from average to high. Afterwards, the court came to the result that the application does not depart significantly from the norms or customs of the sector because it is common for games and toys to be packaged and sold in packaging made from different types of material including wooden boxes. Moreover, the way of unfolding and assembling the box does not differ significantly from the norms or customs of the sector. Therefore, the shape of the box is no indicator of origin. Thus, the shape cannot be registered as a three-dimensional trademark.

The 8th edition of the Global Innovation Index (GII) 2015: “Effective Innovation Policies for Development” is the result of a collaboration between Cornell University, the international business school INSEAD, and the World Intellectual Property Organization (WIPO) as co-publishers and their knowledge partners. The report ranks 141 countries and economies around the world on the basis of 79 indicators to show new ways that emerging - economy policymakers can boost innovation and spur growth by building on local strengths and ensuring the development of a sound national innovation environment.Top 10 leader 1. Top 10 leaders The “Top 10” leaders allocated in the GII this year are: [[{"type":"media","fid":"4542","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2294 aligncenter","typeof":"foaf:Image","style":"","width":"421","height":"86"}}]]

Because the IP firm LexDellmeier is headquartered in Munich, Germany, we are pleased to take note of the fact that Germany - even if not one of the top ten - at least ranks 12th this year.

The results quickly show that the group of the top 25 performers contains only high income economies which maintained their strong positions from the past editions. But, there are two exceptions this year: the Czech Republic (24th) and Ireland (8th) reached a relatively high rank in relation to their income.

2. Top innovators by income group

Below you can see the top innovators per income group. The leaders of the high - income countries are Switzerland, UK, Sweden, Netherlands and the USA. As a result of their world - class universities the USA, the UK and Japan are also the leaders in innovation quality (Scientific publications quality, patent families and university rankings). Top-scoring middle-income economies are China, Malaysia and Hungary. China also leads at the category innovation quality, followed by Brazil and India. Moldova is the top innovator of the lower to middle income economies and Kenya the one of the low income economies. [[{"type":"media","fid":"4543","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2295 aligncenter","typeof":"foaf:Image","style":"","width":"446","height":"163"}}]] 3. Leaders of the regions As can be taken from the chart below the leaders in the various regions are: India in Central and Southern Asia, Switzerland in Europe, Chile in Latin America and the Caribbean, the US in Northern America, Israel in Northern Africa and Western Asia, Singapore in South East Asia and Oceania, Mauritius in Sub - Saharan Africa. [[{"type":"media","fid":"4544","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2296 aligncenter","typeof":"foaf:Image","style":"","width":"376","height":"216"}}]] 4. Results Finally, the GII shows an infographic with the Topic “In a perfect world who would do what?” based on the results of the GII 2015: [[{"type":"media","fid":"4545","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2297 aligncenter","typeof":"foaf:Image","style":"","width":"381","height":"534"}}]] For more detailed information and the full report including charts, overviews and other statistics please see: https://www.globalinnovationindex.org/userfiles/file/reportpdf/GII-2015-v5.pdf

On 1 August 2015, the second part of OHIM's (Office of Harmonization in the Internal Market) updated Guidelines entered into force. Since 2013, the Knowledge Circles of OHIM which involves staff from different departments and the Boards of Appeal (BoAs), started uniting the Manuals of trademarks and design practices and “official” Guidelines into a single set of published Guidelines. These Guidelines reflect the practice of the office in the most frequent scenarios. Therefore, they are the main point of reference for users of the Community Trademark system. But, the Guidelines are not legislative texts and therefore they are not binding. To increase consistency and predictability for the users, the Knowledge Circles has to revise the Guidelines in a cyclical process. The modifications are based on the current case-law from the BoAs and the Court of Justice, the operational needs of the OHIM and the outcome of the various convergence projects, such as the harmonization of classification project. Finally, the Knowledges Circles also can consider the feedback of the national and regional IP offices. For the first update process the guidelines were divided in two parts. The first half of the updated Guidelines was adopted in December 2013 and entered into force in February 2014. The second half was adopted in July 2015 by the President of the OHIM on 8 July 2015 (Decision EX-15-2) and entered into force in August 2015. The corresponding documents are available on the website's current trademark practice page and the current designs practice page.

The German Federal Court of Justice (BGH) ruled that one must be strict when comparing a word mark with a three-dimensional mark in order to prevent right owners from monopolizing product shapes by obtaining word mark protection. The BGH concludes that Lindt and Sprüngli AG is not infringing Haribo’s trade mark rights when selling a seated golden chocolate teddy bear with a red ribbon. (Case I ZR 105/14, Judgement of 23 September 2015) Press here to read our earlier blog post about the decision from the Higher Regional Court of Cologne. [[{"type":"media","fid":"4344","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone size-thumbnail wp-image-1489","typeof":"foaf:Image","style":"","width":"101","height":"150"}}]] [[{"type":"media","fid":"4345","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image alignnone size-thumbnail wp-image-1490","typeof":"foaf:Image","style":"","width":"150","height":"150"}}]] Word mark and two-dimensional device mark  vs. three- dimensional trade mark Background of the case and subject matter The applicant, Haribo, is a well-known German company which produces and sells fruit gum products. Haribo is especially known for its gummi bears and has obtained various German trade mark rights for these, e.g. “Goldbären” (DE 974 380) , “Gold-Teddy” (DE 302 011 030 914) and “Goldbär” (DE 39,922,430). “Goldbär” is also registered as a word/device Community Trade Mark (CMT 009423757). The defendant, Lindt and Sprüngli AG, is a well-known Swiss company which produces and sells chocolate products. Since 2011, Lindt has sold a chocolate figure around Christmas in the shape of a seated bear, rapped in golden foil and with a red ribbon around its neck. This chocolate bear is called the “Lindt Teddy”. In 2012, Lindt filed an application for registration of its three-dimensional trade mark of the “Lindt Teddy” in Germany (Reg. number 1125991). Haribo is of the opinion that Lindt’s chocolate teddy infringes its trade mark rights and constitutes an unfair imitation of the “Goldbären”. On 18 December 2012, the Regional Court of Cologne rendered a decision that there is a likelihood of confusion between the “Lindt Teddy” and the “Haribo Goldbär”. They focused, in particular, on the fact that both companies are in the same industrial sector, that the Goldbär enjoys a high degree of reputation and that among the Christmas products, only Lindt’s teddy chocolate has the same form, golden colour and red ribbon as the Goldbär. Lindt appealed the Regional Court’s decision. On 11 April 2014, the Higher Regional Court of Cologne overturned the Regional Court’s decision. The Higher Regional Court stated that too much emphasis had been put on the colour and shape of the bear in the previous decision. The focus should rather be on the product as a whole and how customers perceive it. The Higher Regional Court pointed out that the well-known name “Lindt” is located in the middle of the chocolate teddy, indicating the commercial origin of the product. Furthermore, also “Lindt” is a very famous brand and the Christmas teddy is in consistency with the successful Easter chocolate rabbit Lindt sells around Easter time. Thus, the Higher Regional Court neither found a likelihood of confusion, nor the existence of unfair competition. The decision of the Higher Regional Court was appealed to the BGH. An interesting question arising in this case is whether pure word marks can be infringed by three dimensional trade marks. The Decision of the German Federal Court of Justice (BGH) The BGH upheld the Higher Regional Court of Cologne’s decision and rejected Haribo’s infringement action. They admitted that Haribo’s word marks are well-known in Germany and that the goods in question are highly similar. However, the BGH says that when comparing a word mark with a three-dimensional mark, confusion can only arise from conceptual similarities. It is further stated that there is only a danger of confusion when the word mark is the only and obvious reference perceived by the customers when seeing the three-dimensional product shape. The BGH emphasizes that one must be strict when carrying out this test in order to prevent right owners from monopolizing product shapes by obtaining word mark protection and thus detouring around the stricter requirements for registration of device marks and three-dimensional product shape marks. The BGH ruled out the danger of confusion of association between Haribo’s word marks and the trade dress of Lindt’s chocolate teddies. The infringement action was also rejected in regards to unfair competition law. Firstly, there is a lack of similarity between the device mark showing a standing bear and the Lindt Teddy (shown above). Furthermore, Haribo only registered the “Gold Teddy” mark after it had obtained knowledge of Lindt’s intention to sell a chocolate teddy bear. The BGH also found that Lindt’s chocolate bear shape is not sufficiently similar to Haribo’s fruit gum shape. Press here to read the BGH’s press release in German.

On 1 July 2015, the European General Court (EGC) adopted new Rules of Procedure which replace the Rules of Procedure of 1991. [[{"type":"media","fid":"4541","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-medium wp-image-2277 aligncenter","typeof":"foaf:Image","style":"","width":"300","height":"200"}}]] The new Rules of Procedure have been adapted to the reality of proceedings currently brought before the General Court. It is now a clear distinction between the three main types of action; 1. Direct actions, in which preliminary issues, applications to intervene and applications for confidential treatment are especially numerous. 2. Actions in the field of intellectual property. 3. Appeals against decision of the Civil Service Tribunal. The intention is to make the procedure more efficient by simplifying the 1991 Rules and thus strengthening the General Court’s capacity to deal with cases within a reasonable time and in accordance with the requirements of a fair trial. In addition, some new rules have been implemented e.g. confidentiality of the information and material produced before the Court and the creation of a Vice-President. This is good news for anyone appealing an OHIM Board of Appeal Community trade mark or design decision to the EGC. For intellectual property matters the following changes have been made:

• Delegation to a single Judge One of the main changes is the extension of the scope of the regulations relating to a single Judge so as to also apply to intellectual property cases. This means that where the question of law or fact to be heard are quite straightforward or the case is considered of limited importance, the case will be determined and heard by the Judge-Rapporteur sitting as a single judge.
• Simplification of the language determination The applicant will choose the language of the intellectual property case if no objection is received in due course. In case of an objection, the language will be the language of the contested decision of the OHIM Board of Appeal.
• New regulation on replacement of a party and submission of a cross-claim If an IP right affected by the proceedings has been transferred to a third party; this third party is now allowed to apply to the General Court to step in instead of the original party. Chapter 3 regulates the content, time-limit and response to a cross-claim.
• Simplification of the written procedure On the contrary to the 1991 Rules, only one single round of pleadings will now be allowed. In addition, it is established in the new rules that the Court set’s the maximum length of the written pleadings.

There are also some general changes that should be taken into account:

• Shorter legal time-limits An application to intervene may only be submitted within six weeks of the publication of the notice of the action in the Official Journal of the European Union. The time limit for a hearing request is now three weeks from the notification to the parties of the closure of the written part of the procedure.
• The General Court can rule without an oral hearing There is no longer a demand for an oral hearing in direct actions if none of the main parties has requested a hearing and if the Court considers that it has sufficient information available from the materials of the file.
• Transitional period Some of the regulations from the Rules of Procedure of 1991 still apply to proceedings brought before the entry into force of the new rules (1 July 2015).

Press here to read the full press release of the EGC, and here to see the new rules.

[[{"type":"media","fid":"4539","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image wp-image-2248 aligncenter","typeof":"foaf:Image","style":"","width":"466","height":"296"}}]]   On 1 September 2015, the USPTO launched a pilot program allowing, in some circumstances, the amendments to identifications of goods/services in trade mark registrations that would otherwise be beyond the scope of the current identification. Such amendments are only allowed where they are considered necessary because technological developments has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided to consumers. Requirements and procedure  

• Amendments are permitted upon petition to the Director of the USPTO under Trademark Rule § 2.146. All requirements must be met and a fee must be paid. Amendments will not be permitted prior to a trade mark application during the pilot period.
• The petition procedures only apply to amendments considered to be beyond the scope of the current identification. For example: A petition is not necessary for an amendment from “newsletters in the field of accounting” in International Class 16 to “providing on-line newsletters in the field of accounting” in International Class 41. Regardless of the change in classification, the amendment falls within the scope of the original wording, and would be permitted under current practice.
• The petitioner must request a waiver of the “scope” rule under Trademark Rule § 2.173 (e), which prohibits amendments to the identification of goods and services in a registration.
• Amendments will only be permitted where the petitioner is no longer able to show use of the mark with the goods/services in their original form due to evolving technology. The petitioner must submit an example showing that the mark is still used on other goods/services reflecting the evolved technology, and that the underlying content or subject matter remains unchanged. The petitioner must also declare that in the absence of an amendment, he would be forced to delete the original goods/services from the registration and thus lose protection for the underlying content or subject matter.
• If the petitioner continues to use the mark with the goods/ services in their original form, a new trade mark application may be filed in order to seek registration for the evolved goods/Services.
• Amendments that alter the classification of goods and services or that change the identification from goods to services (or vica versa) are not excluded from consideration. However, the proposed amendment must comply with all applicable rules and requirements.
• U.S. registrations under § 66 (a) of the Trademark Act are based on the underlying international registration for a period of five years from the international registration date. Therefore, the scope of international registration must be included in the assessment of the acceptability of the amendment. Registrations under § 44 (e) of the U.S. Trademark Act exist, on the contrary, independently of the underlying foreign registration. Thus, the scope of the foreign registration will not be taken into consideration when determining acceptability of the amendment.
• In order to reduce the possibility of third-party harm, the USPTO will post a non-exhaustive list of acceptable amendments under the new practice on its website. This will be updated regularly as amendments are permitted. Interested parties can comment on the proposed changes for 30 days after publication. These comments will be taken into consideration when assessing the third-party harm aspect of the petition.
• The petitioner must additionally declare that it will not file an affidavit or declaration of incontestability under §15 of the Trademark Act, as to the evolved goods or services for a period of at least 5 years from the date of acceptance of the amendment.
• The duration of the pilot program is not fixed, but depends on the volume of requests.
• At the end of the pilot period, the Office will assess whether such amendments should be permitted on a permanent Basis.

  Examples of acceptable amendments [[{"type":"media","fid":"4540","view_mode":"media_large","instance_fields":"override","attributes":{"class":"media-image size-medium wp-image-2250 alignright","typeof":"foaf:Image","style":"","width":"281","height":"300"}}]]

• “Phonograph records featuring music” in International Class 9 to “Musical sound recordings” in International Class 9.
• “Telephone banking services” in International Class 36 to “On-line banking services” in International Class 36.
• “Entertainment services, namely, an ongoing comedy series provided through cable television” in International Class 41 to “Entertainment services, namely, an ongoing comedy series broadcast via the Internet” in International Class 41.

Examples of unacceptable amendments

• “Downloadable software for use as a spreadsheet in the field of accounting” in International Class 9 to “Providing on-line non-dowloadable software for use as a spreadsheet in the field of business management” in International Class 42.

The subject matter of the spreadsheet software has changed from accounting to business Management.

• “Printed magazines in the field of finance “ in International Class 16 to “Providing on-line magazines in the field of finance” in International Class 41.

The petitioner is still using the goods in their current form and would therefore not be able to show that in the absence of an amendment, the petitioner would lose protection in the registration in relation to the underlying content of the original goods. The petitioner may file a new trade mark application for the services in International Class 48.

• “Video game tape cassette and video game cartridges” in International Class 9 to “Video game discs and video game cartridges” in International Class 9.

Even though the petitioner is no longer using the mark on “video game tape cassettes”, it is still using the mark on “video game cartridges”  and would not lose protection in the registration in relation to the underlying content of the original goods. The petitioner may file a new trade mark application for “video game discs” in International Class 9. For more detailed information, please take a look at the official announcement of the USPTO here.