China remains the origin of most counterfeit goods arriving in the EU (as confirmed in a report just published by the European Commission). Historically rights owners have also found it incredibly difficult to succeed in enforcing their intellectual property (IP) rights in China, however there are signs that things are improving, albeit slowly, as we discuss in this blog.
What's the state of play in the EU?
The European Commission recently published its latest report on the protection and enforcement of IP rights in countries outside the EU. In the accompanying press release, the Commission said that China continues to be the top priority for the EU due to persistent and longstanding problems. According to the report, China remains the origin of most counterfeit and pirated goods arriving in the EU; over 80% of the seizures of counterfeit and pirated goods come from China or Hong Kong.
Meanwhile in recent years Chinese companies have been increasingly proactive in protecting their IP in the EU. For example, China was amongst the five most active countries at the European Patent Office in 2017.
What's the state of play in China?
In the past, reports about IP protection for "foreign" companies in China have nearly always been negative, however there have been a number of instances of positive news for rights owners over the past few years. This includes the landmark decision in 2017 in which New Balance was awarded record damages for trade mark infringement and the 2016 ruling in favour of Michael Jordan in a series of trade mark disputes against a Chinese sportswear business (see our blogs here and here for the details).
Discussing the current issues facing IP owners in China recently with clients and colleagues from our offices in Beijing and Shanghai, the following key points came out:
The Chinese judicial system is resolving increasingly more complicated and new IP disputes, for example in the FRAND sphere;
IP owners have been able to recover legal costs, as well as being awarded damages in several recent cases;
There has been a notable acceleration in trade mark registration processing, following improvements to the registration system and increased resources at the China Trademark Office;
IP owners have found that relying on copyright protection can be successful where enforcing trade mark or design rights is more difficult;
Overall, there is a feeling that things are slowly improving in terms of protection and enforcement of foreign IP rights in China; and
Despite the legal reforms the problem still remains of tackling counterfeiting at source – cultural and economic factors play a role in this.
If you have any questions about protecting and enforcing IP rights in China please get in touch with one of the authors or your usual contact at Fieldfisher and if further advice is needed we can direct you to our colleagues in China.
In December 2017, the UK Intellectual Property Office (IPO) dismissed an appeal by a Michael Gleissner-owned company, CKL Holdings NV's ("CKL"), and held that its application for ALEXANDER had been made in bad faith. Geoffrey Hobbs QC, sitting as an Appointed Person, rejected CKL's appeal in relation to opposition proceedings brought by Paper Stacked Limited ("Paper Stacked"). (See here for a link to the decision.)
If you are wondering why this decision is noteworthy, then perhaps you haven't heard of Michael Gleissner.
Who is Michael Gleissner?
The mysterious activities of Mr Gleissner have been attracting the attention of IP lawyers, commentators and brand owners for some time now. Fieldfisher are representatives on record for many different brand owners who are embroiled in disputes with one of the Gleissner companies and in fact as at 30 November 2017, a Gleissner controlled entity was a party to 97 live (5%) contested trade mark actions before the UK IPO.
Mr Gleissner has filed thousands of trade mark applications worldwide and is the sole director of hundreds of different companies. In fact, he is the sole director of hundreds of UK companies. Mr Gleissner's prolific filing habits have certainly caught the attention of many as the intentions behind Mr Gleissner's activities are unclear. An internet search for Mr Gleissner suggests he is an e-commerce entrepreneur and film producer who owns a company called Bigfoot Entertainment. Paper Stacked's evidence suggested that Mr Gleissner trades in domain names and uses registered marks to obtain ownership of them. There have been various speculations published including in World Trademark Review regarding Mr Gleissner's motives, but the truth is no one really knows.
However, we do know that Mr Gleissner's activities are bold. In April 2017, a handful of the Gleissner companies applied to revoke 68 UK trade marks applications owned by Apple on the grounds of non-use. Whilst these revocations were struck out as an abuse of process, it does highlight the extent of his activities. Mr Gleissner would have expended a not inconsiderable sum in revoking all of the 68 applications, so he clearly has financial means.
Background to the current dispute
CKL sought to register the mark ALEXANDER for goods in classes 18, 20 and 25. Paper Stacked's opposition was successful and the application was refused on the grounds of bad faith (section 3(6), Trade Marks Act 1994). Paper Stacked's notice of opposition stated "the Applicant has no bona fide intention to use the mark. The Applicant has filed several hundred trade mark applications in numerous territories (mostly within the European Union), the majority of which comprise of common first names."
It is worth noting that in order to file its application, CKL made a declaration (in accordance with section 32(3) of the 1994 Act) that it had a bona fide intention to use the mark in relation to the goods and services contained within the application.
CKL filed a counterstatement denying the grounds of opposition, and maintained that it had acted lawfully in respect of filing the application. It further claimed that the bona fide intention to use the mark should only be assessed after the five year non-use grace period had passed.
Evidence filed by Paper Stacked
In the opposition, Paper Stacked filed a "voluminous" amount of evidence which helped to paint a picture of Mr Gleissner's filing habits and activities. Evidence worthy of note include the following:
CKL has registered a number of distinctive names such as EUIPO and TESLA in Benelux and holds an international registration for BAIDU (one of the largest internet services company in China);
CKL owns hundreds of marks which consist solely of common first names and names of colours. Paper Stacked included examples of CKL using marks consisting of first names to oppose third party EU applications consisting of full names i.e. ALEXANDER SMITH and ALEXANDER BENNETT;
Six of the eight applications applied for by CKL in the UK were opposed by third parties (which differs from the usual 4.5% opposition rate at the UKIPO according to the evidence);
Mr Gleissner is a director of over 1,200 UK companies, one of which includes EUIPO International Ltd; and
Finally, CKL's evidence included references to a LinkedIn profile of the trade marks manager at another of Gleissner's companies. The manager previously listed "manipulating trademarks to reverse hijack domain names through UDRP" and "exploitation of legal instruments such as 'priority chains' in country members of the Paris Convention" in his job responsibilities. This manager was also the signatory of CKL's counterstatement in the opposition.
CKL did not file any evidence of its own but argued that there is a presumption of good faith unless the contrary is proven. In short, CKL argued that the evidence presented by Paper Stacked did not establish a sufficient basis on which to reject the application on the ground of bad faith.
Whilst we do not propose to review the law of bad faith in any great deal, particularly as they are well ingrained in case law, Mr Hobbs QC referred to Arnold J's judgment in Red Bull GmbH v Sun Mark Ltd  EWHC 1929 (Ch) and Copernicus-Trademarks v EUIPO (EU:T:2016:396). Mr Hobbs QC acknowledged that Copernicus is currently under appeal to the CJEU, but stated that the paragraphs of the judgment referred to in his decision are of value. In Copernicus, the EU General Court upheld a finding of bad faith in relation to an application which formed part of a wider strategy for filing applications simply to block third party applications and then re-file once the five year "grace period" ended.
Mr Hobbs QC upheld the decision of the Hearing Officer. In coming to his decision, he referred to the fact that the Registrar has filed written observations in relation to the appeal which stated that:
At 30 November 2017, Michael Gleissner was a director of various entities which all communicated from the same email address. These entities were party to 97 live contested UKIPO trade mark cases;
Although the number of cases involving Michael Gleissner's companies has reduced in recent months, At one stage, they amounted to 8% of all the contested UK cases;
The various Gleissner entities very rarely file any factual evidence before the UKIPO. However, despite this, a high proportion still proceed to a final decision. For example, in November 2017, 42 final decisions were issued and 19% of those related to an entity communicating from the Gleissner email address.
Advice for brand owners
Whilst this decision is interesting, the key message to brand owners is to stay vigilant. We have observed if the matter is defended the Gleissner entities have on several occasions backed down. Failure to stay vigilant can have serious consequences, affect marketing plans and result in unnecessary costs. However, the good news is that this decision highlights that the UKIPO are alive to the activities of Mr Gleissner, although Gleissner entities have had some success, this recent decision suggests his luck may be turning.
Many consumers want to dress like their favourite celebrities. In recognition of this, many online retailers seek to draw comparisons between the style or appearance of their garments and those worn by celebrities. This is often achieved through licensing the use of a photograph or agreeing a sponsorship deal with the celebrity to endorse a particular range of clothing. However, it is now possible to use an AI-powered application which is capable of matching celebrity clothing styles with garments offered for sale by retailers. Consumers can purchase clothing by viewing a photograph of a celebrity in an App capable of searching for alternative garments similar to those shown in the photograph. The technology allows consumers to either purchase the exact items worn by the celebrity or a cheaper alternative.
Such applications are innovative and offer alternative ways for consumers to shop. Whilst they will certainly appeal to those seeking to imitate the styles of their favourite celebrities, the concept throws up various intellectual property (IP) and licensing issues which are of particular interest.
In order to function, the proprietor of the App will need to license the use of the various photographs of celebrities used in the App. Any licence will need to capture future copyright works to be provided by the licensor as the relevant photographs used within the App are taken by photographers and stored in a database.
The terms upon which the photographs are licensed is a particularly interesting issue. Some third parties may demand an exclusive licence for certain photographs, meaning these new Apps could have a knock on effect on other revenue streams for the licensor. Equally, the term and territorial scope of the licence would need to be very carefully drafted to ensure the rights can be properly exploited. Similarly, the licensor would only be able to license the use of those photographs for which the copyright had been assigned to them or licensed on terms which permit sub-licensing. It is possible that the original author of certain photographs has retained ownership and/or the right to license the copyright work to third parties. If an author terminates any arrangement they have with the licensor, this may affect the use and value of the App.
Image rights, which exist in the US, do not exist in the UK as such. However, celebrities have been able to issue legal proceedings against defendants who make an unauthorised use of photographs or images of that celebrity through the tort of passing off. The celebrity must establish sufficient goodwill in their name and/or image through trade by, for example, endorsing products through sponsorship agreements, selling memorabilia or carrying out modelling work. The defendant's acts must amount to a misrepresentation, usually by creating the impression that the celebrity endorses the defendant's product or has licensed the use of their image. Lastly, the celebrity must establish some form of damage. This will often be the loss of potential revenue through licensing their image or name to third parties.
Whilst such Apps will license the use of the copyright in a photograph of a celebrity, it is doubtful that the relevant celebrity in question has licensed the use of their image. There is an argument that the use of a celebrity's image in the App on a platform from which the proprietor will derive revenue, so as to allow consumers to purchase the same or similar garments to those worn by the celebrity in the photograph, allows the App proprietor to trade off the celebrity's goodwill and misrepresents to the consumer that the relevant celebrity has authorised such use.
Trade mark infringement and passing off
Many high-end fashion designers will design clothing which is intended to be worn by celebrities, often at prestigious events such as award ceremonies or film premieres. The designer may then convert the design of that garment into something which is mass produced and sold in its retail stores to the public. The App not only allows consumers to purchase these garments, but also compares these garments to those offered by other retailers which are similar but cheaper. This gives rise to two issues.
The first is the potential for a brand owner to issue legal proceedings for trade mark infringement. It is in infringement of a trade mark to use a similar or identical sign where such use takes advantage of or is detrimental to the distinctiveness or reputation or the trade mark. Given the increasing number of non-traditional trade marks, such as colours or shapes, it may be arguable that the comparison of a high-end designer garment with a cheaper high-street designer garment is detrimental to the former's reputation. Of course, this requires the infringer to be making use of a sign similar or identical to the reputable trade mark. However, by way of example, the Louboutin "red sole" shoe has been successfully registered as a trade mark in various jurisdictions meaning a claim for trade mark infringement could be possible.
The second is the potential for a brand owner to issue legal proceedings for passing off, specifically, reverse passing off. This is a cause of action where, instead of trying to pass off their goods as being those of another entity's, the defendant tries to pass off another entity's goods as their own. This claim prevents an entity from taking credit for someone else's idea or concept. Such a claim may exist where cheaper alternative garments are sold as substitutes for the original worn by the celebrity.
A tool to monitor IP infringement?
As well as being extremely appealing to consumers, such an App may actually prove an unlikely but valuable tool for those in the fashion retail sector looking to police and enforce their IP rights. The App allows those supplying high-end garments to celebrities to quickly and cheaply monitor which competing brands are marketing garments which infringe the IP rights subsisting in the original design. In this sense, the App provides a tangible basis for arguing that IP infringement has diverted sales away from the rights-holder because the App is actively providing the consumer with an alternative, cheaper product. It will be interesting to see if and how this argument becomes a reality in infringement actions.
Following on from our blog a few weeks ago on the European Commission's draft agreement governing the UK's withdrawal from the EU (which includes key provisions on the protection and enforcement of IP in the UK after the end of the transition period), yesterday the UK and EU Commission announced that they have agreed a 'large part' of that draft and a revised draft withdrawal agreement has now been published with various colour-coded text to highlight which provisions have and have not been agreed.
Any provisions highlighted in green in the draft agreement have been agreed at negotiators' level and "will only be subject to technical legal revisions in the coming weeks". The green text highlights that the following provisions have been agreed in principle:
There will be a transitional period from 29 March 2019 to 31 December 2020 during which time the UK will remain part of the EU (Article 121);
After the transition period, owners of EU trade mark registrations, Community designs and Community plant variety rights will "without any re-examination, become the holder of a comparable registered and enforceable right in the UK" (Article 50);
Those who have obtained protection for international registrations of trade marks or designs designating the EU before the end of the transition period shall continue to enjoy protection for those international trade marks and designs after the transition period (Article 52);
Where an unregistered Community design has arisen before the end of the transition period, the UK will continue to benefit from a right with the 'same level of protection' as the UCD after the transition period (Article 53);
Where a database right has arisen before the end of the transition period, the UK will continue to benefit from a right with the 'same level of protection' as the EU database right after the transition period (Article 54);
IP rights that have been exhausted in the UK and the EU before the end of the transition period shall remain exhausted both in the UK and the EU after the transition period (Article 57).
Text in white in the document corresponds to EU proposals that remain the subject of on-going discussions between the UK and the EU. The draft agreement indicates that the UK has yet to concede to the EU in relation to the following issues post-Brexit:
The protection of geographical indications and similar rights in the UK (Article 50(2));
The precise mechanics for the registration procedure in the UK (for EUTMs, RCDs and CPVs) (Article 51); and
Pending applications for supplementary protection certificates in the UK (Article 56).
So whilst progress is being made to ensure continued protection for EUTMs, Community designs, Community plant variety rights and database rights in the UK post-Brexit, some in the IP industry are concerned about the current lack of detail e.g. the exact mechanics of how the 'comparable' right will be created/transposed in practice with no charges and minimal administrative burden. Also, if an EUTM has not been put to genuine use in the UK before the end of the transition period, what additional period of time will the UK mark be allowed to prove genuine use, before it is liable for revocation? However, the good news is, there should be time to iron out these concerns and we have to hope that any final agreement will clarify these hazy points. Lobbying is likely to ramp up even more now to address those provisions needing clarification.
The UK Government has indicated that the UK and EU negotiating teams aim to finalise the entire withdrawal agreement by October 2018.
We will update you as when we hear any further information on the progress of the withdrawal agreement.
The two claimants, both part of the L'Oréal group of companies, successfully sued RN Ventures at first instance for patent and registered design infringement. The patent was owned by L'Oréal SA, with an exclusive licence to L'Oréal UK. As the prevailing parties, the L'Oréal companies were therefore prima facie entitled to recover their reasonable legal costs. However, as the exclusive licence had not been registered at the UK Intellectual Property Office, the defendant was able to invoke section 68 of the Patents Act 1977. Section 68 is intended to ensure the accuracy and completeness of the register of patents by providing a costs sanction for failure to register within six months, with the aim of "making the people who own the monopolies get on the register” (paragraph 85 in Schütz v Werit  UKSC 16).
Section 68 reads:-
"Where by virtue of [an exclusive licence] a person becomes … an exclusive licensee of a patent and the patent is subsequently infringed before [the exclusive licence] is registered, in proceedings for such an infringement, the court or comptroller shall not award him costs or expenses unless:-
(a) [the exclusive licence] is registered within the period of six months beginning with its date; or
(b) the court or the comptroller is satisfied that it was not practicable to register [the exclusive licence] before the end of that period and that it was registered as soon as practicable thereafter."
L'Oréal contended that as both L'Oréal SA and L'Oréal UK were legitimate parties to the claim, the licensing arrangement between them was irrelevant, so far as the defendant was concerned, and had not caused the defendant any additional costs. Accordingly, so L'Oréal argued, it would be wrong for the defendant not to pay costs in the usual way.
Mr Justice Carr disagreed, stating,
"The policy underlying s.68 is not concerned with prejudice to defendants against whom proceedings for infringement have been brought. It is concerned with the consequences to the public of a failure to register and provides an incentive to ensure that registration is performed by an appropriate date. When the section applies, it may always be characterised as a windfall in favour of the defendants, but that is because it is directed to the public interest, rather than the private interests of the parties to the litigation."
He therefore concluded that the claimants should be deprived of their costs of the patent infringement claim. However, there was more to the case than just a patent infringement claim, namely: a validity challenge to the patent (estimated as 30% of the overall costs); and a design infringement claim (estimated as 20% of the overall costs). The costs of the remaining patent infringement part of the action were estimated at 50% of the total. However, the judge went on to decide that only L'Oréal UK should be deprived of its costs, and that a 50/50 split between the two L'Oréal companies was appropriate. Further, it was agreed between the parties that infringements taking place after the date the exclusive licence was registered (assessed at 30% of all infringements) would not be subject to the s.68 disallowance.
It was cumulatively concluded that the effect of failing to register the exclusive licence was a 17.5% deduction from the overall costs of the claimants.
In the grand scheme of things, particularly having succeeded in their patent and design infringement claims, to forego 17.5% of their costs recovery may not have been too great a concern to the claimants. Nevertheless, by recording the licence, they could have recovered those costs. In other cases, particularly if the costs of the patent infringement part of the claim had been a much greater proportion of the total, a failure to register could have a much greater impact.
Although this case concerns an exclusive licence, it is important to note that s.68 applies equally to assignments of patent rights. It is easy to overlook registering an exclusive licence or assignment, particularly between group companies, when so far as the rest of the world is concerned nothing has changed. This case, however, demonstrates the adverse consequences in the United Kingdom that might flow from this.
Following an opinion by the Advocate General on 19 October 2017 in DOCERAM v CeramTec, the CJEU has now issued its answers to questions referred by the Düsseldorf Court relating to Article 8(1) of the Community Designs Regulation No 6/2002 ("the Regulation").
Article 8(1) of the Regulation states that a Community design does not subsist in features of appearance of a product which are solely dictated by its technical function. This provision has caused increasing difficulty in the national courts, as despite appearing in EU law, there is no supporting criteria setting out exactly what is meant by the concept "solely dictated".
In the ruling, the CJEU recognised that there are differing approaches to Article 8(1) in the case law and commentary. The position was neatly summarised as follows:
One approach is that the sole criterion for the application of Article 8(1) of [the Regulation] is the existence of alternative designs which fulfil the same technical function, which demonstrates that the design at issue is not dictated solely by reason of its technical function within the meaning of that provision. The opposing view is that that provision is applicable where the various features of appearance of the product are dictated solely by the need to achieve a technical solution and that the aesthetic considerations are entirely irrelevant. In that case there is no creative effort worthy of protection as a design.
The Düsseldorf Court asked the CJEU the following questions:
Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of the Regulation which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?
If the Court answers Question 1 in the affirmative: From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an “objective observer” required and, if so, how is such an observer to be defined?
In relation to the first question, the CJEU held that for Article 8(1) to apply it must be established that the technical function is the only factor which determines the features of appearance of the product. The CJEU held that design alternatives are not the only criteria in determining whether the characteristics of a product fall within the scope of Article 8(1). Other supporting evidence is also required.
The CJEU agreed with the earlier opinion of the Advocate General in that if the existence of alternative designs was sufficient to exclude the application of Article 8(1), it would be possible to gain Community design protection for a product incorporating features which were exclusively dictated by technical function. This would hamper innovation, as it would prevent competitors using those functional features and effectively offer protection akin to patent rights, but without being subject to the patent registerability conditions.
Secondly, the concept of the "objective observer" was rejected by the CJEU. It was held that national courts should assess the individual features of appearance of a product by considering all objective circumstances relevant to each individual case. In line with the answer to Question 1, the existence of design alternatives can be taken into account, however this alone would not be conclusive.
Given that the questions were referred in May 2016, these answers were eagerly awaited by the IP community. As with any CJEU judgment, the implementation by national courts is where the true impact will be seen. That said it already seems that it may now be harder to demonstrate that a design was not solely based on technical considerations. It is clear that simply showing that other design alternatives exist will not be sufficient, but exactly what additional evidence will be required to get over the Article 8(1) hurdle remains undefined.
We reported back in April 2017 on the Government's announcement that in 2018 the UK would join the Hague Agreement for international design registrations. We can now report that the UK IPO has announced today that the UK has finally ratified the Hague Agreement by depositing the UK instrument of ratification in Geneva.
What you need to know about the Hague Agreement :
It will allow applicants to register a design (or designs) through the International Bureau at the World Intellectual Property Office (WIPO), the official governing body of the international system
It will come into effect on 13 June 2018
It will allow applicants to register a design in any one of the 67 contracting parties
It will provide protection in up to 82 territories through a single international application and a single set of fees
Since 2008, even though it has been possible for the UK to use the Hague system due to its membership of the EU, it has never been a contracting party in its own right. Being a contracting party will now give the UK more flexibility, especially in light of the UK's exit from the EU. It means that when the UK leaves the EU, UK businesses will still be able to register a Community design, which will cover all remaining EU member states. Design protection in the UK via the Hague system will also be available to other members of the system (both within and outside the EU) which could enhance the attraction of the system.
It is hoped that the UK's accession to the Hague Agreement will:
Give businesses a greater choice in how to protect, manage and register their designs internationally, and save them money
Protect their Intellectual Property more efficiently
Encourage non-UK owners of designs to register their rights in the UK for basing manufacturing, distribution or licensing of their intellectual property
The UK IPO has indicated that it will publish updates and guidance for businesses in due course and we will be sure to keep you posted on these as and when they are published.
One of the key principles upon which the European Union ("EU") is founded is the free movement of goods. This has resulted in the development of a pan-European doctrine of exhaustion of rights, which restricts patentees from bringing proceedings for infringement in a member state where the patentee has already marketed or consented to the marketing of its goods in another member state.
A difficulty with this doctrine was identified when the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Slovenia and Slovakia (“new member states”) sought to join the EU. Prior to their accession to the EU in 2004, the level of protection afforded to holders of some patents and SPCs for pharmaceutical products was lower than that enjoyed by them in existing member states.
Pharmaceutical companies were facing the prospect of parallel importation of their products from new member states to existing member states in circumstances where equivalent patent or SPC protection had been unavailable in the new member states. To remedy this problem, the specific mechanism was introduced as a specific derogation to the doctrine of exhaustion of rights, whereby the holder of a patent or SPC for a pharmaceutical product can prevent the parallel importation of that product from any of the new member states, provided that: (i) no equivalent protection was available in the new member state; and (ii) the product is still protected in the member state(s) into which the product is being imported.
Pfizer Ireland Pharmaceuticals v Orifarm (C-681/16) concerned parallel imports of etanercept (a drug used for treating arthritis) from new member states into Germany. The claimant sought an injunction prohibiting such parallel imports during the term of the German SPC, as this SPC was based on a German patent filed at a time when patent protection was not available in the relevant new member states. Despite SPCs theoretically being available in the new member states at the date of filing the German SPC, in reality, such SPCs could not be sought as there was no underlying patent in those countries. The referring court asked the CJEU for guidance on the scope of the specific mechanism. Click here to review the questions and guidance provided by Advocate General Tanchev.
Last month the Journal of Intellectual Property Law & Practice published an article written by three members of our team analysing the key points of the landmark UK Supreme Court decision in Actavis v Eli Lilly. Details of the article, Cast back into the sea of uncertainty—A doctrine of equivalents in UK law? The Supreme Court ruling in Actavis v Eli Lilly, can be found here.
In the recent decision of the Second Board of Appeal of the EUIPO, the registered colour trade mark belonging to the German chainsaw manufacturer, Andreas Stihl AG & Co.KG, was held to be invalid. This decision comes only a few months after the EU General Court's finding that Red Bull's colour trade mark for blue and silver was invalid. (Our blog on the Red Bull case can be here.)
This latest decision underlines the continuing difficulty for parties to apply for and retain trade mark registrations for colours per se. It also makes clear that, despite the 2015 reforms abolishing the need for "graphic representation" of a trade mark, the Sieckmann Criteria are still very much applicable in determining the validity of a trade mark.
Andreas is the market leader in gasoline powered chainsaws and had been using the colours orange and grey since 1972. In 2008, Andreas applied to register the mark depicted below, comprising the colours orange (RAL 2010) and grey (RAL 7035) with the description "The colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw." In 2011, the trade mark was registered in Class 7 for chainsaws:
In June 2015, Giro Travel Company ("Giro"), a Romanian company importing and trading in chainsaws, filed a request for a declaration of invalidity. Giro claimed the colours needed to be available for public interest: orange drawing attention to the dangerous part of the chainsaw and grey associated with the metallic components. Giro also claimed the trade mark is not clear, precise, self-contained, durable and objective. Lastly, Giro asserted Andreas was trying to monopolise a colour scheme which should be available to competitors.
The Cancellation Division rejected the request for a declaration of invalidity, holding that the graphic representation and description enables a systematic arrangement to be identified in which colours are used in a predetermined and uniform way (the chainsaw will be orange in the top part of the housing and grey in the bottom part).
Giro appealed the decision to the Second Board of Appeal on four grounds. However, only the first was considered by the Board. Giro's submission was that, pursuant to Article 59(1)(a) and 7(1)(a) of EU Trade Mark Regulation 207/2009 ("2009 Regulation"), the sign did not conform to Article 4: "the trade mark may consist of any signs capable of being represented graphically…provided that such signs are capable of distinguishing the goods or services of one undertaking from those of another".
Board of Appeal's decision
The Second Board of Appeal held that the applicable Regulation in this case was the 2009 Regulation, as it was in force when the trade mark was filed.
Regarding the first ground of appeal, the Board stated that, pursuant to the case law, colours must be represented in accordance with a specific arrangement or layout, in a predetermined and uniform way, in order to prevent numerous different combinations.
The graphic representation of the Andreas' mark consists of a mere image of two colours without shape or contours, allowing several different combinations. The only exception to this being that the colour orange is always applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom. The description does not provide any additional precision with regard to the systematic arrangement as the positioning of the two colours can take different forms, giving rise to different images or layouts. The description of the mark is not clear, precise, self-contained, easily accessible, intelligible, or objective (Sieckmann Criteria).
As such, the trade mark was held invalid pursuant to Article 59(1)(a) and 7(1)(a) of the 2009 Regulation.
The case is of interest because EU Trade Mark Regulation 2017/1001 amends Article 4 so as to remove the reference to "graphic representation" and, instead, states that the sign must be capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. Although the Sieckmann Criteria were devised to determine the scope of graphic representation, the criteria are retained in Recital 10 to the 2017 Regulation. As such, although the Second Board of Appeal did not, expressly, apply the 2017 Regulation in these proceedings, the case suggests the Sieckmann Criteria will be equally applicable in cases which are dealt with under the new regulation going forward.
The Board of Appeal stressed that, for a colour trade mark to be valid under the 2009 Regulation, its graphic representation or the accompanying description must show (1) the precise shades of the colours in question (2) the ratios and (3) their spatial arrangement. This finding is likely to be equally applicable under the 2017 Regulation.