Despite the UK having ratified the UPC, Brexit has put the UK’s future membership into question – the white paper appears to show that the government intends for the UK to remain within the UPC.
Kate O’Rourke, CITMA Immediate Past-President and Chair of CITMA’s Brexit committee said: “It is reassuring to see the government is seeking a bilateral agreement on civil judicial cooperation and to implement provisions on the mutual recognition of professional qualifications. However, business deserve certainty that UK Chartered Trade Mark Attorneys will continue to be able to represent them at the EU Intellectual Property Office after Brexit.
“It is also vital for business that there is legal certainty on the future of EU trade marks and registered community designs in the UK. We were encouraged that the Draft Withdrawal Agreement signalled the UK Government’s intention to grant all European Union registered trade mark and design right holders an equivalent UK right after the end of the transition period and will be looking for reassurance from the government that this policy will be implemented, with or without an agreement with the EU.”
Jaguar is again picking up the pace. The manufacturer has filed a new European trademark application with the word “Pace” in it, and this time it’s all about the C-Pace.
While there is no other info to go with the name, it could very well stand for a new, upcoming compact crossover that would exist as an entry-level vehicle under the F-Pace, E-Pace and the electric I-Pace (which is easily differentiated from the non-electric E-pace, as the I-Pace doesn’t use internal combustion).
Australia’s CarAdvice suggests the eventual range-topping Pace model would be called the J-Pace, to go along with the XJ nameplate that’s formed an upscale backbone for Jaguar for decades. As for sedans, the XE is paired with the E-Pace, and the F-Pace corresponds to the XF; with Volvo’s crossover versions already reserving the XC name, there’s no chance for Jaguar to have a matching C-Pace and XC combination in its portfolio. The C-Pace could also be a crossover coupe version based on either the E-Pace or the F-Pace.
The trademark application was filed on July 9, and along with car-related goods and services, the application also covers software and charging stations, even buildings. We’ll keep an eye on it
The Intellectual Property Office of the Philippines (IPOPHL) and the Department of Trade and Industry (DTI) are extending the Trademark Registration Incentive Program “Juana Make a Mark” for another year.
In a statement Thursday, the extension of the waiver on fees targets to add another 1,000 trademark registrations from micro, small, and medium enterprises (MSMEs), or make the program available until February 2019, whichever comes later.
“We are extending this assistance program to get more MSMEs from far-flung areas of the country, into the fold of protecting their trademarks,” IPOPHL Director General Josephine Santiago said.
Santiago and DTI Secretary Ramon Lopez witnessed last Tuesday the signing of the agreement, which were inked by Bureau of Trademarks Director Leny Raz and DTI Undersecretary Zenaida Maglaya.
“The success of the first round of the program shows MSMEs are realizing the significance of trademark give, such as an edge in marketing their products,” added Santiago.
The Juana Make a Mark program started in 2017, where businesses in priority sectors of DTI and IPOPHL, or in areas that are prone to natural disasters and have social and economic challenges, can take advantage of waived payment of basic filing fees, fees for claim of color, and publication fee.
According to IPOPHL, this program has driven the increase in number of trademark filings since this was launched.
The first round of the program opened 1,000 slots for MSMEs to avail the incentive program.
Meanwhile, data from IPOPHL showed that trademark filings last year reached 14,229 from 11,793 applications in 2016.
Filings from Filipino entities reached 3,654 in 2017.
A new trademark regulation entered into force in Albania on June 7, 2018, clarifying a range of issues raised by the changes to the Albanian Industrial Property Law in force as of March 24, 2017. Some of the most significant changes and clarifications concern the following:
Clear Definitions and Representation Requirements
While the Albanian IP law defines a trademark in general terms, the new regulation more clearly defines different types of trademarks as well as representation requirements for the most common traditional and non-traditional trademarks. It provides definitions for word, figurative, position, pattern, color and shape marks that are in line with the Implementing Regulation (EU) 2018/626 of March 5, 2018.
Having clear rules on trademark representation enables applicants to clearly demonstrate the nature and features of their marks, which allows for proper examination and, at a later stage, adequate determination of the nature and scope of protection, especially in enforcement proceedings.
Literal Interpretation of Class Headings
The regulation adopts the literal approach when interpreting the scope of protection when class headings are used in lists of goods and services in trademark applications and registrations. Namely, Article 13(2) of the regulation states that general terms, including class headings of the Nice Classification, are to be interpreted as including only the goods and services covered by the literal meaning of these terms.
This provision aligns Albanian legislation with that of the EU. Following the Court of Justice of the EU’s June 19, 2012 decision in the IP Translator ‘class headings’ case (C-307/10 – Chartered Institute of Patent Attorneys v Registrar of Trade Marks), national IPOs in the EU moved away from the “class heading covers all” to the “means what it says” approach.
In the absence of a previous provision that provided otherwise, it is likely the Albanian authorities will apply this provision to both new and existing registrations. However, holders of existing registrations have so far been allowed to specify the list of goods and services intended to be covered when filing a renewal application, if they haven’t done it in their trademark application. Therefore, applicants and holders of existing registrations are advised to clearly indicate whether they are seeking protection for all goods or services that fall within a particular class or only for the specific goods or services mentioned in the class heading, at the time of registration or renewal.
The regulation also introduces an interesting provision regarding the comparison of goods, namely Article 13(6) specifies that, when comparing goods/services, those covered by the same class should not necessarily be deemed similar, and those belonging to different classes should not necessarily be considered dissimilar. This is an improvement and a departure from previous practice, when the Albanian IPO often deemed goods or services similar or dissimilar solely based on their class.
Article 22(8) of the regulation provides a definition of identical signs which does not limit the term to its literal meaning: “signs should be considered identical where, when viewed as a whole, they are not differentiated, or contain insignificant differences.” It seems that, when drafting this provision, the IPO took into account the definition from the decision in the Arthur et Félicie case (C-291/00 – LTJ Diffusion SA v Sadas Vertbaudet SA).
Further, according to the regulation, the IPO can refuse a trademark ex-officio if there is an earlier identical registered trademark. It is in line with the existing practice of the IPO. However, Article 143(2)(a) of the Albanian IP law provides for oppositions based on identity, rather than leaving the issue to the discretionary power of the IPO.
Unlike the law, the regulation also provides that the IPO can intervene ex-officio even when the goods designated by the identical marks are similar or related to each other. The regulation therefore significantly expands the definition of the identical mark, broadening the category of trademarks the IPO will be able to intervene in ex-officio. This may make the IPO decisions vulnerable to cancellation and create an unsteady practice.
“Restitutio in Integrum” Procedure
The regulation clarifies the “restitutio in integrum” procedure, which was introduced for trademarks, industrial designs and geographical indications following the IP law amendments in March of last year, while it has existed for patents since 2014.
Namely, an applicant who, for justified reasons and despite due diligence, failed to perform a certain action by a certain deadline, may request “restitutio in integrum” if this failure resulted in the loss of rights. This request must be filed within 60 days from the removal of the cause for non-compliance and no later than one year after the expiration of the missed deadline and is subject to the payment of a fee.
The IPO then examines the request within a month, and if the request is accepted, the IPO informes the applicant about the time period within which they should remedy the situation. If the request is refused, the applicant may oppose the decision before the IPO’s Appeal Board within a month after receiving the written notification.
“Restitutio in integrum” does not apply to opposition and cancellation proceedings held before the Examination Division, to appeals against decisions in these proceedings filed before the Appeal Board, or to “restitutio in integrum” requests.
Criteria for Determining Well-Known Marks
Article 58(1) of the regulation specifies that, when determining whether a mark is well-known, the Albanian authorities should take into account the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by WIPO in September 1999. Although Albanian authorities have already followed the Joint Recommendation in practice, having it specified as binding by the regulation will contribute to establishing steady practice.
However, the regulation failed to determine the procedure for establishing well-known status. It remains unclear whether it should be established in a separate procedure, or along with other claims, in court, or before the IPO.
Enforcement Procedures Held Before the IPO
Further to the March 2017 IP law amendments, the regulation establishes procedural rules for oppositions and cancellation actions held before the IPO. Under the amended IP law, the IPO will not only examine oppositions and appeals against refusals on absolute grounds, but will also handle other actions, including cancellation, invalidation and non-use actions and claims based on well-known status. The amended law also established two instances in the IPO, the first being the Examination Division and the second being the Appeal Board.
The regulation provides more time for the opponent and the applicant to respectively complete the file and respond to an opposition. It is now two months following the IPO’s notification, while the previous regulation provided a shorter, one-month deadline.
While deadlines for enforcement cases cannot be extended or reinstated, the regulation enables claimants to act quickly. Namely, claimants can file a formal action by completing the standard form and paying the fee within the stipulated deadline, while they can file supporting documents and arguments within two months after receiving an invitation from the IPO to complete the file.
This possibility only exists in proceedings before the first instance of the IPO. In case of an appeal against the first instance decision before the IPO Appeal Board, the appellant should file arguments and supporting documents within a month of being notified of the first instance decision.
The clarification of these procedural rules is expected to release the backlog of oppositions, cancellations, and appeals caused by the IPO’s stagnation after the IP law changes entered into force in March 2017.
Official Fee Modifications
The regulation was accompanied by the introduction of official fees for the newly established IPO procedures and the increase in certain existing official fees, by an average of 10 percent. Like the regulation, the new official fees took effect on June 7, 2018.
While the new fees are applicable to applications filed as of June 7, 2018, the situation remains somewhat unclear regarding the official fees for the newly established procedures, many of which have been brought before the IPO since March 2017, but either no fee or an estimated fee was paid for them, which now may not correspond to the recently established fees. The IPO may now demand retroactive payments of such fees.
This week, Furcor Beverage’s application to trademark the color green on its V Energy energy drink in Australia was denied. The decision comes after the original application from 2012 detrimentally including the wrong color.
Furcor’s application was fiercely opposed by Coca-Cola on the grounds the color was already being used by competitors including “Green Storm”. The company also argued that Frucor’s application was “fatally flawed” because it attached the wrong shade of green to its original bid. The color Frucor sought to trademark was Pantone 376 C, but it mistakenly attached a swatch of the Pantone color 7727 C to its application, a much deeper and cooler green.
Even discounting this fatal flaw, Justice Yates sided with Coca-Cola, finding that the color is not a true trademark, but rather it hints at the color of the drink itself – like other green soft drinks
In 2016, a Federal Court decision ruled in favor of Coca-Cola, and this week the trademark application was denied.
Earlier this year, Roger Federer reportedly signed a 10-year deal with UNIQLO for $300 million USD and left his previous sponsor Nike. Federer had been signed to Nike for the majority of his career but his contract expired in March 2018. Despite the contract being terminated, Nike still own the trademark rights to his signature RF logo, which has caused controversy this week.
Speaking at Wimbledon recently, Federer discussed the branding: “The “RF” logo is with Nike at the moment, but it will come to me at some point. I hope rather sooner than later, that Nike can be nice and helpful in the process to bring it over to me. It’s also something that was very important for me, for the fans. They are my initials. They are mine. The good thing is it’s not theirs forever. In a short period of time, it will come to me.”
Despite the rocky relationship, talks are apparently underway for Federer to regain the rights to the mark.
Jacqueline Pang, Trademark Attorney at Mewburn Ellis, commented on the matter:
“As always, much will depend on the contract between Nike and Roger Federer, and whether and to what extent provision was made for such an eventuality. On the face of it, Nike’s legal position seems strong. It owns a number of trademark registrations around the world for the RF logo and presumably also owns the copyright. Barring anything in the contract to the contrary, it could retain ownership of the brand and continue to exploit it. In that case, it would also be in a position to prevent Federer or any third parties (i.e. Uniqlo) from using the RF logo or anything similar for clothing and related goods.”
Jacqueline continued, “There are echoes here of a line of case law concerning fashion designers, notably Elizabeth Emanuel and Karen Millen, who sold their eponymous businesses and were later prevented from using their own names in starting new ventures. Happily, this does not seem to be the case here as Federer himself owns a number of trademark registrations for his full name. However, this might be scant comfort where the RF logo has also become synonymous with the man. Federer’s confident comments in his Wimbledon first round post-match interview may suggest that talks are already underway for the rights in the brand to be transferred to him or that there is a provision in the contract to that effect. Or it could simply be a shrewd move to publicly apply pressure on Nike.”
Finalizing her comments, Pang stated: “Ultimately the legal position may prove irrelevant. Federer sums up the situation as ‘It’s also something that was very important for me, for the fans really…They are my initials. They are mine.’ Nike has a potentially difficult PR path to navigate: retaining legal control of the RF brand may be a Pyrrhic victory if it means alienating Federer’s passionate and loyal fanbase on whom the value of the brand presumably rests.”
A decision has been upheld by the World Trade Organization that requires Australia’s cigarettes to be sold in plain packages without any logos. The landmark case could usher in a new wave of global tobacco restrictions. A panel of dispute-settlement experts backed the legality of Australia’s measure this week.
The measure was introduced back in 2011, but has caused high controversy to companies such as Philip Morris International and Japan Tobacco. The Tobacco companies argue the rules could set a precedent for other countries to implement similar labelling decisions. They also suggest it will make it easier for cigarettes to be counterfeited.
“Tobacco plain packaging is an evidence-based measure that WHO recommends as part of a comprehensive approach to tobacco control,” said Tarik Jasarevic, a WHO spokesman, in an e-mail. “A positive decision from the WTO panel is likely to accelerate global implementation.”
A long list of countries including South Africa, Belgium, Canada, Colombia, India, Panama, Malaysia, Turkey and Singapore are considering plain-packaging measures. So far, France, Hungary, Ireland, New Zealand, Norway, Slovenia and the UK have already passed such rules.
In 2017, Shipyard Brewing Co. filed a lawsuit against Logboat’s Shiphead Ginger Wheat Beer. The lawsuit was focused on trademark infringement through the use of a similar name and logo, which was likely to cause consumer confusion.
Although both beers use the same color scheme and have ‘ship’ in their names, the vessel on the Shipyard logo is depicted in port, while in the Shiphead logo, it is in the hair of a painting of a woman serving beer.
A Missouri judge dismissed Shipyard’s claims, ruling in favor of Logboat, which registered the trademark in 2015. Judge Nanette K. Laughrey said there was no evidence to support Shipyard’s claims that consumers could be confused by the names and the image of the schooner, and also dismissed claims over the similarity of the beer names.
Judge Laughrey wrote “No reasonable juror could conclude that the terms ‘yard’ and ‘head’ independently are similar in look or sound, outside of the negligible fact that they both end with the letter ‘d.’… The only real similarity between Shipyard and Shiphead Ginger Wheat is the term “ship,” and Shipyard has admitted that ‘ship’ is a generic term, not subject to trademark protection.”
This week, the EU General Court held that privately owned ‘France.com’ cannot be registered as a trademark in the EU. The ruling upholds a decision by the EUIPO.
The EUIPOs original judgment was based on the fact that a “conceptual similarity” to a French trademark of the same name meant “France.com” could not be considered a valid trademark. The French government had claimed Frydman’s domain name conflicts with its own registered trademark (“France”), which it registered with EUIPO in 2010. Jean-Noel Frydman had originally requested an annulment of the decision, but this was turned away by the EU General Court.
“In light of the fact that the signs at issue cover identical or similar services and have a particularly high degree of phonetic and conceptual similarity, the Court finds that there is a likelihood of confusion,” the court said, confirming EUIPO’s decision that the French government is “entitled to oppose registration of the sign France.com.”
In April, French-born American citizen Jean-Noël Frydman against the French Government in a U.S Court claiming cybersquatting and hijacking his domain name. Frydman purchased the domain in 1994. It is likely that the EU decision will have an impact on this case.
The domain, which previously housed Frydman’s online travel business, now redirects to “French.fr,” a portal run by Atout, France’s tourist office.
The United States Patent and Trademark Office has issued the Yolo Rum trademark, 5 1/2 years after it was filed in December 2012. At that time several other companies unknowingly filed for an intent to use the Yolo trademark, when Yolo Rum had already been using the trademark in commerce. “All these a…applicants created a real ‘log jam’ for our trademark,” says, Philip Guerin, founder of Yolo Rum. After a lengthy and detailed description of the all the challenges, just to obtain the trademark, Guerin’s summation is, “I wish they all had just Googled, Yolo Rum, back then. It could have really prevented wasted resources and time.”
Sounding like a true entrepreneur, Guerin confidently states, “Our Yolo Rum trademark was worth the fight, it is an incredible piece of IP (intellectual property), to add to our collection. We have the premier, rapidly emerging brand in the market and the best rum, too.”
Yolo Rum is a premium rum made in Panama by the most famous rum blender in the World, Don Pancho Fernandez, and has won 21 international awards. Yolo Rum is sugar-free and gluten-free, appealing to a growing health-conscious alcohol market.
News of the trademark follows in line with a very noteworthy and ambitious agenda, which includes; major distribution expansion, and a crowdfunding campaign on Wefunder.
“We want to be the first major spirit brand that is ‘Democracy Powered’. Invest your money, and more importantly your talent, to our movement!” Guerin boldly says.