Readers who are attending the INTA Annual Meeting in Seattle next week may be interested in the following activities in which WIPO representatives are participating:
Madrid System Users’ Meeting (Sunday, May 20, 10:15 – 12:00): Room 616-617 (6th floor).
Meeting highlights include: Updates on the Madrid System for the International Registration of Marks and the Hague System for the International Registration of Industrial Designs by Registry directors Marcus Höpperger and Grégoire Bisson; and a panel discussion on the impacts of recent and upcoming Madrid System accessions, with representatives from:
Canada (Mesmin Pierre, Director General, Trademarks Branch, Canadian Intellectual Property Office)
Brazil (Schmuell Lopes Cantanhede, Trademarks General Coordinator, National Institute of Industrial Property)
Thailand (Khachaphorn Thiengtrakul, Head of Madrid Application Receiving Office, Department of Intellectual Property of Thailand)
Indonesia (Freddy Harris, Director General, Directorate General of Intellectual Property)
You can also watch a live webcast of Madrid System Updates presented by Madrid Registry Director Marcus Höpperger on Sunday, May 20 (10:00-10:30 Seattle time).
The WIPO booth (No. 102) is in the main exhibition hall. You can meet WIPO experts and representatives of members’ IP offices, and get answers to your questions about the Madrid and Hague Systems. Learn more about the upcoming International Conference “Respect for IP – Growing from the Tip of Africa” from the Building Respect for IP Division, and get the latest on IP dispute resolution from the WIPO Arbitration and Mediation Center.
E-services demo sessions: Take advantage of our live demo sessions on Madrid System e-services, presented daily (Monday May 21 to Wednesday May 23) at the WIPO booth. Register to attend one or more sessions and find out how you can benefit from the full suite of e-services throughout the international trade mark registration and management process. Demos at this year’s booth include:
Overview of Madrid e-services: search, file, monitor and manage your international registration online: Monday, May 21, 10:30 – 11:00, Tuesday, May 22, 15:30 – 16:00 and Wednesday, May 23, 11:00 – 11:30
Search before filing with WIPO’s Global Brand Database: Monday, May 21, 11:30 – 12:00, Tuesday, May 22, 14:30 – 15:00 and Wednesday, May 23, 10:30 – 11:00
Compile and translate your list of goods and services with Madrid Goods & Services Manager: Monday, May 21, 14:30 – 15:00, Tuesday, May 22, 11:30 – 12:00 and Wednesday, May 23, 10:00 – 11:00
Monitor and track your international registrations with Madrid Monitor: Monday, May 21, 15:30 – 16:00, Tuesday, May 22, 10: 30 – 11:00 and Wednesday, May 23, 11:30 – 12:00
The General Court found that the EU IPO and the Board of Appeal were correct to uphold a revocation of an EU Trade mark registration for SKYLEADER, on the basis that no evidence had been filed within the prescribed time limit.
The EU IPO had set a deadline of 13 October 2015 for Skyleader A.S. to submit evidence of genuine use in response to a revocation application filed by Sky International AG (“Sky”). Whilst the EU IPO received a fax containing a cover letter listing the evidence of use by 12 October 2015, it only received the evidence by post on 15 October 2015. The EU IPO, and the Board of Appeal both found that they could not take this late filed evidence into account, as under Rule 40(5) Implementing Regulation 2868/95, where evidence of use is not received during the time limit set, then the trade mark registration should be revoked.
Skyleader appealed the BOA’s decision to the General Court, on the basis of two arguments, which the General Court assessed as follows:
Misinterpretation of Rule 40(5) in light of Art 76(2) CTMR 207/2009
Skyleader argued that Rule 40(5), had been misinsterpreted in light of Art 76(2) CTMR 207/2009, which states that the EU IPO on may disregard facts/evidence filed out of time, and therefore that the EU IPO had discretion to take the evidence into account. However, the General Court, agreeing with the BOA, found that if there is no evidence whatsoever filed within the time limit, then the EU IPO cannot exercise such discretion. As such, the EU IPO were correct to automatically reject the evidence. The EU IPO only has a discretion where a party has submitted evidence of use that is not completely irrelevant. The cover letter faxed to the EU IPO on 12 October 2015 contained no evidence of proof of use. Therefore, Rule 40(5) had been applied correctly.
The General Court found that the reasons for the lateness of the postal evidence could not call that finding into question. Even if the proprietor had wanted to invoke unforeseeable circumstances such as force majeure, or excusable error, they had not shown that they had acted in good faith. They had not exercised all the care and diligence required of a normally well-informed operator to monitor the course of the procedure set in motion and to comply with the time limits. Skyleader hadn’t tried to send proof of use via fax during the time limit, or sought any other relief (restitution in integrum, continuation of proceedings or an extension of the deadline). Therefore, the General Court found that they could not argue that the EU IPO didn’t take into account the reasons for the lateness of the evidence.
Further, the burden to prove that a mark has been put to genuine use is on the trade mark proprietor. Skyleader had sought to alternatively argue that the letter itself constituted evidence, as it contained Skyleader’s company name and its website address, and therefore the EU IPO could exercise its discretion and take the late filed evidence into account. The General Court found that To show genuine use, a proprietor has to show time, place, extent and nature of use of the mark. Merely identifying the identity of the proprietor and a website does not do this, and was merely to prove information about the proprietor. Further, it is not for the EU IPO to investigate whether proof of use is contained within a letter. Here, it was apparent from the letter that proof of use was going to be sent separately in the further annexes. As such, the letter clearly wasn’t evidence of use.
Therefore, no evidence of use had been filed in time, and the General Court rejected Skyleader’s arguments.
The EU IPO violated the principle of sound administration in not informing the applicant of the means for rectifying the late submission of proof of use
Skyleader argued that the EU IPO should have advised them of the routes that were available to them to rectify the late filing of evidence.
The General Court explained that there is no provision requiring the EU IPO to inform a party of the procedures available to it under Art 81 and 82 of the Regulation. It is not incumbent on the EU IPO to advise a particular party to pursue a particular legal remedy. There is information contained within the Guidelines for Examination, particularly in respect of the expiry of deadlines. As such, the General Court rejected this argument as unfounded.
As such, the General Court dismissed Skyleader’s appeal and ordered it to pay the costs of Sky and the EU IPO.
This case is a good reminder of the importance of exercising due care and diligence, particularly for genuine use evidence deadlines.
Thanks to my colleague, Amanda McDowall, an associate at CMS Cameron McKenna Nabarro Olswang LLP, for contributing this post!
In a guest post, Suvi Haavisto discusses the recent judgment of the Finnish Market Court on trade mark infringement in Laulumaa Huonekalut Oy v Pohjanmaan Kaluste Oy (MAO:154/18), concerning the use of the women's names SARA, OLIVIA and SOFIA for furniture.
The Market Court of Finland (MAO) gave its judgment on 16 March 2018 in the trade mark infringement case of Laulumaa Huonekalut Oy v Pohjanmaan Kaluste Oy (MAO:154/18).
Furniture seller Laulumaa Huonekalut Oy had filed a trade mark infringement claim with the Market Court against a furniture manufacturer Pohjanmaan Kaluste Oy. The case concerned Finnish trade marks SARA (number 236024), OLIVIA (number 248620) and SOFIA (number 236285) registered for furniture in class 20:
The parties' arguments
Laulumaa claimed that Pohjanmaan had infringed Laulumaa’s trade mark rights by using the names "Sara Bar table", "Olivia Dining table" and "Sara Seatable sofa" in the sales and marketing of its products.
Laulumaa asked the Market Court to confirm the infringement and order Pohjanmaan to cease the infringement. In addition, Laulumaa claimed reasonable compensation for the unauthorised use of the trade marks of €100,000, compensation for the damage caused by the infringement of €100,000, legal fees of €35,804.50 and costs for publishing the judgment of €2,470.
Pohjanmaan claimed that the trade marks had not been distinctive at the date of filing and had not acquired distinctiveness through use either. The names Sara, Sofia and Olivia have been among the most popular names in Finland in recent decades – these names and corresponding forenames have been used for furniture by various entities and it has become established practice to use the names like product numbers, not to indicate their origin.
Based on the evidence provided by Pohjanmaan, the Market Court acknowledged that different furniture traders had identified their products using women’s forenames, such as Sara, Olivia and Sofia, even before Laulumaa's trade mark applications were filed. Thus, the Market Court considered that the trade marks may possess distinctiveness only in respect of their figurative elements. Thus, the injunctive scope of the trade mark remains very restricted.
The Market Court considered that Pohjanmaan had used the names in marketing but not the parts that would be even slightly distinctive, ie the figurative elements other than standard font style. The Market Court came to the conclusion that the use of the names did not constitute use of the protected trade marks, and thus there was no trade mark infringement.
Consequently, the Market Court dismissed Laulumaa's claim in its entirety and ordered Laulumaa to cover Pohjanmaan's legal fees in the amount of €29,883.60.
Suvi Haavisto is a brand protection lawyer with Roschier in Helsinki