WIPO and the CJEU have recently shared data on applications and cases filed during the year 2017.
International trade marks
According to information published by WIPO on 21 March, there were 56,200 trade mark applications via the Madrid System during 2017, an increase of 5% on 2016. The top five countries for applications were the US, Germany, China, France and the UK.
Applications from China grew by 36.3% while those from the Russian Federation increased by 23.9%. Austria, Italy and the Netherlands each saw a small drop in filings.
The biggest filers were L’Oréal, Richter Gedeon, ADP Gauselmann, Novartis and Abercrombie & Fitch Europe.
WIPO also published data on patent trends in the PCT and designs in the Hague System on 21 March. Read more here.
A record 3,074 UDRP cases were filed at WIPO’s Arbitration and Mediation Center in 2017. Cases relating to new gTLDs accounted for more than 12% of the caseload, with registrations in .store, .site and .online the most commonly disputed. Meanwhile, ccTLD disputes accounted for about 17% of filings (WIPO is designated as a dispute resolution service by 76 ccTLD registries).
Three industries – banking and finance, fashion and internet and IT – accounted for nearly one-third of all cases. The country where most cases originated was the US, followed by France, the UK, Germany and Switzerland. The biggest filers were Philip Morris, Michelin, AB Electrolux, Andrey Ternovskiy (Chatroulette) and Sanofi.
Since the first UDRP case in 1999, WIPO has received more than 39,000 cases covering more than 73,000 domain names.
On 23 March, the Court of Justice of the EU published its judicial statistics for 2017. These cover all the cases before the Court of Justice and the General Court, not just IP cases.
In total 1,656 cases were brought before the two courts. This number comprises: 533 requests for a preliminary ruling before the CJEU; 14 actions at the CJEU for failure of a member state to fulfil obligations; 141 appeals before the CJEU; and 917 cases before the General Court.
The Court of Justice completed 699 cases in 2017, with 912 cases pending at year-end. The average duration of proceedings was 15.7 months (requests for a preliminary ruling) and 17.1 months (appeal proceedings).
At the General Court, 2017 was the first full year of the new organisation, with a number of new judges installed. It completed 895 cases during the year, an increase of 18.5% on 2016. The average duration of proceedings fell to 16.3 months (a reduction of 13%). However, there were 1,508 cases still pending at the end of the year.
In Case T-151/17, the General Court annulled the decision of the Fourth Board of Appeal of the EUIPO of 17 January 2017 (Case R 165/2016-4). The marks at issue in the dispute are the following:
Mr Johann Graf - Contested registration "Winged bull"
Marriott Worldwide Corp - Invalidity Applicant
Class 43 'Services for providing food and drink; Catering and providing food and drink for cafes, hotels and restaurants'.
Class 43 'services for providing food and drink; temporary accommodations; hotel services; restaurant, catering, bar and lounge services; resort and lodging services; provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions; and reservation services for hotel accommodations’
Marriott Worldwide Corp., filed an application for a declaration of invalidity on the basis of EU and UK marks above and US copyright licensed in the UK and on bad faith grounds.
The Cancellation Division and Board of Appeal rejected the application for a declaration of invalidity in its entirety:
- the signs at issue are visually and conceptually different and that it was not possible to compare them phonetically;
- moreover, the applicant had failed to demonstrate the existence of the alleged copyright; there was a doubt whether the design of a griffin protected by the alleged copyright could constitute an original artistic work within the meaning of the UK legislation and the contested mark did not constitute a reproduction, as a whole or in part, of the design of a griffin ;
- third the applicant had failed to demonstrate that the EU trade mark application had been filed in bad faith
Marriott filed an appeal before the GC arguing that the consumer perceives the marks as a whole and does not proceed to analyse their various details. Visually, the signs at issue are similar to a relatively high level. In particular, both of the signs depict black-on-white silhouettes of mythical creatures shown in profile. Those creatures adopt the same sitting position on their hind legs, the tail curved upwards and depicting wings of the same form and the same proportion. Conceptually, the signs at issue share the same concept of a winged mythical creature in a sitting position with a tail.
Mr. Graf argued back that its mark represents a creature named the ‘taurophon’, made up of a bull’s head and the paws of a lion, whereas the earlier marks represent a griffin. Consumers will focus on the heads of the two creatures in question which can be distinguished. The mere fact that both signs use a black-on-white silhouette of the creatures does not, lead to a finding that those signs are similar.
The General Court agreed with Mariott's arguments and found that the Board of Appeal erred in the assessment of the visual and conceptual similarities between the signs at issue as well as the conceptual similarity which must be classified as low. Regarding the assessment : even if the earlier marks shows a griffin, which is a known mythological creature no evidence has been adduced by the parties to show that the griffin is a figure sufficiently known to the relevant public. It is not certain that the representation of a figure half-eagle and half-lion in form has a clear and specific meaning for the relevant public such that that public would be capable of grasping immediately the evocation of a griffin. Therefore the visual similarities between the signs at issue, cannot be regarded as negligible in the overall impression of the signs at issue. The differences are not such as to counteract the similarities (namely, the head of a bull with horns v. the head of an eagle and the front legs of the creature feature paws v. claws and feathers).
Therefore the matter is sent back to the Board who must assess the similarities of the mark and if there is likelihood of confusion..
Trade mark decisions on purely figurative marks are not so common - although a copycat in spite its hybrid nature was found to be similar to Puma's (see case commented here ) and it will be interesting to see which elements the Board will retain as dominant in the overall impression of the two mythological creatures. This blogger is curious to know if any reader has encountered interesting cases on comparing pure device marks which can overlap with the art form of comparing designs.
Many countries have set up Free Trade Zones. The purpose is to support economic development by providing tax advantages and other regulatory exemptions, bringing economic benefits. The downside is that these zones can be misused by criminal organizations to traffic and smuggle counterfeit and pirated goods with all the negative effects know to brand owners and their experts.
The OECD (Organisation for Economic Cooperation and Development) and EUIPO, supported by World Customs Organization, the European Commission’s Directorate-General for Taxation and Customs Union and the United States Department of Homeland Security, have undertaken a study into this topic, resulting in a confirmation of the links between trade in counterfeit and pirated goods and free trade zones.
We are pleased to publish this guest post by Ricardo Alberto Antequera, which will be of interest to IP rights owners and applicants in Venezuela:
In January this year, the Government of Venezuela published a revised Exchange Agreement. It sets out the new foreign currency system base which must be used to calculate and pay official fees at public authorities. This obviously includes fees paid at the national IP Office.
Following this, the IP Office issued a communication in February that informed brand owners that in order to preserve patent, trade mark or other rights (applications or registrations), it is necessary to file a notice establishing interest in maintaining the registration.
The fact is that in view of the published Exchange Agreement it will not possible to pay any fees at the Office until the Office receives new instructions from the Secretary of Finance on the new official fees system to be applied.
Brand owners holding trade mark rights in Venezuela should thus be alert to this new situation.
Not only must brand owners make sure that the mentioned notices are filed in connection with pending applications and registrations that might be up for renewal, but also they may want to ensure that their representative is sent the official fees in question notwithstanding the fact that fees cannot be paid at the Office. The reason for this last perhaps unconventional step is the likelihood that when the Office publishes the new official fees, the deadline to pay the amounts that suddenly become due is expected to be extremely tight.
It is better to be prepared than to be unable to pay and lose your rights.
Ricardo Alberto Antequera is managing partner of Antequera Parilli & Rodríguez in Caracas and a member of MARQUES
This year’s World Intellectual Property Day, on Thursday 26 April, celebrates the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future
Announcing this year’s theme, WIPO said:
Every day women come up with game-changing inventions and life-enhancing creations that transform lives and advance human understanding from astrophysics to nanotechnology and from medicine to artificial intelligence and robotics.
And in the creative sphere, whether in the movies, animation, music, fashion, design, sculpture, dance, literature, art and more, women are re-imagining culture, testing the limits of artistry and creative expression, drawing us into new worlds of experience and understanding.
The important and inspiring contributions of countless women around the globe are powering change in our world. Their “can do” attitude is an inspiration to us all. And their remarkable achievements are an invaluable legacy for young girls today with aspirations to become the inventors and creators of tomorrow.
More than ever before, women are taking up leadership roles and making their voices heard in the science, technology, business and the arts. This is good news. With women and men working together, we strengthen humanity’s hand, and improve our ability to enrich our shared cultural wealth and develop effective solutions to alleviate poverty, boost global health, and safeguard the environment.
The time is ripe to reflect on ways to ensure that increasing numbers of women and girls across the globe engage in innovation and creativity, and why this is so important.
This year’s World Intellectual Property Day celebration is an opportunity to highlight how the intellectual property (IP) system can support innovative and creative women (and indeed everyone) in their quest to bring their amazing ideas to market.
The twelfth study by the European Observatory on Infringements of Intellectual Property Rights estimates that €2.2 billion are lost annually in Europe due to counterfeit tyres, and €180 million to counterfeit batteries.
These figures correspond to 7.5% and 1.8% of the sectors’ sales respectively.
The figures are revealed in a study published on 21st February.
The study also reveals divergences between countries: based on the research, the country least affected by counterfeiting in these two sectors is Finland and the country most affected is Lithuania. In absolute terms, the country most affected is Spain, with losses estimated at €477 million.
The report estimates that lost sales translate into direct employment losses of 8,318 jobs. Counting knock-on effects in other industries, the total is 22,283 jobs.
The loss of government revenue is estimated at €340 million.
In Case T-118/16, the EU General Court ("GC") showed that, in trade mark law, one letter can make all the difference.
The Belgian company bpost NV sought to register the word sign "BEPOST" as an EUTM for products in Classes 16, 35, 38 and 39, such as "transport and delivery of postal items". The German company Deutsche Post AG opposed the mark applied for on various grounds. The opposition was based, in particular, on the German word mark "POST" and on the figurative EUTM depicted on the right – both covering various products, including postal services and related products.
The Opposition Division rejected the opposition, and the Board of Appeal ("BoA") dismissed the appeal filed by Deutsche Post. In yesterday's decision, the GC agreed with the BoA's findings.
Referring to LTJ Diffusion (Case T-346/04), the GC established that a market survey produced by Deutsche Post for the first time before the Court could not be taken into account.
As regards the earlier national word mark "POST", Deutsche Post did not dispute that the products in question were identical or (remotely) similar. The GC confirmed that "the signs at issue were similar to a low degree, but had significant visual differences, despite the common element 'post'" (para. 42). Due to the additional "be" in the mark applied for, the degree of aural similarity was also low. Conceptually, the element "be" was "of particular importance in the global assessment since, unlike the term 'post', it does not allude to the goods and services in question and, accordingly, helps considerably to distinguish the marks" (para. 45).
The Court rejected Deutsche Post's argument that, in the absence of elements establishing conceptual differences, there was a high degree of conceptual similarity. In the GC's view, the "position of the element 'be' at the beginning of the word element 'bepost' of the mark applied for was such as to make it slightly dominant, in accordance with the case-law that the relevant public normally attaches more importance to the first part of words" (para. 47). The Court found that the "word element 'post' in the mark applied for, when combined with the element 'be', is understood by the relevant public as a reference to 'postal services'" (para. 45) and that it "has a rather abstract meaning, since it is grammatically unusual for the German consumer who might not necessarily perceive it as a meaningful expression" (para. 48).
The GC concluded that "despite certain resemblances between the marks" (para. 55) there was no likelihood of confusion. The Court pointed out that even an enhanced distinctiveness of the earlier mark would not have justified a different conclusion. And the earlier "POST"-mark did not play an independent distinctive role within the mark "BEPOST", since the element "post" within the mark applied for "cannot be considered distinctive" but was "entirely descriptive" (para. 69).
As regards the earlier figurative EUTM "ePOST", there was no similarity with regard to some of the goods applied for (e.g., "printed matter"), but the remaining products were identical or somewhat similar. Despite the common element "post", the signs were considered to show "significant visual, aural and conceptual differences" (para. 89). Due to the different colours and typefaces used, the "overall visual impression of the marks" was different (para. 81). Contrary to the view of Deutsche Post, the distinctive character of such visual elements was "no weaker than that of the word element 'post'" (para. 81). Aurally, the signs differed in the pronunciation of the letter "b". And on a conceptual level, they were different because the element "e" of the earlier mark referred to the concept of "electronic", while the element "be" of "BEPOST" did not.
As regards national rights in the designation "POST" invoked by Deutsche Post on the basis of prior use in Germany, the GC set out that the differences identified above were sufficient to rule out a likelihood of confusion within the meaning of Section 15 of the German Trade Mark Act.
As regards the protection of the allegedly reputed national mark "POST", the GC did not examine the reputation in detail. It noted that consumers would not establish a link between the mark "BEPOST" and the earlier mark "POST". The registration of that mark "at the national level does not mean that that term […] has such a high level of distinctiveness that it gives an unconditional right to oppose the registration of every later trade mark containing that term". Deutsche Post's argument to the contrary "is intended, wrongly, to limit the use of the term 'post' to only those postal services covered by the earlier national word mark POST. Furthermore, […] that intention is incompatible with the aims of national or EU legislation in the field of trade marks" (para. 117).
Readers that have made it this far are hereby asked for forgiveness for the excessive use of direct quotations, which was intended to underline how remarkable some of the GC's statements seem.
The decision is striking because it deviates from the usual doctrine of the GC according to which even a coincidence of two marks in an element of weak (read: no) distinctive character can suffice to cause a likelihood of confusion (see, for instance, Case T-735/15 SHOP ART and Case T-127/13 PRO OUTDOOR). In yesterday's decision, the GC did not blindly apply that doctrine but considered wider implications of the matter.
While this policy-driven approach becomes particularly clear in the closing sentences of the decision, the GC's remarks with regard to the similarity of signs are slightly less conclusive. Trying to match this section of the present judgment with previous decisions of the GC may cause some head scratching. By way of example, the GC recently confirmed a high degree of visual and aural similarity between the marks "INWEAR" and "IWEAR", even though the goods in question related to clothing items (see Case T-622/14). In a different case, the GC found that two marks, covering services related to providing drinks, could be conceptually similar due to the coinciding term "coffee" (see Case T-398/16).
Thus, yesterday's outcome stands apart from many decisions of the GC involving trade marks that coincide in terms deemed to be weakly distinctive. That being said, the outcome is in line with a previous decision of the GC concerning another "POST"-variant mark (see Case T-102/14).
Undoubtedly, the decision contains many more aspects that would justify writing one or several further blog posts. As always, readers are invited to leave their comments below.
Have you ever found it hard to track down a document you need on the EUIPO Register of Public Documents? If, so help is at hand: the Office has launched a Transparency Portal, a searchable entry point for all documents in the Register.
For ease of access, documents are organised into five categories:
Social and relational
The main documents available include:
Strategic Plan 2020
EUIPO Corporate Sustainability Report
The Portal will include all new documents when they are published.
Further to our blog post on January 11 on Case C-291/16; Schweppes SA v Red Paralela SL in relation to the preliminary ruling of the Court of Justice of 20 December 2017, Class 46 has received a note from David Gómez and Morgan Schaaf, the lawyers acting for Schweppes, that seeks to bring additional clarification to the legal question of trade mark exhaustion, as it was referred to the Court of Justice by the Spanish judges of the Juzgado de lo Mercantil No 8 of Barcelona. We are pleased to publish their note in full below:
The said judgment refers to the exhaustion of trade mark rights. It particularly deals with a case where the trade mark rights belong to different owners as they were split in past voluntarily transactions between different group of companies. That said, in the present matter the Schweppes® trade mark belongs to Coca-Cola in the United Kingdom (as owner of a UK trade mark registered at the Intellectual Property Office); and the same trade mark belongs to Schweppes in Spain (as owner of a Spanish trade mark registered at the Spanish Patents and Trademarks Office). In this respect, it is important to highlight that the trademark Schweppes® is not registered as a European trade mark at the EUIPO. Thus, in such circumstances, the CJEU analyses in what conditions the exhaustion of trade mark rights apply in a case where the Schweppes® tonic produced by Coca-Cola in the United Kingdom is imported into Spain by third parties, where the exclusive rights do not belong to Coca-Cola but to Schweppes.
The CJEU states that EU law does not preclude the proprietor of a national trade mark from opposing the import of identical goods bearing the same trademark originating in another Member State, in which that mark is owned by a third party, except when following that assignment, the owner, either acting alone or maintaining its coordinated trade mark strategy with that third party, has actively and deliberately continued to promote the appearance or image of a single global trade mark, thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark.
Additionally, the CJEU states that the proprietor can oppose to the importation of the referred products, provided that there are no economic links between him and the third party, in the way that they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of those marks, so that it is possible for them to determine, directly or indirectly, the goods to which the trade mark is affixed and to control the quality of those goods.
At all events, the CJEU has not decided if in the Schweppes case the doctrine of exhaustion of trade mark rights has to be applied or not, since the ultimate decision on whether the Schweppes Group can oppose to the commercialization in Spain of Schweppes® products manufactured in the UK by Coca-Cola depends exclusively on the national courts and the appraisal of evidence on a case-by-case basis, in view of the evidence submitted by the parties in the proceedings before them, as regards whether or not (i) there is an economic link between Coca-Cola and Schweppes International; (ii) they coordinate their commercial policies; or (iii) have agreed to exercise a joint control over the use of those marks.
David Gómez and Morgan Schaaf, Baylos, Madrid
This case is now back before the Spanish courts. As it clearly deserves the utmost attention, Class 46 will continue to follow its development and we will provide further updates in due course.
For further reading, the case has also been examined in the case law review published by the EUIPO in the January 2018 edition of Alicante News.
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