It is not too late to register to attend the EU Blockathon being held in Brussels on 22 and 25 June 2018. MARQUES is pleased to be supporting this event, along with some of its corporate and expert members. More information is available on the EU Blockathon website.
The Blockathon is organised by the EUIPO in cooperation with the European Commission and will be attended by Vice President Ansip.
The Observatory has recently announced that a Memorandum of Understanding (MoU) will be signed during the closing of the Blockathon on 25 June. Here are more details about the MoU, as announced by the European Commission:
Online advertising is a major source of income for IPR infringing sites, and efforts to reduce the flow of ad revenue to such sites have been underway at national level in a number of countries for some time. The world of online advertising is a hugely complex one that is governed by algorithms, real time bidding, ad impressions, performance display ad allocation, and an array of other perplexing factors. In this complex environment, ad misplacement continues to be an issue, with the brands themselves often unaware of where their ads are ending up. This is an important problem not just for the advertising brands, but very importantly, for consumers, since the presence of ads for household brands and well known payment services on IPR infringing sites will often lead the consumers to believe that the site they are accessing is legal when it is not.
Memorandum of Understanding on online advertising and IPR
The European Commission has launched a stakeholders’ dialogue to encourage the industry representatives to agree on commitments that would help to address this problem. After agreeing on Guiding Principles the interested stakeholders participated in a series of meetings with an objective to prepare a text of a Memorandum of Understanding on online advertising and IPR (‘MoU’). The objective of this MoU is to:
minimise the placement of advertising on websites and mobile applications that infringe copyright or that disseminate counterfeit goods, on a commercial scale, and thus
minimise the revenue that such websites or mobile applications gain from online advertising.
To attend the Blockathon, please register online here.
Glen is a Gaelic word with a wonderful lyrical sound to it and reminiscent of idyllic remote Scottish valleys with the mists from the last rain perpetually lingering over their green slopes. Also, it happens that 31 out of 116 Scottish distilleries producing "Scotch Whisky", as protected by this geographical indication, are named after the glen in which they are located – Glenfiddich, Glenmorangie, Glenlivet, Glenfarclas, and many other fine drops. But is that enough to enjoin the use of "Glen" by a distillery outside of Scotland? The Scotch Whisky Association thinks so, and has brought infringement proceedings against the owner of the Waldhorn distillery in Southern Germany. He produces the whisky "Glen Buchenbach" – a pun derived from Berglen, the hometown of the distillery, and from the river Buchenbach which runs through its valley.
The District Court of Hamburg on considering the infringement action found that it raised several questions never yet answered in the prior case-law on geographical indications, and referred to the CJEU for clarification. Today, the CJEU gave its answers: It held, in essence, that the geographical indication "Scotch Whisky" could be infringed if consumers would directly think of "Scotch Whisky" when they see the German Whisky called "Glen Buchenbach". In giving its answers, the CJEU also raised a new question – which it will now be up to the national courts to grapple with.
The challenged use of "Glen Buchenbach"
The defendant produces the whisky "Glen Buchenbach" in a distillery in Berglen in the German Buchenbach valley. The label of the bottles also includes detailed information about the local German origin of the whisky: "Waldhornbrennerei" [Waldhorn distillery], "Swabian Single Malt Whisky", "Deutsches Erzeugnis" [German product], as well as "hergestellt in Berglen" [produced in Berglen]. The plaintiff, the Scotch Whisky Association, filed an action for infringement of the registered geographical indication "Scotch Whisky" before the District Court of Hamburg. It argued that the Gaelic term "glen", used in the names of numerous whiskys of Scottish origin, constitutes an unlawful indirect use and evocation of the geographical indication "Scotch Whisky". Consumers would wrongly assume "Glen Buchenbach" to be produced in Scotland, despite the additional information on the bottles that clearly identifies the whisky as a product of German origin.
The District Court of Hamburg noted that the case raised several questions about the interpretation of the EU Regulation in question ("On the protection of geographical indications of Spirit Drinks", No. 110/2008):
Does "indirect use" or an "evocation" of a registered geographical indication require that it is used in identical or phonetically / visually similar form? Or is it sufficient that the disputed term evokes some kind of association with the geographical indication or the geographical area?
If the latter is sufficient, does the national court have to take the context into account in which the disputed term is used? Or can the context not counteract an unlawful indirect use, evocation or other false or misleading indication, even if it indicates the true origin of the product?
The Decision of the CJEU
Today, the CJEU clarified the extent to which geographical indications enjoy protection under the Regulation:
First, an "indirect use" of a registered geographical indication requires that the designation in question is either identical or phonetically/visually similar to the protected designation – which is not the case here.
Second, there is an infringement based on an "evocation" of the protected indication if the average consumer in the EU (presumably of drinking age), when confronted with the product name in question, directly has an image of the product in mind for which the indication is protected. So does a consumer who sees the name "Glen Buchenbach" directly think of "Scotch Whisky"? This question cannot be answered in the affirmative, says the CJEU, if the disputed name only evokes some vague association with the geographical indication or the relevant region it refers to. This is a question of fact which will have to be addressed by the national infringement court.
Third, the Court held that when determining whether the use is infringing, no account may be taken of the surrounding context, not even when the disputed product name is accompanied by a clear reference to the true origin of the product.
The decision affords a broad scope of protection for indications of geographical origin under the Regulation, for two reasons: First, the CJEU holds that a designation can be infringing, as an "evocation", even if it not at all similar to the protected indication. And second, an infringement cannot be avoided by any surrounding clarifications about the true local origin of the product, be they ever so prominent.
This latter finding has the potential for particularly strong repercussions. The relevant provision on evocation in Art. 16 (b) of the Regulation states that the registered indication is protected even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as "like", "type", or "style". But the District Court of Hamburg thought that this need not necessarily mean that the surrounding context had to be disregarded completely, beyond these two provisos. To allow some room for an overall assessment of the disputed use would have also been in line with the national protection of geographical indications of origin: Sec. 127 of the German Trademark Act allows for a flexible assessment in cases where the disputed designation is not used too prominently and is surrounded by clear clarifying information.
In contrast, the CJEU has now followed its earlier decisions on the irrelevance of circumstantial information. In doing so, the Court has raised a new question: What exactly is the disputed designation that must be the exclusive focus of the assessment? In our case, is it only "Glen"? Or "Glen Buchenbach" – which already sounds much less Gaelic? And if a product name were to be used in direct connection with the manufacturer's trade name, could that be taken into account an exclude infringement? These are questions the District Court of Hamburg will now have to address when applying the – slightly wobbly, cynics might say tipsy – guidance handed down by the CJEU.
Court of Justice of the European Union, judgment of 7 June 2018, C-44/17
Written by Anthonia Ghalamkarizadeh and Thomas Richter
The European Observatory on Infringements of Intellectual Property Rights has published a Synthesis Report on IP Infringement to mark World AntiCounterfeiting Day 2018.
The Report draws together research from the past five years on the importance of intellectual property, its use by European companies, the economic costs of IP infringement, methods and channels by which rights are infringed and actions being taken in response to infringements.
The publication of the Report is accompanied by a pan-European media campaign.
The Report indicates that €60 billion is lost each year due to counterfeiting in 13 economic sectors. This amounts to a loss of €116 for each EU citizen each year, and the loss of 434,000 jobs.
EUIPO Executive Director António Campinos said in a statement:
Over the past 5 years, our reporting and research has given, for the first time, a comprehensive picture of the economic impact of counterfeiting and piracy on the EU economy and job creation, as well as intelligence on how intellectual property rights are infringed. Through our research, we have also shown the positive contribution that intellectual property has on employment and growth. Our work has been carried out so that policymakers and citizens can be in no doubt of the value of intellectual property and the damage that arises from its infringement.
Find our more on the page dedicated to the Synthesis Report on the Observatory website. This includes links to the full report (in English), executive summary (all EU languages), infographics (for each EU country) and press releases (all EU languages).
The Commission explains the background to this consultation:
The availability and proliferation of illegal content online remains an important public policy and security concern in the EU. In particular, there are still concerns regarding the dissemination of terrorist content online, as well as of that of illegal hate speech, child sexual abuse material, or illegal commercial practices and infringements of intellectual property rights, selling of illicit drugs, counterfeits or other illicit goods.
On 28 September 2017, the Commission adopted a Communication with guidance on the responsibilities of online service providers in respect of illegal content online, followed by a Recommendation on measures to effectively tackle illegal content online on 1 March 2018.
The Commission has published an inception impact assessment and is collecting evidence on the effectiveness of measures and the scale of the problem. The Commission will explore, by the end of 2018, possible further measures to improve the effectiveness of combating illegal content online.
In particular, through the present public consultation the Commission seeks to gather views from all relevant stakeholders. The questionnaire is targeted to the general public, hosting service providers such as online platforms, organisations reporting the presence of illegal content online, competent authorities and law enforcement bodies, and academia, civil societies and other organisations.
The consultation opened on 30 April and responses can be made online in any EU language. MARQUES encourages those interested in this topic to considering submitting comments.
Class 46 readers might be interested to know that EUIPO is launching an education programme starting in September 2018.
Here’s more information from EUIPO:
The EUIPO Trade Mark and Design Education Programme (ETMD EP) is a new training programme that has been specially designed for intellectual property practitioners.
The ETMD EP will be held annually and will focus on the interaction between the EUIPO and IP practitioners in trade mark and design registration and prosecution. The course will be delivered by EUIPO staff, leading IP professionals and academics.
This first edition will be in English and will run from September 2018 to June 2019. There will be 150 hours of classes combining e-learning with two 3‑day face-to-face sessions at the EUIPO. There will also be an examination at the end of the ETMD EP and successful candidates will be awarded an EUIPO certificate.
The main goals of the Programme are: to enhance IP professionals’ knowledge of EU trade mark and design law and of the Office’s practice and tools; and to improve operational effectiveness by increasing the quality of applications and processes and by generating and sharing knowledge.
Applicants must be either a legal practitioner in the EEA or a professional representative authorised to act before EUIPO. Note that the certificate does not entitle its holder to obtain the status of professional representative before EUIPO nor is it a prerequisite to represent parties before EUIPO.
Registration is limited to 100 persons and is open from 15 May to 30 June 2018, on a first come, first served basis. The course fee is €1,500.
For more information about the programme of studies, the calendar and tuition fees, please visit the ETMD EP website.
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