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
In Case T-241/16, the EU General Court ("GC") had to consider whether or not consumers will be confused where a later mark consisting of two letters is an anagram of an earlier mark.
The applicant, El Corte Inglés, SA, sought to register the figurative sign on the right as an EU trade mark. The goods in respect of which registration was sought were in Classes 3, 18 and 25 and included "clothing, footwear, headgear". In 2014, the intervener, WE Brand Sàrl, filed an opposition in respect of all goods applied for. The opposition was based on the earlier EU word mark "WE" covering, inter alia, goods in Classes 3, 18 and 25, including "clothing, footwear, headgear".
WE Brand argued that there was a likelihood of confusion within the meaning of Article 8(1)(b) EU Trade Mark Regulation ("EUTMR"). The European Union Intellectual Property Office ("EUIPO") upheld the opposition for most of the contested goods.
The Second Board of Appeal of EUIPO ("BoA") dismissed the applicant's appeal. It found that the signs at issue exhibited significant visual and phonetic similarities. Consequently, there was a likelihood of confusion in respect of all the goods that had been found to be identical, similar or similar to a low degree.
The GC upheld the action filed by El Corte Inglés and annulled the decision of the BoA.
In the Court's view, the BoA was correct to compare the signs, for reasons of procedural economy, only from the standpoint of the Italian- and Spanish-speaking public. According to established case law, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) EUTMR exists in part of the European Union (see, for instance, Case T-390/15, para. 38).
However, the GC held that the BoA erred in finding that the signs exhibited significant visual and phonetic similarities. While both signs consisted of the letters "w" and "e", the mere presence of those two letters could not be sufficient to conclude that there was an average degree of visual similarity. The GC observed that there were differences between the signs inasmuch as, first, the letters were not arranged in the same order and, second, "the interconnection in the upper part of the letters ‘e’ and ‘w’ which, though barely visible, nevertheless strengthens the impression that the mark applied for forms a single syllable and an indivisible whole."
As regards the phonetic comparison, the Court pointed out that the relevant public would pronounce the earlier mark as ‘ve’ or ‘güe’, or even, regarding the part of that public which had a knowledge of English, as ‘wi’. The mark applied for, by comparison, would be pronounced as ‘ev’. Moreover, the fact that the mark applied for started with a vowel whereas the earlier mark with a consonant created a difference in the pronunciation of the signs at issue.
Finally, when faced with the combination of letters ‘we’, consumers would, in the view of the GC, be capable of associating it with the personal pronoun in the first person plural in English, whereas, when faced with the combination of letters ‘ew’, they would not recognise any term or concept capable of having a meaning.
As a result, said the Court, the overall impression made on the relevant public by the signs did not give rise to a likelihood of confusion, even though the goods were identical or similar
The Court's decision is well-reasoned. It seems plausible that consumers can distinguish between the signs "WE" and "EW", in particular due to their phonetic differences and because one of the signs has a specific meaning that is missing in the other. One could argue, moreover, that the scope of protection granted to two-letter marks should, in principle, not cover later marks constituting an anagram of these letters, except under special circumstance (e.g., high distinctive character of the earlier mark).
This outcome is in line with established EU case law, according to which consumers, when faced with very short signs, will be able to perceive the differences between them more clearly (see, for instance, T‑272/13, para. 47). The EUIPO considers signs consisting of three or fewer letters/numbers as such "very short signs" (EUIPO Guidelines, Part C, Section 2, Chapter 4, p. 75).
Nonetheless, the EUIPO has occasionally confirmed a likelihood of confusion between two-letter marks containing an inversion of letters (see, for instance, Case R895/2013-1 "DM" v "MD" and Case B1001652 "BP" v "PB", both partially upholding the opposition). As regards three-letter marks, oppositions in such cases appear to be successful more often than not (see, for instance, Case R3074/2014-2 "MTG" v "MGT" and Case R2508/2014-5 "HDP" v "DHP"). In view of the General Court's reasoning in the present case, it will be interesting to see whether a change in the EUIPO's approach will take place.
The report is based on an online survey of users, desk research and information provided by IP offices.
In the survey, 17 out of 25 respondents said they are aware of IP insurance products and 14 respondents were able to name insurance providers offering IP insurance products. Lloyds of London was the most frequently mentioned provider.
Four responses suggested that these products are not very popular, but three suggested that their popularity is growing. The responses overall suggest that IP insurance is more popular in regions such as Australia, China, Japan and the US. The main reason given for not purchasing IP litigation insurance was cost.
The report concludes:
IP insurance products do exist in Europe and there is a reasonable level of awareness of the availability of these products among IP right holders. Despite this existing level of knowledge, there remains a strong need to raise awareness about the details of IP insurance options, in particular amongst SMEs. While some practical experience could be gathered in some European countries, IP insurance schemes remain special niche products with limited use by IP rights holders, and it seems that insurance companies continue to struggle to reach critical mass with these types of products.
IP insurance products are not necessarily linked to a particular IP right but, rather, cover a particular product or product line and encompass all of its associated IP rights. The level of popularity of IP insurance varies depending on the territory and size of the IP rights holder. However, in general, popularity has been low for various reasons, cost being the most prominent one. Lowering insurance premiums appears to be a key factor in making these types of products more attractive for IPR holders.
The likely impact of the unitary patent on the popularity of IP insurance products remains uncertain for the time being. However, there appears to be a positive perception insofar as the unitary patent represents an improved business opportunity for insurance providers to offer existing products on a broader geographical scope.
Thanks to Andrew Diamond in Jakarta for this guest post:
After becoming the 100th member to join the Madrid Protocol in October 2017, Indonesia began officially accepting Madrid applications on 2 January 2018.
Now, the Indonesian Trademark Office has published the first two batches of international applications it has received since that date. So far, 371 international applications have included designations of Indonesia. The designations have been subsequently published by the Indonesian Trademark Office for opposition purposes. The opposition period is two months and the publications themselves can be accessed online here. (Note that under the Indonesian Trademark Law of 2016, publication occurs before substantive examination.)
As part of its accession instrument, Indonesia allows for subsequent designations of International Registrations, which means that brand owners can use older IRs to extend protection to include Indonesia. At the same time, this opens up the possibility to request replacement of a national Indonesian registration and have the older priority date entered in connection with a new designation of Indonesia. Further, Indonesia made declarations to extend the refusal period to 18 months and for individual fees.
The largest trade mark jurisdiction by volume in southeast Asia, Indonesia is the eighth member of the Association of Southeast Asian Nations (ASEAN) to join the Madrid Protocol. Historically, of the approximately 65,000 trade mark applications filed in Indonesia each year, only about 5% are filed by non-Indonesian entities. Madrid is thus an excellent opportunity for international brand owners who are active in the Indonesian market.
Of course, accession to the Madrid Protocol also provides Indonesian entities with the opportunity to use the system to file outside of Indonesia. According to WIPO’s Madrid Monitor, so far only six such applications have been filed, but it is certain to grow in the future when local businesses become more used to and aware of the new system, coupled with a growth in branding.
Andrew Diamond is Foreign IP Consultant at Januar Jahja & Partners in Jakarta, Indonesia and a member of MARQUES
The General Court issued its decisions (T-85/16 and T-629/16) in the latest round of the lengthy (and no doubt costly) dispute between Adidas and Shoe Branding in the battle of the stripes.
The background to this dispute involved Shoe branding filing two EUTMs in 2009 and 2011, respectively, for the below position mark:
The first application covered "footwear" in class 25. Adidas opposed claiming likelihood of confusion with its various three stripe registrations, including the mark(Adidas), as well as dilution of the reputation of its brand and confusion with its earlier unregistered mark in Germany.
Despite finding that the substantial evidence submitted by Adidas demonstrated a reputation in its three stripes mark, the marks at issue were found not to be similar and the opposition was refused on all grounds. Adidas appealed. Dismissing the appeal, the Board of Appeal placed significant emphasis on the different positions and number of stripes of the two marks, which were "sufficient to preclude any likelihood of confusion for the reasonably well-informed and reasonably observant and circumspect public, even for identical goods." The General Court disagreed, finding that the Board of Appeal had erred in its comparison of the marks. First, the Board had based its assessment on the differences between the marks but had failed to take into account the similarities also present "... the signs at issue consist of parallel stripes, equidistant and of the same width, which contrast with the background. Those characteristics of the marks at issue are not elements that could be excluded from assessment of those marks as a whole. Thus, with regard to their configuration, the signs at issue show similarities which should have been taken into account by the Board of Appeal in its global assessment of visual similarity". Second, while assessing the likelihood of consideration, the Board had failed to take into account the evidence submitted by Adidas of the enhanced distinctive character of its earlier mark in the sports shoes and clothing sector. Finally, the Board had failed to recognise that the level of similarity between the marks at issue was not the same under Article 8(1)(b) and Article 8(5). The ECJ has consistently held that a lesser degree of similarity may be required under Article 8(5) than under Article 8(1)(b), provided the similarity between the later-filed mark and the earlier mark with a reputation is "sufficient for the relevant section of the public to...establish a link between them". The Court accordingly upheld Adidas' appeal.
Dissappointed by this reversal of fortune, Shoe Branding appealed to the ECJ. The ECJ reaffirmed the General Court's assessment and the case was referred back to the Board of Appeal for review.
In 2011, Shoe Branding filed a second EUTM for the same trade mark to cover "Safety footwear for the protection against accidents or injury" in class 9. Adidas again opposed. The Opposition Division found, not only that the marks were not similar but that safety footwear was only slightly similar to sports shoes and clothing. By the time the second opposition had reached the Board of Appeal, the General Court had issued its decision in the first opposition proceedings. Following the General Court's decision in the first opposition therefore, the Board of Appeal decided to reject the Opposition Division's assessment of the marks and upheld the opposition under Article 8(5) without examining the remainder grounds.
Smilarly, in the first opposition based on foowear in class 25, the Board of Appeal followed its own findings in the second opposition and upheld the opposition against Shoe Branding's application in class 25 under Article 8(5) without examining the remainder grounds. Shoe Branding appealed against both Board of Appeal decisions and the appeals were simultaneously heard by the General Court on 1 March 2018.
In both appeals, Shoe Branding argued that the Board of Appeal wrongly assessed: (i) the evidence of reputation submitted by Adidas, (ii) the existence of damage to the distinctive character or repute of the trade mark, and (iii) the absence of any due cause to use the mark under Article 8(5). The General Court reviewed the previous decisions in the proceedings and confirmed that the second Board of Appeal had not erred in its assessments. In particular, the General Court rejected Shoe Branding's claim that the marks at issue had coexisted for a number of years due to Adidas' acquiescence and, accordingly, that it had due cause to use the later-filed mark. The General Court stated that for a finding of due cause, inter alia, the applied for mark must have been used throughout the territory concerned and the marks must have coexisted peacefully. Not only had Shoe Branding not demonstrated or claimed that its mark was used throughout the EU, the General Court concluded that "...in view of the dispute which arose in Germany in 1990 and of the previous opposition proceedings brought in 2004, the alleged coexistence on the market between the mark applied for or other similar marks of the applicant, on the other hand, and the earlier mark or other similar marks of the intervener, on the other hand, cannot be categorised as peaceful."
It will be interesting to see what, if any, further action Shoe Branding will take to try to protect its two stripes position mark.
World IP Day (26 April) this year saw the launch of a social media campaign entitled “Protect your IP well, so that you can share it with the world”.
The campaign includes 29 tailored videos, with voiceovers and subtitles in national languages, prepared by the European Observatory on Infringements of Intellectual Property Rights. The international (English-language) video can be viewed below:
Protect your IP well, so that you can share it with the world! - YouTube
Look out for a complementary pan-European media campaign, focused on infringement, to be launched in early June on the occasion of World Anti-Counterfeiting Day, with the publication of a synthesis report on infringement.
EUIPO and the European Commission are hosting the Blockathon in Brussels from 22 to 25 June to join the alliance against fake products and to co-create the next level of anti-counterfeiting infrastructure. Teams have until midday on Monday 30 April to apply!
As mentioned on this blog in March, the Blockathon will bring together specialists in law, IP rights, anti-counterfeiting, track and trace, ecosystem dynamics, logistics and security to support the 10 selected teams. The total prize to be awarded is €100,000.
Applications can be made online up until the deadline.
More details are in the announcement from the EU Observatory:
The Observatory is pleased to announce that the Blockathon competition has been launched on 26 March, with the publication of dedicated web pages www.blockathon.eu and promotion on various social media channels, and in media as well as towards the Blockchain Community. The Blockathon, first collaborative blockchain competition in relation to intellectual property organised in partnership with the European Commission and scheduled to take place from 22 to 25 June 2018 in the emblematic Autoworld Museum in Brussels, is part of the Observatory work programme 2018.
Its success will essentially rely on its capacity to attract the best teams and recruit relevant participants that want to make an impact toward co-creating the next level anti-counterfeiting infrastructure on blockchain. The competition will be attractive for the blockchain community and for participants if it can showcase the involvement of the anti-counterfeiting community, namely relevant stakeholders, private, public, civil society as well as policy makers.
This week EUIPO announced that Vice-President of the EU Commission, Andrus Ansip, will attend the Blockathon.
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