AG Opinion in EUTM KitKat case published

Advocate General Wathelet last week gave his Opinion in Joined Cases C‑84/17 P, C‑85/17 P and C‑95/17 P. This is the dispute between Société des produits Nestlé SA and Mondelez UK Holdings & Services Ltd concerning Nestlé’s application to register a three-dimensional mark for its KitKat four fingers product in 2006. Mondelez opposed the application in 2007.

As readers may recall, in December 2016 the General Court (Case T-112/13) found that Nestlé had not shown that the trade mark had acquired distinctive character through use in the EU. While the company had shown use in Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the UK, it had not done so for Belgium, Ireland, Greece and Portugal.

Nestlé and EUIPO challenged this at the CJEU, arguing that applicants should not have to prove acquired distinctiveness in all EU Member States and that the General Court’s interpretation was incompatible with the unitary character of the EUTM. MARQUES supported this position before the Court.

Acquired distinctiveness can be extrapolated

In his Opinion, AG Wathelet proposed that the Court should dismiss the appeal and uphold the decision of the General Court. However his approach was somewhat less strict than that of the General Court, as he said that acquired distinctiveness in some member states can be “extrapolated” on the basis of the evidence provided for other national or regional markets. He gave the example of a jigsaw puzzle:

if the majority of the pieces of the jigsaw depict the body of a horse, the fact that the only piece of the jigsaw which is missing is that of the head may have a significant impact: even if the majority of pieces suggest that the jigsaw shows a picture of a horse, it is possible that the missing piece depicts the torso of a man. In that case, it would be a picture not of a horse, but of a centaur. That is the risk posed by the selective exclusion of certain Member States from the evidence provided.

Some of the useful points from the Opinion include:

  • You have to have "sufficient quantitative evidence" for all Member States but that doesn't mean you have to come in with compelling survey evidence from each Member State.
  • Whilst the CJEU in the Lindt bunny case said "It would be unreasonable to require proof of such acquisition in each individual member state", this doesn't mean you can leave out entire regions and markets within the EU (in that case, they only had evidence for three of the 15 Member States).
  • The Advocate General recognises the existence of national or regional markets and that operators, such as Nestlé, often group countries together, including for geographical proximity, historical links, common languages, customs or practices (for example, Nordic region, Iberia, UK/Ireland) ("market comparability").
  • So evidence from one Member State within such a grouping can potentially be used to extrapolate a conclusion that acquired distinctiveness has been proved in the other Member States within that grouping – but you need evidence to show why, based on market comparability, the former evidence allows the latter conclusion.
  • It means the absence of evidence from, say, Luxembourg doesn't mean you cannot get your EUTM registered; you could show acquired distinctiveness in Belgium, France and Germany, say, and show that Luxembourg (bordering all three) is part of the same effective market.
  • In the similar case involving Louis Vuitton (but which settled before a CJEU decision), LV had not proved use in the entire Nordic region.
  • In this KitKat case, the General Court considered that Nestlé had proven acquired distinctiveness in 10 Member States and also produced at least some evidence (but not good enough to prove acquired distinctiveness) in four more (Belgium, Ireland, Greece and Portugal). It had not put in any evidence at all in relation to Luxembourg.

The Court’s judgment in the case is likely to be published within the next year.

Thanks to MARQUES members Roland Mallinson of Taylor Wessing and Martin Viefhues of Jonas Rechtsanwaltsgesellschaft mbH, who represented MARQUES before the CJEU, for the above information

Posted by: Blog Administrator @ 07.25
Tags: KitKat, Wathelet, Nestlé, Mondelez, EUIPO, CJEU,
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European Commission gives notice that .eu TLD will no longer apply to UK after Brexit

EURid, registry operator for .eu for the European Union, has been told to prepare to delete over 300,000 .eu domains owned by registrants based in the UK when the UK leaves the European Union on 30 March 2019. Clare Grimley and Nick Wood provide more information.

On 28 March 2018 the Directorate-General for Communications Networks, Content and Technology for the Commission issued a Notice to Stakeholders (including EURid) which stated:

As of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names or, if they are .eu registrants, to renew .eu domain names registered before the withdrawal date.

Whilst it is possible that an arrangement may be reached in the final months of Brexit negotiations, the letter is a warning shot to all .eu domain name owners based in the United Kingdom.

At present, Article 4(2)(b) of Regulation (EC) No 733/2002 provides that the following persons are eligible to register .eu domain names: (i) undertakings having their registered office, central administration or principal place of business within the EU; (ii) organisations established within the EU (without prejudice to the application of national law); and (iii) natural persons resident within the EU. 

However as of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names. Equally, undertakings or organisations established in the UK or natural persons who reside in the UK who are .eu registrants, will no longer be entitled to renew .eu domain names registered before the withdrawal date.

Accredited .eu Registrars will not be entitled to process any request for the registration of or for renewing registrations of .eu domain names by those undertakings, organisations and persons either.

The full Notice to Stakeholders issued can be found on this page.

We are reaching out directly to EURid to discuss this in more detail.

This guest post was written by Clare Grimley, Client Research Manager, and Nick Wood, Director, of Com Laude. Nick is a member of the Cyberspace Team and the MARQUES Council

Posted by: Blog Administrator @ 15.43
Tags: Brexit, .eu, EURid, Cyberspace Team,
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Afghanistan joins Madrid Protocol

WIPO has announced that the Islamic Republic of Afghanistan deposited its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks on 26 March 2018.

The Madrid Protocol (1989) will enter into force, with respect to the Islamic Republic of Afghanistan, on 26 June 2018.

The country will become the 101st member of the Madrid System, which will cover 117 countries.

MARQUES supports the geographical expansion of the Madrid System, and welcomes the benefits it brings to trade mark owners. For more information, visit the International Trade Mark Law & Practice Team page.

Posted by: Blog Administrator @ 08.43
Tags: Madrid Protocol, Afghanistan, WIPO,
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Mexico’s opposition system two years on

In a guest post, Jonathan Rangel and Laura Collada provide an update on the opposition system in Mexico, and offer tips for owners of International Registrations:

Almost two years after its creation, the trade mark opposition procedure in Mexico has not had the expected success, and the procedure itself holds significant risk of unpleasant surprises for the brand owners.

According to the Mexican Patent and Trademark Office (MPTO), only 5,088 oppositions were filed in 2017. This low number is in stark contrast to the number of trade mark applications – a total of 161,841 received by the MPTO during the same time. Only 3.14% of the trade mark applications filed in 2017 were thus met with an opposition.

The new procedure has been criticized by the private and academic sectors. The most important criticism was that the system is more similar to a third-party observation rather than a proper opposition procedure because the MPTO is not obliged to consider any opposition filed. In our opinion, another reason for the low number of oppositions filed is the lack of trust in the procedure since the opposition is not notified directly to the applicant. We believe that this is a significant flaw in the efficiency and effectiveness of the system.

Challenges for IRs

The fact is that the notification means chosen by the legislator in opposition matters is publication in the Industrial Property Gazette. For applicants filing national applications in Mexico, this system is working and it allows them to meet the significantly short deadline for filing opposition – one month. However, for owners of International Registrations (IR) in which Mexico is a designated country, the outcome and experience are quite different.

The Industrial Property Law provides that once a trade mark application is filed, it will be published for opposition purposes within 10 business days. Any third party that considers its rights violated by the application will have the right to file an opposition within a non-extendable term of one month. If an opposition is filed, the MPTO will publish the application in question a second time in order to let the applicant know of the existence of an opposition as well as give the applicant a chance to submit a response, again within a non-extendable term of one month.

In the Madrid Protocol, the MPTO, as the receiving office, has a maximum of 18 months, of which it usually takes an average of 12 months, to carry out the examination of the designation. If required, the MPTO will issue a Provisional Refusal to be notified to the applicant via WIPO.

As mentioned, while the opposition is filed and published a second time within a period of approximately three months, counted from the date in which the IR is received by the MPTO, the designation will be examined in not less than 12 months. Normally an applicant will not appoint a local representative for each designation. The consequence in Mexico is that by the time the applicant receives the refusal via WIPO and appoints a legal representative who then reports the existence of an opposition filed by a third party, the time to respond to the opposition will have long since expired.

There have been many unfortunate surprises for IR owners. It is unpleasant for them to learn about the existence of a prior opposition when the legal representative in Mexico advises them how to overcome the refusal, and especially when the opposition cannot be contested anymore.

This important downside to the system did not seem important to the legislators. Despite the opportunities that they recently had to amend the law and offer a new alternative to IR owners, they decided instead to expand the catalogue of acts/applications that shall be notified by means of the IP Gazette. This means that they not only maintained the current notification system but promoted and encouraged it in a greater way.

Need to act quickly

Faced with such a situation, in our opinion, it is essential to appoint a local representative on each trade mark designated for Mexico and request the representative to watch the IP Gazette for any publication of the IR in question. In this way the applicant can make sure they are informed of any opposition against the application in question and also file a timely response. But you need to know about it first, and also you need to be quick in view of the one-month deadline. Perhaps most importantly, brand owners will want to know if it will be an issue in relation to an upcoming launch of a new product. The situation is far from ideal for the brand owners who will not want to be caught by surprise, and finding qualified local representation is essential in a situation where the new IP law is making matters worse.

Jonathan Rangel and Laura Collada are lawyers with Dumont Bergman Bider in Mexico City. Laura is also a MARQUES Council member and a member of the International Trade Mark Law & Practice Team

Posted by: Blog Administrator @ 14.21
Tags: International Registrations, oppositions, Mexico,
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EUIPO webinars in April

The EUIPO Academy's regular Tuesday webinars restarted today after the Easter break. Today's webinar was on the recent study on the role of free trade zones on counterfeit trade (on which topic see this recent Class 46 post).

Coming up later this month are:

  • The transposition phase of the trade secrets directive (17 April)
  • Pharma marks in opposition proceedings (24 April)
  • Regulations of use of EU certification mark applications (24 April)

Full details, and links to registration, are available on the EUIPO Academy Learning Portal.

Posted by: Blog Administrator @ 11.04
Tags: EUIPO, Academy, ,
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"BLACK FRIDAY": Not a trademark, just a day for special shopping deals

The German PTO has seen the light in the dark of the "Black Friday" battles: The term has been declared free for all to use in commerce, signaling the end of a trademark monopoly that has been aggressively exercised against German retail during the past 18 months. Your author, a trademark litigator at Hogan Lovells, assisted PayPal in securing this important victory for the entire German retail market.

The words "Black Friday" resonate with bargain hunters across the globe. Black Friday, the day after Thanksgiving, has a long tradition of special deals and promotions. It is by far the most profitable day of the year for retailers in the US, where the tradition originated. And in the age of global e-commerce, Black Friday as a day for special sales promotions has also become entrenched in many other markets, including Germany. So the commercial attraction of the phrase "Black Friday" is obvious – and holding a monopoly over its use in advertising and retail would be highly profitable. Hong Kong based Super Union Holding Ltd. went down this road when it obtained a German trademark registration for "Black Friday" that covers nearly every retail service under the sun. Following the acquisition of the mark in 2016, the trademark owner and its licensee Black Friday GmbH started to aggressively monopolize and capitalize on the word mark. Numerous retailers in Germany received propositions for expensive licensing deals or were slapped with cease and desist letters warning them off a use of "Black Friday" in their sales promotions. The aggressive enforcement culminated in a lawsuit with significant damages claims against a leading global online shopping platform.

This commercialization strategy caused considerable stir in the German market. Many retailers resorted to alternative wording such as "Super Friday" and shifted their sales to the less hazard-fraught "Cyber Monday". Eventually, more than 13 cancellation requests were filed against the German trademark registration for "Black Friday". PayPal, itself not the target of any enforcement measures, decided to join the cancellation proceedings to take a stand for the rights and interests of retail. PayPal, along with many other free market advocates, takes the position that the phrase "Black Friday" falls into the public domain and must be freely available to all market players to use for sales promotions and in advertising. Originally coined in the US, "Black Friday" has long become a colloquial and established term in many other countries, including Germany, where the concept was introduced more than 10 years ago by several major global retailers.

In its decision of 27 March, the German PTO has followed this line of arguments, holding that the term "Black Friday" lacks distinctiveness and is not suited to identify commercial origin. The decision is based on the extensive evidenced produced by 13 of the cancellation applicants, demonstrating the long-standing use of "Black Friday" in Germany and related media coverage. The Office found that by 2013, when the trademark application for "Black Friday" was filed, the term had already become colloquial. And it is increasingly becoming entrenched even further in German market customs. Just like so many other festivities, social trends and customs, "Black Friday" has found its way from the US to Germany and has become a part of the local language and culture.

Super Union will surely appeal the decision, given its vast commercial implications. But PayPal and the other 12 successful applicants have now struck the first blow in the dismantling of a monopoly that was flawed from the start. We can only hope that upon appeal, the German Federal Patent court will expedite its proceedings, so that German retail obtains legal certainty on the use of "Black Friday" before the next sales day comes up on 23 November 2018.

Decision of the German Patent and Trademark Office of 27 March 2018 (ref. no. 30 2013 057 574 – S 33/17/Lösch) (not yet published)

Posted by: Anthonia Ghalamkarizadeh @ 11.00
Tags: Black Friday, retail, Super Union, sales, promotions, Thanksgiving, German retail, online retail,
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European Observatory Private Sector Meeting - a report
Petra Herkul at MARQUES Spring Meeting

Class 46 is pleased to bring an update from the new Chair of the MARQUES Anti-Counterfeiting and Parallel Trade Team, Petra Herkul. Petra writes:


On Thursday March 22 the current and former chairs of the ACPT Team joined the European Observatory Private Sector Representatives Meeting.

The Observatory

For those not familiar with this institute, the Observatory, formally the European Observatory on Infringements of Intellectual Property Rights, is a network of experts and specialist stakeholders, established in 2009 as part of the EU Commission’s Internal Market and Services Directorate-General, and in 2012 entrusted to the EUIPO. More information can be found here. The Observatory consists of working groups that discuss specific topics in the field of IPR infringement and counterfeiting.

In the Private Sector Representatives Meeting, representatives of various organizations, including MARQUES, meet with European Commission Representatives and EUIPO representatives to discuss a large variety of topics.

In the March meeting the Observatory activities and European Commission initiatives were presented and discussed. The private sector representatives had the opportunity to provide their feedback and input on the various topics.

Support from brand owners

Three topics were discussed which require support from brand owners.

The EDB Forum which will be taking place in Alicante on 13 and 14 June this year. The purpose of this forum is to connect enforcers and right holders making use of the EDB. As soon as EUIPO opens registration, MARQUES will provide more information.

IPR TechWatch of Observatory: Since new technologies are likely to have ann impact on IPR infringement and counterfeiting and the fight against this, the Observatory is interested in members with knowledge of or interest in this topic. If any members are willing to share experiences or are aware of any initiatives in this field please contact MARQUES ERO Alessandra Romeo.

Blockathon: This year the EUIPO will organize a so called Blockathon, a coding competition that will last four days, in which a large number of people, such as computer programmers, software developers, subject matter experts and other stakeholders meet to engage in collaborative computer programming. The goal of this competition is to find solutions for supply chain tracking and tracing to simplify the distinguishing of fake products from genuine ones. More information will follow but MARQUES members are already invited to consider participation, sponsorship, exhibiting products and explaining challenges.

MARQUES is pleased to be part of this institute, allowing us to provide input from the brand owners’ perspective.

If you are interested in more detailed information you can find this on the Observatory website or by contacting Petra Herkul via the ACPT Team page.

Posted by: Blog Administrator @ 12.10
Tags: ACPT, Observatory, EDB Forum, IPR TechWatch, Blockathon,
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