THURSDAY, 14 JUNE 2018
MoU on online advertising and IPR to be signed during Blockathon

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:

Background

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.

Posted by: Blog Administrator @ 08.51
Tags: Blockathon, EUIPO, Andrus Ansip,
Link: https://www.marques.org/class46?XID=BHA4648

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WEDNESDAY, 13 JUNE 2018
Swedish scamming decision now final

The Supreme Court of Sweden (Högsta domstolen) has refused leave to appeal against the Svea Court of Appeal’s judgment in the scam invoices case.

This means the appeal judgment, which sentenced several individuals for completed gross fraud, is now final and irrevocable and the criminal proceedings are closed.

More information about the Court of Appeal judgment (20 December 2017, case B 6403-16) is in this post on Class 46.

Read more about the latest developments on the EUIPO website.

Posted by: Blog Administrator @ 08.51
Tags: scammers, anti-fraud, Sweden Supreme Court,
Link: https://www.marques.org/class46?XID=BHA4647

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THURSDAY, 7 JUNE 2018
Scottish Glens, German Whisky and the question: Are you befuddled?

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.

Outlook

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

Posted by: Anthonia Ghalamkarizadeh @ 15.42
Tags: Glen Buchenbach, whisky, geographical indication, Scotch Whisky Association, CJEU,
Link: https://www.marques.org/class46?XID=BHA4646

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WEDNESDAY, 6 JUNE 2018
Observatory publishes Synthesis Report to mark WAC Day

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).

See also the following national media reports:

Posted by: Blog Administrator @ 14.36
Tags: Synthesis Report, Observatory, World Anti-Counterfeiting Day,
Link: https://www.marques.org/class46?XID=BHA4645

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TUESDAY, 5 JUNE 2018
Consultation on fighting illegal content online

Responses to the European Commission's public consultation on measures to further improve the effectiveness of the fight against illegal content online can be made up until 25 June. 

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.

Posted by: Blog Administrator @ 09.32
Tags: European Commission, piracy, ,
Link: https://www.marques.org/class46?XID=BHA4644

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MONDAY, 4 JUNE 2018
EUIPO webinars during June 2018

It is a busy month for EUIPO Academy Tuesday webinars. The following topics are scheduled:

  • Customs IP Enforcement - tips for rights holders (Intermediate, English) - 5 June, 11.30 am
  • Unitary character of EUTM (Advanced, English) - 12 June, 10.00 am
  • Solicitud en línea de Inspecciones y Legalizaciones (Intermediate, Spanish) - 12 June, 11.30 am
  • Decisions of the Trimester of the EUIPO Boards of Appeal (Advanced, English) - 19 June, 10.00 am
  • GIs as a basis of opposition (Intermediate, English) - 19 June, 11.30 am
  • Decisions of the Trimester of the GC and the CJEU (Advanced, English) - 26 June, 10.00 am
  • Distinctiveness of colour marks (Advanced, English) - 26 June, 11.30 am

Find out more about the webinars, join them live or listen again on the EUIPO Academy Learning Portal.

Posted by: Blog Administrator @ 22.13
Tags: EUIPO, Academy, webinars,
Link: https://www.marques.org/class46?XID=BHA4643

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FRIDAY, 25 MAY 2018
General Court: Luxottica secures a glaring win

In Case T-721/16 (available in French and Spanish), Luxottica successfully enforced its rights against a copycat word mark for its famous RAY-BAN brand.

The General Court (GC) annulled the decision of the 5th Board of Appeal (BOA) which had dismissed in part the opposition between the following parties:

Contested CTM - Applicant Xian Chen

Earlier Spanish mark - Opponent Luxottica Group SpA

Classes 9, 14 and 18

Class 9 - 'optical apparatus'

The Opposition Division (OD) partially upheld the opposition, on the basis of Article 8 (1) b) of Regulation No o  207/2009 (EUTMR) for all products included in classes 14 and 18 and for some of the goods included in class 9, in particular for sunglasses and spectacle frames.

The BoA  considered that there was only a very small degree of similarity between the signs at issue and that sunglasses and spectacle frames - for which the reputation of the mark was found to be proved- did not have sufficient proximity to the goods concerned so that a link between the marks at issue could not be established in the mind of the relevant public, within the meaning of the Article 8 (5)  of EUTMR, despite the reputation of the earlier mark.

The GC agreed with the EUIPO  regarding : 1)  the relevant public is the average Spanish speaking consumer and 2) the evidence presented by Luxottica, namely the figures relating to sales, advertising expenditure and market shares, as well as the various references to the success of the brand, resulted in the the brand enjoying a high level of knowledge among the relevant public for sunglasses and spectacle frames. In addition, the mark Ray-Ban occupies a consolidated position of approximately 25% of the sunglass market share in Spain, which is a fragmented market.

However, the Court disagreed with the BoA's assessment regarding the visual similarity of the mark: due to  the similar structure and composition of the marks at issue, the use of a similar handwriting and the resemblance of their initial letters 'r' and 'b', the elements of similarity outweigh the differences and that, consequently, the BoA made errors in the assessment of the visual similarity, which would have had to be qualified as average, instead of  verylow.  

Thus, in view of the exceptionally high reputation of the earlier mark, even if there is no direct link which can be established between the goods, the association between the marks can not be excluded, in particular in view of the degree of similarity between the marks and the definition of the relevant public as being being the general public with a moderate level of attention (see judgment of 25 January 2012, VIAGUARA, T-332/10).

The Court therefore held that the Board of Appeal infringed Article 8 (5) of EUTMR and annulled the contested decision.

 

Posted by: Laetitia Lagarde @ 10.56
Tags: Luxottica, ray ban, reputation,
Link: https://www.marques.org/class46?XID=BHA4642

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