FRIDAY, 13 JULY 2018
Feasibility analysis for an EU digital deposit system

The European Observatory on Infringements of Intellectual Property Rights has published a feasibility analysis for an EU digital deposit system. Such systems exist in Benelux, Spain, France, Italy, Hungary, Portugal and Romania while there are also private systems in the EU market.

The study presents three options for an EU digital deposit system:

  1. A basic system whereby EUIPO would not store content submitted but simply provide reliable electronic proof of the existence of the content at a given moment in time.
  2. A basic system based on (1) that would include a deposit service: it would store content uploaded by users.
  3. An advanced system building on (2) which would go in the direction into which current electronic systems are being developed, and even beyond so as to be at the forefront of development.

All three systems would be fully electronic and confidential, using timestamping and cryptography. They would work on a voluntary basis.

Analysis of the systems by EUIPO departments found that, overall, an EU digital deposit system is feasible from a legal and technical perspective. But before such a system could be set up there would need to be a legal basis, and investment in a public key infrastructure (PKI).

The feasibility analysis consisted of four steps: (1) gathering information on existing national practices concerning voluntary registration or deposit systems; (2) proposing different options for the structure of a Digital Deposit System; (3) performing a legal and technical feasibility evaluation of the proposed options; and (4) assessing the impact and costs of such a solution.

The report found that an EU digital deposit system “could address some of the challenges created by digital technologies” notably by increasing legal certainty concerning the ownership of content. It could also “stimulate the legitimate use of content, and help rights holders to protect their rights in cases of infringement claims”.

Read the full feasibility analysis here.

Posted by: Blog Administrator @ 12.39
Tags: digital deposit system, European Observatory, ,

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WIPO domain name workshop - register now

WIPO is hosting the Advanced Workshop on Domain Name Dispute Resolution: Update on Precedent and Practice in Geneva on 9 and 10 October 2018.

The workshop will focus on UDRP case trends covering the most relevant substantive and procedural issues. It will also provide an update on ICANN’s review of Rights Protection Mechanisms including those available in connection with the launch of new gTLDs, in addition to the UDRP.

This year’s workshop will also take stock of any relevant observations from the GDPR’s impact on UDRP cases.

The workshop is aimed at trade mark practitioners and trade mark owners/domain name registrants. It will include presentations, break-out sessions and discussion.

The presenters are David Bernstein of Debevoise & Plimpton LLP and Tony Willoughby, IP consultant.

The workshop is limited to 55 people and costs Sfr500.

For more information, and to register online, see the dedicated page on WIPO’s website.


Posted by: Blog Administrator @ 15.51
Tags: WIPO, domain names, ,

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General Court: vs EUIPO

In an appeal from the First Board of Appeal of EUIPO of 20 October 2016 (Case R 2452/2015-1) relating to opposition proceedings between the French Republic and, the General Court last week held that the EUIPO's Board of Appeal had been correct to allow the opposition to registration of the combined word and device mark "" due to a likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009 with the opponent's conceptually identical word and device mark "France", registered for identical and similar services; case:, Inc. vs EUIPO, T-71/17, of 26 June 2018.


The signs in question

The applicant's mark on top, the opponent's mark below.

Similarity of the signs (and goods and services)

Looking at the similarity of the signs, the court recalled at the outset that it must be "be borne in mind that, in opposition proceedings, the fact that an earlier EU trade mark has at the very least the minimum level of distinctiveness required in order to be registered cannot be called into question. The distinctiveness of a mark may be called into question by the applicant only in proceedings for the cancellation of the earlier mark, under Article 52 of Regulation No 207/2009 (now Article 59 of Regulation 2017/1001)" , citing "Aldi Einkauf v EUIPO — Weetabix (Alpenschmaus)", (T-103/16).

The judges found that  "considered as a whole" both marks only shared a low degree of visual similarity:  “the mark applied for contains a pentagon and the abbreviation ‘.com’, elements that are not present in the earlier mark. By contrast, the earlier mark contains a figurative element depicting an Eiffel tower in black, a colour that does not appear in the mark applied for, and a scarf in blue, white and red, which is another element that does not appear in the mark applied for". .. " although the signs at issue share the colours blue, white and red, the way in which they are set out differs. Thus, the colour blue is dominant in the impression conveyed by the mark applied for. By contrast, the impression conveyed by the earlier mark is dominated by the colour black, which, moreover, is not present in the mark applied for, whereas the colours blue, white — which has not been claimed by the applicant — and red play a less important role."

The court further found the marks phonetically "almost identical", notably the relevant consumers would regard the figurative depiction of Eiffel tower as “a mere illustration of the word element "france", without, however, saying its name when reading the earlier mark”.  The court also pointed out that the phonetic reproduction of a composite sign "corresponds to that of all its word elements, regardless of their specific graphic features, which, instead, fall to be considered when analysing the sign visually. Therefore, the figurative elements of the earlier sign should not be taken into account for the purpose of the phonetic comparison of the signs at issue".  Thereby the court rejected the applicant's unusual argument that consumers would "read" the visual elements (here: the Eiffel tower device) and translate them into (spoken) word(s).

Conceptionally, the marks were identical. The court held that the signs "refer to the same concept, represented by the word element ‘france’ and the figurative element depicting the Eiffel tower, that is to say, France, the signs at issue are conceptually identical, and the element ‘.com’, present only in the mark applied for, is not sufficient to enable those signs to be differentiated conceptually."


Likelihood of confusion

The General Court thus summarised that the marks shared a low degree of visual similarity, were almost identical phonetically and were conceptually identical. Moreover, the applicant did not dispute the Board of Appeal’s assessment that the services in question were in part identical and in part similar.  In light of this the General Court concluded that there was a likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009.  In this context the General Court once again stressed that the fact that the earlier mark was of weak distinctive character did  not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, this was only one factor among others involved in that assessment. Consequently, even in a case involving an earlier mark with weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (citing PAGESJAUNES.COM, T-134/06).


Request to refer the case to the CJEU

Somewhat unusually but creatively, the applicant had also requested that the General Court refer questions concerning this case to the CJEU for a preliminary ruling. The General Court rejected this as inadmissible: the referral procedure under Article 267 TFEU was an instrument for cooperation between the CJEU and the national courts. Furthermore, the powers of the General Court were those set out in Article 256 TFEU, according to which it has no power to refer questions to the CJEU.


Posted by: Birgit Clark @ 14.06
Tags: General Court, France,

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Greece - Compulsory mediation no more?

Readers of this blog may recall an earlier post relating to the introduction of compulsory mediation in Greek TM litigation proceedings, effective as from October 2018. According to Law 4512/2018, a main action for a significant radius of civil disputes (including TM infringement matters) would not be heard, unless a formal mediation attempt had taken place first.  

This controversial development has now suffered a significant blow: According to various new sources, the Administrative Plenary of Areios Pagos, the Greek Supreme Court, has adoped an Opinion holding that compulsory mediation in civil disputes is inconsistent with the Greek Constitution. The opinion appears to be based on the premise that the law adds an additional, costly for individuals, stage (and obstacle) to citizens’ access to justice. Accordingly, the law prejudices the core of the right to judicial recourse. It is interesting to note that the Opinion is said to have been adopted on a narrow margin of 21 – 18 votes.

The Opinion is not binding upon the Greek courts or government and cannot annul the law; the Administrative Plenary of Areios Pagos is not a “constitutional court”, nor is there such court in Greece. However, in practice, it amounts to a ruling of unconstitutionality of the law. It is clear that lower courts will follow the Opinion and will hear cases, even if a mediation attempt has not taken place. It is also possible that the relevant provisions of Law 4512/2018 will be abolished, although the government may try to set reduced mediation costs in an effort to save the law. Stay tuned….  

Posted by: Nikos Prentoulis @ 20.38
Tags: Greece, mediation, constitutionality, litigation,

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June 2018 issue of HouseMARQUES

The latest issue of the HouseMARQUES newsletter is now available to read on the MARQUES website. 

This issue includes:

  • MARQUES hosts CTA delegation in Netherlands and UK - report and pictures
  • Hague Agreement seminar in London
  • Judges Meeting in Belgrade
  • Meet the Judges in Stockholm - register now!
  • MARQUES comments on EU copyright reform
  • Swedish scamming decision now final
  • MoU signed at Blockathon
  • Synthesis report published for World AntiCounterfeiting Day

Read the latest issue here and see the archive of all issues here.

For full access to the MARQUES website and to be notified when newsletters are published, become a MARQUES member. Members also benefit from discounted rates to attend the Annual Conference.

Posted by: Blog Administrator @ 20.25
Tags: HouseMARQUES, CTA, Hague,

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Violation of EUTM or RCD is not IP offence - Finnish Supreme Court

Marjut Alhonnoro reports on a precedent from the Finnish Supreme Court that violation of a European Union trade mark or design right is not punishable as an intellectual property offence in Finland

In its judgment of 26 April 2018 (case KKO:2018:36), the Finnish Supreme Court has confirmed that a violation of a Union regulation based trade mark or design right is not punishable as an intellectual property offence in Finland, because the wording of the intellectual property offence in the Criminal Code of Finland only covers a violation of national laws.

Criminal penalties in Finland

According to Chapter 49, Section 2 of the Criminal Code of Finland, a person who, in violation of the Trade Mark Act, the Registered Designs Act, the Act of the Protection of Semiconductor Topographies, the Utility Models Act or the Plant Variety Rights Act and in a manner conducive to causing considerable financial loss to a person holding a right, breaches the right to a trade mark, the exclusive right conferred by a patent, the right to a registered design, the right to a semiconductor topography, the right to a utility model or a plant variety right shall be sentenced for an intellectual property offence to a fine or to imprisonment for at most two years.

The statutory definition does not mention the breach of Community Trade Mark Regulation 207/2009 (hereinafter CTMR, which was still applicable to the case at hand) or Community Design Regulation 6/2002 (CDR) as grounds for an intellectual property offence, and the Finnish Supreme Court has now confirmed what that means for a violation of rights based on the CTMR or CDR.

Facts of the case

A and B were charged with two intellectual property offences for importing 1000 steam mops and 1320 choppers that were copies of C Inc’s H2O MOP mops and D GmbH’s Nicer Dicer choppers and infringed the complainants’ trade mark and design rights according to CTMR and CDR.

The infringed rights were EUTM registrations numbers 1063367, 6379581, 005305529, 011166171 and 1199152 and RCD registrations numbers 001791898-0001 – 0009 and 001931213-0001 – 0009, and the Helsinki District Court deemed it proven that the infringements were intentional. The District Court considered that CTMR and CDR are comparable to the Finnish Trade Mark Act and Registered Designs Act, so it regarded CTMR and CDR as falling within the scope of the criminal provision. Consequently, the District Court sentenced A and B to pay a fine for two intellectual property offences and ordered the confiscated infringing products forfeit to the State.

RCD 001791898-0002     RCD 001931213-0009

A and B appealed the District Court's decision before the Helsinki Court of Appeal which overruled the District Court’s decision and dismissed charges on the grounds that the CTMR and CDR did not contain any criminal provisions, wherefore a Community trade mark (CTM) and a registered Community design (RCD) could not be considered comparable to the national rights in relation to criminal sanctions. In consideration of the principle of legality, the Court of Appeal held that it was not possible to interpret Chapter 49, Section 2 of the Criminal Code to cover a violation of the CTMR and CDR.

Supreme Court appeal

The public prosecutor appealed the decision before the Supreme Court claiming that an intentional violation of the CTMR and CDR should be punishable under the Criminal Code. A leave of appeal was granted, and the Supreme Court reasoned as follows:

According to Chapter 3 Section 1.1 of the Criminal Code of Finland, a person may be found guilty of an offence only on the basis of an act that has been specifically criminalised in law at the time of its commission. According to the preparatory legislative materials, the principle of legality means, inter alia, that a Court cannot interpret the letter of the law beyond its literal meaning when applying penal provisions, because the outcome of interpretation must always remain foreseeable.

The Supreme Court found that the wording of the provision on intellectual property offence in the Criminal Code is clearly narrowed down to the violation of certain national laws, so the violation of the CTMR and CDR cannot be punishable on the basis of the Criminal Code per se. Furthermore, the Trade Mark Act and Registered Designs Act do not contain any such provision on the grounds of which they could be applicable to the CTM and RCD in a manner relevant for criminal liability. Therefore, the potential criminal liability for a violation of a CTM or RCD should be based on other provisions, if there are any.

The Supreme Court took note of the fact that the European Court of Justice has ruled that Member States are obligated to make sure that a violation of a “Union right” is sanctioned on the same conditions as the violation of a national right (judgment of 20 December 2017, Vaditrans, C-102/16, EU:C:2017:1012, paragraph 55 and judgment of 10 July 1990, Hansen, C-326/88, EU:C:1990:291, paragraph 17). Nevertheless, the Supreme Court noted that, according to established case law of the CJEU, a Union directive or regulation cannot, of itself and independently of national legislation, have the effect of determining or aggravating criminal liability (Vaditrans, paragraphs 56 and 57). Therefore, the Court concluded that criminal liability cannot follow from the CTMR and CDR alone.

Consequently, the Supreme Court found that a violation of the CTMR and CDR cannot constitute an intellectual property offence in accordance with Chapter 49 Section 2 of the Criminal Code and concluded that A and B could not be punished for an intellectual property offence. The decision in Finnish can be found here.

Amendments expected

It has been widely acknowledged in Finland that the Criminal Code is inadequate in this respect, and it is expected to be amended in the context of the Finnish Trade Mark Law reform currently in progress. The draft proposal for a Government Bill to the Parliament for a new Trade Mark Act has already been prepared, and the proposal also addresses the need to amend the Criminal Code as far as a violation of EUTMR is concerned.

The current proposal still fails to address the violation of CDR, but this deficiency has been raised in statements given on account of the proposal, so hopefully the deficiency will be corrected before the amendment enters into force.

Thanks to Marjut Alhonnoro of Roschier, Finland for contributing this post!

Posted by: Blog Administrator @ 17.07
Tags: EUTM, RCD, Finnish Supreme Court, KKO:2018:36,

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FRIDAY, 22 JUNE 2018
How to follow the EU Blockathon

The EU Blockathon 2018 takes place from 22 to 25 June at Autoworld in Brussels. Registration for those attending starts at 9.00am today (22 June).

If you are not attending the Blockathon, you can follow the webcast at and via the EUIPO YouTube account.

The Blockathon Programme is available on the website.

The Awards ceremony is scheduled for 11.15am on Monday 25 June. At 12.15 on Monday a Memorandum of Understanding on online advertising and IP rights will be signed.

For more information about the Blockathon, see our previous posts: Blockathon – last chance to apply and MoU on online advertising and IPR to be signed.

Posted by: Blog Administrator @ 07.49
Tags: Blockathon, EUIPO, Andrus Ansip,

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