TUESDAY, 20 FEBRUARY 2018
EUIPO Transparency Portal
Have you ever found it hard to track down a document you need on the EUIPO Register of Public Documents? If, so help is at hand: the Office has launched a Transparency Portal, a searchable entry point for all documents in the Register.
For ease of access, documents are organised into five categories:
The main documents available include:
The Portal will include all new documents when they are published.
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FRIDAY, 16 FEBRUARY 2018
Schweppes SA v Red Paralela SL: more details
Further to our blog post on January 11 on Case C-291/16; Schweppes SA v Red Paralela SL in relation to the preliminary ruling of the Court of Justice of 20 December 2017, Class 46 has received a note from David Gómez and Morgan Schaaf, the lawyers acting for Schweppes, that seeks to bring additional clarification to the legal question of trade mark exhaustion, as it was referred to the Court of Justice by the Spanish judges of the Juzgado de lo Mercantil No 8 of Barcelona. We are pleased to publish their note in full below:
The said judgment refers to the exhaustion of trade mark rights. It particularly deals with a case where the trade mark rights belong to different owners as they were split in past voluntarily transactions between different group of companies. That said, in the present matter the Schweppes® trade mark belongs to Coca-Cola in the United Kingdom (as owner of a UK trade mark registered at the Intellectual Property Office); and the same trade mark belongs to Schweppes in Spain (as owner of a Spanish trade mark registered at the Spanish Patents and Trademarks Office). In this respect, it is important to highlight that the trademark Schweppes® is not registered as a European trade mark at the EUIPO. Thus, in such circumstances, the CJEU analyses in what conditions the exhaustion of trade mark rights apply in a case where the Schweppes® tonic produced by Coca-Cola in the United Kingdom is imported into Spain by third parties, where the exclusive rights do not belong to Coca-Cola but to Schweppes.
The CJEU states that EU law does not preclude the proprietor of a national trade mark from opposing the import of identical goods bearing the same trademark originating in another Member State, in which that mark is owned by a third party, except when following that assignment, the owner, either acting alone or maintaining its coordinated trade mark strategy with that third party, has actively and deliberately continued to promote the appearance or image of a single global trade mark, thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark.
Additionally, the CJEU states that the proprietor can oppose to the importation of the referred products, provided that there are no economic links between him and the third party, in the way that they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of those marks, so that it is possible for them to determine, directly or indirectly, the goods to which the trade mark is affixed and to control the quality of those goods.
At all events, the CJEU has not decided if in the Schweppes case the doctrine of exhaustion of trade mark rights has to be applied or not, since the ultimate decision on whether the Schweppes Group can oppose to the commercialization in Spain of Schweppes® products manufactured in the UK by Coca-Cola depends exclusively on the national courts and the appraisal of evidence on a case-by-case basis, in view of the evidence submitted by the parties in the proceedings before them, as regards whether or not (i) there is an economic link between Coca-Cola and Schweppes International; (ii) they coordinate their commercial policies; or (iii) have agreed to exercise a joint control over the use of those marks.
David Gómez and Morgan Schaaf, Baylos, Madrid
This case is now back before the Spanish courts. As it clearly deserves the utmost attention, Class 46 will continue to follow its development and we will provide further updates in due course.
For further reading, the case has also been examined in the case law review published by the EUIPO in the January 2018 edition of Alicante News.
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MONDAY, 5 FEBRUARY 2018
New paper on scandalous marks worldwide
If you were at last year's MARQUES Annual Conference, you will almost certainly remember the entertaining and informative session on scandalous marks around the world (pictured right), which was accompanied by a warning and a pair of earplugs for everyone in the audience.
Now the IP Emerging Issues Team has published a paper with tables showing the rules on immoral and scandalous marks in 39 countries.
History, culture, religion and technology all play vital roles in what is deemed morally acceptable in each country of the world. So the Team invited practitioners to respond to a questionnaire regarding permitted and prohibited uses of scandalous, offensive and immoral trade marks in their respective countries.
In particular, they focused on statutes and case law that recognise specific cases of refused marks, and considered which factors were relevant in determining whether a mark was scandalous or considered immoral or offensive.
The majority of the 39 countries do not have a a clear and fixed definition of what is termed scandalous or immoral so it is important to consider the cultural, political, religious and linguistic history and background of each country. As societies become more or less tolerant, where should the limits be drawn?
MARQUES members can read and download the paper here (log-in required).
This is an ongoing project, and MARQUES members are invited to contact the Team with details of other countries to include.
An article on the paper is included in the January 2018 issue of HouseMARQUES, which also includes pieces on the Swedish trade mark scam case, the Spring Meeting, a new study on geographical indications, the new IP Key China project and much more. Read it here.
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FRIDAY, 2 FEBRUARY 2018
EUIPO publishes Q&A on hard Brexit
The EUIPO posted a Q&A document on the impact of the UK’s withdrawal from the EU on the EU trade mark and Community design on its website in January.
The document states: “Subject to any transitional arrangement that may be contained in a possible withdrawal agreement, as of the withdrawal date, the EU rules in the field of trademarks and designs no longer apply to the United Kingdom.”
The main consequences of this are addressed in 29 questions and answers. The Q&A does not consider future – and so far unknown – specific bilateral or unilateral arrangements, nor does it take into account the elements set out in the EU’s guidelines issued for the negotiations under Article 50.
The MARQUES Brexit Task Force will review these documents. To the extent that they raise issues of concern to brand owners, MARQUES will continue to make the position and interests of its members known to the EUIPO, EU Commission, UK government and others involved in the Brexit negotiations.
The MARQUES position paper on Brexit, published in November last year, is available to download here.
The UK IPO’s Brexit guide was updated on 1 November last year and is available to read here.
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WEDNESDAY, 31 JANUARY 2018
GC: two's company, three's a crowd and four's still not a valid mark
In Case T-44/16, the General Court (GC) had to decide on the validity of an EU trade mark (EUTM) for the below figurative sign, which was deemed to consist of essentially four elements. The case turned on the question of whether these elements were functional.
The Applicant, Novartis AG, successfully registered the EUTM at issue for "pharmaceutical preparations for the treatment of dementia of Alzheimer's type" in October 2012. The Applicant manufactured pharmaceutical products, including a product called "Exelon" that was used for the treatment of Alzheimer's disease. Exelon, which was administrable by transdermal patch, enjoyed patent protection until July 2012.
The intervener, SK Chemicals GmbH, filed an application for a declaration of invalidity against the EUTM, relying, in particular, on the absolute ground of invalidity laid down in Article 7(1)(e)(ii) of Regulation No 207/2009. According to that provision, signs are barred from registration if they consist exclusively of the shape of goods which is necessary to obtain a technical result.
The EUIPO's Cancellation Division upheld the application for a declaration of invalidity, and the Fifth Board of Appeal of the EUIPO dismissed the Applicant's appeal.
In today's decision, the GC confirmed that the contested EUTM is invalid. As a preliminary point, the Court pointed out that Article 7(1)(e)(ii) of Regulation No 207/2009 makes no distinction between three-dimensional shapes, two-dimensional shapes or two-dimensional representations of three-dimensional shapes. Hence, said the Court, the provision also applies to a two-dimensional shape such as a transdermal patch. The GC then recalled that (1) the essential characteristics of the sign have to be properly identified and (2) that it has to be examined whether they all perform a technical function of the goods at issue.
In the GC's view, the Board of Appeal was correct in finding that the contested EUTM contained four essential characteristics, namely:
The GC rejected the Applicant's argument that the colour of the patch was a further essential characteristic of the sign. The perception of the sign by the average consumer is not a decisive element in this regard, said the GC. The consumer may not have the technical knowledge necessary to assess the essential characteristics of a shape and, therefore, certain characteristics may be essential from his point of view even though they are not essential in the context of analysis of functionality.
Next, the Court upheld the Board of Appeal's findings concerning the technical function of each of the four essential characteristics of the sign:
The Court was not swayed by the Applicant's argument that Article 7(1)(e)(ii) of Regulation No 207/2009 required a single technical result, whereas the Board of Appeal identified four different technical functions. Referring to its previous case law, the GC established that it was not necessary for each essential characteristic to fulfil the same function. The "technical functions may be different so long as the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result" (para. 38 of the judgment). In the present case, this result was the administration of the medicinal product through a transdermal patch.
It is good to see that the GC has finally abandoned its previous stance, according to which the examination of the mark for the purpose of applying Article 7(1)(e)(ii) EUTMR was limited to the graphical representation of the mark (see, for instance, Case T-416/10, reported here). This previous stance imposed an excessively high standard on the assessment of functional shapes which would make it possible to circumvent the prohibition on monopolisation contained in Article 7(1)(e)(ii) EUTMR (as Advocate General Szpunar explained in C-30/15 P, reported here).
In line with the CJEU's case law, the GC has now confirmed that the competent authority may carry out a detailed examination which takes into account, in addition to the graphic representation, material relevant to identifying appropriately the essential characteristics of a sign and their technical function, including documents relating to previous patents describing the functional elements of the shape concerned (e.g, the images on the right refer to an earlier patent and have been taken from the contested decision of the Board of Appeal).
Today's judgment is highly recommended for readers with a desire to brush up their knowledge on the principles established by the CJEU for applying Article 7(1)(e)(ii) EUTMR.
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FRIDAY, 26 JANUARY 2018
Greece: Compulsory mediation for civil TM disputes - but not right now
The recent Law 4512/2018 (published 17 January 2018) brings about a significant change in TM litigation in Greece. Under the new law, all civil disputes regarding trademarks (and also patents and industrial designs) must first go through a mediation process, before finding their way to court. The mediation attempt is compulsory and the case will not be heard if mediation has not failed first.
The law provides for a rather bureaucratic procedure, as the prospective plaintiff must file a request with the newly set up Central Mediation Authority for the appointment of a mediator (from the list of accredited mediators) who will invite the other party to mediation. According to the law, the mediation is to be concluded within 30 days following the initial invitation. Attorney presence is compulsory during the mediation procedure.
In case the parties find common ground, their agreement can be filed with the Secretary of the court of jurisdiction of the dispute and become an enforceable title.
Mediation does not prohibit the filing and hearing of temporary relief measures (preliminary injunction action).
The new process will be applicable as from 17 October 2018.
Obviously, time will tell whether obligatory mediation will produce more efficient tackling of trademark disputes. Though an avid supporter of quick out of court resolution of disputes, this blogger is not particularly optimistic. The obligatory and quasi-bureaucratic character of the scheme introduced, practically adds a pre-trial phase for aggrieved TM owners. This blogger has found that "when there is a will there is a way" and has yet to experience an instance where both parties were interested in amicable resolution, willing to go some distance to achieve it, and this did not happen. So he is unsure whether compulsory mediation will increase the number of amicable settlements of IP cases in Greece.
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WEDNESDAY, 24 JANUARY 2018
General Court: a good read with your morning coffee..
In Case T‑398/16, the General Court annulled the decision of the Board of the Appeal (BoA) which rejected the opposition brought by Starbucks Corp. against EUTM application filed by Mr. Nersesyan on the basis of Article 8(1) (b) and 8(5) of the EUTMR.
Starbucks based the opposition on nine EU trade marks, one national UK mark and one Spanish mark. Consequently, the relevant territory was the EU, including the UK and Spain and the relevant public is the average consumer.
The marks and services which were compared by the EUIPO are as follows:
Firstly, it was not disputed by the parties that the services are identical since they overlap with each other at least partially.
Second, as regards the comparison of the marks, without addressing the issue of the colour green, the BoA stated that the marks consisted of :
1) a black circular device with a stylised picture of a mermaid/ coffee bean-shaped musical notes in the centre surrounded by a white circle;
2) the word ‘starbucks’ above that central element and the word ‘coffee’ were both written in the same white, font letters;
3) there were two small white stars/coffee beans at the right- and left-hand sides and that there was another white circle around those elements;
4) moreover, the word ‘starbucks’ formed a distinctive and dominant element and the figurative element depicting a mermaid are distinctive and co-dominant within the overall impression of the signs,
5) the word ‘coffee’ is descriptive in respect of the goods and services concerned and the other figurative elements would be perceived as decorative and were therefore non-distinctive.
Consequently, the BoA found that those marks completely differed in their distinctive and dominant elements and that they only resembled each other in the word ‘coffee’, which was placed in a different position, and the fact that they represented black circular devices with white elements, and in the letter type used for the respective word elements. However, as those elements were descriptive or non-distinctive, the BoA found that those similarities could not render the marks similar from a visual point of view.
From a phonetic standpoint, the marks were also found to be dissimilar because they only resemble each other in the word ‘coffee’, if that word were pronounced. The elements ‘rocks’ ‘starbucks’ may have similar endings but overall, the pronunciation of those two words is therefore different.
From a conceptual standpoint, the earlier marks conveyed the concept of a mermaid whereas the mark applied for conveyed the concept of musical notes and ‘rock’ in the sense of ‘moving or swinging to and fro’. Therefore the marks were conceptually dissimilar and given the descriptive meaning of the word ‘coffee’, even if the marks have that word in common it did not create any relevant conceptual similarity.
Therefore the marks were found to be dissimilar.
The GC disagreed with the assessment of the BoA and reasoned as follows:
1) according to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see Matratzen Concord, T‑526/14). In this case, even if marks completely differ in their distinctive and dominant elements, namely the word “rocks” + "coffee bean-shaped musical notes" on one hand and the word “starbucks” + " mermaid "on the other hand’, it cannot be found that other elements are negligible in the overall impression which those marks. In particular, the presence of the word ‘coffee’ in the expressions ‘starbucks coffee’ and ‘coffee rocks’ is a factor which has to be taken into consideration, even though that word is descriptive of the goods and services, for which Starbucks, moreover, claimed that some of its earlier marks have a reputation.
2) Although descriptive elements of a trade mark are not generally regarded by the relevant public as being dominant in the overall impression conveyed by that mark, that does not, however, mean that those descriptive elements are necessarily negligible in that overall impression (see TRIDENT PURE, T‑491/13).
3) even though the word elements in a trade mark are, in principle, more distinctive than its figurative elements, because the average consumer will more readily refer to the goods or services by quoting their name than by describing the figurative element of the trade marks, that is not the situation in the present case:
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