In a guest post, Ricardo Alberto Antequera brings an important update on official patent and trade mark fees in Venezuela

On February 1, a year after announcing fee changes, the Venezuelan PTO (SAPI) finally published the new schedule of charges. Payment of official fees has been suspended since February 2018.  

This new resolution creates serious issues, at least for US IP holders, since it states that foreign entities must pay all official fees (either for pending matters or new petitions) in PETRO, a cryptocurrency created by Nicolás Maduro’s administration in February 2018 as a way to collect US dollars while avoiding US sanctions.

However, an Executive Order issued by President Donald Trump on 19 March 19 2018 banned transactions involving “any digital currency, digital coin, or digital token, that was issued by, for, or on behalf of the Government of Venezuela on or after 9 January 2018”.

This prohibition applies to (unless exempted by a licence granted by US authorities):

• United States citizens and permanent resident aliens;
• Entities organized under the laws of the United States or any jurisdiction within the United States (including foreign branches of such entities); or
• Any person within the United States.

The new SAPI Official Fees Schedule is retroactive to all transactions since it suspended fee payments, back in February 2018, and also establishes a 60-day term (which could be extended at SAPI´s sole discretion) to pay official fees for all national and foreign entities interested in maintaining patent or trade mark rights accepted for registrations during the suspension of fees.

In view of the above complex scenario, it is strongly recommended that brand owners outside of the US confer with their compliance team before proceeding with making payments in PETRO.

By Ricardo Alberto Antequera of Antequera Parilli & Rodriguez. Ricardo is a MARQUES member

Bas Kist of Chiever is one of the MARQUES members who has taken part in the latest series of EUIPO Stakeholder Quality Assurance Panels Project (SQAP) audits. In this interview for Class 46, he explains what is involved, how the audits work and what they can achieve

How did you become involved in the SQAP?

I received an email asking who would like to participate and responded to that. There have been four meetings (April, July and October 2018 and January 2019) and I have been to three of them. Two of the meetings were on examination decisions (absolute grounds) and two on opposition decisions (relative grounds).

Three representatives from MARQUES took part in the latest audit: myself, Roland Mallinson of Taylor Wessing and Zsófia Klauber of Danubia. Thomas Hvammen Nicholson of Protector Intellectual Property Consultants AS also represents MARQUES in the SQAP.

There were also representatives of other associations such as CITMA, ECTA, FICPI, GRUR, INTA and APRAM. Altogether there are more than 20 practitioners involved, including trade mark attorneys, attorneys-at-law and in-house counsel, and 18 took part in the most recent audit in January (see group picture above).

What happens at the meetings?

Each auditor gets given eight cases to review as the lead auditor. We take a close look at these decisions using the Office quality criteria, and then grade each decision in one of four categories: excellent, OK, containing non-critical errors or containing critical errors.

All the decisions we look at are selected randomly. We go quite deep into the cases, particularly oppositions where there is a lot to review. Opposition decisions take quite a lot of time to study – it takes about one-and-a-half days to review eight cases.

However, some of the absolute grounds decisions are very straightforward and they are either a simple refusal or acceptance so there is not much to say about them. Most of the absolute grounds cases are about distinctiveness so it is eye-opening to see the differences between people from different countries and professions – some are more strict than others. It gives you more understanding of the challenge EUIPO faces with different languages and cultures. Even as trade mark practitioners we don’t always agree!

What else do you do?

After we have gone through our eight cases, we also co-check another eight cases. Then the lead auditor presents each case to all the other auditors (who can see the files on their computers) and we discuss the cases one-by-one. After the lead auditor has presented their opinion, the co-checker says whether or not they agree. Then the EUIPO specialists explain their view: they are very open and it is useful to see how they are thinking.

If both the lead auditor and the co-checker agree that there were critical errors, then that is mentioned in the report. If there is disagreement, it is possible to have a vote of all the auditors.

The majority of decisions are OK and only a few are rated as excellent. Sometimes we do find critical errors and in some cases the Office specialists acknowledges that an error was made.

At the end of the meeting, there is a report summarising how many critical errors were found, and how to improve the quality of services. If the auditors agree there was a critical error, that will be in the report.

The meeting is also a good opportunity to meet the EUIPO representatives informally and see something of how the Office works.

What is happening in the future?

EUIPO is inviting applications to take part in the next SQAP meetings. There will be more meetings on absolute grounds and opposition cases for trade marks, and also a meeting on designs – though that will probably require fewer people because there are so few decisions.

I would definitely apply to take part again. I’ve been very impressed with the EUIPO organisation of the meetings: they are very open to listening to users. It is a nice way for the Office to look at its own work and involve users, and it generates a lot of discussion between the checkers, who bring different perspectives.

If anyone else is interested in applying, I would encourage them to do so if they have the requisite experience. It helps if you are used to reading decisions and already have a level of knowledge, as some of them can be quite complex. I would certainly recommend it!

Find out more about the SQAP on EUIPO’s dedicated page.

International registrations may be divided and, where certain conditions are met, may also be merged with effect from 1 February 2019. This follows amendments to the Common Regulations under the Madrid Agreement and Protocol made last year.

For more details about this development, read the update provided by Anthony Bengzon of the MARQUES International Trade Mark Law and Practice Team in the November 2018 issue of HouseMARQUES.

Further information is also available from WIPO and EUIPO.

The EUIPO Academy is hosting more Tuesday webinars this month, which might be of interest to readers. They are:

• Recent case law on designs (Advanced, English), 5 February, 10:00 am
• Legal proceedings before the CPVO and before its Board of Appeal (Advanced, English), 19 February, 10:00 am
• IP Expresso: The Protection of Non-Traditional Trademarks: Critical Perspectives (Advanced, English), 19 February, 12:00 pm
• EU Certification Marks – lessons learned from examination of first applications (Advanced, English), 26 February, 10:00 am

Go to the EUIPO Academy page to register and listen, and to hear recordings of previous webinars.

The first MARQUES EU Judges Meeting took place on 18 January, and featured presentations from current and former judges from Belgium, Finland, Germany, Portugal and the UK as well as members of the EUIPO Boards of Appeal and EU General Court

About 80 people attended the Meeting, which took place at the Hilton Amsterdam. The day was divided into six sessions, four of which addressed particular topics in EU IP law and two of which were round table discussions.

Jurisdiction issues

In the first session, Judge Anne Ekblom-Worlund of the Market Court, Finland and Prof Dr Alexander von Mühlendahl talked about jurisdiction issues in EU trade mark law. In particular, they discussed what happens when there are two or more cases pending in the same dispute, and where there is a choice of jurisdictions. Judge Anne Ekblom-Worlund described one case in Finland, involving the ALCO mark, where the jurisdiction of the Finnish courts had been questioned. Prof Dr Alexander von Mühlendahl referred to jurisprudence from EU and national courts on jurisdiction, including the Wintersteiger (C-523/10) and Nintendo (C-24 & 25/16) cases at the CJEU, the German Parfummarken case (I ZR 164/16) and the AMS Neve case (C-172/18), which was argued at the CJEU in January this year.

The presentations led to a lively discussion about the extent to which forum shopping exists, and whether it should be allowed or encouraged, in EU trade mark and design disputes.

The second session featured a presentation from Phillipp von Kapff of the EUIPO First Board of Appeal. He described the Boards of Appeal as being at the “crossroads” of case law, and highlighted the challenges that the Boards face, including the need to understand national law and the limitations posed by the parties’ evidence. His presentation focused on four topics: (1) playing with the systems; (2) public interest and scope of protection of the earlier mark; (3) equal treatment and coherence; and (4) clarity of the Register.

Complex marks

The subject of complex marks and those with weak/non-distinctive components was the subject of the fourth session, which was jointly presented by Prof Dr Joachim Bornkamm from Germany and Geoffrey Hobbs, QC of One Essex Court in the UK. Geoffrey Hobbs gave a paper asking “How close is too close?” and argued that a clear conception of what is similar and distinctive is lacking. He reviewed judgments including those in the Adidas (C-102/07), KOMPRESSOR (C-43/15P) and XKING (C-84/16) cases and highlighted a number of questions that they raise.

In his presentation, Prof Dr Joachim Bornkamm focused on the concept of dominance: which elements of a mark dominate the impression? He suggested that there is a “clear contradiction” between the approach of the German courts and the CJEU in this area.

Copycats and psychology

The fifth session represented a change of pace, as Femke van Horen, Associate Professor Marketing Department at Vrije Universiteit Amsterdam, invited the audience to complete a questionnaire on similarity in branding. This was followed by a presentation on the psychological process behind product imitation and copycats, in which Femke argued that more subtle imitations are in fact more effective copycats compared to blatant imitations: consumers are more likely to accept moderate similarity. The presentation was a development of her speech at the MARQUES Annual Conference last year.

Round table discussions

Sessions three and six were the round table discussions. In the former, Octavia Spineanu-Matei of the EU General Court and Sven Stürmann of the Second Board of Appeal provided an insight into how their forums work. The need for coherence was a theme of both speakers. Sven Stürmann pointed out that, given that there are about 30,000 Board of Appeal decisions, as well as some 3,500 from the EU General Court and CJEU and thousands more national judgments, it is not always easy to find relevant case law – though AI tools are likely to help. In the meantime, initiatives such as CP12 “Evidence in Appeal Proceedings” (which was approved in November), active case management (including using oral hearings, the Grand Board and sending cases back to the examiner) and quality management (including a coherence and consistency project) are helping to address consistency at the Boards.

Octavia Spineanu-Matei said that 301 IP cases were filed at the General Court in 2018, and consistency is a greater challenge especially with new judges being added. She also provided a helpful review of case law, identifying which issues are matters of fact (which the General Court has final jurisdiction over) and which are matters of law (which it does not).

The final round table featured Judge Eleonora Viegas from Portugal, David Stone, who is a Deputy High Court Judge in England & Wales and Els Herregodts of the Court of Appeals Brussels. They took part in a Q&A on topics such as the importance of CJEU rulings, the protection of word and non-traditional trade marks, evidence including surveys and remedies (including reimbursement of costs).

The moderators of the panels were Claus Eckhartt of Bardehle Pagenberg, Carles Prat of Baker McKenzie, Philippe Péters of NautaDutilh, Shane Smyth of FRKelly and Gregor Vos of Brinkhof. Chair of the MARQUES Council Gregor Versondert opened and closed the Meeting, which was followed by networking over drinks in the hotel.

Anyone who attended the Meeting can access the presentations here (log in required).

This article is extracted from the latest issue of the HouseMARQUES newsletter. Read the newsletter in full here.

In the latest guest post on the implementation of the EU Trade Mark Directive, Cristina Bercial-Chaumier discusses the Royal Decree-Law 23/2018 in Spain:

The Royal Decree 23/2018 of 21 December 2018 implementing the Trade Mark Directive 2015/2436 was published at the Official State Gazette on 27 December 2018 and entered into force for its main part on 14 January 2019.

The aim of the reform is to facilitate the registration of trade marks, reinforce their protection and to fight against counterfeiting. The role of the Spanish Trademark and Patent Office will be crucial after the reform.

The main change introduced will be the direct competence of the Spanish Trademark Office for invalidity and revocation proceedings. Nevertheless, the deadline for the implementation of this modification is not until 14 January 14 2023.

This change will accelerate and significantly reduce the costs for such proceedings.

It should be noted that from this date, it will be only possible to file invalidity and revocation actions before the courts as a counterclaim in infringement proceedings.

With respect to the most significant modifications that have already entered into force, we refer in particular to the following:

Elimination of the graphical representation requirement: this amendment will open the possibility to register so-called non-traditional marks such as sound, multi-media, motion marks and holograms.

Persons who can be proprietors of Spanish trade marks: any legal or natural person independently of his/her nationality, country of residence or establishment.

Clarification of the absolute grounds: inclusion of specific provisions for designations of origin (PDO), geographic indications (PGI), traditional terms for wine, traditional specialties guaranteed and vegetal varieties. Furthermore,  the prohibition of Article 5 (e) is drafted to include not only the shape but also other characteristics which will be imposed by the nature of the product, which will be necessary to obtain a technical result and which will confer a substantial value to the product.

Relative grounds: specification of PDOs and PGIs as relative grounds of refusal.

Reputation: The concept of well-known trade marks is eliminated from Article 8, while the concept of reputation is maintained benefiting from a higher protection. It will be irrelevant whether the goods and/or services involved are similar or dissimilar. An identity or similarity between the signs will be enough provided that an unfair advantage is sought or that the use of the latter sign is detrimental to the reputation or the distinctive character of the prior trade mark.

Rights conferred by the registration: the registration of a trade mark does not confer on its owner immunity from infringement actions. Contrary to the past, it will no longer be necessary to cancel the later infringing trade mark prior to initiating an infringement action. The specific cases on which the trade mark owner may prohibit the use of the later mark are specified in Article 34 including the right to use the sign in violation of Directive 2006/114CE on Comparative Advertising.

Goods in transit: The trade mark owner may seek an injunction against goods brought into Spain from third countries even when they are not released for free circulation in Spain. Nevertheless, this will not apply where the owner of the goods of the declarant proves that the registered trade mark owner is not entitled to stop the marketing of the goods in the country of destination.

Intervening right as defence in trademark infringing proceedings: The so-called intervening right of Article 16 of the Trade Mark Directive has been introduced in the Spanish Law as a mean of defence for the proprietor of a later registered trade mark in infringement proceedings in Article 44 bis. The trade mark proprietor shall not be entitled to prohibit the use of a later registered trade mark where the junior trade mark could not be declared invalid as a result of:

• limitation in consequence of acquiescence;
• the earlier mark was not distinctive or did not have a reputation; or
• the earlier trade mark would have been subject to a non-use revocation action.

This defence will require reverting to a point in time prior to the filing of the infringement action and will make it necessary for the parties to assess whether it is possible for the defendant to rely upon one of these defences and whether there is evidence in support thereof.

Licensee rights: the licensee may only bring an action for trade mark infringement with the proprietor’s consent. Nevertheless, the exclusive licensee will be entitled to bring an action if the trade mark proprietor has failed to do so after having been asked by the licensee. Furthermore, the licensee may intervene in proceedings initiated by the trade mark proprietor to obtain compensation from the infringer.

Use of the mark: Article 39 introduces the possibility of requesting evidence of use in opposition proceedings provided that the prior mark has been registered for more than five years. Furthermore, the possibility of requesting evidence of genuine use will also be foreseen in invalidity and revocation proceedings before the Office. In this respect, the obligation of providing evidence of use in opposition proceedings will only enter into force when the Implementing Regulation will be published and enter into force.

The proceedings before the Spanish Patent and Trademarks Office will, after the amendments introduced by the Royal Decree, be harmonized and in line with the EUIPO proceedings.

By Cristina Bercial-Chaumier, Casalonga, Alicante, Spain

In the latest Class 46 blog post on the transposition of the EU Trade Mark Directive, David Flynn and Niamh Hall summarise the reforms in Ireland – including the surprising decision to remove absolute grounds from opposition proceedings:

Important changes to Irish trade mark law came into effect on 14 January 2019. The European Union (Trade Marks) Regulations 2018 have implemented Directive (EU) 2015/2436 into Irish law.

In an extraordinary development, the Irish government took the unprecedented step of removing absolute grounds from Irish opposition proceedings. This was because of an unusual interpretation of Article 43 of the Directive from the European Commission as limiting the grounds for opposition (Member States shall provide for an efficient and expeditious administrative procedure before their offices for opposing the registration of a trade mark application on relative grounds).

Despite submissions by the Association of Patent and Trade Mark Attorneys arguing against the interpretation of this as an exhaustive list, with support from other EU sister organisations as well as a learned written opinion from an EU law expert, the Irish government has now removed the possibility of absolute grounds as a basis for opposition in Ireland.

In addition to the above, there are a further number of key changes of which trade mark owners and attorneys should be aware:

Abolition of absolute grounds from opposition proceedings

Oppositions can now only be based on relative grounds; not on absolute grounds. Therefore, it will no longer be possible to oppose an application on the grounds that the mark is non-distinctive, descriptive, generic, deceptive, contrary to law or public policy, or that the application has been filed in bad faith. Furthermore, the shape exclusions will also no longer be available as a ground of opposition.

However, it will be possible to base an invalidity action on any of these absolute grounds. The downside is that anybody who wants to bring an action based on absolute grounds will have to wait until the mark is registered. The possibility of filing unilateral observations against a pending application on absolute grounds still exists but this is not generally as effective as an invalidity action or formerly an opposition.

Proof of use/non-use as a defence in opposition, invalidity and infringement proceedings

If an earlier trade mark which forms the basis of an opposition, invalidity action or infringement action is over five years old, the owner can now be put on proof of use as part of those proceedings. If genuine use of the earlier mark cannot be shown within the relevant five year period, the opposition/invalidity/infringement action will fail (unless there are proper reasons for non-use).

This means that non-use can now be used as a defence in opposition, invalidity or infringement proceedings. Furthermore, for an infringement action, if an earlier trade mark is vulnerable to revocation based on non-use, a defendant does not have to initiate separate revocation proceedings or counterclaim for revocation to successfully defend the infringement action.

Own name defence

This is now limited only to persons who use their own name and address. It no longer applies to company names. In addition, use of a sign as a trade or company name can now be considered infringement without recourse to this defence.

Removal of graphical representation requirement

It is no longer a requirement that a trade mark be graphically represented for it to be eligible for protection. This means that it will now be possible to register non-traditional trade marks such as sounds, multimedia marks and holograms by uploading digital files such as MP3 and MP4. However, the trade mark must still be represented in a manner that enables the Controller and the public to determine the “clear and precise subject matter of the protection afforded to the proprietor”.

Brand owners should be aware that the Madrid System still requires graphic representation of a trade mark, so unless a trade mark application filed with the Irish Patents Office includes a graphic representation, it cannot be used as a base application for an international application.

Additional absolute grounds

The list of signs excluded from registration has been extended. Signs consisting exclusively of shapes or “another characteristic" will be refused registration if the shape or other characteristic results from the nature of the goods, or is necessary to obtain a technical result, or gives substantial value to the goods.

Furthermore, trade marks will be refused registration if their use is prohibited by any enactment or provision that safeguards Protected designations of Origin (PDOs), Protected Geographical Indications (PGIs), traditional terms for wine and traditional specialties guaranteed, and prior plant varieties. Therefore, from now on trade mark applications will be examined having regard to these additional absolute grounds.

Additional relative grounds

Going forward, PDOs and PGIs can be used as a basis to oppose or invalidate a mark on relative grounds.

Goods in transit

Infringing/counterfeit goods which are “in transit” but not intended for free circulation in Ireland can be detained by Customs with the burden of proof shifting to the importer or holder of the goods, who must show that the trade mark proprietor is not entitled to prohibit the placing of the goods on the market in the country of final destination.

Expansion of anti-counterfeiting measures including preparatory acts

A wider range of counterfeiting activities will now be considered to be acts of trade mark infringement. These include affixing a trade mark to packaging, security, authenticity features or devices, labels, and/or selling, stocking or offering such items for sale, or importing/exporting them.

Comparative advertising

The use of a mark by competitors in comparative advertising may now be prevented by the mark’s proprietor as being a trade mark infringement if it breaches the EU Comparative Advertising Directive (2006/114/EC).

Assignment of trade mark

While it has been always possible to transfer ownership of a trade mark under the Trade Marks Act 1996, there is a new provision whereby the transfer of a whole business shall include the transfer of the trade mark, except where there is agreement to the contrary, or circumstances clearly dictate otherwise.

Therefore, if a trade mark is not included in the transaction documents relating to the sale of a business, the seller will be automatically obliged to assign the mark to the buyer, unless there is an agreement to the contrary or the circumstances say otherwise.

Licensing

There are new provisions whereby, subject to the provisions of the licence, a non-exclusive licensee may bring proceedings for infringement of the trade mark only with the consent of the proprietor. However, the holder of an exclusive licence may bring infringement proceedings if the proprietor of the trade mark, after formal notice, does not bring infringement proceedings within an appropriate period.

Furthermore, a licensee will now have a right to intervene in infringement proceedings brought by the proprietor of the trade mark in order to seek compensation/damages.

Division of registrations

It will now be possible for the proprietor of a registered trade mark to divide the registration into two or more separate registrations.

Reproduction of trade marks in dictionaries, encyclopedias and similar reference works

If the reproduction of a trade mark in a dictionary, encyclopedia or similar reference work gives the impression that it is a generic term for the goods or services which the trade mark is registered for, the publisher of the reference work must now ensure that the mark, at the request of the trade mark proprietor, is accompanied by an indication that the mark is a registered trade mark.

Conclusion

The transposition of the Directive brings important modernizing changes to Irish trade mark law. We consider trade mark owners and attorneys will welcome these changes for the most part.

By David Flynn and Niamh Hall, FRKelly, Dublin & Belfast