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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Jeremy Phillips
Laetitia Lagarde
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
MONDAY, 5 NOVEMBER 2018
EUIPO Academy webinars during November 2018

EUIPO is hosting the following webinars on Tuesdays this month (all times are CET). Webinars typically last 30 to 60 minutes and a live chat with the speakers is available. Find out more on the Academy Learning Portal. You can watch recorded webinars from three days after the broadcast.

6 November

Enforcement Database for Geographical Indications (English)

Intermediate

10:00 – 10:30

Exhaustion of rights and parallel imports (English)

Intermediate

12:30 – 13:30

13 November

Domain names (English)

Advanced

10:00 – 11:00

Limitations of the list of goods and services at appeal stage (English)

Intermediate

11:30 – 12:00

EUIPO Malware Study, Identification and Analysis of Malware on Selected Suspected Copyright-Infringing Websites (English)

Advanced

12:15 – 12:45

20 November

Absolute grounds: how to respond to objections raised (Interactive webinar in  WDBIC; English)

Advanced

10:00 – 11:00

27 November

Intellectual Property, Public Health and Plain Cigarette Packaging (English)

Advanced

10:00 – 11:00

Online substantiation (English)

Intermediate

11:30 – 12:00

 

Posted by: Blog Administrator @ 10.07
Tags: EUIPO, Academy, webinars,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4690

THURSDAY, 1 NOVEMBER 2018
October 2018 issue of HouseMARQUES

The latest issue of the HouseMARQUES newsletter is now available to read online here.

This issue includes:

  • Reports from the Judges Meetings in London and Stockholm (pictured)
  • The CTA forum at the MARQUES Annual Conference in Paris
  • Information on the first EU Judges Meeting (Amsterdam, 18 January) and the upcoming Finnish Judges Meeting (Helsinki, 26 November)
  • A link to recent publications from EUIPO
  • Latest IP treaty notifications from WIPO

To read this and previous issues visit the HouseMARQUES page on the new website.

 

Posted by: Blog Administrator @ 13.36
Tags: HouseMARQUES, Judges Meetings, UCL-IBIL,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4689

WEDNESDAY, 24 OCTOBER 2018
Question the Trade Mark Judges 2018 (updated)

This post was updated on 5 November 2018 with additional comments (in italics). Note that a video of the meeting has been uploaded by UCL-IBIL on YouTube.

 

The annual Question the IP Judges event took place at UCL in London on 18 October. Hosted jointly by UCL-IBIL and MARQUES, it again provided perspectives on a range of IP issues from four judges – each of whom brought different experiences and views.

The judges taking part this year were:

  • HHJ Melissa Clarke (Senior Circuit Judge, Designated Civil Judge for Thames Valley, Beds & Herts)
  • Judge Octavia Spineanu-Matei (General Court, Court of Justice of the European Union)
  • The Hon Mrs Justice (Vivien) Rose (England & Wales High Court)
  • Harri Salmi (EUIPO Boards of Appeal member)

The discussion was introduced and chaired initially by Roland Mallinson of the MARQUES Council, and subsequently by The Rt Hon Professor Sir Robin Jacob of UCL.

The discussion was structured around questions that had been submitted in advance by the audience. Some of the questions were:

How much training do you get as a judge? Romania is a country where people tend to become judges early in their career, but at the General Court career-judges are in the minority: more judges have a background as an academic or advocate. In the UK, it is still the norm for people to become judges towards the end (or, if you prefer, “at the height”) of their legal career. However, training has increased lately and there is now a Judicial College, led by specialist judges. At EUIPO, members of the Boards of Appeal must have at least 10 years experience in IP, including five years in trade marks. Most but not all are legally trained (one is an architect by training) and on a panel of three, at least two must be legally trained.

How do you react when you get a trade mark case? The judges variously said they find trade mark cases fascinating, entertaining, relevant to daily life and something they can talk to non-lawyer friends about. But they also noted that trade mark law can involve a lot of technical phrases and tests, and requires a combination of knowledge and intuition. The law is quite complicated (but less so than, say, competition law).

How do you view expert evidence, for example from psychologists? The judges felt the ultimate expert should remain the judge. Many aspects of the law require judges to put themselves in the place of a construct of a person, and expertise should not be allowed to encroach into areas of common sense. Moreover, it results in more expense for parties. Expert evidence must also to be taken into account alongside other factors, and must be challenged: for example, evidence from Google Analytics may be skewed if the person searching is involved in the case and has been searching for the same terms a lot.

Do you have hearings? The Boards of Appeal have only had two oral hearings in 23 years, but there will be another one on 19 November in the MONOPOLY case (R 1849/2017-2, Kreativni Dogadaji v Hasbro), which will be open to the public. Hearings are unlikely to bring additional value beyond the written documents. At the General Court, each party only has 15 minutes to present its case, plus time for questions, so although experts can be heard they rarely are in practice. However, the UK judges admitted the English courts are “addicted” to hearings and said they would regret it if they were removed: they can lead to the judge changing their mind in some cases.

What do you think of non-traditional trade marks being filed as digital files?

There was a lot of debate about whether certain things, such as a 25-second film or a voice repeating the same word, functions as a trade mark. In particular, is it distinctive and non-descriptive? And does the consumer see it as an indication of origin. Some of the panel were open to the principle, but others were highly sceptical.

For example, in the 25-second video clip of Sniper Elite showing the effect of someone being shot in the head, dissolving and dying, can this be protected as the trade mark of the game? HHJ Melissa Clarke highlighted that they were trying to protect the game mechanic but, if it was sufficiently distinctive, there would be a huge overlap with other games and films. Examples were also contemplated like the opening credits of James Bond with a gun accompanied by naked images and Pink Panther walking across the screen.

Could a sound recording be used to create a permanent right in Snow White? Sir Robin identified that there was a problem as to whether it is used as denoting origin. Would it be right for Disney to get the trade mark in Snow White?

HHJ Melissa Clarke pointed out that if a sound mark makes the sign distinctive it would not be infringed by writing it on a page. 

Should disclaimers be allowed? Again, the panel (and audience) were split on this question. Disclaimers (which are available in some EU and other countries but not in the EUTM system) can help to define what is protected as a trade mark and assist the registry, but concerns were expressed that the consumer does not know what is being disclaimed. In support of disclaimers, Harri Salmi noted that the reality of the marketplace is that a mark can still be used, and often will be, even if it is not on the trade mark register. 

Sir Robin reminded us of the historical significance in the UK of disclaimers and explained that monopolies such as signatures were registered narrowly. Perhaps something similar should be brought back.

What about intention to use a mark? If a trade mark application stated in the description of the mark that the trader was not going to use the mark, would it be allowed? Harri Salmi responded that they would have to allow the application in the EUIPO as that is the system in place for EU trade marks; there is an interest to protect such marks and then in five years prove use.

However, others saw value in such intention.  Otherwise, where companies have funds, there may be oodles of rolling registrations without use or intention to use the trade mark.

Is the English language as well equipped as other languages? Rose J referred to the ASSOS/ASOS case and contemplated language when considering fair notional use and actual use. Take surfing clothes for young people and garments for older women. These are very general clauses. They cover a huge number of things which may not be commonly used to describe clear subsets. With reference to a customs case, Sir Robin added the example of containers. There are a variety of containers (from snuff containers to rubbish containers) and to say that all containers are the same as they all fit within the meaning of that word is mad. The English language in not good at dividing things up. This brought to mind the recent reference to the CJEU from the UK High Court in the Skykick case concerning (amongst other things) the clarity and precision of “computer software”. At this point, Rose J commented that those with a daily diet of trade marks may not recognise the complexities of it for judges without such experience.

What issues will arise with a three dimensional shape which adds substantial value? Sir Robin raised the example of Château Lafite adding substantial value by using labels with famous artists’ work (like Picasso and Chagall). Should such marks be registrable as trade marks? HHJ Melissa Clarke questioned whether the value was being by the wine bottle or the artists, which led to a prediction of troubled waters by Sir Robin as such subject matter is valuable for image rights too and can also be engaged.  

Big thanks to Alexandra Mezulanik, Research Assistant at UCL, for providing the additional comments!

The next MARQUES Judges Event is in Finland on 26 November: details are here. Remember also that MARQUES has an Amicus Curiae Team dedicated to monitoring IP cases and filing submissions where appropriate. Find out more information on their dedicated page

Posted by: Blog Administrator @ 11.23
Tags: UCL-IBIL, Judges, Robin Jacob, ,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4688

THURSDAY, 18 OCTOBER 2018
CTA forum at MARQUES Annual Conference

Between 18 September 2018 and 27 September 2018, at the invitation of MARQUES, Mr MA Fu, the Chairman of the China Trademark Association (CTA), led a delegation to attend the 32nd MARQUES Annual Conference in Paris. In a guest post, Julia Zhong reports:

 

The CTA held its first CTA forum at the MARQUES Annual Conference. With the theme of "Well-Known Trademarks in China", the CTA forum was divided into two parts and was hosted by Julia Hhongbo Zhong, the Chair of the MARQUES China Team and the Vice President of Lee and Li – Leaven IPR Agency Ltd.

The speaker in the first part was Mr MA Fu of CTA, who mainly introduced the reform of the IP institutions in China which has been just completed. In March of this year, China merged the Patent Office and the Trademark Office. The two offices were merged into a new National Intellectual Property Administration, PRC, and accepted the leadership of the State Administration for Market Regulation (formerly the State Administration for Industry & Commerce).

How to divide responsibility and authority in the new institution has become a concern of IP rights holders, lawyers, IP practitioners, experts and scholars in China and other countries. The introduction of the new institution reform has given a clearer description of how IP rights, including well-known trade marks, are protected in China.

In addition, President Ma Fu summarised the history, structure, members and the main projects of the CTA and the reform of the China trade mark management system.

The second part focused on well-known trade mark protection in China. The speakers were Mr MA Fu and Ms LEI Changxin, a partner at Liu Shen & Associates. They respectively gave speeches on the theme of the administrative protection of well-known trade marks in China and the judicial protection of well-known trade marks in China. President Ma Fu mainly introduced the evolution, protection principles and protection status of the protection of well-known trade marks provided for Chinese administrative organs. From the perspective of practice, Ms LEI introduced in detail the factors that influence the judicial recognition of well-known trade marks, the types of evidence used to validate the recognition of well-known trade marks and its probative value, and the future direction in the effort concerning the recognition of well-known trade marks.

In the Q&A section, the participants asked a lot of questions about how well-known trade marks are better protected in China and about the influence on the reform of the China trade mark management system. The CTA forum was well received at the Annual Conference and achieved very good results.

Posted by: Blog Administrator @ 22.18
Tags: Annual Conference, Paris, CTA, Ma Fu,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4687

WEDNESDAY, 10 OCTOBER 2018
More flexible multi-class applications in Thailand

A guest post for Class 46 by Jessica Le Gros and Tirasha Punjabutrachai on multi-class trade mark applications in Thailand:

 

Some Class 46 readers may already know that since July 2016, Thailand has adopted a multiple class application system as a result of its accession to the Madrid Protocol. Two years have passed but questions still remain as to whether the current multi-class application practice in Thailand fully benefits brand owners. This post aims to shed some light on the situation and highlight the current practice of multi-class applications in Thailand.

In many jurisdictions where multi-class applications are allowed, the practice of divisional applications plays a role and helps smooth over the difficulties encountered when a multi-class application faces a partial refusal. When certain classes of goods or services in a multi-class application face objections, including citation with third party prior applications/registrations, an applicant may choose to split off the remaining classes as a divisional application. In such a case, the divisional application will be treated as a child application separate from the original application (its parent) and it will mature to registration if no opposition is filed against it. There is no need to wait for prosecution of the objected classes or goods/services in the parent multi-class application.

Unlike the above practice, Thailand has instead chosen to allow applicants to drop the objected classes from the multi-class application so that such application can move forward for the non-objected classes. If the applicant does not remove the objected class(es) but decides to file an appeal against the objections to the Trademark Board, then they must bear in mind that the application is at risk of being rejected as a whole if the Trademark Board’s ruling is unfavourable. However, in dropping classes from an application, the applicants still have to approach and consult with the responsible registrar on a case-by-case basis, and within 60 days of receiving notice of the objection(s).

It appears that the lack of a divisional application option is a potential downside to the multi-class system in Thailand. A careful filing strategy is therefore always needed.

The MARQUES International Trade Mark Law & Practice Team monitors the availability and use of multi-class application systems and continues to support the use of a flexible prosecution practice allowing brand owners to appeal against refusals, withdraw non-compliant goods and services and divide applications where necessary. 

By Jessica Le Gros and Tirasha Punjabutrachai. Jessica is Head of Trade Marks at Baker McKenzie in London and a member of the MARQUES International Trade Mark Law & Practice Team. Tirasha is an Associate in the firm’s Bangkok office

Posted by: Blog Administrator @ 08.19
Tags: Thailand, Madrid Protocol, multi-class applications, ITMLP,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4686

TUESDAY, 9 OCTOBER 2018
Finnish Judges Meeting now available to book

MARQUES will host a Judges Meeting in Helsinki on Monday 26 November 2018. Booking is now available on the MARQUES website.

The programme will start at 9.30 and finish at 16.00 with drinks. There will be three sessions, focusing on (1) trade marks and unfair competition; (2) patents and utility models; and (3) procedural issues and questions.

The speakers are Market Court Judges Anne Ekblom-Wörlund, Jenni Ihalainen, Jussi Karttunen, Petri Rinkinen, Sami Myöhänen and Jaako Ritvala.

The full programme can be seen here.

The Meeting will be conducted in Finnish and registration is €390 (MARQUES members) or €450 (non-members).

Secure your place by registering online now.

Posted by: Blog Administrator @ 08.05
Tags: Judges Meeting, Helsinki,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4685

MONDAY, 8 OCTOBER 2018
GREECE: Identical word marks, “close” Classes (5 vs 10), but no likelihood of confusion

Specialized public and particular crafting of the goods designated can actually do that.

The interdependence of the factors deciding likelihood of confusion was at the heart of Judgment No. 1078/2018 of the Athens Administrative Court of Appeal. The opposing party / appellant relied on its earlier word mark “UNITEK” registered in Class 5 for «anti-inflammatory pharmaceutical preparations” to stop registration of the identical word mark “UNITEK” filed in the neighbouring Class 10, in connection with “orthodontic devices, apparatus, tools and parts and fittings thereof”.

The Court noted that the later mark was addressed a specialized public, namely dental technicians and orthodontists and stressed that the goods designated were of so particular nature that they could not be of use to doctors in general, or even general practice dentists (this last one may be a stretch too far..). So, regardless of the fact that they may be offered in pharmacies, the goods compared are “completely different”, as anti-inflammatory medicines are addressed to doctors and patients, while orthodontic devices are addressed to dental technicians and orthodontists. The Court also explored the possibility of orthodontists having to use anti-inflammatory medicine, for their work, to conclude that, even in such case, orthodontists, as specialized proffessionals, would display a high level of attention in selecting goods. In the end the distance between anti-inflammatory medicine and orthodontic apparatus proved long enough to avert likelihood of confusion.

The Court rejected the argument or reputation of the earlier mark stating that it was not proven. This blogger understands that repute of the earlier mark was probably invoked also to close the gap between the goods designated.

By way of comment, this blogger sees a – difficult to argue with – seamless interpretation of the rules on confusing similarity. He does wonder however whether the issue of association was at play at all in this dispute; there is no sign of such argument having been put forward, based on the reading of the judgment. But would it, for example, matter to argue that the later mark could be perceived (by its own specialized public) as a token of “expansion” of the earlier mark’s owner’s activities from medicines to medical devices? Or maybe this too is a stretch… 

Posted by: Nikos Prentoulis @ 07.23
Tags: Greece, pharmaceutical, trade marks, identical marks, specialized public, similarity of goods,
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA4682

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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