Class 46 readers may be interested in a webinar being hosted by WIPO on Wednesday 28 July, which is titled “Understanding Examination and Refusal Procedures in the IP Office of China”.

WIPO says the webinar will provide an overview of the practices and procedures of the China National Intellectual Property Administration (CNIPA). Participants will get a better understanding of the elements and concepts involved when designating China in an international application, and learn more about substantive examination practices and procedures.

Resources will be offered to help participants learn to avoid or overcome provisional refusals when seeking protection in China.

The webinar will be hosted by CNIPA and the speakers will be Ms DUAN Chuane and Ms ZUO Liang of CNIPA. They will outline the most common reasons for provisional refusals and questions that need answering when designating China in an international application or subsequent designation. It will include a Q&A session.

The webinar will be held in English, starting at 4:00 PM Central European time. You can register for free to join the webinar live or watch the video recording.

There is an important opportunity for brand owners and their representatives to provide feedback to ICANN on demand for a proposed centralised system to manage requests for non-public domain registration data (formerly the WHOIS data).

This is referred to as SSAD – a Standardised System for Access and Disclosure. The MARQUES Cyberspace Team want all members to have the opportunity to respond.

Recommendations

A policy development working group in ICANN finalised recommendations last year on the features of the SSAD. The system is anticipated to feature a central gateway for the accreditation of requestors such as brand owners or their representatives. There will be a preliminary review of requests for formality before requests are forwarded on to the relevant registrar.

The actual decision on whether to disclose the data will continue to rest with the registrar or registry, although it is also anticipated that the system will allow for some requests to be reviewed and responded to automatically.

The costs of SSAD are expected to be borne by the parties using it and so the size of demand impacts both the required technical capacity of the system and its cost-effectiveness. As part of the scoping exercise for the SSAD, ICANN wants to understand how many brands, law firms and government agencies will use the system and their anticipated volume of requests.

Send in your views!

ICANN’s questionnaire for potential requestors is open until 22 July 2021 (this Thursday). To date, ICANN has had very few responses – hence this last-minute request for you to send in your views

We assume that most, if not all, MARQUES members, will want to access domain registration data at some point to combat abusive domain registrations. If so, please find five minutes to complete the questionnaire, since the responses received will play a critical role in assessing the feasibility and associated risks, costs and resources required to build the SSAD.

You can find ICANN’s announcement and a link to the questionnaire here. There are only seven questions and we think the most important one is question 7 which asks: “What factor(s) would be most important to you in determining whether to use the System for Standardized Access/Disclosure (SSAD)?” We suggest that it might be useful to raise the following issues here:

• Cost: If it is more than $10 to $20 a request, the costs could get very expensive. For multiple requests, pricing discounts for volume would be appropriate.
• Speed of response: It is essential that a request that goes through the SSAD to a registrar or registry is responded to in a timely fashion – ideally 24 hours.
• Quality of data disclosed: There is no guarantee that a registrar or registry will return accurate data. If they decide the request cannot be met, for whatever reason, the applicant should have 50% of the fee returned.

Thank you for your help.

Tjeerd Overdijk and Nick Wood, MARQUES Cyberspace Team

The new WIPO IP Portal

WIPO has released a new version of the WIPO IP Portal, which provides access to its full range of IP services, including the registration of trade marks, designs and GIs.

More information about the new WIPO IP Portal is available on WIPO’s website here.

It includes a new design and added functionalities. In particular:

• The landing page has been redesigned
• Support pages (located under HELP) have a new design and additional content
• The redesigned dashboard (available to logged-in users) makes it simpler to customise your widgets

You can provide feedback to WIPO in a 30-second survey available here.

Although physical registration for this year’s hybrid conference is now sold out, you can still book for virtual attendance and choose to be added to the waiting list for the physical meeting.

Virtual registration enables you to watch all the sessions broadcast to TV standard, and obtain certificates of attendance for CPD/CLE purposes.

It also means you can join the waiting list for physical registration, should additional places become available. This will be the case if social distancing rules are relaxed, increasing the capacity, or people already registered are unable to attend.

Those on the waiting list will be offered places for the physical meeting on a first-come, first-served basis, so do sign up soon if you want to secure your place near the top of the list!

A new video about The Hague has been added to the Annual Conference website in addition to the animation explaining the hybrid event. The website also includes full programme and speaker details, additional information and a link to register.

MARQUES sent out an update on the Conference this week and will send further updates by email over the next few weeks.

WIPO has shared the following information:

Due to scheduled maintenance on our internal system, Madrid System online services will be unavailable from Friday, July 9 to Sunday, July 11. Friday, July 9 will be a non-working day for the Madrid System.

The following services will not be accessible during this time: Subsequent designation; Limitation; Renewal; and Management of Representative.

Request submissions for these services should be planned ahead of time. Alternatively, official forms can be submitted to your Office of Origin or to WIPO through Contact Madrid.

In addition, Madrid Monitor, Madrid Portfolio Manager and the Madrid Office Portal will be partially disrupted. Other Madrid Monitor functionalities and online tools will remain available.

Find out more on WIPO’s website here.

WIPO has published the Madrid System Yearly Review 2021. It reports that the number of international applications filed fell by 0.6% in 2020 while the number of international registraitons fell by 3.2%.

However, the overall number of active registrations increased by 4%, while renewals increased by 11.6%.

The Review includes a special theme comparing the impact of the COVID-19 pandemic with that of the global financial crisis of 2008-09, the only other recent time when the number of Madrid applications fell.

Find out more on WIPO’s website:

• Executive Summary
• Previous editions of the Madrid Yearly Review
• Global statistics on the Madrid System
• Interactive charts

WIPO IP Portal

WIPO has also announced a new version of the WIPO IP Portal, which provides easy access to its range of online IP services, including registration services.

It has a new design and added functionalities, including a landing page, support pages and dashboard.

You can provide feedback to WIPO in a 30-second survey.

On 3 June 2021, the Court of Justice of the EU (CJEU) rendered its decision in joined cases C-818/18P and C-6/19 P on two appeals brought by The Yokohama Rubber Co Ltd and the EUIPO in the case of a cancellation proceeding against a trade mark of Pirelli Tyre SpA. Martin Viefhues, member of the MARQUES Amicus Curiae Team, explains the case.

Background

Pirelli owns EUTM number 2,319,176 (pictured), registered in 2002 as a figurative mark for “tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds“.

The EUTM was contested by Yokohama to the extent that it covers “tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds“ and the EUIPO decided that it is invalid for these goods for representing exclusively a shape which is necessary to obtain a technical result so that it is barred from registration according to Article 7(1)(e)(ii) CTMR (independent from a possible acquired distinctiveness).

The EUIPO had held that the contested mark represents a groove shape which forms an integral part of a tyre’s tread (see illustration, right) and therefore part of the goods covered by the contested mark, namely “tyres”, and that the groove is dictated by technical necessity, namely an assisting function in water expulsion and traction increase.

Pirelli had argued:

• that the groove is not representing the goods, ie tyres or their running surface, but that it is only a part (one groove of many) of only another part (tread) which only together with other parts (side walls) forms the goods (tyres), and
• that the grooves do not have a technical effect because water can actually not drain through the thinner part of the groove.

The General Court decided in Pirelli’s favour. It stated that:

• it was clear that the sign represents neither the shape of a tyre nor the shape of a tyre tread,
• it was not apparent from the graphic representation of the contested sign that that sign is intended for use on a tyre tread and it is a functional shape that fulfils or performs a technical function.

EUIPO and Yokohama appealed the decision.

Concerns of Pirelli and MARQUES

Pirelli had asked MARQUES to intervene in the case. MARQUES was willing to do so as, in our view, the provision should be applied rather carefully as it is an exception from the general rule that shapes can be registered as trade marks, and as a refusal according to Article 7(1)(e)(ii) CTMR cannot be overcome by acquired distinctiveness.

Another as yet unraised key question seemed to be the question why the mark, which is a figurative mark and not a 3D mark, is equated to the groove on the tyre tread at all. This use of the sign is not suggested by the trade mark registration – and it is the registration, not the use, that is subject to examination. Instead, the registered device could also be used as a logo, as is known from comparable devices, such as the NIKE swoosh.

MARQUES had therefore intended to formally intervene on Pirelli’s part. As MARQUES had been involved only after the written prcoeedings had been concluded, it intended to raise its arguments in the oral hearing once it had been formally granted leave to intervene in the proceedings.

While the CJEU granted leave to intervene in favour of MARQUES, it later decided not to have an oral hearing so MARQUES did get an opportunity to raise its arguments.

The CJEU’s decision

In the end, the CJEU decided in favour of Pirelli, so that the concerns of MARQUES were not realised.

Yokohama’s appeal was partly rejected for formal reasons: Yokohama had tried to obtain another assessment of the evidence even though an appeal to the CJEU is limited to points of law, and a pretended contradiction in the grounds of the contested judgment could be sorted out by reading the judgment as a whole.

On the essence of the case, Yokohama had argued that the Board of Appeal of the EUIPO was allowed to analyse the characteristics of the shape by taking into account additional information not apparent from the graphic representation. However, the CJEU confirmed the General Court‘s position that the Board had departed from the shape represented by the mark at issue and had modified it by adding to it all the elements which appeared on a tyre tread, in order to find that the mark represented the shape of a tyre. The elements which the BoA was entitled to take into account did not allow it to qualify the mark at issue as a representation of a tyre tread.

The EUIPO had argued that the absolute ground for refusal of registration provided for in Article 7(1)(e)(ii) may extend to the registration of signs consisting of the shape of part of a product that is necessary to obtain a technical result, that being the case, in particular, where that shape represents, quantitatively and qualitatively, a significant part of that product. However, the CJEU pointed out that the General Court had considered the mark not to represent even a significant part of a tyre, and that this finding could not be questioned in the appeal proceeding.

With regard to the technical effect of the groove, the EUIPO had argued that the absolute ground for refusal can apply also to a sign the shape of which is necessary to obtain a technical result which contributes to the functioning of a product, even if that shape is not sufficient, in itself, to obtain the intended technical result of that product. However, the CJEU backed the General Court finding that the groove does not produce the technical effect addressed in the Board’s decision.

Finally, the CJEU pointed out that the registration of the contested mark does not prevent Pirelli’s competitors from making and marketing tyres which incorporate an identical or similar shape when such a shape is combined with other elements of a tyre tread and creates a shape that is different from each of the elements taken individually.

Martin Veifhues is Co-Founder and Managing Director of JONAS Rechtsanwaltsgesellschaft mbH and a member of the Amicus Curiae Team