THURSDAY, 21 SEPTEMBER 2017
31st Annual Conference - Thursday morning
It was a packed morning at the Annual Conference, with an update on the EUTM legal reforms coming into effect on 1st October, and a look at some of the key issues, followed by a discussion on protecting corporate identities and advertising by means other than trade mark rights.
In a presentation entitled “Legal Reform: The Final Dash”, Dimitris Botis of EUIPO provided a comprehensive guide to the new Regulations and decisions taking effect on 1st October. As he said, the changes involve the moving around of certain provisions and addition of new provisions, so practitioners will need to get used to them quickly.
The most important changes include the abolition of the graphical representation requirement for EUTMs. The primacy of the representation should make the registry clear, accessible and easy to search, said Dimitris: What you see is what you get.
Article 3 includes a non-exhaustive list of the 10 most popular trade mark types, including five new types (position, pattern, motion, multimedia and hologram). Dimitris said the “permissive approach” allows various means of representation for sound, motion, multimedia and hologram marks.
Types of marks not specified are smell, taste and tactile/texture marks – it remains to be seen how these will be represented, but the rules say samples are not acceptable.
Another change that he highlighted was Article 2 of the new Act, which allows acquired distinctiveness to be made as a subsidiary claim.
Practitioners should also be aware that, under the new Delegated Regulation, if you make an electronic filing, you have to tick a box for “proof of use request” etc. A few small things have changed with regard to suspensions and oral proceedings: for example, a new procedural requirement says that evidence included in annexes must be clearly numbered and listed in an index.
Faxes will be partly phased out for trade mark filings and renewals from 1st January 2018 – fewer than 1% of applications are filed by fax at the moment. As part of a transitional measure, users can still send faxes as long as they are followed up by an electronic communication within three days.
There are also new rules on appeals. “I strongly recommend you read the transitional measures if you have pending proceedings before the Office,” said Dimitris.
Simon Malynicz QC of Three New Square focused on three aspects of the changes.
First, he addressed the representation of colour combinations – the new rules, dangers and pitfalls of using descriptions. The Heidelberger requirement that they “must be systematically arranged in a predetermined and uniform way” is not clear, and is being considered by the General Court in the Red Bull case (T-101/15), he said. What is clear is that “the representation is now the boss,” said Simon. Descriptions are almost optional: for a colour mark, you need to include a colour reference – but do you need anything more? Simon’s main tip was: “Keep your descriptions to an absolute minimum – be very careful about using any descriptive language.”
Second, Simon provided a UK perspective on certification marks ahead of the new EU right. He discussed a case from 1967 involving Stilton cheese and one from 2000 for Legal Aid, which addressed questions about certification and descriptiveness. Lessons include that the mark doesn’t have to expressly indicate it’s a certification mark; the rules may change; and the public don’t necessarily need to know who the proprietor is. “It’s somewhat Kafkaesque … in fact there’s a very low take up [of certification marks] in the UK,” said Simon. Clarification may come from the General Court in the pending Halloumi case, he added.
Simon’s third topic was the change regarding acts of agents or representatives. He noted that there is “a dearth of case law” on this topic, and there are questions such as: who is the agent or representative, and what is the mark – can it be a similar mark or the same mark for different services? Some of these questions are pending in Case T-7/17 John Mills v EUIPO (the Magic Minerals case).
The panel, which was moderated by Kasper Frahm of Plesner Law Firm, unsurprisingly prompted quite a few questions about the pending reforms.
Non-trade mark protection
Slogans, fonts, adverts – they are source identifiers, but are they trade marks? That was the question addressed by Andreas Lubberger of Lubberger Lehment, Sally Britton of Mishcon de Reya, Julia Matheson of Finnegan and Coral Toh of Spruson & Ferguson in a session moderated by Jesse Hofhuis of Hofhuis Alkema Groen.
“In Germany, we have a traditional concept of the unity of signs, which incorporates trade marks and trade names,” said Andreas. “The concept of trade names is very broad, and is created by use and distinctiveness.” He discussed several decisions from Germany on comparative advertising, and set out the standards that courts expect from advertisers, as well as discussing defamation of brands and parasitic copying of advertising slogans.
In the UK, there are five options for tackling this issue, said Sally: passing off, malicious falsehood and defamation, copyright, designs and Advertising Standards Agency complaints. She discussed how each of these could be used to tackle adverts such as PETA’s campaigns and the Dismaland theme park. “There are various routes you can take, but there is the opportunity for some comparative advertising in the UK,” she concluded.
“From a US perspective, everything except copyright falls under trade mark law, which is a subset of unfair competition law,” said Julia. Trade dress is very broad, and can include product packaging and configuration. “In the US people can get away with things that would be impermissible elsewhere; courts are much less willing to grant relief.” For trade dress, the devil is in the details, she said: do consumers actually identify it as a source identifier? That is one reason why litigation, including surveys, can be very expensive. There is also a high bar to show actual consumer recognition. Copyright is another option but offers a narrower scope of protection. “Cases are fact-specific and there are few judgments on the merits,” said Julia, who highlighted the Two Pesos, Katiroll, Apple Store, Blue Nile and Conference Archives cases. One dispute to watch is Louis Vuitton Malletier v My Other Bag at the US Supreme Court.
There are few cases in China, said Coral, partly for cultural reasons: “It’s not considered honourable to criticise other people’s products.” But there is a concept of “unhealthy social influence” in several pieces of legislation, including the Trade Marks Law and Advertising Law. Cases normally arise when a party is trying to take commercial advantage. Shop layout, décor, uniforms and even look-and-fee can be protected under the Anti-Unfair Competition Law, but it may be hard to prove as there is a high threshold. Two recent cases under the Law are the STIHL and Guangzhou Pharmaceutical (Red Can) cases.
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