Lithuania introduced some important changes in its trademark legislation

lithuania-966145_960_720.jpgAs of 01.01.2019, some important changes have been introduced in the trademark law in Lithuania, which adopt provisions from the EU Trademark Directive 2015/2436.  The most essential of them are:

  • there is no more a requirement for graphical representation of a sign when it is applied for trademark protection;
  • an opposition system was introduced which means that the Patent Office will make an examination on absolute grounds, and after that, every interested party can file an opposition based on earlier rights;
  • certification marks are now possible for registration;
  • invalidation and cancelation of trademarks will be done by the Patent Office, and not only by the Court as before.
  • the trademark owner can stop goods labeled with his trademark to be transited across the country unless the person transporting the goods proves that the trademark owner is not entitled to prohibit the placing of those goods on the market in the country of final destination.
  • the fees for registration of trademarks have been increased. For example, the fee for new trademark application goes up from 138 euro to 180 euro for one class of goods and services.

For more information here.

Source: Marques Class 46.

 

 

 

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Important amendments in the Czech trademark law came into force

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As of 01.01.2019, some new and significant amendments in the Czech trademark law came into force. The local Patent Office will not check for earlier identical or similar trademarks when examining new applications. The owners of such rights will have an opportunity to file oppositions in order to protect its registered signs. This by itself requires the Trademark bulletin, issued by the Patent Office, to be checked on a regular basis. Apart from this, the amendments allow registration of new types of marks such as signs of sounds, smells, positions, movements, etc.

The law will consider unauthorized use of trademarks in the names of companies to be a trademark infringement.

Source: Lexology, Kinstellar – Zdeněk Kučera.

Samoa joins The Madrid Protocol for international registration of trademarks

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WIPO informs about the Somoa accession to the Madrid Protocol for international registration of trademarks. In that way, the participating Member States become 103. According to the information Samoa will require individual fees for such marks as well as every license for an international trademark will have to be registered with the local Patent Office.

The Protocol will enter into force for the country on 04.03.2019.

For more information here.

USPTO’s position on Alice/Mayo implementation

flag-1291945_960_720The USPTO published its new guidelines on the eligibility of subject matter in patent applications.

With these guidelines, the USPTO gives some important clarifications on the implementation of the first step of the US Supreme Court’s Alice/Mayo test. There are two main changed in that regard:

  • First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
     
  • Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.

For more information here.

The UK Wagamama won a trademark despite

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The UK restaurant chain for Japanese cuisine Wagamama won a trademark dispute against an application for a new trademark Wakayama applied for prepared meals, instant meals” and other food products “all consisting principally of noodles.

According to the restaurant chain, this trademark was confusingly similar to their one, what’s more, it could take advantage from Wagamama reputation on the market.

According to the applicant, there was no conflict between both signs because their trademark covers different letters.

The UK IPO has issued a decision stating that the later mark can create a consumer confusion due to the high level of visual and aural similarities in the presence of identical and similar goods. The different letters in the applied for trademark cannot overcome this negative outcome.

Source: WIPR.

Beats Electronics won a trademark case in the EU

pexels-photo-577769.jpegThe Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):

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Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):

Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.

The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.

According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.

Source: Nedim Malovic, IPKat.

Storage of goods and copyright infringement – a European Court’s decision

forklift-835340_960_720The European Court has ruled in case C‑572/17 Imran Syed, which concerns the following:

Mr Syed ran a retail shop in Stockholm (Sweden) in which he sold clothes and accessories with rock music motifs. In addition to offering the items for sale in that shop, Mr Syed stored such goods in a storage facility adjacent to the shop and in another storage facility located in Bandhagen (Sweden), in a suburb of Stockholm. It is established that Mr Syed’s shop was regularly restocked with merchandise from those storage facilities.

It has been determined that the sale of several of those items infringed trade marks and copyrights. Criminal proceedings were brought against Mr Syed for trademark infringement and breach of Law (1960:729) before the tingsrätten (District Court, Sweden). According to the åklagaren (Public Prosecutor, Sweden), Mr Syed infringed the claimants’ copyright by unlawfully making available to the public clothes and flags bearing the motifs protected by copyright. The prosecutor therefore took the view that all of the goods bearing such motifs which were in the shop and in the storage facilities were being offered for sale or distributed to the public, and that such acts therefore constituted an infringement of Law (1960:729).

The tingsrätten (District Court) found Mr Syed guilty of trade mark infringement concerning all the goods discovered. That court also found him guilty of infringing Law (1960:729) with regard to the goods bearing a copyrighted motif which were in the shop he was running, as well as with regard to the goods stored in both the storage facilities at issue, in so far as identical goods were offered for sale in the shop. The tingsrätten (District Court) took the view, in holding Mr Syed liable for the goods in the storage facilities as well, that the concept of ‘offering for sale’ goods which infringe the copyright held by the claimants did not apply solely to the goods which, at a given point in time, were located in Mr Syed’s shop, but also applied to the identical goods in the storage facilities. In contrast, that court held that the other goods in the storage facilities could not be regarded as having been offered for sale. For all of those infringements, the tingsrätten (District Court) sentenced Mr Syed to a suspended custodial sentence and to 80 per diem fines.

Hearing the case on appeal, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Stockholm, Sweden: patent and commercial division) found that Mr Syed had infringed Law (1960:729) only in so far as the goods located in his shop were concerned and not in relation to the goods in the storage facilities. That court took the view that Mr Syed had stored those goods for the purpose of sale. However, it could not be considered that those goods had been offered for sale or distributed to the public. Similarly, the handling of goods in the storage facilities did not, according to the court hearing the appeal, constitute an attempt or preparation to commit an infringement of Law (1960:729). The sentence given to Mr Syed was reduced, in so far as Mr Syed was sentenced to a suspended custodial sentence and 60 per diem fines.

Before the Högsta domstolen (Supreme Court, Sweden), the referring court in this case, the Riksåklagaren (Prosecutor-General) claimed that Mr Syed should be found guilty in respect of the same goods as those which the tingsrätten (District Court) had found to establish an infringement of Law (1960:729). He also submitted that the Högsta domstolen (Supreme Court) should refer the matter to the Court of Justice for a preliminary ruling concerning the interpretation of Article 4(1) of Directive 2001/29.

Before the referring court, Mr Syed argued that it followed from the case-law of the Court of Justice that infringement of a rightholder’s distribution right by an offer for sale requires acts directed towards the public with the aim of transferring each specific item. He contended that the purchase and storage of goods cannot be considered to be such acts. An interpretation to the contrary would extend the scope of criminal liability, in breach of the principle of legality.

The referring court notes that Law (1960:729) and Directive 2001/29 do not expressly prohibit the storage of goods bearing a copyrighted motif for the purpose of sale. It adds that, following the decision of the Court of Justice of 13 May 2015, Dimensione Direct Sales and Labianca (C‑516/13, EU:C:2015:315), there may be an infringement of an author’s exclusive right under Article 4(1) of Directive 2001/29 as a result of measures or steps that take place prior to the performance of a contract of sale. Nonetheless, the question arises whether goods bearing a protected motif which are kept, by a person, in storage facilities can be regarded as being offered for sale when that person offers identical goods for sale in a retail shop run by him.

In those circumstances, the Högsta domstolen (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘1. When goods bearing protected motifs are unlawfully offered for sale in a shop, can there also be an infringement of the author’s exclusive right of distribution under Article 4(1) of Directive 2001/29 as regards goods with identical motifs, which are held in storage by the person offering the goods for sale?

2. Is it relevant whether the goods are held in a storage facility adjacent to the shop or in another location?’

The Court’s decision:

Article 4(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the storage by a retailer of goods bearing a motif protected by copyright on the territory of the Member State where the goods are stored may constitute an infringement of the exclusive distribution right, as defined by that provision, when that retailer offers for sale, without the authorisation of the copyright holder, goods identical to those which he is storing, provided that the stored goods are actually intended for sale on the territory of the Member State in which that motif is protected. The distance between the place of storage and the place of sale cannot, on its own, be a decisive element in determining whether the stored goods are intended for sale on the territory of that Member State.