Brief IP news

briefs_1131.   EU Trade Mark reforms come into force – sound, motion, hologram and multimedia marks can now be registered. For more information here.

2. Brand Finance Nation Brands 2017. For more information here. 

3. From Bartender to Inventor: How to Turn Your Day Job Into Passive Income. For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here

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Trademarks and inheritance – European court’s decision

juropean-justiceThe European court has ruled in Case C‑341/16 Hanssen Beleggingen BV v Tanja Prast-Knipping, which concerns the following:

On 7 September 1979, a company incorporated under German law owned by Mr Helmut Knipping, operating in the production of building components, in particular windows, applied to the Benelux Intellectual Property Office (Trade Marks and Designs) (‘BIPO’) for registration as a Benelux trade mark of the following word and figurative sign:

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BIPO registered that trade mark in black and white under No 361604 (‘trade mark No 361604’).

Hanssen is a company incorporated under Dutch law operating in the door and window trade. It is the proprietor of Benelux word and figurative trade mark No 0684759. That trade mark is comprised of the same word and figurative sign as that covered by trade mark No 361604, but is registered in blue and yellow.

On 9 October 1995, Mr Knipping died.

On 14 November 2003, Ms Prast-Knipping, on providing a certificate stating that she was the sole heiress of Mr Knipping, requested BIPO to register her as the proprietor of trade mark No 361604.

BIPO complied with the request for registration.

Hanssen contests the registration. It claims that trade mark No 361604 had, prior to the death of Mr Knipping, been assigned several times and was no longer part of his estate at the time of his death. The registration of Ms Prast-Knipping as the proprietor of that trade mark was therefore unjustified.

Since the dispute was unable to be resolved by amicable agreement, on 8 June 2012, Hanssen brought an action against Ms Prast-Knipping before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), the court of the place where Ms Prast-Knipping is domiciled. Hanssen founded its action on unjustified enrichment under Paragraph 812 of the German Civil Code and sought an order that Ms Prast-Knipping declare at BIPO that she is not entitled to the trade mark in question and to waive the registration of her name as proprietor.

In a judgment of 24 June 2015, the Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed that action on the ground that, at the time when Mr Knipping died, trade mark No 361604 formed part of his estate and had therefore been correctly transferred to Ms Prast-Knipping by universal succession.

Hanssen brought an appeal against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany).

That court harbours doubts as to the jurisdiction of the German courts to hear the case. It considers that whilst jurisdiction could derive from Article 2(1) of Regulation No 44/2001, it is also possible that the courts of the Member State in which registration of the trade mark at issue in the main proceedings has taken place — namely the Netherlands, since the seat of BIPO is located at The Hague — have exclusive jurisdiction under Article 22(4) of that regulation.

Since jurisdiction must be assessed of the court’s own motion, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) wishes the matter to be clarified.

25      According to the referring court, it is necessary, in particular, to determine whether an action such as that brought by Hanssen amounts to proceedings ‘concerned with the registration or validity of … trade marks’ within the meaning of Article 22(4) of the regulation. The judgment of 15 November 1983, Duijnstee (288/82, EU:C:1983:326), provides indicia suggesting that that question be answered in the negative, but, in the light of the development of trade mark law since that judgment, it is not certain that that judgment must still be taken into account.

As regards the development of trade mark law, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) cites, inter alia, Article 18 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 207/2009’).

The referring court also mentions the fact that, as regards jurisdiction, Benelux trade marks are characterised by certain specific features.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does the notion of proceedings which are “concerned with the registration or validity of … trade marks”, within the meaning of Article 22(4) of Regulation [No 44/2001], also cover a claim, brought against the formal proprietor of a Benelux trade mark registered in the Benelux trade mark register, which seeks an order requiring that defendant to make a declaration to [BIPO] that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?’

The Court’s decision:

Article 22(4) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as not applying to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark.

Trademark and design clearance and risk assessment

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Kate Swaine from Gowling WLG (UK) published a quite interesting article which concerns how a company should carry out a brand and design clearance that in turn could prevent future collisions with third party’s intellectual property rights.

When we talk about clearance in that case we mean more or less the following:

  • Searching in the official Patent Offices’ databases for earlier registered trademarks and industrial designs. This should be done at the stage of brand and design building which will help any problems to be avoided in time before more time and money to be invested;
  • Searching for identical or similar internet domain names that can secure the use of the relevant mark on the internet;
  • Searching whether the trademark name resembles any company name that can create possible legal collisions;
  • Searching in Google for earlier similar unregistered trademarks of designs;
  • Making a risk assessment based on the information from the different searches above. This will give a clear picture about whether the relevant marks and designs can be used without legal hurdles or whether such use can lead to costly lawsuits.

For more information here.

Nintendo and industrial design protection in EU

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The European court has ruled in joined cases C‑24/16 and C‑25/16, Nintendo Co. Ltd v BigBen Interactive GmbH, BigBen Interactive SA. These cases concern the following:

Nintendo is a multinational company active in the production and sale of video games and video game consoles, including the Wii video games console and its accessories. It is the holder of several registered Community designs relating to Wii accessories, such as the Wii remote control, the accessory known as the ‘Nunchuck’ for the Wii remote control, which enables compatible video games to be controlled differently, the connector plug known as the ‘Wii Motion Plus’ for the remote control, and the Balance Board, an accessory that allows the player to control the game through weight changes.

BigBen France makes remote controls and other accessories compatible with the Wii video games console and sells them via its website directly to consumers located inter alia in France, Belgium and Luxembourg, as well as to its subsidiary, BigBen Germany. The latter sells the goods made by BigBen France, inter alia via its website, to consumers located in Germany and Austria.

It is apparent from the file submitted to the Court of Justice that BigBen Germany does not have its own stock of goods. Thus, it forwards the orders it receives from consumers to BigBen France. Supply of the allegedly infringing goods is therefore carried out from France. BigBen Germany and BigBen France also use images of goods corresponding to the protected designs held by Nintendo in the course of the lawful sale, including for the purposes of publicity, of certain other goods they sell.

Nintendo takes the view that BigBen Germany and BigBen France’s sale of certain goods made by BigBen France infringes its rights under the registered Community designs held by it. It also submits that those two companies cannot be recognised as having the right to use the images of the goods corresponding to those designs for their commercial activity. Consequently, it brought actions before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against BigBen Germany and BigBen France seeking a declaration that they had infringed the rights conferred upon it by those designs.

The Landgericht held that there had been an infringement by BigBen Germany and BigBen France of Nintendo’s registered Community designs. However, it dismissed the actions in so far as they concerned the use of the images of the goods corresponding to those designs by the defendants in the main proceedings. The Landgericht therefore ordered BigBen Germany to cease using those designs throughout the European Union and also upheld, without territorial limitation, Nintendo’s supplementary claims seeking that it be sent various information, accounts and documents held by the defendants in the main proceedings, that they be ordered to pay compensation and that the destruction or recall of the goods at issue, publication of the judgment and reimbursement of the lawyers’ fees incurred by Nintendo be ordered (‘the supplementary claims’).

As regards BigBen France, the Landgericht Düsseldorf (Regional Court, Düsseldorf) held that it had international jurisdiction in respect of that company and ordered it to cease using the protected designs at issue throughout the European Union. Concerning the supplementary claims, it limited the scope of its judgment to BigBen France’s supplies of the goods at issue to BigBen Germany, but without limiting the territorial scope of its judgment. It considered the applicable law to be that of the place of infringement and took the view that in the present case that was German, Austrian and French law.

Both Nintendo and the defendants in the main proceedings brought appeals against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf).

In support of its action, BigBen France contends that the German courts lack jurisdiction to adopt orders against it that are applicable throughout the European Union and takes the view that such orders can have merely national territorial scope. For its part, Nintendo disputes the limitation of such orders solely to the goods within the supply chain between the defendants in the main proceedings. Nintendo also claims that the defendants in the main proceedings cannot be recognised as having the right to use, in the course of their economic activity and for the purposes of selling their own goods, the images of the goods corresponding to its registered Community designs, whereas the defendants in the main proceedings maintain that such use is in conformity with Regulation No 6/2002. Moreover, Nintendo takes the view that German law should be applied to its claims relating to BigBen Germany and French law to those relating to BigBen France, contrary to what the Landgericht Düsseldorf (Regional Court, Düsseldorf) held.

Nintendo therefore requests the referring court to order the defendants in the main proceedings to cease to make, import, export, use or stock for those purposes the goods at issue within the European Union and/or reproduce those goods or, as the case may be, use the images of those goods corresponding to Nintendo’s Community designs, throughout the European Union. Nintendo’s claim relating to ceasing the production of the goods that, in its view, infringe the registered Community designs held by it concerns solely BigBen France.

In addition, Nintendo requests that its supplementary claims be upheld.

In those circumstances, the referring court states, in the first place, that its international jurisdiction in respect of the claims against BigBen France stems from Article 79(1) of Regulation No 6/2002, read in conjunction with Article 6(1) of Regulation No 44/2001, on the ground that Nintendo’s claims against BigBen Germany and BigBen France are connected because there is a supply chain of the allegedly infringing goods between the two defendants in the main proceedings. That court doubts, however, in the light of the arguments set out before it both by Nintendo and BigBen France, that the scope of the judgment delivered by the Landgericht Düsseldorf (Regional Court, Düsseldorf) in respect of BigBen France, as regards Nintendo’s claims, is in conformity with the provisions of Regulation No 44/2001 and Regulation No 6/2002.

In the second place, the referring court explains that the question whether and in what circumstances a third party might lawfully use the image of a product corresponding to a Community design in order to advertise the goods which it sells and which constitute accessories to the goods corresponding to such a registered design is novel. Interpretation of the concept of ‘citations’ within the meaning of Article 20(1)(c) of Regulation No 6/2002 is therefore necessary.

In the third place, that court has doubts as to the law applicable to Nintendo’s supplementary claims concerning both the first and second defendant in the main proceedings and is uncertain in that regard, in particular, about the scope of Article 8(2) of Regulation No 864/2007.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions, which are formulated in the same terms in Cases C‑24/16 and C‑25/16, to the Court of Justice for a preliminary ruling:

‘(1) In connection with a trial to enforce claims under a Community design, can the court of a Member State whose jurisdiction with respect to a defendant is based solely on Article 79(1) of [Regulation No 6/2002] in conjunction with Article 6(1) of [Regulation No 44/2001], on the basis that this defendant, which is domiciled in another Member State, supplied the defendant domiciled in the pertinent Member State with goods that may infringe intellectual property rights, adopt measures against the first mentioned defendant that are applicable throughout the EU and extend beyond the supply relationships on which jurisdiction is based?

(2)  Is [Regulation No 6/2002], particularly Article 20(1)(c), to be interpreted as meaning that a third party may depict a Community design for commercial purposes if it intends to sell accessory items for the right holder’s goods corresponding to the Community design? If so, what criteria apply to this?

(3) For the purposes of Article 8(2) of [Regulation No 864/2007], how is the place “in which the act of infringement was committed” to be determined in cases in which the infringer:

(a) offers goods that infringe a Community design on a website and that website is also directed at Member States other than the one in which the person damaged by the infringement is domiciled, and/or;

(b) has goods that infringe a Community design shipped to a Member State other than the one in which it is domiciled?

Is Article 15(a) and (g) of the Rome II Regulation to be interpreted as meaning that the law determined in this manner is also applicable to participatory acts of other persons?’

The Court decision:

1. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, read in conjunction with Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, must be interpreted as meaning that in circumstances such as those in the main proceedings where the international jurisdiction of a Community design court seised of an action for infringement is based, with regard to one defendant, on Article 82(1) of Regulation No 6/2002 and, with regard to a second defendant established in another Member State, on that Article 6(1) read in conjunction with Article 79(1) of Regulation No 6/2002, because the second defendant makes and supplies to the first defendant the goods that the latter sells, that court may, on the applicant’s request, adopt orders in respect of the second defendant concerning measures falling under Article 89(1) and Article 88(2) of Regulation No 6/2002 also covering the second defendant’s conduct other than that relating to the abovementioned supply chain and with a scope which extends throughout the European Union.

2. Article 20(1)(c) of Regulation No 6/2002 must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses, including via its website, images of goods corresponding to such designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs, in order to explain or demonstrate the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c), such an act thus being authorised under that provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.

3. Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to noncontractual obligations (‘Rome II’) must be interpreted as meaning that the ‘country in which the act of infringement was committed’ within the meaning of that provision refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.

EU trademark reform – Part 2

european-union-flagThe second part of the reform concerning the protection of European trademarks, according to REGULATION (EU) 2015/2424, entered into force on 01.10.2017.

Some of the main changes which entered into force are:

1. No requirement for graphical representation of trademarks. It will be replaced by:

An EU trade mark may consist of any signs, in particular, words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

  • distinguishing the goods or services of one undertaking from those of other undertakings; and
  • being represented on the Register of European Union trade marks, (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.’.

2. Wellcome to the EU certification marks – there was no opportunity for registration of such marks before but no more.  According to REGULATION (EU) 2015/2424:

An EU certification mark shall be an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.

Any natural or legal person, including institutions, authorities, and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.

3. Some procedural changes are introduced too. They will affect the way in which registration procedure will happen and the communication with the office.

More information here.

Source: Lexology.

Brief IP news

briefs_1131. Interbrand: Best Global Brands 2017. For more information here.  

2. Microsoft v Motorola. For more information here.

3. Leibniz: Biscuits vs. the University of Hannover. For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here

WIPO Magazine – August

coverWIPO published the August edition of its WIPO Magazine where you can find:

  • Protecting traditional cultural expressions – some questions for lawmaker
  • Copyright exceptions: an archivist’s perspective
  • Twelve strategies to manage global patent costs
  • Clean water for all: the quest of a Swiss water entrepreneur
  • Factoring gender into innovation for better outcomes

For more information here.