Patent enforcement in Japan

1280px-Flag_of_Japan.svg“Patent enforcement through the courts in Japan” is an interesting article in Lexology by  Rebecca Chen, Tetsuo Tsukanaka and Tatsuya Sawada.

The article covers the main moments typical for the patent enforcement in Japan, which courts are responsible for such cases and some characteristics of the enforcement process in the country.

More information here.

Refusal for ConnectedWork as an EU trademark

logo_USBThe General Court ruled in case T-491/15, where Volkswagen AG tries to register ConnectedWork  as an European trademark for the following goods and services:

-Class 9: ‘recorded content; audiovisual equipment and information technology; remote control apparatus, remote controls; antennas, vehicle navigation apparatus; mobile phones ; telephone apparatus; televisions; videophones; radios; compasses, navigation devices, navigation next generation connexted car platforms in the near future?instruments; telematic devices; telematic terminals; videophones, photo telegraphy apparatus; electronic translation devices (computers), electronic pocket translators; calculating machines, data processing equipment, computers, PDAs, fax machines, monitors (computer hardware and computer programs), devices adapted for use with computers, computer programs and software recorded and downloadable, in particular electronic data connections; pocket calculators; downloadable electronic publications; downloadable video files “;

– Class 38: ‘Telecommunications; telecommunications; compilation and communication of information (news agency), news agencies, telecommunication via platforms and portals on the Internet, providing access to information on the Internet, electronic exchange of messages using lines discussion forums and chat rooms on the internet, electronic mail, rental of telecommunication devices, radio and television programs, electronic mail; telecommunications information; providing access to users to global computer networks; providing telecommunications connections to services to global computer networks; providing access to users with computer programs on data networks; provision of discussion forums on the Internet; provision of video conferencing services; communication services via mobile phones; transmission of messages and images assisted by computer; call services (radio, telephone or other means of electronic communication); satellite transmission; telephony services and mobile telephony; telephone; Sending messages (telecommunications); rental of telecommunications equipment; rental of apparatus for transmitting messages; leasing access time to global computer networks; providing access to databases; Telematic Services; telematics communication services; sending data and document transfer via telematics;advice and information relating to all the aforesaid services included in this class “;

– Class 42: ‘Services of information technology, namely development, programming and software implementation, hardware development, hosting, software as a service and software, rental of equipment and facilities IT consulting services, advice and information relating to information technology, security, protection and restoration of information technology, conversion and data copying, data encoding services, analysis and computer diagnosis, research and development and qu’implémentation of computers and computer systems, computerized project management, data mining, digital tattoos, iT services, technology services concerning computers, computer networks services, services updating of computer systems memory banks, data migration services, updating of websites for third parties, control computer systems by remote access; creating web pages on the internet for others; advice and information relating to all the aforesaid services included in this class. “

EUIPO refused to register this sign based on absolute grounds, descriptiveness and lack of distinctiveness. The potential consumers can perceive the sigh as such characterized the mentioned goods and services in the light of the fact that they can perform connection and communication. There is no an element in the sign on which consumers can perceive it as an indication of origin which is prerequisite for registration of trademarks.

Source: Marques Class 46.

WIPO Magazine issue 6

coverWIPO issued its magazine for August 2016. You can find the following in this issue:

– Making quality medicines affordable:an interview with CIPL

– The Madrid System turns 125

– From milkmaids to multinational markets: Nestlé’s branding story

– Protecting the Olympic properties

– Publishing in the digital market

– WIPO Lex: building the world’s IP law database

– Strengthening Kenya’s IP landscape

– The Kectil program: a spotlight on young inventors in developing countries

For more information here.

Südtirol cannot be a trademark in EU

1253940660The General Court ruled in Case T- 11/15 and upheld the EUIPO’s decision for invalidation of EU trademark Suedtirol registered by Internet Consulting GmbH in 2002 for:

– Class 35: ‘Business management, business administration, office functions’;

– Class 39: ‘Packaging and storage of goods “;

– Class 42: ‘Scientific and technological services and research and design services relating thereto; analytical services and industrial research; design and development of computer hardware and software; legal services “.

In 2012, the Provincia Autonoma di Bolzano-Alto Adige filed for a declaration of invalidity with an argument for a conflict with geographical indication Trentino-Alto Adige / South Tyrol.

According to the Court such conflict exists because of:

  • the word Südtirol is well-known among German and Italian consumers, moreover this is an independent region recognized by the Italian Constitution.
  • the services applied for have no characteristics which to distinguish them from the geographical indication.
  • there are many companies in this region which use Südtirol in their names.
  • this region is famous with its quality goods and services.

Taking into account all the above, the General Court considered that this mark was registered contrary to Article 7 (1) c) of the EUTMR and must be keep free for all.

Source: Marques Class 46.

New attempt for registration of Oktoberfest as EU trademark

5026417052_f1db34a36b_bThe City of Munich is trying to register the term ‘Oktoberfest’ as a EU trademark again. The last time the application was refused based on absolute grounds – lack of distinctiveness.

This time the City’s industrial property representatives are gathered evidences for acquired distinctiveness taking into account the fact that ‘Oktoberfest’ is the most famous beer festival in the world.

It will be interesting what EUIPO will decide in that regard in light of the fact that registration of such marks is really challenging because in most of the cases the relevant term has been used for many years freely and so it has become descriptive.

Nevertheless, according to the EU legislation even in such case the term can be registered in presence of strong evidence for acquired secondary distinctiveness among the relevant consumers.

Source: WIPR

Cook Islands join the WIPO Convention

2000px-Flag_of_the_Cook_Islands.svgWIPO reports about the accession of Cook Islands to the Convention Establishing the World Intellectual Property Organization (WIPO Convention). The Convention comes into force for the country as of 27.10.2016.

For more information here.