What to happen with EU IP rights after Brexit – the EU Commission’s proposal

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The European Commission issued a proposal what to happen with the different EU intellectual property rights after Brexit.

In brief the Commission’s proposal is as follow:

The holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law – if need be on the basis of specific domestic legislation to be introduced.
In the specific case of protected geographical indications, protected designations of origin and other protected terms in relation to agricultural products (traditional specialities guaranteed and traditional terms for wine) protected under Union law before the withdrawal date, this principle should also imply that the United Kingdom puts in place, as of the withdrawal date, the necessary domestic legislation providing for their continued protection. Such protection should be comparable to that provided by Union law.

The implementation of this principle should include, in particular,the automatic recognition of an intellectual property right in the United Kingdom on the basis of the existing intellectual property right having unitary character within the Union.

Where applicable to the relevant right, the implementation of this principle should also
include:

  • the determination of the renewal dates;
  • the respect of priority and seniority principles;
  • the adaptation of ‘genuine use’ requirements and ‘reputation’ rules to the specific situation under consideration.

The implementation of this principle should not result in financial costs for the holders of intellectual property rights having unitary character within the Union. Any related
administrative burden for such holders should be kept to a strict minimum.

Applications for Intellectual property rights having unitary character within the Union. Where an application for an intellectual property right having unitary character within the Union has been submitted before an Union body in accordance with Union law before the withdrawal date and the administrative procedure for the grant of the right concerned is still on-going on that date, the applicant should be entitled to keep the benefit of any priority date in respect of such pending application when applying after the withdrawal date for an equivalent intellectual property right in the United Kingdom.

More Information can be found here.

 

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Contracts and why sometimes nobody cares for them

ContractLaw

IP Draughts published an interesting article about contracts and some of the reasons why contracting parties don’t follow partly or as a whole the relevant obligations set out in them. This is a problem for companies not only for some particular region but around the world.

Some of the reasons behind this are:

  • Operational managers have no capacity or enough information how to implement such contracts which were negotiated by the top managers.
  • Nobody in the company cares what the contract says.
  • The relevant employees are incapable of following detailed written procedures as set out in the contract because of lack of information or knowledge.
  • Team dynamics result in a different way of working.

All of this can lead to unpleasant lawsuits and disputes. To prevent such consequences every company have to implement the contract clauses in their standards and policies for work and to train their personal every now and then.

Brief IP news

briefs_1131.  European Innovation Scoreboard 2017. For more information here.

2. The ABC of IP strategy for a small R&D company. For more information here.

3. How can universities build their brands? For more information here.

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

Booking.com is eligible for trademark protection in US

The U.S. District Court for the Eastern District of Virginia has ruled that the following US trademark applied for Class 43 – hotel reservations is eligible for registration as a trademark for that class:

booking dot com logo 2

Initially, the USPTO refused to register this sign because of its descriptiveness and low distinctive character for the services from Classes 39 and 43.

According to the Court, however, the applicant was given enough pieces of evidence which show that the sign had acquired a secondary distinctiveness for the services from Class 43.

Because of that, the Court ordered the USPTO to register that mark for that class and to analyze whether it is suitable for registration in class 39  taking into account the color and font combination.

As it is well-known even low distinctive signs can receive trademark protection but only if they show acquired secondary meaning through intensive and prolong market use which to suggest that consumers perceive them as a trade source.

Source: The TTABlog.

Ferrari can lose its Testarossa trademark in Germany

model-car-2093994_960_720The Italian sports cars manufacturer Ferrari is on the way to lose its rights over the trademark Testarossa in Germany, which was been used in the past for one of its famous cars.

In the case at hand, the German company Autec AG filed an application for trademark Testarossa for bicycles. Against this application, an opposition was filed by Ferrari which in turn provoked a request for revocation of the mark based on alleged non-use of the mark for 5 consequence years.

According to the Court in Düsseldorf Ferrari failed to prove a genuine use of its trademark. All piece of evidence for after-sales and maintenance of the car was rejected because the used brand was only Ferrari.

Most likely the Italian company will appeal this decision.

Source: Lexology.

 

 

Wembley v Wembley Stadium: 0-1

The Wembley semi-professional  football club is on the way to lose its flowing European trademark registered for Classes 3, 6, 9, 12, 14, 16, 18, 20, 21, 25, 28, 32, 33, 35, 41, 43:

CJ4JX4FZVCC523YA2TMALSKFLHYPR7FBEFKMEOSGVOJRWQLN2DAGGSQIAVVAX55WZOUI5WSMGEC64

Although this mark received successful registration in 2012, four years later a procedure for cancellation was initiated by the Wembley Stadium based on a bunch of earlier trademarks Wembley Stadium and Wembley.

EUIPO issued a decision for cancellation one month ago. The reasons behind this are that the marks share identical or similar goods and the signs themselves are similar taking into account the fact that the dominant and distinctive element is Wembley. On top of that Wembley Stadium gave various pieces of evidence that its trademarks have acquired well-known status among consumers for the last 90 years.

This case is interesting because it clearly shows that not only the registration is vital for the future use of one mark but the initial search and clearing actions which goal is to secure the trademark use against such negative consequences.

Source: Lexology.