Trecina Surti (Novagraaf) published a short guide in Lexology regarding some of the most important considerations when it comes to brand building and trademark registration. The conclusions which can be made are:
- It is highly recommendable descriptive brand names to be avoided. The reasons for these are many. From one hand, some of these names will receive refusal for trademark registration by the Patent Offices. From another point of view, such names can be registered in combination with graphics or other distinctive words, however, this protection will be weaker due to the fact that the descriptive elements can be used by everyone.
- The brand name descriptiveness has to be evaluated bearing in mind the different languages. For instance, in the case of European trademarks, even if the brand name is distinctive in one of the languages in the EU, in case that it is descriptive in another one, the trademark can receive a refusal.
- Clearing trademark search for earlier similar or identical marks has to be done before any use of a trademark, because otherwise if you start using it, you can be accused of trademark infringement.
The full article can be found here.
McDonald ’s lost a trademark dispute with the Irish food chain Supermac’s regarding its European trademark ‘Big Mac’. The Irish company attacked this mark with a request for cancelation based on a lack of genuine use on the territory of EU.
According to the EU law, if the trademark owner doesn’t use its mark for a period of 5 years before the cancelation request, he can lose the rights over its mark unless evidence for genuine use is submitted.
McDonald’s did exactly this, submitting affidavits with sales figures under the grand as well as brochures and printouts of the company’s websites and a Wikipedia page providing information on the Big Mac.
According to the EUIPO, however, these materials don’t show a real use of the aforementioned trademark. First of all, affidavits are signed by McDonald ’s employees which give them less weight because they are not independent evidence.
Regarding the brochures, there was no information on how they were used and whether they reached the consumers. The printouts from the company’s site can’t show any interactions with the consumers or any sales.
“Wikipedia entries cannot be considered as a reliable source of information”, as they can be edited by the website’s users, the ruling said.
It is highly likely that McDonald ’s will appeal this decision. Nevertheless, this case clearly shows the need for thorough preparation when it comes to gathering evidence for such trademark disputes because otherwise the trademark rights can be threatened.
As 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.
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.
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.
The 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 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.