EUIPO reports about the accession of Monaco to the general database for trademarks TMView. In that way, another 16 000 trademarks are added to this database, which makes the total number of accessible signs to 52 million.
For more information here.
Month: February 2019
New fees regarding international trademarks for Tunisia
WIPO reports about changes regarding the individual fees payable in case of applications for registration of international trademarks where Tunisia is a designated country. The fees will enter into force on 28.02.2019 and are as follow:
New – E-filling of trademarks in Austria
EUIPO reports about a new option introduced by the Australian Patent Office for e-filing of trademark applications. This will facilitate significantly the trademark registration process in the country.
Apple lost a lawsuit against Pear in the EU
Apple Inc. lost an interesting lawsuit before the General Court of the European Union regarding its famous trademark logo. The case at hand concerns an attempt by the Chinese company Pear Technologies Ltd to register the following European trademark:
For classes of goods and services:
Class 9: ‘Personal computers; laptop computers; handset and tablet mobile digital electronic devices for the sending and receiving of telephone calls and/or any digital data and for use as a handheld computer; apparatus for recording, transmission or reproduction of sound or images; videophones, video-tablets, pre-recorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, computer hardware, software and firmware, namely operating system programs, application development computer software programs for personal and handheld computers or handheld mobile digital electronic devices; computer, handheld and mobile handset device peripherals products; parts, fittings and accessories for all the aforesaid goods’;
Class 35: ‘Providing consultancy on digital marketing; providing CRM solution and business solution design services’;
Class 42: ‘Maintenance and updating of computer software; providing information concerning computer software via the internet and other computer and electronic communication networks; computer network services; providing consultancy on networking, webpage design; providing server hosting services; providing domain management services; provision of software applications for handheld, tablets, personal computer and laptop computer devices and data centre management; technical consultancy; all aforesaid services also as business to business and all aforesaid services also as business to consumer or consumers’.
Against this application an opposition was filed by Apple on the ground of its following earlier figurative trademark:
For classes of goods and services:
Class 9: ‘… Computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; … digital music and/or video players; MP3 and other digital format audio players; … handheld and mobile digital electronic devices for the sending and receiving of telephone calls; … computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; … computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server …’;
Class 35: ‘… Retail store and online store services in the field of entertainment featuring music, video, … musical works, pre-recorded audio and audio-visual works and related merchandise, and music related electronic products, via the Internet and other computer, electronic and communications networks …’;
Class 42: ‘… Application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program, audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs …’
Initially, the EUIPO upheld the opposition, the main argument for which was the proved reputation of Apple’s trademark among the consumers in the EU.
In the appeal, however, The General Court annulled this decision stating that EUIPO erred in its assessment. The reasons for this conclusion were that even though Apple’s sign has a reputation, which broadens its protection scope, this can be an argument only in a case that both trademarks are phonetically, visually and conceptually similar. In the case at hand, this is not true.
In that regard, it should be noted, first, that it is admittedly true that each of the conflicting marks may be described as using the image of a fruit. However, as all the parties to this action also argue, the mere fact that there is a generic term which includes the terms used to describe the semantic content of the marks at issue is not a relevant factor in the context of the conceptual comparison. In the same vein, it should be borne in mind that the examination of the similarity takes into consideration the conflicting marks as they have been registered or as they have been applied for. Accordingly, it should be observed that the conflicting marks evoke the concept of ‘fruit’ only in an indirect manner. It follows from the considerations set out in paragraphs 62 and 63 above that the conflicting marks will not be perceived as depicting two unidentifiable fruits, but rather as (i) an apple with a bite taken out of it, possessing a leaf, and (ii) a pear with a stem. In those circumstances, it is inconceivable that the relevant public displaying a high level of attention will use the term ‘fruit’ instead of ‘pear’ or ‘apple’ when referring to the conflicting marks.
Next, it should be borne in mind that, according to the case-law cited in paragraphs 22 and 61 above, the comparison of the conflicting marks must be based on the overall impression given by them, by reference to the intrinsic qualities of those marks, and, moreover, conceptual similarity arises from the fact that both marks use images with a similar semantic content. These considerations counter the taking into account of factors such as those mentioned in paragraph 32 of the contested decision, which are not based on the perception of the semantic content of the images used by the conflicting marks, as they have been registered or as they have been applied for, but which are distant from the actual depiction of them. The protection which is granted to an earlier figurative mark does not apply, in the absence of commonalities with the depiction of the mark cited in opposition, to the general category of phenomena that it depicts. The Board of Appeal was therefore wrong to take the view that the marks at issue could be regarded as being conceptually similar on the sole ground that the fruits which they depicted shared several characteristics in real life.
Case T‑215/17, Pear Technologies Ltd v European Union Intellectual Property Office (EUIPO)
The Polo/Lauren Company won a case in The EU regarding its famous logo
The Board of Appeal of the EUIPO has ruled in case R 1272/2018-5 STYLE & TASTE, S.L. v The Polo/Lauren Company L.P., which concerns an invalidation procedure against the following European trademark registered in 2005 for classes 9, 20, 24 and 25:
The ground for this invalidation is the following earlier registered Spanish industrial designs:
The EUIPO dismissed the request because:
- by not submitting the translation of the registered certificate for the earlier Spanish industrial design, the cancellation applicant did not prove the validity and scope of protection of this earlier right,
- mere reference to national law would not be considered sufficient, and
- the cancellation applicant did not submit the necessary national legislation in force and did not put forward a cogent line of argument as to why it would succeed under the specific national law in preventing the use of the contested EUTM.
The decision was appealed.
According to the the Board of Appeal, the applicant failed to prove its rights and to submit the necessary argumentation in order to invalidate the trademark at hand. What’s more, after some inspection, it is turned out that the aforementioned designs are not valid anymore due to a lack of renewal.
This case comes to show how essential is the good preparation and implementation for initiating such procedures before the Patent Offices around the world.
Source: IPKat.
China introduced a new IP Court
China introduced a new intellectual property court on 01.01.2019. The main aim of this new court, which is a part of the Supreme People’s Court, is to bring more quality and efficiency regarding all sorts of intellectual property desputes in the country and in that way to send a positive signal to all local and foreign market players.
The new court will be responsible for:
- Civil law cases after the first instance
That includes: Invention patent, utility model patent, layout designs for integrated circuits, technical inventions, computer software, new plant varieties - Administrative cases at first instance concerning more technical issues, including designs and monopoly disputes
- Protest cases after first instance appeal cases which have entered into force after first instance independently of the civil cases or administrative cases mentioned above.
For more information here.
Source: Dr. Meyer-Dulheuer & Partners LLP.
INTELLECTUAL PROPERTY PLANET 