Chile joins DesignView

chile-674568_960_720.pngEUIPO reports about the accession of Chile to the global database for industrial designs DesignView. With additional 4500 designs from Chile, the total number of accessible designs through this database become over 14 million.

For more information here: “Chile joins DesignView”

Marvel fights against BlackBerry because of ‘Jarvis’

iron-man-933709_960_720.jpgMarvel filed an opposition against a BlackBerry’s attempt to register a trademark for ‘Jarvis’ in class 42 in the US.

As it is well-known ‘Jarvis’ is a character, an AI software assistant to Toni Stark, another character from the “Iron Man” comics and movies.

Marvel is the owner of an earlier trademark ‘Jarvis’ registered in class 9:

Computer application software that may be downloaded via global computer networks and electronic communication networks for use in connection with mobile
computers, mobile phones, and tablet computers, namely, software for use as a
voice-controlled personal digital assistant.

According to the company, there is a significant chance for consumer confusion between both marks because of the reputation of its trademark which has been gained throughout the years in connection with Marvel movies and different merchandising activities such as Lego own movies, video games, etc.

This case is intriguing by its own. On one hand, we have a registered trademark for a name which is used as a character in comics and movies. On another hand, there is an attempt for registration of the same mark but for another class of real services. The question here is whether the use of a trademark as a character is enough in order to stop such following applications. Yes, merchandising use, especially for video games, is a point in the right direction but it is interesting to what extent a reputation connected to a fictional character for software can be useful to stop identical signs for real software in the real world.

Source: WIPR (Marvel hits out at BlackBerry over ‘Jarvis’ TM)

 

Global Innovation Index 2019

gii_2019_1200.jpgWIPO published its Global Innovation Index for 2019. Switzerland was ranked as the most innovative nation in the world followed by Sweden and the US. The rest of the countries in the top 10 are Nederland, Finland, the UK, Singapour, Germany, Denmark, and Israel.

Bulgaria is ranked 40 which is three places behind the last year’s position. More data for the country can be found here.

More information regarding this index you can found here.

Breaking news – Can clinical trials constitute a genuine trademark use according to the ECJ?

fish-oil-1915423_960_720The European Court has ruled in case C–668/17 P, Viridis Pharmaceutical Ltd v EUIPO, Hecht-Pharma GmbH. The case concerns:

On 30 September 2003, Viridis filed an EU trademark application to the EUIPO for registration of the word sign ‘Boswelan’ for ‘pharmaceuticals and health care products’ in Class 5.

On 18 November 2013, Hecht-Pharma requested revocation of that mark for all goods in pursuant to Article 51 (1) (a) of Regulation No 207/2009 because it was not genuinely used.

By decision of 26 September 2014, the Cancellation Division of EUIPO revoked Viridis’ trademark for all goods.

On 6 November 2014, Viridis brought an appeal before the Board of Appeal of EUIPO against the decision of the Cancellation Division. However, the Fifth Appeal Chamber of EUIPO dismissed that appeal.

The Board of Appeal held that the evidence produced by Viridis was not capable of proving the genuine use of the mark at issue for the goods mentioned in the application. The provided evidence regarded only acts of a purely internal nature which relate to a clinical trial. These acts don’t concern any activities that are of commercial nature or that are visible for the market. In addition, they are not a direct preparatory action or an action contributing to the forthcoming real market use of the mark at hand.

Secondly, referring in particular to the definition of a reasonable cause for non-use which follows from the text of the TRIPs Agreement, the Board of Appeal found that, in the present case, the conduct of a clinical trial in itself was not independent of Viridis’s will, to justify the non-use of the disputed mark. Since the duration of the clinical trial depends on the funds the proprietor of the mark decides to use, that circumstance does not fall within the category of obstacles beyond his control. Liability for the length of proceedings can be assumed to have been transferred to an external body only from the time when an official application for a market distribution was made. The protection of European Union marks by Regulation No 207/2009 does not appear to be necessary before such an application is made and if a pharmaceutical company nevertheless decides to register a European Union trademark many years before that application, it would be responsible for the delay associated with the clinical trial.

The European Court of Justice confirmed this EUIPO decision. According to the court, the fact that clinical trials are carried out can not be a ground for non-use of the mark. Preparatory actions can only be considered as a reason for non-use only if they have a commercial nature and are visible to the market. In this case, clinical tests do not guarantee that the product will enter the market, there is no request for commercialization of the product. Furthermore, these tests were started a long after the trademark had been filed. In summary, this can not be an objective reason for the non-use of the trademark because this use depends entirely on the applicant’s strategy and financial capacity.

Black Friday cannot be a trademark in Austria

pexels-photo.jpgBlack Friday is one of the most anticipated days of the year for consumers when it comes to promotions and trade deals. Many people are attracted by the idea to buy something at a serious discount.

This is one of the reasons though why there are so many attempts for it monopolizing as a trademark sign.

In Europe, for example, there are several such cases. One of them, in Austria, has come to an end recently when the Austrian Court ordered that Black Friday cannot function as a trademark because it is not distinctive enough for the classes of goods and services for which the trademark was applied for.

In many countries around the world, even not English speaking, the phrase is well-known as a meaning for most of the people and as such, it cannot serve as a source of origin.

The case concerns an attempt by a Chinese company, which as an owner of registered Black Friday mark, tries to give licenses to Austrian companies that want to use it in their promotions.

This is not the onliest case, however. There is a similar lawsuit in Germany, which now is pending before the Federal Patent Court.

In Bulgaria, there were several Black Friday trademarks which now are canceled.

A brief search in the TMView database shows that there are even more such trademarks around the world. Most of them, which are only words marks or in combination with undistinctive visual representations, are ended.

Nevertheless, there are other similar marks that include additional words or graphics that are registered. The question here is to what extent they are useful considering their low distinctive character.

Source: Axel Anderl and Alexandra Ciarnau for Lexilogy.

Audiovisual archives and transfer of copyrights

set-3884399_960_720.jpgThe Advocate General of the European Court G. HOGAN has issued it opinion in case C‑484/18 Société de perception et de distribution des droits des artistes-interprètes de la musique et de la danse (Spedidam), PG, GF v Institut national de l’audiovisuel.

The case concerns the following:

The INA is a commercial State body established by law in 1974. It is responsible for conserving and promoting the national audiovisual heritage. It keeps the audiovisual archives of ‘national broadcasting companies’ (national radio and television stations) and helps with their exploitation.

As I have already observed, PG and GF are the two sons and successors in title of ZV, a world-famous jazz drummer. They allege that the INA marketed on its website without their authorisation 26 video recordings and a phonogram reproducing performances by their late father. They brought an action based on Article L. 212-3 of the Intellectual Property Code, under which a written authorisation of the performer is required for the fixation of its performance, its reproduction and its communication to the public.

The INA pleads in response that Article 49(II) of the Law on freedom of communication allows it to exploit the archives in return for paying performers royalties set by collective agreements concluded with their representative trade unions. PG and GF counter in turn, inter alia, that these statutory provisions which derogate from the protection of performers conflict with the provisions of Directive 2001/29.

By judgment of 24 January 2013, the tribunal de grande instance de Paris (Regional Court, Paris, France) ordered the INA to pay PG and GF the sum of EUR 15 000 in compensation for the damage suffered as a result of the unauthorised exploitation of the interpretations in question. By a judgment of 11 June 2014, the cour d’appel de Paris (Court of Appeal, Paris, France) confirmed in substance the judgment delivered at first instance.

In particular, these two courts considered that the application of Article 49(II) of the Law on freedom of communication was subject to the prior authorisation of the performer, whereas proof of such authorisation would not have been provided by the INA.

However, by judgment of 14 October 2015, the Cour de Cassation (Court of Cassation) overturned the judgment of the cour d’appel (Court of Appeal). It ruled that the cour d’appel (Court of Appeal) erred in holding that the application of the derogating regime was subject to proof that the performer had authorised the first exploitation of his performance, thus adding to the law a condition that it did not include. Following this judgment, the cour d’appel de Versailles (Court of Appeal, Versailles, France), at the request of the INA, dismissed the claims for compensation which had been brought against it.

Having heard the appeal brought by the successors in title against the latter judgment, the Cour de Cassation (Court of Cassation) entertained doubts about the compatibility with EU Law of the French legislation and the interpretation of various provisions of Directive 2001/29.

According to the Cour de Cassation (Court of Cassation), the special regime enjoyed by the INA does not fall within any of the exceptions and limitations to the rights referred to in Articles 2 and 3 of Directive 2001/29, provided for in Article 5 of the directive. The Cour de Cassation (Court of Cassation) is also of the opinion that the solution adopted by the Court in Soulier and Doke (3) is not applicable to the present case. That latter case concerned the reproduction of out of print books. While it is true that the legislation on out of print books at issue in Soulier and Doke had derogated from the protection guaranteed to authors by Directive 2001/29, the scheme introduced for the benefit of the INA in the general interest is intended to reconcile the rights of performers with those of producers as being of equal value within the system of that directive.

In those circumstances, the Cour de cassation (Court of Cassation) decided to stay the proceedings and refer the following question to the Court for a preliminary ruling:

‘Must Article 2(b), Article 3(2)(a) and Article 5 of Directive 2001/29 … be interpreted as not precluding national rules, such as those laid down in Article 49(II) of [the Law on freedom of communication], as amended by Article 44 of Law No 2006-961 of 1 August 2006, from establishing, for the benefit of the [INA], the beneficiary of the exploitation rights of national broadcasting companies in the audiovisual archives, derogating provisions under which the terms on which performers’ works can be exploited and the remuneration for that exploitation are governed by agreements concluded between the performers themselves or the employee organisations representing performers and that institute, which must specify, inter alia, the scale of remuneration and the arrangements for payment of that remuneration?’

The Advocate’s opinion:

Article 2(b), Article 3(2)(a) and Article 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as precluding a national rule, insofar as it provides for a transfer to the Institut national de l’audiovisuel (French National Audiovisual Institute) of the performers’ rights.

YouTube announced a new order for claiming copyright infringement

interaction-1233873_960_720.jpg

YouTube announced some changes in its copyright protection policy. From now on every copyright owner or author who considers that there is an infringement of their rights will have to provide timestamps in order to indicate where in the relevant content such infringements exist.

Until now there were no requirements in that regard.

The reason for this change is the fact that sometimes YouTube creators are confused to identify the relevant copyrighted content within their videos that they allegedly infringe.

Apart from this, YouTube will provide its creators with more editing options for the removal of such infringing content.

Source: WIPR.