WIPO reports about the accession of Malaysia to the Madrid Protocol for international registration of trademarks. The Protocol will come into force for the country on 27.12.2019. In that way, the Member States of the Protocol will become 106.
As it is well-known, using the Madrid system every applicant can register a trademark in different Member States based on one application, reducing the necessary time and money in that way.
The Advocate General of the European Court J. KOKOTT has issued her opinion on case C‑766/18 P, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO. The case concerns the following:
On 9 July 2014, M. J. Dairies EOOD filed an application with EUIPO for registration of the colour figurative mark reproduced below:
The goods and services for which registration was sought are in Classes 29, 30 and 43, for certain foodstuffs, including cheese, and certain catering services.
The Foundation is the proprietor of the collective word mark HALLOUMI, which was registered by EUIPO on 14 July 2000 under number 1082965 for goods in Class 29 with the description ‘cheese’. On 12 November 2014, it filed a notice of opposition against the application, relying in particular on a likelihood of confusion within the meaning of Article 8(1)(b) of the Trade Mark Regulation.
The Opposition Division rejected the opposition and the appeal filed against its decision was also unsuccessful. Finally, by the judgment under appeal of 25 September 2018, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO — M. J. Dairies (BBQLOUMI) (T‑328/17, not published, EU:T:2018:594), the General Court also dismissed the action brought against the decision made by the Board of Appeal.
The Advocate dismissed the Foundation’s appeal with the following arguments:
At the hearing, EUIPO thus rightly argued that preferential status under Article 66(2) of the Trade Mark Regulation has a similar effect to the registration of a descriptive mark in accordance with the previously mentioned judgment in Formula One Licensing v OHIM. Such a mark is accorded the necessary minimum degree of distinctive character to justify its registration, but not necessarily increased distinctive character.
The General Court does not find otherwise when, in paragraph 71 of the judgment under appeal, it acknowledges the HALLOUMI mark as having only a minimum degree of distinctive character and thus rejects a likelihood of confusion.
In paragraphs 50 to 53 and 70 of the judgment under appeal, it expressly held that the HALLOUMI mark is not perceived as a designation of (individual or collective) commercial origin, but as a designation of a speciality cheese. The description of certain goods is not, however, accorded preferential status by Article 66(2) of the Trade Mark Regulation, even though the public might associate them with a particular geographical origin. Moreover, the assessment of the perception of a mark is a factual assessment and thus falls outside the scope of the review by the Court of Justice in appeal proceedings.
Thus, the distinctive character of a geographical collective mark is also to be assessed according to the extent to which it identifies the collective commercial origin of the goods or services concerned.
As has already been explained, however, according to the factual findings made by the General Court, the HALLOUMI mark gives rise to such identification at most to a low degree. Consequently, the General Court’s reasoning regarding the distinctive character of the HALLOUMI mark and the likelihood of confusion, and in particular paragraphs 41 and 71 of the judgment under appeal, in which the General Court acknowledges the HALLOUMI mark as having only a minimum degree of distinctive character which is not sufficient to give rise to a likelihood of confusion with the mark at issue, is not vitiated by an error in law.
Nor is this conclusion called into question by the fact that it significantly restricts the effectiveness of Article 66(2) of the Trade Mark Regulation and the protection of geographical collective marks. The proprietors of a geographical collective mark still enjoy minimum protection, permitting them to prevent registration of identical marks for the same products. At the same time, they can influence the perception of the mark if they use it in such a way that it acquires distinctive character.
Ultimately, there is also no need for more extensive protection because the rules governing protected designations of origin and protected geographical indications can provide sufficient protection outside the scope of trademark law. Those rules have the additional benefit, compared with the geographical collective mark, that under Article 12(1) of Regulation No 1151/2012 protected designations of origin and protected geographical indications may be used by any operator marketing a product conforming to the corresponding specification. Membership of an association, as provided for in Article 67(2) of the Trade Mark Regulation, is unnecessary in this regard. Furthermore, EUIPO rightly asserts that it would be contradictory if producers’ associations could obtain equivalent or even stronger protection for geographical designations on the basis of trademark law than in the protected designation of origin system.
1. World Intellectual Property Indicators: Filings for Patents, Trademarks, Industrial Designs Reach Record Heights in 2018. For more information here.
2. How to protect your brand on social media — seven top tips. For more information here.
3. SP2025: Exchange of views at the European Parliament. For more information here.
Source: Intellectual Property Center at the UNWE. More information can be found here.
Adidas won an interesting opposition against a trademark application for “ADIDOG”, applied for clothing for dogs in Japan.
According to the German manufacturer, which invoked several of its earlier Adidas trademarks, the trademarks in the case at hand were very similar, which in turn could create a consumer cofusion. Another reason that could lead to this conclusion were the fact that Adidas has a significant and longstanding reputation in Japan and that the signs were used for similar goods although the target market is different.
The Japanese Patent Office confirmed this position refusing the ADIDOG” application. This was a second win for Adidas which successfully stopped the following application for combined “ADIDOG” mark some time ago:
The Advocate General of the European Court TANCHEV issued his opinion in the case C‑371/18 Sky plc, Sky International AG, Sky UK Limited v SkyKick UK Limited, SkyKick Inc. This case concerns one very trendy issue: to what extent the unreasonable wide scope of goods and services of one trademark application constitute bad faith. In details:
Sky is the owner of a family of SKY trademarks registered for different classes of goods and services such as 3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28 and 35 to 45.
Sky brought an action alleging that SkyKick had infringed those trade marks. For the purposes of their infringement claims, Sky rely upon the registrations of the trade marks in respect of the following goods and services (although not every trade mark is registered for all these goods and services): (i) computer software (Class 9); (ii) computer software supplied from the internet (Class 9); (iii) computer software and telecoms apparatus to enable connection to databases and the internet (Class 9); (iv) data storage (Class 9); (v) telecommunications services (Class 38); (vi) electronic mail services (Class 38); (vii) internet portal services (Class 38); and (viii) computer services for accessing and retrieving information/data via a computer or computer network (Class 38).
Sky have made extensive use of the trade mark SKY in connection with a range of goods and services, and in particular goods and services relating to Sky’s core business areas of (i) television broadcasting, (ii) telephony and (iii) broadband provision. SkyKick accept that, by November 2014, SKY was a household name in the United Kingdom and Ireland in those areas. However, Sky do not offer any email migration or cloud backup goods or services, nor is there any evidence that they plan to do so in the immediate future.
SkyKick contend that each of the trade marks should be declared (partly) invalid on the ground that they are registered for goods and services that are not specified with sufficient clarity and precision.
The referring court states that that contention raises two issues. The first issue is whether that ground for invalidity may be relied upon against a registered trade mark.
The judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) established (and Article 33(2) of Regulation (EU) 2017/1001 (4) now requires) that an applicant for a trade mark must specify the goods and services in respect of which registration is sought with sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark. If the applicant fails to do so, the competent authority should refuse to allow the application to proceed to registration without the specification being amended to make it sufficiently clear and precise.
According to the referring court, it does not necessarily follow that, if the applicant fails to do so and the authority fails to ensure that the applicant rectifies the lack of clarity or precision during the examination of the application, the trade mark can be declared invalid on that ground after registration. The grounds for invalidity listed in the regulation do not contain any express requirement that the specification of goods and services in an application for registration of an EU trade mark should be clear and precise. The position is, in essence, the same in relation to a national trade mark.
The second issue raised by the referring court is whether, if the ground for invalidity can be relied upon, the specifications of any of the trade marks are objectionable.
The referring court considers that registration of a trade mark for ‘computer software’ is too broad, unjustified and contrary to the public interest. However, it also states that it does not necessarily follow that that term is lacking in clarity and precision. Indeed, it appears prima facie to be a term whose meaning is reasonably clear and precise. Thus, it is sufficiently clear and precise to make it possible to decide whether SkyKick’s goods are identical to it. On the other hand, the referring court finds it difficult to see why the reasoning of the Trade Mark Offices forming the European Trade Mark and Design Network (TMDN), as set out in the Common Communication of 20 November 2013, with regard to ‘machines’ in Class 7 is not equally applicable to ‘computer software’. (5)
Moreover, the referring court queries whether the validity of the marks at issue may be affected by the applicant’s bad faith at the moment of applying for registration of the trade marks.
SkyKick contend in the main proceedings that the trade marks were registered in bad faith because Sky did not intend to use the trade marks in relation to all of the goods and services specified in the respective specifications. SkyKick accept that Sky intended to use the trade marks in relation to some of the goods and services specified. Nevertheless, SkyKick’s primary case is that the trade marks are invalid in their entirety. In the alternative, SkyKick’s secondary case is that the trade marks are invalid to the extent to that the specifications cover goods and services for which Sky had no intention to use the trade marks.
The referring court states that, in comparison with the case-law of the Courts of the European Union, UK courts and tribunals have focused more closely on the requirement of intention to use, on account of the role that section 32(3) of the United Kingdom Trade Marks Act 1994 (‘the 1994 Act’) plays in the UK trade mark system. (6)
However, the referring court queries whether that provision is compatible with EU law. Should it be held to be compatible, then the referring court also has doubts as to the scope of the requirement of intention to use the trade mark.
Therefore, the High Court of Justice (England and Wales), Chancery Division, decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark?
(2) If the answer to [the first] question is [in the affirmative], is a term such as “computer software” too general and [does it cover] goods which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark?
(3) Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?
(4) If the answer to [the third] question is [in the affirmative], is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services?
(5) Is section 32(3) of the UK Trade Marks Act 1994 compatible with [Directive (EU) 2015/2436 (7)] and its predecessors?’
The Advocate General’s opinion:
(1) A registered EU trade mark or national trade mark may not be declared wholly or partially invalid on the sole ground that some or all of the terms in the specification of goods and services lack sufficient clarity and precision. A lack of clarity and precision in the specification of goods and services may nevertheless be taken into account when assessing the scope of protection to be given to such a registration.
(2) However, the requirement of clarity and precision may be covered by the ground for refusal or invalidity of marks which are contrary to public policy, as laid down in Article 3(1)(f) of First Council Directive 89/104 and Article 7(1)(f) of Council Regulation No 40/94 , in so far as registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest. A term such as ‘computer software’ is too general and covers goods and services which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark.
(3) In certain circumstances, applying for registration of a trade mark without any intention to use it in connection with the specified goods or services may constitute an element of bad faith, in particular where the sole objective of the applicant is to prevent a third party from entering the market, including where there is evidence of an abusive filing strategy, which it is for the referring court to ascertain.
(4) In the light of Article 13 of Directive 89/104 and Article 51(3) of Regulation No 40/94, where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark is to be declared invalid as regards those goods or services only.
(5) Section 32(3) of the United Kingdom Trade Mark Act 1994 is compatible with Directive 89/104 provided that it is not the sole basis for a finding of bad faith.
1. Protecting your shop interior: what are the options? For more information here.
2. Protecting your intellectual property. For more information here.
3. Patentability of pharmaceutical inventions, 15.01.2020 – 16.01.2020, Brussels. For more information here.
Source: Intellectual Property Center at the UNWE. More information can be found here
The topic for the protection of graffiti works has made the headlines in recent years. One of the possible ways this to be achieved is through the registration of trademarks.
In light of this, a recent trademark case has attracted our attention. The well-known graffiti artist Banksy has faced a cancelation procedure against his following registered European trademark in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, 42:
The procedure was initiated by the French greeting card maker Full Colour Black on the ground of lack of a genuine trademark use.
As a reaction, Banksy announced the launching of an online store where he will sell products with its mark.
However, this is highly unlikely to succeed because all pieces of evidence have to be dated before the date of the cancelation request, otherwise, they can’t suggest any genuine market use other than just an attempt for maintaining the trademark registration.
According to the law, every trademark can be canceled if it is not used for 5 consecutive years.
This situation is quite difficult for most of the artists because although they can register a trademark, its use, in the long run, is always a challenge especially when it comes to wider scope of goods and services.
Another possible and available tool, however, can be copyright, where there are no requirements for registration.
Source: WIPR.
INTELLECTUAL PROPERTY PLANET 