Brief IP news

news-in-brief1. Popping prosecco’s bubble: geographical indications and the prosecco war. For more information here.

2. The importance of choosing the right brand protection strategy. For more information here. 

3. EU General Court Confirms Similarity of Trade Marks BILLA and BILLABON. For more information here.

LEGO lost a trademark dispute in Japan

despaired-2261021_1920The world well-known toy manufacturer LEGO lost a trademark dispute against the following trademark application filed in Japan for class 28 – cat toys:

Untitled

Against this application, LEGO invoked its Lego trademark for class 28 and claimed an acquired reputation amongst Japanese consumers.

The Japan Patent Office agreed that LEGO is a well-known trademark in the country for many years a conclusion supported even by the fact that half of the schools in Japan used Lego toys for educational purposes.

Nevertheless, the Office dismissed the opposition stating that both signs are not confusingly similar. The Lego’s argument that CATTY is descriptive terms as the first part of the later mark, was rejected.

According to the Office, the other reason for lack of confusion was the fact that the goods target different manufacturers, consumer audience and distribution channels.

Source: Masaki MIKAMI.

McDonald’s won a ‘dream’ lawsuit in the EU

people-2569070_1920The General Court of the European Union has ruled in case T‑428/18 McDreams Hotel GmbH v EUIPO.

It concerns an attempt for registration of the following European trademark in class 43:

download

Against this application, McDONALD’S filed an opposition based on 16 earlier trademarks such as McDONALD’S, Mc, McCOUNTRY,  McCAFE, McFAMILY for 29, 30, 43. In addition trademarks with reputation were claimed.

The EUIPO initially dismissed the opposition stating that both signs are not enough similar and what’s more the claimed reputation didn’t cover the restaurant’s and hotels’ services in class 43.

The Board of Appeal annulled this decision accepting that the later and the earlier signs are similar up to a point and that MC DEARMS can be perceived by the consumers as a part of the McDONALD’S family of trademarks that have established reputation in the EU for many years.

The General Court upheld this position. According to the court, the signs are similar enough both from a phonetic and visual point of view. They start with the MC abbreviation and their second words DONALD’S and DREAMS start with D and ending with S. Apart from this the colors in the later mark are similar to those used by the US company.

The Court considers that there is a link between the services offered by McDONALD’S and these in class 43 because of which the reputation of the earlier marks has to be taken into consideration as an important argument for possible consumer confusion.

Do you want to search for trademarks on your own?

Acting DirectorWhen you want to launch a new brand in the market one of the key moment is to be sure that there is no other identical or similar marks to yours. This is a crucial moment because otherwise after your launch you can be accused of infringement of rights by owners of earlier trademarks.

It’s not enough to check for such earlier marks just before the launch, it’s much better if you do this throughout the brand-building process because you will be able to make the necessary changes in your name without losing time at the last moment.

You have two main options to search for trademarks. The first one is to ask the relevant Patent Office to do that, which is possible because most of the Offices offer such a service. The downside here is that for every search you need to pay a fee and to lose some time due to the fact that such search reports are not instantaneous.

The alternative is to do this search on your own. Is this possible? Yes, it is. Most of the Patent Offices have free and open online databases for trademarks because this information is public. You can check them searching for your trademark.

However, you need to know some of the basic principles of trademark protection and how these database works and their nitty-gritty.

If you want to learn how to do such searches and to save time and money you can check this new Udemy course on this topic which will be launch very soon. It will teach you to perform trademark searches for the territories of the US, Canada, the UK, Republic of Ireland, Australia and New Zealand.

For early birds that sign up, there will be free coupons.

For more information here.

The European Patent Office is ready to issue Unitary EU patents

european-union-1328255_1280The European Patent Office expressed its readiness to issue the so-called  Unitary EU patents.

The Unitary Patent is a patent granted by the EPO for which unitary effect can be registered with the EPO for the territory of the participating EU Member States.  This patent is crucial for competitiveness, growth, and innovation in Europe.

For the time being, the Unitary Patent is not officially in action because of a lawsuit before the German Supreme Court, which has to decide whether this patent protection is in line with the German constitution.

Another uncertainty is what will happen with the UK after Brexit. The problem arises from the fact that the British government is against any possibilities where the European Court can have jurisdiction over the UK even in the case of the Unitary Patent.

For more information here.

Contracts and intellectual property – a decision by the European court

pexels-photo-169573The European court has ruled in case C‑666/18 IT Development SAS срещу Free Mobile SAS. The case concerns the following:

By a contract of 25 August 2010, amended by an addendum of 1 April 2012, IT Development granted a licence to and concluded a maintenance agreement with the company Free Mobile, a mobile phone operator offering mobile phone packages on the French market, for the ‘ClickOnSite’ software package, centralised project management software designed to enable Free Mobile to organise and monitor in real time the progress made by its teams and external technical service providers in deploying all its radiotelephone antennae.

By document of 18 June 2015, IT Development brought proceedings against Free Mobile before the tribunal de grande instance de Paris (Regional Court, Paris, France) for infringement of the copyright of the ClickOnSite software package and seeking compensation for its loss. IT Development alleged that Free Mobile had modified the software, in particular by creating new forms. In addition to the substantive nature, in IT Development’s opinion, of those modifications, it argued, in particular, that Free Mobile did not have the right to make such modifications because the provisions of Article 6 of the licence agreement, entitled ‘Scope of the licence’, stated, in essence, that the customer expressly undertakes not to reproduce, directly or indirectly, the software package, to decompile and/or carry out retro-engineering operations on it, as well as to modify, correct, adapt, create second works and add, directly or indirectly, to that software.

Free Mobile brought a counterclaim for abuse of process and argued that IT Development’s claims were inadmissible and unfounded.

By judgment of 6 January 2017, the Tribunal de grande instance de Paris (Regional Court, Paris) declared the claims brought by IT Development based on Free Mobile’s tortious liability inadmissible, dismissed Free Mobile’s claim for damages and interest for abuse of process and ordered IT Development to pay the costs. That court held that there are two separate sets of rules relating to liability in intellectual property matters, one being tortious liability in the event of infringement of the exploitation rights of the author of the software, as determined by law, the other being contractual liability in the event of infringement of a copyright reserved by contract, and that, in the present case, Free Mobile was clearly alleged to have failed to perform its contractual obligations, providing a basis for an action for contractual liability, and not for the tortious act of infringement of software copyright.

IT Development brought an appeal against that judgment before the cour d’appel de Paris (Court of Appeal, Paris, France), requesting the latter to refer a question to the Court of Justice for a preliminary ruling, to set aside the judgment at first instance and to declare the infringement proceedings which it had brought to be admissible. IT Development also seeks a declaration that the modifications to the software made by Free Mobile constitute copyright infringements, that Free Mobile be ordered to pay IT Development the sum of EUR 1 440 000 as compensation for the damage suffered and, in the alternative, that Free Mobile be ordered, on a contractual basis, to pay IT Development the sum of EUR 840 000 as compensation for that damage. It also requests, in any event, that Free Mobile and its subcontractor, Coraso, be prohibited from using the software and from extracting and reusing the data from it.

Free Mobile requests the cour d’appel de Paris (Court of Appeal, Paris) in particular, to uphold the provisions of the judgment at first instance, to order IT Development to pay it the sum of EUR 50 000 euros by way of damages and interest for abuse of process and to declare all IT Development’s claims inadmissible and in any event unfounded.

The referring court states that French civil liability law is based on the principle of non-cumulation, which means that, first, one person cannot hold another person liable in contract and tort for the same acts, and that, second, tortious liability is excluded in favour of contractual liability where those persons are bound by a valid contract and the damage suffered by one of them results from non-performance or improper performance of a contractual obligation. In addition, the referring court states that, under French law, copyright infringement, originally a criminal offence, is based on tortious liability but that, under that law, there is no provision under which such an infringement cannot exist where there is a contract binding the parties. In that respect, for example, infringement proceedings could be brought against a licensee who has infringed the limits of his contract in patent and trade mark matters.

However, the referring court points out that Article 2 of Directive 2004/48, which defines the scope of that directive, provides in general terms that the measures, procedures and remedies which it provides for are to apply to any infringement of intellectual property rights, without distinguishing between whether or not such infringement results from the non-performance of a contract.

In those circumstances, the cour d’appel de Paris (Court of Appeal, Paris) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does a software licensee’s non-compliance with the terms of a software licence agreement (by expiry of a trial period, by exceeding the number of authorised users or some other limit, such as the number of processors which may be used to execute the software instructions, or by modifying the source code of the software where the licence reserves that right to the initial rightholder) constitute:

–   an infringement (for the purposes of Directive [2004/48]) of a right of the author of the software that is reserved by Article 4 of Directive [2009/24] on the legal protection of computer programs,

–  or may it comply with a separate system of legal rules, such as the system of rules on contractual liability under ordinary law?’

The Court’s decision:

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs must be interpreted as meaning that the breach of a clause in a licence agreement for a computer program relating to the intellectual property rights of the owner of the copyright of that program falls within the concept of ‘infringement of intellectual property rights’, within the meaning of Directive 2004/48, and that, therefore, that owner must be able to benefit from the guarantees provided for by that directive, regardless of the liability regime applicable under national law.