Superman tried but lost a battle in Japan

One interesting dispute from Japan shows how language perceptions and differences can be crucial for trademark similarity.

In the case at hand, the well-known Japanese inventor Dr. Nakamatsu filed an application for the following trademark in classes 5,9,10,25,28, 35, and 45:

The mark was used for face shields which prevent from Covid-19 spreading.

Against this application, an opposition was filed by Warner Bros. Entertainment Inc. based on early registered word and combined marks for SUPERMAN in classes 25 and 28. According to the company, there was a similarity between both signs from a visual, phonetic, and conceptual point of view which can make consumers to associate the latter mark with the superhero character Superman.

The Patent Office, however, disagreed and dismissed the opposition in its entirety. According to the Office, considering the way how the mark applied is represented, including in katakana characters, there was no conceptual and visual similarity. The Office didn’t find specific meaning in the later mark to associate with the superhero character.

That’s an interesting decision which of course is based on national language specifics and perceptions. If this was a case in Europe or the US, most likely the opposition would be successful because the word M.E.N can be interpreted as MEN which is a plural form of MAN, so there is a solid conceptual and phonetic similarity.

Source: Masaki MIKAMI – Marks IP Law Firm.

Interlocutory injunctions and patent protection – an EU Court decision

The European Court has ruled in the case C‑44/21 Phoenix Contact GmbH & Co. KG v HARTING Deutschland GmbH & Co. KG, Harting Electric GmbH & Co. KG, that has the following background:

On 5 March 2013, Phoenix Contact filed a patent application for a plug connector comprising a protective conductor bridge. In the proceedings prior to the grant of that patent, observations on the patentability of the product were submitted by Harting Electric.

On 26 November 2020, the patent applied for was granted to Phoenix Contact, inter alia for Germany.

On 14 December 2020, Phoenix Contact brought an application for interim relief before the referring court, seeking an injunction prohibiting HARTING Deutschland and Harting Electric from infringing the patent at issue.

The mention of the grant of that patent was published in the European Patent Bulletin on 23 December 2020.

On 15 January 2021, Harting Electric filed an opposition to that patent with the European Patent Office (EPO).

The referring court notes that it has reached the preliminary conclusion that the patent at issue is valid and that it is being infringed. It considers that the validity of that patent is not under threat.

However, that court states that it is prevented from ordering an interim measure on account of the binding case-law of the Higher Regional Court, Munich, Germany according to which, in order to issue an interlocutory injunction for patent infringement, it is not sufficient that the patent concerned has been granted by the granting authority, in this case the EPO, after a detailed examination of its patentability and that the question of the validity of that patent has also been reviewed by a court during the examination of the application for interim relief.

Thus, according to that case-law, for interim measures to be ordered, the patent concerned must also be the subject of an EPO decision in opposition or appeal proceedings, or of a decision of the Federal Patent Court, Germany in the context of invalidity proceedings, confirming that the patent concerned confers protection on the product in question.

Taking the view that such case-law is incompatible with EU law, in particular with Article 9(1) of Directive 2004/48, the referring court decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is it compatible with Article 9(1) of [Directive 2004/48] if German higher regional courts, which have jurisdiction at last instance in proceedings for interim relief, refuse, in principle, to grant interim measures for patent infringement if the validity of the patent in dispute has not been confirmed in opposition or invalidity proceedings at first instance?’

The Court’s decision:

Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.

New EU problems for Facebook regarding privacy protection

The European Court has ruled in case C‑319/20 Meta Platforms Ireland Limited, formerly Facebook Ireland Limited, v Bundesverband der Verbraucherzentralen und Verbraucherverbände – Verbraucherzentrale Bundesverband e.V.

The case concerns the issue of whether consumer protection associations bring legal proceedings for breach of privacy even without a particular mandate from consumers. The dispute has the following background:

Meta Platforms Ireland, which manages the provision of services of the online social network Facebook in the European Union, is the controller of the personal data of users of that social network in the European Union. Facebook Germany GmbH, which has its registered office in Germany, promotes the sale of advertising space at the internet address http://www.facebook.de. The Facebook internet platform contains, inter alia, at the internet address http://www.facebook.de, an area called ‘App-Zentrum’ (‘App Center’) on which Meta Platforms Ireland makes available to users free games provided by third parties. When consulting the App Center of some of those games, an indication appears informing the user that the use of the application concerned enables the gaming company to obtain a certain amount of personal data and, by that use, permission is given for it to publish data on behalf of that user, such as his or her score and other information. The consequence of that use is that the user accepts the general terms and conditions of the application and its data protection policy. In addition, in the case of a specific game, it is stated that the application has permission to post the status, photos and other information on behalf of that user.

The Federal Union, a body which has standing under Paragraph 4 of the Law on Injunctions, considers that the information provided by the games concerned in the App Center is unfair, in particular in terms of the failure to comply with the legal requirements which apply to the obtention of valid consent from the user under the provisions governing data protection. Moreover, it considers that the statement that the application has permission to publish certain personal information of the user on his or her behalf constitutes a general condition which unduly disadvantages the user.

In that context, the Federal Union brought an action for an injunction before the Regional Court, Berlin, Germany against Meta Platforms Ireland based on Paragraph 3a of the Law against unfair competition, the first sentence of point 11 of Paragraph 2(2) of the Law on Injunctions and the Civil Code. It brought that action independently of a specific infringement of a data subject’s right to protection of his or her data and without being mandated to do so by such a person.

The Regional Court, Berlin ruled against Meta Platforms Ireland, in accordance with the form of order sought by the Federal Union. The appeal brought by Meta Platforms Ireland before the Higher Regional Court, Berlin, Germany was dismissed. Meta Platforms Ireland then brought an appeal on a point of law (Revision) before the referring court against the dismissal decision adopted by the Higher Regional Court, Berlin.

The referring court considers that the action brought by the Federal Union is well founded, in so far as Meta Platforms Ireland infringed Paragraph 3a of the Law against unfair competition and the first sentence of point 11 of Paragraph 2(2) of the Law on Injunctions, and used an invalid general condition, within the meaning of Paragraph 1 of the Law on Injunctions.

However, that court has doubts as to the admissibility of the action brought by the Federal Union. It takes the view that it cannot be ruled out that the Federal Union, which did indeed have standing to bring proceedings on the date on which it brought the action – on the basis of Paragraph 8(3) of the Law against unfair competition and point 1 of the first sentence of Paragraph 3(1) of the Law on Injunctions – lost that status during the proceedings, following the entry into force of the GDPR and, in particular, Article 80(1) and (2) and Article 84(1) thereof. If that were the case, the referring court would have to uphold the appeal on a point of law brought by Meta Platforms Ireland and dismiss the action of the Federal Union, since, under German procedural law, standing to bring proceedings must endure until the end of the proceedings at last instance.

According to the referring court, the answer in that regard is not clear from the assessment of the wording, scheme and objectives of the provisions of the GDPR.

As regards the wording of the provisions of the GDPR, the referring court notes that the existence of standing to bring proceedings of not-for-profit bodies, organisations or associations which have been properly constituted in accordance with the law of a Member State, pursuant to Article 80(1) of the GDPR, presupposes that the data subject has mandated a body, organisation or association for it to exercise on his or her behalf the rights referred to in Articles 77 to 79 of the GDPR and the right to compensation referred to in Article 82 of the GDPR where the law of a Member State so provides.

The referring court states that standing to bring proceedings under Paragraph 8(3)(3) of the Law against unfair competition does not cover such an action brought on the basis of a mandate and on behalf of a data subject in order to assert his or her personal rights. On the contrary, it confers on an association, by virtue of a right peculiar to it and stemming from Paragraph 3(1) and Paragraph 3a of the Law against unfair competition, standing to bring proceedings on an objective basis against infringements of the provisions of the GDPR, independently of the infringement of specific rights of data subjects and of a mandate conferred by them.

In addition, the referring court observes that Article 80(2) of the GDPR does not provide for an association’s standing to bring proceedings in order to secure the application, objectively, of the law on the protection of personal data since that provision presupposes that the rights of a data subject laid down in the GDPR have actually been infringed as a result of the processing of specific data.

Furthermore, an association’s standing to bring proceedings, such as that provided for in Paragraph 8(3) of the Law against unfair competition, cannot result from Article 84(1) of the GDPR, under which the Member States are to lay down the rules on other penalties applicable to infringements of that regulation and are to take all measures necessary to ensure that they are implemented. The standing of an association, such as that referred to in Paragraph 8(3) of the Law against unfair competition, cannot be regarded as constituting a ‘penalty’ within the meaning of that provision of the GDPR.

As regards the scheme of the provisions of the GDPR, the referring court considers that it may be inferred from the fact that it harmonised, inter alia, the powers of the supervisory authorities that it is principally for those authorities to verify the application of the provisions of that regulation. However, the expression ‘without prejudice to any other … remedy’, which appears in Article 77(1), Article 78(1) and (2) and Article 79(1) of the GDPR, may undermine the argument that oversight of the application of the law is exhaustively governed by that regulation.

As regards the objective of the provisions of the GDPR, the referring court notes that the effectiveness of that regulation may support an argument in favour of associations having standing to bring proceedings on the basis of competition law, in accordance with Paragraph 8(3)(3) of the Law against unfair competition, independently of the infringement of specific rights of data subjects, since that would allow an additional opportunity to supervise the application of the law to remain, in order to ensure as high a level as possible of protection of personal data, in accordance with recital 10 of the GDPR. Nonetheless, accepting that associations have standing to bring proceedings under competition law may be considered to run counter to the objective of harmonisation pursued by the GDPR.

In the light of those considerations, the Federal Court of Justice decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Do the rules in Chapter VIII, in particular in Article 80(1) and (2) and Article 84(1), of [the GDPR] preclude national rules which – alongside the powers of intervention of the supervisory authorities responsible for monitoring and enforcing the Regulation and the options for legal redress for data subjects – empower, on the one hand, competitors and, on the other, associations, entities and chambers entitled under national law, to bring proceedings for breaches of [the GDPR], independently of the infringement of specific rights of individual data subjects and without being mandated to do so by a data subject, against [the person responsible for that infringement] before the civil courts on the basis of the prohibition of unfair commercial practices or breach of a consumer protection law or the prohibition of the use of invalid general terms and conditions?’

The Court’s decision:

Article 80(2) of Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation) must be interpreted as not precluding national legislation which allows a consumer protection association to bring legal proceedings, in the absence of a mandate conferred on it for that purpose and independently of the infringement of specific rights of the data subjects, against the person allegedly responsible for an infringement of the laws protecting personal data, on the basis of the infringement of the prohibition of unfair commercial practices, a breach of a consumer protection law or the prohibition of the use of invalid general terms and conditions, where the data processing concerned is liable to affect the rights that identified or identifiable natural persons derive from that regulation.

What is a database for intellectual property rights?

A database for intellectual property rights represents an organised way of storing information for all IP assets that one company or individual owns. Such a database is important because it allows these assets to be managed properly and their protection to be maintained successfully.

The database can include different sections depending on the type of intellectual property. Typically it would give easy access to the relevant information and the necessary flexibility for better efficiency.

Intellectual property databases are absolutely essential for every company or individual that possesses such assets.

Through such a database the owner can look over all of its assets, can follow the relevant deadlines for work with Patent Offices and business partners, can keep an eye on the different terms related to these assets, can work easily with its IP attorneys and customers, etc.

Without an IP database, the risk of missing deadlines or for example a term for renewing IP protection can rise significantly. What’s more, the owner will not know what IP assets possess and can miss opportunities for profiting from them or even can lose money.

The database gives a clear view of what you have and at the same time provides you with an option to manage your assets in a more efficient way.

If we put potential flexibility to the database this by itself can not only organize your assets but can save you time and money in the long run.

There are several options for the creation of an IP database:

• A standard excel sheet — is probably the easiest way to build an intellectual property database. You can create a classic excel table where to fill in the whole information for your IP rights. The plus here is that this is a very easy way, however, there are several downsides. First of all the excel file doesn’t have reminders that can pop up or can be sent to your email. Even in case, there are some solutions for that you will need to put additional efforts in that regard. Another problem could be if you store this file locally on your computer you can lose it because of technical issues. And when the file becomes too heavy it can be troublesome to be managed.
• A paid specialised software — is definitely the best option, because such software is built with the purpose of managing IP assets. There are two main downsides, however. The first is that such software is expensive in most cases, which could be a challenge for individual IP owners, small or even mid-sized companies. The other issue could be that the software can be complex requiring some specialised knowledge and training which could prove costly.
• Adapted cloud-based applications — the third option is to use some cloud-based apps that, while not created specifically for database purposes, with some adjustments could be utilized to do the job. This is a good choice for individuals, freelancers, authors, and small- to mid-size companies and startups. In most cases, it doesn’t require a large budget and it can be used without serious training.

I’m finding this third option quite interesting and capable of doing the job. That’s why I created this a Udemy course in order to show you how to use one such free application, in this case, Asana, to create your own IP database which will serve you well for the purpose it is built for. I hope that you will like the course.

Now there is a promo code — 95% OFF — for the course, you can find it here

You can find a referral link to the course here too.

Meta faces new infinite trademark problems in the US

As it is well-known Facebook’s parent company has been renamed Meta not so long ago, which triggers new trademark applications for META. This blog has already written about Facebook’s attempt to register such trademarks and the potential challenges due to many early registered similar trademarks around the world for similar goods and services.

In that regard, the Swiss non-profit Dfinity Foundation has initiated a lawsuit against Meta in the US, based on the following international trademark registered for the US, the EU, China, and Russia with priority since 2017:

The trademark is registered for:

09 Software; electronic publications for download.
35 Collection and systematization of information into computer databases; Data processing services; Business process management services and related services provided by consultants.
38 Providing access to computer networks, internet platforms, data banks and electronic publications; Digital audio and video data transmission services; Providing access to databases on the Internet, digital music, especially in MP3 format, including; Transmission of video via digital networks; Providing access to databases and information via global computer networks; Providing connections to a global communications network or to databases by telecommunications.
42 Design and development of computers and software; computer database design; design and development of electronic databases; creation and development of computer programs for data processing; Data migration services; hosting computer sites (websites); Hosting computerized data, files, applications and information; Hosting software applications for others; computer database hosting; Hosting multimedia and interactive applications; hosting platforms on the Internet.

Apart from this Dfinity has the following separate figurative trademark in the US:

According to the Foundation Meta infringes the rights over its earlier marks by using the mathematical symbol for infinity.

Most of Meta’s trademarks are filed in 2021 while no figurative trademarks for the infinity sign were discovered.

It’s a matter of time what will happen and whether this dispute will be solved as a result of a court decision or an out-of-court settlement. Nevertheless, the case shows clearly how difficult such rebranding could be and how important are preliminary trademark searches.

Source: TURNER WRIGHT, Cointelegraph.com

New fees for designation of the Philippines in international trademark applications

WIPO reports about new individual fees for the designation of the Philippines in international applications for trademarks. The new fees will come into force on 26.05.2022 and are as follow:

The right to be forgotten – Advocate General’s opinion in a lawsuit against Google

The Advocate General of the European Court G. PITRUZZELLA has issued an opinion in the case C‑460/20 TU,RE v Google LLC. This case has the following background:

TU works in a position of responsibility or is involved, in various companies which provide financial services. RE was TU’s cohabiting partner and, until May 2015, held general commercial power of representation in one of those companies. On 27 April 2015, 4 June 2015 and 16 June 2015, the website http://www.g … net (‘the g-net website’) published three articles which expressed critical opinions and doubts as to the reliability of the investment model of several of those companies. The article dated 4 June 2015 also featured four photographs – three of TU and one of RE – in which the applicants were shown driving luxury cars, in a helicopter and in front of a charter plane. Together with the articles, those images suggested that the applicants were enjoying a life of externally financed luxury. The operator of the g-net website is G-LLC, according to the imprint. The corporate purpose of G-LLC is, according to its own statement, ‘to contribute consistently towards fraud prevention in the economy and society by means of active investigation and constant transparency’. However, various publications have criticised the business model of G-LLC, accusing that company, among other things, of attempting to blackmail companies by initially publishing negative reports and then offering to delete the reports in return for so-called protection money. The articles dated 4 June 2015 and 16 June 2015 were displayed in the list of search results produced when the applicants’ first names and surnames were entered in the search engine operated by Google, both on their own and in conjunction with particular company names, and the article of 27 April 2015 was displayed when particular company names were entered in its search engine. These results contained a link to the articles in question. Google also displayed the photographs of the applicants contained in the article dated 4 June 2015 as thumbnails in the overview of results of its image search.

The applicants requested the defendant, on the one hand, to de-reference the articles in question, which, in their view, contain a number of incorrect allegations and defamatory opinions based on false statements, and, on the other, to remove the thumbnails from the list of search results. They claimed to have been victims of blackmail by G-LLC. The defendant refused to comply with that request, referring to the professional context in which the articles and images at issue are set and invoking its ignorance as to the allegedly false nature of the information contained therein. The action was dismissed at first and second instance.

It is in that context that the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is it compatible with the data subject’s right to respect for private life (Article 7 of the Charter …) and to protection of personal data (Article 8 of the Charter), if, within the context of the weighing-up of conflicting rights and interests arising from Articles 7, 8, 11 and 16 of the Charter, within the scope of the examination of his or her request for de-referencing brought against the data controller of an internet search engine, pursuant to Article 17(3)(a) of [the GDPR], when the link, the de-referencing of which the applicant seeks, leads to content that includes factual claims and value judgements based on factual claims the truth of which is denied by the data subject, and the lawfulness of which depends on the question of the extent to which the factual claims contained in that content are true, the national court also concentrates conclusively on the issue of whether the data subject could reasonably seek legal protection against the content provider, for instance by means of interim relief, and thus at least provisional clarification on the question of the truth of the content displayed by the search engine data controller could be provided?

(2) In the case of a request for de-referencing made against the data controller of an internet search engine, which in a name search searches for photos of natural persons which third parties have introduced into the internet in connection with the person’s name, and which displays the photos which it has found in its list of search results as preview images (thumbnails), within the context of the weighing-up of the conflicting rights and interests arising from Articles 7, 8, 11 and 16 of the Charter pursuant to Article 12(b) and Article 14, first paragraph, point (a) of Directive [95/46] and Article 17(3)(a) of the GDPR, should the context of the original third-party publication be conclusively taken into account, even if the third-party website is linked by the search engine when the preview image is displayed but is not specifically named, and the resulting context is not shown with it by the internet search engine?’

The Advocate’s opinion:

Article 17(3) of Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation) should be interpreted as meaning that, within the context of the weighing-up of conflicting fundamental rights arising from Articles 7, 8, 11 and 16 of the Charter of Fundamental Rights fo the European Union, which is to be undertaken within the scope of the examination of a request for de-referencing made to the operator of a search engine on the basis of the alleged false nature of the information which appears in the referenced content, it is not possible to concentrate conclusively on the issue of whether the data subject could reasonably seek legal protection against the content provider, for instance by means of interim relief. In the context of such a request, it is incumbent on the data subject to provide prima facie evidence of the false nature of the content the de-referencing of which is sought, where that is not manifestly impossible or excessively difficult, in particular with regard to the nature of the information concerned. It is for the operator of the search engine to carry out the checks which fall within its specific capacities, contacting, where possible, the publisher of the referenced web page. Where the circumstances of the case so indicate in order to avoid irreparable harm to the data subject, the operator of the search engine will be able temporarily to suspend referencing, or to indicate, in the search results, that the truth of some of the information in the content to which the link in question relates is contested.

Article 12(b) and Article 14, first paragraph, point (a) of Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data and Article 17(3)(a) of Regulation 2016/679 should be interpreted as meaning that, within the context of the weighing-up of conflicting rights and interests arising from Articles 7, 8, 11 and 16 of the Charter of Fundamental Rights, in connection with a request for de-referencing made to the operator of a search engine seeking to obtain the removal, from the results of an image search carried out on the basis of a natural person’s name, of photographs displayed in the form of thumbnails depicting that person, account should not be taken of the context of the publication on the internet in which those thumbnails originally appear.