New forms for filing European trademarks and designs

The EUIPO reports about the upcoming launch of a new form for filing European trademarks and designs that will be available on 01.08.2022. This new form is part of a smooth transition to the new website and User Area that will provide:

  • customization options allowing you to tailor your filing experience;
  • a new design with full guidance and contextual help;
  • faster goods and services management;
  • enhanced security.

An instructional video can be found here.

What should social media influencers know about intellectual property rights?

Nowadays one of the most popular ways to attract consumers’ attention in order to convince them to purchase your product or service is to use the so-called social media influencers.

The reason is that consumers pay less and less heed to the classic advertisement, finding it too boring or not trustworthy enough. After all, every ad tells you that the promoted subject matter is the best one.

On the other side, social media influencers in the first place are just normal people expressing their thoughts which in many cases attract like-minded people who start to follow and believe them with time.

Based on this a new marketing channel has emerged offering great potential for marketing and sales activities.

In most cases influence marketing starts without planning, the relevant influence suddenly discovers options for monetarization and if done properly it could be a successful business model.

However, every business needs to be well organized and manage its assets including the intangible ones such as all sorts of intellectual property rights.

Because I’m passionate about this I’ve created a new Skillshare class that will teach every new or established influencer how to deal with intellectual property rights, including copyrights, trademarks, designs, domain names, etc.

All of this is really important because if done right it can boost the influencer’s business while if done badly it can jeopardize it.

Just for example, if one influencer does not know how to secure copyrights over the materials used on his or her channel this can lead to legal conflicts with the copyright holders.

If a popular influencer missed the point to register a trademark, someone else can start using hir or her distinguishing name or sign for unfair competition, similar social media channels, etc.

Social media influencers generate value with their work, value that has to be managed properly in order to become a sustainable business model.

In this class you will learn:

  • What types of social media influencers exist?
  • Why do Influencers need to understand intellectual property?
  • What intellectual property rights can belong to influencers?
  • What copyrights belong to influencers and how can they be managed?
  • What are the copyright rules of social media platforms for every uploaded content?
  • What influencers can protect as trademarks?
  • How can influencers protect internet domain names and what do they need to bear in mind?
  • How design rights can be beneficial for influencers?
  • What role do trade secrets play for influencers?
  • How publicity rights can help influencers?

This class will give you the knowledge of how one social media influencer can organize and manage his or her intellectual property rights building a strong and sustainable business project.

In case you are interested, you can use this link to my Skillshare class: https://skl.sh/3FOUiuk 

Thanks for your interest!

Lego was accused of copyright infringement over a jacket design

As it is well-known copyright is one of the main intellectual property rights that every creator can rely on in order to benefit from his or her created works. The problem with copyright is that it can invoke really complex disputes out of nowhere.

One example of this possibility is a recent lawsuit against LEGO, a toymaker company whose practice is to use characters and stories from famous movies or series for kids constructors.

In the case at hand, the company uses a design of a jacket, known as the “Concannon Jacket”, worn by Antoni Porowski part of Netflix’s Queer Eye reality show.

James Concannon is the artist who created this design, giving Netflix permission to use it for the show.

According to him, however, LEGO has no authorization to use the jacket design for their toys “Queer Eye – The Fab 5 Loft”, which are based on the reality show’s characters.

LEGO dismissed this accusation claiming that they use legally the jacket at least because they had a license from Netflix which in turn had permission from the artist for the same jacket.

Obviously one of the center moments here is what was the scope of the initial license and whether it includes such merchandising use.

According to the US Copyright law, apparel is not copyrightable as a whole. Only separable creative elements of it can be protected.

So the issue here is to what extent the original jacket’s elements are subject to copyright protection alone and to what extent those used by LEGO are similar enough in order for infringement to be found.

Source: SS Rana & Co – Ananyaa Banerjee and Nitika Sinha for Lexology.

Infringement of BMW wheel rims Community design – a European Court decision

The European Court has ruled in case C‑421/20 Acacia Srl v Bayerische Motoren Werke AG, which targets the issue of Community design enforcement and the applicable national jurisdiction. The case has the following background:

Acacia is a company incorporated under Italian law which produces, in Italy, wheel rims for motor vehicles and distributes them in a number of Member States.

Taking the view that Acacia’s distribution of certain wheel rims in Germany constitutes an infringement of a registered Community design of which it is the holder, BMW brought an action for infringement before a Community design court designated by the Federal Republic of Germany. That court declared that it had jurisdiction pursuant to Article 82(5) of Regulation No 6/2002. Acacia, in its capacity as defendant, argued that the wheel rims at issue are covered by Article 110 of that regulation and that there is therefore no infringement.

That court held that Acacia had committed the acts of infringement alleged by BMW, ordered that the infringement be brought to an end and, referring to Article 8(2) of Regulation No 864/2007, applied German law to BMW’s ‘supplementary’ claims seeking damages, the provision of information, the provision of documents, the surrender of accounts and the handing over of infringing products with a view to their being destroyed. On the basis of the rules contained in that national law, those claims were, in essence, upheld.

Acacia brought an appeal before the referring court. It disputes the existence of an infringement and takes the view, furthermore, that the law applicable to BMW’s supplementary claims is Italian law.

The referring court states that the jurisdiction of the Community design courts designated by the Federal Republic of Germany arises, in the present case, from Article 82(5) of Regulation No 6/2002 and that Acacia has committed the acts of infringement alleged by BMW.

However, it has doubts as to which national law applies to BMW’s supplementary claims. The referring court observes that the outcome of the dispute will, to some extent, depend on that question, since the rules of German law on the provision of documents and the surrender of accounts differ from those of Italian law.

That court considers that it could follow from Article 8(2) of Regulation No 864/2007, as interpreted by the Court in the judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), that Italian law applies in the present case. The referring court finds, in that regard, that the event giving rise to the damage is located in Italy, since the products at issue were delivered to Germany from that other Member State.

Nevertheless, the infringing products at issue in the main proceedings were sold in Germany and, to that end, were advertised online to consumers located in the territory of that Member State.

In those circumstances the Higher Regional Court, Düsseldorf, Germany decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘1. In proceedings for an infringement of Community designs, can the national court dealing with the infringement proceedings having international jurisdiction pursuant to Article 82(5) of [Regulation No 6/2002] apply the national law of the Member State in which the court dealing with the infringement proceedings is situated (lex fori) to [supplementary] claims in relation to the territory of its Member State?

2. If Question 1 is answered in the negative: Can the “initial place of infringement” for the purposes of the [Court in judgment of [27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724)] regarding the determination of the law applicable to [supplementary] claims under Article 8(2) of [Regulation No 864/2007] also lie in the Member State where the consumers to whom internet advertising is addressed are located and where goods infringing designs are put on the market within the meaning of Article 19 of [Regulation No 6/2002], in so far as only the offering and the putting on the market in that Member State are challenged, even if the internet offers on which the offering and the putting on the market are based were launched in another Member State?’

The Court’s decision:

Article 88(2) and Article 89(1)(d) of Council Regulation (EC) No 6/2002 of 12 December 2001 of Community designs, and Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II) must be interpreted as meaning that the Community design courts before which an action for infringement pursuant to Article 82(5) of Regulation No 6/2002 is brought concerning acts of infringement committed or threatened within a single Member State must examine the claims supplementary to that action, seeking the award of damages, the submission of information, documents and accounts and the handing over of the infringing products with a view to their being destroyed, on the basis of the law of the Member State in which the acts allegedly infringing the Community design relied upon are committed or are threatened, which is the same, in the circumstances of an action brought pursuant to that Article 82(5), as the law of the Member State in which those courts are situated.

China joins the Hague System for international registration of industrial designs

WIPO reports about the accession of China to the Hague System for the International Registration of Industrial Designs.

As it is well known, Hague System allows up to 100 designs to be included in one application and after that registered in 90 Member states. This saves a lot of time and money for the applicants.

The Agreement will come into force for China on 05.05.2022, after this date the country can be designated in applications for industrial designs.

Malaysia joins DesignView

The Intellectual Property Corporation of Malaysia (MyIPO) has added its national designs to the global database for industrial designs DesignView.

In that way, new 39 000 designs will be available through DesignView which gives access to more than 18 million designs.

All of this means that IP practitioners and business owners now will be able to search for registered designs in Malaysia easily saving time and money while building appropriate design strategies for this country.

Despite the pandemic intellectual property is on the rise for 2020

WIPO has published its annual World Intellectual Property Indicators Report for 2020.

Despite the pandemic and all accompanying economic problems, the data clearly shows that the interest in intellectual property rights is rising on a global basis.

According to the report, there is a 13,7% increase in trademark applications for 2020, a 1,6% increase in patents applications, 2% for designs, and 5,1% for plant varieties.

A number of patent applications:

Trademark applications trend 2006 – 2020:

Design application trend 2006 – 2020:

Design applications by country:

Source: WIPO.