How producers of face coverings can fight against counterfeit products?

In one of its recent articles the intellectual property blog IPKat arose the question about the protection of face coverings.

As it is well-known, in the beginning of the Covid-19 pandemic many famous fashion houses started to produce face coverings in an attempt to cover the shortage of these products.

These face coverings use specific design decisions and are branded with famous trademarks such as Hermes, Versace and Louis Vuitton.

Unfortunately, because of the fact that the fashion face coverings were in demand, a lot of counterfeit similar copycat products flooded the market.

This is not something unusual but in the case at hand it can be dangerous because the counterfeits are made of cheap materials which means that their protective function is not so strong. This in turn can be a safety risk to the consumer.

So in that regard what are the ways the producers of original face coverings to protect their intellectual property and to prevent the sale of such counterfeits?

  1. Trademarks – every trademark owner can prevent sales of products bearing identical or similar marks. In addition, the trademark owner can ask from a court this products to be seized and destroyed.
  2. Industrial designs – in case that the design of the face coverings is new and original it can be registered as an industrial design. Based on this registration the design owner can stop every illegal product in the market.
  3. Copyright – if the face covering’s design is original art work, it can be protected by the copyright law too. Bear in mind, however, that the enforcement of copyright rights can be more complex than in the case of trademarks and designs.
  4. Border measures – every owner of intellectual property ( such as trademarks, designs, copyright, patents), can require from the Border Authorities of every country to seize importation of products that violate its intellectual property rights.

All of these measures can be used not only from the producers of face coverings but of another protective clothing too.

Ferrari overcame a refusal for its 488 Pista Spider design in Australia

Ferrari has successfully overcome a refusal by the Australian Patent Office for registration of its vehicle model Ferrari 488 Pista Spider.

The case concerns a design application for this model filed in 2018 in Australia. The design was refused by the Office because it was similar to prior design of Ferrari 488 Spider.

As it is known, you can register a design only if it is new and original.

Ferrari didn’t give up. They hired the well-known expert in the field of luxury cars Anthony Moss to make a professional analyse of both designs. According to him they were sufficiently different taking into account that in the case of sport luxury vehicles consumers pay attention even to smallest details.

In the appeal the Office changed its position. It agreed that when it comes to car design, authors freedom to innovate is somewhat limited because they always have to use wheels, doors, bonnets and mirrors. So in that regard consumers would apportion more weight to areas where the designer has freedom to innovate, which in this particular case was the front and rear section of the car.

In the case at hand, the new model has some differences. For example, an air damn and air scoop running through the front bumper and up through the bonnet of the 488 Pista was different compare with the older design. The air damns and the wrap around diffusers in the rear of the new model were also considered different. 

This case shows clearly that protection of industrial designs can be quite tricky sometimes. The freedom of innovation has to be bear in mind and the field for which the designs will be used. This can be crucial for the success or failure of the design application.

Source: Phillips Ormonde Fitzpatrick – Peter Wassouf, Lexology.

Ferrari lost a trademark dispute regarding its famous 250 GTO model in the EU

Ferrari lost an interesting dispute regarding its registered European 3D trademark:

This mark was registered in classes 12, 25 and 28. It represents the famous Ferrari’s car model 250 GTO which was been in production in 1962.

Such car was been sold for more than 48 million dollars 2 years ago, which means that this is the most expensive car ever.

In the case at hand, another Italian company Ares Design filed an application for cancellation of the mark before the EUIPO based on lack of genuine use for the last 5 years.

The trademark was registered in 2008, more than 40 years after the car was been producing.

According to the law if trademark owner doesn’t use its trademark for a period of 5 consecutive years, the trademark can be canceled. The idea here is an unnecessary monopolization of terms and images to be prevented.

Ferrari submitted evidence for use of the trademark but only for toys in class 28.

For the rest of the classes, Ferrari claimed that although the car is not in production any more, there are still available cars from that model in the market which are sold on auctions from time to time.

The EUIPO agreed that there is genuine use of the mark for toys. For classes 12 and 25, however, the Office concluded that this was not the case. The main requirement is that trademark owner has to use the mark for production and labeling of goods which after that are offered in the market.

Due to the fact that this is not done by Ferrari now the trademark is not been used genuinely.

All of this means that this famous car design will be left without protection unless Ferrari proves that it is subject matter to copyright one because of its originality and uniqueness. There are such attempt in other similar cases like this with the Brompton Bicycle.

More e-services regarding trademarks and designs in Benelux

atomium-3590412_960_720EUIPO reports about some new e-services provided by The Benelux Office for Intellectual Property (BOIP). These services regard the option for online Change of Representative and Transfer of Rights for trademarks and for designs.

The above mentioned digital services will complement already existing such for Change of Name, Change of Address, Change of Name and Address, Renewal Trade Mark, Renewal Design, Opposition, and e-Filing Trade Mark/Design.

All of this is a result of the work carried out by the EUIPO and the national Patent Offices in the EU Member States under the European Cooperation Projects (ECP1).

For more information here.

When food content is important for design protection?

food-2490641_960_720The General Court of the European Union has ruled in case Case T‑352/19, Gamma-A SIA v Zivju pārstrādes uzņēmumu serviss SIA.

It concerns the following European design registered for class Class 9-3: ‘Packaging for foodstuffs’:

download

The packaging represents a container with a transparent lid.

Against this design an application for invalidity was filed based on lack of novelty and individual character. The reason for this was the following earlier design for similar packaging:

download (1)

Initially the EUIPO dismissed the invalidity request stating that the food contained in the container is part of the deigns protection which makes both design dissimilar.

The Board of Appeal, however annulled this decision considering both design identical.

The General Court upheld this position. The fact that the contents of the packaging in which it is intended to be incorporated are visible does not extend the
protection conferred on the contested design to those contents. The presence of visible foodstuffs inside the products merely provides a better illustration of the purpose of the design, namely as packaging for foodstuffs, as well as one of their components, specifically the transparent lid. The comparison of the overall impressions produced
by the designs must relate solely to the elements actually protected . The protection
conferred by the contested design relates to its appearance in that it is intended to be incorporated into packaging for foodstuffs having certain components with specific characteristics, namely a metal container that has a transparent lid with a
translucent tab. The foodstuffs inside the container must not, therefore, be taken into consideration for the purpose of assessing the ‘overall impression’.

Based on this the registered design was invalidated successfully.

Source: Alicante News

How to build and manage remotely an intellectual property database?

photo-1583508915901-b5f84c1dcde1In the time when more and more companies close their offices because of the COVID-19 emergency situation, the question how the office work to be done remotely is one that becomes vital for the entire company’s operation.

Intellectual property matters are not an exception.  The fact that you cannot work from your office it doesn’t mean that the work has not to be done and the deadlines not to be met.

When it comes to intellectual property to keep the deadlines is something must.

From one hand obtaining an intellectual property protection requires following different, and sometimes, long proceedings before the relevant official authorities.

This comes with different deadlines and a serious communication with the Patent Office and intellectual property attorneys.

What’s more, in situations of buying or selling protected works or cases of mergers and acquisitions, where intellectual property is part of, you need to keep an eye on the negotiation and transfer process for every single IP asset. 

On the other hand, the fact that you own IP rights is not the end of the story. On the contrary. Every IP asset needs to be maintained properly in order for its protection to be solid and even available. 

For example, if you have a trademark or patent application but you miss the deadline for paying the official Patent Office’s fees your application will be rejected.  This means that your business can lose valuable assets that can generate a future profit.

That’s why every owner of intellectual property rights has to integrate a system and tools that will allow management of all intellectual property assets from one place remotely using every possible device.

This will allow the deadlines to be met and the intellectual property to be protected.

But how to achieve this?

Big companies can pay for specialized software for that purpose, which can be used by the employees even from home. However, for small and mid size companies, or individual entrepreneurs or freelancers, such software can be way too expensive or even complex for integration.

If you cannot afford such a solution you can achieve a similar result by adopting some of the available online productivity tools for free. For example, you can use tools such as Asana, Notion, Wrike etc. to build your own intellectual property database.

If you are interested in this matter, you can sign up for this upcoming Udemy course, where you will learn how to build your own IP database in a very simple way, using one very well-known productivity application Asana which will cost you nothing. This will allow you to manage all IP assets an keep all deadlines remotely from home. You can even use this database to communicate with your team or IP attorneys. 

You can sign up from here. There will be free coupons for early birds.