Important amendments in the Czech trademark law came into force

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As of 01.01.2019, some new and significant amendments in the Czech trademark law came into force. The local Patent Office will not check for earlier identical or similar trademarks when examining new applications. The owners of such rights will have an opportunity to file oppositions in order to protect its registered signs. This by itself requires the Trademark bulletin, issued by the Patent Office, to be checked on a regular basis. Apart from this, the amendments allow registration of new types of marks such as signs of sounds, smells, positions, movements, etc.

The law will consider unauthorized use of trademarks in the names of companies to be a trademark infringement.

Source: Lexology, Kinstellar – Zdeněk Kučera.

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Beats Electronics won a trademark case in the EU

pexels-photo-577769.jpegThe Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):

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Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):

Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.

The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.

According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.

Source: Nedim Malovic, IPKat.

Smart Things cannot be a trademark in The EU

turn-on-2944067_960_720Samsung Electronics won an invalidation proceeding against the following European trademark registered for classes 9, 20 and 35:

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The invalidation was based on absolute grounds – descriptiveness in relation to the trademark’s goods and services. The applicant argued that its mark was distinctive because when it was applied for in 2012 it wasn’t included in dictionaries and on top of that the concept for the internet of things wasn’t popular among consumers.

Initially, the EUIPO dismissed Samsung’s request stating that although Smart Things are descriptive words the presence of an emoticon in the sign is enough to create a necessary level of distinctiveness.

The decision was appealed.

According to the Board of Appeal, the trademark at hand is fully descriptive for the relevant goods and services and this cannot be overcome by the emoticon. What’s more, this phrase has to be left free for use for all market participant taking into account that it is highly used for different technologies. The fact that it wasn’t included in a dictionary in 2012 is irrelevant for the case.

Source: WIPR.

Brief IP news

briefs_1131.  Mexico to use the list of terms from the harmonised database in TMclass. For more information here.

2. Digital royalties to creators top €1 billion as global collections rise 6.2% to €9.6 billion. For more information here.

3. How to label your European Year of Cultural Heritage 2018 event? For more information here.

Shift the blame for copyright infringement to your parents – an EU Court decision

pirate-2129571_960_720The European Court has ruled in case C‑149/17,Bastei Lübbe GmbH & Co. KG v Michael Strotzer, which concerns the following:

Bastei Lübbe is the holder, as a phonogram producer, of the copyright and related rights in the audio version of a book.

Mr Strotzer is the owner of an internet connection through which, on 8 May 2010, that audio book was shared, for the purpose of downloading, with an unlimited number of users of a peer-to-peer internet exchange. An expert correctly attributed the IP address in question to Mr Strotzer.

By letter of 28 October 2010, Bastei Lübbe warned Mr Strotzer to cease and desist the infringement of copyright which had occurred. That warning notice was unsuccessful and Bastei Lübbe brought an action before the Amtsgericht München (Local Court, Munich, Germany) against Mr Strotzer as the owner of the IP address in question, seeking damages.

However, Mr Strotzer denies having himself infringed copyright and maintains that his connection was sufficiently secure. In addition, he asserts that his parents, who live in the same household, also had access to that connection but that to his knowledge they did not have the work in question on their computer, were not aware of the existence of the work and did not use the online exchange software. In addition, Mr Strotzer’s computer was switched off at the time when the infringement in question was committed.

The Amtsgericht München (Local Court, Munich) dismissed Bastei Lübbe’s action for damages on the ground that Mr Strotzer could not be held liable for the infringement of copyright in question, because he had stated that his parents could also have committed the infringement in question.

Bastei Lübbe appealed against the decision of the Amtsgericht München (Local Court, Munich) before the Landgericht München I (Regional Court, Munich I, Germany).

That court is inclined to hold Mr Strotzer liable in that it does not follow from his explanations that a third party used the internet connection at the time of the infringement. It considers that Mr Strotzer is therefore seriously likely to have committed the copyright infringement.

That court nevertheless considers itself to be compelled to apply Paragraph 97 of the Law on copyright and related rights, as amended by the Law of 1 October 2013, as interpreted by the Bundesgerichtshof (Federal Court of Justice, Germany), which in its view might preclude the defendant from being held liable.

In fact, according to the case-law of the Bundesgerichtshof (Federal Court of Justice), as interpreted by the referring court, it is for the applicant to allege and prove the infringement of copyright. The Bundesgerichtshof (Federal Court of Justice) considers, moreover, that the owner of an internet connection is presumed to have committed such an infringement provided that no other person was able to use the internet connection at the time of the infringement. However, if the internet connection was not sufficiently secure or was knowingly made available to other persons, then the owner of that connection is not presumed to have committed the infringement.

In that case, the case-law of the Bundesgerichtshof (Federal Court of Justice) nonetheless places on the owner of the internet connection a secondary burden to present the facts. The owner discharges that secondary burden to the requisite standard by explaining that other persons, whose identity he discloses, where appropriate, had independent access to his internet connection and are therefore capable of having committed the alleged infringement of copyright. Although a family member of the owner of the internet connection had access to that connection, the owner of that connection is not, however, required to provide further details relating to the time and the nature of the use of that connection, having regard to the protection of marriage and family guaranteed by Article 7 of the Charter of Fundamental Rights of the European Union (‘the Charter’) and the corresponding provisions of the German Basic Law.

In those circumstances, the Landgericht München I (Regional Court, Munich I) decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1. Should Article 8(1) and (2), in conjunction with Article 3(1), of Directive 2001/29/EC be interpreted as meaning that “effective and dissuasive sanctions” for infringements of the right to make works available to the public are still provided for even when the owner of an internet connection used for copyright infringements through file-sharing is excluded from liability to pay damages if the owner of that internet connection can name at least one family member who, besides him or her, might have had access to that internet connection, without providing further details, established through appropriate investigations, as to when and how the internet was used by that family member?

2. Should Article 3(2) of Directive 2004/48/EC be interpreted as meaning that “effective” measures for the enforcement of intellectual property rights are still provided for even when the owner of an internet connection used for copyright infringements through file-sharing is excluded from liability to pay damages if the owner of that internet connection can name at least one family member who, besides him or her, might have had access to that internet connection, without providing further details, established through appropriate investigations, as to when and how the internet was used by that family member?’

The Court ‘s decision:

Article 8(1) and (2) of Directive 2001/29/EC, of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, read in conjunction with Article 3(1) thereof, and Article 3(2) 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 legislation, such as that at issue in the main proceedings, under which, as interpreted by the relevant national courts, the owner of an internet connection used for copyright infringements through file-sharing cannot be held liable to pay damages if he can name at least one family member who might have had access to that connection, without providing further details as to when and how the internet was used by that family member.

IBM and Groupon reached a multi-million dollar deal

hammer-802298_960_720The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.

After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.

This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.

In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.

Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.

Source: WIPR.

Nintendo won a copyright lawsuit against a go-kart operator in Tokio

wario-1912622_960_720Nintendo successfully won a copyright lawsuit in Tokio against the local company MariCar Inc., an operator of a go-kart service which provides its customers with costumes that look alike Nintendo’s famous game characters.

In contrast with many countries around the world, it is possible to drive a kart on public roads in Japan.

According to Nintendo, such use of its characters constitute a copyright infringement because the company has never given a permission.

The Court agreed with this claim and imposed a compensation.

This case is a good example of many similar practices, not only in Japan, where companies use famous characters for different entertainments or advertisements without receiving the necessary copyrights from the relevant owners.

Source: The Japan Times