Breaking news – Bad faith, goods and services, and trademark applications

startup-photos.jpgThe Advocate General of the European Court TANCHEV issued his opinion in the case C‑371/18 Sky plc, Sky International AG, Sky UK Limited v SkyKick UK Limited, SkyKick Inc. This case concerns one very trendy issue: to what extent the unreasonable wide scope of goods and services of one trademark application constitute bad faith. In details:

Sky is the owner of a family of SKY trademarks registered for different classes of goods and services such as  3, 4, 7, 9, 11, 12, 16, 17, 18, 25, 28 and 35 to 45.

Sky brought an action alleging that SkyKick had infringed those trade marks. For the purposes of their infringement claims, Sky rely upon the registrations of the trade marks in respect of the following goods and services (although not every trade mark is registered for all these goods and services): (i) computer software (Class 9); (ii) computer software supplied from the internet (Class 9); (iii) computer software and telecoms apparatus to enable connection to databases and the internet (Class 9); (iv) data storage (Class 9); (v) telecommunications services (Class 38); (vi) electronic mail services (Class 38); (vii) internet portal services (Class 38); and (viii) computer services for accessing and retrieving information/data via a computer or computer network (Class 38).

Sky have made extensive use of the trade mark SKY in connection with a range of goods and services, and in particular goods and services relating to Sky’s core business areas of (i) television broadcasting, (ii) telephony and (iii) broadband provision. SkyKick accept that, by November 2014, SKY was a household name in the United Kingdom and Ireland in those areas. However, Sky do not offer any email migration or cloud backup goods or services, nor is there any evidence that they plan to do so in the immediate future.

SkyKick contend that each of the trade marks should be declared (partly) invalid on the ground that they are registered for goods and services that are not specified with sufficient clarity and precision.

The referring court states that that contention raises two issues. The first issue is whether that ground for invalidity may be relied upon against a registered trade mark.

The judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) established (and Article 33(2) of Regulation (EU) 2017/1001 (4) now requires) that an applicant for a trade mark must specify the goods and services in respect of which registration is sought with sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark. If the applicant fails to do so, the competent authority should refuse to allow the application to proceed to registration without the specification being amended to make it sufficiently clear and precise.

According to the referring court, it does not necessarily follow that, if the applicant fails to do so and the authority fails to ensure that the applicant rectifies the lack of clarity or precision during the examination of the application, the trade mark can be declared invalid on that ground after registration. The grounds for invalidity listed in the regulation do not contain any express requirement that the specification of goods and services in an application for registration of an EU trade mark should be clear and precise. The position is, in essence, the same in relation to a national trade mark.

The second issue raised by the referring court is whether, if the ground for invalidity can be relied upon, the specifications of any of the trade marks are objectionable.

The referring court considers that registration of a trade mark for ‘computer software’ is too broad, unjustified and contrary to the public interest. However, it also states that it does not necessarily follow that that term is lacking in clarity and precision. Indeed, it appears prima facie to be a term whose meaning is reasonably clear and precise. Thus, it is sufficiently clear and precise to make it possible to decide whether SkyKick’s goods are identical to it. On the other hand, the referring court finds it difficult to see why the reasoning of the Trade Mark Offices forming the European Trade Mark and Design Network (TMDN), as set out in the Common Communication of 20 November 2013, with regard to ‘machines’ in Class 7 is not equally applicable to ‘computer software’. (5)

Moreover, the referring court queries whether the validity of the marks at issue may be affected by the applicant’s bad faith at the moment of applying for registration of the trade marks.

SkyKick contend in the main proceedings that the trade marks were registered in bad faith because Sky did not intend to use the trade marks in relation to all of the goods and services specified in the respective specifications. SkyKick accept that Sky intended to use the trade marks in relation to some of the goods and services specified. Nevertheless, SkyKick’s primary case is that the trade marks are invalid in their entirety. In the alternative, SkyKick’s secondary case is that the trade marks are invalid to the extent to that the specifications cover goods and services for which Sky had no intention to use the trade marks.

The referring court states that, in comparison with the case-law of the Courts of the European Union, UK courts and tribunals have focused more closely on the requirement of intention to use, on account of the role that section 32(3) of the United Kingdom Trade Marks Act 1994 (‘the 1994 Act’) plays in the UK trade mark system. (6)

However, the referring court queries whether that provision is compatible with EU law. Should it be held to be compatible, then the referring court also has doubts as to the scope of the requirement of intention to use the trade mark.

Therefore, the High Court of Justice (England and Wales), Chancery Division, decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark?

(2) If the answer to [the first] question is [in the affirmative], is a term such as “computer software” too general and [does it cover] goods which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark?

(3) Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?

(4) If the answer to [the third] question is [in the affirmative], is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services?

(5)  Is section 32(3) of the UK Trade Marks Act 1994 compatible with [Directive (EU) 2015/2436 (7)] and its predecessors?’

The Advocate General’s opinion:

(1)  A registered EU trade mark or national trade mark may not be declared wholly or partially invalid on the sole ground that some or all of the terms in the specification of goods and services lack sufficient clarity and precision. A lack of clarity and precision in the specification of goods and services may nevertheless be taken into account when assessing the scope of protection to be given to such a registration.

(2)  However, the requirement of clarity and precision may be covered by the ground for refusal or invalidity of marks which are contrary to public policy, as laid down in Article 3(1)(f) of First Council Directive 89/104  and Article 7(1)(f) of Council Regulation No 40/94 , in so far as registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest. A term such as ‘computer software’ is too general and covers goods and services which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark.

(3)  In certain circumstances, applying for registration of a trade mark without any intention to use it in connection with the specified goods or services may constitute an element of bad faith, in particular where the sole objective of the applicant is to prevent a third party from entering the market, including where there is evidence of an abusive filing strategy, which it is for the referring court to ascertain.

(4) In the light of Article 13 of Directive 89/104 and Article 51(3) of Regulation No 40/94, where the ground for invalidity exists in respect of only some of the goods or services for which the trade mark is registered, the trade mark is to be declared invalid as regards those goods or services only.

(5) Section 32(3) of the United Kingdom Trade Mark Act 1994 is compatible with Directive 89/104 provided that it is not the sole basis for a finding of bad faith.

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Graffiti, Banksy and some requirements for trademark protection

graffiti-1380108_960_720.jpgThe topic for the protection of graffiti works has made the headlines in recent years. One of the possible ways this to be achieved is through the registration of trademarks.

In light of this, a recent trademark case has attracted our attention. The well-known graffiti artist Banksy has faced a cancelation procedure against his following registered European trademark in classes 2, 9, 16, 18, 19, 24, 25, 27, 28, 41, 42:

CJ4JX4FZVCC523YA2TMALSKFLEYL2URWKFJN5G6UJIJPE6XXSKJPMQ4E3HASB4GWEQKQFUVREIVOU

The procedure was initiated by the French greeting card maker Full Colour Black on the ground of lack of a genuine trademark use.

As a reaction, Banksy announced the launching of an online store where he will sell products with its mark.

However, this is highly unlikely to succeed because all pieces of evidence have to be dated before the date of the cancelation request, otherwise, they can’t suggest any genuine market use other than just an attempt for maintaining the trademark registration.

According to the law, every trademark can be canceled if it is not used for 5 consecutive years.

This situation is quite difficult for most of the artists because although they can register a trademark, its use, in the long run, is always a challenge especially when it comes to wider scope of goods and services.

Another possible and available tool, however, can be copyright, where there are no requirements for registration.

Source: WIPR.

Malaysia joins the Madrid Protocol for international registration of trademarks

pexels-photo-462671.jpegWIPO reports about the accession of Malaysia to the Madrid Protocol for international registration of trademarks. By doing this, the country becomes the 106th Member State. The Protocol will come into force for the country on 27.12.2019.

As it is well-known, the Madrid system allows the filing of international trademarks based on one single application where the relevant countries of interest are designated.

For more information here.

Adidas won against a marijuana sign in the UK

pexels-photo-606506.jpegThe UKIPO has ruled in a case where the German sportswear manufacturer Adidas initiated cancelation procedure against a UK trademark ADDICTED,  covering clothing as well as various retail, retail finance, and interior design services. Adidas invoked its earlier combined trademark for the same goods and services.

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The grounds for this cancelation were a similarity between the signs, a trademark with reputation and possible unfair competition and tarnishment.

According to the Office, there is no enough similarity between the signs although there is some visual one. Nevertheless, the later mark is not able to create any confusion in the consumer mind regarding the trade origin of the products.

When it comes to taking advantages from the earlier trademark’s reputation, unfair competition, and tarnishment, the UKIPO concluded that there is such a possibility because of which canceled the trademark.

The reasons for this are that for the time being marijuana as a product cannot be freely and legally used. On top of that, the word “Addicted” makes consumer perception even worse. From that perspective, there is a chance when the later mark is used on clothes to create some negative associations and because of its visual similarity with the Adidas trademark these negatives to be transferred to the earlier mark. Apart from this, the later trademark can take advantages of the Adidas reputation on the market that has been built for many years.

Source: Jocelyn Clarke and Christopher Benson, Taylor Wessing за Lexology.

Who are the IP superheroes?

robin-1115934_960_720.jpgDennemeyer & Associates published an interesting article for Lexology discussing intellectual property protection and the different specialist involved and their roles as IP superheroes. According to this article, there are several roles:

  • “Shadow Hunter” – anti-counterfeiting;
  • “The Visionary” – patent examiner;
  • “Doctor Inventor” – patent engineer;
  • “The Lawman” – patent prosecutor;
  • “Major Trail” – patent litigator;
  • “Captain Europe” – patent attorney;
  • “The Sidekick” – IP paralegal;
  • “The Wonder” – trademark attorney;
  • “The Alliance” – consultants and trainers

We would like to add one more role:

  • “New Stars” – Intellectual property managers that are responsible for the strategic management of all corporate intangible assets;

#Distinctiveness and how to prove it – some EU Court directions

pexels-photo-1536891The European Court has ruled in case C‑541/18  AS v Deutsches Patent- und Markenamt. The case concerns the issue what trademark use can contribute to the trademark distinctive character. In detail:

AS applied to the DPMA for registration of the sign comprising the hashtag #darferdas? as a trademark in respect of goods in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

The goods in respect of which registration was sought corresponded to the following description: ‘Clothing, in particular tee-shirts; footwear; headgear.’

The DPMA rejected the application, since the sign at issue was, in its view, devoid of any distinctive character within the meaning of Paragraph 8(2)(1) of the Law on the protection of trademarks and other distinctive signs.

AS brought an action against that decision before the Bundespatentgericht (Federal Patents Court, Germany).

By order of 3 May 2017, that court dismissed the action. It held that the sign at issue represented a sequence of characters and words joined together essentially composed of common German words. It was merely a stylised presentation of a discussion point. The hashtag indicated solely that the public is invited to discuss the question ‘Darf er das?’ (‘Can he do that?’). The public would understand that question — placed, inter alia, on the front of tee-shirts — for what it is, namely a simple interrogative phrase.

AS brought an appeal against that decision before the Bundesgerichtshof (Federal Court of Justice, Germany).

According to the referring court, it cannot be excluded that the use of the sign at issue on the front of clothing is one amongst several types of use. That sign could also be placed on the label sewn on the inside of garments. In that case, the public could perceive that sign as a mark, that is to say, as an indication of the commercial origin of the goods.

The referring court states that it is clear from its own case-law that, in order for a sign to be regarded as having a distinctive character and, consequently, being eligible for registration as a mark, it is not necessary that every conceivable use of that sign be use as a mark. It is sufficient that a use be plausible and there be practically significant possibilities of using the sign applied for in the case of the goods and services in respect of which protection is claimed in such a way that it is easily understood by the public as a trademark.

That court considers that that approach could be reconciled with paragraph 55 of the order of 26 April 2012, Deichmann v OHIM (C‑307/11 P, not published, EU:C:2012:254), according to which Article 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) could not be interpreted as requiring the Office for the Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to extend its examination, based on the facts, of distinctive character to uses of the mark applied for other than that recognised as the most likely.

However, harbouring doubts in that connection, the Bundesgerichthof (Federal Court of Justice) decided to stay the proceedings and to refer the following question on Article 3(1)(b) of Directive 2008/95 to the Court for a preliminary ruling:

‘Does a sign have distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use of the sign?’

The Court’s decision:

Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks must be interpreted as meaning that in examining the distinctive character of a sign in respect of which registration as a trademark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. The latter corresponds, in the absence of other indications, to the types of use which, in the light of the customs in the economic sector concerned, can be practically significant.

New Zealand joins TMClass

aukland-1738274_960_720.jpgEUIPO reports about the fact that the New Zealand Patent Office has joined TMClass, a very helpful tool for automatic classification of goods and services for the purpose of trademark filing.

This is great news for all applicants from this country because using TMClass they will save time and efforts when filing trademark applications.

For more information here.