WIPO reports about new individual fees for registration of international trademark where Armenia is designated country. The new fees that have been in force since 16.12.2020 are as follow:
New fees for international trademarks for Armenia
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5 key moments before to apply for trademark protection
Many people believe that the most important part when you want to register a trademark is the registration procedure before the Patent Office.
This is a wrong view for the most part. There are some crucial moments regarding every trademark protection that have to be taken into account even before filing an application. This can define to what extent you will be able to register and use your trademark successfully.
- Define what type of trademark you want to register:
- Word mark – in that case your mark will be registered only as a word. For example: NIKE.
- Combined mark – this mark consists of both word and graphic parts. For example the Adidas’ mark:
- Figurative marks – they cover only graphics without text. For example:
- Three-dimensional marks. They consist of the product’s forms. One of the most well-known examples of such a trademark is that of Coca Cola’s bottle:
- Other trademark types such as sound marks, smell marks etc. Bear in mind that you can choose only one type of trademark in your application. If you want to register all of them you need to file separate applications.
- Be sure that your sign is not excluded from trademark protection. Trademark law prohibits registration of signs that cannot serve as a source of trade origin. They can be:
- clearly descriptive signs;
- signs that are not distinctive;
- deceptively misleading signs;
- geographical places of origin of goods and services;
- signs consisting of flags, arms and other official emblems of states or international organizations which are registered in accordance with Article 6 of the Paris Convention;
- signs contrary to public policy or accepted principles of morality.
- etc.
- Define the classes of goods and services for which you want your trademark. Every trademark application includes a list of the so-called Nice Classes of goods and services. The scope of trademark protection is valid only for specified goods and services. This means that your monopoly over the sign is limited to those classes. One simple way for classification is to use the TM Class tool.
- Do a preliminary trademark search. This is absolutely critical moment. You need to check the Patent Office’s trademark database whether there are identical or similar trademarks for the same classes of goods and services. If this is the case it could mean that third parties can oppose your trademark or even sue you for a trademark infringement in case you start using the mark.
- Consult a registered Trademark Attorney. The legislation in most of the countries allows a trademark application to be filed personally by the applicant. This can save some money from attorney’s fees. However, this hides some traps. In case you don’t have the necessary legal knowledge of how to go through the registration procedure it can lead to a refusal or opposition against your trademark. From that perspective you can lose not only your application but to waste some money. So you need to think carefully to what extent you are prepared to do the job and whether you need help in order you to avoid legal pitfalls.
More or less these are some of the main steps that you need to consider before filing a trademark application. They can save you time and money if implemented well.
In case you want to learn how to do a preliminary trademark search on your own, in order to select the best brand name for your business, check this new Udemy Complete course on trademark search.
A UK trademark dispute over “FIT KITCHEN”
One interesting trademark dispute from the UK gives us some valuable insights about the UK practice and legislation subtleties when it comes to trademark invalidation.
In the case at hand Fit Kitchen Limited is the owner of the registered FIT KITCHEN trademark used for website food delivery services.
Another UK company Scratch Meals started to use the same mark for ready meals distributed to supermarkets.
A lawsuit followed. The Scratch Meals defense position was that there is no trademark infringement because the earlier mark was registered in bad faith. The argument for this was the fact that Fit Kitchen Limited applied for the mark six days before to be dissolved as a company.
Fit Kitchen Limited, however, proved that they weren’t aware of that fact because they didn’t receive the official notice for this. What’s more immediately after being informed they applied to restore the company.
Scratch Meals than claimed that in a case where a trademark was filed by a dissolved company it has to be owned by the Crown.
However, the court dismissed this claim because it wasn’t stating initially.
Finally the court considered that the earlier mark wasn’t filed in bad faith. From that point of view the mark was valid and taking into account that it was identical to the later mark, for identical and similar goods and services, there was a trademark infringement.
One strong point for this conclusion was evidence submitted by Fit Kitchen Limited for consumers who were confused between both brands in the market.
This case shows clearly how important is a preliminary trademark clearance search. The search has to be done before the relevant brand is launched in order for any legal conflicts to be avoided.
If you are interested to learn how you can conduct such searches on your own, check this Udemy course – Complete course on trademark search, for example.
Source: Simon Bennett and Scott Steinberg – Fox Williams LLP for Lexology.
When advertisement on websites will not constitute a trademark infringement?
The European Court has ruled recently in the case C‑684/19 mk advokaten GbR v MBK Rechtsanwälte GbR. This case concerns the following dispute between two law firms with similar names:
The law firm MBK Rechtsanwälte, established in Mönchengladbach (Germany), is the proprietor of a German trade mark constituted by the name of that firm, ‘MBK Rechtsanwälte’. That trade mark is registered for legal services.
mk advokaten, established in Kleve (Germany), is also a law firm. Initially, it carried on its activities under the name ‘mbk rechtsanwälte’ and the corresponding name in Dutch, ‘mbk advokaten’. However, following an action for infringement brought by MBK Rechtsanwälte, theRegional Court, Düsseldorf, Germany, by judgment of 17 October 2016, prohibited mk advokaten, under pain of a fine, from using, in the course of trade, the group of letters ‘mbk’ for legal services. That judgment became final.
Subsequently, it was shown that, when using the search engine operated by the company Google, entering the terms ‘mbk Rechtsanwälte’ led to several company referencing websites, such as the website http://www.kleve-niederrhein-stadtbranchenbuch.com, that displayed an advertisement for the legal services of mk advokaten.
MBK Rechtsanwälte took the view that it was thus shown that the prohibition imposed by the Regional Court, Düsseldorf was not being complied with, and requested that that court impose a fine on mk advokaten.
In its defence, mk advokaten submitted that, as regards advertisements on the internet, the only initiative on its part had been to register itself in the online directory Das Örtliche and that, following the judgment of 17 October 2016 of the Regional Court, Düsseldorf, it had withdrawn that registration for all signs containing the group of letters ‘mbk’. According to mk advokaten, it was not under any other obligation, as it had never requested inclusion on other websites.
The Regional Court, Düsseldorf upheld the request of MBK Rechtsanwälte. That court held that the advertisement placed online on the websites at issue benefited mk advokaten and was based on the one that mk advokaten had arranged to be placed in the Das Örtliche directory. It imposed a fine on mk advokaten, since the latter had, following the judgment of 17 October 2016, merely arranged for the advertisement appearing in that directory to be deleted.
mk advokaten brought an appeal against that decision before the referring court, the (Higher Regional Court, Düsseldorf, Germany.
According to that court, the outcome of the dispute before it depends on the interpretation of Article 5(1) of Directive 2008/95.
That court states that it follows from settled German case-law that, where an advertisement placed online on a website infringes another person’s rights, the person who had ordered that advertisement must not only arrange for it to be deleted from that website but also ascertain, with the help of the usual search engines, that the operators of other websites have not reproduced that advertisement and, if that is the case, make a serious attempt to have subsequent referencing deleted.
According to that court, that case-law is based on the consideration that any display of the advertisement benefits the person whose goods or services are thus promoted. It is consequently for that person to take, in the event of infringement of another person’s rights, the requisite steps so that all instances of the advertisement concerned appearing on the internet are removed.
The referring court expresses doubts as to the compatibility of that German case-law with the principles set out in the judgment of 3 March 2016, Daimler (C‑179/15, EU:C:2016:134), since in that case, the Court followed a different approach as regards advertisements infringing another person’s trade mark. That approach might be applicable to the dispute before the referring court.
It is true that in the case that gave rise to that judgment of the Court, the advertisement which was the subject of the dispute in question had initially been lawful, whereas in the present case, the advertisement that mk advokaten ordered to be placed online infringed another person’s trade mark from the outset. Nevertheless, the relevance of that difference for the interpretation of the term ‘using’, within the meaning of Article 5(1) of Directive 2008/95, is not clear.
In those circumstances, the Higher Regional Court, Düsseldorf decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:
‘Is a third party referenced on a website in an entry that contains a sign identical with a trade mark “using” that trade mark, within the meaning of Article 5(1) of Directive 2008/95, if the entry was not placed there by the third party itself, but was reproduced by the website’s operator from another entry that the third party had placed in infringement of the trade mark?’
The Court’s decision:
Article 5(1) 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 trade marks must be interpreted as meaning that a person operating in the course of trade that has arranged for an advertisement which infringes another person’s trade mark to be placed on a website is not using a sign which is identical with that trade mark where the operators of other websites reproduce that advertisement by placing it online, on their own initiative and in their own name, on other websites.
Abercrombie & Fitch’s Store Front Sculpture can be protected by copyright
The US Copyright Office Review Board has recently issued a decision according to which the following Abercrombie & Fitch’s Store Front Sculpture is copyright protectable:
Initially the Office refused to register this sculpture stating that it is not original enough due to the fact that it consists of ordinary elements such as letters and geometric shapes which are not protected by the US Copyright law.
The Board, however, revised this decision, punting out that although the single elements are not protectable, the whole combination of them can be protected in case that there is at least a minimum level of creativity.
At the case at hand, the Board considered that this is satisfied based on the particular combination between the letters A and F, the ampersand symbol, and the abbreviation “Co.”.
Recently the US Copyright Office ruled out the UEFA Champion League’s logo and Vodafone’s corporate logo is not sufficiently original and refused their registration in the US.
Source: IPKat.
New problems for the Coachella festival and its EU trademark
One of the biggest and most popular festivals in the world Coachella Valley Music and Arts Festival (‘Coachella’) was postponed for October this year.
However, this wasn’t the only problem for the company organizer of the festival AEG Presents Ltd.
Recently, the European Office for intellectual property – trademarks and design (EUIPO) has revoked one of the AEG Presents’ European trademarks: ‘Coachella’ registered in classes 9, 16, 25, 35, and 41.
The reason was a request by a Spanish company that applied for an EU trademark ‘Coachella’ for wines. AEG Presents filed an opposition against this mark and the Spanish company initiated revocation procedure based on lack of genuine use on the EU territory.
AEG Presents submitted evidence for its trademark well-known status amongst the consumer in the EU and the sales of tickets.
However, the EUIPO revoked the ‘Coachella’ for all classes except the following services in class 41: Organisation, production and conducting of performing arts entertainments and festivals, such services provided on-line from a computer database or the Internet; performance of music, such services provided on-line from a computer database or the Internet; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet.
This case serves as a good example of the complexity of proving a trademark genuine use in one territory when the products and services associated with the mark are offered mainly on another territory.
Is it possible to use a photo from the internet for your fashion collection?
The Milan Court has ruled in the case 2539/2020, which concerns not authorized use of a photo for commercial purposes.
In the case at hand, the Italian fashion house Antonio Marras used the following photo, downloaded from the internet, for its Fall/Winter 2014-15 fashion collection:
A lawsuit followed in which the photographer claimed copyright infringement. In Italy, there are two main ways for the protection of photos. The first is the classic one based on the copyright law where, however, the work has to be original, created as a result of the author’s intellectual efforts. The second protection refers to ordinary, simple photos of the real-world without creative efforts in place.
According to the fashion house, there was no copyright infringement because the photo was quite simple and not original, produced without any creative efforts.
The court disagreed. Grounded its position on the European Court decision in the case Painer, C-145/10, the Italian court came to a conclusion the photo was original indeed. The arguments for this were the fact that the author chose carefully the time and the subject to take this photo. What’s more, he used technique and an angle which to invoke specific emotions in the viewers.
The court added that another backing argument for the originality of the picture was the fact that it had been registered in the US Copyright Office, which is possible only if the work is original.
Source: IPKat.
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