San Marino joins the Hague Agreement

san-marino-1681021_960_720WIPO reports about the accession of the Republic of San Marino to the Hague Agreement Concerning the International Registration of Industrial Designs. This Agreement, which will enter into force for the country on 26.01.2019, gives an easy way for applying for industrial design protection in various countries around the world submitting only one application and paying one total fee instead of doing that in every single country.

More information can be found here.

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WIPO Magazine issue 4

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WIPO published the 4th issue of the WIPO Magazine, where you can find the following:

  • GII 2018: energizing the world with innovation
  • COCOpyright and the value of moral rights
  • The role of IP rights in the fashion business: a US perspective
  • Strengthening Africa’s audio-visual sector: market intelligence is critical
  • Ethics, technology and the future of humanity

For more information here.

WIPO published its Global Innovation Index for 2018

WIPO published its Global Innovation Index for 2018. According to the report, the global leaders in that regard are Switzerland, Netherlands, and Sweden.

In the same list, Bulgaria is placed on the 37th position. The full text of the report can be found here.

 

Some interesting infographics:

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Red Bull prevailed in a UK barbecue dispute

pexels-photo-555775Red Bull won an opposition against the following UK trademark application in Class 11 – barbecue smokers and grills, pellet smokers and grills.

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The opposition was based on an earlier word mark RED BULL and the following figurative mark, both in Class11:

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According to the the UKIPO, there is a phonetic similarity between the sign which shares identical first part Red Bull. The presence of the words BBQ Grills in the later mark is not sufficient to differentiate them due to its lack of distinctiveness.

From a conceptual point of view, both marks are highly similar wheres from a visual side they are not because of the different graphical representations.

The earlier marks are within their 5 year period for use, so there is no need for a genuine use to be proved although Red Bull doesn’t use its trademarks for such goods.

In its conclusion, the Patent Office summarized that the signs at hand are similar to the extent that they can lead consumers to think that the goods are produced by the same or an economically linked undertaking.

Source: WIPR.

Marks, furniture, and distinctiveness in Finland

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Marques Class 46 (information by Suvi Haavisto) reports about an interesting case regarding trademark lawsuit in Finland.

Laulumaa Huonekalut Oy, a furniture producer, filed a trademark infringement claim against Pohjanmaan Kaluste Oy, claiming that this company had been using its registered combine trademarks SARA, OLIVIA and SOFIA (in class 20) for branding different items of furniture.  Laulumaa asked the Court to order Pohjanmaan to cease the infringement and a compensation to be paid.

Pohjanmaan rejected this claim stating that those names were widespread in Finland for branding furniture for many years so in light of this they are not distinctive.

The Court allied with Pohjanmaan confirming that the names are not distinctive. The scope of protection of the already registered marks is limited only to their combine nature. In the case at hand, however, Pohjanmaan didn’t use these combine trademarks but only word names in standard font. So in that regard, there is no infringement.

This case is quite indicative of the way how applicants define their trademark strategies. Some companies, in an attempt to escape possible trademark refusals by Patent Offices, applied for not so distinctive signs combining them with graphical elements or fonts. Although they can register such marks successfully most of the times, this, unfortunately, doesn’t mean that they can rely on them in such lawsuits because of the limited scope of protection.

Who can file oppositions against EU trademarks?

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The Advocate General of the European Court BOT issued an opinion on the case C‑139/17 P QuaMa Quality Management GmbH v EUIPO. This case concerns the following:

The background to the present dispute is described in detail in the judgment under appeal, to which I would refer (5). The facts essential to and necessary for an understanding of this Opinion may be summarised as follows.

In its action before the General Court, the appellant put forward two pleas in law.

In support of its first plea, the appellant argued that the opposition should be rejected as it was submitted after the period laid down in Article 41(1) of Regulation No 207/2009 had expired. At the time the notice of opposition was filed, SMSC Europe GmbH, not the intervener, was registered as the proprietor of the earlier mark. According to the appellant, given that the intervener, by the date of expiry of the opposition period, had submitted a request for a change of name and address only and not an application for registration of a transfer, it was not, therefore, entitled to file a notice of opposition pursuant to Article 17(7) and Article 41(1) of Regulation No 207/2009. In addition, the appellant asserted that EUIPO could not reclassify the request for a change of name and address as an application for registration of a transfer, as shown by the Opposition Division’s initial rejection of the first application and the submission of a second application by the intervener.

The General Court rejected that plea.

The General Court recalled, in paragraphs 18 to 27 of the judgment under appeal, the principles on which opposition proceedings are based, as well as the conditions that must be met in order to submit an application for registration of a transfer. It concluded, in paragraph 29 of that judgment, by reference to Article 17(7) and Article 41(1) of Regulation No 207/2009, that successors in title who are not yet registered as proprietors but to whom the earlier mark has been transferred are entitled to file a notice of opposition, provided that EUIPO has received their application for registration of a transfer.

Taking the view that the intervener had indeed remedied the deficiencies in the application for transfer, submitted as a request for a change of name and address, and had submitted proof of its entitlement to file a notice of opposition within the period allowed by EUIPO, the General Court found, in paragraph 35 of the judgment under appeal, that the notice of opposition filed at the same time as the request for a change of name and address of the proprietor of the earlier mark had been submitted within the period prescribed in Article 41(1) of Regulation No 207/2009, in the light of the combined provisions of Article 17(7) of that regulation and Rule 31(1) and (6) of Regulation No 2868/95.

The General Court rejected the appellant’s argument that the request for a change of name and address should not have been reclassified as an application for registration of a transfer, taking the view, in paragraph 37 of the judgment under appeal, that EUIPO cannot attach importance only to the formal title of a request without taking its content into account. In that regard, the General Court, first of all observed, in paragraph 38 of the judgment under appeal, that it does not follow from any provision of Regulations No 207/2009 or No 2868/95 that the use of the correct form is an essential pre-condition for an application to be valid. Next, it stated, in paragraph 39 of the judgment under appeal, that it was clear from the intervener’s request for a change of name and address that the request related to a change of ownership of the earlier mark. Finally, the General Court considered, in paragraph 40 of the judgment under appeal, that the fact that the Opposition Division had registered the two applications under two different numbers had no bearing whatsoever on the finding that EUIPO was entitled to regard the request for a change of name and address, in the light of its clear content, as an application for registration of a transfer.

In the light of those findings, the General Court considered, in paragraph 41 of the judgment under appeal, that EUIPO had not erred in interpreting the request for a change of name and address as an application for registration of a transfer for the purpose of Article 17(7) of Regulation No 207/2009.

In paragraph 42 of the judgment under appeal, the General Court therefore held that the Board of Appeal had been fully entitled to find that Article 41(1) of Regulation No 207/2009 had not been infringed in the case in the main proceedings, as the intervener was entitled to file a notice of opposition on 9 April 2013 and had done so within the prescribed period.

In support of its second plea, the appellant argued that the Board of Appeal of EUIPO infringed Article 8(1)(b) of Regulation No 207/2009 by failing to carry out a proper assessment of the likelihood of confusion between the marks at issue.

The General Court rejected that plea after examining each of the appellant’s claims concerning the definition of the relevant public, the comparison of the signs in question and the assessment of the likelihood of confusion between the marks at issue.

The Advocate’s opinion:

Admittedly, the appellant specifies the points that, in its view, were distorted by the General Court, namely, the request for a change of name and address submitted by the intervener on 9 April 2013 and EUIPO’s request in its letter to the intervener of 15 April 2013. Nonetheless, the appellant has failed to establish that that evidence was distorted, as the arguments it raises are not, in my view, sufficient to show that the General Court manifestly exceeded the limits of a reasonable assessment, as required by the Court’s case-law.

As regards the appellant’s arguments relating to an alleged distortion of the request for a change of name and address submitted by the intervener on 9 April 2013, it is clear that the appellant is in fact seeking a re-examination of its arguments before the General Court. The appellant merely repeats the arguments it made before the General Court with a view to obtaining a fresh assessment of the facts, which, as indicated above, falls outside the Court’s jurisdiction.

As regards the appellant’s arguments relating to an alleged distortion of EUIPO’s letter to the intervener of 15 April 2013, the appellant, in fact, focuses its criticism on the manner in which the General Court assessed the content of that letter and suggests a different reading to that adopted by the General Court. It thereby provides its own assessment of the facts and evidence before the General Court, but fails to show, to my mind, that that court’s analysis is manifestly incorrect.

In my view, the second head of complaint must be rejected as unfounded.

The head of complaint is based on a misreading of paragraph 30 of the judgment under appeal. In that paragraph, the General Court merely noted the facts which, as shown by the use of the expression ‘it is not disputed’ at the beginning of that paragraph, were established between the parties and not disputed by either party. When it observed that ‘only sufficient proof of transfer, in accordance with Rule 31(5) of Regulation No 2868/95 and Point 3.5 of Chapter 1 in Section 3 of Part E of the EUIPO Guidelines, was lacking’, the General Court merely took note of the content of Rule 31(1) and (5) of Regulation No 2868/95 and the EUIPO Guidelines and in no way asserted that, by submitting the form headed ‘Recordal application’ (application for registration), the intervener had provided sufficient proof of transfer allegedly required by EUIPO. The question of whether the submission of such a form was sufficient proof of the intervener’s entitlement to file a notice of opposition, for the purposes of those provisions, was not raised or discussed before the General Court.

Even if that point were to have been raised expressly before the General Court, I observe that the appellant does not dispute the fact that the information listed in Rule 31(a) to (d) of Regulation No 2868/95, which must be contained in an application for transfer, was already apparent from the notice of opposition and the request for a change of name and address submitted on 9 April 2013, as observed by the General Court in paragraph 30 of the judgment under appeal. Although, in its arguments, the appellant refers, in addition, to ‘the taking of evidence’, I note that nor does the appellant dispute the General Court’s interpretation or application of Rule 31(1) and (5) of Regulation No 2868/95 and Point 3.5 of Chapter 1 in Section 3 of Part E of the EUIPO Guidelines, in particular Rule 31(5) of that regulation, which clearly states that the signing of the application for registration of a transfer by the registered proprietor of the earlier mark and by the successor in title constitutes sufficient proof of transfer for the purposes of Article 17 of Regulation No 207/2009. While the appellant thus attempts to explain the reasons for which the proof of transfer was, in its view, insufficient to demonstrate that the intervener was entitled to file a notice of opposition, it fails to identify any error of law that might vitiate the judgment under appeal.