9 key steps to protect your trademark when selling on Amazon

pexels-photoElizabeth Ward (Virtuoso Legal) published an interesting article for Lexology which discusses the basic steps every trademark owner selling on Amazon has to bear in mind in order to protect it. In brief, the steps are as follow:

1. Get a Robust Trademark;

2. Protect Yourself Where You’re Selling;

3. Logo or Word?

4. Don’t be too Descriptive!

5. Clear the way;

6. Don’t be afraid to spend money;

7. Nip Trouble in the Bud;

8. Stay Vigilant;

9. Don’t Rely on The Police to Sort it Out;

The full article can be found here.

 

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Parfumes and exhaustion of rights in Austria

aromatherapy-3173580_960_720The Supreme Court in Austria ruled in a lawsuit that had been initiated by Davidoff against a trading company in the country which was selling original perfumes branded with trademarks  Davidoff – word and combined. According to Davidoff this could lead to a consumer misleading that this company is part if its distributional channel, taking into account that the company put the trademarks on its website.

According to the court, however, there is no breach of law in the case at hand because the trademark use was only for information purposes and it is in accordance with the legislation on trademark exhaustion, in particular:

A mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.

Source: Taylor Wessing, Lexology.

Harley-Davidson won 19 million dollars in a trademark lawsuit

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Harley-Davidson won a lawsuit for more than 19 million dollars. The case concerns the internet platform SunFrog which offers for sell t-shirts based on designs submitted by consumers.

According to the accusation, SunFrog offered more than 100 designs containing Harley-Davidson’s registered trademarks.

Although SunFrog agreed to stop selling such products, the infringement continued. Because of this, the Court issued a judgment in Harley-Davidson’s favor, permanently prohibiting SunFrog from making any Harley-Davidson branded apparel products.

In addition, the Court awarded 19,2 million dollars in statutory damages, which amount of money had been determined on the ground of the fact that SunFrog infringing products attract wide exposure judging on the interest of the Facebook ads regarding them. What’s more, the Court took into account Harley-Davidson’s licensing business which amounted to 400 million dollars for a period of about 10 years.

Source: WIPR.

Cambodia joins the Lisbon Agreement for the Protection of Appellations of Origin

shutterstock-391563562WIPO reports about the accession of Cambodia to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.

According to the information, Cambodia will accept individual fees to cover its cost of substantive examination of each international registration.

More information here.

Designs, novelty and a General Court decision

The General Court of the EU ruled in Case T‑651/16, Crocs, Inc. v EUIPO, Gifi Diffusion. This case concerns a registered EU design 257001-0001 by Western Brands LLC on 22.11.2004 with claimed priority based on a US design registered on 28.05.2004.

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This EU design after that was transferred to Crocs. In 2013, the French-based company Gifi Diffusion filed an application for a declaration of invalidity of the design based on a lack of novelty.

As it is known, one EU design can receive protection only in the case that it is novel and has individual character.

EUIPO took a decision for invalidation of the design, which decision was confirmed by the General Court.

The reason for this was that information for the design was available in 2003 through the Corcs’ website, it was displayed on an exhibition in Florida and was available for sale.

Corcs argued that such information wasn’t accessible in EU at that time, but the Court dismissed it because there was no evidence that the Corcs’website wasn’t accessible in EU.

This case is indicative of the need for a good intellectual property planning. In the case of industrial designs and inventions, this is crucial because if these IP assets are not new, for example, they cannot be protected. Due to this, all information regarding them has to be managed very carefully in order to fulfill the respective legal requirements.

European design, technical function and a EU Court decision

flag-1198978_960_720The European Court ruled a highly anticipated decision regarding Case C‑395/16 DOCERAM GmbH v CeramTec GmbH. The case concerns the following:

DOCERAM is a company manufacturing technical ceramic components. In particular, it supplies weld centring pins to customers in the automotive, textile machinery and machinery industries. It is the proprietor of a number of registered Community designs which protect centring pins for welding in three different geometrical shapes, each of which is produced in six different types.

CeramTec also manufactures and sells centring pins in the same variants as those protected by the designs of which DOCERAM is the proprietor.

Relying on an infringement of its Community designs, DOCERAM brought an action against CeramTec before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), seeking an order for CeramTec to discontinue the infringement of its intellectual property rights. The latter brought a counterclaim for a declaration of invalidity of the contested designs, maintaining that the features of appearance of the products in question were dictated solely by their technical function.

The Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed the action brought by DOCERAM and declared the designs at issue to be invalid on the ground that they were excluded from the protection afforded by Article 8(1) of Regulation No 6/2002.

DOCERAM appealed against that judgment to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany). In particular, that court observes, first, that the designs at issue are new and have an individual character and, second, alternative designs of the centring pins concerned exist which are not protected by the Community law on designs. Therefore, that court considers that for the purposes of the application of the exclusion laid down in Article 8(1) of Regulation No 6/2002, it is necessary to establish whether the existence of those alternative designs leads to the conclusion that the features of appearance of those products are not covered by Article 8(1) of Regulation No 6/2002, or whether it is also necessary to ascertain whether the technical function was the only factor which dictated those features.

That court points out that there are differing approaches in the case-law and in legal literature on that question. One approach is that the sole criterion for the application of Article 8(1) of Regulation No 6/2002 is the existence of alternative designs which fulfil the same technical function, which demonstrates that the design at issue is not dictated solely by reason of its technical function within the meaning of that provision. The opposing view is that that provision is applicable where the various features of appearance of the product are dictated solely by the need to achieve a technical solution and that the aesthetic considerations are entirely irrelevant. In that case there is no creative effort worthy of protection as a design.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of [Regulation No 6/2002] which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?

(2)  If the Court answers Question 1 in the affirmative:

From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an “objective observer” required and, if so, how is such an observer to be defined?’

The Court decision:

1.      Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

2.      Article 8(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function, within the meaning of that provision, the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’.

Google removes ‘view image’ button and reach a deal with Getty

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Google announced that the ‘view image’ button for searching images will be not available in future. This decision is a result of a deal with Getty, which try to iron out some of the problems that the authors of images face on the internet.

As a consequence, Google will be able to access the Getty’s content for all of its services.

Although the ‘view image’ button will become something from the past, the visit’ button will remain at consumers disposal giving them a direct link to the source of the relevant images.

For more information here.