Masaki Mikami reports about an interesting case regarding the hurdles for registration of simple combinations between letters and numbers as trademarks in Japan.
Fette Compacting GmbH filed an international trademark for “FS12” designating Japan. The mark was for class 7 – compression tools (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for producing pellets and tablets; die-table segments (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for rotary presses.
The Japan Patent Office refused to register this sign based on absolute grounds. The trademark law in the country prohibits registration of simple signs as trademarks.
The decision was appealed but the Board of Appeal confirmed it. The sign at hand represents a simple combination between two letters and two numbers. This cannot serve as a source of trade origin because it can be perceived by the consumers as a sign for code, model, value etc.
Eleonora Rosati published an interesting article for IPKat that discusses the opportunity for copyright protection over bullfighting.
The dispute concerns an attempt by the well-known Spanish matador Miguel Ángel Perera Díaz to register with the Spanish Copyright Office a bullfighting video with description as a copyright work. The Office refused to do that because bullfighting wasn’t able to be copyright subject matter.
The decision was appealed and the Court upheld it. According to the Court bullfighting as well as other sport events are not copyrightable because they require following some strict rules. This in turn leaves no room for creative freedom for the purposes of copyright. The position reflects the European Court practice too (FAPL).
The decision was appealed again this time before the Supreme Court in Spain.
The Supreme Court admitted that there was a room for some level of artistry when matadors performing on the arena. Relying on the EU Court’s decision in Cofemel, the Court considered that copyright arises when there is a work and it is original one.
When it comes to work the Court cited the Levola Hengelo case: for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
Originality on the other hand reflects the author personality as an expression of his free and creative choices.
According to the Supreme Court bullfighting can fulfil the originality requirement because matadors implement some creative decisions when they are performing. However, bullfighting cannot be a work. The reason for this is that it cannot be expressed in such a way in order to be identifiable with sufficient precision and objectivity.
This is the argument why bullfighting cannot be regard as a choreographic work too. Each bullfight is unique by its nature and cannot be reproduced one to one.
From that perspective the Supreme Court considered bullfighting as not copyrightable.
Marques Class 46 reports about a new tool for searching of geographical indications.
The new database, called GIview, is offered is offered by the EUIPO. It covers more than 5000 geographical indications from around the world. You can search based on their names or by country. The results can be shown as a list or as a map.
You can learn more for GIView from the video below.
In 2007 an initial pilot agreement allowed registration of 10 GIs from both sides.
Now each side will acknowledge the protection of 100 GIs on its territory.
The current agreement covers different aspects of geographical indication protection such as its scope, the right to use, the relationship with trademarks etc.
However, some important moments are still remaining in the gray area. For example, enforcements of rights over geographical indications will be subject only to appropriate actions of the respective authorities.
Another controversial point is when one GI can be revoke on account of genericness.
This question can sound a bit strange. What means to keep an eye on a trademark?
Well, to be protected every trademark has to be registered with the Patent Office. Of course, there are some situations where even unregistered trademarks are protected to some extent but the general rule of thumb is that you have to register your sign as a trademark in order to take the full advantage of this protection.
Many people believe that after registration the work is done completely. But this is a wrong conclusion.
On the contrary. You need to do several things on a regular basis in order first for your protection to be active and second to prevent any infringements. After all the idea for the protection of a brand is this right to be enforced if it is necessary.
So what you need to do in that regard. There are two main essential things that have to be taken into account:
Do a trademark search on a regular basis. Why? Even though the trademark search is more known as an activity that helps to discover what are the chances for registration before filing an application, it is relevant for the time after registration too. The reason is that by doing a regular search you will be able to see whether there are new identical or similar trademark applications to yours. This will allow you to file oppositions in time to stop these new similar marks that can create confusion amongst the consumers.
Store and manage your trademarks information well. It sounds basic as a recommendation but it is crucial for the mark’s protection. The reason is that every mark is registered but only for a limited term. In most cases for 10 years. After that, you need to renew the protection for the next period of 10 years. If you miss doing this you will lose your registration. Apart from this, you need to follow many Patent Office’s procedure rules as well as to be aware of how the mark is used and whether there are licenses for it. This requires good database management that will help you to accomplish this task easily.
So if we have to summarize, trademark protection requires more then just the act of registration. You need to be proactive in order for your trademark protection to be viable and active.
One interesting case from Japan regarding the possibility for registration of personal names as trademarks.
Kabushiki Kaisha Soloist, founded by the well-know fashion designer Takahiro Miyashita applied for the following trademark TAKAHIROMIYASHITATheSoloist for classes 14, 18 and 25.
The Japanese Patent Offices refused to registered this sign based on absolute grounds – name of any person cannot be registered as a trademark for the purpose of protecting personal rights of a living individual.
According to the Office, it was clear that other people in Japan have the same name, so its monopolization was not been possible. The only exception from this rule is if the applicant provide the Office with a written consent from all people who bear the same name. That wasn’t happen.
In the appeal the IP High Court upheld this decision. The fact that the trademark application includes the name of the company was not enough to overcome the law prohibition in the case at hand.
In Europe, personal names are possible to be registered as trademarks, for example, but in many cases the applicant should prove acquired distinctiveness among consumers in order to succeed.
In times of economic crisis the things that can differentiate one company could be critical for its market success.
Some parts of this differentiation can be based on intellectual property rights such as trademarks, patents, industrial designs, copyrights, domain names etc.
One important moment in that regard is how these rights are managed in order to provide the company owner with the necessary economic benefits.
This is essential because in the case of poor management the consequences for the market position of the company could be quite negative.
All big companies have organisations and policies on how to deal with the management of their intellectual property portfolios.
In the case of small and mid-size companies this is not possible all the time because it requires human and financial resources.
Nevertheless there are some things that can be done which will help SME do preserve the value of their intellectual property:
Make an audit of everything that can represent the intellectual property in the company – the main goal is to discover what the company has. For example some products can be sold under a brand name which is not protected as a trademark. Another example is for key technology that is not protected by a patent or trade secret.
Evaluate the information from the audit and identify the key value of intellectual property within the company.
Proceed with receiving the necessary protection for those of the assets that can be registered with the Patent Office as trademarks, industrial designs, patents etc.
Create a database for your intellectual property portfolio in order to manage it properly and to keep yourself on date with its status.
Go over the portfolio and identify the possibilities for licensing your intellectual property to other companies. This can be an additional revenue stream for your company.