Archive | 2011, November | (7) posts

The Carpenter’s Apprentice

After five weeks of practise at my home office, I have started to think of myself as a carpenter’s apprentice. We both need to be good at handling a myriad of tools, we need an immense amount of practise in order be proficient in the craftsmanship, and, not to forget – a very patient supervisor.

Fortunately, all this is provided at Awapatent. During the first seminar weeks of the specialist program we were introduced to many useful tools required for being a modern IP consultant. The home office period that followed gave me the opportunity to acquaint myself with my very skilled senior colleagues. With their help I put my newly acquired knowledge into practise.

The second seminar period will, among other things, go deeper into the crucial art of drafting patent claims and applications. We will also learn more about the relations between the consultant and the client, how to understand the client’s needs and to meet the client’s expectations. In other words – learn how to be a modern IP consultant, not only skilled in the craftsmanship of drafting, but also to be good at understanding business and strategies in order to deliver qualified advice.

So, now when I begin to know the name of the tools and where to find them in my tool box, I really look forward to learn more about how to use them. And after that, just like the carpenter’s apprentice – back to the craftsmanship training.

Pontus Falk, Associate

Read more about our Specialist programme on awapatent.com!

Focus on China

The fact that China is growing in importance is well known. To Awapatent, this growth is visible in our day-to-day work, both from the questions we get about IP in China from our European clients, and from the growing demand for our services as a European firm for Chinese clients. Naturally, we make it a priority to increase our focus on China.

As part of our efforts to get to know this immense country better, we have just spent a week in Beijing, conducting meetings, giving lectures and learning more about this different and challenging place. One of the highlights of this trip was a lecture on ”IP in Europe”, given by Niklas Mattsson at one of the institutes of the Chinese Academy of Sciences.

Needless to say, we have also had a lot of exciting food, met with a lot of interesting people, and travelled in a few of the city’s 70 000 taxis!

Niklas Mattsson, European Patent Attorney
Ted Hagman, Attorney at Law

Don’t be in the wrong room!

Someone once said that “if you are the smartest person in the room, you are in the wrong room”. Here at Awapatent, as long as you’re not alone at the office, the risk of being in the wrong room is small. This comes as no surprise if you know something about the work at an IP firm. If you don’t, I can give you the short story. It is a tough job. Really tough.

We are the generalists that have to keep in mind that, when our work is reviewed, every little detail counts. Every word we write will be weighed and measured, that’s why it is so important to choose the word already used in the business and that’s why we have to stick to the old way of writing even though it seems old-fashioned and bureaucratic.

To learn the language used in this profession is one part of the job, but I think that the detective work that you have to do for each patent application is the most fun part so far. It is really creative when you are trying to find the gist of an invention, so that the protection for it will be as broad as possible without losing what the invention is all about.

Back to the smart people thing. I had the privilege to front the Awapatent exhibition booth at ARKAD, the career fair days arranged by Lund University last week. I talked to lots and lots of people and many of them were genuinely interested in the area of IP and working at Awapatent. My opinion is that you don’t have to be worried to be in the wrong room in the future either…

Daniel Enetoft, Associate

Read more about our Specialist programme on awapatent.com!

New draft on China Trademark Law

The Chinese authorities recently published the third revised draft of the China Trademark Law for public opinion. The draft seems to offer trademark holders better possibilities for protection and some of the more significant changes are the following:

  • It will be possible to file multiclass applications
  • Signs of colour as well as signs of sound may be registered as trademarks
  • Only holders of prior rights and interested parties will be allowed to file an opposition against a trademark
  • Applications in bad faith – for trademarks identical or similar to an earlier trademark of prior use for identical  or similar goods/services, i.e. when the applicant know about the existence of the older mark through inter alia business relations, geographical reasons or the like – shall not be allowed registration
  • Statutory damages will be increased from RMB 500 000 to RMB 1 000 000
  • Increased penalties on repeated infringements more than twice within a five year period
  • Better protection and cross class protection for well known trademarks and trademarks with a strong distinctiveness
  • Evidence of inter alia the extent of use of the registered mark for the prior three years shall be provided when a holder of a registered trademark claims for compensation.
  • The four tier proceedings will be reduced to three when the opposition is to be initiated before the Trademark Review and Adjudication Board (TRAB) instead of the China Trademark Office (CTMO). Hence there will only be a possibility for one  administrative ruling and two judicial trials
  • Applications made electronically will be possible. Also will partial refusals be possible
  • The time limit for the appeal of a rejection will be 30 days
  • The recorded license of a trademark can be used to challenge a third party

The above, as well as the draft as a whole, clearly indicates that the Chinese authorities are aiming to embrace some of the internationally accepted practices. As mentioned above the draft also indicates better protection for trademark holders and a will to prosecute infringers. However the, from a western point of view, inconvenient sub class system will remain.

Peter Hermansson, Attorney at Law

Design Concepts – Out of the Bottle

On 20 October 2011, the Court of Justice rendered their first decision on a registered Community design. The decision is important as it illustrates how essential concepts should be understood. 

The designs in question are playthings, namely small plates called ”rappers”. Grupo Promer is the owner of a Spanish design filed on 8 July 2003 and a subsequent Community design for a “metal plate(s) for games”. On 9 September 2003, PepsiCo filed an application for registration of a Community design with priority dating back to 23 July 2003. PepsiCo’s design was filed for “promotional item(s) for games”. Both designs were illustrated by representations.

As Grupo Promer’s design predated PepsiCo’s design, Grupo Promer filed a declaration of invalidity against Pepsico’s design. This request was based on lack of novelty and individual character and Grupo Promer’s prior rights.

OHIM’s Invalidity Division declared PepsiCo’s design no. 0000744463-0001 invalid but the decision was appealed to OHIM’s Board of Appeal who declared PepsiCo’s design valid again. This decision was appealed and EU General Court declared PepsiCo’s design invalid again. Again the decision was appealed and the Court of Justice upheld the decision and declared PepsiCo’s design invalid.

The design legislation operates with important concepts without providing much help to the understanding of these. During the procedure mentioned, the understanding of some essential concepts was discussed and thus the decision is important case law.

One of the most important concepts when talking design infringements is the so-called “informed user” In short, if one design provides an informed user with a different overall impression than a prior design, then the designs differ sufficiently and there is no infringement. The question in the present case was whether PepsiCo’s design provided the informed user with a different design than the prior one.  According to the Court of Justice, an informed user is a person being somewhere between an average consumer without any specific knowledge who does not compare the trademarks in conflict and a sectoral expert with detailed technical expertise.

The question whether a direct comparison is to be made by the informed user is interesting because the Court of Justice states that such a direct comparison may actually take place depending on the specific circumstances. This means that sometimes this may happen and sometimes not, based on the specific circumstances. When discussing trademark infringements, this is interesting as an argument often is that the buyers targeted do not compare the trademarks directly, but must rely on an imperfect recollection of them. It then remains to be seen whether the design argument that designs are also sometimes compared directly and sometimes not, based on the specific circumstances, will also be seen more often in trademark conflicts in the future.

In the present design decision, also the level of attention of the informed user was discussed and the Court of Justice stated that the level of attention is relatively high. The reason for this is the definition of the informed user. In trademark matters, this very much depends on the goods and the buyers targeted. The question is whether the goods for which a design is intended and the classification of the design, may also in this way have some influence on the definition of the so-called informed user. What if the design illustrates a car and the classification is a toy and a second design is a design for a real car? Who is the average consumer then or does the classification have any influence at all in a conflict? This will be exciting to see in future decisions.

Finally the decision illustrates that the representation of the design is very important. In the present case samples of the goods were compared and the Court of Justice stated that they have only been used for illustrative purposes to confirm the conclusion already drawn. Based on this, it must be underlined that the representations of a design are still extremely important and that very high attention should be paid to the representations before filing a design application.  

Henriette Vængesgaard Rasch, Attorney at Law

Busy weeks of practice

 This is now the third week of the first practice period at the home office. Now I find myself thinking about IP everywhere I go; when I see a logotype, when I see a clever invention, even when I see the tiny TM-mark after a company name. I am becoming someone who must tell her family everything she knows about IP, I even start making IP-jokes (how annoying…) and this is only the beginning.

The first couple of weeks at the office have been interesting, and I have followed a few sharp cases that show how this job is done. Theory and practice finally meet. Real clients, real patent applications, real infringement cases. The drama is building up, and I get to be there to watch it, and to help wherever I can.

Only two months ago, the participants in the Specialist programme were new at this, knowing very little about IP. I have come to terms with myself in the role as a student again, being the one not knowing. IP is hardly anything just to be figured out, it requires hard work and study for many years to come. But I feel quite confident that I know a lot more now than I did two months ago, and it gets more and more by the day. If I only practice…

Charlotta Bylander, Associate, Awapatent

Read more about our Specialist programme on awapatent.com!

Cooperative Patent Classification – a new patent classification system

Everybody who ever conducted patent litterature searches knows the problems arising from the very different criteria for classifying patents in the respective patent classification systems used in Europe by the EPO, ECLA (European CLAssification), and in the USA by the USPTO, USPC (US Patent Classification. Fortunately the solution is nearby!

The EPO and the USPTO have very recently announced a cooperation to harmonize their patent classification systems. Cooperative Patent Classification (in short CPC) is the name, and the game is an effort of harmonization to bring the best practices from the EPO and the USPTO together to form a common classification scheme.

According to the CPC website, http://www.cooperativepatentclassification.org/index.html, the CPC will be developed based for a large part on the ECLA and will be modified to ensure compliance with the International Patent Classification system (IPC) standards administered by the World Intellectual Property Organization (WIPO).

The CPC is intended launched on 1 January 2013, and the Awapatent IP Blog will monitor the development with interest to keep our readers updated.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent