Archive | 2013, March | (4) posts

The beginning of a new journey

The trainee program has come to an end, but unlike most endings it is not the end, but a beginning. Namely the beginning of a new journey to become skilled patent attorneys. I have come to understand, that this is not something that will happen over night. I am however confident that on each and every day of this journey I will learn something new, which will take me one step closer. It will give me knowledge and new insights in the field of IP and especially in the world of patents. Personally, I will look on tasks with curious eyes and at the same time I will strive to do my best and keep my head up high. Luckily, patience is something I have and I also have a sincere drive and ambition to someday become an expert.

Right now I am looking forward to the Gothenburg office’s annual ski trip to Hemsedal, which takes place this weekend. This will be a great opportunity to better get to know my colleagues and to strengthen our team spirit. I believe the team spirit will help us on the way to reach our goals.

Hanna Engqvist, Associate

In Trademarks, Connections are not Always Enough

The Prelature of the Holy Cross and Opus Dei is the impressive name of an organisation most of us only know as Opus Dei through the Dan Brown novel The Da Vinci Code. Here it was portrayed as a sinister conspirational organisation but the reality is far less conspicuous and commercial.

Opus Dei has recently been involved in a rather unusual and secular trademark dispute in Denmark.

The name OPUS DEI – meaning the work of God – is a registered trademark, and Opus Dei – as any diligent rights’ owner – are monitoring any new applications that may be confusingly similar.

A Danish developer of board games had conceived the idea for a new game where the players get tasks within religion or philosophy. The game was called Opus Dei: Existence ofter Religion. As part of the marketing the developer also registered Internet domains in Denmark and the UK.

Opus Dei, having a registered Community trademark, contacted the developer and requested that he ceased with using the name, transferred the domains and paid a large compensation. And from then on the case escalated.

As in all trademark disputes there are a number of hoops the court need to take into consideration: is Opus Dei a concept (i.e. does the ordinary consumer know and recognize it as such?), does it have trademark protection and for what, does the other trademark constitute an identical or confusingly similar mark – and will consumers think so? In this matter the trademarks are identical. This generally means that the goods and services need to be distinctively apart.

Friday last week the Maritime- and Commercial Court in Copenhagen passed its ruling: There is no risk of confusion as the “goods” offered by the parties – the Danish games developer and the Catholic organization – are distinctly different, even though the marks are identical.

In a case such as this one it shows that the legal test for protection and extension of the protection is absolutely secular. It also shows the weaknesses of having a broadly formulated list of goods for your trademarks. OPUS DEI is registered i.a. for goods made of paper, cardboard, printed material, educational material and playing cards in one of the classes. There is little doubt that Opus Dei could have had far better protection – but overall, the rationale from the court is correct: for any trademark to have enhanced protection it will take quite a lot. Also note, that Opus Dei probably have a massive problem in as much as the playing cards mentioned in the trademark registration are not commercially exploited. This means that the mark is vulnerable to extinction for this product due to non use.

An interesting case and a case with a lot of teachings both for applicants and owners of rights, be it commercial or sacred.

Thorbjørn Swanstrøm, Attorney at Law

Is use in only one single member state in EU enough for a Community Trademark?

If you have a registered EU trademark (“Community trademark”) today, which was registered for more than five years ago, what are the consequences in practice if you only use your trademark in one country within the EU?

The Court of Justice came with a ruling in case C-149/11 ONEL/OMEL on 19 December 2012, in which the question was assessed of whether use of a Community trademark in only one single member state within the EU is enough to fulfill the requirement of “genuine use” in the Community, http://curia.europa.eu/juris/liste.jsf?language=en&num=C-149/11.

The background to this case is that the company Hagelkruis filed a trademark application for the word mark OMEL in Benelux for services in class 35 (e.g. advertising and marketing), class 41 (e.g. education, courses and training sessions) and class 45 (legal services). Leno is the holder of the Community Trademark registration ONEL in class 35, 41 och 45 and submitted an opposition against Hagelkruis’ application OMEL.

As a counter action, Hagelkruis requested that Leno should submit evidence of proof of use of its trademark ONEL within the Community. It turned out that Hagelkruis could only submit proof of use of its trademark in one of the member states of the Community: the Netherlands.

The question of importance in this case is if the use of a Community Trademark in one single member state is sufficient to meet the requirement of genuine use in EU consisting of 27 member states? If the holder of a Community Trademark has not put the trademark to genuine use in the Community within a period of five years following the registration, the trademark can be claimed to be invalid by a third party according to the Council Regulation (EC) No 207/2009 (previous Council Regulation (EC) No 40/94).

What is then the interpretation of “in the Community”? Would genuine use in the Netherlands in the present case be sufficient to prove genuine use?

The national court referred four questions to the Court of Justice for a preliminary ruling. However, the Court of Justice concentrated in answering the following question:

Should the assessment of genuine use in the Community be carried out without reference to the borders of the territory of the individual member states?

The Court of Justice stated that the previous Council Regulation (EC) No 40/94 must be interpreted as that the territorial borders of the member states should be disregarded in the assessment of whether a trademark has been put to “genuine use in the Community”. “A Community trademark is put to ‘genuine use’ when it is used in accordance with its essential function and for the purpose of maintaining or creating market share within the Community for the goods or services covered by it.

However, it is a task for the referring court to assess whether the conditions are fulfilled in the main proceedings. The assessment shall take into account all the relevant facts and circumstances of the case in question, such as the characteristics of the market, the nature of the goods or services, the territorial extent and the scale of the use, as well as its frequency and regularity.

One must also remember that the very purpose of the system of Community trademarks is to offer conditions, which are similar to those obtained in a national market. If particular importance is given to certain territories of the Member States that would prevent the objectives of the system and would be detrimental to the nature of the Community trademark.

From a practical perspective, it is interesting to observe that the Court of Justice does not provide any de minimis rule such as how many countries in the EU that is required to meet the requirement of “genuine use”.

In my opinion, as the territorial borders of the member states should be disregarded, the conclusion of this case should be that use of a Community trademark in one single member state could constitute genuine use depending on the particular circumstances in the case (such as extent and nature of use). The Court of Justice does not indicate whether the size of the geographical markets matters. Although, depending on the circumstances, since factors such as “the territorial extent” and “the scale of the use” in the Community should be taken into consideration it could be an advantage if you can prove “genuine use” of a Community trademark on larger markets within the Community.

Hence, the consequences in practice if you have a registered “Community trademark” today and if you only use your trademark in one single country within the EU are still uncertain. It is now up to the national courts in the member states to decide what influences the case ONEL/OMEL will have in practice.

However, remember that if you as a holder of a Community trademark would end up in a situation where it turns out that use in one country within the EU is not enough, you can always convert your Community trademark into a national trademark.

Helena Ribbefors, Attorney at Law

From theory to practice – a trainee’s perspective

Although we have only scratched the surface of the complex patent world comprising “Patent Law Theory”, “Patent Application Procedure and Examination”, “Technology Licensing”,  “Litigation Practice” etc. it was boosting to come home and apply at least some of the knowledge we have gained during the trainee courses. The shifts between intensive trainee courses and home office practice seem to form an ideal bridge to quickly learn to do client work.

Since September 2012 the learning curve on intellectual property law has been steep but we have also been taught a great deal about ourselves: who we are, or rather who we are becoming. Personally, I have a longer background in research before starting as a trainee at Awapatent and I must say I am surprised to realize how sudden I have adapted to the IP culture. Hence, the conversion from one way of working to another has been surprisingly straightforward. Also, the IP theory may be difficult to comprehend and apply but now the light at the end of the tunnel is appearing. This, I ascribe the bridging between theory and practice.

Although we are all eager to become great patent attorneys I believe it is important to remember “He who would learn to fly one day must first learn to stand and walk and run and climb and dance; one cannot fly into flying” (Friedrich Nietzsche).

In other words, the process of converting theory in to practice I believe is key to become a successful qualified patent attorney.

Helle Friis Svenstrup, Awapatent Trainee