Archive | 2014, February | (4) posts

Don’t let your trademark be guillotined!

Throughout history we have learned that revolutions can be very bloody. Or at least, the bloodiest and most horrible revolutions are the ones we remember from our history lessons back in school.

I remember a little play about the French revolution from my own school time. All the girls wanted to play Marie Antoinette. Not because her character had many lines, except the famous one to the starving people: ‘Let them have cake’! Nor because she wore a beautiful dress and a huge wig, but because she got to squeeze a little tube of fake blood when guillotined!

Now we are standing in front of a new revolution, yet a quite different one: a revolution of the Internet. Will this revolution also be bloody? Well, perhaps not, but we expect that 600-700 new generic top level domains will be released over the following three years and this will without doubt give rise to some conflicts between trademark owners.

Some of the new domains will appeal only to a specific business like .film, .architect, .airforce, .doctor, .university, etc.

For instance, I don’t think that the trademark owner of the famous cognac brand Renault will be interested in the domain name renault.car. But I´d be very surprised if the trademark owner of the famous car brand Renault will not have an interest in that domain.

But what about .luxury? Or .email? Or domains that may be attractive for marketing campaigns like .events or .vip?

It´s not hard to imagine that co-existing brands will share a common interest in some of the domains. And what will happen if both the car and the cognac trademark owners file for the same domain in the sunrise period? Remember that we will be dealing with hundreds of new and probably very different registries with different sets of rules. So it’s not quite clear yet, how these conflicts between trademark owners will be handled by each registry. A method that we have seen from previous sunrise periods is that the domain is put up for an auction between the applicants.

However, what is absolutely clear is that you must pre-protect your trademark in the sunrise database for trademark owners (the so-called Trademark Clearinghouse database) if you don’t want to see your trademark being guillotined! If your trademark is not protected here you will not be able to file any domains at all in the sunrise periods.

By the way, I didn´t get the role as Marie Antoinette but this shouldn’t stop me today from saying to all trademark people: ‘Let them have trademarks’

Dorthe Vangsgaard Sørensen, Paralegal

“Technical poetry”

With the ambition to become European Patent Attorneys, a dozen of eager “students” follow our in-house EQE basic program, me being one of them. As we have come to learn, the articles and rules in the European Patent Convention (EPC) are often not enough to fully understand the concepts of European Patent Law, but case law, and the knowledge of how to interpret the case law is often necessary. The latest class in the EQE basic program covered the topics of Unity of invention, Disclosure of the invention and Claims.

The first topic, unity of invention, is a mere administrative concept and is not related to the fundamental requirements for granting a patent. EPO wants to get paid, and it wants to get paid for each invention, or rather each inventive concept. Art. 82 EPC ensures that even though an application may contain more than one invention (note, on filing), you cannot pay the fees for only one application if you seek protection for more than one invention. However, even though unity is not a fundamental requirement for granting a patent, the patent application may very well be refused if requirement of unity is not fulfilled.

While unity deals with the fact that EPO wants to get paid, disclosure of the invention (Art 83 EPC) or “sufficiency of disclosure” benefits third parties by enriching technology. The general principle is that the applicant may obtain a monopoly protecting his invention only if he provides a complete disclosure of the invention. Here EPO is tough; if the application on the date of filing fails to teach the skilled person of how to carry out the invention, the application will be refused, and there is no remedy for an insufficient disclosure.

Art. 84 EPC states i.a. that the claims shall be clear and concise. However, a very clear claim (i.e. lots of features) may often unduly limit the scope of protection.  For me, this balancing act between clarity and undue limitations, is often the toughest part in claim drafting. All of the essential features of the invention have to be included in the claim, but preferably not much more. One way of describing claim drafting to an unskilled layman, is in terms of “technical poetry”. However, perhaps contrary to an ordinary poem, the words and terms defining the features of the invention in a claim do not necessary need to flow (but they may very well do so). A logical relationship among the words, terms and features is the key.

Oskar Kronsell, Associate

Fatal success

When introducing a product, the company must have as a goal or at least a hope that the trademark related to the product will become known. Some may even pray for well known or famous. They may get exactly what they hope for and some of those may find themselves cursing the day, when it happens. 

A trademark may lose its ability to identify the source for the product and instead become the product itself. Like aspirin, which used to be a worldwide trademark but now has lost its trademark status, in some countries. Aspirin is now a generic term for the product “pain killer”. The risk is especially big, when you also invent the product, e.g. Vaseline.

When a trademark loses this ability, a generic trademark is the result (also known as a genericised trademark or proprietary eponym). Obviously, the owner of the trademark fears this evolution as it also means that everybody can use the used-to-be-trademark-but-now-demoted-to-dictionary-word.

Famous trademarks, of which some of them have been declared genericised in some countries: Thermos, Yo-yo, Linoleum, Jeep, Xerox, Stetson, Plexiglas, Kleenex, Velcro, Post-it, Flamingo, Jacuzzi, Mærkat, Frisbee, Cellofan, Gore-Tex, Adrenalin, Bobcat, Dictaphone, to google something, Hacky Sack, Teflon, Vaseline, Rollerblades.

Escalator was a trademark for Otis Elevator Company, more or less until Otis used the following words in a commercial “the latest in elevator and escalator design” thereby telling about their Escalator product by using the trademark as a describing word; the ultimate sin when you are dealing with a famous mark. From then on, rescue of the trademark was not really possible.

How to minimize the risk: Only use the trademark in its registered form, e.g. never photoshop anything, never sell two Jet Skis, never use a possessive term such as the Frisbee’s color. Also consider correcting campaigns to educate customers, businesses and dictionaries combined with effectively enforcing your trademark rights. Add a describing word whenever you use your trademark such as walkman® music player, just like Nintendo started heavy co-use of ”game console” – you may have to invent a new word in the process. Thereby you help people respect your trademark, and you can document later – if needed – that you have done everything possible to become known, but not too known!

Claus Marcussen, Attorney at Law

Changed conditions regarding the possibility to register “geographical” trademarks

As you might have heard before, a fundamental requirement for registering a trademark is that the trademark is distinctive, meaning that it must have the ability of distinguishing the goods or services provided from the goods and services of others.

The Swedish Trademark Act holds that a trademark might lack distinctiveness inter alia when it suggests the geographical origin of the goods or services. Accordingly, Swedish case law has historically pretty consistently refused registration for geographical terms, arguing that geographical trademarks could not be inherently distinctive, the rationale being that such expressions, along with other descriptive terms, should be available for each and everyone to use in their business. Some examples of these non-permissive rulings from the Swedish Court of Patent Appeals are ÖRESUNDS KRAFT (case no. 04-085) and ROSLAGSSNAPS (case no. 05-358).

Previously, the way for an applicant to be granted registration for a “geographical” trademark was to argue for acquired distinctiveness, thus that a sufficiently large amount of the relevant market was aware of the trademark and linked it to the goods or services in question. Such examples of cases where the applicant did manage to convince the Court of Patent Appeals are VÄSTERBOTTENOST (case no. 02-100), KOPPARBERGS (case no. 00-505) and KIVIKS (case no. 98-104).

However, as implied by the title of this blog post, the rules of the game have changed.

In December 2011, the Court of Patent Appeals, made a U-turn in NACKA FORUM (case no. 10-292), a “landmark case” where registration was granted for NACKA FORUM, despite the fact that “Nacka” indeed is a geographical location, close to Stockholm.

Then what reasoning did the Court of Patent Appeals apply?

The Court of Patent Appeals based its judgment in NACKA FORUM on a case from the European Court of Justice, WINDSURFING CHIEMSEE (case no. C-108/97 and C-109-97), arguing that trademark registration for a geographical indication should not be denied solely on the basis that the goods or services originate from the geographical location in question. The Court of Patent Appeals continued stating that the need for geographical locations being available for everyone to use in commerce only makes itself reminded in cases where the geographical location is “associated with a certain level of quality or other properties, or when such a connection, based on a particular circumstance, is likely to occur in the future”.

After having made these principle statements, the Court of Patent Appeals rounded off by concluding that Nacka, a fairly generic suburb of the Swedish capital (the author’s remark), was not a geographical location linked with quality or other properties for the goods and services provided, and that such associations were not likely to occur in the future.

After NACKA FORUM, a number of similar judgments from the Court of Patent Appeals have followed, e.g. KARLSTADS STADSNÄT (10-282), DANDERYDS CENTRUM (11-031) and AVESTA WELDING (12-026), all of them permitting registration.

However, a total turnabout from previous case law has not taken place. In some cases, the Court of Patent Appeals has still been reluctant in granting registration. In ØRESUNDSTÅG (10-023) the Board of Appeal denied registration, not on the basis of geographical origin, but on a discussion around the mark “as a whole” not being distinctive, due to the circumstance that the mark merely described the goods and services in question (“tåg”, as in train transportation) and their origin (“Øresund”, a strait located between Sweden and Denmark). MALMÖ AIRPORT (case no. 12-037) is another case where registration was refused by the Court of Patent Appeals, using a similar reasoning.

So what are the effects of NACKA FORUM?

The legal effect of NACKA FORUM is that a trademark consisting of a geographical term can indeed in some cases possess inherent distinctiveness, and thus be possible to register without having to prove acquired distinctiveness. From a right holder’s perspective, this progress can be seen as favourable, since the outlooks for protection of their trademarks are enhanced and cheapened. The other side of the coin though is the question of third party interests; what is the actual “scope of protection” for these geographical trademark registrations? How “close” can you get without having to risk accusations of trademark infringement? For example, will NACKA FORUM have to accept a competitor’s usage of e.g.  NACKA SUPER FORUM? In these situations there are no straight yes or no. How these assessments should be made is ultimately a question for the Courts to decide upon.

Anders Sparlund, Associate