Posts by: Helena Ribbefors | (4) posts

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,

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

The Olympic Games 2012 – brand strategy

2012 is really an enjoyable summer for sport enthusiasts. EURO 2012 has just finished and the exiting Olympic Games in London will start on 27 July 2012. All keen sport fans of the world, as well as the Olympic Flame are getting closer to London. According to an article in the Daily Mail, the sponsors Coca-Cola and McDonalds and their future sponsorship have recently been discussed since Olympics officials have brought up health and obesity concerns. The International Olympic Committee (IOC) is indeed aware of its brand value, which of course is crucial for all companies to be aware of, even if it can be tempting to try to get associated with the positive spirit of the Olympic Games.

Even if your company is not eager to become a sponsor of the Olympic Games, it is important to be aware of th efact that IOC is the exclusive owner of all rights in and to the Olympic Games and in particular the intellectual property rights associated thereto. These have the potential to generate revenues, as specified in the Olympic Charter. For example, these rights include the Olympic symbol, flag, motto, anthem, identifications, including “Olympic Games” and “Games of the Olympiad”, designations, emblems, flame and torches. The exclusive rights of IOC include the use for any profit-making, commercial or advertising purposes and licensing of all or part of its rights on terms and conditions set forth by the IOC Executive Board.

Each National Olympic Committee has the task to inform about the intellectual property rights of the IOC. The mission of the 204 National Olympic Committees is to develop, promote and protect Olympism in their respective countries, in accordance with the Olympic Charter. For example, the Swedish Olympic Committee has distributed a brochure containing information about the main principles of the Olympic Charter including guidelines for companies and the participants of the Olympic Games. For instance, companies who are sponsoring a certain group or individual participants during the Olympic Games must observe that this does not include the right to use the Olympic symbol, or expressions such as “London 2012” or similar.

Furthermore, the IOC is the holder of a large number of trademarks connected to the Olympic Games, such as OLYMPIAD (figurative), OLYMPIC GAMES (figurative), OLYMPIC (figurative), SUMMER GAMES, WINTER GAMES, YOUTH GAMES, LONDON (figurative), LONDON 2012 etc. Many of these trademarks are protected for more or less all available goods and services, for example the trademark LONDON 2012. The scope of protection is very wide indeed. Additionally, it is interesting to note that RIO 2016 is already registered as a trademark. TOKYO 2016, MADRID 2016 and CHICAGO 2016 were also filed as trademarks, but now seem to have been surrendered.

Through the above mentioned IP rights of the IOC, the National Olympic Committees have the power to act against anyone that is using the said trademark or confusingly similar trademarks. Moreover, in many cases it is probably also possible for the IOC to argue copyright infringement or a violation of rules on marketing and unfair competition, at least in many jurisdictions. The risk of not respecting the above mentioned IP rights of the IOC is to end up in tough negotiations or even litigation, with legal costs and “bad” publicity etc, with the IOC or any of the National Olympic Committees.

In Sweden there was a number of trademark infringement cases (over 30 cases) regarding the Olympic Games that caused media attention during 2006, which for instance involved a pizza restaurant that sold pizzas under the name “OS-pizza” (“OS” stands for Olympiska Spelen i.e. the Olympic Games in Swedish). The Swedish National Olympic Committee claimed damages and compensation from the pizza restaurant for the use of the trademark of IOC. However, the pizza restaurant was not willing to pay. In the end, the Swedish National Olympic Committee abandoned its claims against four small companies as long as they promised to respect their trademark rights in the future. However, the claims against the remaining larger companies were maintained according to the Swedish daily newspaper Dagens Nyheter.

The symbols and trademarks of the Olympic Games are important to respect for all companies and all others who do business. Indeed the IOC has taken a quite tough approach in terms of defending their trademark rights and their other IP rights and in the end, their brand value. One could maybe have some thoughts about the quite wide scope of protection of the trademarks. However, one can also see the tough approach as an inspiration on how to invest in trademarks and how to build their brand value.

Read more about the IOC trademarks.

Helena Ribbefors, Attorney at Law
Martin Tranälv, Attorney at Law

ZLATAN, ROONEY and EURO 2012 – Protected as Trademarks

EURO 2012 is indeed on-going and now it is time for the exiting quarter-finals. Huge investments have been made for the tournament and companies are using various branding strategies to become connected to EURO 2012. However, in these times it is more important than ever to discuss with your marketing departments how you are going to market your company and/or your products.

First of all, it is important to note that many names relating to EURO 2012 and football players are registered trademark rights. Naturally enough, football players are significant brands for their national teams, their club teams and above all for themselves in the football industry, which is why it is not very surprising that many of them have registered their own names as trademarks.

For instance, Zlatan Ibrahimovic, playing for the Swedish national team, has registered the Community Trademark registrations ZLATAN and ZLATAN IBRAHIMOVIC for a wide range of goods and services such as: perfumes, hair care products, razors and shavers, computer programs, vehicles, watches, clothing, beer and entertainment. Another example is Karim Benzema, who is playing for the French national team who also has registered his name Karim Benzema as a Community Trademark.

Furthermore, Wayne Rooney has a number of Community Trademark registrations including ROONEY, WAYNE ROONEY and ROONEY STREET STRIKER (figurative). Wayne Rooney has taken the protection of his brand a step further and also registered the autograph of Wayne Rooney himself as a figurative mark.

It can be noted that UEFA has taken a wide approach in protecting the brands surrounding EURO 2012. The trademark EURO 2012 is registered for more or less all kinds of goods and services. EURO 2012 may possibly seem to be a generic term, but it is a registered Community Trademark.

Even though all players and brands connected to EURO 2012 are not registered as trademarks, it does not mean that they cannot claim some kind of protection. For instance, some of them could be protected as unregistered trademark rights, so called “established rights” if they are sufficiently famous. Furthermore, the Swedish Marketing Practices Act protects for instance the reputation of famous brands, names, products or business, as well as misleading advertisements, which could be applicable in case a company is using certain famous brands, without the permission of the person behind the brand. In addition, the Swedish Act on the Use of Names and Pictures in Marketing (Lag (1978:800) om namn och bild i reklam) prohibits the use of the name or picture of a person in advertising (without their consent) in Sweden.

The risk of not respecting the above mentioned registered and unregistered rights are trademark infringement, infringement of the Marketing Practices Act and the Act on the Use of Names and Pictures in Marketing, which could end up in tough negotiations or even litigations, legal costs and “bad” publicity etc.

Hence, as always and indeed in relation to EURO 2012, it is crucial not to brand your companies together with already registered trademarks, famous players or other companies who can claim certain intellectual property protection or the like. The most famous “names” are generally already registered trademarks, or have the possibility of claiming some other kind of protection.

Let the games go on..

Helena Ribbefors, Attorney at Law
Martin Tranälv, Attorney at Law

Personal branding – reflections after inspiring seminars with the famous adventurer Renata Chlumska

Awapatent is co-operating with the famous adventurer Renata Chlumska who is well known for several accomplishments, such as being the first Swedish woman to climb Mount Everest, and she also went around the US (the lower 48 states) by exclusively using a kayak and a bicycle in a challenge called “Around America Adventure” – quite impressive! Her next goal is to become the first Swedish woman in space, which at the earliest will take place during the fall of 2012.  

In a series of seminars for our customers in a number of our different offices, we have had the opportunity to listen to Renata’s adventures and thoughts concerning herself as a brand. Renata is aware of the value in herself as a brand, and also in matters of control in terms of protecting her own name as a trademark, as well as co-operation agreements with her sponsors.

Personal branding is of particular importance for people who provide services, goods and market themselves under their own personal brand. The person behind the brand is also the most essential intellectual asset for this kind of company. However, keep in mind that you are also the leader of your own personal brand and you decide the values of yourself as a company.

Nowadays, companies tend to move in the direction of providing more services than goods (or services connected to physical and intellectual goods) where the people who are providing the services are at the core of the product. In this context it is crucial to strategically and carefully consider how to create incentives for the people who are a part of the brand, and to control their knowledge. This is mutually of essence for the personal brand of the company, and the people who are promoting and exploiting the company. Control and incentives can be created differently depending on the business model, and strategy of the company. Naturally, a strategic use of the personal brand in relation to the business model is also closely linked to the revenues of the company.

Below are some starting points to reflect upon and discuss in terms of personal brand in your company and your own personal brand:

1. Ownership of knowledge and IP. First of all, have you discussed the ownership of knowledge, inventions, IP and know-how, which are created by employees or partners, in your employment and co-operation agreements and whether these assets are transferred to the company, or if it belongs to you as an employee, employer or partner?

2. Relationships and agreements. Secondly, in all relationships, internally and externally, it is crucial to decide upon a legal and business strategy on how to act in relationships with customers, clients, partners and employees, and where the focus of the co-operation, or service shall be. Are you pleased with the co-operation of your relationships today, or do you need to consider up-dating or revising your relationships and agreements?

3. Incentive model. Do you have an existing incentive model for the people who are contributing to the personal brand of your company today, or have you considered to make an evaluation of the incentive model for your company lately? 

The personal brand of people in service companies is, and will become increasingly essential. It becomes easier and faster to post what we like and don’t like on Facebook, to post on Twitter what we are currently up to and so forth. Remember that you are in charge as a leader of your own personal brand. Furthermore, you may be an employee of a company where the personal brands are of importance and where issues connected therewith should be addressed to the board as a key issue on the agenda.

Helena Ribbefors, Attorney at Law, Awapatent.