Posts by: Henriette V Rasch | (7) posts

Trademarks: Device elements – no longer a safe path to registration

For many years, adding device elements to descriptive words included in trademarks has been sufficient for obtaining distinctiveness – non-distinctive words could be registered if only a device element was added. Of course, the scope of protection would be reduced compared to distinctive word marks and in that sense the value of the trademark was limited.

OHIM has changed and is still in process of changing their practice regarding device marks including descriptive words. The change implies that a device mark including descriptive word(s) does not necessarily have the necessary distinctiveness per se. Now, also the figurative elements are evaluated.

A special typeface or simple device element may not suffice in terms of adding distinctiveness. Examples of such are marks consisting of a descriptive word written in italics, adding a circle around the word, placing a dot above the word or underlining the word. But also other device elements may not be sufficient as it was decided in the application for the device mark BEST BUY sought for services in classes 35, 37 and 42 – see T-122/01. The trademark consisted of a yellow price tag containing the words BEST BUY in black. This mark was not accepted for registration and one of arguments therefore is that the trademark “is merely composed of elements which, when examined separately, are devoid of distinctive character for the marketing of the services concerned. Nor is there any interaction between these different elements which might confer a distinctive character on the whole” .

Simple device elements are not sufficient, but more complex device elements may be. The more complex a device element, the more distinctive a trademark. But where is the line between acceptable marks and unacceptable marks?

According to OHIM, they will also consider whether a device element is commonly used within the line of business. The question is to which degree and how similar? And will the list of goods and services, which is usually affected by the line of business, also be taken into account? I trust that these matters will also be taken into account and if so, the device element may not be sufficient for registration even though the device element is not banal. This may also be the case if the device element underlines the meaning of the word, even if the device itself is complex. But how about adding further device elements? Or colors? And what about marks presently registered, but unacceptable if applied for today? Will their scope of protection be influenced and how would this be evaluated in conflict cases? Is the value of such trademarks increased or decreased?  At this stage, a lot of questions are raised and practice is still developing.

National practice among the community member states also varies and may be different to OHIMs practice. This is the case when comparing Danish and OHIM practice and may be worth considering when applying for trademarks. When deciding which trademarks should be used as basis for oppositions, cancellation actions etc. such considerations are also essential.

We will follow case law closely as much more attention should be paid to trademarks which include device elements, and as it is now even more essential to have a discussion on risks, filing strategy and expectations of the scope of protection prior to filing a trademark application.

Henriette Vængesgaard Rasch, Attorney at Law

It’s all about fashion…

Fashion is all about not standing out from the rest. It is really great being the first one to wear a dress or another piece of clothing everybody wants and you sort of create fashion. However, problems arise when you do not use the original product but copy it. Or do they?

Recently, Copenhagen Fashion Week took place and this event always claims a lot of attention. But it also revives the debate about the borderline between copying and being inspired by something. The topic is not new. The Danish newspaper Politiken recently published an article about red shoe soles being popular in the year 1600. Red shoe soles were worn by the aristocracy and people started to paint their soles red. For instance, today a red sole on a spike heel is a trademark owned by the French designer Christian Louboutin. But is it okay to get inspired or to copy such a product?

Well, let’s take a look at the legislation. According to this, it is legal to get inspired but it is not legal to copy someone else’s product. The borderline between getting inspired and copying is the interesting area. There is no exact boundary between what is legal and what is not. The specific legislation does, however, help us and for example regarding trademarks you do also have protection for similar trademarks. But then again, when is one trademark similar to another? Each time we have to evaluate this, we make a specific comparison where a number of different things are compared and evaluated.

But that is the nature of trademarks. What about fashion, where the whole idea is to wear the same as everybody else, until someone dictates a new line? Still, it is not legal to copy someone else’s products. If you wish to wear this, you must buy it. That is the credit, the designers get. However, if you are inspired by a product and then create a brand new product not similar to the original product, this product will have its own scope of protection. The essential thing is not to get too close to someone else’s product. Depending on the products in question, the freedom of designing is different. When it comes to clothing, the products must fit the human body. Basic blouses and trousers may be difficult or impossible to protect the design for, however, if you copy a trademark, you may get in trouble. Does the basic product, however, have some unique details, these must not be copied and you should avoid getting too close to these. It may for example be unique stitches on a pocket. If you wish a stitch, you must create your own, different to the stitches already existing. And the more stitches, the more difficult this also is and the narrower the scope of protection is for the stitches that already exists. This may also be worth considering when creating new products.

So fashion is also in a legal way about getting close but not too close. Every woman knows that showing up in the same dress as another woman at the same party, is not a pleasure, no matter how beautiful the dress is. Let us learn from this that unique is the best.

Henriette Vængesgaard Rasch, Attorney at Law

I have seen it on TV… so it must be true

Once upon a time most of us believed that everything seen or told on television was true … and still news and programs from the national television stations in Denmark are perceived as trustworthy sources. The credibility is actually so important that others try to exploit it.

Many of you may have seen the Danish television documentary program “KONTANT”. In May 2013 this program showed how easy it is to be tricked – you believe that you take part in a free competition, but actually you commit yourself to a subscription for products such as weight loss pills etc. The aim of the program was to warn people against these kinds of tricks and subscriptions which are sometimes extremely difficult to get out of.

One of the tricks used by the sales companies is to write “As seen on TV2” or “As seen on DR1” showing the logos of these two Danish television stations. The intention is to make the products more trustworthy. Typically, the products have not been shown on these television stations, nor have the owners of the logos given their consent to the use of the logos according to “KONTANT”. To such extent the use of the logos – or trademarks, actually – may be an infringement.

The Danish trademark law and the EU legislation are very specific at this point. The main rule is that a trademark may only be used by the owner or someone who has a consent to the use of the trademark. However, other parties’ trademarks may be used, if necessary, to inform possible buyers that a certain product fits with another product. This rule is often used in connection with spare parts, but recently it has also been applied in connection with for example accessories for mobile phones, tablets etc.

In my opinion, using the trademarks as described above, is an infringement of other parties’ trademarks provided that no consent is given. The interesting thing is that this is still a rather new variation of infringement and that this is attractive due to the original intention, namely recognition of the trademarks used. Trademarks are valuable assets and owners thereof must take care that this value is kept on their own hands. 

Henriette Vængesgaard Rasch, Attorney at Law 

Playing with Trademarks – Watch Out

If you ask us, we will say that you shall register your trademark as you use it and use your trademark as you have registered it. However, as times goes by you may prefer to play a little with your trademark and to make minor changes without filing a new application. You may for example prefer to delete the vowels or to use the trademark as a verb. From a marketing perspective this may be a good idea. It provides attention to the trademark and hopefully the trademark is top of mind in your market segment.

From a legal perspective, the idea may not be so brilliant. What is the risk? Well, first of all you may risk having no protection for the trademark you spent money on marketing. In most countries, someone else may therefore register “your” trademark without vowels or the other changes as soon as you have spent money on marketing and leaving you with limited chances to stop this – simply because you have no trademark rights to the trademark you have used. The assumption most certainly is that this was not the intention.

Another problem may be that the use-requirement may not be proven fulfilled if you have not used the trademark as it is registered. Case law differs on this point and some authorities accept use of a trademark in a form slightly different from the registered trademark, but most authorities are very strict when evaluating whether the use requirement is fulfilled. In other words, your registered trademark may be vulnerable. The safe side is to use the trademark as registered. If you wish to use the trademark for example without vowels, the recommendation is to register this as a new trademark.  

A variation is to bend the trademark. This often happens when consumers have no other obvious (enough) word for an action. An example is “to google” something. GOOGLE is a trademark and should not be bend when used. Most trademark owners put a lot of effort in finding other words for the relevant actions and to make people use this instead. The reason is that the trademark will risk dilution if used as a verb and of course there is only little mercy if the owners themselves use the trademark as a verb.

Playing with a trademark requires that the trademark has a very strong position and that it is done only to a limited extent and next to normal use. So, dear reader, if you wish to play with your trademark, you must be very aware of the risks. Our advice is to register the trademark as you wish to use it and use the trademark as registered.

Henriette V. Rasch, Attorney at Law, Partner

Copenhagen Design Protection Conference 2012

Recently, the International Trademark Association INTA held the first design conference.

The number of attendees was 215 and more than 30 countries were represented in order to discuss issues such as the interplay between designs, copyrights and trademarks; highlights of European case law and enforcement of designs and many more interesting issues.

The conference was opened by the Danish Minister of Economic Affairs and the Interior, Magrethe Vestager. She spoke about why innovation was important to and absolutely necessary for the development of our world. She also recognized that development was necessary if we shall be able to compete and encouraged all of us to challenge and renew development. 

Many more speakers gave their view on design protection from different perspectives. One speaker illustrated how the legislation even within the EC is differing and how enforcement options are different. The requirements for protection and the scope of protection if possible may vary. Also copyrights are not at all harmonized within the EC. Those differences between national legislation make it difficult to navigate but may also be used strategically by the owners.

Some of the other speakers illustrated the balance between aesthetic designs and functional designs. The line has proved difficult to draw and especially the line for when a design is functional or not may be difficult to draw. Both Courts in the US and in Europe have taken several decisions  on this specific question and still the border is tricky. Such knowledge is important when deciding which strategies to use in order to protect designs.

The technology itself reveals new possibilities and may also challenge the way of thinking IP in general and especially designs. 3D printing allows you to print your own or somebody else’s designs or a design customized to you by yourself anywhere. The technology raises several questions, especially when a design is created by “networking” or “co-designing” which may be a new trend among designers. Who owns the design and how about individual character? And what about novelty? Is a design still new if created in this sort of public way?

Also owners of designs gave their perspective on designs and told us how, why and when they use registered designs strategically and in combination with the other rights. An interesting point of view was a multinational company which had experienced that design rights were faster and cheaper to enforce than both trademark rights and patents and thus used such successful enforcement as a strategic weapon against competitors.

As a unifying principle in the whole conference, the design conflict between Apple and Samsung was illustrated from different perspectives. The conflict proves that design rights and IP in general is important and may be used as an extremely efficient weapon against competitors.  

The impression of the conference is convincing: There is no doubt – design and the right design is becoming more and more important as a trigging buy factor. Thus enormous resources are used in order to create the right designs and to keep competitors from copying the design. Also the conference confirmed my point of view, namely that one should not decide ahead which rights are relevant without considering the other IP rights and, if relevant, combining them to strengthen the owners position.

Henriette Vængesgaard Rasch, European Trademark Attorney

The Danish Supreme Court fights back

On 30 May 2012 the Danish Supreme Court pronounced an interesting judgment in a case concerning imitation of shoes and awarded New Balance a larger compensation than what is normally awarded in such cases. The judgment is an affirmation of the Maritime and Commercial Court’s judgment from 2010. The judgment is a clear signal that Danish Courts – under the right circumstances – are willing to award economic compensation of a not inconsiderable amount.

According to the judgment, the clothing company Bestseller has imitated two different shoe models which were formerly marketed by New Balance. At an earlier stage, New Balance had tried to obtain a trademark registration of their sole and shoe toe, but both the Danish PTO and OHIM rejected these applications. Therefore, it is not a question about a trademark infringement of a sole and a shoe toe. On the contrary, it is a question about an infringement of New Balance’s trademark CHEVRON and PF FLYERS and about slavish imitation of the shoes according to the rules of the Danish  Marketing Law.

In the present matter, New Balance has stated that one of their shoes is a re-design of one of their previous models and that the other shoe is a modern version of a classic shoe. They have argued that the shoes have a history and that among other things it is a question of well-considered details, well-defined proportions and elegant appearance as well as a deliberate and characteristic choice of material. According to the Court those exact conditions are decisive for their conclusion that New Balance’s shoes are characteristic and they also express an independent creativeness to such an extent that they are protected against counterfeit according to the Marketing Law §1. As a matter of fact, the Court finds that Bestseller’s shoes are slavish imitations of New Balance’s shoes, in spite of the fact that a few details on one of the imitated shoes are not identical with, but have a strong resemblance to, the original.

The Court finds it proved that Bestseller have produced their shoes with New Balance’s shoes as models and that Bestseller have had the intention to seize upon the design of the original shoes and to bring counterfeit shoes to the market. In addition, the Court points out that Bestseller, with their knowledge of the market, including the trend-setting designs, is the closest to bear the risk that it is a question of an imitation. Thus, the Court states that the fact that the shoes are being produced in China by a sub-contractor does not exempt a company from responsibility, when the product is sold in Denmark.

After a general assessment the Danish Maritime and Commercial Court set the compensation and remuneration to 2.5 million Danish Kroner. To this must be added the costs at around 203,000 Danish Kroner. The Supreme Court affirmed this judgment with an additional payment of 256,000 Danish Kroner in costs. In total, the compensation, remuneration and costs amount to around 3 million Danish Kroner. This is a quite larger compensation than what has typically been given in previous cases.

My opinion is that the amount of the compensation is closely related to the specific existing circumstances, namely especially the obvious intention and that it was a question about a completely slavish imitation of the two models of re-designed, trend-setting shoes as well as an infringement both according to the Trademark Law as well as the Marketing Law. I am pleased to see that the Danish Maritime and Commercial Court and the Supreme Court in this case have sent a strong signal by awarding a large economic compensation. 

Henriette V Rasch, 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