Posts by: Kristina Fredlund | (10) posts

Candy co-operation turns into candy competition

Kraft Foods Sverige IP AB recently won over Mars Inc. and their Swedish subsidiary Mars Sverige AB in a trademark matter before Svea Court of Appeal in Stockholm.

Mars started using the trademark “m&m’s” in 1941. Shortly after that Mars entered into a co-operation with Marabou/Freia A/S (later acquired by Kraft). This co-operation resulted in the development of a product, peanut covered in milk chocolate and sugar coated, that Marabou (Kraft) started selling in Sweden under the trademark “m” in 1957.

The co-operation concerned exchange of information and know-how and was formalized in a written agreement between the parties in 1989. In this agreement Mars undertook not to sell “m&m’s” in Sweden, Norway or Finland and Kraft undertook not to sell their “m”-product on markets outside of those countries.

M&M vs m

However, Mars started selling the product “m&m’s” on the Swedish market in 2009.

Kraft presently holds two registrations for the trademark “m” (device) in Sweden dating back to 2005 and 2009. In addition, they claim a right to the trademark acquired through user on the Swedish market, dating back to at least 1996. In a previous court matter between the parties, this reputation was found to be a prior right to a now cancelled Swedish trademark registration for “m&m’s”.

The present decision, however, concerns a request from Kraft to prohibit the use of “m&m’s” in Sweden. The Court of Appeal found that Kraft held an unregistered right to the trademark “m” in 2009, before Mars started using “m&m’s” in Sweden. Market surveys showed brand recognition of around 80% and the annual sales were around 200 tons.

The court held that Mars had provided evidence to the fact that “m&m’s” was considered a well known trademark on the Swedish market in 2014 and that the Swedish consumers could correctly identify the commercial source of origin. 88% could identify Mars as origin for “m&m’s” whereas only 31% could identify “m” to Kraft, Marabou or candy. However, the court was not convinced that this was the case in 2009, the relevant point of time, since sufficient evidence was not shown to this effect.

The decision of the court results in a prohibition for Mars to use the trademarks “m” or “m&m’s” in Sweden for candy in penalty for a fine of SEK 2.000.000. In addition, Mars should compensate Kraft for their court costs.

Kristina Fredlund, European Trademark Attorney

If Plant and Page stole “Stairway to Heaven”, why wait 45 years to take action?

On May 10 a trial will start in a district court in Los Angeles. A jury will decide whether Robert Plant and Jimmy Page of Led Zeppelin copied the opening chords of their classic song “Stairway to Heaven” from “Taurus” of Spirit. Judge Klausner holds that the songs are similar enough to allow the case of copyright infringement to be tried.

The composer of “Taurus”, Randy Wolfe, died in 1997 and the lawsuit has been filed by a trustee of the estate. It is argued that Plant and Page were inspired by the song on a joint Led Zeppelin and Spirit tour in 1968 and 1969.

The defense is likely to be based upon a claim that the chord progressions have been used by composers well before “Taurus” was written in 1967, as well as argumentation that there in fact is an overall difference between the two songs. Personally, I think there may be some merit to this, see (and listen) for instance https://www.youtube.com/watch?v=JcYeLRI76No.

I also reflect on the rather strange fact that “Stairway to Heaven” was written in 1971 and that it actually is possible to wait 45 years to file a copyright infringement claim.

There are several examples in different legislations and in doctrine to the fact that if you are bound by your passive behavior. For instance, sometimes in civil law a party that does not speak up within reasonable time will be held to have accepted certain conditions, whether or not he or she agrees to those conditions.

For me, the rule of passivity frequently comes up in trademark conflict discussions.  Article 54.1 of the EU Trademark Directive states that acquiescence or passivity limits your ability as a trademark owner to apply for invalidity or to oppose a later trademark.

For this rule to apply, the following needs to be fulfilled:

  • The younger mark has been used in the territory where the older trademark is protected.
  • The trademark has been used in more than five successive years in the relevant territory.
  • The owner of the older trademark has been aware of the use of the younger mark for more than five years.
  • The owner of the older trademark has been passive and not acted against the use of the younger mark.
  • The younger mark was not applied for in bad faith.

Here, it should be noted that the holder of the later trademark has the burden of evidence to the first four bullet points above, whereas the holder of the older right has the burden of evidence to the last bullet point.

A period of five successive years is stated as a relevant period of time. I think this period is generous enough for the owner of the older trademark to evaluate the situation from different perspectives and to prepare and file a claim.  There is really no just reason why a right holder should be allowed to wait around for decades before deciding to notify a good faith party that they have been committing infringement all that time.

Personally, I feel for Jimmy Page and Robert Plant and think that there is a moral right in the old Italian proverb; “silence means consent”.

Kristina Fredlund, European Trademark Attorney

Artists’ rights ./. Freedom of panorama

Wikimedia Sverige has compiled images of art in public places in a database. This database is open to all, free of charge and is intended for the general public, the educational system and tourism. The project was in fact financially supported by Vinnova, a governmentally owned organization for supporting innovation and business development in Sweden.

Bildupphovsrätt i Sverige ek. för. (BUS) is a Swedish organization for collecting copyright remuneration for artists. In 2014 BUS sued Wikimedia before the District Court of Stockholm for copyright infringement concerning three works of art (all sculptures that are part of the database of Wikimedia). The District Court decided to refer the case to the Supreme Court to clarify §24 of the Swedish Copyright Act, namely the meaning of the word “image”. The paragraph reads:

  • Works of fine art may be imaged in pictorial form
  1. if they are permanently located outdoors on, or at, a public place
  2. if the purpose is to advertise an exhibition or a sale of the works of fine art but only to the extent necessary for the promotion of the exhibition or the sale or
  3. if they form part of a collection, in catalogues, however not in digital form.

In addition, the District Court requested clarification on whether it matters if the intent is commercial or non-commercial.

In order to interpret the scope of §24, the Supreme Court applied the “three-step test” in Article 5(5) of the InfoSoc Directive, meaning that an exception to the copyright should 1) only be allowed in certain special cases 2) which do not conflict with a normal exploitation of the work or other subject-matter and 3) do not unreasonably prejudice the legitimate interest of the right-holder.

Here the Court found that, for an exception to the copyright to be possible, it should be a clear and precise exception. As for the normal exploitation of the work, the exception must not compete with the artist right to exploit the work of art financially, also considering new technical possibilities. Finally, the restriction should not be an unfair limitation of the artist’s legal interests. Here, a consideration should be made against the interest of the general public.

§24 was introduced as a result of the need of the general public to freely image the surroundings in a city or a landscape. Here, the word “image” was meant to mean paint, draw, photograph or use other techniques in order to show the work of art two-dimensional. Apparently, Wikimedia referred to the fact that in Sweden, works of art in a public place may be part of, or the main focus of, a post card without any need to compensate the artist. However, according to the Supreme Court, this position was originally for practical reasons and since the compensation from the artist’s perspective was of minor economical importance. Therefore, the fact that public works of art is allowed in postcards is of no relevance in this matter.

The Supreme Court pointed out that a use of a work of art in an open database typically is of considerable financial value, either for the database owner or for others who use the database. This value should be the property of the artist. A database of this kind provides for a substantial use of copyright protected works of art without any compensation being paid to the artists. Hence, it is a far more serious restriction of their sole rights than §24 is intended for. The right to use new techniques to exploit a work of art in this way remains with the artist.

The Supreme Court replied to the District Court of Stockholm that §24 only grants the imaging of the work of art. It does not include a right to make the images available to the general public via Internet. Whether or not there is a commercial intent is not relevant.

Some regret the decision with reference to a wish that art in public places should be easy accessible to as many as possible.  As always, there is the complaint that the legal world is at least one step behind the swift technical development of society.

However, the decision is important to the artists and makes it clear that they are in control of their works, not the Internet companies. (more…)

The struggle to avoid trademark degeneration

I have met trademark owners that are thrilled when their trademark has become part of the language as generic term. They regard it as undisputable evidence that they are a market leader and that their product is a great success. The thrill, however, quickly fades when the consequences of degeneration are realized.

The loss of a trademark to degeneration is a massive failure from a marketing aspect and often a major financial problem. The trademark is the bearer of the collected renown achieved under the mark, perhaps the sum of decades of work. Here we can include the value of the quality of the product, the cost spent on marketing and the recognition obtained in the marketplace. When a company is subject to an evaluation the trademark usually represents the majority of the company’s total value, sometimes up to 80% or more. To lose such a trademark to degeneration is to lose this value.

A degenerated trademark becomes part of the general language and is then available for everyone. This includes all competitors that are free to use the word and, accordingly, take advantage of the renown and value held by the previous trademark. For the trademark owner it’s like your private garden suddenly becomes a public park. Anyone can enter and you might as well take down the fences once degeneration is a fait accompli.

Not only do you lose the sole right and value connected to your previous trademark, you are probably still in need of a trademark to communicate in the marketplace. So you need to start over with trademark clearance, registration procedures and all the headaches and costs that this can entail.

So, what can you do to avoid this type of trademark failure? Well, it’s not easy to halt the process once the trademark has started to become a part of the general language. In very few cases degenerated trademarks have been restored to trademark status by massive marketing activities. Jeep comes to mind. However, most trademark owners lack the muscles for such an endeavor.

Instead, it is important to think ahead and to make smart choices already when you select your trademark.

  • Choose a trademark that is not in risk to be regarded as a generic word. For instance, very short trademarks for products with very long generic names are at high risk, simply because people are likely to choose the word that is easier to use.
  • If your product is new and lacks a generic description, make sure that there is a proper generic word that the language can adopt instead of your trademark. If necessary, invent one and communicate it.
  • Always use your trademark as a name. Start with a capital letter and never put the mark in plural form.
  • Use the symbols ® and ™
  • Establish clear trademark guidelines and make sure that they are followed.

Kristina Fredlund, European Trademark Attorney

Have faith in bad faith?

Swedish furniture retailer IKEA has lost the rights to its trademark in Indonesia. The Indonesian Supreme Court has cancelled the trademark registration of the Swedish company at the request of the local furniture company PT Ratania Khatulistiwa on the basis of non-use.

In 2013, the Indonesian company registered the trademark IKEA – an acronym for Intan Khatulistiwa Esa Abadi. The Swedish furniture maker registered its trademark in Indonesia in 2010, but has not used it in three consecutive years for commercial purposes. IKEA’s first and only store in the country so far was opened in late 2014. Under Indonesian trademark law, this means the registration can be deleted.

In my mind this immediately invokes the thoughts of a counter claim based on bad faith, which I expect IKEA has or is thoroughly considering. Naturally, the relevance and success for such a claim is up to the Indonesian courts.

Well-known trademarks are granted the possibility to cancel bad faith applications or registrations in the Paris Convention, but national trademark law is in need of harmonization.

INTA (International Trademark Association) did express the following general criteria for bad faith cancellation in a Board Resolution from 22 September 2009:

  1. the applicant/registrant knew of the third-party’s rights or legitimate interests in a mark identical to or substantially identical to the mark applied for/registered, where such knowledge is actual or may be inferred from the surrounding circumstances; and
  1. the applicant/registrant’s conduct in applying for/registering the mark is inconsistent with norms of reasonable, honest, and fair commercial behavior.

Bad faith cancellations generally have a huge problem, namely the burden of evidence. Generally, this lies heavily on the shoulders of the plaintiff. Ideally, the plaintiff can show some solid written evidence, such as in cases where the applicant actually has been in contact with the plaintiff concerning the trademark. This is rather common for instance with respect to local distributors, licensees or other business relations who proceed and register the trademark in their jurisdiction as a precaution, perhaps with a good intention of acting on behalf of the trademark owner. However, if the business relationship starts shaking, the local trademark right may become a cause for conflict.

However, if no such prior relation exists, the plaintiff needs to find other ways to prove to the court or other authority that the applicant in fact was in bad faith at the time of filing. Without a very well-known trademark you will certainly need some form of evidence and it may be hard to find.

You might end up filing a cancellation action against the conflicting trademark on other grounds, as I did many years ago before a small district court in the north of Sweden. I represented a well known international luxury hotel chain against a local business in the cancellation of their company name. The name was intended to be used for a hotel business, but no hotel ever actually opened. However, the company name was in fact used in contacts with local authorities, banks etc and the court was to decide if this use was sufficient to uphold the company name right.

I couldn’t believe my luck when the managing director of the Swedish company took the stand and started to tell his story with the sentence “Well, we had a lot of ambitions when we established this business and wanted to open a hotel here in the north of Sweden with the same quality and luxury level as XX (the name of my client)”. Needless to say, that company name got cancelled.

Kristina Fredlund, European Trademark Attorney

Trademark lingo – a hindrance for participation in society?

Swedish media has lately relished in the fact that the language consultants Prodica has made an official complaint with the Parliamentary Ombudsman against the Swedish Patent Office.

The background is that Prodica tried to register the trademark GRAMMATIKDAGEN (the Day of Grammar) for services in class 41, but received an Official Action in which the Examiner of the Swedish Patent Office held that the trademark lacked sufficient distinctiveness for registration. Prodica then complained to the Parliamentary Ombudsman that the language used by the Examiner was contrary to the legal requirement for Swedish authorities to express themselves in a way that is tended, plain and understandable. Prodica went so far as to express that the language used by the Patent Office was a hindrance for participation in the society since it was incomprehensible and thus a bar to obtaining a trademark registration.

The text in question in the official action essentially reads as follows:

“A mark indicating only the nature, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods/services, or the time of manufacture of the goods, or has become a customary designation for the industry does not possess distinctiveness and cannot be registered.”

The Parliamentary Ombudsman, however, has decided not to pursue this complaint. It has stated that even though the text in question can be improved it is not so complicated that it cannot be understood. Furthermore, the Official Action contains the name and telephone number of the Examiner as well as contact information to the customer service of the Patent Office and the applicant can, accordingly, easily get further clarification, if needed.

The Ombudsman furthermore points out that trademark law is a complex legal area and that you need some basic knowledge of the legal field in order to comprehend the text in question. However, basic information on trademark law can be obtained on the web site of the Patent Office.

I am not sure if the web-site info helps very much. Even though I have practiced trademark law for thirty years I sometimes find myself reading official actions more than once in order to fully grasp the intentions and nuances of the communication. As a trademark attorney you are faced with complex language everyday, in decisions, legal texts etc. An important part of my job is to translate the trademark jargon into comprehensive language for my clients.

However, many of these wordings that appear complex to people in general are used to simplify the lives of the experts. By using legal expressions we can make sure that we are clearly understood by other persons skilled in trademark law, such as other trademark attorneys, examiners in trademark offices and judges in courts. The trademark profession is no very different from other professions in this respect. Try listening to a pair of doctors discussing in medical Latin, two mechanics bent over a car engine or two computer programmers discussing how to solve a technical problem in their field. The use of jargon reduces the risk for misunderstandings between experts.

I think that the overall opinion in Sweden is that the communication of the authorities is too complex and hard to understand for people in general and this is certainly the case when it comes to the trademark department of the Patent Office. This needs to change since a large number of the applicants are not trademark professionals. I agree with the Parliamentary Ombudsman, there is room for improvement.

Kristina Fredlund, European Trademark Attorney

The challenge of turning cities into successful brands

From the legal point of view, geographical names don’t make ideal brands. Most trademark laws specifically exclude such names from pro­tection. Everyone in a city has a justifiable interest in using the city’s name to tell the world where their products or services are produced.

So it’s easy to see that building a brand based on a place name can be a tough challenge. Nevertheless, many are willing to try and, as the owner of the trademark “London 2012”, the London Organising Committee of the Olympic and Paralympic Games (LOCOG) serves as a prime example of how to suc­cessfully protect a brand that incorporates a place name.

LOCOG also makes proactive use of its incor­poreal rights by licensing the “London 2012” brand logo to other interested parties. This gives a clearer commercial significance to the value of London as a geographical location, which can in turn lead to subsequent corpo­rate establishments and economic growth.

But registering and protecting a city’s or region’s name is not enough to at­tract worldwide recognition. As place development expert Christer Asplund explains in the lead article of AWAinformation 1-2012, you also have to invest in brand-building. To be seen and heard amid today’s fierce competition, a city’s brand must be filled with basic values, credible content and a successfully communi­cated message. Establishing that message takes patience and perseverance. Only when you yourself have grown tired of hearing what you’re saying do others in your surroundings start listening. This means that the process is of­ten a long one.

How well a city succeeds in its branding ambitions depends, of course, on a huge range of factors, but a quick review of the Community Trademark Register gives some insights into the appeal of European cities as brands. Paris returns no less than 832 hits. Close on its heels is this year’s Olym­pic host city, London, with 710 hits. But Stockholm lags far behind with just 52 hits, and Helsinki has a mere 14. So, how well established as a brand is your home town?

Kristina Fredlund, European Trademark Attorney

Trademark Infringements in Social Networks

Trademark Infringements in Social Networks

Last year, in 2010, Facebook passed 500 million users. That’s more than the population of USA, Canada and Mexico put together. It is safe to say that Facebook and other social networks are very powerful and important tools of communication in many different aspects, affecting most things from your personal social life to world politics. It is also a great tool for a trademark owner to be used in brand building activities.

Most of all, the social networks are inexpensive and very speedy. A web campaign for your trademark usually costs a mere fraction of an ad campaign on TV or in other media. This is good news for the trademark owner but, regrettably, equally good news for the trademark infringer.

On the web, it is not very complicated to set up a site in a manner and quality equal to the trademark owner’s original site. As a consumer it is sometimes impossible to tell the trademark owner from the impostor. This is particularly true in social networks where the trademark owner’s communication sometimes is of a less professional quality than his communication in other media.

Naturally, trademark infringement in social networks is subject to trademark law and any legal action that is possible “in real life” is in principle possible also for the digital world. However, most social networks have their own administrative procedure and Network Administrator to handle the procedure. In order to become a user of the network you need to accept the conditions of the agreement and you are thereafter bound by the regulations.

The Statement of Rights and Responsibilities of Facebook, for instance, provide tools for a trademark owner to report infringement and request removal of infringing content. This regulation provides a quick and inexpensive alternative to court action. Of course, the only result of such action is the removal of the infringing contents, not compensation or damages, but to get the infringing trademark of the net is almost always the top priority of the trademark owner.

If you are on the other side of the administrative procedure, and you feel that content has been removed from your site by mistake, you may appeal the decision.

A trademark owner is often a strong party in “real life” trademark infringements. Often you face an infringer that is a small size entity or a private person and the trademark owner, as a large corporation, has many advantages when it comes to access to legal assistance, financial strength and endurance, media contacts etc. However, in social networks the individual has a possibility to make their voice heard, quickly and at no cost at all. Before you know it, the message of the individual can be spread around the world, sometimes with substantial effect to your image and brand. This needs to be taken into consideration before you act against a trademark infringer.

Lessons to learn for the trademark owner
1) Question your strategy on how to handle infringement
Most successful trademark owners have a good strategy on how to handle trademark infringement. However, in social networks it is particularly important to be flexible and consider that there may be different aspects to each infringement matter and the end result is more important than that you are strict in following a previously set strategy. Maybe your usual standard type warning letter is far too strict and rigid and maybe you need to examine new means of communication with your counter parties. An overall consideration is the speed of things on the web. If you want to stop the infringer, speed is of the essence.

2) Involve the legal department and the communications department
Generally a trademark infringement is handled 100% by your legal department. However, when it comes to social networks your communications department needs to be involved in the process as early as possible so that they can act against the spread of bad will and do so without delay. It is generally very important to be active in the debate. Silence is very seldom golden in social networks and it is important that the brand owner’s version of a matter is heard and presented in a sound way. Therefore, a close co-operation between the legal department and the communication department is vital throughout the process.

3) Pick your fight and accept that you are not always in control
Naturally, you need to make sure that you act strongly against infringement that is clearly of detriment to your brand. However, cases where you have a little to gain and risk a lot of bad will should be dealt with only after careful consideration and sometimes even left alone. In social networks, you risk a lot of bad publicity if you act unduly rigid and formalistic.

4) Stay true to your values and keep you promises
A good way to avoid criticism and negative campaigns is to be very careful about the values and promises that are incorporated in your brand and to stay true to these values and keep the promises. This way, you can stand tall when you enter debates involving your brand in social networks. Sooner or later, my guess is that you will have become an active user on behalf of your brand.

Kristina Fredlund, Attorney at Law, European Trademark Attorney

Customs and police – reluctant to help?

Are Swedish customs officers and police reluctant when it comes to helping IP rights holders combat illegal copying? It may look like that – at least when they are compared with their colleagues in Germany. Recently we have seen proof that their German counterparts can mobilise huge resources when this is necessary.

At the IFA consumer electronics fair in Berlin earlier this autumn over 200 police and customs officers launched an offensive against the sale of pirated products after receiving around 70 reports from rights holders. The raid resulted in the seizure of televisions, MP3 players, mobile phones and other electronic gadgetry.

Could something similar happen in Sweden? It’s certainly not impossible, although it must be acknowledged that customs authorities and the police here are struggling with a shortage of resources. Compared to drugs smuggling and murder, trademark and patent infringement come far down the list of priorities. This is something that rights holders need to understand if they have cause to report infringement to the authorities.

To secure the help you need, it is important to make the authorities understand why their involvement is necessary. If you have received information about a consignment of counterfeit goods, there is often only a very short window of opportunity during which these can be confiscated. Otherwise the goods will soon disappear into a shadowy network of dealers among whom any seizures will consist of a mere handful of products. Working together with competitors who have also been targeted by the pirates, as was the case in Germany, is a smart move. In Sweden with its well-established traditions of trade associations, the prospects for this kind of collaboration should be good.

What’s more, it’s high time to explode the myth of pirates as unfortunate entrepreneurs who are down on their luck! Interpol has provided clear proof that the global counterfeiting industry helps to finance terror organisations, and the industry’s close links to drugs smuggling, organised crime and the mafia have been known for years.

The basic requirement for combating product piracy is a well-informed, active network of dealers and other contacts who can sound the alarm immediately when any illegal copies are discovered. Notifying the customs authorities of this costs nothing, and the Swedish Customs Service is happy to receive any information that makes it easier for its officers to identify counterfeit goods. But, of course, the first rule is always to make sure that your products are protected by strong and strategically managed IP rights.

Kristina Fredlund, Senior Attorney at Law

Field all your players if you want to win the game

Imagine a football manager who bemoans the fact that the opposition is invincible and his team never wins. Yet match after match he fields only nine players instead of the full complement of eleven. He’d be branded as a madman – and his career would probably be very short-lived.

The war against the pirates is tough. The battles aren’t easily won. But I am constantly amazed why many companies that are targeted by the pirates choose not to use all the weapons in their arsenal, not to field a full team of players. It is neither as difficult nor as dear as many people think.

Defence. CTM registration and design registration of business critical elements should be a matter of course for all brand managers in Europe. But there is still a remarkable number who don’t do their homework.

Midfield. An overall European strategy and a central EU application for customs seizures of counterfeit goods should be another obvious course of action for most rights holders. Don’t make the mistake of turning a blind eye to shipments under a certain size! Container ships stashed with thousands of pirated products are more or less a thing of the past, replaced by myriads of small packages to individual recipients.

Attack. Make life awkward for the pirates! Find out what it is that they find most difficult to copy, and develop and use these elements. 3D printing, watermarks, metallic thread and complicated patterns can give you the upper hand.

Goalkeeper. Ultimately it is the customs authorities that actually prevent counterfeits from reaching the market. Unfortunately, our borders are often protected by just a handful of customs officers working within small budgets. The more help you can give them – for example, by letting them know which countries the copies are coming from, what the originals look like and how to spot the difference – the more effectively they can help you.

The struggle against the pirates is a tough one. But if all the rights holders always field a full team, the prospects are good for moving closer to the victory we are seeking.

Kristina Fredlund, Attorney at Law