Posts by: Mette Bender | (3) posts

Reform and rebellion in the trademark world

This spring, the EU commission published their proposals for a reform of the Council Regulation (EC) No 207/2009 on the Community trade mark and the Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks. An earlier version of the proposals had been leaked ahead of time, but by the time the official proposals were made public they had been changed somewhat.

The proposals have given rise to a great deal of discussion, as they set out to further harmonize the rules for obtaining and enforcing trademark rights in the EU.

The issues with the new proposals stem in large from the fact that the EU is more or less evenly divided on a number of questions. For example, here in Denmark the PTO does not cite third party rights as hindrances, though this is the case for our sister office in Sweden.

Another example is the differences in opposition procedures, with some countries allowing for administrative opposition procedures and other jurisdictions requiring right holders to file a case with the courts if they wish to oppose registration of a potentially infringing trademark.

The new proposals aim to eliminate such discrepancies within the EU, setting out to form a unitary application and registration procedure. For right holders and foreign attorneys, this will eliminate some of the guess work and will likely be seen as a welcome and perhaps logical update. 

For the national PTOs however, there will likely be a considerable increase in workload, especially for those countries who do not currently allow administrative oppositions.

Another major change for the national PTOs is that the proposals in their current form state that trademark applications must be examined in all languages. Compliance with this would require the PTOs to find resources for translators, which may be difficult for the smaller Offices. This worry is increased by the fact that the revenue from community trademark registrations made through OHIM with the new proposals will form part of the EU-budget and will no longer be diverted back to the national PTOs as is the case today.

The suggestion that national trademark applications should be examined in all languages also raises a few issues for right holders and practitioners. Even though it would hinder some of the unfortunate situations we have seen with national registrations of terms which are descriptive in many other languages potentially impeding the free movement of goods in the EU (C-421/04 Matratzen Concord AG v Hukla Germany SA and the OHIMs decision of the Cancellation Division of 7 May 2008 Arnold’s Donut), it would also eliminate the possibility of converting an application for a community trademark to national applications where a term is found to be descriptive in just one of the 28 EU languages. 

It can be argued that the Commission with their proposals has veered too far in one direction in an attempt to ensure that trademark law does not create artificial hindrances to the free movement of goods within in the EU, but overall many of the proposals aim to benefit businesses by creating a more uniform approach to trademarks.

The above is only a few of the questions raised by the proposals for reforms. There are further issues relating to such weighty issues as goods in transit, who is entitled to file applications with the OHIM and even the theoretical discussion of whether or not cooperation is still cooperation if it is forced by a mandatory set of rules and procedures.

The Commission hopes to push through the reforms in relative short time, but given the amount of debate these proposals have generated on all levels of the trademark world, it is unlikely to be a quick and easy fix. At AWAPatent we are working actively within various international legal committees to try and influence the new rules in to the benefit of our clients and we will continue to follow the debate and evolution of the proposals closely.

Mette Bender, Attorney at law

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Birthday musings: Designing design strategy

Earlier this year, the community design celebrated its tenth birthday. On 1 April 2003, the first community design was registered in Alicante and since then more than 690,000 designs have been registered. The yearly filings increase by a rate of no less than 78,000 a year.

I think it’s fair to say that the community design has been a roaring success. For the past ten years, it has been possible to obtain a registration with very little trouble. The unitary nature means that a single, central application is all that’s needed to obtain protection in all 28 member states, and that protection is automatically extended to new member states as they join. Further, protection through this system is cheap, and most registrations can be obtained in as little as two or three days.

What could be better?

Alas, it is common knowledge that there is no such thing as the perfect system. As the community trademark is growing up and closing in on its teenage years, it is starting to meet with competition from the younger Hague System, which can be seen as a parallel to the Madrid Protocol for trademarks.

The Hague System allows for centralized design registration internationally, and more and more countries are starting to join this system. It is rumored that both China and the USA will join by the end of this year, which would make the Hague system a heavyweight when it comes to the battle between registration systems.

So what are the differences between the two systems, and which should you choose?

The most obvious difference is the scope of protection. The registered community design covers only the EU-member states. So if your interest lies outside of the community, you would be well served to consider using the Hague system instead.

Another difference, which is certainly worth taking into consideration when planning your design strategy, is the number of reproductions allowed in the respective system.

The reproductions are the bread and butter of the design registration, as they define the right itself.  Currently, an applicant is limited to just seven views of the design in question if the application is filed through OHIM. Further, the only accepted format is still pictures or drawings. It is worth mentioning that South Korea now allows film clips as part of the registration, and that this is one possible way in which the community design might look at improving itself.

The Hague System on the contrary imposes no such restrictions on the applicant, allowing a potentially unlimited number of reproductions of the same design, as long as they are filed electronically. This allows for a much more thorough description of e.g. designs with moving parts, allowing you to show the design in several positions.

On the other hand, the WIPO sets the limit for the number of designs allowed in one application to one hundred, where the OHIM has no limit on how many designs are allowed per application.

The fee systems are also different, and which solution works out cheaper depends on the number of designs to be filed under the same application, the geographical extent and whether or not publication should be deferred.

These discrepancies give rise to a number of important questions when it comes to choosing the right design registration strategy. What kind of business are you, and what are your needs? Do you intend to file multiple applications at once, or will you file for single design registrations a few times a year? How complex are your designs? Can they be adequately described in just a few pictures? Or are you intent on protecting not just the whole, but every single detail? What is your budget like? And of course, what are your key markets?

All of these questions form part of the bigger picture when designing the best possible strategy for any given applicant. You are – of course – welcome to contact one of our experienced attorneys if you would like our input on how to optimize your design strategy.

Mette Bender, Attorney at Law


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A new dawn for protection of designs?

It is no secret that the differences in national European law concerning the protection of designs, has been driving many Danish rights holders crazy for years on end. It has been difficult to come to terms with the fact that while many of our prominent Danish designs – designs of which we as a nation are proud – are protected under national Danish copyright law for the lifetime of the designer plus 70 years, it has been perfectly legal to purchase cheap (and sometimes not so cheap) copies in England and have them shipped to Denmark.

Many holders of such rights have fought in vain to stem the steady flow of such copies from England first to private consumers, and eventually and inevitably to the numerous flea markets, garage sales and even auction houses. While importing the copies for purely private use is perfectly legal in Denmark, the selling of such copies on the Danish market is not. But trying to stop private individuals from reselling their used copies is, to say the very least, a losing fight.

Help might just be at hand though, as the UK has recently announced a new measure to increase the protection of such rights. If passed, the protection of copyright in relation to manufactured furniture will be increased from the current span of a short 25 years to the lifetime of the creator plus 70 years, bringing it into line with most other European Union member states.

From a legal perspective, the differences in national laws on copyright protection have given rise to many interesting questions. The laws on copyright have not been harmonized in the EU. Coupled with the laws concerning the free movement of goods in the Union and the advances of internet shopping, it has been possible to find loopholes which allow citizens in some countries to purchase copies from countries with a more lenient law, while in other member states it is punishable even to import such copies. Is it fair that individuals in Denmark can own copies, when in some countries – such a France – it is punishable by law to even cross the border with a fake watch? Importing fake designer furniture into France can cost you a fine of up to EUR 300.000 or even a three year stay in prison.

With such extremes in copyright protection with France and Italy at one end of the scale and the UK at the other, it seems improbable that the laws on copyright will be harmonized anytime soon. For now, all we can hope for is that the UK enacts the suggested provision and sets up a solid system for enforcing it too.

Mette Bender, Attorney at Law