Posts by: Peter Hermansson | (8) posts

Graphical presentation no longer a requirement for EU trademarks

On 16 December 2015, the new Regulation 2015/2424 of the European Parliament and of the Council came into effect.

The Regulation, and the corresponding Directive (2015/2436), inter alia deal with the question what kind of signs an EU trademark may consist of. This part of the Regulation will however only come into effect on 1 October 2017.

In the preamble to the Regulation (sec 9) it is stated that in order to allow more flexibility, while also ensuring greater legal certainty with regard to the means of representation of trademarks, the requirement of graphic representability should be deleted from the definition of the EU trademark. A sign should be permitted in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The above mentioned requirements are a codification of the Sieckmann case (C-273/00) in which the requirements were established by the CJEU. However, in the Sieckmann case a graphical presentation was still a requirement in addition to the above mentioned requirements.

Although the list is not exhaustive, the Regulation now explicitly (which the regulation (207/2009) did not) mentions inter alia also colours and sounds. Other possible trademarks could for instance consist of holograms or motion (moving pictures).

Hence, from the autumn of 2017 it will no longer be necessary to question if a trademark could be presented graphically as longs as the requirements mentioned above are met.

Will this make it easier to protect unusual trademarks than it is to protect e.g. word and figurative trademarks?

In some cases it will be easier. It will be easier to register motion, e.g. like the Lamborghini doors. Lamborghini doors open
This would probably have been clearer in motion.

In other cases, like for instance regarding scents, olfactory signs will most likely still be difficult to protect unless the technique to storage scents in a “clear” and “precise” way is developed. This would also be the case regarding taste marks.

For the sake of clarity, even though it is no longer necessary, it might still be useful to also file a stave (musical notation) when you file a sound recording. The combination could make the mark easier to evaluate for a third party.

Conclusions
In some cases it will be easier to file certain marks without the need for graphical presentation, e.g. motion or sound.

In other cases, e.g. olfactory or taste marks, it will still in the short perspective be difficult to meet the requirements of the Regulation with today’s technique. But who knows what kind of technical developments that lies ahead?

Many of the non-traditional trademarks are already possible to register due to established case law – e.g. the above mentioned Sieckmann case or Shield MARK (c-283/01).

Hence, the immediate impact on the possibility might not be that big in the short run. But with further developments in the technical field it might have a greater impact in the future.

Peter Hermansson, Attorney at Law

Revisions to Canadian Trademark Act

Earlier this year Canada’s government proposed Canada major changes to the Canadian Trademark Act and in June the bill (C-31) received royal assent.

The changes enable Canada, as one of the last (if not the last) western industrialized countries, to accede to the Madrid Protocol, Nice Agreement and the Singapore Treaty.

Some of the most significant changes will inter alia mean that the following:

• The term of registration is reduced from 15 to 10 years.

• Divisional trademark applications in order to avoid that uncontested goods or services are delayed by issues with other parts disputed by an examiner or opponent.

• Further types of trademarks such as sounds, scents, 3-D shapes, tastes and textures are now explicitly permitted.

• The requirement to identify whether a trademark has been used or is proposed to be used at the time of filing is removed.

• Trademarks with features consisting mainly of a utilitarian function are not possible to register and a utilitarian feature embodied in a trademark will not prevent a third party from using that feature.

With the above Canada is finally in line with the majority of the trademark world. This will of course make it much easier and more interesting for trademark holders to apply for registrations in Canada when costs and administrative burdens are reduced. Not the least since it is possible use the Nice Classification system and designate Canada in an international registration via WIPO.

This is also the ambition of the Canadian government which expects that the above modernization, which aligns Canadian trademark regime with international practice, will make things easier for Canadian companies as well as attracting foreign investors.

The changes are expected to be fully implemented within a year.

Peter Hermansson, Attorney at Law

Revisions to the Korean Trademark Act

The aim of the revisions, which were implemented in June this year, is to reinforce the position of trademark owners, which the following examples will indicate.

The article handling the protection of well known trademarks has become clearer. Now it is clearly stated in the Trademark Act that applications for trademarks which are likely to cause confusion with, or harm the distinctiveness of, well known trademarks will be refused.

Further, the issue of unfair competition is addressed in the Trademark Act. If a brand owner is using or is planning to use their mark and a trademark applicant is aware of this, e.g. through a partnership, business transactions, employment, business contract/transaction or the like, and despite this files an application for an identical or similar mark for identical or similar goods, the application will be refused.

The Trademark Act is now also referring to the Korean Unfair Competition Prevention Act (Unfair Competition Act) in which amendments also has taken place. The Unfair Competition Act is amended and indicates that any act that infringes another person’s commercial profits through the use of the fruits of that person’s efforts without due cause against fair trading practice or efforts, for the sake of own benefit, constitutes an unfair act.

The Trademark Act now indicates that any use of a registered mark which is hit by the above article of the Unfair Competition Act is prohibited, unless the trademark holder obtains the consent of the other party involved. Any use of such registered trademark without consent of the other party will be vulnerable to cancellation.

By comparison, a similar article against unfair competition has earlier this spring also been added to the new Chinese Trademark Act.

Finally, the protection of non-distinctive due to actual use has been enhanced, since the standards for determine the establishment of a secondary meaning of non-distinctive marks through actual use are lowered. Thus, if the applicant of a mark lacking distinctiveness can establish a certain level of renown of the mark through use it will be possible for the application to pass. A long this lines the distinctiveness of marks consisting of only two letters will also be recognized.

Altogether, the above amendments to the Korean Trademark Act open up further possibilities for trademark holders to safeguard their registrations and also opens up for a possibility to register trademarks that previously would have been difficult to register.

At last, a few words regarding proposed revisions to the Japanese Trademark Act.

The aim is to enlarge the scope of protection for additional types of trademarks. Hence, it is suggested that inter alia colour marks, sound marks, hologram marks, position marks and moving marks (the above examples are particularly mentioned) and the like will be possible to register under the Japanese Trademark Act.

The above examples are not exhaustive and there is an opening that other marks, such as sent and taste marks could be considered for protection in the future via stipulations in the JPTO Examination Guidelines.

Also the Japanese revisions are in line with changes in the Chinese Trademark Act, where inter alia sound and colour marks now are recognized.

The revisions to the Japanese Trademark Act are expected to come into force during 2015.

On the whole, the above indicates that major Asian economies are embarking on the same route as the west, moving towards a bit more flexible system with a wider range of possibilities to protect different types of trademarks as well as offering more tools to protect trademark registrations.

Peter Hermansson, Attorney at Law

New Trademark Act in force in China since 1 May 2014

The intention of this new Act is inter alia to go after trademark infringers and strengthen the position and ensure a fair market for trademark holders. This blog will mainly focus on some of the changes in the application procedure.

Some of the more significant changes are:

  • the introduction of a multiple class application system
  • increased protection for well known marks
  • an increase in statutory damages
  • shortening of the application procedure
  • possibility to protect more types of signs

The possibility to include more than one class in a trademark application is of course a significant improvement compared to the previous single class system. This will most likely lower costs and speed up the application process. Due to the multiple class system the principle of a reexamination notice is reintroduced. The reexamination notice allows the applicant, upon request from the examiner, to describe or amend the application. If obstacles then remain and the application is partially rejected a divisional filing can be made, which will allow an applicant to move forward with a new amended application but with the original filing date intact.

Further, protection for well known marks is strengthened, as it is now possible for a holder of a well known mark to prohibit use of the mark even on dissimilar goods if the use is likely to cause confusion, i.e. ban others from registering their trademark or using similar ones. A trademark can, based on the holder’s request, be defined as well known, when the facts of the relevant case supports such a conclusion. It is no longer allowed to use the phrases “well-known trademark” or “renowned trademark” on goods, packages, in advertising or other commercial activities. This amendment makes the “well-known” criteria open only to them who can actually show that their trademark is well known to the relevant consumers. Bearing in mind that Chinas’ population is well over 1.3 billion people, it could be rather tricky for producers of consumer goods to establish that their mark is well known.

In close connection to the above it is now also regulated in the new act that the use of other’s registered trademarks as trade name is prohibited. There is now also a connection between the trademark act and the unfair competition law, and combined they regulate that the use by a third party of a registered trademark or a well-known unregistered mark as trade name constitutes unfair competition.

In order to raise the stake for intruders the maximum amount of compensation for statutory infringement is raised to RMB 3 million (slightly below USD 500 000) which is six times the previous maximum amount. The burden of trademark holders to provide proof of infringement is mitigated and instead the alleged infringers must now at the court’s request provide documents, such as e.g. account books, to assist the determination of damages. Otherwise, they are facing the risk that the compensation could be determined according to amounts proposed by the trademark holders. This of course indicates that the Chinese authorities are getting increasingly serious in dealing with trademark infringements and they will be more consistent with international practice.

A statutory time limit for examination has been implemented. The Chinese Trademark Office’s (“CTMO”) preliminary examination period of a trademark application is shortened and should now not take longer than 9 months, followed by a possible review (within an additional time frame of 9 months) by the Trademark Review Adjudication Board (“TRAB”) of the CTMO’s rejection of a trademark application. Similar time limits are also in place for oppositions, invalidations and cancellations.

Further, it is now possible to register sound as a trademark, as long as they can be recognizable and distinguish mark owner’s goods from others. An applicant however, must provide a musical sample together with an explanation how the sound mark is used and also describe the sound mark by either a staff or numbered musical notation with literal explanation. The act expressly mentions sounds as an example but this is followed by the Chinese sign equivalent to “etc”, hence, this is not exhaustive and another example mentioned is registration of single colour marks. And just in case anyone should come to think of trying to register certain hymns as sound marks: the list of prohibited signs is expanded with the Chinese “national anthem” and “military song”. In line with the explanation of a sound mark an applicant of a 3-D mark must also explain how the 3-D mark is used inter alia by submit a specimen by which the 3-D shape can be determined, the specimen must contain at least three view drawings of the 3-D mark.

All the above noted changes in the new trademark act is as mentioned done to strengthen the position of trademark owners and speed up and otherwise promote the application process. It remains yet to be seen how the new trademark act will be handled in practice by authorities and courts.

Peter Hermansson, Attorney at Law

New Chinese sub-class

In the 2013 version (in force from 1 January 2013) of the tenth edition of the NICE Classification of Goods and Services inter alia the following was added:  “retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies”. Due to this the China Trademark Office (CTMO) at the same date introduced a new sub-class 3509 to cl. 35 in China. Since the CTMO is rather strict in their assessments of both applications as well as possible opposition cases this new sub-class further emphasizes the importance of defining the services that one wish to seek protection for, as an attempt for a wider scope of protection would risk not receiving approval from the authorities.

The sub-class at the moment contains of the following seven new services:

1. Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies

2. Retail or wholesale services for drugs for human use

3. Retail of wholesale services for pharmaceutical preparations

4. Retail or wholesale services for sanitary preparations

5. Retail or wholesale services for medical products

6. Retail or wholesale services for veterinary drugs

7. Retail or wholesale services for veterinary preparations

The first service is obviously identical to the Nice Classification, and the six other services are further specifications of the first service. The CTMO has stated that the above mentioned services are considered similar and dissimilar in the following way. Service 1 which apparently has a bit wider scope than the other is considered similar to either of services 2, 3, 4, 5, 6 and 7. Any of the four services 2, 3, 4 or 5 is considered as similar to any of the remaining three services within that group. Services 6 and 7 are considered as similar. However, none of the services 2, 3, 4, or 5 is considered similar to any of the services 6 or 7.

Further the CTMO indicates that the above mentioned services will not be considered similar to goods in cl. 5 and not to “sales promotion for others” and other services in cl. 35.

The CTMO has further indicated that any applications would have to be in accordance with the above services. These services are standard terms and any application would have to be within the scope of the services. This of course means that it is possible to use the words “medicines” instead of “drugs” and “medical” instead of “pharmaceutical” and the like. However, the CTMO also indicated that at least the below mentioned services will not be accepted since they are considered to be outside the scope.

  • Retail or wholesale services
  • Retail or wholesale of drugs
  • Retail and wholesale services for certain brands of drugs
  • Retail or wholesale services for names of drugs
  • Providing consulting services to customers during drug retailing
  • Providing information for retail or wholesale of drugs
  • Retail or wholesale services for compound preparations provided by medical institutions
  • Other non standard items

As a consequence of the new services above, trademark owners within the pharmaceutical field are advised to review their list of services to ensure that the scope of protection still is sufficient, i.e. if there still is protection for the services actually provided, or if new trademark applications are necessary to uphold the same scope of protection as before. In that sense, the new sub-class might of course also affect the outcome in infringement cases.

Peter Hermansson, Attorney at Law

Changes in the Taiwanese Trademark Act

The following amendments to the Taiwanese trademark Act has been announced by the authorities. The effective date is however still to be set by a further order.

Any distinctive identification may be registered as a trademark, including inter alia three dimensional laser tags and the boot screen of a mobile phone. 

Exclusive trademark licenses and non exclusive licenses are clearly differentiated. The holder of an exclusive license has the right, within the scope of the license, to prevent others (including the trademark owner) to use the trademark, to sublicense the trademark and to initiate proceedings against infringements in its own name. The above cannot be done by the holder of a non exclusive license without the consent of the trademark owner.

 The provisions for a deemed trademark infringement has been amended as follows:

  •  It is deemed to be a trademark infringement when using words included in a well known registered trademark as a company name since this will be deemed to be likely to dilute the distinctiveness or reputation of the well known trademark.
  • However the provision that it shall be deemed to be a trademark infringement to use word included in a trademark as a company name will be deleted. The deemed infringement will only apply to well known trademarks.
  • It shall be deemed as a trademark infringement to sell, display, hold, produce, export or import the packaging containers, tags, labels and/or other things related to the service, knowing that the same may be used for infringing acts.

Acts typically constituting use of the trademark has been specified as follows:

  • Utilizing the trademark on commercial documents or advertisements related to the goods and/or services
  • Utilizing the trademark on things related to the provision of service
  • Utilizing the trademark on the goods, or on the packaging containers for the goods and to hold, sell, display, import or export the goods in question

The above indicates that the Taiwanese authorities want to broaden the scope of possible trademarks and clarify some issues that previously might have been ambiguous.

Peter Hermansson, Attorney at Law 

New draft on China Trademark Law

The Chinese authorities recently published the third revised draft of the China Trademark Law for public opinion. The draft seems to offer trademark holders better possibilities for protection and some of the more significant changes are the following:

  • It will be possible to file multiclass applications
  • Signs of colour as well as signs of sound may be registered as trademarks
  • Only holders of prior rights and interested parties will be allowed to file an opposition against a trademark
  • Applications in bad faith – for trademarks identical or similar to an earlier trademark of prior use for identical  or similar goods/services, i.e. when the applicant know about the existence of the older mark through inter alia business relations, geographical reasons or the like – shall not be allowed registration
  • Statutory damages will be increased from RMB 500 000 to RMB 1 000 000
  • Increased penalties on repeated infringements more than twice within a five year period
  • Better protection and cross class protection for well known trademarks and trademarks with a strong distinctiveness
  • Evidence of inter alia the extent of use of the registered mark for the prior three years shall be provided when a holder of a registered trademark claims for compensation.
  • The four tier proceedings will be reduced to three when the opposition is to be initiated before the Trademark Review and Adjudication Board (TRAB) instead of the China Trademark Office (CTMO). Hence there will only be a possibility for one  administrative ruling and two judicial trials
  • Applications made electronically will be possible. Also will partial refusals be possible
  • The time limit for the appeal of a rejection will be 30 days
  • The recorded license of a trademark can be used to challenge a third party

The above, as well as the draft as a whole, clearly indicates that the Chinese authorities are aiming to embrace some of the internationally accepted practices. As mentioned above the draft also indicates better protection for trademark holders and a will to prosecute infringers. However the, from a western point of view, inconvenient sub class system will remain.

Peter Hermansson, Attorney at Law

China – a few comments on the Draft for Third Amendment to Trademark Law

A while ago the Chinese authorities released the “Opinion Solicitation Draft for Third Amendment to Trademark Law” (“the Draft”). The Draft proposes, among other things, the following changes which, should they be accepted, will make the Chinese Trademark law more efficient when it comes to handling trademark applications as well as opposition and infringement cases. The intention with the Draft propositions also seems to be to adopt an “international” view on trademarks that is more in line with trademark systems in many other countries.

The above mentioned standpoint is confirmed by that the Draft proposes to allow not only visual marks but also trademarks consisting of e.g. smell, movements or sound. This of course opens up huge possibilities and new ways of protecting trademarks.

Unlike the present Trademark Law, which only allows designation of goods in one class per application, the Draft allows goods in multiple classes to be designated in one application. This will certainly simplify the application process and hence most probably also reduce the overall time to have the desired trademark protection in place.

The Draft only allows the owner or an interested party of a prior trademark to file an opposition against a trademark application. This is different from the present Trademark Law which allows anyone to file an opposition against a trademark application.

Moreover the Draft also states that intentionally registering a trademark identical or similar to a third party’s trademark for goods in the same or a similar class is not consistent with the principle of good faith and thus not allowed. Registration of a trademark which copies a trademark of a third party bearing significant distinctiveness and influence which could easily mislead the public is not allowed, even if the goods is different. This will affirm the position of well known trademarks in Chinese Trademark law.

Statutory damages for repeated infringement are, according to the Draft, increased to a maximum of RMB 1 million (appr. USD 146 000). Furthermore the administrative authorities for industry and commerce will have the power to confiscate infringing goods. Moreover the Draft will also apply for infringement over the internet.

Furthermore the Draft eliminates one instance in the present review procedure for opposition of trademarks by allowing the opposing party to file an opposition directly with the Trademark Review and Adjudication Board. Hence the review of trademark oppositions is reduced from four instances, including administrative and judicial procedures, into three instances. Again this is something that will speed up the process which is beneficial certainly for the applicant but many times also for the opponent.

An overall conclusion is that if the above mentioned parts of the Draft is passed as law by the Chinese legislator it will strengthen the positions of the trademark owners in China significantly and also make the trademark system more efficient.

Peter Hermansson, Attorney at Law