Tag:  “trademarks”  | (23) posts

A more efficient trademark application process in China? 13 new Trademark Application and Service centers opened.

China’s State Administration of Industry and Commerce (SAIC), which also administers the China Trademark Office and all trademark applications in China, is on a reform path and is putting efforts into facilitating trademark registrations across China’s provinces and lower tier cities and spreading the work outside of Beijing. The need for reform is a result of increased brand awareness and therefore ever soaring numbers of trademark applications filed by Chinese companies, which reached over 1.74 million applications in the first half of 2016 (up over 30% compared to last year).

Responding to these needs, the SAIC has opened 13 new trademark application and service centers across China with effect from 1 Nov, 2016. These centers are responsible for receiving trademark applications (including defining the date of application), collecting related fees; examination of application documents; offering query and consultation services as well as granting trademark certificates on behalf of the SAIC.

The 13 centers are located in the following cities and provinces: The Market Supervision Administration of Harbin municipality in Heilongjiang Province; Jiangsu Province (Nanjing, Suzhou); Zhejiang Province (Market Supervision Administration of Ningbo); Shandong Province (Jinan, Qingdao, Jining Industrial and Commercial Bureaus); Henan Province (Industrial and Commercial Bureau of Luoyang); Hubei province Industrial and Commercial Bureau; Hunan Province (Industrial and Commercial Bureau of Changsha and, Huaihua); the Industrial and Commercial Bureau of Guangxi Autonomous Region; and the Industrial and Commercial Bureau of Chengdu in Sichuan province.

The reform is also taking aim at reducing the time limit for issuance of the Notice of Acceptance of a trademark application to three months, down from six. The idea is also that the added service centers will increase the average number of applications handled by each officer, thereby raising the efficiency of the application and examination process, aiming to stay within the 9 month time limit.

Since the centers are so new, it is hard to tell at this early stage how efficiently they will work, however brand owners should note that there is now a possibility of applying for a trademark directly in one of the cities mentioned here above. Having said that, the measures appear mainly to be aimed at Chinese businesses in these regions as the centers have been opened in an effort to manage the high numbers of domestic companies applying for trademarks. Therefore, to be on the safe side, foreign brand owners are recommended to continue filing in Beijing for the time being in order to ensure accuracy and avoiding issues related to language barriers.

On a related note, the SAIC has announced that during the year 2017, it will become possible for applicants to apply for trademarks via internet without the use of an agent.

Camilla Ojansivu Underhill, IP Specialist/ Marketing and Business Development Manager

The “LEGO-MAN” is still protected as a trademark

Just last week the General Court of the European Union decided in a very interesting case that has been going on for years between LEGO and Best-Lock Construction.

In 2000 Lego registered the below three-dimensional community trademarks for “games and playthings”. The Danish toy giant has now won a 4 year long legal battle against their competitor Best-Lock Construction. Best-Lock was of the opinion that LEGO did not have exclusive rights to the classic LEGO figure, however the European Court of Justice did not agree, and on 16 June 2015 they rejected the lawsuit.

legoman

For several years Best-Lock has produced small figures very similar to the classic Lego figure just selling them at a significant lower price. Lego’s trademark rights have excluded Best-Lock from the European market, and the recent decision from the General Court has firmly established that Best-Lock will not be entering the European market in the future.

Best-Lock had applied for a declaration of invalidity of the above trademarks arguing that the shape of the goods in question is determined by the nature of the goods themselves and that the toy figures as a whole (namely the possibility of joining them to other interlocking building blocks for play purpose) and in their particulars, provided technical solutions (namely being combined with other building blocks)[1].

However the General Court has concluded that the characteristics of the shape of the figures in question are not necessary to obtain a technical result.

As a result the world renowned Lego figure is still protected as a trademark. This decision does however only have effect in Europe and Lego is still facing their products being copied in other parts of the world. Lego has ongoing cases like this against both Best-Lock and also other companies where the Lego figure and the basic shape of the classic Lego brick are being copied.

It will be interesting to follow these decisions, and see how the different courts will evaluate the cases.

Maria Dam Jensen, Legal Counsel

[1] Curia Press Release No 71/15

Time for abolishment of basic registrations for international registrations of trademarks?

By an application of international registration according to the Madrid system a trademark can be registered in a number of countries and regions in a more time and cost efficient way compared to filing of national applications only.

In contrast to international registrations for designs or patents, the Madrid System requires a domestic application or registration as basis for the international registration. The basic right requirement originates from a time when numerous countries required that foreigners had a domestic registration.

International registrations are dependent on its basic right for a period of five years. This means the international registration ceases to have effect to the same extent as the cancelled basic right during that period (so-called central attack). This happens regardless of if the ground for cancellation is limited to the territory of the basic right or not. Consequently, the dependency on the basic right may be very painful or at least incur unwanted sunk costs.

However, it seems the dependence principle may come to an end. WIPO’s Working Group on the Legal Development of the Madrid System has discussed the dependency principle in several meetings and WIPO has just conducted a Madrid-user survey on dependency principle issues.

Good trademark portfolio management usually means cost chasing efficient filing strategy. However, the current dependency requirement and the wish to minimize the risk of central attack affect the filing strategy. One example is that Swedish companies often chose to apply for Swedish basic rights despite plans to designate EU. This, because Sweden is a small market where prior rights are automatically examined as ground for refusal and thus seen as a territory where more reliable basic rights can be established compared to unexamined CTMs and national registrations in member states that cover a larger market. This practice also often leads to that the holders chose to refrain from priority requests as the basic applications seldom are granted before the time period for priority requests have expired.

As I see it, the greatest advantages with an abolishment of the dependency principle are quicker cost-efficient filing strategies and better long-term predictability as the risk for central attack would disappear. There would be no reason to await the registration of a basic right before the filing of an international registration nor a five year long uncertainty as to the international protection since the international registration will be upheld on the merits of each territory regardless of if there may be grounds for refusal or cancellation in another (domestic) territory. For keeping the dependency principle some argue that that patent owners have expressed a need for the possibility of a central attack in the European patent system. However, the situation is different for trademarks which lack the novelty requirement.

Angela Boman, Attorney at Law, Partner

Is there anything morally wrong with “Je suis Charlie”?

In continuation of the terrible terror attack on the French satirical magazine Charlie Hebdo, social medias were flooded with the phrase “Je suis Charlie” (“I am Charlie”) as a message of condolence, outrage and defiance, as well as support for the right to free expression.

As expected, this social media wave resulted in a vast amount of speculative trademark applications being filed for the phrase around the world, as well as registrations of domain names under .fr, .com, .org, and .co.uk.

The need for applicants to exploit a tragic event is not a new trend. As recent examples, trademark applications were also filed for the Malaysian Airlines flight numbers “MH.17” and “MH.30” in continuation of the plane crashes in 2014, and the phrase “I can’t breathe” was filed as a US trademark after the highly debated death of Eric Garner caused by a police officer.

Now, it appears that OHIM has finally had enough, as on 16 January 2015, they issued a statement saying that they normally do not comment on individual cases, but that the registration of “Je suis Charlie” could be considered to be of overriding public interest. Furthermore, OHIM found that the mark could be contrary to public policy or to accepted principles of morality and thus be denied registration with reference to article 7(1)(f) of the Community Trademark Regulation. OHIM also found the mark to possibly be viewed as devoid of distinctive character.

The aim of this statement seems to be to limit the interest in speculative trademark applications aiming at capitalizing on current trends in the media picture. OHIM simply points out that such may be rejected on absolute grounds.

But even though the intention from OHIM is understandable, and speculative trademark applications should be prevented, one cannot help but wonder in what way “Je suis Charlie” is contrary to principles of morality. The mark is neither offensive nor vulgar. There is little doubt that the problem with this phrase and prior similar applications is not the marks themselves, but the identity of the applicants, who has no connection with Charlie Hebdo, Malaysian Airlines or Eric Garner. However, the relevant article 7(1)(f) relates only to the mark itself and not the name of the applicant. Consequently, the above statement from OHIM indicates an expansion of article 7(1)(f), which might be difficult to interpret going forward. Because is it only Charlie Hebdo who will be able to obtain a registration for this phrase, or will non-profit organizations against terror or for the right to free expression also be able do to so? And what happens if an original, non-offensive phrase which refers to a tragic event is filed before it becomes well-known through social media?

In my opinion, a better option for OHIM would have been to do like the French IP office did with 50 applications for the same phrase, and simply reject these applications for “Je suis Charlie” due to lack of distinctive character, and the fact that this slogan now belongs to the public. The phrase will hardly function as an indication of origin for any product or any person not in some way connected to the magazine of Charlie Hebdo.

Anders Michael Poulsen, Attorney at Law, LL.M.

Winning and losing – The battle of the Jensens

A decision from the Danish Supreme Court arose the public’s anger in September 2014 even though the decision – in my opinion – is correct.

The Danish restaurant chain Jensen’s Bøfhus claimed that Sæby Fiskehal ApS’ restaurant by the name “Jensens Fiskerestaurant” was infringing Jensen’s Bøfhus’ trademark rights. The Maritime and Commercial Court found that Sæby Fiskehal ApS owned by Jacob Jensen was entitled to use the name “Jensens Fiskerestaurant” since “Jensen” is a common Danish surname and therefore was devoid of distinctiveness.

A united Supreme Court overruled the Maritime and Commercial Court and found that although “Jensen” is a common Danish surname it has the acquired distinctiveness through Jensen’s Bøfhus’ use since 1990 where the first restaurant was marketed. Furthermore, as Sæby Fiskehal ApS is a limited liability company and Jacob Jensen therefore was not personally liable for the company, the exception that one can use his own name when acting accordingly to fair trading practices did not apply. Exceptions to trademark rights should be interpreted restrictively and therefore the exception could not be extended to the owner of the limited liability company.

As a result Sæby Fiskehal ApS was not entitled to use the name “Jensens Fiskerestaurant” for catering trade.

Jensen’s Bøfhus is a very well-known brand for restaurants and has been for more than 20 years. Of course it should be possible to market your own restaurant under your own name according to fair trading practices. But in this case, Jacob Jensen was not hindered in having a restaurant his own name, but Sæby Fiskehal ApS was hindered to use Jensens. Further to this, Sæby Fiskehal ApS recently made a logo which consisted of similar shapes and colours as Jensen’s Bøfhus’s logo and therefore did not use the name Jensens according to fair trading practices. Thus I believe that the Supreme Court made the correct decision.

The decision caused an intensive media debate and in only a few days, more than 100.000 people united to boycott Jensen’s Bøfhus. Those who boycotted Jensen’s Bøfhus were angry that an ordinary man was prevented from using his own name – a name that more than 250.000 people in Denmark are carrying.  Jensen’s Bøfhus had simply gone too far in enforcing their rights. The fact that the decision was correct drowned in the storm.

The bad publicity which arose from the decision was difficult to foresee. In the times of social media it is important for companies to be aware of the fact that news travels fast. Retrospectively the storm faded out fast as well, but that does not change the importance of having a strategy on how to enforce your rights. Because even though you win in court, you might lose in public.

However, it is very important for the companies to react on infringements as otherwise the risk of becoming passive is present and as a consequence the rights will be limited.

It does not seem like Jensen’s Bøfhus has suffered any great damages, since the publicity storm calmed down. But hopefully they will have a strategy on how to enforce their rights in the future, which is not only a question of money and being right but also a question of public opinion.

Johanne Mørk-Hansen, Associate

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

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

Protecting the FIFA brands

With the 2014 FIFA World Cup coming up in Brazil times are busy for organizer The Fédération Internationale de Football Association, FIFA. FIFA continuously takes action against ambush marketers, advertising or promoting around the World Cup without authorization.

The preparations of the 2014 FIFA World Cup were initiated several years ago and an important part thereof has been the work with trademarks. FIFA has developed and protected an assortment of words, logotypes, titles, symbols and other trademarks, for example FIFA, WORLD CUP, COPA 2014 and BRAZIL 2014. FIFA recognizes the commercial rights to the FIFA World Cup as its greatest commercial asset and the fact that it is essential that they protect the integrity of the event’s brand for several reasons. The fact that FIFA would not be able to stage the event without the support of commercial affiliates is one of the main reasons for protecting an exclusive use of the trademarks.

In order not to risk losing its legal rights to the exclusive use of the trademarks FIFA therefore continuously work against any unauthorized use of its trademarks and had already by June 2013 taken action against 100 ambush marketers somehow trying to take advantage of the interest and profile of the event by creating a commercial association or seeking promotional exposure without the authorization of FIFA. Also, counterfeit products bearing FIFA’s official trademarks without the required license such as footballs, keychains and toys is a problem which FIFA needs to deal with.

FIFA works with brand protection in three steps. The first step is communication, meaning that FIFA in order to avoid accidental unauthorized use communicate the regulations through awareness campaigns. The next step and important element in the brand protection work is surveillance in order to identify trademark infringements. An example thereof is the enactment of Commercial Restriction Areas (CRAs) around the stadiums and other official sites. The CRA is an imaginary line wherein local laws provide additional legal protection against prohibited marketing activities without limiting any commercial activities not specifically targeting the FIFA event. Enforcement is the third step in the brand protection. When detecting an infringing situation FIFA’s brand protection team assesses the most effective way to bring the situation to an end, without having to resort to disproportionate enforcement actions. In more serious situations where the intention to take a free ride on the goodwill of the FIFA trademarks is clear, FIFA may need to engage in court proceedings to put the infringement to an end and to seek financial compensation. However, according to FIFA their approach to brand protection still focuses rather on education and guidance. The results thereof will be well visible this summer.

Hanna Hansson, Attorney at Law