Trademarks – Page 20 – IP Law Watch

The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks

Jan 23 2017

2017 provides companies based and operating in Italy with a new opportunity for promoting their IP assets.

The Italian Government has launched a tender for granting allowances intended to support historical trademarks, for a total amount of 4,5 million Euro. The purpose of this new initiative is to promote and boost the historical and cultural entrepreneurial heritage of Italy by supporting specific national trademarks.

Allowances are granted for expenses related to manufacturing and commercial promotion of the historical trademark. This includes the purchase of goods and services for manufacturing purposes based on a plan for the promotion of the trademark involving goods and services falling under the scope of protection of the trademark – i.e. Nice classes for which the trademark is registered.

Further allowances could be also granted for activities related to the strengthening of the historical trademark, its extension at European and international level and to Nice classes other than those for which the trademark was previously registered, provided that their application comes along with another one for allowances related to the promotion of the trademark as described above.

In order to obtain the benefit of such allowances, companies of micro, small and medium dimensions complying with specific requirements must prove that their historical trademark is valid, registered before the Italian Patent and Trademark Office (UIBM) or the EUIPO with seniority claim for registration before the UIBM, not revoked, and that its application for registration was filed before the UIBM before January 1, 1967.

Companies can file their application from April 4, 2017 and until allowances stock lasts.

By: Alessandra Feller and Alessia Castelli

An Apple a Day Doesn’t Keep Litigation at Bay

Jan 11 2017

Victoria’s Supreme Court of Appeal has granted Apple and Pear Australia Limited’s (APAL) appeal in relation to their dispute with Pink Lady America LLC (PLA) over the refreshed “flowing heart” Pink Lady composite trade mark used in association with everyone’s favourite apple variety.[1],[2]

The dispute brought to light a number of crunchy commercial contract issues relating to agreements between APAL, PLA and the International Pink Lady Alliance (Alliance) that dealt with rights to particular trade marks registered in Chile (one of the key growing regions for the Cripps Pink and Rosy Glow apple varieties which are sold under the “Pink Lady” brand). PLA left the Alliance in June 2010.

Software as a Service (Saas): Is it a Good or Service?

Jan 10 2017

The United States Federal Circuit Court of Appeals (CAFC) recently vacated a Trademark Trial and Appeal Board (TTAB) ruling that had ordered the cancelation of JobDiva’s JOBDIVA service marks for personnel placement and recruitment services on the basis of abandonment. In re Jobdiva, Inc., No. 2015-1960, 2016 WL 7187434 (Fed. Cir. Dec. 12, 2016).

JobDiva’s software provides a database of employment applications for hiring managers to fill job openings. The software uses automated “harvesters” to find job candidates, reviews resumes, and helps hiring managers directly communicate with job candidates. The product is often delivered on a software-as-a-service or “SaaS” model. With the SaaS format, customers access JobDiva software remotely via the internet, rather than through software downloaded on a personal computer.

JobDiva initially petitioned to cancel the registration for JOBVITE service marks owned by Jobvite, Inc., alleging a likelihood of confusion. But Jobvite counterclaimed and petitioned to cancel JobDiva’s marks, arguing that JobDiva did not actually perform personnel placement and recruitment services, but merely used its marks on software offerings. A registration may be cancelled for abandonment if the mark has not been used for the goods or services specified in the registration. The TTAB agreed with Jobvite, appearing to apply a bright-line rule that required JobDiva to show “it performed the ‘personnel placement and recruitment’ services in a way other than having its software perform those services.”

A three-person panel of the CAFC disagreed. It acknowledged that “the line between services and products sometimes blurs.” But “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service.” To determine whether a mark is used in connection with services described in a registration, a key consideration is user perception. Thus, the ultimate question is whether purchasers would perceive JobDiva’s marks to identify personnel placement and recruitment services, even if the software performs each step of the service. Because consumer perception is a fact-based inquiry determined on a case-by-case basis, and the TTAB applied the wrong legal standard, the opinion below was vacated and remanded. This CAFC opinion rejects a rigid test and states that “careful analysis is required to determine whether web-based offerings, like those JobDiva provides, are products or services….” Rather, a more nuanced assessment, based on consumer perception must be applied. U.S. trademark practitioners should consider this approach in crafting appropriate goods and services and formulating enforcement strategies.

By: David Byer and Shamus Hyland

The CAFC opinion can be found here.

EU recap: A decision of the Board of Appeal in the case of the trademark application consisting of a combination of colours

Jan 09 2017

Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.

On 19 October 2016, the Board of Appeal upheld a decision by the Cancellation Division entirely invalidating a graphic trademark registered on 7 December 2007 by the Hudson’s Bay Company. The basis for the invalidation was Article 51 par. 1a), pursuant to which a trademark must be deemed as having expired if it is not used for a period of five years.

The trademark in question consisted of four stripes of different colours: green, red, yellow and blue, and was registered as a graphic trademark, not as a combination of colours per se. The Hudson’s Bay Company used that colour combination on its products, but not in the form of stripes on a white rectangle, but as stripes running across the entire width of a product. The Cancellation Division found that, placed on a given product in that manner, the colours did not function as a trademark, that is, they did not serve to identify the origin of the product, but only constituted a decorative design. In addition, the products themselves appeared in different colour versions and not in the version reserved for the mark.

The Cancellation Division found that the relevant target group of consumers perceived the striped pattern as a design, and not as a trademark, and that the Hudson’s Bay Company had not provided evidence attesting that this was not the case. The Hudson’s Bay Company lodged an appeal against the decision to invalidate, arguing, among other things, that the colour combination used always consists of four colours of evenly placed stripes in the colours green, red, yellow and blue. The company added that, of course, the colour scheme does constitute a decoration, but is used for the purpose of identifying the company.

The Board of Appeal dismissed the appeal. It found that the trademark had been registered as a graphic mark, not as a colour combination. Therefore, the use of the trademark cannot differ from what was registered, and so the same combination of colours must appear in the same order and in the same proportions. The Board of Appeal found that, used in the manner it is, the mark should not have been registered as a graphic trademark, but as a colour combination per se. Certainly, the Hudson’s Bay Company would then enjoy such protection, and there would be no doubt concerning actual use. Nevertheless, because the colour combination was registered as a graphic trademark, the Board of Appeal upheld the stance of the Cancellation Division that the trademark registered had not actually been used for five years and dismissed the appeal.

Source: www.euipo.europa.eu

FR: Will the misleading use of a geographical indication for handicraft products be deemed counterfeiting? The “Laguiole” case

Jan 06 2017

As stated in a previous article published in the Trademark and Unfair Competition Bulletin (page 11) , the Act no. 2014–344 on consumer protection, named the “Hamon Act” and dated 17 March 2014, created a new industrial property right: the “Geographical Indications protecting Industrial Products and Crafts” (or “Indications Géographiques protégeant les Produits Industriels et Artisanaux”, hereinater, “IGPIA”) in order to include industrial and handicraft products in the scope of the protection of geographical indications.

In the same article, the authors highlighted the fact that prior to the implementation of the aforementioned provision, there was a lack of protection since a third party could use the name of a famous place or city and register it as a trademark to misleadingly sell handicraft products under that name.

Introduction to the Laguiole case

A famous example was the “Laguiole cutlery” case where a third party, among others, was using the famous French city name of “Laguiole” as a trademark to flood the market with knives made in China under that brand. Following the scandal that ensued, the Laguiole municipality launched an action against several companies and legal persons that had registered 27 trademarks in total, on the ground that such use of “Laguiole” was deceptive.

Indeed, the trademark “Laguiole” had been filled in almost all trademarks’ classes and therefore the Laguiole municipality was prevented from using such trademark for its own activities and, in particular, for its renowned cheese and cutlery.

After a first-instance ruling, the Paris Court of Appeal rejected the Laguiole municipality’s action in 2014 which was subsequently presented to the French Supreme Court (“Cour de cassation”).

The Cour de cassation ruling

By a ruling dated 4 October 2016, the Cour de cassation overturned parts of the ruling of the Paris Court of Appeal and welcomed arguments of the Laguiole municipality.

Indeed, the Cour de cassation considered that the use of the “Laguiole” trademark by the defendants was misleading and confusing to consumers since the products sold under that trademark were not manufactured in such place.

In addition to such argument based on consumer protection laws, several arguments grounded on trademark law were also favourably received by the Cour de cassation. However, as such court only has jurisdiction over legal qualification but not on facts, the end of this saga will be written by the Court of Appeal to which the case has been remanded to for the final ruling.

The Court of Appeal will hopefully close the ongoing debate. However, the Court of Appeal may also side with the initial Paris Court of Appeal ruling. In such a case, the Cour de cassation may have to hear the case again.

Nevertheless, such litigation intervenes in a context where IGPIA has effectively become protected. Even if Laguiole was not among the five applications filed for IGPIA in France (out of which only one has been granted so far), the broad power given to geographical indications with the adoption of European Regulation No 2015/2424 amending the Community Trade Mark Regulation and the European Directive No 2015/2436 approximating the laws of the member states relating to trade marks may have an impact on actors’ practices.

Indeed, according to these regulations, the national right granted on geographical indications through IGPIA or otherwise conferred by the courts, may materialize a ground for refusal for not only trademark applications but also for European trademarks. There is thus a strong incentive to seek this protection by any means necessary.

By: Claude Armingaud and Olivia Roche

To Perform a Technical Function or Not: This is Rubik’s Question.

Dec 02 2016

After the CJEU decision in case C-30/15 P, fans of three-dimensional trade marks will be wondering if the opportunity to register them is as straightforward as it appears from the recent reform of the Regulation No. 207/2009.

For 10 years, Simba Toys and Seven Towns have been involved in the Rubik’s cube saga, which began in 1999, when the three-dimensional sign reproducing the popular Hungarian toy was registered as a Community trade mark.

The application for a declaration of invalidity filed in 2006 by Simba Toys was based mainly on the infringement of Article 7(1)(e)(ii) of Regulation No 40/94, which prevents a trade mark consisting exclusively of the shape of goods which is necessary to obtain a technical result to be registered.

The EUIPO Cancellation Division as well as the Board of Appeal and the General Court rejected the arguments of the German firm on the grounds that the essential characteristics of the sign at issue are a cube and a grid structure on each surface of the cube and that they do not perform any technical function.

Hence, the appellant’s argument was rejected because the rotating capability of the lattices did not result from the shape presented, but from the invisible internal mechanism which was not part of the graphical representation filed in the trade mark application.

As often happens, the above decisions have been overturned by the CJEU. In particular, the approach of the lower courts was found to be too narrow as they did not take into account the additional elements relating to the function of the actual goods in question.

Lastly, the court held that not taking into account the rotating capability of the cube would extend the trade mark protection to any other kind of puzzle with a similar shape. On the other hand, the technical function behind the cube falls within the scope of Article 7(1)(e)(ii), which precludes the granting of a permanent monopoly on technical solutions. Therefore, in this case it would be more appropriate to consider a patent protection as it has a limited life unlike trademarks.

In conclusion, while the Rubik brand will continue to ensure its exclusivity through other trademarks, copyright, passing off and unfair competition protection, this case made it clear that an effective access to the registration of unconventional trade marks remains as uncertain as the interpretation of Article 7(1)(e)(ii).

By: Serena Totino and Michał Ziółkowski

EU recap: Ruling of the Court of Justice of the European Union on the possibility of consumers being misled (Mille Miglia vs e-miglia)

Dec 01 2016

Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.

On 17 February 2011, the company Rebel Media Ltd applied to the European Union Intellectual Property Office for the registration of a community trademark for the following graphic designation:

for goods and services in classes 12 (vehicles, land, air and water transport devices), 14 (including precious metals and alloys thereof, jewellery, gemstones), 18 (including leather, imitation leather and products from such materials), 25 (clothing, footwear, headwear), 35 (including advertising, in particular of electric vehicles, organization of advertising events) and 41 (education, training, recreation, sports and cultural events) of the Nice Classification.

On 16 September 2011, the company Automobile Club di Brescia lodged an opposition to the registration of the above mark in respect of all of the goods and services submitted.

Use it or Lose it – Exercising ‘Control’ Over use of a Trade Mark

Nov 27 2016

A unanimous appeal judgment handed down by the Full Court of the Federal Court of Australia earlier this year, signals the importance of trade mark owners exercising “control” over use of their trade mark by licensees, or risk cancellation of the trade mark for non-use.

It is very common for the trade mark owner not to be the actual user of the trade mark. Related parties within the same corporate group may have different functions of ownership or use, or local distributors/licensees may be appointed to use a trade mark owned by a foreign brand owner.

Fashion Law Newsletter – Spring/Summer 2016 Edition

Nov 23 2016

“Fashion has always been a repetition of ideas, but what makes it new is the way you put it together.” – Carolina Herrera

Welcome to the latest edition of Fashion Law, this edition touches on issues that demonstrate the impact of world events and technological changes on all businesses.

Fashion Law gives you the latest updates on legal issues affecting the fashion industry.

Please click here to read the Spring/Summer 2016 edition of Fashion Law.

Contact: Lisa Egan

Trademark Law Update: SCOTUS to Decide Whether Ban on Registering “Disparaging Marks” Is Unconstitutional

Nov 08 2016

Under section 2(a) of the Lanham Act, the Patent and Trademark Office (USPTO) may refuse to register any trademark that “[c]onsists of . . . matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” This spring, the U.S. Supreme Court will decide in Lee v. Tam whether this provision of the Lanham Act is facially invalid under the First Amendment. Here’s what you need to know about this important case.

Please click here to view the full alert.

By: Joanna Diakos and Thomas W. Dollar

Category:Trademarks