UK Government issues guidance on IP matters if there is no deal struck
Over two years after the UK voted to leave the EU, there is an increasingly likely possibility that the UK will leave the EU in March 2019 without a deal agreed (although negotiations continue). As a result, the technical guidance notes published on 24 September 2018 give businesses, brand owners and designers much needed insight into how such a scenario will look.
On 14 July 2017, the EU General Court issued a ruling in case T-223/16 between Massive Bionics SL and Apple Inc. and the EUIPO concerning the registration. In the end, the General Court also found that the Board of Appeal had rightly found that the marks are similar. The matter was based on the following trademark:
On 9 April 2013, Massive Bionics SL submitted an application for the registration of the trademark in classes 35, 42 and 44, against which registration Apple Inc. filed an opposition based on:
the word mark “iCloud” and the following word-figurative and figurative marks:
– the international word mark “iCloud”, designated in Cyprus in classes 9, 35, 38, 42 and 45
– the following EU figurative trademarks registered in classes 9, 35, 38, 41 and 42:
The Opposition Division of the EUIPO dismissed the opposition in its entirety, and Apple Inc. appealed. The Board of Appeal amended the decision of the Opposition Division of the EUIPO within the scope of all services from class 35 and certain services from class 42.
Thanks to increased inspection efforts, there has been an uptick in the number of counterfeit goods stopped at the external borders of the European Union. In 2014, the figure was 35.5 million items of a value of EUR 617 million; in 2015, it was 40 million items of a value of EUR 642 million, while it was 41 million items of a value of EUR 672 million in 2016.
Local entrepreneurs are more and more often taking actions aimed at protecting their trademarks abroad.
The presence of products bearing local trademarks in foreign markets is becoming more and more common. The shaping of an international nature and increased recognition of trademarks usually starts from the development of a distribution network through obtaining new sales markets and concluding commercial contracts with foreign entities. While planning activity in other territories, it is advisable to ensure trademark protection in the selected jurisdictions. Trademark protection is based on the rule of territoriality. A global brand usually emerges when their trademarks are protected in a majority of countries worldwide. An applicant has three types of applications available:
i) domestic (before local trademark office),
ii) international (through the Madrid system) or
iii) regional (i.e., covering the entire European Union).
The distinctiveness of a trademark is one of the conditions for obtaining a European Union trade mark (EUTM) registration. The concept of a trademark is defined through the prism of distinctiveness as its inherent characteristic, and also its basic function. This distinctiveness may be inherent (due to the unprecedented and extraordinary structure or content of the sign) or acquired (as a result of use of the sign on the market). Distinctiveness should be possessed by each representable and sensory perceptible sign capable of distinguishing goods or services that should perform the functions of a trademark in business or trade.
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On 16 June 2017, we saw the publication of the Regulation of the European Parliament and of the Council (EU) 2017/1001 of 14 June 2017, on the European Union trademark (OJEU L 154 of 16.06.2017), which is de facto the uniform text of Regulation No. 207/2009 as amended as a result of Regulation No. 2015/2424. The new regulation entered into force 20 days after being published in the Official Journal of the European Union and will apply starting 1 October 2017.
The publication of the new regulation is the result of a legal reform of trademarks in the EU. Because Regulation No. 207/2009 was amended significantly several times, for the sake of clarity and comprehensibility, the provisions have been unified.
The provisions of Regulation 2017/1001 are identical with those that were introduced by Amendment Regulation No. 2015/2424 and contain, among other items, a new definition of the term “trademark.”
Source: http://eur-lex.europa.eu
One of the most interesting forms of trademark in circulation is the motion trademark
A Moving Logo
A motion mark may be an animation created using a computer program, or some other moving object which exists in the real world. In particular, such a mark may be in the form of a gesture made by a person using various parts of the body, especially the hand. Submitting a motion trademark involves the same criteria of assessment as do other forms of trademarks, but motion marks remain but a small fraction of the trademark submissions made in the European Union.
A motion trademark should have distinctiveness, and should be possible to depict precisely in an application. The presentability of motion marks depends on being able to depict a series of movements by an appropriate arrangement of a sequence of images. It is also crucial to provide a sufficiently exact description of the mark, including the order and form of the movement occurring in the images. In a motion mark, it is precisely the motion and the succession of scenes which are the most important aspects which may be subject to protection. Care must also be taken, since motion marks cannot appear in trade in “pure” form, but only as a combination of marks, for example, movement and sound (e.g. application CTM No. 003429909 showing clasping hands, used for some time by the company Nokia).
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