A successful year for trade marks and designs worldwide
Looking back at 2017, statistics give us a better understanding of the big picture and help us interpreting the market to guess in which direction the economy is going to go.
The European trade mark reform – Phase 2
On 1 October 2017, the second part of the European trade mark reform entered into force, completing the implementation of Regulation (EU) 2015/2424 amending the Community trade mark regulation (EUTMR).
Taking a step back, this is in fact the last part of a much longer reform process that began about 10 years after the adoption of the EU trade mark system in 1996. In 2008, the European Commission published the Communication on an industrial property rights strategy for Europe with the intent to review the current practice and bring the European trade mark system to the next level. Subsequently, in depth studies, a public consultation and an impact assessment followed until the approval, in December 2015, of a new amending Regulation and a Directive to harmonise the laws of Member States.
UK to introduce new Unjustified Threats Bill across IP law
The United Kingdom’s new Intellectual Property (Unjustified Threats) Act 2017 (the Act) was recently granted royal assent and is set to come into force in October 2017. The Act should make it easier to advise clients, avoid litigation and facilitate the negotiation of settlements by outlining what types of threats are unjustified. The Act will also harmonise the UK law on unjustified threats across patents, trade marks and design rights.
Currently, the law allows those accused of infringing intellectual property to sue for damages if threats of legal action against them are revealed to be groundless. This can lead to rights-holders becoming wary of challenging perceived threats to their intellectual property because they do not want to risk their threats being perceived as groundless and, as a result, do not exercise full protection of their intellectual property rights.
PL: PROCESS OF DETERMINING A WIDER SCOPE OF AUTHORIZATION FOR LEGAL ADVISORS AND ADVOCATES IN PROCEEDINGS BEFORE THE POLISH PATENT OFFICE – CURRENT STATUS
The 10 May 2017 draft act of the Ministry of Science and Higher Education, amending certain acts in order to improve the legal environment for innovative activities, provided for the introduction of changes in the scope within which authors can be represented before the Polish Patent Office (PPO). The draft stipulated that, in cases related to submitting and considering applications and maintaining protection over inventions, medicinal products, plant protection products, utility designs, industrial designs, geographic signs and integrated circuit topography, attorneys in Poland (adwokat and radca prawny, hereinafter “advocate” and “legal advisor”) would also be able to represent the parties involved – previously, in such cases only patent attorneys or persons providing cross-border services in the meaning of the Act on Patent Attorneys of 11 April 2001 had been able to represent parties.
Threats Not Groundless Because Proceedings are Ultimately Not Issued
In the UK, in a decision that will provide additional comfort to trade mark owners seeking to protect their intellectual property rights in the UK, the High Court held that a threat issued by a trade mark owner was not groundless simply because it was never followed up by proceedings being issued.
In Vanderbilt v Wallace & Ors [2017] EWCH 45 (IPEC), the High Court held that “the emphasis is on whether the acts actually infringe or, if done, would infringe, not on whether a proprietor actually sues for infringement. The phrase does not impose an obligation to commence legal proceedings for every act complained of.”
The case involved a long running trade mark dispute between the claimant and defendant, including several concurrent actions. In this instance the defendant had argued that section 21 of the Trade Marks Act 1994 established that where threats are made the trade mark proprietor has to bring a claim in relation to everything that is the subject of a threat, and that if they fail to do so then the threats can never be justified, even if there is infringement.
The Court disagreed. It stated that there are often valid commercial reasons why a trade mark owner may elect not to issue proceedings even if there is an obvious infringement. The Court will consider the validity of the claim on its own and whether the acts complained of constitute an infringement, regardless of whether proceedings have been issued following any threats to sue.
In addition to providing clarity, this outcome will please trade mark owners. Provided that they have established infringement they can send cease and desist letters without worrying about issuing legal proceedings that may not be commercially desirable.
By: Nóirín McFadden and Jamie Kershaw
Motion Trademarks as an Element of Brand Promotion
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).