A number of EU trade mark reforms came into force on 1 October 2017. The key changes are:
- The graphical representation requirement has been abolished. In theory, it should now be easier to file non-traditional forms of marks at EU level. Sound marks may be represented by digital sound files. Motion, multimedia and hologram marks may also be accepted. The graphic representation requirement has been replaced with a requirement that signs be represented in any appropriate form of generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The change in the law will also apply for all national marks filed in EU Member States once this provision is implemented into national laws. Brand owners should consider whether new filings for EUTMs should be made. In some industry sectors, the potential to more easily register sound, motion, multimedia and hologram marks could offer significant opportunity to add further layers of protection to brand portfolios on an EU level.
- EU Certification Marks have been introduced which are a new type of trade mark at EU level which will guarantee specific characteristics of certain goods/services. The introduction of this form of marks aims to harmonise the position across the EU as some Member States did not allow for certification systems under their national systems. EU certification marks will be owned by the appropriate organisation or certifying institution responsible for certifying and monitoring the qualities or characteristics of the products. These marks may not be owned by suppliers of the goods and services in question. An applicant for an EU certification mark must submit regulations governing its use to the EUIPO within two months of the filing of the application.
- A number of procedural changes have also been introduced, the full details of which are contained in the updated EUIPO guidelines. These include a change on acquired distinctiveness as applicants may now pursue a subsidiary claim of acquired distinctiveness after they have exhausted the right of appeal on the inherent registrability of a trade mark. Translation requirements have also been simplified and assignment of an EU trade mark can be sought as an alternative remedy to invalidation. Priority claims must be filed at the same time as filing of an application and not afterwards. Applicants may rely on online sources recognised by the EUIPO for substantiation of earlier rights in oppositions and cancellation actions.
These recent changes form part of a package of EU trade mark reforms, many of which came into force on 23 March 2016. For further detail on all changes under the EU trade mark reform package, please see our previous e-bulletin here.
Sarah BurkeSenior Associate, LondonEmail
+44 20 7466 2476
Threatening proceedings for intellectual property right infringement can sometimes backfire. In relation to patents, trade marks and designs, there is a right for any person aggrieved by the threat to bring an action against the threatener. The “aggrieved” person may not necessarily be the person directly threatened with proceedings, it could be anyone whose commercial interests are damaged by the threat – such as a manufacturer whose suppliers or distributors are threatened. Not only does the threats action expose the IP rights-holder to the risk of damages, it also turns the potential claimant into a defendant, with the resulting reversal of burden of proof, requiring it to prove the validity of the rights which it originally asserted and their infringement. This in turn creates a tension with the requirements of the Civil Procedure Rules to communicate a litigant’s case early before issuing proceedings, with rights holders more likely to sue first than to threaten first.
The new Intellectual Property (Unjustified Threats) Act 2017, which comes into force on 1 October, attempts to encourage more pre-action communication by detailing what an actionable threat is, whilst providing for “permitted communications” or communications for “permitted purposes” which cannot amount to an actionable threat. It harmonises the position across patent, trade mark and design rights (including providing for unitary patents and European patents under the proposed Unified Patent Court jurisdiction) and allows pursuit of information on primary infringers from secondary parties where reasonable efforts have been made to find the primary infringer already.
Summary and Business Impact
Filed under 3D printing, Advertising, Agribio, Agribusiness, Consumer products, Copyright, Counterfeiting, Databases, Designs, Energy, Media, Passing Off, Patents, Pharma, Technology, media & telecommunications, The Unified Patent Court and the Unitary Patent, Trade marks & Passing-off, Trade secrets, UK
The CJEU has confirmed that “Port Charlotte”, registered as an EU trade mark for whisky, does not evoke (infringe) the protected designation of origin (PDO) for “porto” or “port”. The decision will be significant for consumer products businesses as it confirms that EU (not national) law applies to enforcement of Protected Designations of Origin (PDO) and highlights the importance of ensuring continued protection of UK PDOs post-Brexit.
Interestingly, the CJEU did not find that the use of “Port Charlotte” as a brand for whisky would have a detrimental impact upon the PDO for port (and the port producers protected by this designation). Yet we await the outcome in a not dissimiliar dispute before the CJEU between the Champagne wine producers and Aldi over the sale of champagne flavoured sorbet (see our report of the Aldi case here ).
· The CJEU’s ruling that Regulation1234/2007 (which sets out the rules on PDOs for wine) (the “Regulation”) exclusively and exhaustively lays down the legal rules in the EU applicable to the protection of PDOs, to the exclusion of any national laws which seek to provide additional protection, confirms that the system for PDO protection is entirely as set out in the relevant EU law, and cannot be supplemented at a national level.
· Assessing consumer perception of the meaning of a mark, throughout the EU, will be relevant to the assessment of whether that mark “evokes” in the mind of the consumer the PDO in question. The impact of this point will be fact specific, in each case. The likelihood that a PDO is evoked may also be affected by the similarity, or otherwise, of the features of the products in question.
· In a post-Brexit world, the UK will need to give thought to the interaction of PDOs granted under the EU system and what level of protection would be offered going forwards to existing PDOs in the UK and whether the UK continues with its own system of protected designations and geographical indications for distinctive UK foods (such as cheeses and pork pies) and beers/wines (such as ales and bitters).
Trade mark rights may still be exhausted even if goods are imported bearing identical trade marks (having been applied in another EU Member State (MS) by a separate entity) where, given the economic links between the trade mark holder and the entity applying the trade mark in the exporting MS, it is clear that the marks are under “unitary control” and that the proprietor of the mark in the importing MS has the possibility of determining directly or indirectly the goods to which the trade mark in the exporting State may be affixed and of controlling their quality.
This was the Opinion of Advocate General Mengozzi (delivered on 12 September 2017), in Case C‑291/16 Schweppes SA v Red Paralela SL, referred to the CJEU by the Commercial Court of Barcelona. Schweppes SA, the Spanish subsidiary of the Orangina Schweppes Group, opposed the importation into and/or marketing in Spain (where it owns the trade mark SCHWEPPES) of Schweppes branded tonic water which had come from the United Kingdom, where that mark had been applied by and is owned by Coca-Cola.
Exhaustion of rights is an area mentioned as requiring immediate consideration in the recent Commission paper on the future of IPRs in Europe post-Brexit (see our blog posting on this here). Once outside the EU the EU-wide exhaustion rules would not apply to marks applied in the UK, but it is possible that the UK courts might consider applying international exhaustion principles in their place, barring any other provision on exhaustion enacted by the UK Government in advance of the UK’s withdrawal from the EU.
Rachel MontagnonProfessional Support Consultant, LondonEmail
+44 20 7466 2217
The European Commission has published a “Position paper transmitted to EU27 on Intellectual property rights (including geographical indications)” (7 September 2017) which proposes that the (Brexit) Withdrawal Agreement should ensure that:
- The protection enjoyed in the United Kingdom on the basis of Union law by both UK and EU27 (the remaining EU states) holders of intellectual property rights having unitary character within the Union before the withdrawal date is not undermined by the withdrawal of the United Kingdom from the European Union. The paper suggests there should be automatic recognition of an IP right in the UK on the basis of the existing, unitary character IP right i.e. that, for example, any EU trade mark rights applying in the UK prior to Brexit should be automatically replaced by UK rights post-Brexit. Further, the fact that use may not be in the UK should not be able to form a basis for revocation of the rights. The implementation should be not result in any financial cost for the IPR holders and any administrative burden should be kept to a minimum. The paper also requires that the UK Government put in place a system to continue the protection of Geographical Indications (GIs) and protected designations of origin (PDOs) which are currently legislated for under EU law and for which there is no current domestic legislation in the UK. However there is no suggestion of a reciprocal recognition of UK-based PDOs or GIs post-Brexit.
- Procedure-related rights (e.g. right of priority) in relation to an application for an intellectual property right having unitary character within the Union still pending on the withdrawal date are not lost when applying for an equivalent intellectual property right in the United Kingdom ie. that where an application is in progress at the point of the UK’s withdrawal from the EU, the applicant should be entitled to keep the benefit of any priority date when applying after the withdrawal date for an equivalent IPR in the UK.
- Applications for supplementary protection certificates or for the extension of their duration in the United Kingdom on-going before the withdrawal date are completed in accordance with the conditions set out in Union law (and any certificate so granted or extended should provide for protection equivalent to that provided for by Union law.
- Databases protected in the EU27 and the UK before the withdrawal date continue to enjoy protection after that date. This involves waiving the requirements of Article 11(1) and (2) in the EU27 Member States in respect of UK nationals and UK companies and firms; and the UK should not exclude EU27 nationals and EU27 companies and firms from legal protection of databases in the UK on nationality or establishment grounds. No provision for any continuing mutual recognition of database rights is referred to however.
- Exhaustion before the withdrawal date within the Union of the rights conferred by intellectual property rights is not affected by the withdrawal of the United Kingdom from the European Union. The conditions for exhaustion of each IPR should be those defined by Union law.
These points highlight the key areas that have concerned IP stakeholders since the Brexit referendum and serve as a timely reminder to the UK Government that these issues need to be dealt with prior to Brexit, in one way or another.
Joel Smith, Head of IP at Herbert Smith Freehills, commented, “Whilst it is reassuring that the Commission recognises that there are important issues for continuity of IP protection to be addressed upon Brexit, this paper only begins to scratch the surface for the number of issues that need examining by UK Government”.
Rachel MontagnonProfessional Support Consultant, LondonEmail
+44 20 7466 2217
Lithuania has now ratified the UPC Agreement (UPCA) (on 24th August 2017) making it the 14th state to do so (see the UPCA ratification index here).
Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Estonia, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland. Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.
What is causing the delay? Continue reading
In an article published in the latest edition of CITMA Review, Joel Smith and Emily Bottle comment on the Court of Appeal’s recent judgment in Flynn Pharma Ltd v DrugsRus Ltd  EWCA Civ 226.
This case examined how a balance can be struck between a trade mark owner’s ability to enforce its rights and the fundamental principle of free movement of goods, applying the law in detail to an unusual pharmaceutical fact pattern. Lord Justice Floyd’s detailed analysis of the scope of Article 36 TFEU is a very useful summary of the case law in this area. He confirms that trade mark owners can enforce their marks against imported goods that they did not place on the market and over which they have no control, even where the imported goods are identical goods produced by the same manufacturer.
For the full article, see here.
+44 20 7466 2525
Estonia ratified the UPC Agreement (UPCA) on 1 August 2017, making it the thirteenth contracting member state to do so (see the European Council’s ratification index here). Under the terms of the UPCA, the Agreement can only come into effect once at least 13 contracting states have ratified, but these must include France, Germany and the UK (if all other ratifications are in place prior to Brexit) or Italy (if post-Brexit). France and Italy have already ratified, as have Austria, Belgium, Bulgaria, Denmark, Luxembourg, Malta, the Netherlands, Portugal, Sweden and Finland. Once all the required ratifications are in place the UPC can commence on the first day of the fourth month after the last required ratification.
The use of the name “Champagner Sorbet” by the German supermarket chain Aldi for a sorbet dessert containing actual Champagne (12% by volume) was challenged by the Comite Interprofessionel du Vin de Champagne (trade association for Champagne houses) as unapproved (infringing) use of the Protected Designation of Origin (PDO), “Champagne”.
From 1 July 2017, the EPO will no longer grant patents for plants and animals exclusively obtained by means of an “essentially biological process”. This follows a European Commission Notice dated 8 November 2016 (please click here for the full text of the Commission Notice) clarifying that the EU legislator had intended to exclude such plants and animals (either in whole or in part) from patentability when adopting the EU Directive on biotechnological inventions (Directive 98/44/EC) (the “Directive“).