THE GENERAL COURT ANNULS THE REFUSAL TO REGISTER, AS AN EU TRADE MARK, A FIGURATIVE MARK INCLUDING THE CURRENCY SYMBOLS ‘€’ AND ‘$’

15/03/2018

EUIPO did not give sufficient reasons for its refusal to register the EU trade mark bearing the symbols “€” and “$” and the Court of Justice, annulling the refusal of EUIPO, reiterated that any refusal by EUIPO to register must, in principle, refer to each of the goods or services concerned

 

In 2015, the Polish company Cinkciarz.pl asked the European Union Intellectual Property Office (EUIPO) to register an EU trade mark for software, financial services, including foreign exchange, and publications, containing the ‘€’ and ‘$’ currency symbols.

EUIPO refused to register that sign as an EU trade mark because of its descriptive character and because it lacked distinctive character. According to EUIPO, the figurative elements consisting of round shapes are not sufficiently significant to distract the public’s attention from the message which the ‘€’ and ‘$’ currency symbols convey in relation to the goods and services concerned. Cinkciarz.pl brought an action before the General Court for annulment of that decision.

By the judgment dated 8 March 2018, the General Court annuls EUIPO’s decision. The General Court first points out that any refusal of registration by EUIPO must, in principle, be reasoned for each of the goods or services concerned. Although EUIPO may confine itself to providing general reasoning for all of the goods or services concerned in the case where the same ground of refusal is given for a category or group of goods or services, such an option extends only to goods and services which have a sufficiently direct and specific relationship to each other, to the point where they form a sufficiently homogeneous category or group of goods or services. Next, the General Court specifies that the distribution of the goods and services in question into one or more groups or categories must be carried out based on the characteristics which are common to them. The General Court finds that EUIPO examined the descriptive character of the sign at issue without referring to each of the goods and services covered by that sign and that it adopted general reasoning in their regard. The General Court therefore examines whether the goods and services covered by the mark applied for all have a common characteristic. It observes in this regard that the mark applied for covers more than 80 goods and services, falling into three very different distinct classes, whereas EUIPO, however, confined itself to finding that all the goods and services covered by the mark were related to foreign exchange transactions.

The General Court holds that the characteristic upheld by EUIPO is not common to all the goods and services at issue. According to the General Court, the general reasoning adopted by EUIPO is therefore not relevant for all the goods and services concerned. It was for EUIPO to provide additional reasoning for the goods and services which are not characterized as being related to foreign exchange transactions, to explain why registration of the mark applied for had to be refused. Since the contested decision does not contain any such additional reasoning, the General Court finds that there was a failure to state reasons.

In conclusion, with regards to the distinctive character of the mark applied for, the General Court states that EUIPO’s conclusion is vitiated by the same failure to state reasons.


DRAFT BREXIT AGREEMENT: CONTINUED PROTECTION IN THE UK OF IP RIGHTS

07/03/2018

The draft Brexit Withdrawal Agreement between the EU and the UK, which was published by the European Commission on 28 February 2018, provides for continued protection in the UK of registered or granted IP rights

 

The EU Commission Draft Withdrawal Agreement provides that holders of registered EU trademark rights, Community Design rights or Community plant variety rights shall become holders of corresponding rights in the UK after Brexit (Art. 50 of the draft agreement, hereafter ‘the draft’). Article 50 (1) of the draft states that the holder of a EU trade mark, design or plant variety right, “which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom”. The Article 50 (2) provides for the same rights with in relation to the geographical indications, designations of origin and traditional specialties.  Such registration of corresponding UK rights will be free of charge and will require no administrative procedure, including no requirement for a UK address-for-service, at least up to first renewal of the right (Art. 51 of the draft).

Designations of the EU in a Madrid system or Hague system application before the end of the transition period shall benefit from the protection in the UK for their marks or designs (draft Art. 52). Unregistered Community design rights will become enforceable UK rights (draft Art. 53) and database rights will likewise become enforceable UK rights (draft Art. 54).

Article 55 of the draft proposes that pending applications for EU trade mark rights, as well as applications for Community plant variety rights, shall be dealt with by giving rise to an ad hoc right of priority in the UK for the same mark in respect of the same or similar goods or services, for a 6-month period from the end of the transition period.

With regards to the supplementary protection certificate (SPC), article 56 of the draft clarifies that where an application for an SPC is made in the UK before the end of the transition period but the procedure for grant of the certificate is ongoing at the end of that period, the applicable EU SPC regulations shall apply, and any subsequent granted certificate shall have the level of protection provided for by those regulations.

Finally, article 57 of the draft maintains that the rights that were exhausted in the EU and the UK before the end of the transition period under the conditions provided for by EU law shall remain exhausted both in the EU and in the UK.

These provisions of the draft agreement reflect the Commission’s current negotiating position on mutual recognition arrangements of IP rights.


STARTS THE EXAMINATION OF THE DECREE IMPLEMENTING THE EUROPEAN DIRECTIVE ON THE PROTECTION OF CONFIDENTIAL KNOW-HOW AND CONFIDENTIAL COMMERCIAL INFORMATION

27/02/2018

At today’s meeting, 27 February 2018, the Senate’s Industry Commission will begin the examination of the cited provision, brought about in implementation of Art. 15 of the European delegation law 2016-2017

 

The provision that is currently being examined by the Senate’s Industry Committee is the instrument for implementing the Article 15 of the above-mentioned delegation law, which lists the principles and guidelines for implementing Directive 2016/943 of the European Parliament and of the Council on the protection of confidential know-how and confidential commercial information (trade secrets) and aims at combating the phenomena of unlawful acquisition, use and disclosure of such information.

The article referred to above states that, in the exercise of the delegation for the implementation of the Directive, the Government is, in addition to the general principles and guiding criteria set forth in Article 1, paragraph 1 of the European delegation law, (i) to make to the current Industrial Property Code (Legislative Decree 30/2005) the amendments and additions necessary for the correct and complete transposition of Directive (EU) 2016/943, (ii) provide for effective, proportionate and dissuasive criminal and administrative sanctions in the event of the acquisition, use or unlawful disclosure of know-how and confidential commercial information, in such a way as to ensure the effective fulfilment of the obligations provided for by the same directive, as well as (iii) to bring forward all abolishments, amendments and additions to the existing legislation, including those European, in order to ensure compliance with the provisions enacted in implementation of the Article 15 as well as the overall rationalization of the sectoral framework.


THE SECOND BOARD OF APPEAL OF THE EUIPO UPHELD THE APPEAL LODGED BY LGV AND DECLARED THE INVALIDITY OF TRADE MARK HOLDING THAT IT CONSISTS EXCLUSIVELY OF THE SHAPE THAT IS NECESSARY TO OBTAIN TECHNICAL RESULT

08/02/2018

With the provision dated 8 January 2018 and communicated on 29 January 2018, the Office reversed the decision of the Invalidity Division and declared the trade mark nullity as it consisted exclusively of the shape of the product necessary to achieve the technical result in accordance with the article 7 (1)(e)(ii) EUTMR

 

The subject matter of this decision was the trademark registered on the 6th of July 2015 for goods in Class 17, for cable entry modules made of plastic and rubber.

The sign represents the frontal section of plastic devices (i.e. cable glands) which in 2015 lost the monopoly protection guaranteed by patents for invention. A competitor of the trade mark proprietor, therefore, decided to apply for a declaration of invalidity of the title as it was granted in breach of the absolute grounds for refusal referred to in the Article 7 RMUE. Particularly, it was pointed out that the sign was in fact made up exclusively of (i) the shape or other characteristic that results from the nature of the goods themselves; (ii) the shape or other characteristic of goods that is necessary to obtain a technical result. The judgment in question is the result of the appeal proceedings against the decision given by the EUIPO Invalidity Division which, at first instance, held that the following mark was valid and that there were no grounds for refusal.

The Second Board of Appeal upheld that the provision laid down in Article 7 (1)(e)(ii) is intended to prevent abuse of the protection afforded by the EMN and the creation of a potentially perpetual monopoly on technical solutions by the means of the trade mark registration. Based on the documentation filed, the Commission considered that it was immediately clear that “the concentric circles on the side of the module are not a whimsical drawing; or merely decorative. They are the visible consequence of plurality of the layers that can be torn off in relation to the size of the cable, wire, tube that will be inserted into the unit to securely fasten it”.

The Commission reiterated that under the European Union system of intellectual property rights, technical solutions can only be protected for a limited period and, therefore, declared the contested trade mark invalid. The decision in question represents an important milestone that reaffirms the categories of industrial property rights and clarifies the scope of their protection.


THE EUROPEAN COURT OF JUSTICE SHALL DECIDE ON THE CORRECT APPLICATION OF THE PRINCIPLE OF EXHAUSTION OF THE TRADE MARK

16/01/2018

With a recent ruling, the Court of Justice of the European Union has settled the long-standing dispute between Schweppes International and the Spanish company Red Paralela over the use of the trademark “Schweppes”

 

Schweppes International owns the trade mark “Schweppes” in Spain, where the Spanish company Schweppes has the exclusive right to use that trade mark. In 2014, Red Paralela filed infringement proceedings against Red Paralela for importing and marketing in Spain tonic water bottles bearing the’ Schweppes’ mark from the United Kingdom, where the trade mark “Schweppes” is owned by Coca-Cola, which has acquired the rights following a transfer.

Schweppes claims that these acts are unlawful, since the bottles of tonic water were produced and marketed not by itself or with its consent but by Coca-Cola, which has no relationship with the Orangina Schweppes group. Schweppes also considers that, in view of the identity of the signs and products for which it is responsible, the acts referred to above are misleading for the consumer, who would not be able to distinguish the commercial origin of those bottles. Red Paralela, in its defence in that infringement action, pleaded exhaustion of the trade mark right which, in respect of goods bearing the trade mark’ Schweppes’ from Member States of the Union in which Coca-Cola is the proprietor of that trade mark, results from tacit consent. According to Red Paralela, between Coca-Cola and Schweppes International, the existence of legal and economic links cannot be denied in the joint exploitation of the sign’ Schweppes’ as a universal mark.

It is in this context that the Court of First Instance n. 8 of Barcelona decided to refer the matter to the Court of Justice in order to determine whether, in the light of the conduct of Schweppes and Coca-Cola following the territorially limited transfer of the trade mark’ Schweppes’, EU law precludes Schweppes from invoking its exclusive right under Spanish law to oppose the importation and marketing in Spain of’ Schweppes’ products from the United Kingdom. That court points out, in particular, that Schweppes International has strengthened the overall image of the trade mark’ Schweppes’, even though it is the proprietor of parallel marks in only a part of the Member States.

In its judgment of 20 December 2017, the Court ruled that “The Spanish company Schweppes cannot oppose the importation of bottles of tonic water bearing the trade markSchweppesfrom the United Kingdom if it itself has given the impression that it is a single, global trade mark”. The Courts of Luxembourg then dismissed the question on the ground that the Spanish General Court made a reference for a preliminary ruling, stating that’ European Union law precludes the proprietor of a national trade mark from opposing the importation of identical goods bearing the same trade mark from another Member State, where that trade mark, which was originally the property of the same proprietor, is currently held by a third party who acquired the rights of that trade mark by transfer, whereas, as a result of that transfer, the owner of that trade mark.