CITMA REVIEW CITMA
Inside
CITMA UNDERSTANDING THE AUTISM SPECTRUM p
MARCH/APRIL FORMAT RIGHTS LAW p ARGUMENTS FOR ADR p REVIEWISSUE MARCH/APRIL
Signs of change Why it could be a landmark year for the protection of traditional cultural expressions Marion Heathcote p10 citma.org.uk
001_CITMA_MARCH/APRIL17_COVER.indd 4 23/02/2017 16:06 DpOBC_ITMA_Mar_17.indd Ahuja_CITMA_Mar_17.indd 1 1 15/02/201716/02/2017 16:5811:18 We’re in Good Company Look who trusts CompuMark to help protect their valuable brands.
Bottom line, they trust us because we deliver for them.
compumark.com
001_CITMA_MARCH/APRIL17_COVER.indd 5 23/02/2017 16:07 IFC_ITMA_Mar_17.indd 1 16/02/2017 11:17 WELCOME MARCH/APRIL
Inside this issue Regulars Case comments
CITMA Insider New IP minister EWHC Ch Irish representation update and more George Sevier counsels caution his year is shaping up to be Events Essential diary dates on keyword ad strategy as busy and exciting as the TM For Becky Knott all that’s EWHC IPEC last with negotiations missing is kittens Ben Evans considers who owns ongoing with the UK IPO the goodwill in a surname Tand UK Government on the IP landscape O/ / Maya Muchemwa post Brexit a formal CITMA delegation to Features warns that revocation dates must WIPO in Geneva and the imminent user serve the purpose of the objective group meeting with EUIPO in Alicante Moot hearing Jade MacIntyre O// Sharon Daboul We continue to emphasise CITMA summarises the lively arguments made off ers an update on a familiar members’ important contribution to IP during an educational afternoon even infamous trade mark decision in the UK and the need for early certainty Middle East As offi cial fee increases O/ / Désirée Fields reports on the law and rights of representation begin to bite Jon Parker suggests on why two parties share the rights However this edition of the CITMA Review an alternative route to securing in respect of a disputed mark highlights the breadth of other issues that rights in the region O/ / Charlotte Wilding occupy members with discussions on Industry issue Why this year condenses a complex television tangle traditional cultural expressions and could be a big one for the protection C / Jessica Wolff welcomes format rights as well as practice related of traditional cultural expressions confi rmation of a fi veyear grace articles on fees CVs and mediation by Marion Heathcote period for genuine use IP Inclusive is a key focus for us this Inclusion Alison Madgwick T / Tom Coop explains year I therefore very much welcome provides a clearer picture of why time was called on Go Sport the article from Alison Madgwick on what it takes to support a T/ Previous decisions held supporting neuro atypical colleagues neuroatypical colleague no sway writes Rachel Hearson I look forward to seeing many Entertainment Mark Cruickshank T / Has the bar for of you at our Spring Conference highlights the soggy state of format establishing acquired distinctiveness another opportunity to catch up on rights case law moved up? Katie Goulding awaits the varied topics that make up the Mediation Why our UK and EU the answer day of a CITMA member experts think it is good to talk T/ & T/ EUIPO was Development Your CV still overturned on a pharmaceutical mark matters confi rms Bob Boad reports David Yeomans Kate O’Rourke CITMA President
CITMA contacts Law & Practice Imogen Wiseman Account Manager Kieran Paul The views expressed in the articles General enquiries imogen itma@cleveland IP com Art Director George Walker in the CITMA Review and at any CITMA CITMA th Floor Outer Temple Publications & Communications Designer Alix Thomazi talk or event are personal to the Strand London WC R BA Richard Hayward richard@citma org uk Senior Sub editor Mike Hine authors and do not necessarily tm@citma org uk represent the views of the Institute Tel Published on behalf of CITMA by CITMA Review CITMA makes no representations nor Think Capital House CITMA Review content is provided by warranties of any kind about the Committee chairs Chapel Street London NW DH members on a voluntary basis and accuracy of the information contained Education Policy & Development Tel reader suggestions and contributions in the articles talks or events Philip Harris pharris@st philips com www thinkpublishing co uk are welcome If you would like to Executive Chris McLeod Editor Caitlin Mackesy Davies contribute an article to a future issue © CITMA chris mcleod@elkfi fe com Advertising Tony Hopkins please contact Caitlin Mackesy Davies Events Maggie Ramage tony hopkins@thinkpublishing co uk at caitlin@thinkpublishing co uk maggie ramage@edwincoe com Group Account Director Polly Arnold
citma.org.uk March/April CONTENTS |
003_CITMA_MARCH/APRIL17_CONTENTS.indd 3 17/02/2017 11:03 CITMA | INSIDER
For further information on the exam, visit bit.ly/IrishTMExam. Brexit update: Irish A candidate needs to obtain a 50 per cent pass rate on each of sections A (Irish trade mark law), representation option B (trade mark practice) and C (EU trade mark practice). CITMA’S BREXIT Task Force continues that, to be entitled to act as an Irish The Irish Patents Office has also to look at the issues and options with trade mark agent, an individual recently announced that the exam regards to rights of representation. A must also be resident in an EEA will, for the first time, include one subgroup has been set up to consider the Member State. optional question on industrial designs. options for qualification as an Irish trade The UK may leave the EEA as well For those interested, Bloomsbury mark agent, something that we know as the EU, and the Irish Patents Office Professional is offering CITMA some CITMA members are considering. has the authority to remove an existing members a 20 per cent discount on CITMA is still committed to trying trade mark agent from the Irish register the recently published fourth edition to ensure representation before EUIPO if that agent loses their entitlement. of Intellectual Property Law in Ireland. is not lost, and continues to raise the As such, a CITMA member currently The discounted price will be €196, matter at every opportunity. We have qualifying as an Irish trade mark plus €5.50 postage. Please contact been discussing the issue with the UK agent may lose their entitlement [email protected] IPO and have recently written to the and be vulnerable to having their to place an order. Ministry of Justice (MOJ), which has name removed from the Irish register. We have recently sent members an interest in rights of representation an update on the other work we for the legal profession more generally. UPCOMING EXAM have been doing with regard to The Law Society has submitted to the Nevertheless, for those interested registered rights, and updating the Department for Exiting the European in qualifying as an Irish trade mark information in the resources section Union and the MOJ a report that raises agent, qualification is by a single of the CITMA website. For more the issue of rights of representation. exam, set this year for 25th April 2017. information about rights of reputation We are also seeking to meet with Applications need to be submitted by and analysis of potential post-Brexit both departments to discuss the 31st March 2017 (exam fee: €200). scenarios, visit citma.org.uk situation for Chartered Trade Mark Attorneys specifically. In the meantime, we hope the following provides some useful information in relation to qualification in Ireland.
REQUIREMENT RECAP Article 93 of Council Regulation (EC) No 207/2009 requires that a professional representative before EUIPO must be: (i) a national of a Member State in the European Economic Area (EEA); (ii) entitled to act before a trade mark office of a Member State of the EEA; and (iii) have a place of business in an EEA Member State. However, s86 of the Irish Trade Marks Act, 1996 adds a further requirement
04 | INSIDER March/April 2017 citma.org.uk
004-005_CITMA_MARCH/APRIL17_INSIDER.indd 4 17/02/2017 12:41 Member moves New IP minister appointed Tomkins has announced that it has welcomed Seamus Doherty and Judy McCullagh as partners They can be contacted at sdoherty@tomkins com CITMA welcomed the appointment in January of Jo Johnson MP and jmccullagh@tomkins com respectively as Minister for Intellectual Property. CITMA President Kate O’Rourke commented: “We are looking forward to working closely with Jo Johnson MP, and we would like to congratulate him on the new appointment. Collaboration when planning for Firms expand operations the challenges that lie ahead, including the UK’s exit from the EU, will be vital.” • Appleyard Lees has opened a new offi ce in Cambridge. The fi rm currently works FAST FACTS JO JOHNSON MP with UK and multinational businesses across • Johnson has been MP for Orpington since May 2010, and was all continents and technical areas, and has appointed Minister of State for Universities, Science, Research a strong presence in the university sector. and Innovation in July 2016. Cambridge is considered to be a key • He began his schooling in Brussels and speaks French. location to enable the fi rm to provide • He was a scholar of modern history at Balliol College, local support to some of the country’s University of Oxford, receiving a fi rst-class degree. most innovative companies. • He has previously worked as an investment banker at Deutsche • HGF has opened a second Dutch offi ce. Bank. Johnson joined the Financial Times in 1997, serving in two Its Amsterdam offi ce opened in January foreign posts and becoming Associate Editor in 2008. and launched the next phase of HGF’s • He is the brother of Foreign Secretary Boris Johnson.
European expansion. • He tweets @JoJohnsonMP. JO JOHNSON COM Reader book review Aaron Wood has a strong reaction to Fragile by Peter Rouse Fragile Peter Rouse Fragile Books October THE LIFE OF a lawyer can be a hard one The tag line on Fragile’s front cover is Colleagues pick through every email you “Mastering the relationships that can make Paperback pages write for signs of weakness work systems or break a career and a fi rm” It is my belief also available as an ebook are focused on avoiding negligence senior that the values espoused in this book refl ect partners worry about praising anyone too the very best practices towards clients highly in case they come to expect a bonus colleagues and yourself or think they are in line for partnership As someone who started a fi rm in At all levels many are constantly in fear I can see immediate value in this book for of their clients not approving of their all practitioners most recent piece of work I struggle to know whether to recommend This is not just my own view it is echoed it more to senior partners as a practical in Fragile which provides the starting point guide to how to mould your fi rm to get the for dealing with the myriad issues that stem best out of your people or to the rest as from the broken way in which many law fi rms a reassurance that there is another way to work The book starts with the individual and practise and that some fi rms will deliver from there radiates out taking in issues of on their promise to support you respect selfmanagement people management and you and allow you to develop without the client relationship management blocks of ego and fear
citma.org.uk March/April INSIDER |
004-005_CITMA_MARCH/APRIL17_INSIDER.indd 5 22/02/2017 11:36 CITMA EVENT
Moot turns gaze to Graze Jade MacIntyre summarises the lively arguments made during an educational afternoon
n January, Bristows LLP hosted the class 43 services, and sought to draw out his second CITMA moot. This time, the client’s earlier goodwill regarding the snack hearing featured the recent application boxes. He also questioned whether the evidence for a declaration of invalidity of Nature of actual confusion provided by ER at the original Delivered Ltd’s (ND’s) UK trade mark hearing was suffi cient to prove confusion (the registration for the mark GRAZE in classes evidence was the recollection by a member of I29, 30, 31, 32, 33, 39 and 43, fi led by Elvendon ER’s staff of a “fl urry” of emails and phone calls Restaurants Ltd (ER). Amanda Michaels of from people wishing to cancel their subscriptions Hogarth Chambers sat as the Hearing Offi cer to ND’s services). (HO), Daniel Byrne of Bristows represented In presiding, Ms Michaels ensured the the Respondent and Aaron Wood of Wood IP audience understood that an appeal to the represented the Appellant. AP was generally an interactive process, with ER had sought to invalidate ND’s UK questions asked throughout. She recommended registration for the mark GRAZE based on that the advocate at an appeal ensures that the its earlier UK registration for a logo mark AP has suffi cient time to read the passages to (shown on this page) in class 43, and its goodwill which they are directed and to complete their in the GRAZING logo and the word GRAZING. notes before moving to the next point. All At the original hearing, the grounds for parties stressed the importance of preparation: invalidation succeeded for the services in class the better prepared you are, the easier and more 43, but failed in respect of the goods. Tasked with confi dent your arguments will be. a diffi cult appeal, Mr Wood tried to persuade the Jeremy Blum of Bristows then invited Appointed Person (AP) that the HO had erred in questions and comments from the audience. refusing to fi nd that food and drink were similar After he had brought the proceedings to a to the class 43 services of the GRAZING logo close, the consensus was that the experience registration. Much of his argument revolved was invaluable, because many attendees have around the alleged “complementarity” of the yet to attend an actual appeal to the AP. goods covered by GRAZE and those of his client. Mr Wood engaged in a lively debate with the AP in trying to persuade her that, even if raw The GRAZING logo ingredients were not similar to the class 43 services, ready-prepared meals or food and drink items were. Mr Wood admitted later that he was walking a diffi cult line in trying to avoid claiming the nuts and seed snack boxes were similar to his client’s services, which would support JADE MACINTYRE ND’s claim of earlier goodwill in those goods. is an Associate (Trade Mark In reply, Mr Byrne addressed the diff erences Attorney) at Bristows LLP between the two marks, and the goods and the [email protected]
| CITMA EVENT March/April citma.org.uk
006_ITMA_MARCH/APRIL17_MOOT.indd 6 17/02/2017 11:16 Dennemeyer appreciates the investments of private equity in our competitors...
because they secure our further growth.
DENNEMEYER _ Client-oriented, self-funded, owner-managed, worldwide. Our service range comprises both legal and administrative services, as well as strategic IP consulting and cutting-edge software solutions for effective IP management. We maintain 23 offices in 16 countries (Australia, Brazil, China, Croatia, France, Germany, Japan, Luxembourg, Poland, Romania, Russia, Singapore, Switzerland, United Arab Emirates, United Kingdom, United States of America).
Learn more: http://www.dennemeyer.com/contact/
007_ITMA_Mar_17.indd 7 16/02/2017 11:19 comes to enforcement? When looking at Madrid in the MENA region one of the fi rst things to consider is the purpose of the fi ling Madrid & ME If the fi ling is merely to obtain a registration that is unlikely to As offi cial fee increases begin to bite, Jon Parker be enforced then Madrid can off er suggests an alternative way to secure your applications considerable cost savings as well as a speedier route to registration in a number of MENA countries So for this type of registration the s has been well view it does but in the right Madrid system works really well publicised and reported circumstances Undoubtedly however However if the purpose is to in this publication there are some pitfalls that applicants obtain a registration that you expect recent months have and their representatives will need to to use for enforcement purposes seen signifi cant rises in be aware of in using this system the recommendation is to consider Aoffi cial fees for trade mark fi lings in a national fi lings instead of the number of Middle Eastern countries POTENTIAL SAVINGS Madrid route with the possibility of more to follow The current members of Madrid in the Why? Well not all member states This has meant that a region that was Middle East and North Africa MENA in the region will allow you to obtain already expensive particularly as few region are Algeria Bahrain Egypt a local registration certifi cate for countries permit multiclass fi lings Iran Israel Morocco Oman Syria and a protected Madrid designation is becoming prohibitively so for Tunisia Many MENA countries still As such you may fi nd it diffi cult to many companies require notarised and legalised powers persuade the relevant offi cials to take As a result rights owners are of attorney PoAs which increases action based on a Madrid designation looking at a number of options the cost burden associated with when you have no certifi cate that for safeguarding their rights more national fi lings Some also require clearly outlines the holder’s rights costeff ectively In some cases legalised certifi cates of incorporation Therefore rather than obtaining a this has meant not fi ling at all or along with the PoA Because the registered right that you may later fi ling for fewer applications than Madrid system enables such national have diffi culty enforcing obtaining originally planned in an eff ort to requirements to be bypassed the a national fi ling is while more manage costs An increasing number potential savings in using Madrid expensive in the short term likely of qualifying applicants are also can therefore be considerable to prove the most costeff ective option exploring the use of the Madrid in the event it becomes necessary to Protocol where it is possible to do so ENFORCEMENT EXPECTED? enforce the rights conferred So does fi ling through Madrid off er But is a trade mark registration There is an exception to this caveat a viable alternative to rights holders obtained through the Madrid system it is possible to obtain at additional looking to fi le in the region? In my as useful as a national fi ling when it cost a locally issued registration
| MIDDLE EAST March/April citma.org.uk
008-009_CITMA_MARCH/APRIL17_Middle east.indd 8 17/02/2017 11:28 When fi ling through Madrid in the MENA region, it is important to closely monitor your application(s) through ROMARIN
certifi cate in both Bahrain and Oman once the designations are protected It is recommended that applicants take advantage of this option in these countries as it will allow them to enforce their rights through the local authorities should the need arise OTHER “WATCH OUTS” Very few of the MENA member states act regularly as an offi ce of origin under the Madrid system they are mainly incoming offi ces As such if you are acting for a client that has qualifi cation through a Middle East country you may wish to run searches made use of Madrid when still in and Israel among other countries through ROMARIN to see whether the UK I regularly look to use the the Syrian designation will be refused anyone has fi led through the country system for clients There have been on public morality grounds with no as an offi ce of origin Making an opportunities where we have been chance of overcoming the objection application in a country in which you able to use it for clients based in on appeal There is a reasonable chance are one of very few applicants could nonmember countries but who qualify that the Egyptian designation will also be a highrisk strategy You will have through the real and eff ective presence be refused to work very closely with the offi cials elsewhere However in these situations To obtain protection in Arab to assist them through the process it is important to obtain local advice in countries and in Israel consider Also remember that when the country through which the client is making a national fi ling for Israel using Madrid there are a number believed to qualify as to what a “real and while employing the Madrid system of obligations and deadlines on the eff ective presence” may mean to ensure for Arab countries to maximise the offi ce of origin and the designated that any international registration savings available pursuant to the countries that are outside the obtained stands up to scrutiny international system applicant’s control There have been a number of cases where an applicant OTHER ISSUES VIABLE OPTION has lost rights because administrative When using the Madrid system Madrid is a viable option for use in steps were not taken by the relevant to seek trade mark registration in the MENA region particularly for trade mark offi ce Arab countries take care not to also rights that are not expected to be ROMARIN is improving all the designate Israel In almost all Arab enforced regularly However take time so when fi ling through Madrid countries there are provisions under care to closely monitor the designations in the MENA region it is important local trade mark laws to raise objections through ROMARIN to minimise any to closely monitor your applications based on states with which it is potential issues and allow for adequate through that database There will forbidden to deal If for example preparation when offi cial notifi cations be times where you will pick up on an application designates Egypt Syria come through objections or issues before you are offi cially notifi ed These extra days can be invaluable for putting in place PoAs or other supporting documents to JON PARKER overcome objections as the deadline is a Partner at Gowling WLG to respond often cannot be extended [email protected] As someone who has been practising in the region for years and who Jon spoke on this issue at a recent CITMA webinar.
citma.org.uk March/April MIDDLE EAST |
008-009_CITMA_MARCH/APRIL17_Middle east.indd 9 17/02/2017 11:28 | INDUSTRY ISSUE March/April citma.org.uk
010-013_CITMA_MARCH/APRIL17_INDIGENOUSIP.indd 10 17/02/2017 12:33 Signs of change Marion Heathcote explains why 2017 could be a promising year for progressing crucial protections of traditional cultural expressions
he protection of It is therefore possible that before to the protection of TCEs within the cultural heritage and the year’s end there will be concrete traditional Western IP legal paradigm the expressions of that progress towards a consensus on It also off ers some steps that brand heritage are integral to an international framework for owners may take to balance legitimate maintaining the identity the eff ective protection of genetic inspiration with inappropriate use Tand survival of indigenous peoples resources traditional knowledge and suggests opportunities to The ability to protect revive and teach and TCEs engage positively with indigenous the inherited wisdom of these peoples’ The topic is not only of interest communities for mutually rewarding ancestors depends on the discrete to indigenous communities that are and socially enriching partnerships sustainability of traditional cultural confronted with the threat of cultural expressions TCEs which include appropriation others will also benefi t DEFINING TCEs inter alia signs songs dance from increased clarity Businesses and Any discussion of the protection handicrafts and other expressions brand owners searching for greater of TCEs must off er a defi nition of of folklore social engagement are also becoming the term and agreeing on one is not While the past several decades aware of the adverse implications simple Early attempts to defi ne TCEs have provided much academic of the misuse and misappropriation focused on developing a contentbased discourse and international political of TCEs irrespective of intention defi nition by describing the kinds of debate about what should be protected Increasingly they are seeking guidance expressions that would constitute the the entitlement to protection and on the appropriate measures for category for example oral traditions the form such protection should take promoting preserving and recognising games musical expressions enacted this year promises to be eventful the cultural diversity of indigenous expressions paintings carvings and could potentially see a landmark peoples’ heritage and avoiding pottery mosaics jewellery shift towards a universal model in inadvertent appropriation and off ence basketwork textiles carpets and TCE protection Should WIPO be successful in costumes However attempts at WIPO has been working since negotiations towards producing a draft a single exhaustive defi nition have with various stakeholders to framework for the protection of TCEs struggled because not only are develop an international framework for this year which would be fi tting concepts of indigenous knowledge guidance on and associated protection since is the th anniversary of and the expression of that knowledge mechanisms for TCEs traditional the adoption of the UN Declaration not readily divisible into parts but knowledge and genetic resources on the Rights of Indigenous Peoples also even when they are identifi ed This year WIPO’s Intergovernmental UNDRIP it will still likely be TCEs are as varied and multifaceted Committee on Intellectual Property several years before the framework as the numerous indigenous and Genetic Resources Traditional is fi nalised and implemented In the communities that employ them Knowledge and Folklore IGC is due meantime indigenous communities After years of negotiation to meet twice with an agenda that will must rely on existing tools to protect among various stakeholders there focus on TCEs Previous meetings TCEs and brand owners must be is an emerging consensus in the focused on genetic resourcing and cognisant of the ramifi cations and international community on IGC’s traditional knowledge The WIPO potential risks consequent to the inclusive defi nition of TCEs This General Assembly is also meeting in use of TCEs defi nition centres on the source October to take stock of IGC’s This article provides an overview of of the knowledge and its cultural
ALIX THOMAZI overall progress on these initiatives some of the issues that arise in relation signifi cance rather than its specifi c
citma.org.uk March/April INDUSTRY ISSUE |
010-013_CITMA_MARCH/APRIL17_INDIGENOUSIP.indd 11 22/02/2017 11:37 content. It defines TCEs to include cultural expressions that: “ • are transmitted from generation to generation; • are regarded as pertaining to a An IP right can enable communities that particular people or its territory; and wish to develop economic and cultural • may evolve in response to a changing environment. partnerships beyond the community to This broad and inclusive determine the terms of access and use definition has been widely accepted and is considered to encompass of their cultural materials the totality of tradition-based indigenous creations. PROTECTION PATHWAYS Fundamental to the discussion about enable communities that wish to and social identity, and that are being the protection of TCEs, and the cause develop economic and cultural used in that community; of much stakeholder debate, is the partnerships beyond the community • providing a mechanism for third parties extent to which Western IP systems to determine the terms of access and to seek prior consent to make approved could (or even should) be used. use of their cultural materials. use of TCEs; Before the adoption of UNDRIP, the The adoption of UNDRIP on • providing a clear definition of discourse was particularly critical 13th September 2007 signified a misappropriation, which includes usages of the suitability of such systems, turning point in the debate. While it is that “disparage, offend or falsely suggest because of limitations related to: a non-binding instrument, it formally a connection with the community”; and • notions of individual creativity, rather recognised indigenous peoples’ right • providing an unlimited protection period than communal knowledge; to maintain, develop, control and for TCEs as long as the expression can • concepts of alienability and exclusivity, protect IP over their TCEs. By be classified as a TCE. rather than cultural inclusivity expressly interlinking indigenous The IGC met in February 2017 and and sustainability; peoples’ cultural rights and IP rights, will meet again in June 2017 to further • the transformation of rich and UNDRIP has helped shift the tone discuss the draft articles ahead of the sacred expressions into a of the discussion, including the WIPO General Assembly’s meeting in marketable commodity; presumption of a rights entitlement. October 2017. • the requirement that intellectual The maturation of the discussion creation be novel and fixed in a has promoted practical use of existing IMPACTS AND ACTIONS material form, which TCEs may mechanisms and principles to provide Unauthorised use of TCEs, even not be able to meet; and some immediate solutions for if inadvertent, is not only a serious • IP being static at a moment in time, protecting TCEs. This was epitomised and sensitive issue for indigenous and therefore being incapable of by IGC’s release in 2014 of The peoples, but can also have negative catering to the dynamic and evolving Protection of Traditional Cultural financial and reputational implications nature of TCEs. Expressions: Draft Articles. The draft for businesses, particularly as Much of the contra debate questions articles draw heavily on existing IP appropriation stories can spread whether the perceived limitations principles to propose a sui generis quickly and widely via social of Western IP systems do, in fact, legislative scheme for the protection media. Last year, MAC Cosmetics preclude protection of TCEs. For of TCEs. They constitute a major (a subsidiary of Estée Lauder instance, there are communal and step towards substantive reform Companies) was the subject of perennial forms of IP that are already and attempt to empower indigenous public backlash when it released recognised within Western IP systems. communities by giving them tangible its Vibe Tribe make-up collection It is possible for trade marks to be legal rights to prevent misuse of featuring patterns resembling renewed infinitely, and collective trade their TCEs. Navajo tribal geometric designs. marks can be registered by indigenous Notably, the draft articles seek Notwithstanding MAC Cosmetics’ organisations and used by members to balance the rights of indigenous assertion that its collection was not to identify themselves. Furthermore, peoples against broader public intended to have any connection and counter to the allegation that IP interest by: with, and was not inspired by, Native systems commodify TCEs, an IP right • defining the term “TCEs” broadly American cultures, there remained provides an entitlement to object to to include all forms of expressions widespread criticism of the company such unauthorised commodification or that bear some linkage with the on social media, including calls for misappropriation. An IP right can also indigenous community’s cultural a boycott of its products.
12 | INDUSTRY ISSUE March/April 2017 citma.org.uk
010-013_CITMA_MARCH/APRIL17_INDIGENOUSIP.indd 12 17/02/2017 12:34 The marketing landscape has also worn by Kloss has spiritual and INADVERTENT OFFENCE changed considerably It is no longer ceremonial signifi cance only select While non exhaustive the above suffi cient for brands to produce quality members of a tribe are given the right precautionary steps may help minimise products or create a stellar advertising to wear the feathers for their acts of the risk of allegations of cultural campaign According to Aline Santos bravery Several other brands have appropriation and insensitivity Unilever’s Executive Vice President of received critical public scrutiny for Notwithstanding care however Global Marketing modern consumers similarly seeming to trivialise cultural inadvertent off ence can be caused are “really expecting brands to create insignia by turning them into mere Walt Disney Pictures received high movements They want to be part of fashion accessories praise for actively involving Pacifi c those movements ” Islands communities in the production Brand activism provides an Providing proper compensation to the of its recent animated fi lm Moana opportunity to both tackle the challenge indigenous owners where appropriate which is based on Polynesian of cultural appropriation and engage in whether in the form of recognition mythology However social media the broader legal and policy discussion monetary remuneration or benefi t users found Disney’s merchandise of TCE protection within a framework sharing This benefi ts all stakeholders for the movie its “Maui” Halloween that considers cultural social and also allows the brand owner to costume in particular off ensive to environmental and economic contexts demonstrate dedication towards a the Pacifi c peoples leading Disney to At a basic level brand owners and worthwhile cause which in turn immediately withdraw the costume businesses may show their mindfulness engenders goodwill for the brand The company’s prompt action and and sensitivity to the issue by Brazilian designer Oskar Metsavaht sensitive handling of the issue appeared was widely applauded for his respectful to appease consumers and the fi lm has Not assuming that a particular TCE is and ethical use of the Asháninka tribe’s been succesful The action not only in the public domain Instead brand TCEs Not only did Metsavaht seek made good business sense but was also owners should seek out the source consent to draw inspiration from positive in exposing a wider audience to of TCEs and look to obtain prior the tribe’s TCEs for his spring learning about Pacifi c Islands cultures informed consent to use collection he also paid royalties to the tribe in return and publicised its fi ght DARE TO CARE Acknowledging the source of against the illegal logging of its forests While the extent of progress to be made any inspiration This will not only in remains to be seen for brand minimise the risk of an allegation Training employees involved in the owners and businesses the debate of appropriation but will also promote creative process This is particularly has already moved from the political awareness of the indigenous owners important for the marketing and design arena to the consumer marketplace and their symbols Criticism of teams so that they are mindful of Brand owners that are sensitive to Louis Vuitton’s spring summer these issues the potential issues and otherwise collection could arguably have been “dare to care” are seen to protect avoided if it had clarifi ed the source of Conducting availability searches their immediate brand reputation and its inspiration or shared credit with the to ascertain whether the proposed contribute to the ongoing sustainability Maasai people who traditionally wear sign is likely to be off ensive to local of wider cultural heritage Brand the “shuka” upon which part of the communities or have other owners and businesses can also make a collection appeared to be based connotations The diverse range and signifi cant and meaningful contribution global expanse of indigenous peoples to the challenges faced by indigenous Understanding that the meaning and and the lack of a central registry or peoples and ensure that the value of cultural signifi cance of a particular database on TCEs means that while their “property” expands beyond mere symbol or insignia may dictate its brand owners may not have an commodifi cation and is recognised for appropriateness for use If a particular exhaustive knowledge of diff erent what it is an intangible contribution artefact has sacred signifi cance brand communities and their TCEs a to the survival of diverse cultures that owners should avoid using it without clearance process to minimise risks benefi ts both indigenous and non permission and should certainly not should include questions as to the indigenous communities for use it in a manner that would cause potential associations with TCEs generations to come off ence or trivialise its signifi cance In Victoria’s Secret model Karlie Kloss wore a Native American MARION HEATHCOTE inspired feathered headdress with is a Principal at Davies Collison Cave, Sydney a fringed suede bikini and turquoise [email protected] jewellery during Paris Fashion Week This deeply off ended native peoples Marion would like to thank Aparna Watal, Associate, as the type of headdress for her assistance with this article.
citma.org.uk March/April INDUSTRY ISSUE |
010-013_CITMA_MARCH/APRIL17_INDIGENOUSIP.indd 13 17/02/2017 12:35 Alison Madgwick provides a clearer picture of autistic spectrum disorder, and what it takes to support a neuro-atypical colleague
his article comes in three unhelpful and off ensive to those not parts First I will off er some classed as “high functioning” and useful defi nitions Second would prefer that it were not used I will explain a little about my own relationship with EARLY IMPACT autistic spectrum disorder ASD Growing up I knew I was diff erent specifi cally Asperger syndrome from the other kids at school I AS in the hope that it will put thought about things diff erently and the subject in some context Last often considered my way of thinking but not least I will summarise what to be the more correct if not the can be done in the workplace to most useful which could come across help people with ASD to do their as arrogance I often craved social jobs while benefi ting from the same contact desperately but my peers respect tolerance and understanding didn’t make any sense to me and as their neurotypical colleagues interacting with people I couldn’t understand frustrated me SETTING THE SCENE The only person at school I ASD is the umbrella category for understood at all was a boy who had a group of conditions that very something called “Asperger syndrome” broadly includes the symptoms of I even asked my parents on occasion diffi culties with social interaction and whether I might have this syndrome communication repetitive behaviours as well They dismissed my queries restricted interests and sensory issues because they didn’t understand the I often craved social Autism is the most common and need to “label” children well known of these conditions and is Fastforward to my th year contact desperately, often used as an umbrella term itself I was at the University of Cambridge but my peers didn’t make including synonymously with ASD reading biological natural sciences AS was at the time I was diagnosed The social problems I had experienced any sense to me, and with it classifi ed as a separate throughout my whole life and had interacting with people condition to autism However it has just about learned to cope with were now been redefi ned as one of the turned on their head once again and I couldn’t understand conditions covered by ASD Some shaken about a bit As if that weren’t frustrated me people think AS is synonymous with enough there was the work I very highfunctioning autism Others quickly found myself fl oundering myself included fi nd the latter term in a mire of unfi nished essays and
| INCLUSION March/April citma.org.uk
014-016_CITMA_MARCH/APRIL17_ASD.indd 14 17/02/2017 12:45 untouched example sheets with separate room This was also allowed others At Cambridge I helped at a growing sense of “What on earth when I did the postgraduate certifi cate the Disability Resource Centre and am I doing here?” That was when I in IP at Bournemouth University was the Disabled Students’ Offi cer at decided to seek advice and received Supervisors were made aware that I my college I was also the facilitator my diagnosis may fi nd it diffi cult to work with other for the AS social group for a fair Once I had that diagnosis life got people and may need more time to while This not only helped me a little simpler Not simple by a long fi nish off practicals or hand in essays explain a lot of my own behaviours way but simpler I was able to work to my full potential but if I don’t sound too much like I knew why I was diff erent not or at least nearer my full potential I am blowing my own trumpet I strange or weird or odd just diff erent and start tackling the confusion that also think I helped the other people and I started thinking of myself was the social side of my life At fi rst in the group One important reason as such This change in attitude I was paranoid about mentioning my for this was simply that the previous towards myself was probably the AS assuming that it was not possible facilitator did not have ASD! most important eff ect of my diagnosis to do so without it seeming like an This in my opinion is an example That is not to say that I had solved excuse With time however I got of one of the least helpful ways for all my social and communication used to explaining certain behaviours neurotypical people to help neuro problems but I was much better with neat little phrases like “Can atypicals to make a space for them able to deal with them we please schedule in advance when and then sit in it themselves By all we’re going to meet? I have Asperger’s means make the space and we will PRACTICAL OUTCOMES and don’t deal well with uncertainty thank you but then get out of it If you The practical outcomes of my and changes in routine ” want to help the best thing to do is to diagnosis were also useful At Once I felt more comfortable with give the people who are in that group university I received extra time in myself and my interactions with the the space to help themselves Only
ALIX THOMAZI exams and was able to sit them in a world I was able to start helping give support if you are asked for it
citma.org.uk March/April INCLUSION |
014-016_CITMA_MARCH/APRIL17_ASD.indd 15 17/02/2017 12:45 Having said all that what follows so can be more sensitive than others important part of working in IP is my advice for how to support a to negative remarks As with teamwork it is important to colleague with ASD It is important to remain aware of an autistic colleague’s point out that the following list is by Listen to the person with autism needs and not pressure them If they no means complete and refl ects my This is possibly the most important decide to join in with social activities own experiences which will of course takehome message of this article be respectful of boundaries possible be diff erent from other people’s I hope Of course selfeducation is good sensory issues and the fact that they you will fi nd it helpful nonetheless and I wholeheartedly encourage may need to take some time out you to go and read up on ASD at any point to recover from HELPFUL ACTIONS the National Autistic the social interaction When dealing with people with ASD Society website is good WANT TO it is helpful to At the same time I KNOW MORE? Make assumptions based would like to stress The National Autistic on stereotypes Give them clear instructions again that everyone Society off ers advice and Not everyone on the People on the autistic spectrum is diff erent training for those recruiting autistic spectrum is often cannot infer meaning or “read So in deciding or supporting someone on like Dustin Hoff man’s between the lines” so they need what reasonable the autistic spectrum character in Rain Man precise instructions in order to carry accommodations to See autism org uk As the name suggests out a task A lack of clear instructions make in your offi ce or for details it is a spectrum and not only means a job might not get how to interact socially many people have learned done adequately but it can also cause with an autistic colleague the tricks to make their autism the person with autism signifi cant person who best knows the answers invisible most of the time Avoid stress It is often useful to provide to your questions about their autism saying things such as “You can’t instructions in writing and it can is that colleague possibly be autistic” which can be also be helpful to ask the person to very upsetting or frustrating for repeat back instructions to be sure UNHELPFUL ACTIONS someone who has put a lot of eff ort they have understood When dealing with people with ASD into learning how to appear “normal” it is not helpful to Allow for routines and give adequate JOINT EFFORT notice if these are due to change Expect them to be super good Of course I don’t believe the entire People on the autistic spectrum often at teamwork onus is on others to make sure a person fi nd routines very helpful and can get As described above people on the with ASD gets on well in the workplace upset and stressed when routines are autistic spectrum often have social It is important for the autistic person not in place or are changed without and communication diffi culties If to make an eff ort as well If the above notice Clarifi cation of working hours they are needed in a team be aware suggestions are followed however and break times can be useful as can of their needs and make sure that it should be a lot easier for autistic timetables if multiple tasks are to be the others in the team are also aware people to work together with their completed in the same time period ensuring that you have the autistic colleagues and to fi nd ways of person’s consent to disclose this working that benefi t everyone Give feedback and make it clear that it information to the team is not criticism This article is adapted from Alison’s Clear feedback can be very important Expect them to join in with social stuff guest blog for IP Inclusive which is to someone with autism so that they It varies from fi rm to fi rm and offi ce published at ipinclusive org uk and can be sure that they are doing work to offi ce but socialising can be an reproduced with permission correctly or alter how they are doing it if not It is however important to make sure that this feedback is constructive and not interpreted as criticism Autistic people are often perfectionists so perceived failure ALISON MADGWICK can hit them hard Many have also is a freelance Technical Assistant in patent law experienced bullying in the past [email protected]
| INCLUSION March/April citma.org.uk
014-016_CITMA_MARCH/APRIL17_ASD.indd 16 17/02/2017 12:45 IP Support have a good understanding “ of the specific needs of our industry and have proven themselves capable of sourcing high quality candidates Patent & Trade Mark Attorney Firm”
We Recruit. You Enforce.
www.ip-support.co.uk ● 020 7776 8966 ● [email protected]
017_ITMA_Mar_17.indd 17 16/02/2017 11:20 The UK’s most-viewed cooking contest is the latest programme to highlight the soggy state of format rights case law, says Mark Cruickshank
18 | FORMAT RIGHTS March/April 2017 citma.org.uk
018-020_CITMA_MARCH/APRIL17_Formatrights.indd 18 17/02/2017 12:48 he issue of television The authority of Green has been format rights has recently “ the cornerstone for television format been in the spotlight disputes, and this remains the case following The Great British nearly 30 years on. The reasons for Bake Off ’s (GBBO’s) It is difficult to establish this are twofold. First, most subsequent Tmuch-publicised move from the BBC firm guidance from disputes have either been decided by to Channel 4. The move was highly way of summary judgment or settled contentious, partly because a majority the case law other out of court. For example, in Meakin of GBBO’s presenters decided not than, as a generality, v British Broadcasting Corporation to make the move, leaving open the and Others3, the Claimant raised possibility of the BBC creating a rival raising claims based proceedings against the BBC for baking programme. It is likely that Love on infringement of copyright infringement and breach Productions (the producer of GBBO) of confidence by broadcasting a will be watching this closely, particularly copyright is challenging programme entitled Come and Have a since it had previous disputes with the Go… If You Think You’re Smart Enough. BBC relating to format rights for two The BBC sought to strike out the other television programmes. Zealand.2 That case was brought by claim and, for this purpose, the Subsequent to the GBBO coverage, Hughie Green, the author, presenter Court proceeded on the basis that a rare television format rights decision and compère of the television the subsistence of copyright in was issued by the Court of Appeal programme Opportunity Knocks. the dramatic format was arguable. in Wade and Perry v British Sky He raised proceedings against the However, this issue was ultimately Broadcasting1, which acts as a timely Broadcasting Corporation of New untested, because the Court held reminder of the legal issues and Zealand for its broadcast of a similar that there was no reasonable prospect challenges in protecting television television programme in New Zealand, of Mr Meakin succeeding, and any formats in the UK. While this continues also called Opportunity Knocks. similarity between his proposals and to be a relatively “undercooked” area The key elements of Mr Green’s the BBC programme were no more of the law, it is possible to draw some case were based on the copyright than general ideas at a fairly high level principles from the case law and that he claimed subsisted in the of abstraction. identify practical steps that can be script of Opportunity Knocks as a Further, in Celador Productions taken to protect such formats or literary and dramatic work. The Ltd v Melville and Baccini v Celador avoid infringement. difficulty he faced was that no scripts Productions Ltd and Others4, the were ever produced. Therefore, the Court held that there were issues REVIEW OF RIGHTS Privy Council could not find that any to be tried, but the case appears to There is no stand-alone right that literary copyright had been infringed. have been settled, because there have protects television programme In respect of the alleged copying of been no further judgments issued. formats in the UK. Instead, they rely the “dramatic format” of Opportunity The high-profile dispute between on protection via myriad other IP Knocks, the Privy Council held that: the Pop Idol and X Factor formats was rights. These principally include: (i) “It is stretching the original use of also settled out of court without a copyright in the scripts or format of the the word ‘format’ a long way to use substantive decision being issued. programme, the music of a theme song, it metaphorically to describe the The second main reason for the and the set designs and layout; (ii) features of a television series … underdeveloped case law is that a confidential information in the format, which is presented in a particular large proportion of the claimants in running order/sequencing of events, way, with repeated but unconnected television format disputes have been and unique features of the programme; use of set phrases with the aid of litigants in person. This has meant and (iii) trade mark rights in the title of particular accessories.” that the pleadings and arguments have the programme, any associated logos In other words, a television format not been as nuanced as they otherwise and any catchphrases that may be used. is distinguished from a dramatic work, might have been in this difficult area The bulk of the case law on television such as a play or theatre production, of the law had professional advisors programme format disputes has focused because it does not follow the same been instructed. It may also help on copyright infringement and breach format every time. Television explain why so many of the claims of confidence, and thus much of the programmes (and particularly game have been struck out. attention is devoted to them. shows, which feature prominently The rare cases in which protection in the case law) are, by their nature, has been granted to television formats CASE LAW AND CONTEXT different every episode, and are not have largely been based on confidential The starting point for any analysis necessarily scripted or predetermined information, and this seems to offer of television format rights is Green because they rely on contestant or the best prospect of success in this
ALIX THOMAZI v Broadcasting Corporation of New audience participation. field. Of course, as a starting point, F
citma.org.uk March/April 2017 FORMAT RIGHTS | 19
018-020_CITMA_MARCH/APRIL17_Formatrights.indd 19 17/02/2017 12:48 the information must satisfy the common law test of confi dentiality in that the information has the necessary quality of confi dence and is disclosed in circumstances importing an obligation of confi dence The case of Fraser and Others v Thames Television and Others is one such example In that instance the Court decided among other things that the television concept was “original clearly identifi able of potential commercial value and suffi ciently well developed to be capable of realisation” and that it had been disclosed to the Defendants in confi dential circumstances Wade the most recent television format case is the fi rst fully reasoned decision for some time in this fi eld and again was based solely on breach only limited elements of the format unsuccessful and the applicant of confi dence The Claimants claimed have been copied should be informed of this Finally that British Sky Broadcasting’s Nevertheless there are several as far as possible parties should BSB’s production of the programme practical guidelines that can be drawn avoid any “cross contamination” Must Be the Music MBM must have from the case law to assist with between the people who have seen been copied from their earlier idea protection and avoiding infringement the prospective scripts and those which had been submitted to BSB First a party that creates a television involved in developing rival formats for a programme entitled The Real format should keep dated and detailed to avoid any subconscious copying Deal because of the similarities written notes of its ideas These should between the two The alleged include key features of all aspects DIFFICULT RECIPE similarities included the fact that of the format of the programme As long as the case law on television contestants performed chart eligible particularly catchphrases timing and formats remains underdeveloped it downloadable songs during the show running order or sequencing of events is likely that further disputes will the judges were exclusively singer and those features that are unique occur Such formats are increasingly songwriters and the programme or that have not been used in other valuable assets in terms of generating was “primetime rather than edgy” television programmes viewer numbers advertising revenue However the claim was defeated Second the format should be and sales of associated merchandise because BSB was able to demonstrate kept confi dential If it is being and promotional material As such that it had independently created its submitted to television networks it seems only a matter of time until MBM format for consideration the party should two parties with equal resources allow In Wade the Court of Appeal ensure that appropriate confi dentiality these diffi cult issues to be given more stopped short of deciding whether provisions are put in place before detailed consideration and judicial there could be copying of a format the material is disclosed guidance can be obtained where only a combination of the Third relevant IP should be Until then the protection and elements was used rather than the registered where possible This enforcement of television format format as a whole If it had done so includes trade marks for programme rights are unlikely to be a piece it could have opened the door for titles and catchphrases of cake a greater likelihood of success for Conversely parties that wish to claimants in this area create television programmes without infringing third party rights can EWCA Civ take steps to minimise that risk RPC GUIDING PRINCIPLES EWHC Ch It is diffi cult to establish fi rm They should create and retain records EWHC Ch guidance from the case law other that demonstrate the independent QB than as a generality raising claims creation of the television programme based on infringement of copyright format If third parties submit is extremely challenging Claims television programme formats for MARK based on breach of confi dence consideration whether solicited or CRUICKSHANK seem to off er a greater prospect otherwise they should be logged is Legal Counsel at Royal of success although it remains to along with a note of who had sight Bank of Scotland Legal be seen per Wade whether such of them The materials should also mark.cruickshank@ a claim could be successful where be returned or deleted if they are rbs.co.uk
| FORMAT RIGHTS March/April citma.org.uk
018-020_CITMA_MARCH/APRIL17_Formatrights.indd 20 17/02/2017 12:49 ediation, a process whereby parties to a dispute work with a trained, independent third party towards a negotiated IT’S settlement, is a voluntary, confidential and flexible process that gives parties Mcontrol over key features – including timing, format and choice of mediator. What’s more, if successful, it GOOD can preserve business relationships and confidentiality, produce creative solutions, and free up resources for the furtherance of commercial objectives that would otherwise be lost to the litigation process. Even if TO TALK settlement is not reached, parties often benefit from IT’S CONFIDENTIAL, having taken part in mediation by hearing each other’s perspectives, narrowing issues, and testing the strengths IT’S FLEXIBLE AND IT’S and weaknesses of the case. SOMETHING BOTH THE UK That is why, while neither the UK courts nor EUIPO forces parties to engage in formal mediation, they do AND EU COURTS WOULD LIKE make it clear that this alternative dispute resolution (ADR) option should be seriously considered. With YOU TO SERIOUSLY CONSIDER, this in mind, the CITMA Review asked experts on SAY OUR MEDIATION EXPERTS both sides to remind readers of the ADR essentials. F
citma.org.uk March/April 2017 ADR | 21
021-023_CITMA_MARCH/APRIL17_Mediation.indd 21 17/02/2017 12:53 THE UK ACTION OPTIONS Failure to seriously consider mediation could cost you suggests Jeremy Blum
THE UK’s Civil Procedure Rules pre action protocols Should parties agree to mediation they select a mediator and court guides require that parties consider whether with regard to the nature and circumstances of the dispute negotiation or some other form of ADR might enable unless they have agreed otherwise for example in a trade them to settle without commencing litigation Because mark licence The mediator may be a specialist trade mark the rules do not mandate a means by which settlement is lawyer a general commercial mediator or a technology to be attempted formal mediation is just one ADR option expert As well as reputation and experience the Discussion negotiation or early “without prejudice” interaction of the personalities involved is a factor worth correspondence are other potential avenues bearing in mind Organisations such as the Centre for In fact parties must continue to consider the possibility Eff ective Dispute Resolution can provide recommendations of reaching a settlement at all times even after proceedings for and access to mediators and directories such as have started and may be required to provide evidence that The Legal rank individual mediators The UK IPO ADR has been looked into Silence or refusal in response and EUIPO also provide mediation services to an invitation to participate in ADR might be considered The mediator’s objective is not to ensure that the unreasonable by the court and could lead to the imposition parties achieve settlement at any cost but to ensure they of costs sanctions consider the implications of compromising or continuing A directions questionnaire completed with the dispute after statements of case in the majority of IP cases reminds parties that they must FACILITATION ROLE make “every eff ort” to attempt to settle Mediation is usually facilitative the disputes before the hearing of the matter mediator does not adjudge the merits takes place It requires them to accept but works to facilitate agreement or or decline a one month stay in order to less commonly evaluative the mediator attempt to settle the claim at that stage might be asked to evaluate the claim and/ If a party declines it must explain the or identify strengths and weaknesses reasons why it is inappropriate at that Usually parties will prepare a mediation stage Legal representatives must confi rm statement which may include a starting that they have advised parties of the need off er It may also be appropriate to to try to settle the options available and prepare an outline settlement agreement the possibility of costs sanctions if they JEREMY BLUM This helps focus the relative positions of refuse The directions questionnaire is a Partner at Bristows LLP the parties also expressly asks whether pre action Catriona MacLeod, Senior It is critical that persons with authority protocols have been complied with Associate at Bristows LLP, to settle on behalf of the parties attend and if not requires explanation co-authored this item. the mediation and that parties establish A court has a wide discretion on the in advance with their legal advisors where issue of costs and can take into account their “lines in the sand” are It is rarely eff orts made before or during litigation to justifi able for more than two external try to resolve disputes A court can deprive a successful lawyers for each party to be present party of some or all of its costs if it determines that it Statements made in a genuine attempt to settle an has acted unreasonably in refusing to engage in mediation existing dispute are prevented from being put before or another form of ADR the UK court by the “without prejudice” rule This type of privilege extends to negotiations conducted PRACTICALITIES through mediation Mediation can be usefully deployed Parties should agree in advance how costs will be before litigation begins when signifi cant costs savings dealt with For example it may be agreed that costs will can be made be excluded from the litigation and split equally In other after close of pleadings when parties have a better circumstances costs may be rolled into the general costs understanding of the case against them of litigation immediately after the case management conference when Where possible a “neutral” third party location may parties have sight of steps to trial and associated costs and avoid any perceived “home advantage” Commonly there after judgment when parties wish to fi nd a more fl exible will be a joint session room and private breakout areas solution than that imposed by the court The mediator will introduce proceedings inviting each Mediation is not likely to be appropriate where a party party to make an opening statement The parties may requires the court to make a fi nding on construction provide then divide to identify and consider options both with injunctive relief or establish legal precedent In addition it and without the mediator before reconvening Often is only successful if both parties are willing to compromise the mediation involves reconvening on a number of a party that is not willing to retreat from an entrenched occasions as a party will need to consider its position position is highly unlikely to settle at a mediation away from the other party
| ADR March/April citma.org.uk
021-023_CITMA_MARCH/APRIL17_Mediation.indd 22 17/02/2017 12:55 EUIPO MEDIATION INTEGRATION Gordon Humphreys outlines the EUIPO mediation process
DIRECTIVE / /EC the Mediation Directive does not on its website In more complex cases or where the parties place parties under an obligation to mediate but sets some specifi cally request it a co mediator may be appointed at minimum standards for the process in relation to cross border no additional charge disputes in civil and commercial matters In fact since th Once a mediator has been chosen they immediately October EUIPO’s Boards of Appeal mediation service contact the parties to start the mediation process The has off ered its users an alternative to the traditional dispute mediator asks each of the parties to sign a mediation route of opposition cancellation and appeal proceedings agreement and submit a case summary which will not EUIPO is the fi rst pan European IP be communicated to the other party organisation to fully integrate mediation Next the parties and their as one of its IP dispute resolution tools representatives agree on a date for In so doing it seeks to promote mediation the mediation During the mediation in the EU and implement the spirit of the the parties have the opportunity to Mediation Directive for the benefi t of its inform each other and the mediator of users and stakeholders all the relevant facts of their dispute s The main legal provisions on which business concerns and legal positions EUIPO mediation proceedings are based The mediator will endeavour to facilitate are Articles and of Council an agreement between the parties without Regulation EC No / and the deciding the case Presidium Decision on Mediation Ideally EUIPO mediation proceedings Decision No Mediation is are concluded with an agreement resolving GORDON HUMPHREYS off ered either at EUIPO in Alicante free is Chairperson of the Fifth Board the parties’ trade mark dispute once and of charge or at its annex offi ce in Brussels of Appeal and an accredited for all The subject of the agreement will subject to an administration fee of Mediator (CIArb) be the transfer withdrawal or limitation Currently for there to be a mediation of an EU trade mark opposition or appeal there must be an appeal against a decision Sven Stürmann, Team Leader and The agreement will specify all other agreed accredited Mediator (CEDR) at of the Opposition Division or Cancellation Knowledge, Information and arrangements such as future cooperative Division as well as payment of the appeal Support Service, Boards of Appeal, ventures coexistence the assignment of fee and the fi ling of a statement of also contributed his expertise. costs etc grounds There are three alternative Once a mediation procedure has been ways to initiate mediation successfully completed the mediator Both parties agree to mediate by submitting a joint request informs the competent Board of Appeal of the outcome One of the parties makes a unilateral mediation request which of the mediation and the case is formally closed is forwarded to the other party by the Boards for acceptance If in spite of the mediator’s assistance the parties cannot The rapporteur of the appeal case invites the parties to consider achieve an amicable settlement the appeal proceedings will mediation taking into account the circumstances of the fi le be resumed without delay When the parties agree to mediation the appeal proceedings are suspended and the parties are invited to The views expressed in this article are personal and do not choose a mediator from EUIPO’s mediators list published necessarily refl ect those of EUIPO
MEDIATION IN BRIEF UK AND EU COMPARISON
UK EUIPO BOARD OF APPEAL When can mediation At any time before during or after After an appeal is lodged against a decision of the Opposition take place? litigation proceedings Division or Cancellation Division the appeal fee is paid and the statement of grounds is lodged How is mediation By the agreement of the parties The parties may submit a joint request one party may submit a initiated? unilateral request that the other is asked if they will accept or the appeal rapporteur may invite the parties to consider mediation Who is the mediator? Any individual selected by the parties A mediator chosen by the parties from EUIPO’s mediators list Suspension of Mediation can usually take place concurrently Appeal proceedings are suspended while mediation takes place proceedings with the proceedings but a stay is possible Subject matter Any matter at issue between the parties to The transfer withdrawal or limitation of an EU trade mark and the proceedings all other arrangements such as future cooperative ventures coexistence and costs
citma.org.uk March/April ADR |
021-023_CITMA_MARCH/APRIL17_Mediation.indd 23 17/02/2017 13:01 n this age of information, when so much of our professional history is held in online profiles, easily retrieved by an internet search, and often reported in Ireal time on social media, you might question whether the curriculum vitae still has a role to play. The answer is a resounding “yes”. There is no substitute for a carefully drafted CV that succinctly sets out your qualifications, experience, achievements and interests. And an experienced interviewer will be looking for more than just a list of your qualifications and employment history. Instead, the document should be the clearest evidence of how you wish to present yourself to an employer and communicate those less quantifiable, but desirable, qualities that point to an ideal candidate. So, your CV should be: • Concise: No matter how many qualifications, key positions and successful cases you have to your credit, it is important to condense the information – ideally to no more than two pages. Don’t worry – if you are selected for interview, the interviewer can, and will, ask further questions to put more “flesh on the bones”. • Legible: Do not try to cram details in by skimping on spacing, using a small typeface or omitting headings – the document should be pleasing to the eye and easy to read. Recognise that your CV is likely to be read on a screen as well as in print, so make sure it works as well in PDF format as it does in hard-copy format. • Complete: Gaps in your work history will catch the eye of most interviewers, and you may be quizzed about them. Does your CV Being upfront about time spent travelling or between jobs will help establish you as a credible and honest candidate. still matter? • Tailored: Always tailor your CV to the specific role for which you are applying. Put the emphasis on what Social networking sites are nice, but you still you have accomplished in your present need a formal calling card, says Bob Boad. and past jobs, and the key skills you would bring to this one. Here’s how to ensure that your written profile • Free of clichés: Avoid the usual makes a positive impression well-worn jargon, even if you do
24 | DEVELOPMENT March/April 2017 citma.org.uk
024-025_CITMA_MARCH/APRIL17_CV.indd 24 17/02/2017 14:27 believe that you are a self starter issue after you have been hired move In the IP world experience and a natural leader Instead take it may consider this grounds for is highly valued and in my opinion the opportunity to signal how much dismissing you ageism is generally less of an issue you enjoy working in this fi eld than it is in some other fi elds Error free I hesitate to give this most CAUTIONARY TALE Looking ahead we will all need to get basic advice but it is so important That last point really should go used to the idea of working to a more to check and recheck to ensure your without saying but if you have ever advanced age than we did in the past document is absolutely correct Don’t been tempted to embellish your CV and make the necessary adjustment just rely on the built in spellcheck or take a lesson in self promotion to our attitudes print out and read your document from the cast of The Apprentice the Obviously your CV is not the right out loud to catch every single misstep case of Michael McCooe should make place and the interview is not the Truthful Do not include any untruths you think again right time to reveal that you have or even exaggerations Prudent Some serious inaccuracies on a past conviction for dodging a train organisations will follow up on the his CV resulted in the Solicitors fare However if your application is references that you provide In these Regulation Authority SRA taking successful you may need to consider days of increased workforce mobility an interest In a decision published whether there is an appropriate and readily available counterfeit in July the SRA announced moment to share such information degrees and other qualifi cations that it had agreed with him that with your potential employer before would be employers are motivated among other things he would remove its own checks bring the fact to light to check out claimed qualifi cations himself from the roll of solicitors Of course you may fi nd that the with the appropriate educational recruiting organisation itself is not institutions and professional bodies OTHER ISSUES as open and forthcoming as you might unless they have personal knowledge Some older jobseekers try to disguise wish for example if you try to fi nd of the candidate’s credentials Many their age by omitting from their out why the previous postholder will reject candidates as soon as they CVs the dates when they were in left so that you can check that spot an inconsistency or discover education and some even leave out the opportunity matches up to the untruths during the interview If their early work experience However glamorous description that appeared an employer becomes aware of an I am not convinced that this is a wise in the advertisement We try to encourage both parties involved in the recruitment process to be as honest and open as they can be while assessing one another FIRST STEP Ultimately remember that the CV is merely a preliminary part of the recruitment process It is mainly used to screen out those who are unlikely to be a fi t from those who may be suitable Other candidate screening procedures and factors such as how you come across at interview and your personal reputation in the IP fi eld will eventually decide the outcome if your carefully crafted CV has got you past the fi rst hurdle
Full details of the case can be viewed at bit ly/SRAMcCooe
BOB BOAD is Associate Director at Marlow IP Recruitment Ltd bob@marlow iprecruit.com
citma.org.uk March/April DEVELOPMENT |
024-025_CITMA_MARCH/APRIL17_CV.indd 25 17/02/2017 14:27 [2016] EWHC 2911 (Ch), Victoria Plum Ltd v Victorian Plumbing Ltd and Others, High Court, 18th November 2016
THE CLAIMANT, Victoria Plum Ltd (which plum” and other equivalent terms as a single has also traded as Victoria Plumb), and the word without the space. First Defendant, Victorian Plumbing Ltd, are Google does not prevent advertisers both bathroom retailers that operate primarily from selecting trade mark terms as keywords. or exclusively online. Both firms were founded The selection of a trade mark as a keyword in 2001 and have grown to become significant does not necessarily amount to infringement businesses: the Claimant has an annual turnover – it depends on the content of the of around £70m, and the First Defendant’s advertisement that is presented. turnover is more than £40m. In Google France SARL v Louis Vuitton The Claimant owns UK trade mark Malletier SA1, the CJEU determined that there registrations for VICTORIA PLUMB and is infringement if the origin function of a trade for a figurative mark including the words mark is adversely affected, which would be “Victoria Plumb”, as well as an EU registration the case “if the ad does not enable normally for victoriaplum.com. informed and reasonably attentive internet The Defendants advertised using a number users, or enables them only with difficulty, of Google keyword terms that, they accepted, to ascertain whether the goods or services were confusingly similar to the Claimant’s referred to by the ad originate from the trade marks. Despite a long period of the proprietor of the trade mark or an undertaking two similarly named businesses trading economically connected to it or, on the side by side, Justice Carr decided that the contrary, originate from a third party”. Defendants’ use was such that their defence The Defendants’ ads included terms that of honest concurrent use could not succeed. were the same as the keywords, as well as “victoria plumbing”. KEYWORD STRATEGY The Google France decision was limited Advertisers can select particular words that, to a double-identity situation (ie the use of a when entered as part of a search string on a keyword identical to a trade mark registration search engine such as Google, might cause in respect of identical goods) and has been their ad to be displayed above “natural” or followed in other double-identity cases, such “organic” search results (ie those that have as Interflora Inc v Marks and Spencer plc.2 not been paid for). Google does not charge However, in the current case, Carr J applied for displaying the ad – rather, it charges the same approach in respect of keywords the advertiser each time its ad is clicked on; that were admitted to be confusingly similar hence the term “pay-per-click advertising”. to, but not identical with, the trade marks. Given that the Claimant and First He found the origin function to have been Defendant operate primarily or exclusively negatively affected and that, subject to the online, keyword advertising is a significant pleaded defences, there was infringement. part of their respective businesses. The Claimant alleged that the First DYNAMIC INSERTION Defendant’s use of the following keyword Some of the Defendants’ ads included visible terms, and the resulting ads that displayed use of “Victoria Plumb” (ie identical to the those keywords, amounted to infringement of Claimant’s trade mark). The Defendants its trade mark registrations: “victoria plumb”, accepted that these ads, which contained “victoria plum”, “victorian plumb”, “victorian the words “Victoria Plumb”, amounted to Search back in the spotlight George Sevier looks at a recent decision that counsels caution on ad keyword strategy
26 | CASE COMMENT March/April 2017 citma.org.uk
026-027_CITMA_MARCH/APRIL17.indd 26 17/02/2017 14:30 infringement and submitted to judgment. However, the content of the ads was not intentional – rather, it was the result of Google’s “dynamic keyword insertion” (DKI) service, which automatically displays the search term as the main text in the ad. The object of DKI is to make the ad appear more relevant to the internet user, and therefore more likely to be clicked on. This is attractive to advertisers, because it means that the advertiser’s website is more likely to be visited. DKI also benefi ts Google, because it In the current case, the Defendants alleged means that an internet user might be more that the parties had honestly built up their likely to click on an ad (resulting in pay-per-click respective businesses and reputations using revenue) rather than an organic search result. confusingly similar names over many years. Advertisers using DKI lose control of They said that each party had to live with the their ad content and need to exercise caution confusion, because the Claimant’s trade mark when using it. Unless advertisers use DKI had never denoted to the average consumer KEY POINTS “negative match” for particular trade marks, a the services of a single entity. The selection of search for a term that includes a keyword plus a trade mark as a trade mark could result in that trade mark CAUSE FOR CONFUSION a keyword does not appearing in an ad, which would most likely However, the case law makes it clear that, to necessarily amount to infringement – amount to infringement, as in this case. rely on the honest concurrent use defence, the it depends on the defendant must not take steps that exacerbate content of the DEFENCES ADVANCED the level of confusion beyond that which is advertisement With regard to those uses that were not the inevitable. In the current case, the Defendants that is presented result of DKI, the Defendants admitted using had bid on keyword terms such as “Victoria Advertisers using marks that were confusingly similar to the Plum”, which is the name of the Claimant. dynamic keyword Claimant’s trade marks and sought to rely Carr J held that, by doing so, they will have insertion lose control on defences of estoppel, acquiescence and caused confusion that may not have existed of their ad content and need to exercise honest concurrent use. The fi rst two were had they restricted keywords and visible ads caution when using it given short shrift. The Judge considered to “Victorian Plumbing”. As such, the defence honest concurrent use at greater length. was not available, and this keyword advertising To rely on the honest The concept is not provided for in the was considered to amount to infringement. concurrent use defence, the defendant Trade Marks Directive (Directive 2008/95/EC) The Claimant had also used “Victorian must not take steps or Trade Marks Regulation (Council Regulation Plumbing” as a search keyword term, that exacerbate the (EC) No 207/2009), but is a long-recognised producing ads that contained “Victoria level of confusion defence. In Phones 4U Ltd v Phone4U.co.uk Plum” or “Victoria Plumb”. That was beyond that which is inevitable Internet Ltd3, Lord Justice Jacob said: found to amount to passing off . “An example of [honest concurrent use] is Although honest concurrent use can the old case of Dent v Turpin (1861) 2 J&H 139. provide a defence to infringement, this Father Dent had two clock shops, one in the decision highlights that the breadth of use C / City, the other in the West End. He bequeathed may be very restricted. This is particularly EWCA Civ EWCA Civ one to each son – which resulted in two clock so online, where bidding on keywords, businesses each called Dent. Neither could including typographical errors around stop the other; each could stop a third party one’s own name, would otherwise be (a villain rather appropriately named Turpin) an ordinary part of doing business. from using ‘Dent’ for such business. A member of the public who only knew of one of the two businesses would assume the other was part GEORGE SEVIER is a Principal Associate at Gowling WLG (UK) LLP of it – he would be deceived. Yet passing off [email protected] would not lie for one son against the other because of the positive right of the other George assists trade mark owners in protecting their brands, business. However it would lie against the particularly online, and advising in relation to advertising, third party usurper.” marketing and licensing.
citma.org.uk March/April CASE COMMENT |
026-027_CITMA_MARCH/APRIL17.indd 27 17/02/2017 14:30 [2016] EWHC 3360 (IPEC), Juthika Bhayani and Bhayani Law Ltd v Taylor Bracewell LLP, High Court, 22nd December 2016
Naming and blaming Ben Evans considers who really owns the goodwill in a professional’s surname
THE QUESTION OF whether a partner in the partnership agreements, and thus the trade a firm of solicitors owns the goodwill that mark should not be revoked. she develops in the course of her professional Taylor Bracewell counterclaimed, alleging duties has come before the IPEC. breaches by Ms Bhayani of the partnership The First Claimant, Ms Juthika Bhayani, agreement, and applied for summary judgment was a respected employment solicitor against the Claimants or, in the alternative, who had joined Taylor Bracewell LLP (the to strike out the Claimants’ claim. Defendant) in 2011 as a salaried partner and had entered into a contract of employment SUMMARY JUDGMENT and a limited liability partnership with the The parties were in agreement that the firm. It was agreed that the Defendant would alternative applications were, essentially, offer employment law services under the one and the same. For simplicity, His Honour name “Bhayani Bracewell” and register Judge Hacon treated the application as being the UK trade mark BHAYANI BRACEWELL. for summary judgment only. Following a finding of gross misconduct, Ms Bhayani’s position was that the goodwill the First Claimant left the firm in October she generated while at her previous employer 2014 and set up to practise under the name and at the Defendant was associated with Bhayani Law Ltd, the Second Claimant. her own name and was thus, at all times, In the meantime, the Defendant continued owned by her. It was argued that it was not to offer employment law services using the necessarily the case, in law, that goodwill Bhayani Bracewell name. generated by an employee or partner was Ms Bhayani objected and, in 2016, issued vested in the employer or partnership – proceedings alleging that: rather, it would depend on the facts • by using the Bhayani Bracewell name to provide that needed to be explored at trial. employment law services, the Defendant had It was accepted that falsely represented that Ms Bhayani was still Ms Bhayani had acquired involved with the firm and thus passed off its a reputation in the field services as being those of Ms Bhayani; and of employment law. “ • in consequence, that the Defendant’s use of the However, reputation trade mark was liable to mislead the public, and is not the same it should thus be revoked pursuant to s46(1)(d) as goodwill, and It was accepted that Ms Bhayani of the Trade Marks Act 1994 (the Act). it is goodwill that had acquired a reputation in The Defendant denied both allegations, is required to found contending that: neither Claimant owned any an action for passing that field. But reputation is goodwill sufficient to base a claim of passing off: “Reputation not the same as goodwill, and off, and that any goodwill associated with the alone cannot form Bhayani Bracewell trading name was owned the basis of an action it is goodwill that is required to by the Defendant as a result of the partnership for passing off, no found an action for passing off agreements; and that it enjoyed a contractual matter how high the right to use the Bhayani Bracewell name under wattage of celebrity.”
28 | CASE COMMENT March/April 2017 citma.org.uk
028-029_CITMA_MARCH/APRIL17.indd 28 17/02/2017 14:44 employment or partnership and by the advice and pressure exerted by colleagues”. Even putting aside the position under the usual rules of passing off , it was found that the eff ect of the partnership agreement was such as to render any goodwill generated by the First Claimant, during her time with the Defendant, as being owned by the Defendant. As a result, the Claimants had no realistic prospect of establishing that the First Claimant owned goodwill on which to base a Following Starbucks (HK) Ltd v British Sky case of passing off , and judgment was entered Broadcasting Group plc1, Hacon J noted that for the Defendant on the passing off claim. goodwill could not subsist alone and was Moving to the revocation issue, Hacon J indivisible from the business with which it decided that, even if the Defendant retained KEY POINTS was associated. In general, therefore, goodwill a contractual right to use the Bhayani Reputation is not the generated by an employee or partner would Bracewell name, it did not necessarily follow same as goodwill be vested in the employer or partnership. that its use of that mark would not engage s46(1)(d) of the Act. The claim to revoke the It may still be possible for a solicitor to take IRVINE EFFECT? mark had a realistic, as opposed to fanciful, action against a former However, it was accepted that, on certain prospect of success at trial, and was therefore firm on the basis facts, an employee or partner could generate allowed to proceed. of goodwill vested goodwill of their own, distinct from that of the Perhaps predicting a backlash against in a new firm or injurious falsehood employer or partnership. Goodwill could be this decision, Hacon J made it clear that, in generated by an individual’s acts done outside appropriate cases, it would be possible for a Partnership of duties to the employer or partnership. solicitor to take action against a former fi rm agreements may Distinguishing the case at issue from the if it represented that the solicitor was still put a greater focus on IP in future well-known case of Edmund Irvine Tidswell employed by it or remained a partner. Such Ltd2, Hacon J reasoned that, in the latter, actions could be on the basis that the goodwill Mr Irvine was contracted to Ferrari as a associated with the name of the solicitor racing driver, but that did not include the vested in the new fi rm (which could bring a UKSC endorsement of products using his name. passing off action) or as an injurious falsehood. EWHC Ch Accordingly, the business of endorsing products was deemed to be quite separate POTENTIAL SHOCK from that of a racing driver and generated an Although the decision is perhaps unsurprising independent goodwill that vested in Mr Irvine. given the relevant terms of the partnership Applied to the present case, Hacon J’s view agreement, it may nonetheless come as a was that Ms Bhayani’s professional activities, shock to the many professionals who, which had built up the reputation that she incorrectly, assume that the reputation they enjoyed, were done in the course of the enjoy equates to an actionable goodwill. business of her previous employer, or of the In future, it seems likely that we will see a Defendant. There were no unusual facts to greater focus on the IP aspects of partnership trigger a situation akin to that in Irvine, and, agreements in professional fi rms. therefore, under the usual rules, the goodwill vested in Ms Bhayani’s previous employer and the Defendant (as appropriate). Sole practitioners aside, Hacon J noted that “the public are well aware that a solicitor, BEN EVANS whether employed or an equity partner, is is an Associate and Chartered Trade Mark Attorney not a free agent” and that their work “will be at Blake Morgan LLP both assisted and constrained by the terms of [email protected]
citma.org.uk March/April CASE COMMENT |
028-029_CITMA_MARCH/APRIL17.indd 29 17/02/2017 14:44 O/ /, LOVE WHERE YOU LIVE (Opposition), UK IPO, th November
Dated furnishings Maya Muchemwa warns that revocation dates must serve the purpose of the objective
IN THIS CASE, the Registrar consolidated two 2013, and plans from early 2015 to reintroduce related proceedings: a revocation action for the trade mark. The Registrar considered the the mark LOVE WHERE YOU LIVE in classes “fl yer use” did not qualify as “real commercial 20 and 35, owned by Varnish Bidco Ltd (the use for the purposes of creating an outlet Proprietor); and the Proprietor’s opposition for goods and services” because: (i) the fl yers action against HARVEYS LOVE WHERE YOU were used briefl y (two months); and (ii) any LIVE in classes 20, 24, 27 and 35, fi led by GT customers following the fl yer would not have Global Trademark AG (the Applicant). seen the trade mark on the website provided The Applicant’s revocation application (there was no evidence it appeared). Therefore, claimed the eff ective revocation date of the use was inconsistent with the essential 24th July 2015. The Proprietor fi led a defence function of a trade mark. KEY POINT and counterstatement stating that the mark As regards the plans to reintroduce the trade was in use at all material times and had mark, there was very little supporting evidence: A revoked trade mark commenced or had resumed use before pages from a website dated after the relevant can still be relied upon in an opposition if the revocation application date. periods on which the trade mark appeared at the claimed relevant On 23rd July 2015, the Applicant had the bottom of the page, and a draft brochure, period ends after also fi led a new trade mark application which included the trade mark on the last page the application is for HARVEYS LOVE WHERE YOU LIVE, under the small print. The Registrar questioned filed. Ensure that the dates serve the which was, in turn, opposed by the Proprietor how visible the mark would have been to intended objective under s5(2)(b) of the Trade Marks Act consumers in both examples. The mark was 1994. The Applicant denied the grounds therefore found not to have been put to and referred to its request for proof of genuine use in both the revocation and use and its revocation application. opposition proceedings. The Registrar clarifi ed whether a mark that has been revoked can be relied upon TARGETED TIMING in an opposition if the opposed mark was Although the Applicant was successful, fi led before the claimed eff ective date of this case highlights the need to get the revocation. In this case, the application relevant dates for revocation right, as a was fi led just a day before. The Registrar’s revoked trade mark can still be relied upon answer was: yes, it can. Even if the mark in an opposition if the claimed relevant went on to be revoked in full, the rights in period ends after the application is fi led. the earlier mark would have been in force It is important to ensure that the dates serve at the time of the application for the later the intended objective, which is to remove mark. Therefore, the Registrar had to consider an obstacle from the register prior to fi ling the proof of use request and the opposition, a new application. This can save time and even if the revocation had been successful. unnecessary costs for trade mark applicants. KEY EVIDENCE The key pieces of evidence the Proprietor adduced were fl yers advertising “MFI” (a Proprietor-affi liated company) that were MAYA MUCHEMWA enclosed in packages with 25,000 customer is a Trainee Trade Mark Attorney at the orders under “Victoria Plumb” (a Proprietor- Manchester offi ce of Marks & Clerk LLP affi liated company) between July and August [email protected]
| CASE COMMENT March/April citma.org.uk
030_CITMA_MARCH/APRIL17.indd 30 17/02/2017 14:48 O/ / , LABORATOIRE DE LA MER (Revocation), UK IPO, th December
All at sea Sharon Daboul o ers an update on a familiar, even infamous, trade mark decision
THE CJEU’S 2004 decision on LA MER1 is Both sides fi led evidence. The hearing one with which practitioners will be familiar. was attended by LMT, with LDL relying on It ruled that even minimal sales would suffi ce written submissions. to establish genuine use of a trade mark in a revocation action. LATEST DECISION In this 2016 decision concerning the same In the December 2016 decision, the Hearing parties, the UK IPO agreed to revoke the Offi cer agreed with LMT that he should notorious registration on the basis that consider the natural meaning of the word it had been used for diff erent goods to “cosmetic” as it would appear to the average those registered. consumer of the product. He commented on the way LDL had marketed the goods, its stated FACTS REFRESHER purpose being to alleviate medical symptoms, Laboratoire De La Mer (LDL) had registered and recognised that most consumers would KEY POINTS the mark LABORATOIRE DE LA MER in view the products as medicinal. He added that Words used in a the UK for “cosmetics containing marine he was not bound by the cited EU regulation, specification should products” in 1989. even if it was applicable to LDL’s products. be given their natural In 2015, La Mer Technology Inc (LMT) He concluded: “A cosmetic would be readily and usual meaning applied to revoke the registration, claiming understood to mean ‘a preparation for use in A court should that, under s46(1)(b) of the Trade Marks Act beautifying the face, skin or hair’. This is not a consider how a 1994, there had been no relevant use of the description which would be used by anyone with notional consumer trade mark in the fi ve-year period from regard to the products relied upon by LDL.” would describe the 1st September 2010 to 31st August 2015. The application for revocation succeeded, use made of the mark LDL had used the mark on two product and LMT was awarded costs of £2,800. The The way products ranges: RESPIMER (a nasal wash for treating mark was considered revoked with eff ect are marketed is nasal congestion) and AUDICLEAN (a product from 1st September 2015. taken into account for preventing the build-up of excess earwax). LMT claimed these products were not REVIEW REQUIRED cosmetics and that use on such goods UK trade mark registrations can be revoked should not support the registration. for a number of reasons, including that the La Mer Technology Inc v LDL argued that its products were cosmetics mark is not used in respect of the goods and Laboratoires Goemar SA because they fell within the defi nition of the services covered by the registration (provided C / term set out in the EU’s Regulation (EC) there are no proper reasons for non-use). No 1223/2009 on cosmetic products: “any The decision is a reminder that, especially substance or mixture intended to be placed with long-standing trade marks, it is important in contact with the external parts of the to periodically review how a trade mark is human body … with a view to cleaning them … being used and ensure that its protection protecting them [or] keeping them in good remains adequate. condition”. LDL claimed that AUDICLEAN was intended for cleaning the epidermis of the ears, and RESPIMER for cleaning the mucous SHARON DABOUL is a Chartered Trade Mark Attorney and Senior Associate at EIP membranes of the nasal cavity. [email protected] LMT referred to a dictionary defi nition of “cosmetic” and argued that specifi cations in Based in London, Sharon handles UK, EU and international trade trade marks must be given their natural and mark portfolios, including searches, fi ling, prosecution and usual meaning. maintenance of trade mark rights.
citma.org.uk March/April CASE COMMENT |
031_CITMA_MARCH/APRIL17.indd 31 17/02/2017 14:49 L U C K Y BREAK Désirée Fields reports on why two parties share the rights in respect of a disputed mark
ON 5TH JULY 2013, Mariage Frères, Société Anonyme (MF) fi led a UK trade mark application for LUCKY TEA in classes 21 and 30. TWG Tea Company Pte Ltd (TWG) opposed this under sections 3(3)(b), 3(6) and 5(4)(a) of the Trade Marks Act 1994 (the Act) arguing that: (i) the mark was deceptive when used in respect of non-tea or tea-based goods; (ii) MF had no bona fi de intention to use its mark for all goods applied for; and (iii) TWG had earlier unregistered rights in LUCKY TEA, LUCKY ME TEA and LUCKY YOU TEA, under which it claimed to have been selling teas since at least 2010
| CASE COMMENT March/April citma.org.uk
032-034_CITMA_MARCH/APRIL17.indd 32 17/02/2017 14:52 O/ / , LUCKY TEA (Opposition), UK IPO, th December
and to have acquired the requisite goodwill. very small under the three marks in the three MF fi led a counterstatement denying the claims years prior to the relevant date. Further, the made and put TWG to strict proof of use. evidence showed that the volume of sales had On 28th August 2013, TWG fi led a UK trade peaked in 2010 and subsequently declined. mark application for a fi gurative series mark Ultimately, the HO concluded that only trivial incorporating LUCKY TEA in classes 21 and 30 goodwill existed in the marks. (shown overleaf). MF opposed the application on the basis of sections 3(6), 5(1), 5(2)(a), 5(2) Section 3(6) (b) and 5(4)(a) of the Act. The s3(6) (bad faith) The HO considered TWG’s bad faith claim, and s5(2)(a) grounds were subsequently noting that a person was presumed to have withdrawn, and MF proceeded with the claim acted in good faith unless the contrary was that TWG’s mark was identical or similar to proved. However, it was possible for the its mark, and applied for in respect of identical burden of proof to shift where the applicant and similar goods. MF also alleged that it had for revocation could show that the applicant earlier rights in the signs LUCKY NUMBER did not have an intention to use a mark across TEA, LUCKY and LUCKY STAR, had been the whole range of goods or services covered selling teas under signs incorporating the by the application. word LUCKY since 2006, and had acquired The HO noted that TWG had raised a goodwill under the sign. compelling case that MF did not have an The UK IPO consolidated both sets intention to use its marks across the full range of proceedings. Both parties fi led witness of goods claimed by citing the incompatibility statements and evidence of use in support of a sign indicating a type of tea being used of their respective oppositions. in respect of goods unrelated to tea. The HO rejected MF’s argument that it could use the TWG OPPOSITION mark to promote coff ee and that coff ee could Section 5(4)(a) be sold under the LUCKY TEA brand, because After recounting the classic trinity for a of the potential to deceive the public if it did successful passing off claim – goodwill/ so. The HO found that MF acted in bad faith reputation, misrepresentation and damage – when it claimed to have an intention to use the Hearing Offi cer the LUCKY TEA mark in relation to goods (HO) noted that in class 30 that were not tea or tea-based. the relevant date for However, the HO dismissed the bad faith assessing such a claim claim in relation to class 21 goods. was usually the date The HO noted that a of the application Section 3(3)(b) person was presumed to have for registration, or The HO noted that an objection under s3(3)(b) the priority date, if should be raised only where there was a real, acted in good faith unless applicable. However, as opposed to purely theoretical, potential the contrary was proved where the applicant for deception of the public. Although it was had used the mark clear that, where the mark TEA was applied to before the date of beverages or goods for making beverages that the application, it was were not tea or tea-based, consumer deception necessary to consider would result, the HO accepted that other what the position would have been at the date goods could be fl avoured with tea and that the the behaviour complained about started and to sign could therefore be used in a non-deceptive assess if the position would have been diff erent way. The same applied to goods in class 21. at the later date when the application was made. In the present case, MF’s mark had been Outcome applied for on 18th June 2013. Although this The HO found that TWG’s passing off case was the primary date for assessing goodwill, failed entirely, but that TWG achieved some MF had alleged that it had used the sign success in its bad faith and deception claims. LUCKY NUMBER TEA from November 2006, Accordingly, the HO rejected MF’s application LUCKY since 2007 and LUCKY STAR since in relation to a number of goods in class 30. December 2007. Therefore, the position MF’s application was allowed to proceed in also had to be considered at those dates. respect of all of the goods covered in class 21 The HO fi rst considered whether TWG had and “tea, tea-based beverages; non medical acquired the necessary goodwill at the primary infusions; dried plants and fl avourings, and relevant date. The evidence showed that the mixtures of the aforesaid goods, for preparing level of sales in respect of the signs had been non-medicinal beverages” in class 30.
citma.org.uk March/April CASE COMMENT |
032-034_CITMA_MARCH/APRIL17.indd 33 17/02/2017 14:53 MF OPPOSITION The HO then considered the distinctiveness Because TWG only partially succeeded in its of MF’s earlier mark, fi nding that, although the attack on the earlier mark, it was necessary mark LUCKY TEA as a whole was “not of the to consider MF’s opposition. lowest or highest level of distinctive character”, he would have considered it to be lower rather Section 5(1) than higher. The HO found only very small The HO found that the respective marks evidence of use in the context of tea and were self-evidently not similar because of related products in the UK, insuffi cient to the fan-like device elements, the shape of the enhance the mark’s distinctive character. canister, the six-sided label shape and the TWG Assessing the likelihood of confusion sign present in TWG’s mark. Therefore, MF globally, the HO concluded that there was a had no prospect of success under this section. likelihood of indirect confusion in relation to all the goods in class 21, and coff ee and tea-related Section 5(2)(b) goods in class 30. There was no similarity KEY POINTS The HO fi rst found that the goods covered between the remaining goods in class 30. Ordinarily, trade by the respective marks in class 21 were either mark owners are not identical or virtually identical. In respect Section 5(4)(a) required to advance positive evidence of of class 30, he found that TWG’s tea-based Because MF’s opposition wholly succeeded an intention to use products were all included or covered by under s5(2) in respect of class 21, the HO the terms listed in MF’s specifi cation and disregarded MF’s goodwill claim in respect The burden of proof self-evidently identical. In respect of TWG’s of its LUCKY marks. In respect of class 30, may shift where the applicant for coff ee and coff ee-based beverages, the HO he found that MF had failed to demonstrate revocation can show found that the respective goods were highly acquired goodwill at the relevant date and that the applicant similar. However, foodstuff s such as spices, dismissed the passing off claim. has no intention to sugar, chocolate, baked goods, sauces, puddings use in relation to all goods and services and bread were neither in competition with Overall outcome applied for nor complementary to tea-based products, In summary, TWG’s opposition succeeded and therefore not similar to MF’s goods. in respect of all non-tea goods in class 30, Assessing the similarity of the marks, the HO but failed both in respect of goods in class 21 The TWG UK trade noted that TWG’s mark consisted of a number and any tea-related products in class 30. mark applications of elements, but found that the words LUCKY TEA were the dominant element because of SPLIT DECISION their large size and their position in the middle Although the parties eff ectively split the of the label. By contrast, MF’s mark consisted ownership of the LUCKY TEA mark, in practice, of the elements LUCKY TEA. The element MF appears to have been the more successful “tea” had a descriptive meaning in respect of party, as it was held to own the rights to LUCKY the goods covered by the application, but the TEA in relation to tea and tea-based products. mark’s distinctiveness lay in the combination Interestingly, this is not the fi rst trade mark of the two words, the adjectival use of LUCKY dispute between these parties, who have fought turning the composite mark into a complete other trade mark battles in the sphere of tea, and understandable phrase. such as SAKURA1, involving an unsuccessful Visually, the HO found that the respective bad faith claim by MF against TWG. marks had a medium level of similarity. Aurally, Irrespective of their outcome, these cases O/ / SAKURA he found that consumers would refer to TWG’s are instructive in relation to the standards of Opposition UK IPO th April mark as LUCKY TEA or possibly TWG LUCKY proof required in respect of claims of bad faith, TEA. Accordingly, it was found that the marks confi rming that such an allegation requires were either aurally identical or shared a high cogent evidence, but, at least in the LUCKY level of similarity. Although the HO did not TEA case, is not impossible to establish, as ignore the various elements in TWG’s mark, the burden of proof may well be reversed he found that it was likely to be dominated if the party alleging bad faith is able to provide by the element LUCKY TEA. Therefore, the evidence of a lack of intent to use the mark. respective marks as a whole shared a good deal of conceptual similarity. The HO noted that the class 30 goods of DÉSIRÉE FIELDS both parties could be described as ordinary is a Legal Director at DLA Piper UK LLP grocery products and did not involve an desiree.fi [email protected] enhanced level of attention. The same was true of the parties’ goods in class 21, which Désirée’s practice focuses on trade marks were not uncommon or expensive purchases. and brand protection.
| CASE COMMENT March/April citma.org.uk
032-034_CITMA_MARCH/APRIL17.indd 34 17/02/2017 14:53 O/ / , THE CRYSTAL MAZE (Invalidity), UK IPO, th December
The goodwill maze Charlotte Wilding condenses a complex television brand tangle
MAD PROFESSOR LTD (MP) is the proprietor • CEL is the owner of the now expired UK trade of UK trade mark No 3060820 THE CRYSTAL mark No 1439028, shown on this page. MAZE (TCM) for inter alia “team building • JAC merged with Expand Images in 1996, becoming events” in class 41. Adventure Line Productions Studio Expand. In 2004, Studio Expand entered SAS (ALP) sought to invalidate the registration into an agreement with ALP regarding the Fort under s5(4)(a) of the Trade Marks Act 1994 Boyard rights; there was no mention of TCM rights. KEY POINTS (passing off ), basing its claim on use of TCM • Before its liquidation in 2007, CEL assigned its since February 1990 in respect of “entertainment rights in TCM to Chatsworth Enterprise Ltd (CEL 2). All three elements This assignment was contrary to the automatic of passing off are services, in particular television programmes, required for a claim games and challenges”. reassignment clause between CEL and JAC, and, to succeed MP denied ALP’s claims with fi ve arguments: therefore, a settlement agreement was reached in its mark was lawfully registered, the marks were 2009 between ALP (the claimed successor of JAC) The application and CEL, CEL 2 and Mr Heyworth (Director of CEL for invalidation not identical, ALP did not own the goodwill, failed because the there was no misrepresentation, and there was and CEL 2). ALP claimed that the 2009 agreement Applicant did not no damage. The fi rst two were quickly dismissed. transferred the goodwill in TCM to ALP. own the goodwill Ultimately, the key issue in the case was goodwill The Registry found that goodwill originally – in particular, ownership of it. MP’s mark was Ensure there is clear subsisted with CEL. On review of the agreement ownership of goodwill fi led on 20th June 2014, but the relevant date between CEL and JAC, the Registry held that to consider was 21st June 2011, the fi rst date the goodwill was not assigned back to JAC on which MP made use of TCM on its website. when the rights to exploit the format were returned to it. Therefore, the assignment CONFUSING CHAIN of goodwill would need to have taken place UK trade mark The Registry found it clear that “the popularity under the 2009 agreement. No of the television programme would have The Registry’s deliberation is redacted, but it generated a valuable and protectable goodwill”. is noted that, while some rights were transferred Further, MP stated that it used TCM as a parody, to ALP, the transfer of goodwill was “too great a meaning that it must have considered TCM to leap”. As ALP did not own the goodwill in TCM, be an attractive pull for customers. Accordingly, the application for invalidation ultimately failed. goodwill was found to have survived both relevant dates. OWNER IMPORTANCE However, if a passing off claim were to This case highlights the importance of ensuring succeed, ALP must have owned the goodwill. that the owner of goodwill is clear. Had the The chain of title is quite confusing. In brief: claim been brought by the owner of the • Chatsworth Enterprises Ltd (CEL) approached goodwill, it would have succeeded, given Mr Jacques Antoine, creator of the television series that the Registry found a likelihood of Fort Boyard, to acquire the rights in that format for misrepresentation and damage. Channel 4. As the fi lming location was not available, a new format was created, The Crystal Maze. • The format rights were assigned to CEL by way of an agreement with Jacques Antoine et Cie (JAC), a company set up by Mr Antoine. It included an automatic reassignment clause that took CHARLOTTE WILDING eff ect when Channel 4 failed to recommission is a Senior Associate at Keltie the programme. [email protected]
citma.org.uk March/April CASE COMMENT |
035_CITMA_MARCH/APRIL17.indd 10 17/02/2017 14:56 C-654/15, Länsförsäkringar AB v Matek A/S, CJEU, 21st December 2016
Sweden gets straight answer Jessica Wolff welcomes confirmation of a five-year grace period for genuine use
IN THIS REFERRAL from the Supreme Court services for which a mark is registered, but of Sweden, the CJEU was asked a straight with regard to the goods and services in question – and gave a straight answer. But respect of which the mark has been used, even KEY POINTS many attorneys will be surprised that the during the initial five years after registration. question had to be asked at all. Applying this test, the Svea Court of Appeal F Although no use had The Supreme Court asked: “Does it affect found no likelihood of confusion. been made of the registered mark in the proprietor’s exclusive right that, during a Länsförsäkringar appealed, and the Supreme respect of the similar period within five years from registration, he Court of Sweden referred the question to services, as the mark has not made genuine use of the [EU] trade the CJEU. had not yet been mark in the European Union for goods or registered for five years, the assessment of services covered by the registration?” NO RESTRICTIONS likelihood of confusion And, it also asked, if the answer to The CJEU’s response was unequivocal: the did not need to take that question was in the affirmative, in scope of the exclusive right conferred on account of that fact what circumstances and in what way would the proprietor of an EUTM registration F Recital 10 of the that situation affect the exclusive right? is not restricted in the first five years of that preamble to the The question arose because of an action registration by the use made of the mark. Regulation should not by Länsförsäkringar AB, which owns EU trade It ruled that: be read as limiting the mark (EUTM) registration No 5423116 for the “Article 9(1)(b) of Council Regulation (EC) five-year “grace period” that a proprietor enjoys device mark shown right. The specification of No 207/2009 of 26 February 2009 on the for beginning use of that registration includes services not currently [European Union] trade mark, read in their mark provided by the proprietor. Those services are conjunction with Articles 15(1) and 51(1)(a) of similar to the services provided by Matek A/S that regulation, must be interpreted as meaning under the three-colour logo also shown. that, during the period of five years following Länsförsäkringar successfully applied to registration of an EU trade mark, its proprietor F Registration the Stockholm District Court on the basis may, if there is a likelihood of confusion, prevent No 5423116 of Article 9(1)(b) of Council Regulation (EC) third parties from using in the course of trade No 207/2009 (the Regulation) for an order a sign identical or similar to his mark in respect prohibiting Matek from using signs similar of all goods and services identical or similar to to Länsförsäkringar’s mark in Sweden. those for which that mark has been registered Although Länsförsäkringar had not used its without having to demonstrate genuine use of trade mark in respect of the services that are that mark in respect of those goods or services.” similar to those of Matek, Länsförsäkringar’s Although Recital 10 in the preamble to the F The Matek A/S mark registration was not yet five years old. So, the Regulation states that “there is no justification Stockholm District Court concluded that for protecting [EUTMs] … except where the Länsförsäkringar could rely on all the services trade marks are actually used”, the Regulation for which it had registered its mark, and found makes clear that there is a five-year “grace a likelihood of confusion between the trade period” before this principle kicks in. marks in respect of these similar services. Note: the language of the case was Swedish. However, on appeal, the Svea Court of Appeal in Sweden held that the similarity JESSICA WOLFF of the goods and services at issue should be is a Senior Trade Mark Attorney at Stobbs IP assessed not with regard to all the goods and [email protected]
36 | CASE COMMENT March/April 2017 citma.org.uk
036_CITMA_MARCH/APRIL17.indd 36 22/02/2017 11:38 T /, Groupe Go Sport v EUIPO and Design Go Ltd (GO SPORT), CJEU, th December
No go on Go Sport Tom Coop explains why time was called on a missing ground for appeal
THE EU GENERAL COURT (GC) has upheld An incident report does not prove that there the decision of EUIPO’s Board of Appeal was a failure or that the grounds of appeal (BoA) to dismiss Groupe Go Sport’s appeal were submitted by the deadline. because it failed to submit a timely statement 3. Go Sport submitted a document showing of grounds, rejecting arguments that the other issues it had experienced with the online delay was caused by a technical failure communication system previously. This was of EUIPO’s system. rejected on the basis that they were mere Go Sport had fi led an application that had assertions and did not confi rm the grounds had been opposed by a third party. The opposition been fi led by the deadline. EUIPO also submitted was partially upheld on 20th January 2015. evidence showing the system was working on On 19th May 2015, EUIPO (having already 19th May 2015, which reduced the validity of received the notice of appeal) received two Go Sport’s arguments in the GC’s opinion. 4. Finally, Go Sport argued that its fi ling of the electronic communications relating to the KEY POINTS statement of grounds of appeal, but did grounds on 18th June 2015 rectifi ed the not receive the grounds themselves. On defi ciency by 26th June 2015. This was rejected A date for rectification 26th May 2015, EUIPO sent a letter to by the GC. The 26th June 2015 deadline was is not an opportunity Go Sport declaring the appeal inadmissible, an opportunity to prove that submissions to resubmit documents citing that no grounds were submitted, and had been made by the deadline, not an When making set a deadline of 26th June 2015 to rectify opportunity to resubmit. To allow the grounds electronic filings, the error. Go Sport submitted observations to be accepted without a viable explanation check immediately that all documents on 18th June 2015, and a copy of the grounds as to why they had not been included on are included was included. However, this was declared 19th May 2015 would otherwise have allowed inadmissible by the BoA. Go Sport appealed Go Sport to circumvent the set deadline. the BoA decision based on the grounds that: 1. EUIPO failed to receive the grounds on 19th May WARNING SHOT 2015 owing to a failure of EUIPO’s system; and This decision serves as a warning to ensure 2. Go Sport included a copy of the grounds in its that all documents are included on all 18th June 2015 response and therefore rectifi ed electronic submissions to EUIPO. Users by the deadline of 26th June 2015. of EUIPO’s electronic systems should check the online record immediately after GC RESPONSE submission to ensure all documents are The GC addressed Go Sport’s arguments included. If in doubt, consider further steps, in turn: such as a resubmission, a call to EUIPO’s 1. Evidence submitted by Go Sport’s attorneys information centre and/or a fax message. showing its client approved the grounds on 13th May 2015 was dismissed; it failed to prove that the grounds had been submitted by the deadline. 2. A technical report dated June 2015 and TOM COOP supporting a claim there was a failure with the is a part-qualifi ed Trade Mark Attorney EUIPO communication system when it tried at Baker McKenzie’s London offi ce to upload the grounds in May was rejected. [email protected]
citma.org.uk March/April CASE COMMENT |
037_CITMA_MARCH/APRIL17.indd 37 17/02/2017 14:59 T /, Apax Partners LLP v EUIPO and Apax Partners Midmarket (APAX), CJEU, th December
Independent thinking Once again, previous decisions were shown to hold no sway, writes Rachel Hearson
ON 14th NOVEMBER 2003, Apax Partners LLP “offi ce functions” and “business administration” (the Applicant) fi led an EU trade mark (EUTM) services were considered similar to “business application for the word mark APAX in management” services, and “insurance” services classes 16, 35 and 36 for goods and services were similar to “fi nancial aff airs” services. including printed matter, advertising, business The Court also concluded that “photographs” management, insurance and fi nancial aff airs were similar goods to “printed matter”, as the services. Apax Partners Midmarket opposed latter could be devoted entirely to the former the application based on its international (eg photo albums) and the two can serve a registration for the APAX mark designating common purpose (eg the display of images). KEY POINTS Spain in classes 16, 35 and 36 (among others). It is important to The opposition was based on Articles 8(1)(a) CONFUSION establish the and (b) of Council Regulation (EC) No The GC emphasised the interdependence of likely consumers 207/2009 (the Regulation). factors relevant to likelihood of confusion. Here, and suppliers of services when The Opposition Division upheld the the identity of signs compensated for the low assessing similarity opposition, and an appeal by the Applicant to level of similarity between some of the services, the Board of Appeal (BoA) was also dismissed. and, therefore, a likelihood of confusion was Likelihood of The Applicant then fi led a further appeal present. This was so even in the case of the confusion can be found even when to the General Court (GC). The Applicant’s class 35 and 36 services aimed primarily at there is a low level sole argument was that the BoA had incorrectly professional business customers with a higher of similarity between assessed the similarity of the goods and level of attention than the general public. goods and services services, citing various previous decisions The GC is not bound in support of this. The GC upheld the BoA’s LESSONS by previous decisions decision in full. This case highlights the importance of The Applicant relied heavily on previous establishing the likely consumers and suppliers decisions of the Opposition Division and BoA of services when assessing similarity. in substantiating its arguments. However, It also reiterates the interdependence of T / without greater exposition, the GC was not the factors relevant to assessing likelihood T / persuaded. The GC, citing the judgments of confusion. A low level of similarity between of FLEXI1 and EXACT2, reiterated that the the goods/services does not necessarily registrability of an EUTM is determined by preclude likelihood of confusion being reference to the Regulation, as interpreted found, particularly if the signs are identical. by EU courts, and that the GC is not bound Finally, this case serves as a reminder to both by previous decisions or practices. applicants and opponents not to rely heavily on previous decisions of EUIPO, as these will COMPARISON not bind the GC. Noting that the two signs were identical, as were some of the goods/services, the GC focused on the similarity of the remaining goods/services. RACHEL HEARSON In upholding the BoA’s decision in full, is an Associate Chartered Trade Mark Attorney at Bond Dickinson LLP the GC focused in particular on the purpose [email protected] and intended consumers of the services, and whether they were likely to be supplied by a Michael Wharton, a Trainee Solicitor at Bond Dickinson, single provider. On this basis, “advertising”, co-authored this article.
| CASE COMMENT March/April citma.org.uk
038_CITMA_MARCH/APRIL17.indd 38 17/02/2017 15:01 T / , Mondelez UK Holdings & Services Ltd v EUIPO and Société des Produits Nestlé SA, CJEU, th December
Fingers fight on Has the bar for establishing acquired distinctiveness moved up? Katie Goulding awaits the answer
THIS CASE CONCERNED an appeal by or does the evidence have to relate to actual Mondelez UK Holdings & Services Ltd, use in each Member State? formerly Cadbury, against a decision of the The case is therefore being sent back to EUIPO Board of Appeal (BoA) in which it was EUIPO to verify that the evidence adduced held that Société des Produits Nestlé SA had for countries for which no market surveys KEY POINTS used its 3D mark, consisting of four fi ngers were submitted satisfi es the requirement of Whereas, previously, aligned together, in almost every EU Member acquired distinctiveness throughout the EU. evidence may have State (15 at the time of fi ling), and that, as Coverage to date has not been favourable been submitted for a result of that use, a signifi cant proportion to Nestlé’s position. However, it is noted that, key territories, brands of the EU public perceived the mark as even with a low recognition rate of 30 per should now aim to submit evidence for an indication of origin. This followed an cent in Finland, the evidence, taken globally all Member States assessment of evidence that included (but (including signifi cant investment and long- was not limited to) survey evidence showing standing use), enabled the GC to agree that the If there have been consumer recognition in Austria, Denmark, mark was perceived in Finland as an indication no sales or direct advertising in a Finland, France, Germany, Italy, the of origin. Of the country hurdles remaining, certain Member State, Netherlands, Spain, Sweden and the UK. one would expect a favourable fi nding relating collate press and social Among other pleas, Mondelez claimed to evidence in at least Ireland (assuming the media references that the BoA did not properly assess the evidence is there). that might be extrapolated to reach territorial scope of proof of acquired a broader conclusion distinctiveness: the evidence did not OPEN DOOR show use throughout the EU. We wait to see how this one plays out. The Do not allow identical EUIPO guidelines1 say that “despite the fact take-home for now is: try to address each or similar shapes on the marketplace to that acquired distinctiveness must be shown Member State in evidence. Where evidence undermine your case. throughout the European Union, it would be doesn’t exist, guide the Offi ce by the hand Enforce your rights; unreasonable to require proof of acquired and tell the story of why use in countries use the full spectrum distinctiveness for each individual Member A to Y means the mark is perceived (probably) of IP rights State”. The caveat to this is that it must be as an indication of origin in country Z. Do not possible to extrapolate from the evidence expect the Offi ce to draw broader conclusions certain broader conclusions for territories on its own. for which evidence is not submitted. The functionality point has been put to bed. Citing Chocoladefabriken Lindt & Sprüngli AG v The door is ajar again (if it ever closed) for OHIM C / P HARDER LINE? shape marks. Territorial proof aside, Nestlé Some might say the GC has simply reinforced came close to a surviving registration for sweets this caveat in saying that: “In the event that and biscuits (and still could). At least where I the evidence submitted does not cover part stand, those four fi ngers indeed make a biscuit! of the European Union, even a part which is not substantial or consists of only one Member State, it cannot be concluded that distinctive character has been acquired through use of the mark throughout the European Union.” Others might say that it has taken a harder line. The KATIE GOULDING ambiguity is in “cover”. Is “cover” suffi cient is a Chartered Trade Mark Attorney at HGF
BILLION PHOTOS / SHUTTERSTOCK, INC BILLION PHOTOS if the other jigsaw pieces make a full picture, [email protected]
citma.org.uk March/April CASE COMMENT |
039_CITMA_MARCH/APRIL17.indd 39 17/02/2017 15:18 T / & T /, Novartis AG v EUIPO, CJEU, th December
Shape shift EUIPO was overturned on the issue of a simple pharmaceutical mark, reports David Yeomans
IN THIS JUDGMENT, the General Court to be interpreted as a crescent (creating the (GC) ruled that the fi gurative EU trade marks abstract image of an eclipse), the letter “C”, reproduced on this page were not devoid of or another elegant and/or unusual design. KEY POINTS distinctive character. By contrast, EUIPO asserted that, once affi xed Novartis AG (the Applicant) had sought to the packaging of the goods, the marks would The GC deemed that to register the marks for “pharmaceutical be perceived as having the appearance of a the marks would not be seen as representing preparations” as EU trade marks in class 5. pill, such that they could not be distinguished the outline of a pill However, EUIPO rejected the applications substantially from the basic shapes of the or lozenge, even on the basis that the marks were reminiscent goods concerned. once affixed to the of the shape of pharmaceutical preparations, packaging of the (pharmaceutical) and because, in any event, the marks were too DISTINCTIVE AMBIGUITY products simple to be distinctive. The Board of Appeal The GC found in favour of the Applicant, (BoA) dismissed the Applicant’s subsequent agreeing that it was very unlikely that the The BoA’s contention appeals, stating inter alia that the marks would relevant public would distinguish the shape that the marks did not contain any be perceived as representing the outline of a pill, even once the signs had been affi xed distinguishing of an oval-shaped pharmaceutical lozenge to the packaging of such a product. The GC also elements was or pill viewed from above and from an dismissed EUIPO’s claim that the marks were deemed erroneous angular perspective. too simplistic. While noting that the mere fact The BoA also stated that the marks did that the marks did not represent geometrical not contain any distinguishing elements that fi gures was not suffi cient to support the view The Novartis marks would enable the consumer to diff erentiate that the marks contained the minimum degree the pharmaceutical preparations bearing the of distinctive character required for registration, sign from pharmaceutical preparations of the GC accepted the Applicant’s argument that other manufacturers, and that the marks did not the marks were distinctive by virtue of their depart signifi cantly from the norms and customs ambiguity, and the fact that the shading and of the sector. The Applicant appealed to the GC. contrast created a play of light and shadow. This judgment serves as a useful insight SINGLE PLEA into the threshold of distinctiveness for purely The Applicant’s appeal relied on a single plea fi gurative marks. It is also a reminder of the in law, namely infringement of Article 7(1)(b) potential merits of an appeal to the GC. of Council Regulation (EC) No 207/2009. The Applicant argued that the marks were abstract and ambiguous, and had a unique character that made them recognisable (and therefore distinctive) as a result of the concave impression produced by their shading. The Applicant also DAVID YEOMANS made the point that the signs did not form a full is a Chartered Trade Mark Attorney at Venner Shipley circle, and each was therefore much more likely [email protected]
| CASE COMMENT March/April citma.org.uk
040_CITMA_MARCH/APRIL17.indd 40 17/02/2017 15:21 More details can be found at citma.org.uk
DATE EVENT LOCATION CPD SUGGESTIONS WELCOME HOURS We have an excellent team of volunteers 21st March CITMA administrators’ Log in online who organise our programme of events webinar However we are always eager to hear from people who are keen to speak at 23rd March CITMA lecture – Browne Jacobson LLP, a CITMA event particularly overseas Birmingham Birmingham members or to host one We would also Recent developments like your suggestions on event topics in design law and the Please contact Jane at jane@citma org uk impact Brexit may have with your ideas
25th April CITMA lecture – Royal College London* of Surgeons, Parallel imports London WC2
9th May CITMA administrators’ Log in online webinar
16th May CITMA lecture – Royal College London* of Surgeons, London WC2
8th June CITMA lecture – Brodies LLP, Glasgow Glasgow Domain name update
14th June CITMA webinar Log in online
20th June CITMA lecture – Royal College London* of Surgeons, London WC2
27th June CITMA lecture – Burges Salmon LLP, Bristol Bristol
5th July CITMA CIPA Log in online Brexit will be in the spotlight commercial at our CITMA lecture in skills webinar Birmingham on rd March Professional ethics Register now at citma org uk 6th July CITMA administrators’ Log in online webinar
13th September CITMA webinar Log in online
15th November CITMA webinar Log in online
8th December CITMA Christmas lunch London Hilton on - London** Park Lane, London W1 RICHARD HAYMAN / SHUTTERSTOCK INC RICHARD HAYMAN
* Sponsored by ** Pre-lunch drinks sponsored by
citma.org.uk March/April EVENTS |
041_CITMA_MARCH/APRIL17_EVENTS.indd 41 17/02/2017 15:22 THE TRADE MARK
I work as… a trainee Trade Mark In my role I most dislike… billing Attorney at Barker Brettell LLP But it is a necessary evil
Before this role I was… a trainee On my desk is… a bunch of fl owers Trade Mark Attorney at another from my partner Marc Jacobs Daisy fi rm and before that an avid perfume a framed photograph from English student the IP Ball and many snacks
My current state of mind is… happy My favourite mug says… “You can I feel very fortunate to have a job I love take the girl out of Bristol but you and to be able to live with my partner can’t take Bristol out of the girl ” after a period of being separated by a large distance All that is missing from My favourite place to visit on my life now is two kittens business is… currently London I’m hoping to travel to some more I became interested in IP when… exotic places in the future but I need I was fi nishing my degree in English to earn my stripes fi rst For Student member I loved the subject but decided that I Becky Knott, all that did not want to study for a PhD or stay If I were a trade mark or brand I in academia and I was reluctant to go would be… Nike I think I am a “Just is missing is kittens down the solicitor route I was broadly Do It” kind of person I always crack aware of IP and came across a vacancy on with the job at hand I wish I could for a trainee Trade Mark Attorney role say Chanel on account of elegance and that piqued my interest It occurred to style but I don’t think that is the case! In my pocket is… my iPhone I’m me that trade marks are a commercial constantly on Twitter trying to keep embodiment of the linguistic play that The biggest challenge for IP is… up to date with developments in IP I love and that the role would aff ord Brexit There is a lot of anxiety about me the opportunity to conduct indepth the future and an important part of The best piece of advice I’ve been analysis on a daily basis and use my our role right now is to reassure clients given is… to adopt a “hermeneutics writing skills I applied for the job that we will fi nd a way forward while of suspicion” in other words to check got it and never looked back safeguarding their rights and doublecheck everything even if you’re certain you’ve got it right I am most inspired by… my parents The talent I wish I had is… the They have always been incredibly hard ability to play the guitar It’s a work in When I want to relax I… escape working encouraged me to aim high progress but I would like to be able into a good book Alternatively I fi nd and respected my work ethic without to start doing open mic nights again a cat to cuddle pressuring me They have also always I love to sing I just need some backing! emphasised how important it is to be In the next fi ve years I hope to… happy as well as successful I owe them I can’t live without… music It both qualify take responsibility for my a lot peps me up and keeps me sane own clients and become fl uent in Spanish In my role I most enjoy… working My ideal day would include… lazily with a variety of clients big and small waking up to sunshine and a cup of tea The best thing about being a I love problem solving and a key part in bed a stroll through Leamington Spa member of CITMA is… the people of that is knowing how to tailor your with my partner ending with a bit of It is very exciting to share such a advice to each individual client so that shopping and a tasty lunch then fascinating common interest with such they come away happy meeting up with friends for cocktails a wide range of wonderful individuals
| TM March/April citma.org.uk
042_CITMA_MARCH/APRIL17_TM20.indd 42 17/02/2017 15:24 Putting Customers first
Comprehensive Trademark and Related IP Records Management System
Established since 1998
Web Based and Multi Platform
Dedicated Customer Support
User Friendly Software
Over 500 Clients and 2000+ Users
E. [email protected] T. +44 (0)118 958 2002 W. www.webtms.com
001_CITMA_MARCH/APRIL17_COVER.indd 7 23/02/2017 16:07 IBC_ITMA_Mar_17.indd 1 17/02/2017 08:20 CITMA REVIEW CITMA
MARCH/APRIL citma.org.uk
001_CITMA_MARCH/APRIL17_COVER.indd 2 23/02/2017 16:07 DpOBC_ITMA_Mar_17.indd Ahuja_CITMA_Mar_17.indd 1 1 15/02/201716/02/2017 16:5811:18