Trademarks: Device elements – no longer a safe path to registration

For many years, adding device elements to descriptive words included in trademarks has been sufficient for obtaining distinctiveness – non-distinctive words could be registered if only a device element was added. Of course, the scope of protection would be reduced compared to distinctive word marks and in that sense the value of the trademark was limited.

OHIM has changed and is still in process of changing their practice regarding device marks including descriptive words. The change implies that a device mark including descriptive word(s) does not necessarily have the necessary distinctiveness per se. Now, also the figurative elements are evaluated.

A special typeface or simple device element may not suffice in terms of adding distinctiveness. Examples of such are marks consisting of a descriptive word written in italics, adding a circle around the word, placing a dot above the word or underlining the word. But also other device elements may not be sufficient as it was decided in the application for the device mark BEST BUY sought for services in classes 35, 37 and 42 – see T-122/01. The trademark consisted of a yellow price tag containing the words BEST BUY in black. This mark was not accepted for registration and one of arguments therefore is that the trademark “is merely composed of elements which, when examined separately, are devoid of distinctive character for the marketing of the services concerned. Nor is there any interaction between these different elements which might confer a distinctive character on the whole” .

Simple device elements are not sufficient, but more complex device elements may be. The more complex a device element, the more distinctive a trademark. But where is the line between acceptable marks and unacceptable marks?

According to OHIM, they will also consider whether a device element is commonly used within the line of business. The question is to which degree and how similar? And will the list of goods and services, which is usually affected by the line of business, also be taken into account? I trust that these matters will also be taken into account and if so, the device element may not be sufficient for registration even though the device element is not banal. This may also be the case if the device element underlines the meaning of the word, even if the device itself is complex. But how about adding further device elements? Or colors? And what about marks presently registered, but unacceptable if applied for today? Will their scope of protection be influenced and how would this be evaluated in conflict cases? Is the value of such trademarks increased or decreased?  At this stage, a lot of questions are raised and practice is still developing.

National practice among the community member states also varies and may be different to OHIMs practice. This is the case when comparing Danish and OHIM practice and may be worth considering when applying for trademarks. When deciding which trademarks should be used as basis for oppositions, cancellation actions etc. such considerations are also essential.

We will follow case law closely as much more attention should be paid to trademarks which include device elements, and as it is now even more essential to have a discussion on risks, filing strategy and expectations of the scope of protection prior to filing a trademark application.

Henriette Vængesgaard Rasch, Attorney at Law

New Patent Prosecution Highway possibilities for both Danish, Swedish and European applicants

As the PPH expands further, both Danish, Swedish and indeed European patent applicants are offered new possibilities of speeding up and simplifying examination of their patent applications. In the following the Awapatent IP Blog sums up these new possibilities.

To recall, for a given PPH-agreement the PPH allows for requesting accelerated examination at the one office participating in this agreement based on the search results and a set of claims accepted for grant in an analogous application at the other participating office. For the Global PPH this principle applies for any combination of two participating offices.

Effective 1 November 2014, the Austrian and Singaporean IP offices have joined the Global PPH network, thus bringing the number of participants in the Global PPH up to 19. The Global PPH network already counts i.a. the IP offices of Sweden and Denmark as well as the Nordic Patent Institute as members. Hence, the IP offices of Sweden and Denmark as well as the Nordic Patent Institute now all have PPH agreements with the Austrian and Singaporean IP offices.

Furthermore, the EPO has recently announced the upcoming launch of three new PPH agreements, namely with the IP offices of Canada, Mexico and Singapore. The three new PPH agreements are to enter into force in January 2015. It remains yet to be seen whether they will apply also to PCT work products. The press release of the EPO may be found here.

Finally, it is worth mentioning that also the Thai and Malaysian IP offices have entered the PPH-network, both by signing an agreement with the Japanese patent office, JPO.

The complete overview of existing and working PPH agreements at the time of writing can be seen on the graphic below, courtesy of the PPH web-page compiled by the Japanese Patent Office, JPO:

PPH-1nov2014

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Revisions to Canadian Trademark Act

Earlier this year Canada’s government proposed Canada major changes to the Canadian Trademark Act and in June the bill (C-31) received royal assent.

The changes enable Canada, as one of the last (if not the last) western industrialized countries, to accede to the Madrid Protocol, Nice Agreement and the Singapore Treaty.

Some of the most significant changes will inter alia mean that the following:

• The term of registration is reduced from 15 to 10 years.

• Divisional trademark applications in order to avoid that uncontested goods or services are delayed by issues with other parts disputed by an examiner or opponent.

• Further types of trademarks such as sounds, scents, 3-D shapes, tastes and textures are now explicitly permitted.

• The requirement to identify whether a trademark has been used or is proposed to be used at the time of filing is removed.

• Trademarks with features consisting mainly of a utilitarian function are not possible to register and a utilitarian feature embodied in a trademark will not prevent a third party from using that feature.

With the above Canada is finally in line with the majority of the trademark world. This will of course make it much easier and more interesting for trademark holders to apply for registrations in Canada when costs and administrative burdens are reduced. Not the least since it is possible use the Nice Classification system and designate Canada in an international registration via WIPO.

This is also the ambition of the Canadian government which expects that the above modernization, which aligns Canadian trademark regime with international practice, will make things easier for Canadian companies as well as attracting foreign investors.

The changes are expected to be fully implemented within a year.

Peter Hermansson, Attorney at Law