Archive | 2012, June | (5) posts

New decision on Utility Models from the Danish Supreme Court

The Danish Supreme Court has on 16 May 2012 pronounced an interesting decision regarding utility models. Case no 331/2010 – RASN A/S’ utility model no. DK 2007 00003, concerns a device for loading and unloading cargo items into and out of aero planes. Previously, the DKPTO Board of Appeal for Patents upheld the utility model as registered following annihilation proceedings, and the Maritime and Commercial Court confirmed the upholding.

The decision concerns whether the claims of DK 2007 00003 fulfill the criterion of creational step, which applies to Danish utility models and serves the same purpose as inventive step does for patents.

The Supreme Court states in the reasons that the criterion of creational step is less strict than that of inventive step. This is a generally accepted fact, as the preparational works of the Danish Utility Models Act state that the act aims at providing a possibility of protecting technical creations falling below the level of obviousness required for patentability. However, the Supreme Court admits, no clear case law exists revealing the actual difference in strictness between creational and inventive step.

In the preceding decision T 6-08, the Maritime and Commercial Court stated that the consequence of the said lesser strictness is that in the assessment of creational step, the skilled person’s knowledge is restricted to a smaller technical field as compared to that of the skilled person used when assessing inventive step in the field of patents. However, the Supreme Court did not address this point.

Furthermore, the Supreme Court has, in line with previous case law, stated that firm ground must be provided for the court to set aside a decision made by the DKPTO Board of Appeal for Patents regarding creational step.

The Supreme Court confirmed the previous decisions that the claims fulfill the creational step criterion, and therefore that the utility model in suit is upheld.

The decision of the Supreme Court is available (in Danish) here, the decision of the Maritime and Commercial Court is available (in Danish) here, and the decision of the DKPTO Board of Appeal for Patents is available (in Danish) here.

Troels Peter Rørdam, European Patent Attorney

The IP Translator watch is finally over

On 19 June 2012, the Court of Justice of the European Union finally delivered its judgment regarding the legality of the of OHIM’s class heading practice

So, what is IP Translator?
The case relates to the lawfulness of the OHIM’s practice that begun in 2003, which means that when a class heading in the Nice Agreement is used this covers all goods and services in that class.

The case itself is a reference to the court that arose from a UK application filed by The Chartered Institute of Patent Attorneys(CIPA) for the mark IP TRANSLATOR. The application was for the Class 41 heading, namely “Education; providing of training; entertainment; sporting and cultural activities”.

The UK-IPO (UK Trademark Office) regards itself as bound by OHIM’s practice on class headings for the purposes of examination. Consequently, it objected that the mark was descriptive of translation services because these fall within Class 41, even though they do not clearly fall within the scope of any items in the class heading. CIPA argued that translation services were not covered by the specification as claimed, and appealed the refusal. Three questions were referred to the Court for a preliminary ruling:

1) whether it is necessary to identify goods and services with clarity and precision and, if so, with what degree thereof;
2) whether it is permissible to use the general wording of a class heading for specifications; and
3) whether it is necessary or permissible to construe class headings as covering all goods or services in a class.

What did the Court say?
1) Goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision in order to enable the competent authorities and economic operators to determine the extent of the protection conferred by the trade mark based on the list of goods alone.

2) It is possible to use the general indications of the class headings of the Nice Classification referred to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise. Each part of the Nice heading will need to be assessed on a case by case basis.

3) An applicant for a national trade mark who uses all the general indications of a particular class heading of the Classification referred to in Article 1 of the Nice Agreement to identify the goods or services for which the protection of the trade mark is sought, must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

What does the OHIM say?
The OHIM has reacted fast to the decision by issuing Communication No. 2/122 of the President of 20/06/2012 (repealing Communication 4/03) regarding its practice in the light of IP TRANSLATOR saying:

• The Office will continue to accept class headings but on a case-by-case basis. Which terms that are acceptable will be specified in the guidelines of the Office.

• For new CTM Applications it will be up to the Applicant to specify whether the application for registration intend to cover all the goods and services included in the alphabetical list or not (the OHIM is currently working on a user friendly way to do this).

• For CTM registrations and pending CTM applications already filed that use the class heading, the Office will assume that it was the Applicant’s intention to cover all the goods and services in the class.

So, shall we all go back to using class headings in the EU?
One should keep in mind that by claiming protection for the entire class heading and all goods therein one is also creating a large target for third party Oppositions and future revocation and cancellation actions.

Due to the already cluttered CTM register in combination with the national trademark registers, national trade name registers, unregistered trademark rights and all other national rights that are possible grounds for opposing/cancelling one should in this humble attorney’s opinion be careful with class headings. This unless one is dealing with a very distinctive and original trademark or the client has interest in a wide sphere of goods or services.

In my experience Oppositions and later actions can often be avoided if a combination of wider terms and more specific terms that clearly show what goods or services the applicant intends to use the trademark for is used.

Kristian Martinsson, Attorney at Law 

 

ZLATAN, ROONEY and EURO 2012 – Protected as Trademarks

EURO 2012 is indeed on-going and now it is time for the exiting quarter-finals. Huge investments have been made for the tournament and companies are using various branding strategies to become connected to EURO 2012. However, in these times it is more important than ever to discuss with your marketing departments how you are going to market your company and/or your products.

First of all, it is important to note that many names relating to EURO 2012 and football players are registered trademark rights. Naturally enough, football players are significant brands for their national teams, their club teams and above all for themselves in the football industry, which is why it is not very surprising that many of them have registered their own names as trademarks.

For instance, Zlatan Ibrahimovic, playing for the Swedish national team, has registered the Community Trademark registrations ZLATAN and ZLATAN IBRAHIMOVIC for a wide range of goods and services such as: perfumes, hair care products, razors and shavers, computer programs, vehicles, watches, clothing, beer and entertainment. Another example is Karim Benzema, who is playing for the French national team who also has registered his name Karim Benzema as a Community Trademark.

Furthermore, Wayne Rooney has a number of Community Trademark registrations including ROONEY, WAYNE ROONEY and ROONEY STREET STRIKER (figurative). Wayne Rooney has taken the protection of his brand a step further and also registered the autograph of Wayne Rooney himself as a figurative mark.

It can be noted that UEFA has taken a wide approach in protecting the brands surrounding EURO 2012. The trademark EURO 2012 is registered for more or less all kinds of goods and services. EURO 2012 may possibly seem to be a generic term, but it is a registered Community Trademark.

Even though all players and brands connected to EURO 2012 are not registered as trademarks, it does not mean that they cannot claim some kind of protection. For instance, some of them could be protected as unregistered trademark rights, so called “established rights” if they are sufficiently famous. Furthermore, the Swedish Marketing Practices Act protects for instance the reputation of famous brands, names, products or business, as well as misleading advertisements, which could be applicable in case a company is using certain famous brands, without the permission of the person behind the brand. In addition, the Swedish Act on the Use of Names and Pictures in Marketing (Lag (1978:800) om namn och bild i reklam) prohibits the use of the name or picture of a person in advertising (without their consent) in Sweden.

The risk of not respecting the above mentioned registered and unregistered rights are trademark infringement, infringement of the Marketing Practices Act and the Act on the Use of Names and Pictures in Marketing, which could end up in tough negotiations or even litigations, legal costs and “bad” publicity etc.

Hence, as always and indeed in relation to EURO 2012, it is crucial not to brand your companies together with already registered trademarks, famous players or other companies who can claim certain intellectual property protection or the like. The most famous “names” are generally already registered trademarks, or have the possibility of claiming some other kind of protection.

Let the games go on..

Helena Ribbefors, Attorney at Law
Martin Tranälv, Attorney at Law

Consumers love counterfeits. What went wrong?

At Awapatent we are dedicated people: to our clients and to IP, Intellectual Property. This dedication means that we not only pride ourselves on giving the best advice and see ourselves as our clients’ partners, but being experienced in tailoring IP-strategies for our clients we regularly encounter the question on how to stem the tide of counterfeits, where to set the bar and how to best get value for money.

We also have an opinion on IP. IP legislation is not static. It evolves and – in an ideal world – should mirror the values of society. As advisors we also voice our opinions and comments to the debate.  

In the wake of this it seems that a debate has indeed stirred something in – or at least put focus on – the area of private “holiday-imports” of counterfeits: the fake watch / sun glasses / clothes / bags / shoes from the local market on your holiday.

For some years now many DVD movies have commenced with a “scare-off trailer” against copying like “You wouldn’t steal a car…?” It is doubtful that these scare tactics have much – if any – effect. Various copy prone businesses, for example the music business, have tried this unsuccessfully over the last decades. As the recent article in Danish national newspaper Berlingske shows, you cannot hope to change the pattern if people do not themselves see the value in the brand or product – and indeed are aware of the organized crime or drug dealing business that often is behind counterfeit products.

Here’s a thought: think long term. Do not scare off your potential costumers but focus on value and perhaps ethics. Your products can stand for themselves but do you remember this aspect in the implied value that should surround the product?  Have you incorporated this in your IP-strategy? If you cast a look at the music industry it has certainly not been successful in stopping counterfeits or illegal downloads. This in spite of vast sums spent on this. So you should also look at your competitors if they are using scare tactics: does it work, do you get value for your money?

Thorbjørn Swanstrøm, Attorney at Law

The Danish Supreme Court fights back

On 30 May 2012 the Danish Supreme Court pronounced an interesting judgment in a case concerning imitation of shoes and awarded New Balance a larger compensation than what is normally awarded in such cases. The judgment is an affirmation of the Maritime and Commercial Court’s judgment from 2010. The judgment is a clear signal that Danish Courts – under the right circumstances – are willing to award economic compensation of a not inconsiderable amount.

According to the judgment, the clothing company Bestseller has imitated two different shoe models which were formerly marketed by New Balance. At an earlier stage, New Balance had tried to obtain a trademark registration of their sole and shoe toe, but both the Danish PTO and OHIM rejected these applications. Therefore, it is not a question about a trademark infringement of a sole and a shoe toe. On the contrary, it is a question about an infringement of New Balance’s trademark CHEVRON and PF FLYERS and about slavish imitation of the shoes according to the rules of the Danish  Marketing Law.

In the present matter, New Balance has stated that one of their shoes is a re-design of one of their previous models and that the other shoe is a modern version of a classic shoe. They have argued that the shoes have a history and that among other things it is a question of well-considered details, well-defined proportions and elegant appearance as well as a deliberate and characteristic choice of material. According to the Court those exact conditions are decisive for their conclusion that New Balance’s shoes are characteristic and they also express an independent creativeness to such an extent that they are protected against counterfeit according to the Marketing Law §1. As a matter of fact, the Court finds that Bestseller’s shoes are slavish imitations of New Balance’s shoes, in spite of the fact that a few details on one of the imitated shoes are not identical with, but have a strong resemblance to, the original.

The Court finds it proved that Bestseller have produced their shoes with New Balance’s shoes as models and that Bestseller have had the intention to seize upon the design of the original shoes and to bring counterfeit shoes to the market. In addition, the Court points out that Bestseller, with their knowledge of the market, including the trend-setting designs, is the closest to bear the risk that it is a question of an imitation. Thus, the Court states that the fact that the shoes are being produced in China by a sub-contractor does not exempt a company from responsibility, when the product is sold in Denmark.

After a general assessment the Danish Maritime and Commercial Court set the compensation and remuneration to 2.5 million Danish Kroner. To this must be added the costs at around 203,000 Danish Kroner. The Supreme Court affirmed this judgment with an additional payment of 256,000 Danish Kroner in costs. In total, the compensation, remuneration and costs amount to around 3 million Danish Kroner. This is a quite larger compensation than what has typically been given in previous cases.

My opinion is that the amount of the compensation is closely related to the specific existing circumstances, namely especially the obvious intention and that it was a question about a completely slavish imitation of the two models of re-designed, trend-setting shoes as well as an infringement both according to the Trademark Law as well as the Marketing Law. I am pleased to see that the Danish Maritime and Commercial Court and the Supreme Court in this case have sent a strong signal by awarding a large economic compensation. 

Henriette V Rasch, Attorney at Law