Tag:  “Trademark”  | (12) posts

Cookyright…? Cookieright…? huh…?

A couple of years ago a successful German chef with a restaurant in Rome called for protection of recipes. And was laughed out. But consider this: over the last ten years cooking has evolved into big business. Television chefs like Nigella Lawson, Jamie Oliver, Claus Meyer, Tim Mälzer, Ernst Kirchsteiger, Gordon Ramsay, Alain Ducasse and Tina Nordström have all become familiar household names – internationally for some or nationally for others. For some television networks and publishers they are a huge export.

So considering this, didn’t the German chef have a point? One of the purposes of IP is to encourage and facilitate development for the benefit of society and economy, and to protect human creativity.

In May this year in New York City local patissier Dominique Ansel put his ingenuity to work and struck a chord with the American sweet tooth: he invented the Cronut, a cross between a croissant and a doughnut. Amazingly, it has quickly become the stuff of legends: the things, of which the patisserie can only produce 200 a day as the process is quite laborious, sells out by 8 in the morning and people are queuing from 6. Black market prices (!) are up to $80 a piece.

© Dominique Ansel (Cronut). © Jeff Glasse (Line)

Mr Ansel has applied for trademark registration for the name CRONUT, which has caused quite a few raised eyebrows. Clearly Mr Ansel is more than just a baker. He has struck gold and is thinking ahead by protecting the trade name. Unfortunately, outlook is that New York will see all sorts of knock-offs of the Cronut and all that is left will be the name. Already, Dunkin Donuts have tried a knock-off in South Korea.

As IP-advisors we always stress that there is no legal protection for concepts. But should that really be set in stone? Chefs can rely on trade secrets or copyright for protection but really this is not a satisfactory protection. Copyright protects mainly works of art and creativity. Yes, you can argue that a recipe is a work of art, albeit with a narrow protection but there is more to it than that. I think most will agree that a chef who develops his/her own recipes does invest a lot of skill and labour in it. Then one must also take into consideration the whole universe surrounding this: television shows, books, appearances in shows, cookery lines etc. One can easily argue that such things have become so important both culturally and for society economics that this can be a thing that society should have an obvious interest in protecting through IPR. Here, copyright is just too cumbersome and inflexible. As for Mr Ansel from Manhattan, would it not be fair to let him reap the fruits of his ingenuity – as any inventor? And reward him for the flurry of activity and increase in turnover he has caused in the world of baked-goods?

Things change around us, and some things require mentalities and perspectives to change. Does current IPR reflect current society and how creativity is manifested and commercially exploited? Do we not have a need for protecting things like Dominique Ansel’s Cronut?

Personally, I think IPR should be alive, evolving and above-all reflecting the balance between society’s need for protecting incentive and inventors’/creators’/businesses’ need for protection.  Therefore we should not refrain from discussing these matters, nor accept that things seem to be set in stone.

Cookyright? Even Cookieright? Bring it on, I say!

Thorbjørn Swanstrøm, Trademark and Design Attorney, Attorney at Law, Partner

I have seen it on TV… so it must be true

Once upon a time most of us believed that everything seen or told on television was true … and still news and programs from the national television stations in Denmark are perceived as trustworthy sources. The credibility is actually so important that others try to exploit it.

Many of you may have seen the Danish television documentary program “KONTANT”. In May 2013 this program showed how easy it is to be tricked – you believe that you take part in a free competition, but actually you commit yourself to a subscription for products such as weight loss pills etc. The aim of the program was to warn people against these kinds of tricks and subscriptions which are sometimes extremely difficult to get out of.

One of the tricks used by the sales companies is to write “As seen on TV2” or “As seen on DR1” showing the logos of these two Danish television stations. The intention is to make the products more trustworthy. Typically, the products have not been shown on these television stations, nor have the owners of the logos given their consent to the use of the logos according to “KONTANT”. To such extent the use of the logos – or trademarks, actually – may be an infringement.

The Danish trademark law and the EU legislation are very specific at this point. The main rule is that a trademark may only be used by the owner or someone who has a consent to the use of the trademark. However, other parties’ trademarks may be used, if necessary, to inform possible buyers that a certain product fits with another product. This rule is often used in connection with spare parts, but recently it has also been applied in connection with for example accessories for mobile phones, tablets etc.

In my opinion, using the trademarks as described above, is an infringement of other parties’ trademarks provided that no consent is given. The interesting thing is that this is still a rather new variation of infringement and that this is attractive due to the original intention, namely recognition of the trademarks used. Trademarks are valuable assets and owners thereof must take care that this value is kept on their own hands. 

Henriette Vængesgaard Rasch, Attorney at Law 

Playing with Trademarks – Watch Out

If you ask us, we will say that you shall register your trademark as you use it and use your trademark as you have registered it. However, as times goes by you may prefer to play a little with your trademark and to make minor changes without filing a new application. You may for example prefer to delete the vowels or to use the trademark as a verb. From a marketing perspective this may be a good idea. It provides attention to the trademark and hopefully the trademark is top of mind in your market segment.

From a legal perspective, the idea may not be so brilliant. What is the risk? Well, first of all you may risk having no protection for the trademark you spent money on marketing. In most countries, someone else may therefore register “your” trademark without vowels or the other changes as soon as you have spent money on marketing and leaving you with limited chances to stop this – simply because you have no trademark rights to the trademark you have used. The assumption most certainly is that this was not the intention.

Another problem may be that the use-requirement may not be proven fulfilled if you have not used the trademark as it is registered. Case law differs on this point and some authorities accept use of a trademark in a form slightly different from the registered trademark, but most authorities are very strict when evaluating whether the use requirement is fulfilled. In other words, your registered trademark may be vulnerable. The safe side is to use the trademark as registered. If you wish to use the trademark for example without vowels, the recommendation is to register this as a new trademark.  

A variation is to bend the trademark. This often happens when consumers have no other obvious (enough) word for an action. An example is “to google” something. GOOGLE is a trademark and should not be bend when used. Most trademark owners put a lot of effort in finding other words for the relevant actions and to make people use this instead. The reason is that the trademark will risk dilution if used as a verb and of course there is only little mercy if the owners themselves use the trademark as a verb.

Playing with a trademark requires that the trademark has a very strong position and that it is done only to a limited extent and next to normal use. So, dear reader, if you wish to play with your trademark, you must be very aware of the risks. Our advice is to register the trademark as you wish to use it and use the trademark as registered.

Henriette V. Rasch, Attorney at Law, Partner

Excitement in the IP world: Will Danish courts make counterfeit goods more illegal?

I recently wrote about a pending court case regarding an imported counterfeit Rolex watch. The importer, a private person, was well aware that the watch was counterfeit and the import was for private use. Customs ceased the watch and the Maritime- and Commercial Court (High Court) took the novel stand that the watch was barred from release as it would have infringed the rights of Rolex, had it been manufactured in Denmark.

In Danish IP legislation an infringement only exists in the commercial sphere. It is permissible for private people to own counterfeits and even personally import these. Whether a private person may import for personal use via shipment is still not quite settled in law. Therefore, the court’s expanded interpretation of the Customs Regulation is indeed noteworthy. Is the court really taking us to a new and exciting level?

Happily for legal practitioners the decision was appealed to the Supreme Court. Danish courts are traditionally (too?) reluctant in asking the European Court of Justice (ECJ) preliminary questions on the interpretation of EU-legislation. In this matter the Supreme Court has recently decided to ask the ECJ. We can therefore expect an answer from the ECJ at the end of 2013.

If the ECJ confirms the Maritime- and Commercial Court’s interpretation this will mean a significant strengthening of brand owners’ rights and a parting from long-established legal interpretation on this field. It may even mean a need to revise Danish national legislation.

I will also take the opportunity to crudely bang my own drum and refer to my blog post about fake goods in transit. Although not identical this was about related questions. In the two ECJ cases referred (Philips and Nokia) the ECJ answered questions on whether or not fake goods in transit could be ceased and destroyed. A part of these cases was the lack of detailed labeling or uncertainty as to the final destination of the goods. In this Danish matter regarding Rolex there is no question about the final destination of the fake watch. Therefore, we must expect the ECJ to rule on the question on whether or not commercially produced fake goods can be ceased and destroyed when (legally?) imported for strict private use.

Thorbjørn Swanstrøm, Attorney at Law

Counterfeit Goods in the EU – Troubling News but No Surprise

On July 24, the European Commission published a press release concerning its report on seizure of counterfeit goods during 2011 in the EU (see the full report).

It turns out that seizure of suspected counterfeit goods increased some 15 % compared to 2010. Top categories are medicines (24 %), packaging material (21 %) and cigarettes (18 %). China continues to be the main source of origin for these goods (73 %). It is also important to note that out of all detained postal packages, a worrying 36 % concerned medicines.

Sadly, the press release is no surprise. The problem of counterfeit goods is not new and we know it is increasing. The true number of counterfeit goods entering the EU, however, must be many times higher than what the customs authorities manage to seize. This in itself is troubling. More worrying is that medicines is at the top of these seizures, as fake medicines may actually harm people severely. In addition to personal health, fake goods may affect consumer loyalty and severely damage the reputation built up by the brand owner. All in all, the constant and evidently growing influx of counterfeit goods into the EU is a serious problem.

The only positive note is that over 90 % of all the goods seized were either destroyed or brought to court, which indicates that the work of the customs authorities is fruitful. It also shows the importance of filing customs applications to give the customs authorities the best possible information to detect suspected counterfeit goods.

To combat the negative trend of counterfeit goods, right holders need to take an active part in aiding customs authorities to detect counterfeit goods by lodging customs applications to a greater extent than today. Besides this, the EU may wish to establish specialized courts and a speedier and less costly procedural framework for court cases concerning seized goods. Finally, a reverse burden of proof concerning the authenticity of the goods may have a positive impact as well.

Most of all, however, we as consumers must make a stand. Rejecting counterfeit goods, if we can tell they are, will be the greatest weapon against counterfeiting.

Mattias Karlsson, 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

Changes in the Taiwanese Trademark Act

The following amendments to the Taiwanese trademark Act has been announced by the authorities. The effective date is however still to be set by a further order.

Any distinctive identification may be registered as a trademark, including inter alia three dimensional laser tags and the boot screen of a mobile phone. 

Exclusive trademark licenses and non exclusive licenses are clearly differentiated. The holder of an exclusive license has the right, within the scope of the license, to prevent others (including the trademark owner) to use the trademark, to sublicense the trademark and to initiate proceedings against infringements in its own name. The above cannot be done by the holder of a non exclusive license without the consent of the trademark owner.

 The provisions for a deemed trademark infringement has been amended as follows:

  •  It is deemed to be a trademark infringement when using words included in a well known registered trademark as a company name since this will be deemed to be likely to dilute the distinctiveness or reputation of the well known trademark.
  • However the provision that it shall be deemed to be a trademark infringement to use word included in a trademark as a company name will be deleted. The deemed infringement will only apply to well known trademarks.
  • It shall be deemed as a trademark infringement to sell, display, hold, produce, export or import the packaging containers, tags, labels and/or other things related to the service, knowing that the same may be used for infringing acts.

Acts typically constituting use of the trademark has been specified as follows:

  • Utilizing the trademark on commercial documents or advertisements related to the goods and/or services
  • Utilizing the trademark on things related to the provision of service
  • Utilizing the trademark on the goods, or on the packaging containers for the goods and to hold, sell, display, import or export the goods in question

The above indicates that the Taiwanese authorities want to broaden the scope of possible trademarks and clarify some issues that previously might have been ambiguous.

Peter Hermansson, Attorney at Law 

Trademark Infringements in Social Networks

Trademark Infringements in Social Networks

Last year, in 2010, Facebook passed 500 million users. That’s more than the population of USA, Canada and Mexico put together. It is safe to say that Facebook and other social networks are very powerful and important tools of communication in many different aspects, affecting most things from your personal social life to world politics. It is also a great tool for a trademark owner to be used in brand building activities.

Most of all, the social networks are inexpensive and very speedy. A web campaign for your trademark usually costs a mere fraction of an ad campaign on TV or in other media. This is good news for the trademark owner but, regrettably, equally good news for the trademark infringer.

On the web, it is not very complicated to set up a site in a manner and quality equal to the trademark owner’s original site. As a consumer it is sometimes impossible to tell the trademark owner from the impostor. This is particularly true in social networks where the trademark owner’s communication sometimes is of a less professional quality than his communication in other media.

Naturally, trademark infringement in social networks is subject to trademark law and any legal action that is possible “in real life” is in principle possible also for the digital world. However, most social networks have their own administrative procedure and Network Administrator to handle the procedure. In order to become a user of the network you need to accept the conditions of the agreement and you are thereafter bound by the regulations.

The Statement of Rights and Responsibilities of Facebook, for instance, provide tools for a trademark owner to report infringement and request removal of infringing content. This regulation provides a quick and inexpensive alternative to court action. Of course, the only result of such action is the removal of the infringing contents, not compensation or damages, but to get the infringing trademark of the net is almost always the top priority of the trademark owner.

If you are on the other side of the administrative procedure, and you feel that content has been removed from your site by mistake, you may appeal the decision.

A trademark owner is often a strong party in “real life” trademark infringements. Often you face an infringer that is a small size entity or a private person and the trademark owner, as a large corporation, has many advantages when it comes to access to legal assistance, financial strength and endurance, media contacts etc. However, in social networks the individual has a possibility to make their voice heard, quickly and at no cost at all. Before you know it, the message of the individual can be spread around the world, sometimes with substantial effect to your image and brand. This needs to be taken into consideration before you act against a trademark infringer.

Lessons to learn for the trademark owner
1) Question your strategy on how to handle infringement
Most successful trademark owners have a good strategy on how to handle trademark infringement. However, in social networks it is particularly important to be flexible and consider that there may be different aspects to each infringement matter and the end result is more important than that you are strict in following a previously set strategy. Maybe your usual standard type warning letter is far too strict and rigid and maybe you need to examine new means of communication with your counter parties. An overall consideration is the speed of things on the web. If you want to stop the infringer, speed is of the essence.

2) Involve the legal department and the communications department
Generally a trademark infringement is handled 100% by your legal department. However, when it comes to social networks your communications department needs to be involved in the process as early as possible so that they can act against the spread of bad will and do so without delay. It is generally very important to be active in the debate. Silence is very seldom golden in social networks and it is important that the brand owner’s version of a matter is heard and presented in a sound way. Therefore, a close co-operation between the legal department and the communication department is vital throughout the process.

3) Pick your fight and accept that you are not always in control
Naturally, you need to make sure that you act strongly against infringement that is clearly of detriment to your brand. However, cases where you have a little to gain and risk a lot of bad will should be dealt with only after careful consideration and sometimes even left alone. In social networks, you risk a lot of bad publicity if you act unduly rigid and formalistic.

4) Stay true to your values and keep you promises
A good way to avoid criticism and negative campaigns is to be very careful about the values and promises that are incorporated in your brand and to stay true to these values and keep the promises. This way, you can stand tall when you enter debates involving your brand in social networks. Sooner or later, my guess is that you will have become an active user on behalf of your brand.

Kristina Fredlund, Attorney at Law, European Trademark Attorney

When will the Marketing Director and the Board start evaluating trademarks in actual money?

When will the Marketing Director and the Board start evaluating trademarks in actual money?

Hopefully very soon, since the two main obstacles have been erased.

The previous lack of standards for valuation methods is now history by introduction of the new ISO 10668 Monetary Brand Valuation.

An uncertainty amongst management and Board Directors on how to assess trademark valuations due to lack of experience will be viped away by the national adaption of the international IFRS rules on accounting and in Sweden also by introduction of new national rules from FAR, the Swedish Accountants Association. From 2012 all Swedish companies, except the smallest ones, are obliged to value at least all aquired IP being part of the goodwill. This will undoubtably increase the understanding of trademark valuation.

By measuring market activities and aquired trademark positions in actual money, marketing in Swedish companies will be enhanced and actively adding value to the company.

Since I have argued for putting the trademark value on the balance sheet for the last 20 years, I sincerely hope that a financial evaluation of trademarks now finally will be adopted by all companies that are proud of their trademarks.

Stefan Hjelmqwist, Attorney at Law, Awapatent

Is use of a Community trademark in one of the EU member states sufficient?

As is well known, a Community trademark (CTM) must be put into genuine use within five years of the registration date in order to maintain protection. When the Community trademark was launched in 1996, it was decided politically that use “in the Community” was satisfied by use in one member state. This decision was laid down in a Joint Resolution from the European Commission. The European trademark authority, OHIM, decided to follow this resolution in practice and still does today.

Since then, the EU has expanded as a lot of countries, including smaller countries such as Cyprus and Malta have joined. Consequently, it is ever more discussed whether use in one member state remains sufficient or whether it is time to change this practice. In addition, the Court of Justice of the EU has laid down in a case concerning another legal area that a Joint Resolution is not legally binding. Naturally, this has contributed to the uncertainty as to whether use in one member state is sufficient notwithstanding that OHIM adhere to their practice.

Trademarks in Belgium, the Netherlands and Luxembourg are managed by one communal regional authority. In connection with a trademark case (the ONEL case) in Benelux, this authority has made a decision stating that documentation of use in one member state of the EU is not necessarily enough to document genuine use of a CTM.

The reasoning of the Beneluxian authority is that a trademark right is an exclusive right. In order for this right to endure, it must be put into genuine use. Consequently, it would be contrary to the fundamental consideration of trademark protection if the scope of the protection by far exceeds the geographic area in which the trademark is used.

The delivered judgment will most likely be appealed to the Appellate Court in The Hague. In this connection, the Appellate Court will presumably ask the Court of Justice a number of preliminary questions concerning the interpretation of the geographical requirement in connection with documenting use of a CTM. Hitherto, the Court of Justice has ruled that genuine use in Austria could be sufficient in order to document use of a CTM.

So far the ONEL case leaves an uncertainty concerning the existing practice for documenting genuine use of a CTM. For the time being, OHIM adheres to the practice that use in one member state is sufficient. In addition, OHIM has expressed criticism against the judgment in the ONEL case. Supporters of the opposite point of view argue that a CTM must be put into genuine use in all 27 member states. The relevant Danish authority (the DKPTO) believes that the answer must lie somewhere in between.

An important consideration of the CTM system is the fact that markets/countries are open to competition, i.e. that trademark owners do not have to apply for trademark protection every time they enter a new market within the internal market of the EU. In addition, an intensification of the geographical requirements could make it more difficult for smaller companies to achieve and maintain a trademark registration in the EU. Furthermore, the cost of a trademark protection will increase if smaller companies are forced to protect their trademarks nationally in a number of member states on account of the fact that it is uncertain whether their CTM will endure.

We regard a change of the existing practice as a threat under the current CTM System. Consequently, we have worked in International forums at maintaining the existing practice according to which genuine use in one member state is sufficient to document use of a CTM. Of course there is a risk that the CTM register will be filled with trademarks that are only in use in few member states. However, a regulation hereof should be handled differently, e.g. by intensifying the existing practice concerning lists of goods and services.

The entire CTM system is under review by the European Commission this year. In this connection, the Max Planck Institute is carrying out surveys concerning use of a CTM among other things. It shall be interesting to learn if the users of the CTM system demand a clarification of the practice and in such case if that practice will be laid down in a new legislation instead of being left for interpretation by the Court of Justice of the EU. We will be following the progress and hope that the existing practice will be laid down legislatively.

In any case, we will encourage CTM owners to put their trademarks into genuine use in as many member states as possible – and to make sure to save all documentation of genuine use.

Anette Rasmussen, Attorney at Law and Line Wittendorff, Trademark Attorney, Awapatent