IPR newsletter. February

Transcription

1 February 2013 IPR newsletter This is Accura s newsletter on current intellectual property issues. The articles are written by Accura s IPR Team.

2 (Made in China) Due to China s rapidly developing economy, large industry and vast export, an increasing number of western companies try to enter the Chinese market, gain market shares and/or move their production to China. In Europe and most other western countries, trademarks are protected by either registration or by use. In China, trademarks are only protected if they are registered with the Chinese trademark authorities. The protection is based on a first-to-file principle, wherefore no evidence of prior use or ownership is required in order to obtain registration. This allows registration of foreign trademarks open to third parties. A third party registration will prevent the foreign trademark proprietor from enforcing its trademark rights against actions that would otherwise be considered infringing, and a third party registration might even result in the proprietor being liable for damages due to use of the trademark. If you decide to register your trademark with the Chinese trademark authorities, it is our experience that it is beneficial to register both the English and any Chinese language translations of the trademark as well as any appropriate internet domains. As China joined the Madrid Protocol in 1989, which requires reciprocal trademark registration for member countries, trademarks can be registered in China through an international trademark registration. However, in some situations and in order to obtain a broader protection, we recommend opting for national trademarks in Chinese characters. If you are considering entering the Asian market, it is important to note that a Chinese trademark registration does not include Hong Kong, Macao, Singapore and Taiwan, wherefore independent trademark registrations must be made in each additional jurisdiction. The foreign trademark proprietor is consequently at risk of being prohibited from using its own trademark in China, and as use also includes production under the specific trademark, foreign companies may consequently be prohibited from moving the production to China if the trademark is already registered by third party. It is our recommendation that new market entrants must have an IP protection strategy in place before entering the Chinese market or even before entering into negotiations with local contacts and manufactures. Registration of a proprietor s trademark before the trademark becomes visible in the market is the best way of ensuring that the trademark is eligible for protection under Chinese law, and ensuring that trademark infringement can be remedied through local authorities. 1

3 Four new countries join the international Madrid Trademark System In 2012, Colombia, New Zealand and the Philippines joined the International Trademark System (the Madrid Protocol). In February 2013, Mexico will also join this global trademark filing and registration system as one of the first Latin American countries. The Madrid Protocol provides a more simplified process for companies looking to protect their mark in multiple countries. Companies can file a single application in one language, with one set of fees at a minimal cost. This often means that no local representatives are required. Consequently, trademark owners in Madrid Protocol countries can now designate Colombia, New Zealand, the Philippines and/or Mexico using their own trademark offices with the application for international registration passing through WIPO to the national trademark office. This saves both time and money when doing business internationally instead of filling a national trademark application in every single jurisdiction. If you already have an existing Madrid Protocol registration and have an interest in any of the above countries, we recommend that these be added to the registration by way of a subsequent designation. 2

4 To be a slogan eligible for community trademark protection or not to be Slogans are often the first line of communication with the consumer. Moreover, they represent significant investment and effort by companies to draw consumers to their products. Due to this, we frequently receive questions on what it takes for a slogan to be protected as a trademark. The short answer to this would be that in order for a slogan to obtain protection as a Community Trademark, it must have adequate distinctive character. This however leaves you with yet another question: What does distinctiveness entail? The European Court of Justice has on several occasions had the opportunity to set out guidelines for a slogan s trademark eligibility. First of all, in the case of Audi v OHIM (C-398/08 P) regarding the slogan Vorsprung Durch Technik, the ECJ held that slogans are not necessarily devoid of any distinctive character just because they convey simple, objective messages. Distinctiveness can be obtained if they are capable of indicating to the consumer the commercial origin of the goods or services in question. This can be the case if they are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring some interpretation by the relevant public, or setting off a cognitive process in the minds of that public. Since this is not always the case, it can therefore sometimes be recommendable to incorporate the name of the product or the company in the slogan to ensure registration as a trademark. Most recently, the ECJ has confirmed and elaborated on this principle in the case of Smart Technologies ULC v OHIM (C-311/11 P, July ), and added some additional criteria. Accordingly, the slogan must be capable of identifying the product, in relation to which registration is sought, as originating from a particular company. The assessment of distinctiveness must be made by reference to the goods or services for which registration is sought, and by the relevant public s perception of the mark. The court made it clear that the fact that a slogan has a laudatory connotation does not preclude it from being used at the same time as an indication of the origin. This double purpose has no impact on the distinctiveness of the mark. The ECJ went on to consider that the fact that the relevant public is specialised and has a higher level of attention and knowledge than the average consumer is not in itself sufficient to justify a milder assertion of the distinctive character. On the contrary, the attentiveness of the relevant public is only one of the several criteria to be assessed since distinctiveness has to be measured taking into account an overall impression. The ruling furthermore stated that treating slogans differently from other signs by applying stricter criteria, such as requiring them to display imaginativeness is out of the question. Slogans do not directly designate a good or service, but support it in commercial terms by enabling the public to link a slogan to a specific company. They therefore form a specific category of signs which is why it may be more difficult to prove the required distinctiveness, as it is also the case for three-dimensional marks. 3

5 When to use and TM The symbols and TM have their origins in American administrative standards. In the EU regulation, no provisions require the use of the symbols in order to obtain or maintain the right to one s trademark, registered or not. However, as an owner of a trademark you have the right to use the symbols if you wish, the symbol when the trademark is registered and the TM when it is not, but when you consider use of a sign to be your indication of origin ie product or service identifier. Furthermore, it is recommendable that the symbols are used in order to protect the trademarks from becoming a generic term for the goods or services in question, or from becoming a mark open to third party unauthorised use, as it has been the case with such trademarks as Kleenex, zipper, vaseline and escalator. Using the symbols indicate to third parties that your trademark rights are subject to protection. As a registered trademark owner under Danish law, you may request that the trademark is followed by the when used in encyclopedias, handbooks, and similar academic writings. This provision exists in order to protect the registered trademarks from this genericization, as the lexical use of trademarks is particularly dangerous, since it can be perceived as an indication of the word s generic character. 4

6 Proof of genuine use what can you do An earlier mark will be considered to have been put to genuine use if the mark has been used as a badge of origin in relation to the relevant goods or services in order to create, or retain, a market for those goods and services. As highlighted by the General Court in the case Süd- Chemie AG v OHIM (T-312/11, June 2012), concrete and objective evidence of genuine use must be presented. However, it is not necessary to prove that the earlier mark has had substantial success or has been widely exploited, as well as no requirement for a minimum amount of use is laid down. It is important for trademark owners, who have passed the hurdle of registration, to use their marks in their relevant market in an open, public and commercial way, and to keep detailed records of such use. Mere promotional activity is not always enough to prove genuine use. To strengthen a case in question in any future proceedings where a trademark owner may be required to prove genuine use, we recommend that all trademark owners among other things keep records for the past five years of: Invoices to clients or customers clearly displaying the trademark and a description of the nature of the product or service, socks, shirts, pharmaceuticals, advisory services etc. marked on the invoice together with the trademark Photographs identifying the product contained within the packaging, also marked with the trademark Duly dated marketing material, e.g. prints from the internet on an on-going basis marked with the relevant date and showing the trademark in relation to ALL goods and services subject to the registration. The geographical scope of the use is only one of several conditions to be examined collectively, when considering genuine use of a Community Trademark. The use of a Community Trademark in one single member state will generally be sufficient to document use in the entire Community, as certain barriers naturally exist within the internal market, such as language, which make access to certain parts of a particular market more difficult. Therefore use in one single member state may satisfy the conditions both for genuine use of the Community Trademark and for genuine use of a national trademark, but it is an argument that is often raised in proceedings, typically from larger memberstates. It is our recommendation that due care and diligence is taken in relation to use of your trademarks once they are registered and that your company ensures to use the marks as registered in relation to the goods and services protected, and that all marketing material is duly dated and kept on file for at least 5 years. Further, it is our experience that the national authorities, when considering use, are especially keen on documentation showing actual sales of the products and services ie by way of invoices. In this connection it is relevant for the invoice to clearly show the trademark, specifying exactly which products or services have been sold. 4

7 Fake invoices now with warnings As mentioned in our newsletter in February 2012, we see that almost all of our clients receive invoices from foreign entities relating to design registrations, domain names or trademark applications, e.g. reproduction of a trademark or other registration in an international publication of trademarks (which is typically never published). The invoices are worded and set-up so as to give the recipient an impression that there is an official fee to be paid and the invoices even warn the recipient of fake invoices, e.g.: Please be aware that such invoices have no relation to our work or the official offices work when registering an applied trademark. The invoices are fake and must be ignored. Only invoices sent directly to you from Accura are to be paid. Please always contact us if you are in doubt. 5

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