MAIN THEME: OVERALL FUNCTIONING OF THE EUROPEAN TRADE MARK SYSTEM
CASE LAW COLUMN
INTERNET COLUMN
We thank all the authors for their contributions. We also take this opportunity to especially thank the editors Claire Lazenby and Sandrine Peters, Members of the ECTA Publications Committee for their marvellous work in reviewing the articles.
Please note that the views expressed in the articles are those of the author(s) and do not necessarily represent the views of, and should not be attributed to ECTA
MAIN THEME: OVERALL FUNCTIONING OF THE EUEOPEAN TRADE MARK SYSTEM>
The Swedish Patent- and registration Office (PRV) is one of many national Offices in the EU providing for the registration of patents (PCT authority since 1978), designs and trade marks. In addition, the Office issues certificates for periodicals and administrates the change of personal names. The authority´s business has been conducted since 1892, although great changes have taken place over the years. In addition to being in charge of the various registration procedures, the Office is now committed to several forms of international cooperation with other organizations such as WIPO, EPO and OHIM. Furthermore, the Office provides for educational services within all areas of intellectual property rights and the transfer of Swedish knowledge to developing countries and countries in transition. A large proportion of the PRV’s affairs are the conduct of programmes aimed at getting countries to adjust their legislation and administration to meet international agreements, in a way that suits their specific conditions. PRV is proud to be one of few patent authorities that has a quality certificate (ISO 9001) for its whole operation.
The professional consultations provided by the national IP-Offices are easily accessible for domestic users and, of particular importance, provided in the language of their member state. Many companies, especially SME´s, operate only at national level, why their needs may be fully satisfied with domestic trade mark protection. If a company´s expansion calls for international trademark protection, the Madrid System offers a simplified route to protection in multiple countries by filing a single application to their national Office. For small companies in particular, the advantages of using a local IP-Office are obvious. READ MORE
Laws and implementing regulations are regularly amended. Times change, technology advances, new requirements emerge and old ones disappear. And the task of the legislator is to ensure that laws and regulations reflect these changes as closely as possible. The regulation of intellectual property in the Benelux is a fairly inscrutable process, in which different bodies have various tasks and are dependent on one another. Furthermore, the market has a large number of different proposals to consider, some submitted quite a while ago, others more recently, and anyone who is not directly involved in these processes on a day-to-day basis could easily lose their way. Hence the aim of this article is to provide some clarity regarding the existing procedures and bodies, and to examine the development of the various new proposals. READ MORE
European trade mark law consists of the Community trade mark (CTM) system established by Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (Community Trade Mark Regulation – CTMR) administered by the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) in Alicante and the partially harmonised 25 national trade mark systems in the 27 EU Member States (MS) The legal basis for the harmonization is First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (Trade Marks Directive – TMD). Both the Community Trade Mark Regulation and the Trade Marks Directive have been replaced, in 2008 and 2009, by codified versions.
Under the system, national and Community trade marks coexist, and the same trade mark may be registered as a CTM and as a national mark. Numerous rules govern the relationship between national rights and Community-wide rights. As a general principle, the earlier right prevails over any later conflicting right, with CTMs being Europe-wide in scope and thus applicable in all Member States, whilst national rights, being valid only in the respective territory, preclude the acquisition of conflicting later CTMs. READ MORE
As early as 2007, and probably earlier, discussions commenced for a study on the evaluation of the Community Trade Mark (CTM), as more than ten years had passed since its introduction. It took some time, however, to put the project in motion, partly due to the Commission being occupied with other important IP issues, such as the community patent.
As we all know, the Study on the Overall Functioning of the European Trade Mark System (the Study) was published at the beginning of this year. It was carried out by the Max Planck Institute for Intellectual Property and Competition Law in Munich (MPI), dated 15 February 2011 and based on the questions in the Commission´s Invitation to tender no MARKT/2009/12/D. Taking into account the fairly short time available for conducting the Study it can be considered quite comprehensive and thorough. It in particular established a long-needed platform for further discussions and put an end to at least some arguments lacking empirical grounds. Many issues need, however, further investigation. READ MORE
The ongoing debate within the IP world about the implications of a single EU market on trade mark conflicts, particularly between CTMs or between a national mark and a CTM, has been a major issue in the past years and the Max Planck Study on the Overall Functioning of the European Trade Mark System (hereinafter The Study) of course takes it into account.
The purpose of this paper is to examine oppositions and cancellations where earlier CTMs comprising fully descriptive elements are involved. As The Study points out:
3.83 [The second situation arises] when a CTM is composed of several elements, and one or several of those elements would not be separately registrable as a CTM because they are descriptive or not distinctive in a part of the Community, e.g. in a particular region where a language is spoken in which the mark is considered to be descriptive. In this situation, if the CTM comprises additional elements which render the mark as a whole distinctive the registration cannot be refused (to be continued…) READ MORE
CASE LAW COLUMN
The German company BBY Vertriebsgesellschaft mbH sells erotic articles on the website www.bananabay.de. It is the proprietor of the German word trade mark Bananabay. Another German company, Eis.de, also sells erotic articles on the Internet via its website www.eis.de/erotikshop. In the AdWords referencing service, Eis.de selected the word ’bananabay’ as a key word. This meant that when an Internet user entered the word ’bananabay’ in the Google search engine, an advertisement from Eis.de appeared under the section ’sponsored links’. When this situation came to light in 2006, the Landgericht Braunschweig in its judgment of 7 March 2007 and the Oberlandesgericht Braunschweig in its judgment of 12 July 2007 ordered Eis.de to cease using the term ’bananabay’ as a key word in the AdWords referencing service. These courts held such use to be prohibited since it consisted of using a sign which is identical to a trade mark for goods or services which are identical to those for which the trade mark is registered.
Eis.de filed an appeal before the Bundesgerichtshof. In its decision of 22 January 2009, the Bundesgerichtshof deemed it necessary to refer a question to the Court of Justice regarding the conditions for applying, to this particular case, Article 5(1)(a) of the Harmonisation Directive which gives the trade mark proprietor the right to oppose the use by a third party, without his consent, of an identical sign for identical goods. READ MORE
INTERNET COLUMN
In a landmark decision in Singapore in June, ICANN (Internet Corporation for Assigned Names and Numbers), the body that governs internet domain names, agreed to an opening of the Internet domain name system to allow entities to register at the top level, thus in addition to .COM and .NET for instance, we will soon be able to see .ANYTHING whether that be .PARIS, .LONDON, or .GAY, .MUSIC or .BRAND.
The new generic top-level domains (gTLD) programme is likely to cause an unprecedented shake-up to the domain name system. The ’pre-dot’ era is about to become the ’post-dot’ era - that is to say, rather than having your brand name before the dot, there is now an opportunity for it to appear after the dot and thus carve out a specific piece of the domain name space. There are roughly two dozen gTLDs at present, but soon there will be hundreds and possibly thousands. It will also allow the creation of domain names in non-Latin characters - for example, in Arabic or Greek. Any organisation will be able to submit an application to ICANN for virtually any gTLD, subject to certain limitations. READ MORE
CASE LAW COLUMN
EUROPEAN COLUMN
We thank all the authors for their contributions. We also take this opportunity to especially thank the editors Claire Lazenby and Sandrine Peters, Members of the ECTA Publications Committee and Andrew Mills, Chair of the ECTA Internet Committee for their marvellous work in reviewing the articles.
The views expressed in the articles are those of the author(s) and do not necessarily represent the views of, and should not be attributed to ECTA
Obituary Martin Tierney by David Tatham, ECTA Past President, GB
It is with great sadness that we report the passing of Martin Tierney. He had bravely battled cancer for the last three years but sadly his battle came to an end on 14 March 2011.
Martin was for many years a partner in F R Kelly & Co, one of Ireland’s foremost IP firms. But more importantly, he was the Association’s second President, after Eric Wenman – the ‘father’ and founder of ECTA. He served in that capacity with distinction for 2 years from 1983 to 1984. It was not an easy time. The Association was barely formed and at its first AGM the attendees could fit around a single square table. Also the European Trade Mark system was at least 10 years from being established. The struggle to create a viable system was at its height.
However under Martin’s wise management ECTA began to live and to become what it is today – the most important grouping of European trade mark lawyers, and with a voice that is required listening in both Brussels and Alicante. It gave him great joy to see how successful the Association has become.
Martin continued to attend ECTA’s Conferences long after he had retired, so that he could meet all of his old friends. His was a familiar figure at these, always accompanied by his lovely wife Grania to whom we extend our deepest sympathy. He very much enjoyed attending these conferences and meeting all his dear friends.
He was a kindly man, with a boundless knowledge, particularly of history – and not just the history of Ireland. He was always kind, always cheerful, and usually with a ready quip. We shall miss him.
His family have asked that ECTA and its members remember Martin and the dedication he gave to it.
MAIN THEME: INTERNET / DOMAIN NAMES
Contributory Trade Mark Infringement by internet search engines for selling trade marks as key words: The Canadian perspective by Christian Bolduc, Member of the ECTA Law Committee, Maxime Hébrard, and Émilie Dubreuil, Guest authors, Smart & Biggar Fetherstonhaugh, CA
The time when Internet search engine providers considered themselves as offering free public utilities is definitely behind us . Nowadays, the most popular search engines like Google, Bing and Yahoo are cashing in on their popularity and, in this regard, rely mainly on advertising revenues. These search engine providers offer various services to advertisers which target specific users. Keyword advertising is one such service offered by the main search engines such as Google (Adwords), Bing (Microsoft adCenter) and Yahoo (Search Marketing).
Keyword advertising consists of selling keywords to advertisers. Search engines may suggest keywords to advertisers through keyword suggestion tools . When a user types a sold keyword in the search field, the search engine will display an ad chosen by the advertiser. Such ads are usually distinguished from the search results and are located in a section called “sponsored results”. The user who clicks on one of these ads will typically be directed to the advertiser’s website and the advertiser will normally be charged a fee every time a user clicks on its ad. READ MORE
EMI v UPC - The decision and consequences for Irish ISPs And copyright holders by Sally-Anne Hinfey, guest author, DFMG Solicitors, IE
EMI v UPC is a particularly controversial intellectual property judgment which the Irish High Court issued in October 2010. The case involved the music company EMI as Plaintiff and the Irish telecom and internet service provider UPC as Defendant. The case presented several questions regarding the legal interpretation of the Irish Copyright and Related Rights Act 2000 (“the Irish Copyright Act”) and the limits of Internet Service Provider (“ISP”) liability for copyright infringement. The decision details the various technologies available to assist in the detection of online copyright theft including DtecNet (which is the system currently being used by Irish telecom provider Eircom in implementing a three strikes protocol). This system allows rightsholders to identify an IP address which corresponds to an internet user who has employed peer to peer technology to facilitate unauthorised/unlawful downloads or file sharing. The judgment also indicated that Irish copyright legislation currently does not provide appropriate remedies for copyright owners in respect of online infringement of their rights. The case also examined the “mere conduit” defence provided for in the E-Commerce Directive 2000 which has so often been relied upon in recent times by ISPs. READ MORE
Searching for trouble, searching for domain names and web content by Sylvain Hirsch, Member of the ECTA Internet Committee, IP Twins, FR
“As long as one keeps searching, the answers come” (Joan Baez, American singer and song writer)
No doubt we all received heart breaking letters from some widow in a cancer’s terminal phase, asking for our help in recovering a fortune held by the brutal authorities of her country (for a very generous reward). This could have made us burst into tears, if it was not a classical “419 scam”, a type of advance fee fraud intended to extort money from victims and letting them think they have been singled out to contribute in a profitable arrangement.
This is just one of the many facets of what is known as the cybercrime scene!
This article, in four parts, intends to provide answers to fundamental questions such as why, what and how to search for the protection of IP rights on the Internet:
- by way of (short) introduction: key dates, key figures, main types of crimes and risks for IP rights owners
- What can be searched on the Internet, and what can be found there?
- How does one search?
- What can be done with the results? READ MORE
Chinese-character domain names: a new source for trade mark infringement? by Michele Ferrante, Member of the ECTA Anti-Counterfeiting Committee, Schmitt zur Hohe & Ferrante, CN
For many years now, foreign companies have been aware of the need to register the Chinese version of their trade mark (either a transliteration or a translation) when entering, or planning to enter the Chinese market. Many foreign companies have learned the hard way that the registration of the trade mark in its original language is not enough to keep third parties from registering the Chinese version of that trade mark and exploiting its hard-earned reputation.
With domain names, on the contrary, until recently this concern was off the table; even though domain names could be registered in Chinese characters, until 2010 these domains were not supported by international Internet Service Providers, so in general, it was enough to secure the .cn domain name in Latin characters. However, now that Chinese-character domain names have been inserted into the international root domain name system,1 with the extensions .中国 (zhong guo, meaning China), .香港 (xiang gang, meaning Hong Kong) and .台湾 (tai wan, meaning Taiwan), equivalent for .cn, .hk and .tw, respectively,2 the story might be different.
In order to determine what are the implications for foreign companies of fully allowing Chinese-character domain names, we will first briefly examine the decision of the Internet Corporation of Assigned Names and Numbers (“ICANN”), the entity responsible for managing the internet’s domain name system, and then we will take a look at Chinese regulations for domain name registration. READ MORE
Net Neutrality? From Wikileaks to Trade Marks by Fabio Angelini, Chair of the ECTA Law Committee, De Simone & Partners, IT
On the internet no one can see you are a dog….
Perhaps few now recall the above seminal and yet transfixing joke which surfaced at the dawn of the millennium and before the infamous internet bubble burst about the multifaceted reality of cyberspace. Even fewer ever understood the magnitude of the changes which our global society would undergo as a result of the nature of being connected.
No sector has gone unscathed, untouched, unchanged by it. But one principle has stood (until now) more or less firm: the principle of net neutrality meaning that there should be no restrictions by internet service providers and governments on content, sites, platforms, the kinds of equipment that may be attached, and the modes of communication. The idea is that all internet traffic should be treated equally. READ MORE
Recent developments in domain name regulations in Macedonia by Zivka Kostovska-Stojkovska, Guest author, PETOŠEVIĆ, Macedonia
If you wanted to register a “.mk” domain in January or February this year, there was no way for you to do this. For nearly two months, from December 2010 through most of February 2011, it was not possible to register “.mk” domain names as no relevant body had been appointed to conduct domain name registrations.
Over the last six years, until December 2010, “.mk” domain names were registered by the Macedonian Register of Domain Names (MarNet), which operated under the auspices of the Kiril and Metodij State University. Domain registrations were regulated according to the Book of Rules adopted by the University in 2004.
Despite the fully operational register MarNet, on September 15, 2010 the Government of the Republic of Macedonia adopted the Law for Constitution of (new) MarNet, transferring MarNet to the Ministry of Information Society and Administration. The Law entered into force on September 23, 2010. The Government was expected to implement the Law for Constitution of (new) MarNet within 30 days from the date the law entered into force. However, this was not done.
Moreover, the new law did not prescribe abolishment of the previous Book of Rules nor did it say anything about the fate of the old MarNet register functioning under the University. READ MORE
Unfair competition against competitors from abroad - Misuse Of The German Top Level Domain by Dr. Lambert Pechan, Member of the ECTA Anti-Counterfeiting Committee, DE
For companies and organisations operating in international business, the top level domains .com, .info, .biz and .org are the most important and preferred domains. Nonetheless, the German “.de” domain remains highly relevant for those companies which rely on and maintain close customer relations for national services rendered in Germany. Certainly, many companies face the problem that they cannot obtain registration of their company names as .de domain names because professional domain dealers have already registered them, in anticipation that they can then receive significant sums of money to sell the .de domain name registrations to the companies which want them.
These issues have affected foreign companies expanding their business into Germany for quite some time. In many cases, companies attain worldwide recognition for their names before they have registered them worldwide as trade marks. And then find that they need to pay significant sums to professional domain name dealers in Germany because they failed to register their names in Germany as trade marks. This problem is not of course unique to Germany, but Germany’s lack of a UDRP service – thus making the courts the only forum in Germany for cancellation of a domain name – means that this problem is particularly difficult to solve for .de domain names. READ MORE
Evaluation of Domain Names - Part II (see ECTA Gazette April 2010 for Part I) by Massimo Cimoli, Vice-Chair of the ECTA Internet Committee, De Simone & Partners, IT
In the first part of this article, we try to establish some order in a complex subject matter by dividing business domain names into two groups: the Company’s Flag and the Selling Champions.
In the second part, we offer a practical guide on how to evaluate a domain name by indicating the general criteria to be applied when assessing the value of a domain name. We will only consider the Company’s Flag domain name because the Selling Champion – that is, domain names which are used to sell products – may generally coincide with the value of the underlying trade mark or can be assessed through the same principles and criteria used in evaluating a trade mark. In other words, the value of AMAZON.COM and the AMAZON trade mark tend to be similar or it may be that the value of the domain name would be even more important than the trade mark itself which ends up having a sort of legal back-up function for the domain names. Usually the value of the trade mark is much higher than the value of the related domain name. READ MORE
CASE LAW COLUMN
Referral to the Court of Justice... and then? Ansul case of 11 March 2003 (C-40/01) by Jean-Jo Evrard, Chair of the ECTA Publication Committee, Darts-ip, BE
Readers of the ECTA Gazette are well aware of the import of the Ansul judgment, which is a reference case cited very regularly by both the Court of Justice and the national courts when reiterating the principles for evaluating ’genuine use’ of a trade mark.
But what might be much less well known is that, after the Court of Justice ruling, the Court of Appeal of Amsterdam held that Ansul had made genuine use of its mark MIMIMAX for fire extinguishers, even though Ansul had manufactured no new fire extinguishers during the relevant period. The use which Ansul had made of MINIMAX on parts for the extinguishers and the services of maintaining and repairing the extinguishers was held genuine use of the mark for the extinguishers themselves.
This article gives the full history of the Ansul decision, before, during and after the Court of Justice ruling. READ MORE
The principle of undistorted competition and the unresolved tension between registrability and scope of protection by The ECTA Law Committee
The recently released Max Plank Institute (MPI)’s Study on the Overall Functioning of the European Trade Mark System, which is now being studied and deeply analyzed by the many players of the game, is, in our view, particularly remarkable not only in its conclusions –which may or may be not be shared and which we fear will be the main focus of the analysis - but in its preliminary observations on the fundamental (at least in our eyes) issue of the relationship between trade marks and competition (pages 50-64).
The MPI identifies in the principle of undistorted competition a fundamental teneat of any interpretation of trade mark law: We quote “As far as the limitation of rights is concerned the principle of undistorted competition calls for an assessment focusing on a balance between the interests of trade mark protection and free movement of goods and services within the internal market, and the interest of other market actors to use a sign for legitimate purposes in accordance with honest practices….. The concept of undistorted competition as a guiding principle for interpretation of European trade mark law is not a one-way approach towards a protection scheme being faced with limiting effects only. Undistorted competition requires a basically strong and firm protection of trade marks that takes into account both the interests of the trade mark holders and the interests of competition. Under the roof of the principle of undistorted competition European trade mark protection has, based upon the case law of the ECJ, developed into a direction that emphasises the links between trade marks and their impact on competition” (pages 50-51).
This approach is not new, but it is perhaps important to keep it as a guiding light which should be acknowledged and followed by all stakeholders of the trade mark systems. Perhaps as a result of increasingly tight economic conditions, of recurring worldwide recessions which strike with alarming regularity, of the increasing aggressive entry of new countries’ economies in the world market, countries that offer goods and services at prices which reflect, by and large, working conditions which would be unacceptable in any Western country, trade mark rights are more and more used as anticompetitive instruments rather than fulfilling their role to foster internal growth. In this regard, the recent Court of Justice case law shows some illuminating examples of the disconnect between registrability and scope of protection which are, if one thinks about it, the practical battleground of the theoretical conflict between trade marks and undistorted competition. READ MORE
All U.S.A. Intent to Use (§1b), Non-U.S.A. Registration (§44e) and Madrid (§66a) cases at risk from renewed strict reading of "bonefide intent to use" Requirement: Honda Motor Co. Ltd. v. Friedrich Winkelmann by James Michael Faier, ECTA Members, Faier & Faier P.C., USA
More than 60% of the trade mark applications filed in the United States Patent and Trade mark Office (USPTO) may have a fatal flaw. A federal trade mark applicant must either prove use of his trade mark or declare a "bona fide" intention to use his trade mark at in his application at the time of filing. This bona fide requirement is for Intent to Use (§1b) and foreign registration (§44) applicants. "Bona fide" requires documentary evidence of intent says the USPTO’s Trade mark Trial and Appeal Board (TTAB).
In the case of Honda Motor Co., Ltd. v. Friedrich Winkelmann, 2009 WL 962810, 90 U.S.P.Q.2d 1660 (TTAB 08 April 2009) (Opposition No. 91170552), Honda opposed Winkelman’s application to register "V.I.C." for vehicles and parts therefore. Honda won on a Motion for Summary Judgment. Winkelmann claimed both §1b and §44 filing bases. Honda argued that as a matter of law Winkelmann’s application was void from its start because applicant lacked a bona fide intent to use when he filed his application.
Honda buttressed its argument with discovery responses from Winkelmann. Honda asked Winkelmann for his business plans, strategies, arrangements, methods used by applicant in connection with the use of, or intent to use, the mark for the identified goods. Honda also asked for the channels to be exploited. Winkelmann responded that he had no activities in the U.S. and he had not produced the requested materials for the U.S. market. Asked for documents to evidence an intent to use, Winkelmann responded "Not Applicable." Winkelmann contended evidence of its bona fide intent to use the mark in the U.S. is found in its use of the mark in Europe and through the trade mark applications and trade mark registrations it owned in other countries. Winkelmann provided to Honda printouts from his website in German and provided copies of his German, European, and International (WIPO) registrations. READ MORE
EUROPEAN COLUMN
Concept of the relevant public in trade mark law and in the Community Trade Mark System in particular by Cedric Vanleenhove, Guest author, Assistant-Professor Private International Law, University of Gent (Belgium), BE
The most important goal of a trade mark is to create a connection between the trade mark owner and his potential customer. On the supply side of the market, trade marks are used by corporations to distinguish their products from those of rival companies. On the demand side, a trade mark helps consumers to make a choice between a whole range of similar goods. Trade marks consequently constitute an essential element in the success of free competition.
A mark however only exists through consumer perception and it is therefore crucial to know in what aspects of (European) trade mark law the relevant public plays a role and – more significantly – how to interpret this concept. In practice we see that the search for the average consumer receives only minor attention and involves nothing more than the reciting of a few of the mantras the European Court of Justice (ECJ) uses in its case-law. The need for more clarity about the relevant consumer is reflected in the fact that the Office for Harmonization in the Internal Market (OHIM) internally sometimes refers to this person as the ‘mystical animal’.
The concept of the relevant public can be found in various places within European trade mark law: distinctiveness, acquired distinctiveness through use, likelihood of confusion and the degree to which a mark is well-known are probably the main instances. As the approach to the relevant public is identical in each of these instances this article will analyze the notion of the relevant consumer in depth without going into its various habitats. READ MORE