Posts Tagged: "EUIPO"

Last week, IPWatchdog selected five significant patent developments in Europe, examining what has happened this year and what can be expected in 2022. Here, we review five of the top trademark and copyright decisions and legislative changes across Europe and what’s coming up in the new year. One of the most significant trademark decisions of 2021 came in a case over Hasbro’s EUTM registration for MONOPOLY. The registration, for goods and services in classes 9, 16, 28 and 41, was declared invalid by the EUIPO Second Board of Appeal on the basis that Hasbro had acted in bad faith. On April 21, the EU General Court upheld that decision.

Is the European trademark system a victim of its own success? This was the question posed by Professor Barton Beebe of NYU School of Law at the Annual Sir Hugh Laddie Lecture at UCL-IBIL on November 9. Beebe argued that “trademark depletion is the most significant challenge the trademark system will face this century” and that, contrary to conventional wisdom,…

On October 25, the European Union Intellectual Property Office (EUIPO) issued a study exploring the growing misuse of e-commerce channels for trade in counterfeits. The report provides a quantitative review of both the expansion of Internet commerce as well as a growing number of counterfeit seizures by border officials in recent years. The EUIPO’s report also profiles common aspects of counterfeit supply chains, as well as regulatory frameworks established to reduce the spread of counterfeits online.

Filing a request for revocation of a trademark, despite a non-challenge clause in a trademark agreement, constitutes an act of bad faith—according to an amicus submission filed by INTA in a case pending before the Court of Justice of the EU (CJEU). The German Federal Supreme Court has referred two questions to the CJEU in a dispute between two formerly related companies. (Case C-62/21, Leinfelder Uhren München.) They had signed agreements in which the defendants in this case undertook not to attack the plaintiff’s trademark, nor to assist a third party to do so. However, a lawyer acting on behalf of the defendants subsequently filed revocation actions for non-use against the plaintiff’s EU trademarks. In response, the plaintiff asked the German courts for an order requiring the defendants to instruct the lawyer to withdraw the revocation actions, and also for damages.

The International Trademark Association (INTA) last week filed amicus briefs before the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal in three cases concerning applications to register EU trademarks (EUTMs) for the words GEORGE ORWELL, ANIMAL FARM and 1984. The  briefs concern the registration of trademarks for names of historical persons/famous authors (the GEORGE ORWELL case) and titles of literary or artistic works (the ANIMAL FARM and 1984 cases). All of the applications were filed in 2018 by The Estate of the Late Sonia Bronwell Orwell (George Orwell’s second wife, who survived him and died in 1980) without evidence of acquired distinctiveness through use.

The latest in a series of reports by the European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO) studying IP-intensive industries and their contribution to economic performance and employment in the European Union has found that companies owning at least one patent, registered design or trademark generate higher revenues per employee than companies that do not own IP rights and pay higher wages on average than other companies. The EPO-EUIPO report is titled “Intellectual property rights and firm performance in the European Union” and builds on research conducted in 2013, 2016 and 2019 regarding the contribution of IP-intensive companies to the EU economy, as well as a 2015 EUIPO study based on data from 12 Member States. The latest report analyzes over 127,000 European firms and compares the economic performance of firms that own IPRs with those that do not.

One of street artist Banksy’s most iconic images—a mural sprayed on a Jerusalem building of a protester preparing to hurl flowers—failed to win trademark approval from the European Union in September because the European Union Intellectual Property Office (EUIPO) doubted the sincerity of his attempt to merchandise the image. Banksy had hoped that the trademark would prevent unauthorized use of the image by a greeting card company, Yorkshire-based Full Colour Black. Famously private, the artist elected the unorthodox strategy of seeking trademark protection. The EUIPO said the artist’s company, Pest Control, had filed the mark in order to avoid using copyright laws, which would have required him to reveal his true identity—something he has managed to keep hidden for more than 15 years. (There are many theories about Banksy, including the possibility that he is a “we,” not a single individual but a team of street artists or artisans assisting him.) A copyright also would have limited the term of coverage.

We live in interesting times. No corner of professional or personal life seems untouched in at least some way by the latest coronavirus (named SARS-CoV-2) and the disease it causes (named “coronavirus disease 2019” abbreviated COVID-19). Governments all around the world are either demanding or suggesting that people quarantine themselves or engage in social distancing. The intellectual property world is no different. The United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO), IP Australia, the German Patent and Trade Mark Office (DPMA), and the UK Intellectual Property Office (UKIPO) are just some of the Offices that have in recent days issued COVID-19 guidance to inform stakeholders of how the Offices will handle workflow and meetings during this global health emergency.

Recent case law demonstrates that judicial bodies in the European Union and Russia have taken the stance that cannabis signs and slogans are not acceptable as trademarks as they are contrary to public interest. While the EU Courts are likely to evolve more rapidly on this issue in the near future, for now the position in both the EU and Russia is clear. The interests of the business community must be protected by governments in all countries, and business initiatives should be welcomed. But when weighing the physical and mental health of society on the one hand and business interests on the other, the priority must be the former.

This week in Other Barks & Bites: Senators Tillis and Coons ask federal agencies to step up enforcement against IP theft; Senator Stabenow and Congressman Cummings ask GAO to review government’s drug patent authority; USPTO Director Iancu says that Congress will have to fix patent eligibility problems; China releases a new national IP strategy after the U.S. halts IP theft proceedings at the WTO; Adidas loses European trademark for three-stripe logo; VidAngel ordered to pay more than $60 million over copyright infringement; music lyric site Genius accuses Google of ripping content for its own platform; and Apple asks the United States Trade Representative to rescind tariffs that would affect consumer tech goods.

IP rights face “a challenging future,” according to Christian Archambeau, the Executive Director of the EUIPO, who spoke to the media during the INTA Annual Meeting in Boston last month. In particular, he cited the challenges posed by Brexit, international cooperation, artificial intelligence (AI) tools and Blockchain, working in multiple languages, and the volume of applications. EUIPO (formerly OHIM) is the Office responsible for registering EU trade marks (EUTMs) and registered Community designs (RCD) in the European Union. But Archambeau, who became Executive Director in October last year, also emphasized its broader remit to support cooperation between offices in Europe and beyond, and to promote IP awareness, particularly among SMEs. In this respect, he said the Office is looking at “helping SMEs with services that help them and make sense to them,” although it cannot change fee levels, which are set by an EU Regulation.

Much has been made in the last week or two of the International Trademark Association’s (INTA’s) study, Gen Z Insights: Brands and Counterfeit Products, which surveyed more than 4,500 respondents between the ages of 18 and 23 in 10 countries: Argentina, China, India, Indonesia, Italy, Japan, Mexico, Nigeria, Russia, and the United States. The study found that Gen Z’s identity is defined by three characteristics: individuality, morality and flexibility: 85% believe that brands should aim to do good in the world, and 81% feel that the brand name is not as important as how the product fits their needs. While 85% have heard of IP rights and 93% have a lot of respect for people’s ideas and creations, 79% said they have purchased counterfeit products in the past year. The two most commonly purchased counterfeit products are apparel and shoes and accessories. The three most credible sources for learning about counterfeiting are brands’ creators or employees, media personalities and social media influencers.

China has the largest domestic trademark register in the world. In 2017, over 5.2 million applications were filed, a figure which makes it around 10 times the size of the world’s second largest register, the USA. To look in more detail: in the first week of September 2017 alone, more than 116,000 applications were filed on the Chinese register – a number that exceeds the number of trademarks filed with the European Union Intellectual Property Office (EUIPO) in the whole of 2016.

The trademark landscape is evolving rapidly, with both brand owners and trademark professionals trying to keep up. The changes are mostly driven by the steep rise in trademark applications — there was a 13.7% increase in trademark filing activity in 2015, according to WIPO — and shrinking budgets as all involved are tasked with doing more with the same or fewer resources. Trademark professionals and brands alike need to be consistent in the way they approach search and make use of the same practices they have used in the past to avoid risk, while considering challenges they face and the way that the trademark landscape is evolving.

The World Intellectual Property Organization (WIPO) has published its annual World Intellectual Property Indicators. The 2016 report dissects the macro trends associated with filing activity and registrations for 2015 in the following intellectual property areas: patents, trademarks, industrial designs, and plant varieties… The twenty-year era of growth in industrial design patent applications came to an abrupt end in 2014, with a substantial drop in applications filed by 10.2%. In 2015, these figures are back on the rise, with a 2.3% increase. The number of designs in applications also rose in 2015, with non-resident applicant designs being the primary catalyst for growth. China was the main contributor to the number of designs per application, providing half the global total.