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Success for Andreas Stihl as General Court finds that colour combination mark is valid

A recent judgment (Case T‑193/18, 24 March 2021) by the General Court has revealed the importance of precise descriptions in applications for the registration of trademarks consisting of a combination of colours.

Background

On 19 December 2008 Andreas Stihl AG & Co KG filed an application to register a colour sign (shown below) as an EU trademark (EUTM) for “chainsaws” in Class 7. The sign was a combination of colours per se, identified as “orange (RAL 2010)” and “grey (RAL 7035)”, and was accompanied by the following description: “The colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw”.

 

On 24 June 2015 Giro Travel Company SRL filed an application for a declaration of invalidity of the trademark, essentially arguing that the mark was not capable of distinguishing the goods at issue as it did not satisfy the Sieckmann criteria(Case C-273/00) – that is, the representation of the two colours was not clear, precise, self-contained, durable and objective. Giro Travel argued that the colour combination of orange (RAL 2010) and grey (RAL 7035) was commonly used in the field of forest tools, so consumers were not likely to perceive it as a badge of origin.

The application for a declaration of invalidity was rejected in the first instance by the Cancellation Division of the EUIPO, but following an appeal by Giro Travel, the Second Board of Appeal annulled the Cancellation Division’s decision and declared the colour trademark at issue to be invalid. The Board of Appeal found that a sign composed of a combination of orange and grey per se was not capable of distinguishing the trademark owner’s “chainsaws” from those of other undertakings.

Andreas Stihl appealed to the General Court. The court upheld the appeal and annulled the decision of the Second Board of Appeal.

Appeal to the General Court

Andreas Stihl relied on a single plea in law, alleging infringement of Article 4, read in conjunction with Article 7(1)(a), of Regulation 40/94, as it considered that the graphic representation of the colour mark at issue was suficiently clear and precise. Further, it contended that the representation contained a systematic arrangement in which the colours were used in a predetermined and uniform manner, with the particular shades of colour identified using a colour code, and with the inclusion of a very specific description, in compliance with the requirements set out by the Court in Heidelberger Bauchemie (Case C-49/02).

The EUIPO reiterated its position and contended that it was unclear whether, in Heidelberger Bauchemie, the court considered that the representation of two colours in equal proportions and placed side-by-side was tantamount to claiming colours “in every conceivable form”, or whether such a representation was unclear only if the description rendered it imprecise.

Additionally, the EUIPO argued that the combination of colours of which the EUTM at issue was composed could be reproduced on products of different shapes, and that the description allowed for different combinations and did not add any clarification capable of suficiently defining the systematic arrangement of the colours applied for, to the exclusion of any other arrangement.

Decision

The General Court found that, although the two colours defined by means of two identification codes did not, as such, have contours giving them a particular shape, the description included in the trademark application specified that the trademark takes the form of a part of a chainsaw housing, further specifying that the upper part of the housing would be orange, while its lower part would be grey.

For the court, this description placed a greater limit on the shape which the chainsaw housing could take, limiting the variations in design that consumers could perceive, and the colours did not take “all conceivable shapes” in such a way as to imply that the mark lacked the precision and uniformity required by Article 4 of Regulation 40/94.

The court considered that the EUTM at issue must be regarded as having a systematic arrangement which associates the orange and grey colours concerned in a predetermined and uniform way. It was thus considered that the EUTM was capable of acting as a badge of origin for the relevant specialist public, and was also capable of enabling the competent authorities and economic operators to know the scope of protection afforded to the proprietor of that trademark.

Comment

This judgment of the General Court reveals that the description forming part of a trademark application for a sign consisting of a colour combination is of paramount importance when assessing whether it is capable of acting as a badge of origin. Further, the ruling is also interesting in that it provides clear guidance on how colour combination marks interact with goods which are not all designed to be identical in shape and whose external appearance may consist of variations in design, as long as the description identifies the parts to which each colour shade is to be applied. For future applicants for such marks, the important point to take away from this decision is that the more specific the description, the better.

This article first appeared on WTR Daily, part of World Trademark Review, in april 2021. For further information, please go to www.worldtrademarkreview.com.

Author: Sara Navarro

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Did you get the transfer?

Spanish courts spend a lot of their time “transferring” things from A to B. So, when the defendant in a patent case files a validity counterclaim, the court must “transfer” it to the claimant. This transfer is of crucial importance because it sets off the two-month deadline for answering the counterclaim. So, what actually happens? Historically the officers of the court took the copy of the counterclaim which the defendant’s scribes had provided and physically gave it to the claimant’s procurator, that most Spanish of legal professionals. However, this was somewhat cumbersome, so at some point it occurred to somebody that maybe the defendant’s procurator could just give it to the claimant’s procurator. All very practical, but an immediate affront to the principle that it is the court which must drive and control the process. The solution is simple. In due course the court issues a piece of paper making an albeit symbolic “transfer”, thereby kicking off the deadline.

contactar, envío, email, teléfono, tablet

 

So far so good. However, things grew complicated when the revised Patent Act, which came into force in 2017, allowed the patent owner to file an application to limit the patent in response to the counterclaim. Although this had always been possible under Article 138.3 EPC, Spanish courts had grappled with the unforeseen procedural consequences. Article 120 of the new Act changed all that by firstly specifying that the limitation application had to be filed with the answer to the counterclaim, and secondly establishing a two-month time limit to respond. As usual the court was required to “transfer” the application to the counterclaimant, whose time limit to respond was however to start upon “receipt” of the application. This led to a flurry of academic articles which argued that the starting point for this new time limit would not be the court “transfer” itself but, long before that, when the electronic exchange had actually taken place between the procurators.

In a recent decision, Barcelona Commercial Court No. 5 has ruled for the first time on this conundrum. The tried and trusted transfer option wins the day: “Any of the other proposed interpretations would mean leaving the kick-off for the computation of the procedural deadline up to one of the parties, who would be driving the process, thereby depriving the first paragraph of the provision of any meaning. Taken to the absurd, if the beginning of computation of the time limit were to be from the moment of receipt of the application – one assumes, between procurators, between the parties themselves – why is a transfer by the court provided for?”. For Article 120.5 “in no way authorizes relegating that both the process and time control be driven by the court“.

Author: Colm Ahern

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Changes to the system for protection of industrial designs in China

edificio, guirnaldas, china

Designs in China (where they are called “design patents”) are protected under the Patent Law of the People’s Republic of China. This legal text entered into force in 1985 and was reformed in 1992, 2000 and 2008.

On 1 June 2021 a fourth reform will enter into force, with important amendments regarding designs. Indeed, it was necessary to update some aspects of industrial design protection in China in order to, among other purposes, bring them into line with the industrial design protection systems of the world’s main IP Offices. It will thus facilitate protection for foreign designs in China, as well as enhancing protection for the designs of Chinese applicants in other countries and at other IP Offices.

farolillos, china, luces

 

This reform should also be regarded as part of China’s preparations to join the Hague System for protection of international designs, given that following the accession of the EUIPO, South Korea, USA and Japan, China is the only one of the countries of the IP5 (which includes the world’s five largest IP Offices) that is not yet a member.

It is also important not to overlook the global importance of China in terms of the number of design applications filed. Over the past few years, the CNIPA has been the Patent Office that has received by far the largest number of design applications. For example, in both 2018 and 2019 there were more than 700,000 design applications in China, which accounted for more than 50% of all design applications worldwide.

The main changes that will affect designs in China can be summarised as follows:

1. Extension of the legal lifetime of designs to 15 years

Article 42(1) of the Patent Law extends the legal lifetime from 10 to 15 years, always calculated from the filing date of the design application in China.

This extension of the term of protection of designs in China is due to the Hague Agreement, which requires that the period of protection granted by contracting States for national designs must be a minimum of 15 years.

2. Possibility of design protection for parts of a product

Article 2(4) of the Patent Law has been amended to include in the definition of “design” the possibility that it refers to “the whole or part” of a product.

This amendment allows the scope of protection of designs to be expanded to include partial designs or designs of a part of a product.

This new provision will, for example, enable more secure protection for the design of a part of a product, without the need to protect the design of the whole product. Currently it is necessary to depict the whole product with solid lines. However, after the reform it will be possible to show with solid lines only the part that is to be protected and with broken lines those parts of the product for which protection is not sought.

Moreover, this new possibility of protection for partial designs or for designs of a part of a product is expected to encourage the filing of new design applications, thereby enhancing protection against possible infringers. Indeed, following the reform it will only be necessary that the protected part (for example, the sole of a shoe or the handle of a tool) has been copied, and not the whole product, in order to be able to take action against possible infringements.

This provision will help to bring practice in China into line with that of the other IP5 countries, given that in all of those countries it is currently possible to protect parts of a product.

3. Possibility of claiming domestic priority for designs

Article 29(2) of the Patent Law introduces the possibility of claiming the domestic priority of an earlier design application in China, within a term of 6 months, in order to permit the filing of an improved subsequent design application.

Under the current system, if an applicant files a design application in China and the design undergoes improvements or modifications, it is necessary to file a new design application. If the improved design differs in relatively minor aspects, the new application for the design would be vulnerable due to the existence of the first application.

With the introduction of the possibility of claiming the domestic priority of designs in China, such adverse situations are avoided, given that once the design is created, the applicant can file an initial design application to obtain an earlier filing date and then improve the design in the 6 months following the filing of the initial application, claiming the priority of the same.

In summary, the reform of the system for protection of industrial designs in China is an important step forward that will help to encourage innovation and improve legal certainty in the field of design. Other potential changes, such as extending the possibility of multiple design applications, or establishing a substantive examination or searches for earlier designs during prosecution, have not been included. Perhaps we will see these changes in a future reform.

Author: Pedro Saturio

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The Barcelona Mobile World Congress is back, with Courts’ Protocol!

Barcelona’s commitment to celebrate the MWC 2021 seems happily firm. Today, May 6, the Protocol of the Commercial Court of Barcelona and the Trademark Court of the European Union of Alicante has been made public to ensure swift action on precautionary measures and preliminary proceedings for infringement of industrial and intellectual property rights.

MWC Barcelona 28 de junio al 1 de julio 2021

Aspects to be considered:

  1. The MWC will be held from June 28 to July 1, 2021.
  2. The Commercial Court of Barcelona will resolve on the same day of its filing (24 hours) the admission of requests for protective letters aimed at preventing precautionary measures from being granted without a hearing against companies participating as exhibitors in the MWC.
  3. Preliminary or verification of facts proceedings based on copyrights, patents, trademarks, designs, unfair competition or advertising in connection with products exhibited at the MWC will have preferential and priority treatment and will be resolved within two days (48 hours).
  4. Requests for precautionary measures will also have preferential treatment and will be resolved within 48 hours (if they are granted without hearing the defendant) or 10 days (if they are granted with a prior hearing in the event that the exhibitor has filed a protective letter).
  5. Preliminary proceedings and precautionary measures may be directed both against acts of presentation or exhibition of products physically at the congress and against those that are carried out online and/or on any type of virtual platform provided in the congress.
  6. Preliminary injunction hearings shall preferably be held telematically.
  7. It is now time for companies, depending on their position, to set their strategies with sufficient time to ensure an adequate judicial response. ELZABURU’s proven experience in several consecutive editions of the MWC is at your disposal.

Access the Intellectual Property Fast Action Protocol Mobile World Congress 2021.

Author: Enrique Armijo-Chávarri

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Ten privacy requirements that must be met by the Digital Green Certificate

According to information published by the European Commission, the Digital Green Certificate (DGC) of vaccination is a digital proof that will help to ensure that restrictions currently in place can be lifted in a coordinated manner, thereby facilitating the free movement of citizens of the EU. This certificate will only include necessary key information, such as name, date of birth, date of issuance, relevant information about vaccines/tests/recovery and a unique identifier. In principle, the Spanish Government plans to implement it in June of this year, so that it is fully operational for the summer months.

aeropuerto, gente, maletas

Since this is a project that has generated some controversy, Ruth Benito, Of Counsel of ELZABURU and a specialist in personal data protection and privacy law, has analysed the privacy requirements that are expected when the certificate is launched:

1.- Data protection and security by design and by default

This is the primary issue for two main reasons:

  1. Contrary to common belief, focusing on privacy and security from the very beginning of any project helps to achieve better results in terms of effectiveness and public confidence in the project, minimise the risks for the public and avert the need for subsequent modifications.
  2. We are concerned that in the Proposal for a Regulation on the Digital Green Certificate (DGC) it is stated that in view of the urgency, an impact assessment has not been carried out, when such assessments are a key element in building public trust.

2.- Full transparency

EU citizens have a right to know exactly what information this certificate will contain, how it will be used and who will be involved in handling the information.

The future publication of the Regulation on the DGC (currently only a proposal) will provide considerable information in this regard, but many specific details will still have to be confirmed for each Member State, particularly concerning the companies, technology and security measures involved in each case.

3.- Non-discrimination

One issue raised in several countries is that this DGC must not be allowed to give rise to any kind of discrimination.

This certificate is being created to facilitate the safe free movement of EU citizens between EU Member States. Therefore, there must be a guarantee that it will only be used for this purpose and not for other matters that could imply some kind of discrimination, even on the part of the holder of the certificate, such as, for example, to gain an advantage in job selection processes.

One might question whether the DGC already inherently entails some degree of discrimination, given that those who have not yet been able to get vaccinated and have not been infected with the virus will have to pay for tests to have the results reflected in the certificate or be able to furnish some other form of proof in order to be able to travel.

4.- Actual usefulness and effectiveness

The information reflected in the DGC must always be up to date, but it must also be appropriate for the intended purpose. It would seem that this is an issue that has yet to be fully resolved, given that there is as yet no scientific evidence that those who are immunised, either because they have had the virus or because they have been vaccinated, cannot transmit the virus, that is, that they cannot infect others.

Moreover, it is also still too early to know how long this immunity will last. Therefore, it seems that the information is not as reliable as would be desirable for its intended purpose, which could be considered to go against the principle of data accuracy. We believe that further progress needs to be made on this issue and that scientific opinion and evidence will be taken into account in order to make the necessary adjustments in the system to ensure its maximum effectiveness with appropriate use of our personal data.

5.- Minimise data

Both the information used in the DGC system and the data ultimately reflected in the application or on the paper document when travelling, must be the minimum information necessary for the intended purpose.

We do not yet know exactly what information will be displayed when the passport is used, but it is something that needs to be analysed in detail. For example, it might be sufficient to have a kind of “fit for travel/unfit for travel” indication, if it were not necessary to know the person’s situation (whether the person is vaccinated, has had the virus or has a negative test result), or it might be necessary to know the specific situation that makes the person eligible for travel but not necessary, for the purpose of granting access to the territory, to know which specific vaccine was administered or what type of test was conducted, etc.

6.- Make sure that project partners provide appropriate guarantees

The national authorities will have to assess whether the providers of technology, infrastructure, data storage, etc. offer sufficient guarantees to ensure that the handling of that personal data, which is sensitive information, is conducted in accordance with appropriate security measures and that there is no undue interference in the rights of EU citizens. In any case, we would assume that as far as Spain is concerned, the selected company or companies will have to comply with the measures necessary under the National Security Framework.

7.- Interoperability

As set out in the Proposal for the EU Regulation, uniform conditions for the issuance, verification and acceptance of certificates in all EU countries are needed. Otherwise, it would not really facilitate the free movement of EU citizens within the EU.

8.- Universal and free of charge

The Proposal for a Regulation also rightly provides that the DGC must be universal and free of charge, which doesn’t mean that it has to permit us to travel free of charge and throughout the world (if only!) but that all citizens of the EU should be able to access the certificate at no cost.

Making it free of charge is really a means of ensuring that the DGC is universally accessible. However, it is also important to ensure that certain vulnerable groups are able to effectively benefit from the DGC, such as, for example, minors (who are, moreover, not in the age groups for vaccination), people with disabilities (accessibility) or people who are disadvantaged by the digital divide.

9.- No one should be permitted to take advantage of the data

This is not an opportunity to take advantage. Therefore, the authorities and companies involved in the DGC, aside from the intended purposes, cannot share the health information of EU citizens or benefit from them in any way, and international passenger transport operators that have to access the certificates should not generate their own databases with that information.

10.- It should be a temporary measure

It only makes sense, and thus is only justified and warranted, to have the DGC while the pandemic and/or health crisis continues. Therefore, once we have overcome that situation (hopefully sooner rather than later), both the certificate and the supporting technology must be discontinued and the health information of EU citizens that has been stored in the DGC systems must be deleted.

Previously published [in Spanish] in Confilegal by Luis Javier Sánchez.

For more information, you can listen to the interview with Ruth Benito on Capital Radio’s “Ventaja Legal” [in Spanish].

Author: Ruth Benito

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