Thursday 28 May 2015

World Anticounterfeiting Day

This coming 2 June is World Anticounterfeiting Day in a number of countries around the world. To mark the occasion, for the fifth consecutive year the Spanish Patent and Trademark Office and the National Brand Owners' Association are holding, in cooperation with the Finance Ministry and the various national Police Forces, a special day to raise awareness and sensitize the citizenry about the adverse repercussions caused by the manufacture and sale of counterfeit goods.

This year's event will take place in the city of Vigo. The choice of city is far from arbitrary but rather is the upshot of a police anticounterfeiting and antipiracy operation carried out at Vigo's "A Piedra" market in October 2014. And that's not all. Vigo and its market, famous for selling counterfeit goods, merited a mention on the US Trade Representative's international blacklist in February 2014, which specifically noted the city's status as a port of call for many cruise lines and the market's operation "under the supervision and control of the municipal government".

The choice of Vigo as the city in Spain to hold World Anticounterfeiting Day, then, could not be more apt. One would hope that holding World Anticounterfeiting Day there will indeed help open the eyes of local government officials to the need to combat this type of criminal activity more effectively to take their city off this shameful blacklist.

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Saturday 23 May 2015

New world for appellations of origin: Lisbon renaissance in Geneva

The Diplomatic Conference convened to adopt a new Act of the Lisbon Agreement met at the headquarters of the World Intellectual Property Organization (WIPO) on 11 to 21 May 2015 and reached agreement to adopt the Geneva Act.
In preparation for the Diplomatic Conference, the ad hoc Working Group met 10 times from 2009 to 2014 to discuss and draw up the draft text that has yielded this new Act and the Regulations under the new Act.

One of the primary objectives of the new Act is to make the existing Lisbon Agreement on Appellations of Origin and their International Registration, which currently has only 28 Contracting Parties, more attractive for accession by new members.

Some of the main changes will permit accession to the Act by intergovernmental organizations and the international registration of both appellations of origin and geographical indications (up to now the Agreement provided only for the registration of appellations of origin) under a system that is of course in conformity with the TRIPS Agreement while also grounded in many respects in regulations concerning these modalities adopted by the European Union. The Geneva Act also includes Articles dealing with the (broad) scope of protection for geographical indications and appellations of origin in the Contracting Parties and with the subject of official fees (rather unusual in European Union regulations in this area).

Two intergovernmental organizations evinced particular interest over the course of the drafting process for the new Act, namely, the European Union (with the OHIM also present as a separate observer in its own right) and, to a lesser extent, the African Intellectual Property Organization (OAPI). As the efforts of the Working Group earned credibility with the drafting of proposed full wordings for the texts, it sparked the interest of more and more countries, and the delegations of certain world powers (the U.S., Russia, China), which initially either did not take part or were essentially passive participants, became more active, greatly enriching the deliberations, raising very interesting issues and proposals from a variety of legal, economic, and cultural perspectives.

Like the current Lisbon Agreement, registration is not limited to certain goods. Rather, appellations of origin and geographical indications can be registered for all types of goods (agricultural and non-agricultural), provided they comply with requirements.

The Geneva Act will enter into force three months after five Contracting Parties have deposited their instruments of ratification or accession.

It would be remiss to fail to mention the important role played by the delegations of organizations accorded observer status in the Working Group and at the Diplomatic Conference, chief among them CEIPI, for its rigorous academic contributions, MARQUES, oriGIn, and INTA, representing the interests of their members and the general interest of the community at large in achieving a text with the clearest possible wording so as to avert instances of legal uncertainty.

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Friday 22 May 2015

General Court decides the time has come to limit the scope of protection for the watch brand, SWATCH

From Wikimedia Commons
Three days ago the General Court issued its judgment (Case T-71/14) upholding the grant of the SWATCHBALL trademark filed by Panavision Europe for goods and services relating to a company involved in the manufacture and sale of photographic and movie equipment (Classes 9, 35, 41, and 42). As an added quirk, the application expressly excluded goods and services relating to timekeeping.

The famous Swiss watch-making company Swatch AG opposed the application on grounds that it was confusingly similar to their earlier trademark registrations for SWATCH and that it was an attempt to take unfair advantage of the repute of their earlier mark. They also claimed that SWATCHBALL was detrimental to the distinctive character and repute of the earlier mark.

The Court concurs that the conflicting marks are similar and accepts the well-known character and reputation of the SWATCH marks. Nevertheless, the Court has found that for registration to be barred under Article 8.5 Regulation 207/2009, the relevant public must establish a link between the two marks and that absent such a link, the distinctive character and repute of the earlier mark cannot be taken advantage of or harmed.

While the Court acknowledges that certain factors (the similarities between the marks and the reputation of the SWATCH mark) support the conclusion that a link might exist, it has held that any such link is diluted by the differing natures of the goods and services covered (especially bearing in mind Panavision's limitation); by the different distribution channels and market segments; by the non-competitive nature of the goods, which are not interchangeable; and, above all, by the existence of two separate relevant publics,  the general public in the case of SWATCH watches and a much more specialized public in the case of Panavision's goods and services.

In point of fact, the Court has found that even though the specialized public for Panavision's goods is likely to be aware of the SWATCH branded goods, the public is still unlikely to draw a link between the goods or between the SWATCHBALL and SWATCH marks.

This judgment shows that even the most famous trademarks need to make strenuous efforts to prove that the requisite link exists, since the bar to registration laid down in Article 8.5 is contingent on the existence of such a link for well-known and reputed trademarks to be able to exert their full effect.

Author: Luis Baz

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Thursday 14 May 2015

Furniture and Copyright. Judgment by the CJEU of 13 May 2015 in the Dimensione Case (C-516/13)

Certain judgments of the Court of Justice of the European Union are less interesting for what they say than for what they stand for. The CJEU's judgment of 13 May (C-516/13) considers a request for a preliminary ruling in a dispute between two Italian companies in Germany. Complainants were Knoll International SpA, holders of exclusive distribution rights in certain pieces of designer furniture that have their own names, the Wassily chair; the Laccio table; the Barcelona chair, stool, couch, and table; the Brno and Prague chairs; and the Cantilever chair; defendants were Dimensione Direct Sales Srl, which was behind an advertising campaign selling reproductions that imitated those pieces of furniture, specifically targeting Germany.

 The pieces were offered for sale on the defendants' website, available in German, and through advertisements placed in German magazines and newspapers.

The starting point for the judgment is what some might think of as the core of the dispute. Under German law, the furniture in question are works of art protected by copyright. No jurisdictional issues were raised with the Court. Manufacture of the furniture in Italy did not preclude action from being taken in Germany, since the advertising was aimed at the German market and the pieces were protected in Germany.

However, there is another issue, whether offering or advertising an original or a copy of a work of art infringes the distribution right where the works are protected, even if it is not established that the advertising in question gave rise to purchase of the products.

The judgment is a reminder that the CJEU has to some degree come down on the side of a broad construction of the distribution right, understanding it to encompass other acts (contractual offers, non-binding offers and advertising) which also fall under the series of acts taken with the objective of making a sale of an object.

The CJEU has thus interpreted that Article 4(1) of Directive 2001/29 does not preclude the holder of an exclusive right to distribute a protected work from preventing an offer for sale or advertisement of the original or a copy of that work, even if it is not established that that advertisement gave rise to the purchase of the protected work by an EU buyer, "insofar as that advertisement invites consumers of the Member State in which the work is protected by copyright to purchase it".

Author: Antonio Castán

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