IP Case Law Laboratory
12 June at EUIPO
On 12 June 2017, EUIPO held its first ever Case Law Laboratory, organised by the Boards of Appeal.
Aimed at professionals in the field of trade mark and design law, the event focused on a variety of relevant legal topics such as: non-traditional trade marks; functional trade marks and designs; national law rights in the context of Article 8(4) EUTMR; and challenges involving disclosure of designs.
The IP Case Law Laboratory aimed to help participants to exchange views and develop a common, in-depth understanding of essential legal issues that are relevant to both the private sector and the Office. Practitioners, industry professionals and experts from inside and outside EUIPO gave a series of presentations and led discussion in four separate interactive working groups.
The presentations given at the Case Law Laboratory are available here, divided by topic and session.
Topic 1 – Non-traditional trade marks
With the removal of the graphic representation requirement on 1 October 2017, certain questions arise. The non-graphic representation needs to comply with the Sieckmann criteria by being clear, precise, self-contained, easily accessible, intelligible, durable and objective. That will undoubtedly continue to be a challenge for some unconventional signs such as smell marks in the current state of technology. In addition, the newly revamped version of Article 7(1)(e) EUTMR presents a further hurdle for non-traditional marks where they relate to 'other characteristics' of the goods. Yet, some forms of non-traditional marks are likely to prosper under the new regime. Prior to 1 October 2017, MP3 files for sound marks were accepted by EUIPO, and service marks are totally unaffected by Article 7(1)(e). While EUIPO's Boards of Appeal previously refused MGM's roar of a lion and Tarzan's yell, these signs have long existed the other side of the Atlantic. The Madrid Protocol means that these signs, when used for services, could be the subject of a valid extension to the EU. This workshop will look at the opportunities that the abolition of graphic representation offers, including overlap with copyright and with discussion on potentially thorny issues such as retail services, priorities and proof of use.
- Mr. Gordon Humphreys, Chairperson of the 5th Board of Appeal
- Mr. Arnaud Folliard-Monguiral, Team leader, Litigation, International Cooperation and Legal Affairs Department view presentation
- Mr Dennis Scheirs, Team Leader, European Cooperation Service, , International Cooperation and Legal Affairs Department view presentation
- Mr. Eli Salis, Partner at Disain IP
- Dr. Ralf Sieckmann, Partner at Cohausz Hannig Borkowski Wißgott GbR view presentation
- Ms. Maria Eugenia Martins de Nazaré Ribeiro, Former Judge of the General Court of the European Union
Topic 2 – Functional trade marks and designs
Both the European Union Trade Mark Regulation and the Community Design Regulation include a prohibition against registering trade marks or designs which are comprised of functional characteristics.
This workshop sought to explore the intricacies of the prohibition itself when viewed in the context of the differing legal frameworks in which it is expressed, for example by a comparative analysis of its purpose and application. Is that prohibition, for all intents and purposes, the same concept merely implemented in two different pieces of legislation or is there a difference? Are the same purposes pursued in differing permutations in the context of the trade mark and design regulations respectively? And what are the differences (if any) in the underlying interests which define the specific application of that prohibition in the context of trade marks and designs? And finally can jurisprudence regarding trade marks be used analogously to interpret the prohibition within the context of designs and vice versa?
- Ms. Elisabeth Fink, Member of the 3rd and 4th Board of Appeal view presentation
- Mr. Stephan Hanne, Legal Affairs, International Cooperation and Legal Affairs Department view presentation
- Mr. Mikael Francke Ravn, Chief Legal Adviser at Danish Patent and Trademark Office view presentation
- Prof. Dr. Dr. h.c. Annette Kur, Senior Research Fellow and Head of Unit in Max-Planck-Institut für Innovation und Wettbewerb view presentation
- Mr. Andrea de Gaspari, Member of the ECTA Design Committee, Partner in De Gaspari Osgnach S.R.L. view presentation
Topic 3 – Disclosure of designs
The issue of disclosure is crucial in design conflicts. Nowadays, establishing disclosure of prior designs is increasingly becoming more related to the Internet and new technologies, which means that litigants rely more and more on Internet printouts, digital pictures, and other similar documentation. The constantly changing and dynamic nature of online content creates challenges in the dating of evidence. Parties are therefore increasingly turning to printouts from the ‘Wayback machine’ and other Internet archives or repositories. Nevertheless, the law has some difficulty in reconciling, on the one hand, the possibility of using Internet and new technologies for proving disclosure with, on the other hand, the general principle of legal certainty, particularly as regards the date of disclosure and its territorial scope. The divergences in national practice have been considered sufficiently important for the EUIPO and National Offices to have recently included this topic as a dedicated Convergence Programme project. However, in the absence of a common practice, the workshop will bring together multi-jurisdictional experts from within the EUIPO, national IP offices and private practice to examine the challenges faced and consider what solutions could be brought forward.
- Mr. Harri Salmi, Member of the 2nd and 3rd Board of Appeal view presentation
- Mr. Declan Finlay, Seconded National Expert, International Cooperation and Legal Affairs Department view presentation
- Mr. Shane Smyth, Partner in FRKelly view presentation
- Avv. Niccolò Ferretti, Member of the ECTA Design Committee, Partner in Nunziante Magrone Law Firm View presentation
Topic 4 – National law rights in the context of Article 8(4) EUTMR
Although less frequently invoked as basis of an opposition or invalidity request, non-registered rights protected by national law in conjunction with Arts 8(4) and 53(2) EUTMR can constitute the only available remedy available to economic operators wishing to protect their acquired earlier rights against conflicting subsequent EU trade marks. Notwithstanding its significance, key questions of this specific field of trade mark law still remain to be clarified. These include the requirements of (i) substantiation before the EUIPO, (ii) use (in particular the relationship between the standards set by EU law and by the applicable national law), (iii) ownership, (iv) the right to prohibit use (and/or registration?) of a subsequent trade mark, as well as (v) the scope of protection afforded by different non-registered rights.
- Mr. Philipp von Kapff, Member of the 1st Board of Appeal view presentation
- Mr. Dominik Hanf, Legal Affairs Area, International Cooperation and Legal Affairs Department
- Dr. iur. Verena von Bomhard, Founding Partner at Bomhard IP view presentation
- Mr. Imre Gonda, Head of IP Department at Gedeon Richter Plc.