UPC – Negative decision by the German Federal Constitutional Court

UPC - Negative decision by the German Federal Constitutional Court

With a non-unanimous decision, the German Federal Constitutional Court held today that the Act of Approval to the Agreement on a Unified Patent Court is void (see the decision).

Personally, I hope that from the rubble caused by recent events, including this decision, the EU can build a better European integration, within which there is also a more solid and shared package of legislative measures for a Unitary EU patent and a Unified Patent Court.

Andrea Scilletta

Covid-19 – Suspension of time limits in proceedings before the Italian PTO – Update

The legislative decree of 17.03.2020, No. 18, has extended both the time period and the type of proceedings affected by the suspension of time limits in proceedings pending before the Italian PTO (already established with the previous decree of the Ministry of Economic Development of 11.03.2020).

Namely, for the calculation of all the time limits in the proceedings pending before the Italian PTO (and concerning Italian IP rights), including the time limits related to proceedings for oppositions to registration of Italian trade marks, the period that is included between 23 February and 15 April 2020 will not be taken into account.

Time limits related to appeal proceedings before the Board of Appeal remain excluded from the suspension.

As regards payment of annuities and renewals, IP rights expiring between 31.01.2020 and 15.04.2020 remain valid until 15.06.2020. To extend the duration of an IP right beyond 15.06.2020, it will then be necessary to comply with the provisions of the Italian IP law (e.g. by paying the due annuity by 15.06.2020).

See the notice at the Italian PTO website and the Legislative decree (only in Italian language).

Andrea Scilletta

Covid-19 – Extension of periods in proceedings before the EPO and the EUIPO

 

Both the EPO and the EUIPO have extended periods for all parties and their representatives.
The EPO has decided that periods expiring on or after 15 March 2020 are extended for all parties and their representatives to 17 April 2020. In accordance with Article 150(2) EPC this applies also for international applications under the PCT. The above period may be further extended by the publication of another Notice in case the dislocation due to the measures adopted in Europe to stop the spread of Covid-19 extends beyond 17 April 2020 (see Notice from the EPO).
The EUIPO has decided that all time limits expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, are extended to 1 May 2020 (see EUIPO Decision).

Suspension of time limits in proceedings under the jurisdiction of the Italian PTO

In view of the precautionary measures taken by the Italian government to stop the spread of Covid-19, the decree of the Ministry of Economic Development of 11.03.2020 has suspended the time limits in proceedings under the jurisdiction of the Italian PTO.

In particular, with the exception of time limits related to either proceedings for oppositions to registration of Italian trade marks or appeal proceedings, all time limits in proceedings before the Italian PTO (and concerning Italian IP rights) which expire in the period between March 9 and April 3, 2020 are suspended.

At the end of this period of suspension, such time limits will begin to run again for the remaining part.

See the notice at the Italian PTO website and the Ministerial decree (only in Italian language).

Andrea Scilletta

Covid-19 – Business as usual at IP Sextant

We would like to inform you that the measures taken by the Italian government in view of Covid-19 are precautionary.

We recall that IP Sextant is strongly based on smart-working since its establishment in 2012.

As you know, the patent and trademark offices with which we interact for our clients (EPO, EUIPO, WIPO, and Italian PTO) allow for online filings and communications.

Thus, we conduct business as usual, regardless of the precautionary measures taken by the Italian government to stop the spread of Covid-19.

26 April 2018 – Unified Patent Court: implications of UK ratification for the UPC

26 April 2018 – Unified Patent Court: implications of UK ratification for the UPC

On April 26, 2018, the United Kingdom has deposited the instruments of ratification of the Agreement relating to the Unified Patent Court (UPCA).

The Preparatory Committee of the UPC has confidently declared that this year has begun well, although there remains more work to do before the provisional application phase can commence – not least the outcome of the complaint against the UPCA pending in the German Federal Constitutional Court which will influence the speed of moving to the final stage of the project. See Committee full communication.

Actually, the announcement from the UK Intellectual Property Office and the statement delivered by the Minister for Intellectual Property, Sam Gyimah MP make clear that such ratification triggers another significant issue of the Brexit negotiations, rather than being a positively decisive event for the UPC. Namely, the UKIPO has pointed out that “the unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU” (see full announcement). The Minister for IP has stated that “now we are well placed to make sure we turn the changes – which will be the central part of our exit – into opportunities. One of those opportunities is to make sure we continue to strengthen and develop the international IP framework” (see full statement).

In this regard, even the controversially optimistic opinion on consequences of Brexit for the UPC, given in September 2016 by Richard Gordon and Tom Pascoe (from Brick Court Chambers), pointed out that the UK would be required to accept the supremacy of EU law in its entirety as regards all patent disputes as fall within the jurisdiction of the UPC, and that this may be politically significant.

In fact, Art. 20 UPCA establishes that the Court shall apply Union law in its entirety and shall respect its primacy (see also Arts. 21 and 24 UPCA).

Even the UPCA will need to be amended as to (only apparently) formal provisions. For instance, Art. 1 UPCA establishes that “the UPC shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States”, but Art. 2 UPCS establishes that “‘Member State’ means a Member State of the European Union” and “‘Contracting Member State’ means a Member State party to this Agreement”. Another noteworthy amendment is required to Art. 7 UPCA, currently establishing that one section of the UPC will be in London.

Therefore, it appears that a Diplomatic Conference would be needed to introduce the possibility for the UK, after having left the EU, to be party to the UPCA.

Provided that the Court of Justice of the EU will not issue any decision against this possibility.

In the end, the ratification by the UK makes the start of the UPC provisional application phase closer, but it does not render the UK participation to the UPC more certain.

Unless the rising voices against leaving (e.g., see among others: Confederation of British Industry, 1, 2, 3; European Movement; Open Britain) will succeed in reversing Brexit.

Andrea Scilletta

01 April 2018 – Euro-PCT applications – Search Fees for supplementary European search

01 April 2018 - Euro-PCT applications – Search Fees for supplementary European search

According to a decision of the Administrative Council of 13 December 2017, from April 1, 2018, the search fee for the supplementary European search for Euro-PCT applications where the international search report was drawn up by the United States Patent and Trademark Office, the Japanese Patent Office, the Korean Intellectual Property Office, the Chinese Intellectual Property Office, the Federal Service for Intellectual Property (Russian Federation) or the Australian Patent Office is no more reduced. The supplementary European search amounts to € 1.300,00.

See full decision

22 March 2018 – an advertising slogan is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question – Judgement of the Court of Justice of the EU (General Court), case T 235/17

22 March 2018 – an advertising slogan is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question – Judgement of the Court of Justice of the EU (General Court), case T 235/17

The applicant had filed an application for registration of an EU trade mark for the word sign MOBILE LIVING MADE EASY for goods and services in Classes 5 to 7, 9, 11, 12, 19 to 22 and 37 of the Nice Agreement. The EUIPO examiner rejected the application on the ground that it was devoid of any distinctive character. The applicant filed a notice of appeal with EUIPO and the Board of Appeal of EUIPO dismissed the appeal holding that the sign was devoid of any distinctive character, because the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message which serves to highlight positive aspects of the goods and services concerned, namely that they make it easy to have a mobile, travelling life, and not as an indication of their commercial origin.

The General Court held that, in order to determine whether the goods and services covered by an application to register an EU trade mark are interlinked in a sufficiently direct and specific way and can be placed in sufficiently homogenous categories or groups, account must be taken of the fact that the objective of that exercise is to enable and facilitate the assessment in concreto of the question whether or not the mark concerned by the application for registration is caught by one of the absolute grounds for refusal. By recalling the Case Law of the Court of Justice of the EU, the General Court further held that the placement of the goods and services at issue in one or more groups or categories must be carried out in particular on the basis of the characteristics which are common to them and which are relevant to the analysis of whether or not a specific absolute ground for refusal may apply to the mark applied for in respect of those goods and services.

Also, it must be examined whether or not, in the light of the meaning of the word element of the mark applied for, the goods and services covered by the mark at issue constitute a homogenous group justifying recourse to general reasoning.

The General Court still recalled the Case Law of the Court of Justice of the EU stating that, despite their differences, all the goods and services at issue could have a common characteristic, relevant to the analysis that the Board of Appeal had to carry out, which could justify their placement within a single homogenous group and the use by the Board of Appeal of general reasoning in relation to them.

In the present case, the General Court held that it is apparent from the contested decision that the Board of Appeal found that the goods and services referred to in the application for registration belonged to a homogenous category in the light of a common characteristic defined by reference to the meaning of the sign applied for, namely ‘which facilitates mobile life’. In that regard, ‘[a]lthough the goods in the various classes have very different specific characteristics, they form[ed] one homogenous category concerning a general, but essential or desirable, feature for those who are moving around in e.g. their vehicles by land or water, namely, one way or another, the goods facilitate[d] mobile life (by providing means for the specific purposes of personal hygiene, safety, security, energy, cooking, preserving food and drink, thermal comfort or comfort in general)’.

The General Court acknowledged that the Board of Appeal thus took into account that the application to register covered goods and services with different characteristics. However, it took the view that those goods and services also had a general characteristic in common of facilitating mobile life.

Moreover, the General Court stated that the Board of Appeal pointed out that the services in Class 37 referred to in the application for registration related to recreational vehicles, motorhomes, caravans, yachts and boats, passenger vehicles, vans and trucks that could serve as permanent or temporary accommodation for professional or leisure purposes and that the goods in question could be installed or used in those vehicles. Consequently, goods which are installed or used in such vehicles must be considered to be goods which facilitate mobile life in one way or another.

Thus, the General Court held that the Board of Appeal was right in finding that the goods and services in question form a homogenous category, in that they facilitate mobile life in one way or another.

By recalling the Case Law of the Court of Justice of the EU, the General Court stated that registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use. However, a mark which, like an advertising slogan, fulfils functions other than that of a trade mark in the traditional sense of the term is distinctive only if it can immediately be perceived as an indication of the commercial origin of the goods or services in question and accordingly enables the relevant public to distinguish, without any possibility of confusion, the goods or services of the proprietor of the mark from those which have a different commercial origin.For a finding of no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question.

Hence, the General Court shared the view of the Board of Appeal that the sign did not contain any unusual variation of the English rules of syntax and grammar and that advertising slogans, such as that in the present case, were often written in a simplified form, so as to make them more concise and snappier. The mark applied for, taken as a whole in relation to the goods and services in question, sent a clear and unequivocal message, which was immediately apparent and did not require any interpretative effort on the part of the relevant English-speaking public. Thus, the relevant public would perceive the expression ‘mobile living made easy’ as a promotional laudatory message, the function of which was to communicate an inspirational message of quality and that it would not perceive in the sign applied for any particular indication of commercial origin beyond the promotional information conveyed, which merely served to highlight positive aspects of the goods and services in question, namely that they made it easy to have a mobile, travelling life. In that regard, the relevant public is the English-speaking public, and the meaning of the sign applied for does not depart from everyday language in such a way that the relevant public will recognise in it more that the mere juxtaposition of the expressions ‘mobile living’ and ‘made easy’, and the relevant public will understand that sign as meaning ‘which facilitates mobile life’. That meaning is so obvious that that public does not need to think in order immediately to understand it.

Thus, the General Court shared the view of the Board of Appeal that the sign applied for will not therefore be perceived by the relevant public as an indication of the origin of the goods and services in question, but as an advertising slogan. Furthermore, the sign applied for does not include any unusual element capable of conferring distinctive character on that sign.

Therefore, the General Court confirmed the decision of the Board of Appeal holding that that sign does not include any elements that might, beyond its promotional meaning, enable the relevant public to memorise it easily and instantly as a trade mark for the goods and services in question.

Full judgement

13 March 2018 – EU figurative mark including a juxtaposition of two English words compared with an earlier EU word mark – Judgement of the Court of Justice of the EU (General Court), case T 346/17

13 March 2018 – EU figurative mark including a juxtaposition of two English words compared with an earlier EU word mark – Judgement of the Court of Justice of the EU (General Court), case T 346/17

The judgement relates to an action against a decision of the Board of Appeal of EUIPO relating to opposition proceedings concerning an application for registration of an EU trade mark sought for a figurative sign the dominant element of which is the result of a juxtaposition of two English words (‘guidego’), where the opposition was grounded on an earlier similar EU word mark (‘GUIDIGO’) for services held in part identical and in part similar.

First of all, recalling the case law of the Court of Justice of the EU, the General Court stated that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark.

In this regard, the General Court acknowledged that the dominant element of the sign requested is the result of a juxtaposition of two English words and that the use of different colours makes it possible to perceive them.

However, with reference to the conceptual comparison of the signs, the General Court stated that the fact that consumers distinguish between the two words which make up the element ‘guidego’ does not mean that they will necessarily be able to understand them.

As regards the visual comparison, still recalling the case law of the Court of Justice of the EU, the General Court pointed out that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression.

In the present case, the General Court held that the sign comprising the earlier mark and the dominant element of the mark applied for are similar to the extent that they coincide in six out of seven letters and differ only in the central vowel. Similarly, the degree of stylisation of the word element and the additional elements of the mark applied for do not counteract the similarities between the signs, as a result of which they are similar to an average degree.

That degree of similarity exists regardless of whether the element ‘guidego’ is perceived as two separate words or as a single element.

Also, the General Court held that there is a high degree of phonetic similarity in so far as the pronunciation of the elements ‘guidigo’ and ‘guidego’ is very similar.

Although the sign applied for included additional words written in much smaller typeface, recalling the case law of the Court of Justice of the EU, the General Court stated that they will probably not be spoken, and that it is also necessary to take into account the natural tendency of consumers to shorten long signs.

Moreover, the General Court held that, although the sign GUIDIGO is a fanciful term, whereas the element ‘guidego’ is a juxtaposition of two English words, nevertheless that fact is not sufficient to make it possible to consider that the difference in pronunciation of the two distinctive elements would be significant, at least as regards the non-English-speaking section of the relevant public.

In fact, even if the element ‘guidego’ is pronounced according to the rules of English pronunciation, whereas the GUIDIGO sign is pronounced according to the rules of pronunciation of the mother tongue of the consumer other than English, that possible difference is relevant only in respect of the part of the relevant public whose mother tongue is not English, but who does speak English.

Thus, even if all members of the general public of the European Union recognised the element ‘guidego’ as the juxtaposition of two English words, the General Court held that it cannot be argued that the whole of that public will pronounce that element according to the rules of English pronunciation.

In addition, recalling the case law of the Court of Justice of the EU, the General Court stated that it should be borne in mind that, as regards the phonetic comparison of the signs, it is necessary to disregard their meaning, as those considerations are relevant to the conceptual comparison.

Full judgement

13 March 2018 – EU figurative mark based on a letter of the alphabet – Judgement of the Court of Justice of the EU (General Court), case T 824/16

13 March 2018 – EU figurative mark based on a letter of the alphabet – Judgement of the Court of Justice of the EU (General Court), case T 824/16

The judgement relates to an action against a decision of the Board of Appeal of EUIPO relating to opposition proceedings concerning an international registration designating the European Union obtained for a figurative sign based on the letter “k”, where the opposition was grounded on four earlier national trade marks (registered with the Benelux Office for Intellectual Property) also based on the letter “k” for identical services.

With regard to the phonetic similarity, the General Court held that, since the relevant public may be led to recognise a letter ‘k’ in the mark applied for and in the earlier national trade mark, those two marks are likely to be pronounced in the same way. Consequently, it must be held that, contrary to what the Board of Appeal pointed out in that regard, the marks at issue are phonetically identical.

With regard to the conceptual similarity of two marks which consist of the same single letter, recalling the case law of the Court of Justice of the EU, the General Court stated that the graphic representation of a letter is likely to evoke a very distinct entity in the mind of the relevant public, namely a particular phoneme. In that sense, a letter refers to a concept.

It follows that there may be conceptual identity between signs where those signs refer to the same letter of the alphabet.

With regard to the global assessment of the likelihood of confusion, still recalling the case law of the Court of Justice of the EU, the General Court stated that it is true that the level of attention of the relevant public is an element which has to be taken into consideration in assessing whether there is a likelihood of confusion. However, it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion and therefore any possibility of applying that provision can, a priori, be ruled out.

The fact that the public in question will pay more attention to the identity of the producer or provider of the goods or services which it wishes to purchase does not, however, mean that it will examine the mark before it in the smallest detail or that it will compare it in minute detail to another mark. Even with regard to a public with a high level of attention, the fact remains that the members of the relevant public only rarely have the chance to compare the various marks directly and must therefore rely on their imperfect recollection of them.

The distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion. However, even if the degree of inherent distinctive character of an earlier mark were lower than average, such a weak distinctive character would not, in itself, preclude a finding that there is a likelihood of confusion.

In any event, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services covered.

Full judgement