QMJIP

Queen Mary Journal of Intellectual Property

Month: December, 2014

The touching Christmas ad that gave rise to hundreds of complaints to the ASA

by Alina Trapova

The Christmas season was the time for big brands to put their creativity into practice and produce outstanding and memorable adverts – great opportunity for trade mark owners to utilise all the functions of their brands. Endless crowds were impatiently waiting at Oxford Street for the launch of the new John Lewis Christmas advert, but there was another one that provoked the total number of 727 complaints at the Advertising Standards Authority (ASA).

The above-mentioned ad can perhaps be better described as a short film, which focuses on World War I and the truce in the name of the Christmas spirit and humanity. The complaints criticised it due to its allegedly ‘offensive’ nature and the fact, it did not make it clear that it was an advertisement.

The ad refers to the war but surely, it is not the first one to do so – both Guiness and Hovis have already based their promo material on war connotations before. As a result, with respect to Sainsbury’s the ASA Council established that “the ad is not likely to break the rules surrounding serious harm or offence.”

As far as the distinguishability of the advert in itself amongst the editorial material is concerned, it was concluded that despite its long duration, the label ‘Advertisement’ and the voice introduction of the advert made sure that the public is not deceived and it was clear that it was promotional material indeed.

Contrary to the natural feelings of sharing and caring about each other, which the ad was aiming to invoke, it landed some 727 complaints at the ASA. However, the ASA’s strategy is to only pursue claims that inflict genuine harm. Therefore, following a decent common sense approach the Council decided not to investigate these any further. Consequently, having seen the Sainsbury’s Christmas ad, what one would do is to call their loved ones instead of dropping an email to the ASA to express how offended they felt.

Alina Trapova
Assistant Editor

January IP Events

by Pedro Malaquias

Here is the list of Intellectual Property events occurring in January 2015. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP #IPEvents and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

UNITED KINGDOM

  • 12-14 January 2015 – London – QMUL & CCLS – EQE Training Programme on European Patent Law and Practice – Part 2Link.
  • 14 January 2015 – London – UCL IBIL – Intellectual Property and Trade SecretsLink.
  • 21 January 2015 – Southampton – iCLIC – Life and Afterlife in Intellectual PropertyLink.
  • 22 January 2015 – London – Management Forum – EPO Oppositions and Appeals – The Case LawLink.
  • 22 January 2015 – London – Bird & Bird – Selling Online in Europe – Link.
  • 23 January 2015 – London – Management Forum – European Patents – The Case LawLink.
  • 23 January 2015 – London – Creativeworks London – Design WorkshopLink.
  • 26-27 January 2015 – London – C5 – Trade Secrets Protection & EnforcementLink.
  • 26-28 January 2015 – London – IQPC – Oil & Gas IP Summit – Link.
  • 27 January 2015 – London – JIPLP-GRUR Int – Evidence and Procedure in Intellectual Property LitigationLink.
  • 27 January 2015 – London – ITMA – Overlapping trade mark and passing-off actions in the UK and OHIMLink.
  • 27-29 January 2015 – London – Management Forum – Strategic IP Planning – Link.
  • 29 January 2015 – Oxford – OIPRC – Make the butterflies fly in formation? Management of copyright created by academics in UK universitiesLink.
  • 29-30 January 2015 – London – C5 – Trade Mark LitigationLink.

CONTINENTAL EUROPE

  • 12 January 2015 – Milan, Italy – AIPPI – Ambush marketing: judicial perspectiveLink.
  • 15 January 2015 – Madrid, Spain – Bird & Bird – Disruptive technologies, the legal challengesLink.
  • 16 January 2015 – Geneva, Switzerland – WIPO-ILA – Seminar on IP and Private International LawLink.
  • 22 January 2015 – Paris, France – FNDE – Contrats de propriété industrielle sur brevets et savoir-faireLink.
  • 22 January 2015 – Amsterdam, Netherlands – FORUM · Institut für Management GmbH – Joint Licensing Legal & Practical AspectsLink.
  • 23-24 January 2015 – Lucerne, Switzerland – International Communications and Art Law Lucerne i-call – Access to Material and Immaterial Goods – The Relationship Between Intellectual Property and Its Physical EmbodimentLink.
  • 29 January 2015 – Milan, Italy – European Union – Intellectual Property Infrastructure for Small and Medium-sized Enterprises: the business’ perspective Link.

USA

  • 8 January 2015 – Alexandria, Virginia – USPTO – Trade Secret Symposium Link.
  • 15 January 2015 – New York, New York – CSUSA – Federal Resale Royalties for Fine Art with Rep. Jerrold NadlerLink.
  • 26-26 January 2015 – San Francisco, California – IQPC – 14th Anti-Counterfeiting & Brand Protection SummitLink.
  • 28-31 January 2015 – Orlando, Florida – AIPLA – 2015 Mid-Winter Institute: Bringing Innovation to the Public – Link.

ASIA

  • 5-6 January 2015 – Dubai, United Arab Emirates – IIPLA – Annual Congress 2015Link.
  • 6-7 January 2015 – Singapore, Singapore – IP Academy – WSQ Monitor and Maintain IP Processes – Link.
  • 8 January 2015 – Singapore, Singapore – IP Academy – Developments in IP Law Series 2015: Copyright/Registered Designs – Link.
  • 9 January 2015 – Singapore, Singapore – IP Academy – IP INSIGHTS: IP and the Domain Name System – Recent Developments and New UpdatesLink.
  • 12 January 2015 – Singapore, Singapore – IP Academy – IPM Course and Toolkit for Procurement Officers – Link.
  • 14 January 2015 – Beijing, China – INTA & Hogan Lovells – Getting Ready to File Non-traditional Trademarks in China? – Link.
  • 14 January 2015 – Shangai, China – INTA & Hogan Lovells – Getting Ready to File Non-traditional Trademarks in China? – Link.
  • 15 January 2015 – Singapore, Singapore – IP Academy – Developments in IP Law Series 2015: Patents – Link.
  • 15-17 January 2015 – Mumbai, India – ITAG Business Solutions – GIPC: Global Intellectual Property Convention – Link.
  • 21 January 2015 – Beijing, China – INTA – Developing Tactics to Tackle Online Counterfeiting in ChinaLink.
  • 22 January 2015 – Beijing, China – INTA – Building brands abroad in the 21st Century – Link.
  • 27 January 2015 – Singapore, Singapore – IP Academy –Deriving Business Strategies through Patent Analytics – Link.
  • 28-30 January 2015 – Bangalore, India – ITechLaw Asia-Pacific ConferenceLink.
  • 30 January 2015 – Singapore, Singapore – IP Academy – Developments in IP Law Series 2015: Trade Marks / Passing Off – Link.

 

@PedroMMalaquias (LL.M. in Intellectual Property Law at Queen Mary, University of London; Portuguese Qualified lawyer; Queen Mary Journal of Intellectual Property, Assistant Editor)

Better be safe than sorry: should the regulation on patent compulsory licensing for exportation be reconsidered?

by Giancarlo Moretti

The spreading of Ebola across the western part of Africa has raised a number of questions and preoccupations on the current sanitary situation all over the world. Border and custom authorities of each country are implementing a high number of controls, in order to avoid any further contagion in other zones. Beyond this aspect, in legal terms, the current situation deserves attention in relation to the future challenges that some countries may have to face in the future.

Ebola has been recently classified by the European Medicine Agency as an orphan disease, in order to stimulate and incentivise research and to find an effective drug to fight it.[1] Albeit the most part of these researches are at the clinical trial stage, the next steps should be carefully planned. In particular, in case they would receive the marketing approval, how might these drugs be distributed?

The countries predominantly affected by this epidemic are least-developed countries, whose pharmaceutical industries have not been developed yet, even at a preliminary stage. In fact, their generic pharmaceutical industries have not been fully installed and their capacity to sustain the production of large quantities of drugs may constitute a serious hurdle to overcome. Hence, in such a context, as for the patents related to these classes of pharmaceutical goods, it is likely that developed countries or countries with an adequate level of pharmaceutical infrastructure (e.g. India) might be required to utilise compulsory licences for the purposes of exportation. However, international legislation allows only limited scope in order to adopt such types of measures.

In fact, the adoption of TRIPS Article 31bis is still pending[2] and, hence, the only tool available is the WTO Decision of 30 August 2003.[3] Several countries have adopted dedicated pieces of legislation, among which India[4], European Union (EU)[5] and Canada.[6] The latter, in particular, enacted the so called Canada Access to Medicine Regime (CAMR), which was considered as a model by the EU during the adoption of the Regulation n. 816/2006. These instruments have basically remained unexploited in all but one case.

Indeed, so far, only Canada has authorised this mechanism of compulsory licensing in order to allow a domestic enterprise to produce and export an anti-retroviral drug to Rwanda. This compulsory licence was authorised in order to face the dramatic HIV epidemic that was affecting the Rwandan population. The track started in 2006 with Apotex’s request to produce the relevant drugs and was concluded in 2008 with the delivery of the first shipment of medicines. In this case CAMR proved to be quite burdensome, in terms of time and authorisations, and although the debate on its reform was commenced, the Canadian Parliament has not proceeded further.

So, by taking this into account in the present context of the Ebola crisis, it is natural to wonder to what extent the current instruments on patent compulsory licensing are still adequate. The relevant procedures, indeed, are quite complicated and demand a large expenditure of time. That is one of the key aspects to consider for enabling a suitable instrument. The issues, hence, still remain open. Although other possible routes may be adopted, it is undeniable that the regulation of compulsory licensing for exports should be reconsidered, both at a domestic and at an international level, in order to set forth a long-awaited and adequate framework in order to tackle future challenges. Perhaps, in this case, ‘better be safe than sorry’ is the best strategy to address these issues.

[1] See http://www.ema.europa.eu/ema/index.jsp?curl=pages/news_and_events/news/2014/10/news_detail_002190.jsp&mid=WC0b01ac058004d5c1

[2] See http://www.wto.org/english/tratop_e/trips_e/wtl641_e.htm

[3] See http://www.wto.org/english/tratop_e/trips_e/implem_para6_e.htm

[4] Patent Act (India) Section 92A

[5] Regulation (EC) No 816/2006 of the European Parliament and of the Council of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems [2006] OJ L 157/1

[6] Patent Act (Canada) Section 21

Spanish ancillary right over news content leads Google to terminate News in Spain

by Pedro Malaquias

Google has announced that, on 16 December, it is going to shut down Google News in Spain and remove Spanish publishers from the service [link]. According to the company, ‘Google News is a computer-generated news site that aggregates headlines from news sources worldwide, groups similar stories together and displays them according to each reader’s personalized interests’.

The move is taken as a reaction to the forthcoming  entry into force (1 January 2015) of the new Spanish Intellectual Property Law (for further background information on the Spanish IP reform, see this and this) and, in particular, its Article 32(2). Under this provision, online news aggregators shall pay an equitable remuneration to right holders for the use of small snippets taken from news publications.

As a result and considering the size of the concerned player, the establishment of an ancillary copyright for news contents seems to be going up in flames. Google will stop providing the service in Spain (and lose access to certain data) and Spanish costumers will lose the chance to use it. Content providers will not be paid and will lose the revenues that could have resulted from click in advertisements from users that were directed to their websites from Google News. Everyone seems to be losing.

This resembles the failure of a similar initiative in Germany. However, in this country, the so-called Google Tax resulted in VG Media collecting money from news aggregators and search engines, but licencing the same content to Google (the market leader) for free. A similar outcome seems unlikely in Spain. That is so as the right cannot be waived and requires those who wish to display non-insignificant excerpts to pay a licence fee.

These outcomes should lead Günther Oettinger, the new EU Commissioner for Digital Economy and Society, to better reflect on the future introduction of a similar kind of paracopyright at an EU level (see here). The possibility of solving the issues with this ancillary right via the net neutrality debate should also be followed with particular care (on this aspect, see here).

Amazon v Austro-Mechana, part II

by Axel P Ringelhann

On 18 November 2014 the Oberster Gerichtshof (Supreme Court, Austria) stayed its proceedings in the above-mentioned case in order to ask the CJEU for a preliminary ruling. The referring court wishes to know: whether the right to “fair compensation” according to Article 5(2)(b) of Directive 2001/29, which in Austrian law is against persons who, acting on a commercial basis and for remuneration, are first to place on the domestic market recording media is a “matter relating to tort, delict or quasi-delict”, according to Article 5(3) of Council Regulation (EC) No 44/2001.

This is the second request for a preliminary ruling in the Amazon v Austro-Mechana proceedings. Previously, the same referring court requested a preliminary ruling as regards Article 5(2)(b) of Directive 2001/29/EC concerning a demand by the Austrian copyright collecting society Austro-Mechana for payment of the remuneration due as a result of the placing on the market of recording media under the Austrian legislation (C‑521/11). The CJEU handed down its judgment on 11 July 2013, which evidently supports Austro-Mechana’s standpoint.

The present request for a preliminary ruling addresses the issue of jurisdiction. Austro-Mechana advocates that according to the CJEU the “fair compensation” serves to compensate the “damage” suffered by the holders of the exclusive right of reproduction. Accordingly, Austro-Mechana claims damages and argues that the jurisdiction would be covered by Article 5(3) of Council Regulation (EC) No 44/2001. Amazon, on the other hand, objects that the provision only applies to claims originating from a delict or quasi-delict. Conversely, the “fair compensation” is based on a permitted action, which serves to establish a fair compensation for reproductions intended for private use. For these reproductions the right owner’s prior consent is not required. Thus these actions are allowed, they do not constitute a delict or quasi-delict. According to Amazon the Oberste Gerichtshof itself followed this line of reasoning in a previous judgement in the year 2006.

Axel Ringelhann
Assistant Editor

Louboutin’s red high-heel sole is a distinctive (and figurative) sign of origin

by Axel P Ringelhann

As Frouke Hekker from the Novagraaf’s Competence Centre in Amsterdam reported last week, on 18 November the Court of Appeal in Brussels handed down judgement over Louboutin’s red high-heel sole trade mark (2014/AR/843). The 44 pages long judgement reversed the contested decision of the Commercial Court of Brussels, which was rendered earlier this year.

In a dispute with the Dutch shoe retailer Van Dalen, the court of first instance had declared Louboutin’s red sole trade mark, which is registered for “high-heeled shoes, except orthopaedic footwear” in Class 25 at the Benelux Office, as invalid. It reasoned that the red sole should not be assessed as a figurative or a colour mark, but as a 3D mark. The court then held that due to the substantial value of the trademark given by the shape itself, the trade mark was not able to be registered.

The Court of Appeal, on the other hand referred to the Benelux trade mark register, which expressly states that the trade mark consist of the colour red, is figurative and is applied on the sole of a shoe. The judges consequently assessed the sign at issue on the basis of a figurative trade mark. They found that the red sole departs significantly from the norm of what is common in the sector and that the filed documents sufficiently demonstrate that the relevant public perceive the sign as an indication of origin. What it is more, the court held that this conclusion could not be precluded by the fact that other designers of high-heeled shoes, such as John Doe, Yves Saint Laurent and Vivian Westwood, also apply a red colour to the sole of certain shoes.The Court of Appeal concluded that the application for invalidity is unfounded and that due to the (quasi-)identity between the signs and goods at issue, the Van Dalen-shoe constitutes an infringement of Louboutin’s red sole trade mark.

 

Axel Ringelhann, QMJIP Assistant Editor

 

December IP Events

by Pedro Malaquias

Here is the list of Intellectual Property events occurring in December 2014. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP #IPEvents and we can add it to the list.

UNITED KINGDOM

  • 1 December 2014 – Manchester – CIPA – Patents Case Law. Link.
  • 1 December 2014 – London – Management Forum – How to Ensure Sufficiency of Disclosure into EPO Patent Applications. Link.
  • 1 December 2014 – London – The Open Data Institute – Open Data in a Day. Link.
  • 2 December 2014 – Oxford – OIPRC – Major Changes to Canada’s IP Regime: Protecting and Enforcing Copyright and Trademarks Internationally. Link.
  • 2 December 2014 – London – CIPA – US Patent Law Formalities for IP Administrators. Link.
  • 2 December 2014 – London – MBL – The Law of Designs – A Detailed Introduction. Link.
  • 2 December 2014 – York – York St John University – Patent Fever: HIV/AIDS and the epidemic of intellectual property. Link.
  • 2 December 2014 – ramsac Limited – Godalming – Data Protection – Is Your Head in the Cloud? Link.
  • 2-3 December 2014 – London – IBC Legal – Standards and Patents Conference 2014. Link.
  • 3 December 2014 – London – City University London – New media between copyright protection and the access to network conundrum. Link.
  • 3 December 2014 – Bournemouth – iCLIC/CIPPM – Protecting Olympic Symbols: has event specific legislation struck the right balance? Link.
  • 3 December 2014 – Coleford – FSB Gloucestershire and West of England – Protecting your Intellectual Property. Link.
  • 3 December 2014 – London – ASLIB – Digital Copyright. Link.
  • 3 December 2014 – London – Digital Catapult Centre 101 – Digital Breakfast – A New Blueprint for Copyright Licensing. Link.
  • 3 December 2014 – LondonDigital Catapult Centre 101 – Understanding UK Copyright Law: An Interactive Workshop for Photographers and Illustrators. Link.
  • 4 December 2014 – Southampton – iCLIC – Creative works and copyright infringement on the internet. Link.
  • 4 December 2014 – Southampton – ITMA – IPEC – the practicalities of conducting trade mark litigation. Link.
  • 4 December 2014 – London – UNION-IP – UNION Christmas Dinner Meeting: IP and Litigation in 2014 and Beyond. Link.
  • 4 December 2014 – London – MBL – Patents Law – An Update. Link
  • 4 December 2014 – London – IBC Legal – International Patent Litigation. Link.
  • 4 December 2014 – London – qLegal – Essential Legal Issues to Consider for your Business. Link.
  • 4 December 2014 – London – qLegal – What is Intellectual Property and why is it so important? Link.
  • 4-5 December 2014 – London – Management Forum – Advanced PCT Formalities. Link.
  • 4-5 December 2014 – London – ERA & QMUL CLLS – Preparing for the Unitary Patent Package. Link.
  • 5 December 2014 – London – CREATe – Valuing the Public Domain – A Workshop for UK Creative Firms. Link.
  • 5 December 2014 – Manchester – ITMA – Northern Christmas Lunch. Link.
  • 5 December 2014 – London – Management Forum – Introduction to Intellectual Property. Link.
  • 8 December 2014 – London – Management Forum – Working with Confidential Agreements. Link.
  • 8 December 2014 – Bristol – CIPA – Patents Case Law. Link.
  • 8 December 2014 – London (CCLS 2.1.) – QMUL & CCLS – Research Café: Prof. Sterling on Space Copyright Law.
  • 9 December 2014 – West Bromwich – Nachural Events – Intellectual Property and International Trade. Link.
  • 9 December 2014 – London – qLegal – Intellectual Property: How do I protect my business assets? Link.
  • 9 December 2014 – London – ITMA – ITMA Christmas Lunch. Link.
  • 9 December 2014 – London – MBL – The Law of Passing Off. Link.
  • 9 December 2014 – London – MBL – Patents & Supplemental Protection Certificates. Link.
  • 9-10 December 2014 – London – MBL – A to Z of Negotiating & Drafting IT Contracts. Link.
  • 10 December 2014 – Lancaster – Lancaster University – Managing your Intellectual Property in China. Link.
  • 10 December 2014 – London – MBL – Advising on Internet Law – A Practical Guide. Link.
  • 10 December 2014 – London – Bristows – Commercial IP Update Seminar: Deals involving intellectual property – What’s new? Link.
  • 10-11 December 2014 – London – IBC Legal – International Copyright Law. Link.
  • 11 December 2014 – London – ASLIB – Copyright Policies, Dealing with Infringements, and Risk Management. Link.
  • 11 December 2014 – London – IPCLC – Intellectual Property, Copyright, Licensing and Commercialisation. Link.
  • 12 December 2014 – London – eLAWnora – Nothing but exceptional copyright exceptions. Link.
  • 16 December 2014 – London – Bristows – Brands on the line: Trademarks on the internet. Link.
  • 16 December 2014 – Leeds – GrowthAccelerator – Understanding, protecting and exploiting my IP. Link.
  • 17 December 2014 – London – AIPPI UK – Are you sitting comfortably? A year of UK patent cases. Link.
  • 17 December 2014 – Southampton – iCLIC/CIPPM – A right to digital identity. Link.

CONTINENTAL EUROPE

  • 1 December 2014 – Zaragoza, Spain – ITAINNOVA – Jornada: Cómo gestionar una patente. Link.
  • 3 December 2014 – Geneva, Switzerland – WIPO – Does Intellectual Property Have Gender? Link.
  • 3-4 December 2014 – Munich, Germany – Max Planck Institute – Open Access Ambassadors. Link.
  • 4 December 2014 – Paris, France – QMUL – Patents and Innovation: Adjustment of the Criteria of Patentability under the Patents Act of India. Link.
  • 4-5 December 2014 – Brussels, Belgium – Premier Cercle – IP Summit. Link.
  • 4-5 December 2014 – Geneva, Switzerland – WIPO – WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Precedent and Practice. Link.
  • 4-5 December 2014 – Munich, Germany – FORUM · Institut für Management – Licensing. Link.
  • 5 December 2014 – Geneva, Switzerland – WIPO – Innovation and Access to Medicines: A Case Study for HIV/AIDS and Hepatitis C. Link.
  • 5 December 2014 – Amsterdam, Netherlands – FORUM · Institut für Management – OHIM’s Mediation Service. Link.
  • 8 December 2014 – Sofia, Bulgaria – MARQUES – Meet the Judges – Trade Mark Judges on Trade Mark Law. Link.
  • 8-9 December 2014 – Munich, Germany – INTA & GRUR – When Trademarks Overlap with Other IP Rights. Link.
  • 9-10 December 2014 – Amsterdam, Netherlands – FORUM · Institut für Management – S. Licensing Law. Link.
  • 9-11 December 2014 – Paris, France – ICC – 8th Pan European IP Summit. Link.
  • 10 December 2014 – Barcelona, Spain – Herrero & Asociados – ¿Cómo proteger tu idea tecnológica? Link.
  • 11 December 2014 – Amsterdam, Netherlands – FORUM · Institut für Management – Patent License Agreement. Link.
  • 12 December 2014 – Amsterdam, Netherlands – FORUM · Institut für Management – EU & US Cross-Border Patent Litigation. Link.

USA

  • 3 December 2014 – Boston, Massachusetts, USA – The Copyright Society of the USA – Unhappy Together: Copyright Battles over Digital Music Royalties. Link.
  • 4-5 December 2014 – Santa Clara, California, USA – AIPLA – 2014 Trade Secret Law Summit. Link.
  • 9 December 2014 – The Fairmont San Jose, California, USA – Managing Intellectual Property – International Woman’s Leadership Forum. Link.
  • 10 December 2014 – San Jose, California, USA – Managing Intellectual Property – European Patent Reform Forum USA 2014. Link.
  • 10 December 2014 – Palo Alto, California, USA – The Copyright Society of the USA – Copyright Issues in Silicon Valley. Link.
  • 11 December 2014 – New York, New York, USA – The Copyright Society of the USA – Fair Compensation or a Pandora’s Box? Pre-1972 Sound Recordings & Streaming Radio. Link.
  • 11-12 December 2014 – East Palo Alto, California, USA – Berkeley Center for Law and Technology & Stanford Law School – Advanced Patent Law Institute: Silicon Valley (APLISV). Link.
  • 12 December 2014 – New York, New York, USA – Managing Intellectual Property – European Patent Reform Forum USA 2014. Link.

SOUTH AMERICA

  • 11 December 2014 – Asuncion, Paraguay – MARQUES – Coexistence Agreement Workshop. Link.

ASIA

  • 1 December 2014 – Tokyo, Japan – WIPO – Global Intellectual Property Strategy and WIPO Services. Link.
  • 1-6 December 2014 – Hong Kong Special Administrative Region of the People’s Republic of China – Hong Kong Science and Technology Parks Corporation – APAC Innovation Summit. Link.
  • 2 December 2014 – Singapore – IP Academy – IP Insights: Valuation of Intellectual Property & Intangible Assets: Your Goodwill. Link.
  • 4 December 2014 – Hong Kong Special Administrative Region of the People’s Republic of China – Bird and Bird – Social Media – Are you aware of the risks? Link.
  • 4-5 December 2014 – Hong Kong Special Administrative Region of the People’s Republic of China – HKSAR Government, Hong Kong Trade Development Council and Hong Kong Design Centre – Business of IP Asia Forum. Link.
  • 7-9 December 2014 – Shanghai, People’s Republic of China – IPBC Asia – IP Business Congress. Link.
  • 9 December 2014 – Singapore – Asian Legal Business – ALB Singapore IP Conference 2014. Link.
  • 11 December 2014 – Hong Kong Special Administrative Region of the People’s Republic of China – Bird and Bird – Social Media – Are you aware of the risks? Link.
  • 17 December 2014 – Kuala Lumpur, Malaysia – INTA – Recent Trends on Trademark Cases in EU and Their Implications in Malaysia. Link.

@PedroMMalaquias (LL.M. in Intellectual Property Law at Queen Mary, University of London; Portuguese Qualified lawyer; Queen Mary Journal of Intellectual Property, Assistant Editor)

The Rubik’s Cube remains protected!

by Axel P Ringelhann

Last week the General Court of the European Union found that the depiction of a sign representing a cube with surfaces having a grid structure (which is commonly known as the Rubik’s Cube) is capable of being registered as a three-dimensional trade mark with respect to three-dimensional puzzles in Class 28 of the Nice Agreement.

The trade mark was originally registered on 6 April 1999, and renewed on 10 November 2006. On 15 November 2006, the applicant, Simba Toys GmbH & Co. filed a request for a declaration of invalidity of the trade mark based on absolute grounds for refusal, namely Article 7(1)(a) to (c) and (e) CTMR.

Both, the Cancellation Division as well as the Boards of Appeal of OHIM rejected the application for a declaration of invalidity in its entirety. The applicant appealed to the General Court.

The applicant claimed that the black lines forming the grid on the cube are the consequence of an alleged rotating capability of individual elements of the cube in question. The GC, however, found that with respect to Article 7(1)(e)(ii) CTMR it is necessary to establish if the essential characteristics of the mark at issue themselves perform the technical function of the goods at issue and have been chosen to perform that function, and not that those characteristics are the result of that function. Furthermore, a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element.

The GC further emphasized that the registration of that mark does not have the effect of protecting a rotating capability which the shape in question allegedly possesses, but solely the shape of a cube the surfaces of which bear a grid structure, which gives it the appearance of a ‘black cage’. That mark cannot in particular prevent third parties from marketing three-dimensional puzzles that have a shape different from that of a cube or that have the shape of a cube but whose surfaces do not consist of a grid structure similar to that on the contested mark or any other similar motif, and prevent those puzzles from incorporating or not incorporating a rotating capability.

As regards the applicant’s claim based on Article 7(1)(e)(i) CTMR (which provides that ‘signs which consist exclusively of […] the shape which results from the nature of the goods themselves […] shall not be registered’) the GC found that it is clear that the nature of the three-dimensional puzzles in no way requires that those goods have the shape of a cube with surfaces that have a grid structure. Three-dimensional puzzles, even those with a rotating capability, appeared in a multitude of different shapes, ranging inter alia from the most common geometric shapes (for example cubes, pyramids, spheres and cones) to those of buildings, monuments, objects or animals.

In another claim, the applicant challenged the contested decision on the ground of Article 7(1)(e)(iii) CTMR. It argued that, since the individual features of the shape at issue are necessary for a three-dimensional puzzle with ‘certain optimised individual characteristics (transformability, [a] certain degree of difficulty [and] ergonomic functions)’, the shape gives substantial value to the goods concerned and their commercial success. The GC stated that the applicant’s line of argument is based on the idea that substantial value is conferred on the goods concerned by certain functional features that the shape in question allegedly possesses. The applicant, however, did not demonstrate, or even claim, that such substantial value flows from the aesthetic aspect of that shape.
Concerning Article 7(1)(b) CTMR, the GC held that is for the applicant for revocation or for a declaration of invalidity to adduce evidence in support of its application for revocation or for a declaration of invalidity. Accordingly, it was for the applicant to produce evidence to show the alleged absence of distinctive character of the contested mark and, in particular, to demonstrate that the contested mark resembles ‘the shape most likely to be taken by the product in question’ for the purposes of the relevant case-law. However, it was unable to demonstrate this. What is more, the applicant has not established to the requisite legal standard that the shape in question constitutes the norm in the sector of three-dimensional puzzles.

Regarding the applicant’s final claim, which was based on Article 7(1)(c) CTMR, the GC found that the relevant public consists not of professionals but of average consumers. Furthermore, there is no essential link between a possible rotating capability or even any other possibility of moving certain elements of the cube in question, and the presence, on the surfaces of that cube, of bold black lines. Therefore the applicant cannot claim that professionals in the sector will immediately infer from the graphic representations of the contested mark that the black lines are a consequence of the rotating capability of the elements of the cube in question.

This case is of particular interest, since it is the first Judgement of the GC (and the CJEU respectively) not the reject a CTM application on the ground of Article 7(1)(e)(ii) CTMR.

The first case at the CJEU regarding Article 7(1)(e)(ii) CTMR was the Philips razor case (C-299/99). According to the Court the technical function concerned was clearly apparent from the graphic representation of the shape in question, which displayed in particular, on the head of the electric razor, three circular heads with rotating blades in the shape of an equilateral triangle.

Also in the famous Red Lego brick case (C-48/09 P) the CJEU rejected the trade mark. The graphic representation of the mark at issue displayed in particular two rows of studs on the upper surface of the toy brick in question. The goods concerned being ‘construction toys’, it could be logically inferred from those studs that they were designed for the assembly of toy bricks and that those toy bricks contained a hollow underside and secondary projections, even though those latter elements were not visible on that representation.

In contrast, in the case at hand (T‑450/09), the cube per se and the grid structure which appears on each surface of that cube do not perform a technical function of the goods concerned. Similarly, the shape of the trade mark does not result of the good itself, nor gives it a substantial value to the goods at hand.

Axel Ringelhann
Assistant Editor