Archive:January 2017

The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks
Italy ratifies UPC Agreement and Introduces Provisions Against Indirect Counterfeiting
Netflix and Italian SIAE Reach Agreement for Protection of Music Catalogue on Online Platform
An Apple a Day Doesn’t Keep Litigation at Bay
2016-2017 Technical Review of Gene Technology Regulations 2001
Software as a Service (Saas): Is it a Good or Service?
EU recap: A decision of the Board of Appeal in the case of the trademark application consisting of a combination of colours
FR: Will the misleading use of a geographical indication for handicraft products be deemed counterfeiting? The “Laguiole” case

The Italian Government Launches a Tender for Granting Allowances for the Promotion of Historical Trademarks

2017 provides companies based and operating in Italy with a new opportunity for promoting their IP assets.

The Italian Government has launched a tender for granting allowances intended to support historical trademarks, for a total amount of 4,5 million Euro. The purpose of this new initiative is to promote and boost the historical and cultural entrepreneurial heritage of Italy by supporting specific national trademarks.

Allowances are granted for expenses related to manufacturing and commercial promotion of the historical trademark. This includes the purchase of goods and services for manufacturing purposes based on a plan for the promotion of the trademark involving goods and services falling under the scope of protection of the trademark – i.e. Nice classes for which the trademark is registered.

Further allowances could be also granted for activities related to the strengthening of the historical trademark, its extension at European and international level and to Nice classes other than those for which the trademark was previously registered, provided that their application comes along with another one for allowances related to the promotion of the trademark as described above.

In order to obtain the benefit of such allowances, companies of micro, small and medium dimensions complying with specific requirements must prove that their historical trademark is valid, registered before the Italian Patent and Trademark Office (UIBM) or the EUIPO with seniority claim for registration before the UIBM, not revoked, and that its application for registration was filed before the UIBM before January 1, 1967.

Companies can file their application from April 4, 2017 and until allowances stock lasts.

By: Alessandra Feller and Alessia Castelli

Italy ratifies UPC Agreement and Introduces Provisions Against Indirect Counterfeiting

In December 2016 the Italian government ratified the Unified Patent Court Agreement (UPCA). By this ratification, Italian patent law now has a new rule on the prevention of indirect use of an invention (“indirect counterfeiting”), which is unprecedented in Italy.

The text of the new law amends the Italian Industrial Property Code by reference to Article 26 of the UPCA, by stating:

“A patent confers on its proprietor the right to prevent any third party not having the proprietor’s consent, from supplying or offering to supply, within the territory of the state in which that patent has effect, any person other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect therein, when the third party knows, or should have known by ordinary diligence, that those means are suitable and intended for putting that invention into effect.

The above paragraph does not apply when the means are common commercial products, except where the third party induces the person supplied to perform any of the acts prohibited under the qualification of direct use of the invention.”

This law – which was added to the pre-existing Article 66 of the Italian Industrial Property Code – makes reference to a list of persons and acts excluded from being able to exploit an invention. Such a list is contained in Article 68 of the Italian Industrial Property Code, which currently remains unmodified.

The implementation of this rule on “indirect counterfeiting” represents a step forward in legal protection for patents in Italy.

By: Alessandra Feller and Alessia Castelli

Netflix and Italian SIAE Reach Agreement for Protection of Music Catalogue on Online Platform

In November 2016 the Italian collecting society SIAE announced that it closed a license agreement for the use of the musical and audiovisual compositions with Netflix, one of the main international operators for online video-on-demand services. The aim of the agreement is to grant  equitable remuneration to authors of audiovisual works as well as remuneration to authors and publishers of soundtracks included in audiovisual works distributed by Netflix to its Italian subscribers.

The president of SIAE commented that the execution of this agreement represents an important achievement for the recognition of creative works in the sector of digital distribution. The economic value generated by the works protected by SIAE and their distribution by Netflix is a concrete contribution to the Italian audiovisual market, providing an important opportunity for product innovation.  The agreement also should encourage professional creative activity by younger talent.

By: Alessandra Feller and Alessia Castelli

An Apple a Day Doesn’t Keep Litigation at Bay

Victoria’s Supreme Court of Appeal has granted Apple and Pear Australia Limited’s (APAL) appeal in relation to their dispute with Pink Lady America LLC (PLA) over the refreshed “flowing heart” Pink Lady composite trade mark used in association with everyone’s favourite apple variety.[1],[2]

The dispute brought to light a number of crunchy commercial contract issues relating to agreements between APAL, PLA and the International Pink Lady Alliance (Alliance) that dealt with rights to particular trade marks registered in Chile (one of the key growing regions for the Cripps Pink and Rosy Glow apple varieties which are sold under the “Pink Lady” brand). PLA left the Alliance in June 2010.

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2016-2017 Technical Review of Gene Technology Regulations 2001

UPDATE: OGTR Releases Guidelines on Organisms Containing “Gene Drives”

The deadline for submissions on the discussion paper prepared by the Office of the Australian Gene Technology Regulator (OGTR) concerning its review of the Gene Technology Regulations closed on 16 December 2016, and submissions received by the Regulator have yet to be made publicly available.

However, the OGTR has now issued guidelines for Institutional Biosafety Committees (IBCs) and researchers on the regulatory requirements for organisms containing engineered ‘gene drives’ following the discussion paper consultation which revealed that some stakeholders were not aware organisms genetically modified to contain ‘gene drives’ are GMOs. The guidelines reflect the current requirements under the Gene Technology Act 2000 (Act) and will be amended to reflect any changes that are ultimately made.

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Software as a Service (Saas): Is it a Good or Service?

The United States Federal Circuit Court of Appeals (CAFC) recently vacated a Trademark Trial and Appeal Board (TTAB) ruling that had ordered the cancelation of JobDiva’s JOBDIVA service marks for personnel placement and recruitment services on the basis of abandonment. In re Jobdiva, Inc., No. 2015-1960, 2016 WL 7187434 (Fed. Cir. Dec. 12, 2016).

JobDiva’s software provides a database of employment applications for hiring managers to fill job openings. The software uses automated “harvesters” to find job candidates, reviews resumes, and helps hiring managers directly communicate with job candidates. The product is often delivered on a software-as-a-service or “SaaS” model. With the SaaS format, customers access JobDiva software remotely via the internet, rather than through software downloaded on a personal computer.

JobDiva initially petitioned to cancel the registration for JOBVITE service marks owned by Jobvite, Inc., alleging a likelihood of confusion. But Jobvite counterclaimed and petitioned to cancel JobDiva’s marks, arguing that JobDiva did not actually perform personnel placement and recruitment services, but merely used its marks on software offerings. A registration may be cancelled for abandonment if the mark has not been used for the goods or services specified in the registration. The TTAB agreed with Jobvite, appearing to apply a bright-line rule that required JobDiva to show “it performed the ‘personnel placement and recruitment’ services in a way other than having its software perform those services.”

A three-person panel of the CAFC disagreed. It acknowledged that “the line between services and products sometimes blurs.” But “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service.” To determine whether a mark is used in connection with services described in a registration, a key consideration is user perception. Thus, the ultimate question is whether purchasers would perceive JobDiva’s marks to identify personnel placement and recruitment services, even if the software performs each step of the service. Because consumer perception is a fact-based inquiry determined on a case-by-case basis, and the TTAB applied the wrong legal standard, the opinion below was vacated and remanded. This CAFC opinion rejects a rigid test and states that “careful analysis is required to determine whether web-based offerings, like those JobDiva provides, are products or services….” Rather, a more nuanced assessment, based on consumer perception must be applied. U.S. trademark practitioners should consider this approach in crafting appropriate goods and services and formulating enforcement strategies.

By: David Byer and Shamus Hyland

The CAFC opinion can be found here.

EU recap: A decision of the Board of Appeal in the case of the trademark application consisting of a combination of colours

Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017click here.

On 19 October 2016, the Board of Appeal upheld a decision by the Cancellation Division entirely invalidating a graphic trademark registered on 7 December 2007 by the Hudson’s Bay Company. The basis for the invalidation was Article 51 par. 1a), pursuant to which a trademark must be deemed as having expired if it is not used for a period of five years.

The trademark in question consisted of four stripes of different colours: green, red, yellow and blue, and was registered as a graphic trademark, not as a combination of colours per se. The Hudson’s Bay Company used that colour combination on its products, but not in the form of stripes on a white rectangle, but as stripes running across the entire width of a product. The Cancellation Division found that, placed on a given product in that manner, the colours did not function as a trademark, that is, they did not serve to identify the origin of the product, but only constituted a decorative design. In addition, the products themselves appeared in different colour versions and not in the version reserved for the mark.

The Cancellation Division found that the relevant target group of consumers perceived the striped pattern as a design, and not as a trademark, and that the Hudson’s Bay Company had not provided evidence attesting that this was not the case. The Hudson’s Bay Company lodged an appeal against the decision to invalidate, arguing, among other things, that the colour combination used always consists of four colours of evenly placed stripes in the colours green, red, yellow and blue. The company added that, of course, the colour scheme does constitute a decoration, but is used for the purpose of identifying the company.

The Board of Appeal dismissed the appeal. It found that the trademark had been registered as a graphic mark, not as a colour combination. Therefore, the use of the trademark cannot differ from what was registered, and so the same combination of colours must appear in the same order and in the same proportions. The Board of Appeal found that, used in the manner it is, the mark should not have been registered as a graphic trademark, but as a colour combination per se. Certainly, the Hudson’s Bay Company would then enjoy such protection, and there would be no doubt concerning actual use. Nevertheless, because the colour combination was registered as a graphic trademark, the Board of Appeal upheld the stance of the Cancellation Division that the trademark registered had not actually been used for five years and dismissed the appeal.



FR: Will the misleading use of a geographical indication for handicraft products be deemed counterfeiting? The “Laguiole” case

As stated in a previous article published in the Trademark and Unfair Competition Bulletin (page 11) , the Act no. 2014–344 on consumer protection, named the “Hamon Act” and dated 17 March 2014, created a new industrial property right: the “Geographical Indications protecting Industrial Products and Crafts” (or “Indications Géographiques protégeant les Produits Industriels et Artisanaux”, hereinater, “IGPIA”) in order to include industrial and handicraft products in the scope of the protection of geographical indications.

In the same article, the authors highlighted the fact that prior to the implementation of the aforementioned provision, there was a lack of protection since a third party could use the name of a famous place or city and register it as a trademark to misleadingly sell handicraft products under that name.

Introduction to the Laguiole case

A famous example was the “Laguiole cutlery” case where a third party, among others, was using the famous French city name of “Laguiole” as a trademark to flood the market with knives made in China under that brand. Following the scandal that ensued, the Laguiole municipality launched an action against several companies and legal persons that had registered 27 trademarks in total, on the ground that such use of “Laguiole” was deceptive.

Indeed, the trademark “Laguiole” had been filled in almost all trademarks’ classes and therefore the Laguiole municipality was prevented from using such trademark for its own activities and, in particular, for its renowned cheese and cutlery.

After a first-instance ruling, the Paris Court of Appeal rejected the Laguiole municipality’s action in 2014 which was subsequently presented to the French Supreme Court (“Cour de cassation”).

The Cour de cassation ruling

By a ruling dated 4 October 2016, the Cour de cassation overturned parts of the ruling of the Paris Court of Appeal and welcomed arguments of the Laguiole municipality.

Indeed, the Cour de cassation considered that the use of the “Laguiole” trademark by the defendants was misleading and confusing to consumers since the products sold under that trademark were not manufactured in such place.

In addition to such argument based on consumer protection laws, several arguments grounded on trademark law were also favourably received by the Cour de cassation. However, as such court only has jurisdiction over legal qualification but not on facts, the end of this saga will be written by the Court of Appeal to which the case has been remanded to for the final ruling.

The Court of Appeal will hopefully close the ongoing debate. However, the Court of Appeal may also side with the initial Paris Court of Appeal ruling. In such a case, the Cour de cassation may have to hear the case again.

Nevertheless, such litigation intervenes in a context where IGPIA has effectively become protected. Even if Laguiole was not among the five applications filed for IGPIA in France (out of which only one has been granted so far), the broad power given to geographical indications with the adoption of European Regulation No 2015/2424 amending the Community Trade Mark Regulation and the European Directive No 2015/2436 approximating the laws of the member states relating to trade marks may have an impact on actors’ practices.

Indeed, according to these regulations, the national right granted on geographical indications through IGPIA or otherwise conferred by the courts, may materialize a ground for refusal for not only trademark applications but also for European trademarks. There is thus a strong incentive to seek this protection by any means necessary.

By: Claude Armingaud and Olivia Roche

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