(Almost) never for money,
always for love
Isn't it pure poetry?
Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Merpel, Jeremy Phillips, Eleonora Rosati, Nicola Searle, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here
For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.
Birgit Clark is on Sabbatical till the end of the year
Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.
(Almost) never for money,
always for love
Isn't it pure poetry?
|New Democracy leader and his slogan|
|... and SYRIZA leader with his version|
|The January 'comparative' pic as appearing in iefimerida.com|
Here's the third in the series of occasional guest posts from Japan from one-time guest Kat and Class 46 trade mark blogger Laetitia Lagarde. Laetitia's first post, on product placement, can be read here. and her second post, covering non-traditional marks, is here. Now she looks at the copyright/design interface:
Copyright does not enjoy the same degree of harmonization throughout EU as trade mark and design laws do; the intersection of these rights is nonetheless very common and a product's protection can fall within one or more IP right category.
At the EU level, the interaction between copyright and design is found in Article 17 of the Designs Directive 98/71, “Relationship to copyright":"A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State”.As a result, the cumulative protection by both copyright and design laws differs greatly among the EU countries according to their standard of originality —which is higher than the requirements of “individual character” for design protection.For example, France and Benelux Countries have recognized the principle of “unité de l’art,” meaning that copyright protection for both applied art and industrial works shall be determined under the same criteria. However Germany has a very high threshold which excludes most designs from copyright protection; the UK requires a level of "artistic craftsmanship"; and Italy only protects designs which can be separated from the product to which they are applied (the principle of "scindibilita").This Kat remembers fondly her previous home jurisdiction’s internal conflict, yet passionate debate (in the case of Italy, the word “passionate” is something of an inderstatement) about protecting luxury furniture designs; this caused a delay in implementing the EU directive which granted design, prototypes and patents for, among others, furniture and home accessories the same copyright protection as other artistic works. (see here). The underlying reasons for trying to exclude this double protection were not only to avoid copyright protection continuing after the lapse of registered rights, but also to encourage design registration.Now turning to Japan, the majority of court precedents have ruled implicitly or explicitly that copyright is not denied by the mere fact that a work is an industrial product. The Design Act protects exclusively registered designs defined as “the shape, patterns or colours, or any combination of them, of an article which creates an aesthetic impression through the eye” as long as it does not fall under the category of unregistrable designs. The Copyright Act explicitly states that works of artistic craftsmanship are protected as artistic works. However, there are no provisions governing other types of industrial products (works of applied art). Therefore a decision on whether a certain product is protected is a matter of interpretation. Court decisions basically recognize it is not appropriate to grant the same level of copyright protection to industrial products as in the case of fine arts. Accordingly copyright protection is granted to an industrial product only if it is “deemed comparable to fine arts or it has the qualities of fine arts”. In practice, only a very limited number of industrial products can satisfy the requirements for copyright protection.
Philosophy on designs from Japanese schoolchildren hereA decision on whether “it is deemed comparable to fine arts” or “it has the qualities of fine arts” is made on the basis of (1) whether the work has a high level of aesthetic expression or artistic qualities; (2) whether it is produced only in pursuit of aesthetic expression, (3) without substantial restrictions for practical purposes; and (4) whether it can serve as an object of art, or a complete artistic work, apart from its functionality.
With that background, the IP High Court of Japan recently issued a Judgment (Stokke v Katoji, Intellectual Property High Court, April 14, 2015, Hei 26 (ne) No. 10063) which recognized the copyright in an industrial design, namely for the TRIPP TRAPP children’s chair (Stokke has known some IP trials and tribulations for the same chair in Europe, see here). The High Court reversed the lower court Judgment of the Tokyo District Court (herewhich denied copyright protection for industrial designs, in particular 3D designs. The Appeal Court held that “there is no reasonable reason to limit a finding of copyright protection for applied arts on the ground of a protection by Design Law”, thereby considerably lowering the threshold for copyright protection for applied arts where a finding of originality under the Copyright Act would be sufficient.
In conclusion however, the Stokke decision denied copyright infringement because the Katoji products were not similar to those of TRIPP TRAPP. This recent Tokyo Court decision thus allows copyright holders to sue for copyright infringement even in the absence of design registration under the Design Law. This will facilitate the enforcement of the Unfair Competition Prevention Act, which prohibits for example the production of slavish copies of a product design for three years from the first sale in Japan. Japanese practitioners are wondering whether Stokke will become a predominant trend for future similar cases.
Stokke AS is also the holder of trade mark rights relating to the chair. The slogan “The chair that grows with the child” has been used in the marketing of the Tripp Trapp chair since the 1980s. Looks like IP rights also grow with the chair in Japan...
|Getting to the office on a winter morning|
can be an invigorating experience ...
Case T‑521/13 Alpinestars Research Srl v OHIM, Kean Tung Cho and Ling-Yuan Wang Yu is a grand old General Court scrap in which everyone guesses how modern Greek consumers might view a word that orginated from Classical Greek.
The Coalition for Affordable Drugs (brain child of hedge-fund manager Kyle Bass) experiences disappointment as the USPTO opts not to review a couple of big-value pharma patents. The AmeriKat reports.
Case C-400/14 P Basic AG Lebensmittelhandel v OHIM), Repsol YPF SA intervening see the Court of Justice of the European Union dealing with the conflict of two figurative marks containing the word "basic".
Guest Kat Mark guides us through a fascinating German decision on the extent to which so mundane an object as a fastener for attaching electrical installations to walls might be affected by not just IP but the EU's unharmonised unfair competition law.
From guest Kat Nikos comes this account of the clash of two heavily-armoured brands in the US: Under Armor and Armor & Glory.
Katonomist Nicola derives yet more blogging inspiration from her holidays -- but she still takes time out from her holidaying to ask whether the US needs more, or better, legal protection for fashion.Another piece of bravura blogging from Eleonora, on some potentially unintended consequences of a review of the Satellite and Cable Directive.
Acquired distinctiveness of product shape marks: AG Wathelet does not “rely” on the UK approach – but on what else?Recently the IPKat hosted a post on the subject of Nestlé's application to register its chocolate finger shape as a trade mark: has this application been treated to a premature burial, he asked. That post's thrust has been bolstered by this guest post by Thomas Farkas.
Don't go on and on being anon, the Kats say: people struggle to work out who you are. But you can still post comments in disguise ...
SPECIAL SINGAPORE GFIP* “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report INeil provides this series of reports from the Global Forum on Intellectual Property 2015 (GFIP), hosted in Singapore by the Intellectual Property Office of Singapore and the Singapore IP Academy. The event’s theme was “Simple Past, Present Continuous…Future Perfect?” In the first plenary session, the focus was on the evolving architecture of the global IP system and the influence of national IP systems, along with the tension between the territoriality of IP rights and the global scope of IP exploitation.
* “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IIThe second plenary session was devoted to the topic of ASEAN Economic Integration 2015 - Opportunities, Interoperability and Synergies in IP. ASEAN is a political and economic organization consisting of 10 member states—Singapore, Indonesia, the Philippines, Malaysia, Thailand, Brunei, Cambodia, Laos, Vietnam and Myanmar. It really is a big deal, says Neil.
* “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IIIThe second day of the programme moved from discussions on national, regional and international aspects of IP to a consideration of two main pillars of IP practice—the courts and the creation of value from IP. First came the courts …
* “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IV… and then a session entitled “IP Value Creation—Strategies for the 21st Century”.
* “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report VTrade secrets and copyrights came under scrutiny here, not to mention a note on the contribution made to this event by another Kat, our very own Eleonora.
******************PREVIOUSLY, ON NEVER TOO LATENever too late 60 [week ending on Sunday 23 August] - Test-drive of the Unitary Patent Court, Parts V and VI |From food porn to porn with food: passion with Parmesan | USPTO Guidelines on patent eligibility | Red Bull fends off Crazy Bull in Greece | Biker Biker Biker Gang! Another offbeat look at IP from Katonomist Nicola | How to pay damages for a perfectly lawful customs seizure | Dallas Buyers Club copyright demands rejected in Australia.
Never too late 59 [week ending on Sunday 16 August] - Fundamental deficiency in an EPO decision need not be a problem |Benedict Cumberbatch versus admiring audience | Emma Perot on graffiti as dress art | Location of London's division of the UPC | Cool, confident and healthy: Katonomy meets Jawbone and Fitbit |Planning permission and that London UPC venue |Partial priority and poisonous provisionals: questions for EPO Enlarged Board |Target TM parody in Australia | IP threats in the UK | Traditional knowledge and Nagoya | From Google to Alphabet | Co-branding and multiple brands.
Never too late 58 [week ending on Sunday 9 August] - Teva UK Ltd & Another v Leo Pharma A/S | Traditional Knowledge Digital Library | Governance of the EPO Boards of Appeal |Atelier Eighty Two Limited v Kilnworx and ownership of copyright in logos | Productivity at the EPO | The Lone Inventor: a Katonomist report | Bradman Foundation v Sir Don's family| IP Inclusive |Michael Jordan in China | Stage fright and performances | Lookalikes and inactivity | Taking unfair advantage of exceptions to copyright infringement | Great Bake Off parody goes off-air.
Never too late 57 [week ending on Sunday 2 August] - French Law on out-of-print works | Swiss rule on delivery of scientific documents | Post-expiry patent royalties in the US | Confusingly similar wet-wipe packaging | Copyright infringement and Twitter jokes | Permission to link? | Criminalisation of IP and economics | Keeping count of blocked websites in the UK |Birkin Bags | Patentability of user interface designs in Germany |Smith & Nephew v ConvaTec | Report on IPEC litigation |does Twitter have a future? | New books on cyberespionage and patenting of life forms.
|Disguise is fine ...|
|... if you can still be identified|
Not so very long ago the IPKat hosted this guest post from Roland Mallinson on the subject of Nestlé's application to register its chocolate finger shape as a trade mark: has this application been treated to a premature burial, he asked. While it's fair to say that Roland's view is still a minority one, his conclusion has been endorsed by Thomas Farkas, from the Munich office of Wragge Lawrence Graham & Co. In his thoughtful comments which we reproduce below, Thomas adds the following dimensions to this already three-dimensional debate:
Quite a few blogs and newsletters [see eg here, here, here and here] have summarised Advocate General Wathelet's Opinion of 11 June 2015 in Case C-215/14 as indicating that Nestlé's unbranded KitKat finger shape (right) will not be registrable as a trade mark in the UK for lack of proof of acquired distinctiveness. But this is not what AG Wathelet actually said. The misconception on the side of those blogs is due to the fact that AG Wathelet did not, at least not explicitly, answer the decisive question asked in the referral by the High Court, England and Wales (para 54). The High Court wanted to know whether, in order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of the Trade Mark Directive,
- it was sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant;
- or if the applicant had to prove that a significant proportion of the relevant class of persons relies upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?
Condition 1 is obviously easier to establish than condition 2 since shape marks are hardly ever used without accompanying word- and/or device trade marks that will “also be present”. This is also true for the “Kit Kat” chocolate bar that has been marketed for many decades in a red wrapper with the “Kit Kat” logo. The logo is also embossed on each of the four “chocolate fingers”:
Condition 2 sounds odd to trade mark lawyers outside the UK, especially Germany, to say the least. A proof that the average consumer “relies” on the trade mark has never been requested by trade mark instances or civil courts.
But courts in the UK – as we learn from the referral (paragraph 46 to 48) – hold that it is not sufficient if consumers recognize a product’s source by its shape. Under the UK approach, the requirement is not merely to furnish a demographic survey showing that a majority of persons would attribute the shape of the goods to a single company.
UK courts have been well aware that it is far from being clear that the “reliance” requirement is in line with the Trade Mark Directive. They had already made two attempts to have the issue clarified by the CJEU by way of referral, namely in the “Viennetta” ice cream shape case (C-7/03) and in Dyson (C-321/03). The CJEU however gave no answer: Viennetta was settled, and Dyson was decided on other grounds.
What answer does AG Wathelet suggest? And what is his position regarding the “reliance” requirement as developed by the UK courts? He says:
“It is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services. He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services concerned.”
Since AG Wathelet avoided any reference to the “reliance” criterion it seems clear that he does not endorse the UK approach. So “reliance” within the meaning of the UK approach is not needed in his view. But a mere association with the applicant’s goods or services does not seem to be sufficient, either.
As far as AG Whatelet requests that the indication of origin should be “without any possibility of confusion” he merely refers to the basic function of a trade mark as summarised in Philips v Remington (Case C-299/99, para 30) and Ansul v Ajax (Case C-40/01, para 36). The General Court, in a similar way, requires that a trade mark must be able to distinguish a product’s or service’s origin “directly and with certainty” (“de façon immediate et certaine”: Case T-234/01 – Stihl v OHIM).
Still, the qualification AG Wathelet suggests is that the applicant must prove that “only the trade mark” in respect of which registration is sought, “as opposed to any other trade marks which may also be present”, indicates the origin of the goods or services at issue. But what does this mean? It is the view of this post that AG Wathelet does not endeavour to stipulate a new criterion for proving acquired distinctiveness. He does not ask for anything beyond what is required for the distinctiveness of any other trade mark. Use as a trade mark and acquired distinctiveness, enabling the end consumer to distinguish goods as to their origin, will always be deemed present when the relevant class of persons perceives the trade mark in question (in this case: the shape of the goods) as an independent indicator of origin, even where there are other indications of origin to which the public will pay attention likewise.
The CJEU’s decision in Colloseum v Levi Strauss (Case C-12/12) provides a good example for such a case. It revolved around use preserving trade mark rights within the meaning of Article 15 Community Trade MarkRegulation. This may be the reason why it is, even though mentioned, not in the focus of AG Wathelet’s opinion. In Colloseum the trade mark was not constituted by a product in its entirety, but pertained rather to a part of a product, specifically to a blue-jeans pocket which was designed in a particular way and labelled with a red cloth tab (Levi Strauss & Co.'s famous “Red Tab”, depicted on the right, invented in 1936 – just one year after the “Kit Kat” bar of 1935).
In actuality, however, both before and after registration of the trade mark, the use was only of pockets on which the red tags were labelled with the word mark “LEVI’S” (depicted on the left). It was obvious in that case that, when attributing a pair of blue jeans to the manufacturer Levi Strauss & Co., the public was looking also to (and may have “relied” on) the famous “LEVI’S” word mark and not simply and solely at the back pocket with the red fabric tab. The OHIM nevertheless registered the trade mark because it had acquired distinctiveness under Article 7(3) Community Trade Mark Regulation. Referring to the judgment in the "Have a Break" case, Nestlé v Mars (Case C-353/03 para 30), the CJEU confirmed that use as demonstrated served to preserve the trade mark rights and, indirectly (because use preserving a trade mark right is equated to use which creates a trade mark right) that such use was also apt to create such rights “as a trade mark”, i.e. as a distinctive sign capable of and perceived as distinguishing the origin of a product (Case-12/12, paras 32 et seq.).
This was done on the basis of the findings of the German Federal Supreme Court (which had referred Colloseum to the CJEU) that the class of persons which was being addressed is used to seeing multiple signs and
“based on the substantial use of the red tab when marketing blue-jeans … [the public] regards this feature of the design as having an independent identification function which is separate from other indicators of origin” (BGH GRUR 2012, 177, 180 para 24 –Stofffähnchen II).
The survey on which this finding was based had used a picture with a neutralised red tab (in the words of AG Wathelet: “only the trade mark”) without any reference to Levi Strauss & Co., so (again in the words of AG Wathelet) “only the trade mark as opposed to any other trade marks which may also be present” in reality (see illustration, right).
There is thus no requirement that the goods must actually be labelled – in the absence of any other sign -- exclusively by the mark applied for or that the consumer pays attention only to that mark and perceives it as the sole indicator of origin or “relies” only on it.
As in Colloseum, it will suffice that the mark for which the acquisition of distinctiveness is at issue is one of multiple indicators. It is distinctive if – despite the existence of other marks and in addition to such – enables the consumer to attribute the product to a particular manufacturer. As in Colloseum, it will be of no consequence whether this attribution is in fact achieved solely based on the registered mark – in the case of multiple marks – or whether the consumer might, additionally, also be looking to other trade marks.
Any other approach would (contrary to the basic tenet of Colloseum) render it practically impossible for secondary or tertiary marks to acquire distinctiveness, particularly product shape marks, packaging colours or other design elements. Such marks are typically combined with one or more word marks or with other manufacturer logos.
“the relevant class of persons, or at least a significant proportion thereof, identifies goods […] as originating from a particular undertaking because of the trade mark [in question]” [emphasis added].
So, has Nestlé, its evidence measured against the criterion suggested by AG Wathelet, proven acquired distinctiveness? Probably yes. Nestlé had submitted survey evidence. As the survey evidence submitted in Colloseum, the trade mark on the right was shown to the interviewees without the well-known word mark that in real life is used in connection with it.
More than 50% of the interviewees -- just on seeing the shape alone and “as opposed to any other trade marks” – were sure (“without any possibility of confusion") that the product had an exclusive and unique commercial origin. This shows that the shape alone indeed is capable of indicating and distinguishing its commercial origin.What else could be required to establish an acquired distinctiveness?
|The power of the SatCab Directive: |
from lively to ...
|... struggling to stay awake in one second|
|But this time it may be about becoming able|
to watch all your favourite
TV programmes online everywhere in the EU
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