From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Sunday, 25 September 2016

A song of Ice and Ice

Iceland, a country famous for the northern lights, skyr yoghurt, and their recent performance in the Euros, has made headlines this week for threatening the trade mark rights of a major UK supermarket. The cause of this ire is unclear, as some sources report that Icelandic tourist board, ‘Promote Iceland’ was faced with opposition proceedings when they attempted to register an EU trade mark ‘Inspired by Iceland’. Other reports state that Icelandic companies are being prevented from trading under their country name due to Iceland Foods’ earlier right.

Iceland the grocery

Iceland Foods has held the EU trade mark for the word ‘Iceland’ since 2014. This registration was no easy feat as it took 12 years from the date of filing, due to the obstacles posed by five oppositions. Since receiving the trade mark, they have opposed registrations which include the word 
‘Iceland’ to varying degrees of success. This Kat can understand the frustration of Icelandic entities who pay patronage to their country in their trade mark choice, but does not see how the Icelandic government can mount a valid cancellation action.

There are two types of cancellation proceedings; revocation and a declaration of invalidity.

Grounds for revocation

The grounds for revocation of a trade mark are found under Article 12 of the EU Trade Mark Directive.  Under this Article, a mark can be revoked for non-use over a continuous period of five years, genericide, or use which has caused the mark to be misleading as to the nature, quality or geographical origin of those goods or services. None of these grounds apply to the ‘Iceland’ trade mark.

Declaration of invalidity

There are two grounds for invalidity; absolute and relative. These are found under Articles 3 and 4 of the EU Trade Mark Directive respectively.  As for the absolute grounds of invalidity, the mark ‘Iceland’ has distinctive character after years of use in the UK and other European countries. It does not indicate geographic origin, and it has not suffered from genericide. Furthermore, it does not fall foul of the shapes, public policy and morality, deception, religious symbol, national emblem or bad faith provisions.
Iceland the country

The relative grounds of invalidity were tested in the numerous oppositions, to no avail, so it is unlikely that there are any relative grounds which exist at this point. If there are, it would be unusual for the country of Iceland to initiate proceedings, as the relative grounds are based on conflict with an earlier existing mark, and it does not appear that Iceland (the country) owns any such mark.

Tip of the Iceberg?

Iceland (the country) probably does not have any realistic chance of cancelling Iceland Food’s trade mark.  However, this issue is the tip of a policy iceberg, raising the question of whether a country’s name should be registrable, particularly considering present restrictions on the registration of national emblems.

Under Article 3(2)(c)  of the EU Trade Mark Directive, registration of flags and emblems of Paris Convention member states is prohibited, in accordance with Article 6ter of the Paris Convention.  According to WIPO:

“The purpose of official signs and hallmarks indicating control and warranty is to certify that a State or an organization duly appointed by a State to that effect has checked that certain goods meet specific standards or have a given level of quality. Official signs and hallmarks indicating control and warranty exist in several States with respect to precious metals or products such as butter, cheese, meat, electrical equipment, etc. In principle, officials signs and hallmarks indicating control and warranty may also apply to services, for instance those relating to education, tourism, etc.”

This information is pertinent considering one of the alleged stakeholders in any opposition is the Icelandic tourist board. If the purpose of denying registration to national emblems is to allow countries to exercise control over goods and services, why not extend this protection to country names? The reason is likely to be that producers often incorporate their country’s name into their trade marks, like the Icelandic Seafood Company, whose trade mark ‘Iceland Gold’ was opposed by Iceland Foods. Limiting the use of country names to official state organizations would not sit well with many existing right holders.

Perhaps the utilitarian solution in the present situation would be to allow registrations of country names, but restrict oppositions where there is a genuine link to the country (the difficulty of assessing ‘genuine links’ is an issue in itself). This would prevent companies such as Iceland Foods from preventing Icelandic entities from using their country’s name.

It would be an unfortunate day for trade mark law if Iceland Foods successfully opposes the Icelandic tourist board’s application for ‘Inspired by Iceland’.

Eye ‘should’ve’ done that! – Specsavers nears approval to trade mark single word “should’ve” & “shouldve”

Image result for should've gone to specsavers advertAs briefly reported by this blog, a few weeks ago Specsavers filed an application with the UK Intellectual Property Office to have SHOULD'VE and SHOULDVE registered as trade marks in Classes 9, 10, 16, 35, and 44 of the Nice Classification. 

This move has attracted broad media coverage [eg here and here], and young IP enthusiast Kishan Mathy has also explored the story at length.

Here's what Kishan writes:

"After winning a six-year IP dispute with Asda in 2014 [here], Specsavers is making again trade mark headlines as it continues to protect its brand.

On July 18 last Specsavers applied to the UK Intellectual Property Office (IPO) to register single words “should’ve” and “shouldve” as trade marks. This contraction derives from Specsavers well-known catchphrase “should’ve gone to Specsavers”, which the optical retail chain has been using since 2003 [the phrase has been a registered EU trade mark since 2007]. The UK IPO has now approved the application by Specsavers, which means that third parties have until 12 October to oppose the application.

A  number of commentators has criticised IPO’s prima facie approval of the application to ultimately provide monopoly in single words, noting how this would prevent other companies from using the words as registered. The IPO has also come under criticism on consideration of the broad scope of the registration sought (five classes of goods and services), also beyond the remit of optical services. For example, one of the classes applied for concerns ‘Printed matter’ (Class 16), which could potentially provide Specsavers with considerably clout over printed retail services.

Nevertheless, this is not the first instance where a company has registered a single word. In 1993 Carlsberg registered the word PROBABLY under Class 32 (Lager; Beer) and extended protection in 2009 under Classes 33 (Alcoholic beverages) and 43 (Services for providing food and drink). However, Carlsberg's registration differs from Specsavers's as protection is limited to use for alcoholic beverages. Upon further perusal of the IPO trade mark register there are other single words that are registered such as ALWAYS and NEVER, however to a narrow list of classes.

Despite the legal and commercial concerns, Specsavers's decision to register single words SHOULD'VE and SHOULDVE should be recognised as intelligent business strategy, considering the proliferation and potential of social media. The use of hashtags has become a significant vehicle of marketing for businesses. Hashtags have the power not only to categorise content but also to form trends and thus generate interest. Therefore, registering a specific word will be integral for Specsavers in expanding their marketing activities and driving future campaigns. For example, the hashtag ‘#should’ve recently accompanied the full Specsavers catchphrase. It is thus apparent that registration will help Specsavers to control use in the full spectrum of social media.

Other businesses will most likely be closely monitoring whether Specsavers will be successful in formally registering these trade marks. In the event of successful registration we should expect an increase in similar trade mark applications for single words."

Saturday, 24 September 2016

Latest thoughts about Brexit and the UPC

Sudden moments of clarity are always a good look for IPKat
It has certainly been a long time coming and we still can't be sure that a UPC change is gonna come to the UK. We recently saw the unveiling of an authoritative Opinion by Richard Godon QC and Tom Pascoe, to the effect that it is potentially legally possible for the UK to participate in the UPC following Brexit. This is notwithstanding the possible political difficulties surrounding it, and independently of membership of the EEA. In giving their Opinion, Counsel were instructed by, again among others, CIPA - who are lobbying for positive participation in the UPC after putting in so much work in advance of preparing the system. CIPA's impact paper of Brexit is available here 

As we gradually move towards some idea of how the UPC might work around Brexit, it is becoming clearer that a new agreement in some form or other would be a real sine qua non for future UK involvement in the UPC. The real value of the new Opinion, as this Kat sees it, is the thoughtful exploration of what this agreement would need to be and do, and how the UPC Agreement will need to be amended.

 After CJEU Opinion 1/09

Opinion 1/09 from the CJEU is generally cited as precluding non-EU Member States from involvement in the unitary patent. The problems would be in depriving the national courts of the task of interpreting and applying EU law (which of course the UPC Agreement proposes) and the power to make references to the CJEU. Counsel's view of this is that although the reasoning of the Opinion is somewhat opaque, it is possible to overcome the requirements it imposed on the then draft Agreement by implementing measures in a new agreement for the UK. The requirements identified are as follows:
  1. respect for the supremacy of EU law;
  2. the possibility of claiming damages and/or instituting infringement proceedings for breach of EU law;
  3. uniformity through the making of preliminary references. (see para 72 of Counsel's Opinion).
Their view is that it should be legally possible to implement measures safeguarding these EU constitutional principles. No domestic constitutional rules prevent the UK from: subjecting itself to a legal regime like the UPC which requires tribunals to apply EU law,  requiring courts within its territory to make references to the CJEU, accepting individual and collective responsibility for breaches of EU law, or submitting to the supremacy of EU law for patent disputes before the UPC. There is a very important condition that comes with this:
The UK would be required to accept the supremacy of EU law in its entirety as regards all such disputes as fall within the jurisdiction of the UPC. This would include, for example, competition law, fundamental rights arising under the Charter and general principles of EU law, as well as the specific patent rules contained, for example, in the Biotechnology Directive, as well as possible future EU legislation.   (para 76)
So, while it may be legally possible for the UK to overcome the requirements of Opinion 1/09 by a new agreement, it could still be very politically sticky to sell a treaty which proposes the ongoing supremacy of EU law over the UK - even within the relatively limited context of patent disputes before the UPC.

Amendments to the UPC Agreement

As Counsel's Opinion raises, Article 87 of the UPC Agreement - allowing for amendments to it - would not come into force until the Agreement itself does. That is, after the mandatory ratifications have taken place, including ratification by the UK. For this reason, unless UPC Agreement contracting states can be persuaded to unanimously agree amendments to the Agreement itself or a new Protocol could be drawn up, amendments by the UPC's Administrative Committee would have to wait until it comes into force. In light of this, it's safe to say that the amendments required can by no means be guaranteed.

With that caveat taken on board, the extent of the amendments to the UPC Agreement itself that were identified by Counsel are surprisingly brief and few:
  1. The terms relating to 'Contracting Member State' would have to become 'Contracting State' in Article 2(c).
  2. Rather than saying the UPC is subject to the same EU law as national courts, being a court common to Member States, it should be "subject to the same obligations under Union law as any national court of the Contracting a Member States" in Article 1.
  3. In Article 21, a reference to "any national court of a Member State" should replace "any national court".
  4. Similarly, Article 29 which deals with exhaustion should refer to the market in Contracting States instead of just "in the Union".
  5. Finally, various references to “Member States” elsewhere would need to be amended to include the UK (and potentially other non-Member States!?).
This leaves various questions of jurisdiction and enforcement to be dealt with. Counsel float the possibility of joining the Lugano Convention as a perfectly feasible replacement to the Brussels Regulation. 

What is not included in the Opinion's scope are the necessary amendments  for the ratify-and-leave option. Admittedly this scenario feels the most unlikely to this Kat, being quite a lot of effort for short term membership with a palpable expiry date, but it is worth noting that the UPC Agreement does not contain a clause for denunciation, whereas a previous incarnation did (which was gone by 2011). Because of this, Article 56 of the Vienna Convention on Treaties, restricting withdrawal from a treaty without a denunciation clause, could stop the UK embarking on this route before it even starts. An alternative would be to try and stick in some amendments going directly against the policy of removing the denunciation clause by reinstating it between the UK's ratification and foreseeable departure, or finding another justification for leaving - see here for more discussion of this.

Political problems?

Counsel's Opinion puts forward a practical, positive case for the nuts and bolts of UK participation in the UPC after Brexit. They are expressly neutral about the political palatable-ness of the proposals, which many readers of the Opinion may see as the elephant in the room. Dr Ingve Stjerna (whose thoughts on the UPC and Brexit can be found here) among others has pointed out that the continued commitment to Union law was a major bone of contention for the 52% of the electorate which voted to leave the EU, and thus participation in the UPC could be unacceptable to the population.

Dr Stjerna also points to Council Document 15856/11 as warning of the extreme difficulty of incorporating third countries into the UPC and is sceptical of more recent suggestions that the UK could be involved after Brexit as contrived to please UPC supporters. Still, it remains that the UPC is a non-EU international organisation with its own legal personality, expert Counsel have reviewed the legal feasibility and there is currently more than negligible political appetite for ratification.

An aside

One apparently insignificant footnote in the Opinion caught the IPKat’s eye.  Footnote 18 states “Although secondary legislation enacted under section 2(2) of the European Communities Act 1972 will lose its legal basis, and therefore its effect, upon the repeal of that Act.”  No further explanation is given of this assertion.  The IPKat has seen this suggested before, but has also seen suggestions to the contrary.  EU Directives are implemented in UK law either as primary legislation (Acts of Parliament), in which case it is universally agreed that unless amended or repealed such legislation remains in force, or by secondary legislation (Statutory Instruments [Orders in Council]) deriving legal basis from section 2(2) of the ECA. 

In the case of such Statutory Instruments, some commentators believe that they will survive the UK leaving the EU, either because the ECA will not in fact be repealed (and some authors believe that the repeal is not necessary upon the UK leaving the EU, the ECA simply ceases to have any EU legislation to bite on), or because repeal of the ECA does not invalidate SIs that were at the time lawfully enacted under Section 2(2) ECA.  The CIPA impact paper supposes that secondary legislation will remain in force for one or other of these reasons. But the real constitutional status of such secondary legislation seems to be unclear, and so the IPKat wonders whether any readers can provide reasoning or legal basis for whether or not an SI remains in force, once lawfully enacted, if the Act giving it legal basis is later repealed.

In concluion

This Kat is not much of a gambler. As with so many aspects of the progress of Brexit, this seems like something to wait and see for the time being. Is it worth quickly ratifying to get the court up and running before hashing all these details out? Probably it is not, and so the IPO line "there will be no immediate changes" is as good a line as any. Watch this space...

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