The EUIPO is establishing an important feature, a new initiative that they call “a ground-breaking step in global supply chain product authentication”: “EBSI-ELSA”.
[[{"type":"media","fid":"5460","view_mode":"default","instance_fields":"override","field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
As reported in our blog article of 29 June 2023, the European Union Intellectual Property Office published a consumer study on “European Citizens and Intellectual Property: Perception, Awareness and Behaviour” on 12 June 2023. Results of this study were, on the one hand, that consumers are becoming increasingly wary of counterfeits, on the other hand that there is still a lot of work to be done to fight product piracy and to curb counterfeits. According to this study, global trade in counterfeits amounted to EUR 412 billion in 2021, which was 2.5% of all global trade. In addition, a great number of European consumers are unsure of the authenticity of products which they buy.
The EUIPO is now establishing “EBSI-ELSA”. “EBSI-ELSA” is a European Logistics Services Authentication (ELSA) initiative for products within the global supply chain using the European Blockchain Services Infrastructure (EBSI).
The aim of this initiative is to reassure and protect consumers, while providing comprehensive support to IP rights holders from filing to enforcement. Product authenticity should be assured by promoting information sharing among the participants in the supply chain. This should happen within a secure environment using blockchain technology. EUIPO has recently finalized the set up and they are now performing real-life operational tests. On 31 May 2023, the EUIPO hosted an event where the new name – “EBSI-ELSA” – as well as the promising results of this initiative were presented.
Outlook according to the EUIPO: “by the end of 2023, EBSI-ELSA is expected to be an open-source platform to authenticate products and exchange data between all the parties in the supply and logistics chain, interconnecting products’ track and trace solutions with the risk analysis systems of enforcement authorities and the EUIPO tools (TMview, DesignView, IPEP and IP Register in Blockchain). By doing so, custom officers, as well as transport and logistic operators, can boost their process-productivity and focus their efforts on suspicious goods, while brand owners can use the authenticity claim in litigation cases (e.g. parallel imports) and have a clear overview of their products’ journeys from manufacturer to reseller.”
For us as IP and especially trademark experts, this is promising. EBSI-ELSA seems to be developing into a powerful but also easy tool supporting the fight against product piracy.
More information can be found in the detailed FAQs on the different aspects of the infrastructure. Additional information for each stakeholder group can also be found on the website, including short videos for brand owners, custom officers, transport and logistics operators, and users. To know more about European Blockchain Services Infrastructure (EBSI), visit this website.
Be honest - Have you ever bought counterfeit goods or illegally consumed digital content?
On 12 June 2023, the European Union Intellectual Property Office (EUIPO) published an interesting article on counterfeits and illegal electronic content. As an IP boutique specializing in non-technical intellectual property rights, we come across counterfeits all the time and we found the study very interesting and would like to share some of its main findings with you.
(Source: Shutterstock; 502909426)
The EUIPO recently conducted a consumer study on „European Citizens and Intellectual Property: Perception, Awareness and Behaviour“ by interviewing over 25,000 consumers of all ages and across all EU member states. The full document can be found here.
The study found that European consumers are becoming increasingly wary of counterfeits and electronic content from illegal sources. They admitted to being conscious of the risks that can arise from buying and using such products:
- About 83 % deemed buying counterfeits as supporting unethical behavior;
- About 82 % agreed that accessing digital content illegally could lead to scams and exposure to inappropriate content for minors;
- About 80 % of the interviewed believed that criminal organizations were behind counterfeit products and acknowledged that such purchases harm businesses and employment;
- About 66 % recognized the potential threats to health, safety, and the environment.
While these numbers are quite high and seem to show that the awareness raising initiatives by various stakeholders over the past years have been successful, the study also revealed that there is still work to do.
While consumers are growing wary of counterfeits, price remains a deciding factor in purchasing decisions. 43 % of the interviewed said that a more affordable price for original products was the top reason for them to refrain from buying counterfeit products, followed by the risk of poor quality (27 %), safety concerns (25 %), and legal repercussions (21 %).
On average, one in three surveyed consumers (31 %) found it acceptable to buy counterfeit products if the price of the genuine product was “too high”. Among consumers aged 15-24, this figure rose up to 50 %. This means, every other young consumer finds it acceptable to – intentionally – buy fake products or use illegal digital content.
While this might be economically understandable from an (especially young) consumer’s point of view, the risks remain and they are real. Overall, the study shows that the awareness raising efforts need to continue and we look forward to reading the next EUIPO IP Perception Study to see how public awareness of counterfeit products will have changed.
For further information on tackling fakes and counterfeits, see our blog article of 25 April 2023 at https://www.lexdellmeier.com/de/node/1857 summarizing the European Union’s Strategy Plan to combat product piracy over the next years.
For questions regarding counterfeit products or if you are interested in helping to raise consumer awareness on fakes, you are welcome to contact us by phone at 089 55 879 870 or by email at info@lexdellmeier.com.
Alexandra Dellmeier of LexDellmeier - Intellectual Property Law Firm Intellectual Property Office talks about her career in IP and running her own firm. In April 2023, Managing IP launched Women Founders list, a publication dedicated to highlighting the intellectual property firms that were founded or co-founded by women. The full interview in Managing IP can be found at: https://lnkd.in/eAkzqJkW and is also copied into the LexDellmeier Blog below.
Alexandra Dellmeier of LexDellmeier Intellectual Property Office talks about her career in IP and running her own firm.
About you and your career in IP
When did you decide to pursue a career in law?
Rather early, at the age of ten. Being German and having lived in the US from the age of eight to thirteen, I loved watching any TV shows that dealt with legal issues and had lawyers and judges in them. I was so impressed with the role of an attorney-at-law that I decided to become one myself – much to the dissatisfaction of my father at first, a chemist, because he did not like lawyers at all.
Why did you choose IP law?
Out of coincidence, curiosity, and luck. I knew that I wanted to work in an international field of law. However, the fact that I ended up in IP law had to do with the fact that I originally only planned a 3-month internship (which ended up being my part-time job, next to my required clerking until my bar exam two years later) at a renown Munich-based IP firm.
How did you get into the IP profession? Did you experience significant challenges?
On my first day as a legal intern at the Munich IP firm in 1997, I discovered a gigantic shelf of adidas t-shirts, shorts, and jogging suits in the office. I was deeply impressed and immediately ran to one of the partners and said, "I would like to join the firm’s soccer team!" The managing partner looked bewildered and told me that the firm did not have a soccer team. I persisted, "But, I saw the full shelf of sports clothing." I still remember his loud and hilarious laugh. After a moment, he finally explained that they were counterfeits confiscated by the German Customs from a ship coming from Turkey into Hamburg harbour.
So, trademark infringement, counterfeits, and border seizures were my first contacts with IP. I will never forget that first day, which sparked my interest in intellectual property.
Did you work in-house before joining your current firm? If so, which company?
Prior to starting my own firm, LexDellmeier IP Law Firm, in 2009, I was an equity partner at another renowned German IP firm for almost seven years. Another milestone at the very beginning of my career was my in-house position at Merchandising Media AG / PRosiebenSat.1 AG, a German TV station and merchandising company. Heading the art licensing and IP department at a multi-national company significantly broadened my horizon and understanding, especially with respect to business issues on a global basis.
How have you found the transition from in-house to private practice? Or, in terms of your experiences, what would you say is the key difference between working in-house and working in private practice?
Working in-house requires more in-depth knowledge of internal strategy as well as business issues. The fun aspect of working in-house is that you usually work together with different teams and departments (marketing, sales, accounting, etc.). Working at a law firm, you can usually concentrate more on legal issues and advise the client regarding specific questions they have regarding prosecuting or litigating IP.
Why do you enjoy IP work?
In a nutshell, I love IP! It is extremely interesting and challenging to work internationally on different aspects of IP law. In addition, I am able to use my bilingual language skills in English and German. I very much enjoy working with international clients and colleagues from around the world.
What career advice would you give to women interested in joining the IP profession?
Do at least a 3-month internship with an IP firm dealing with international clients and potentially try to get "your foot in the door" at that firm. Also, be sure your oral and written English skills are really, really good. Approximately 70 – 80% of all IP work is conducted in English. This means that you will also have telephone and Teams/Zoom calls with international clients. Having profound English skills is key to communication with clients, IP offices, courts, and colleagues. It is also helpful to get an LL.M. in IP law (usually a one year course) from a university in the UK or USA. Many firms seek such an additional qualification in IP before you start your first job nowadays.
What advice would you give anyone thinking about setting up and running their own firm?
You need entrepreneurial skills, including being good with numbers and making business decisions quickly. You need to love what you do, treat your clients and staff really well, be well organised, and be ready to work hard and sometimes long hours.
About your firm
When did you set up your firm?
In 2009.
Why did you decide to start your own firm?
It was a very simple decision: I was frustrated. Most German IP firms are predominantly headed and run by male partners. Most German law firms, if they have female partners at all, have a female partner percentage of on average 10 to maximum 25%. Even though I was tough enough to become an equity partner at an IP firm with approximately 100 employees, I was not happy with how things worked.
I thought I could do it better. I hoped I could do it better. I believe I am doing it better now, but I guess it is for our clients, colleagues and team members to judge this.
What challenges did you face when setting up the firm?
I started the firm in 2009, in the midst of a financial and economic crisis. My clients (and admittedly, I too) were shocked at first and saw the global financial crisis as something life-threatening and frightening. Not knowing what the future would bring was a crucial experience, both personally and with respect to my clients’ businesses. The whole issue and the magnitude of the impact took us all by surprise.
How did you overcome those challenges?
The financial crisis, in essence, had similar impacts as the COVID pandemic from 2020 to 2022.
The core question was: How do you tackle such a global crisis? As an optimist, you will realise that any crisis creates opportunities. Whether it is the opportunity to gain market share, renegotiate contracts, buy a competitor, or start your own IP law firm, as I did. Being proactive, flexible, and creative is vital in such a situation.
Clients with good financial controls and management were able to take advantage of some of these previously unknown and unforeseen opportunities. All of my clients reviewed or needed to review their expenses; none of them cut budgets in the areas of technology, innovation, product development, branding or design protection, as IP is vital for their business. However, I encouraged my clients to take the time to invest in IP counselling with the goal of improving their overall IP portfolio by making it more strategically aligned and cost-effective.
What was the easiest part of setting up and running your own firm?
Having a vision, a business plan, a fantastic assistant/IP paralegal (that still works for me after 14 years and has attended law school meanwhile), and state-of-the-art technology for managing deadlines, IP renewals, etc. Having almost 10 years of IP experience did not necessarily make it easy, but it made the risk of setting up and running my own law firm manageable.
How do you ensure your firm delivers high-quality services to clients?
All the lawyers and almost all IP professionals and paralegals have dual qualifications in law, IP, and languages. Our staff is extremely well educated, and we have quality control processes in place in order to ensure that each client is served according to their needs and wishes in a cost-effective manner.
How would you describe the culture of your firm?
We are international, open-minded, hard-working, friendly, supportive, and fun to work with. Approximately 50% of our IP team work in our office premises in the centre of Munich, Germany. The other 50% usually work from home. Because we work hybrid, we make an effort to meet in person every few weeks and go out for lunch, dinner or drinks. We also organise special events, e.g. get-togethers with clients or, an internal spa and strategy meeting over the weekend, where we take the time to discuss the newest changes in IP law, client needs and expectations and also just spend time together.
If you have corporate social responsibility initiatives in your firm, please briefly tell us about one or two of them, why you have them, and the impact or achievement(s).
Twice a year, we offer 3- to 6-month IP traineeships. We accept students still in law school with a bachelor's or master's degree in law. At least once a year, we work together with the European Law Students Association (ELSA), where students can apply for the traineeship.
Over the past 14 years, we have had approximately 20–25 legal interns from around the world. Currently, we have an intern, a young woman, from Istanbul, Turkey.
We see it as our obligation to give young law students the opportunity to gain work experience at a law firm. And we very much enjoy working with bright, young talents.
We also support Ukrainian refugees. Our firm and individual team members have been supporting Ukrainian refugees since the war began in February 2022. We have given our law firm’s apartment to Ukrainian refugees and have supported them by helping them with paperwork for administrative purposes, organising language courses, preparing job applications, etc.
What do you enjoy most about running your own firm?
The clients and staff I work with, challenging IP cases, and being able to take quick, decisive decisions as a business owner together with knowledgeable colleagues and team members to the benefit of all involved.
Client work
What is your most memorable piece of work as an IP practitioner?
Getting seven marks registered at the German Patent and Trademark Office within 24 hours (this is possible because, as an applicant, you can request expedited examination of your trademark application) and winning an extremely important and prestigious trade mark case for a foreign, well-known car manufacturer.
Could you briefly share two interesting client matters you handled within the past 18 months?
We were able to overturn a case before the European General Court and come to an overall worldwide settlement with the applicant. The case was challenging for mainly two reasons: the previous law firm handling the case had lost the first two instances before the European Union Intellectual Property Office.
As a boutique IP law firm with ten team members, it is challenging to take over large trade mark and design portfolios of 1,500 or more marks at once. A new client challenged us in 2022 to organise the takeover of approximately 1,200 files within two weeks and have all deadlines docketed on our IP docketing system. Due to the technology and the IP administration system we use, the programmers we have access to, and the technical and fundamental expertise we have, we were able to comply with the client’s wish.
Did you find any part of the work you have just described uniquely challenging? If so, what were the challenges, and how did you overcome them?
The case mentioned above was challenging because it dealt with cryptocurrency and the "metaverse". Some law firms are not familiar with new trends and technologies. Therefore, in order to advise start-ups and clients in the field of cryptocurrency, you need to have a fundamental technical understanding of the issues in order to advise the client from a legal point of view.
We love challenges. So, when we participate in a tender or "IP beauty contest" for a new client, we need to work hard to fulfil the client’s wishes and aims. In the case of taking over 1,200 files, including docketing deadlines within two weeks, this is only possible if you strategically think the matter through and have the technical know-how to get this challenging task done.
What qualities and skills are required to do your job?
You need expert legal knowledge in IP, enthusiasm, creativity, business acumen, and a passion for trade marks, branding, designs, technology, and innovation. The ability to listen to clients’ needs, strong communication and language skills, as well as "thinking outside the box" are important attributes too.
What key principles do you follow or use to deliver the best possible outcome for a client?
Passion: We love what we do.
Excellence: Our work reflects our best efforts, never less.
Communication: Quick, clear, and effective communication is what we provide.
Integrity: Honesty and trustworthiness are what we stand for at LexDellmeier.
Teamwork: We believe the best client results are achieved through teamwork.
Creativity: Thinking outside the box, and solving complex problems with creative, cost-effective solutions.
Diversity: We treat everyone with respect, fairness, and courtesy.
What if things don’t go according to plan, what keeps you going or motivated?
Support and help from co-workers help solve the problem, or just a big hug from my husband or sons when I come home from work.
The IP market and future
What are the key challenges and opportunities in the next decade for firms in your jurisdiction and/or region?
Challenges include finding motivated, interested, and well-educated young lawyers and IP professionals. As for opportunities, due to the technological evolution, we have already made it possible for any and all team members with a sense of adventure to work from anywhere they want. The use of state-of-the-art technology will help young professionals with children to continue to pursue their career – also on a part-time basis.
As the firm’s leader, what is your top priority for next year?
Keeping clients and staff happy.
Life outside work
Are you working on any interesting projects outside your firm? If so, please tell us a little bit about the project and why you care about it?
Having a husband, 24-year-old twin sons, and a dog, as well as running a firm and supporting law students and Ukrainian refugees, does not leave a lot of time for many other projects. I am not "superwoman". There are boundaries to the time and effort you can invest to make sure you stay healthy and well.
What is your favourite food or sport?
All Italian and Japanese food. Ice-skating and dancing.
What is your favourite hobby?
Sailing, swimming, and bike riding.
Could you share a fun and interesting fact about you?
Some team members believe I have a crystal ball beneath my desk, which, by the way, is not the case. I guess I have a good instinct for certain situations and can sometimes read someone’s mind. I just use my common sense and can put two and two together. I guess that I trained myself by reading too many mystery books and novels when I was young. The funny thing is, whenever something I foresaw becomes reality, family members, clients, or team members do approach me and say, "You knew and foresaw it!" My reaction is to just smile.
[[{"type":"media","fid":"5457","view_mode":"default","instance_fields":"override","attributes":{"style":"height: 306px; width: 550px;"},"field_file_image_alt_text[und][0][value]":"WorldIPDay23","field_file_image_title_text[und][0][value]":"WorldIPDay23"}]]
In honor of World Intellectual Property Day, the LexDellmeier Intellectual Property Law Firm, is conducting interviews with deservingly inspiring female IP professionals. By praising and rewarding innovators and creators, a fair IP system makes sure that society benefits from their creativity and brilliance. Join us as we recognize the accomplishments of trailblazing women throughout the globe and spread awareness of the significance of encouraging more women to engage in the IP system. Look at the story of young entrepreneur Dila BALCI, founder of Hive Events. While the company provides event planning and consulting services, it also provides design & development of the digital assets for the event (logos, banners, on-screen collaterals, pre-recorded videos).
Hello Dila! Thank you very much for agreeing to an interview. Can you tell us a bit about you? What led you to this career path?
Being born into a business family I have always been fascinated by the idea of entrepreneurship. Thus, ever since I could remember, I have been attempting to gain exposure to as many industries, ecosystems, nodes and business functions as possible.
I graduated from the University of Bath, UK, in July 2020, after completing a degree in BSc International Management. During my studies, I spent a semester in Singapore, working as a Business Development Analyst at an ecosystem builder start-up, operating within the high-tech industry along with undertaking an exchange programme at Schulich School of Business (University of York), Toronto.
My academic endeavors, along with various extracurricular initiatives I took amid my studies made me realise that I had a passion for event management. Hence, I started off my quest by getting involved in the curation and execution processes of educational events, youth forums and open days. My pleasing experiences compelled me to pursue a career on events management.
Shortly after my realisation, the pandemic hit the events industry drastically (just as it did pretty much everyone). The industry adapted almost immediately to the new “normal”. Multiple event tech tools and event management software were launched, and the new “virtual event” industry started growing. My skillset (mainly technical/technological) allowed a smooth transitioning.
I am now running my own start-up, Hive Events, offering end-to-end event management services to produce innovative, accessible and engaging virtual and hybrid events.
You studied international business in the UK. Have you always known what kind of startup you wanted to create?
At a certain point, as I briefly explained in my answer above, I knew I wanted to operate within the events industry. Yet, the answer to this very question is a definite no, as “virtual events” was an unfavored format before the pandemic. A few years ago, if someone were to tell me that I would be operating within a tech related/heavy industry, I would have struggled believing them.
However, that being said, I was hoping to set up an inclusive and international business since day one. The virtual-mode, albeit hindering the “human” element (i.e getting together, physical connections) allows the reach of entities and initiatives to be broader.
What was the process of creating Hive Events as a brand?
The very first step was to define the audience. During the pandemic, companies, groups and individuals started looking for ways to keep in touch with their stakeholders. Many of them almost immediately started using video conferencing platforms (i.e Zoom, Meets, Teams). These platforms were excellent for meetings, but not really suitable for events. Many key elements, engagement in particular, were getting lost in translation, while these gatherings were being carried from the physical to the virtual world. Thus, I targeted those (entities/individuals) who are looking to produce innovative, accessible and engaging virtual events.
As a young woman entrepreneur myself, I wanted the brand to have a young, innovative personality. The logo, visual identity and approach were all aligned with such character. I worked with multiple entrepreneurs while building the brand up.
Does intellectual property have an impact on your business?
We have a chief designer in our team who does design & development of the digital assets for the event (logos, banners, on-screen collaterals, pre-recorded videos). Since we are talking about logo designs, intellectual property is important for our business. We are happy to support our customers in this way as well. Our customers then directly work with lawyers and law firms to protect their trademarks once created by us.
Where do you look for creative inspiration? Is it hard to stay innovative?
It most certainly is - especially as Hive operates within a fast growing space. I attend many events, organised by various event management companies, read and write blogs and case studies, follow industry trends and product updates and stay connected via continuous networking. Co-creating is a fast growing trend in many industries. Therefore networking, both inter and intra industries, is highly valuable.
Do or did you have a woman leader as a mentor or are there specific women who inspired you and why?
I had the privilege to meet and work closely with Dr. Yvonne Thomson and Cydnie Thompson. Dr. Yvonne Thompson is a business leader, honored by Queen Elizabeth II. She received 2 doctorates for her work in the Entrepreneurship, Global Diversity and Equality arenas. Cydnie Thompson on the other hand works for and with women in business to create mutually beneficial outcomes. Together, they run a women in business network, WinTrade Global.
These two women, who were initially my clients, inspire, empower and support me on my entrepreneurial path. Their success stories alone are inspiring, but they are also mentoring me on PR, outreach, sales pipeline and leads generation alongside entrepreneurial mindset optimization.
Have you been confronted with gender-related roadblocks in your career?
Against all odds, I fortunately did not experience roadblocks. But I often came across microaggressions.
How should women support other women in their organizations?
By empowering each other! The “can do” attitude is contagious. Within organisations, women need to share & spread their stories to inspire each other, and support one another’s growth and well-being to enable progress. Such empowerment eventually would allow everyone in the organisation, regardless of their individual differences, to prosper within highly diverse and inclusive working communities. My personal experiences taught me that individual traits and personal capabilities, when brought together, not only foster uniqueness and innovativeness but also prepare the optimal ground for success.
What advice would you give to young girls starting their careers?
I trust that in today’s world, given that access to information is easier and faster than it has ever been, adaptability is what drives success. Thus, as the “new ways of doing things” often somehow involve technology within the process, my humble advice would be to develop technological and adaptive capabilities.
We would like to thank Dila for answering the questions and sharing her experience with us. We wish her a very successful future and may she continue to be creative. Check out Hive Event's website: HIVE Events - Social Webinars and Conferences (hive-events.org)
The EU set its priorities for the next four years of combating severe and organized crime in May 2021. Within the framework of the European Multidisciplinary Platform Against Criminal Threats (“EMPACT”), a strategy plan has been developed and will be put into action between 2022 and 2025.
EMPACT has a clear methodology for setting, implementing, and evaluating priorities in the fight against organized and serious international crime. Intellectual property (“IP”) crimes are also on EMPACT's radar. With a focus on products harmful to the EU economy, consumers' health and safety, and the environment, the main objective is to combat and disrupt criminal networks and criminal individual entrepreneurs involved in IP crime and in the production, sale, or distribution of counterfeit goods or currencies (both physically and online). In other words, as the trade in counterfeit products becomes widespread, the sales and revenues of the companies are negatively impacted, and economic, health, safety, and security problems arise.
I. Effects of Counterfeiting on Companies
Product piracy and counterfeiting are serious threats to any company. If someone is making counterfeit versions of your company’s products, offering them for sale, and distributing them, this will have negative consequences for your company, such as:
1. Loss of sales: The main effects of counterfeit products are losses in sales and earnings. Especially nowadays, when online sales are at their peak, it becomes very difficult to understand whether a product is original or fake. This can lead the customer to unknowingly buy the counterfeit product and reduce the company's sales in this context.
2. Damage to the brand image and product liability: It is common for counterfeit goods to be of poor quality, so the businesses also risk brand image loss and the product liability. It is possible that the customers are unaware that they have purchased a counterfeit and believe they have purchased a high-quality product manufactured by the company. They will blame the original manufacturer if it malfunctions, breaks, or fails to meet their expectations.
3. Negative impact on the company’s recognition and reputation: Counterfeit products do not meet the company’s quality standards, which reduces brand recognition and credibility.
4. Loss of trust between business partners: Product piracy leading to a lack of trust will reflect on the partnership and result in an unsuccessful business.
Because of all these reasons, a promising and effective strategy for combating product piracy must be developed.
II. Effects of Counterfeiting on Public Health, Safety and Security
Counterfeit products jeopardize public health and safety. For example, counterfeit cigarettes contain wood dust, mold, insects, insect larvae, and other very dangerous additives. Alcoholic beverages, particularly the methyl alcohol used in the mix, can poison and blind people. Creams that claim to prevent hair loss cause serious skin diseases. Fake perfumes can cause serious disorders in the lungs and kidneys. Contact lenses, dental equipment, tanning products, baby formulas, etc. were among the potentially dangerous counterfeit goods.
Dangerous counterfeit products are not only dangerous for where they are produced. Given today's transportation and logistics possibilities, counterfeit goods produced in one country can be exported to another country from thousands of kilometers away. Preventing counterfeit products will therefore protect both companies and the public.
III. Taking Preventative Action to Stop Counterfeiting
Counterfeit products must be removed from the market in order to protect the company's profits, avoid a drop in sales, and maintain brand value, on the one hand, and avoid environmental, health, and safety issues, on the other.
Legal measures can stop counterfeits from entering the market. One of the most important and basic actions to take is to register your trademark. Trademark registration helps to put a chokehold on counterfeiters' operations. Other possible measures are an application for border seizures via customs authorities, criminal or civil court actions, etc.
A brand protection strategy should be established based on the nature of business, including market surveillance, test sales, digital/online strategies etc.
IV. Conclusion
To protect companies, especially brand value, measures should be taken to prevent counterfeit products. If counterfeit products are already on the market, legal action should be taken. Preventing the production, sale, and international trade of counterfeit products is crucial for both companies and the public’s health, trust, and safety.
For more information, please see https://www.europol.europa.eu/crime-areas-and-statistics/crime-areas/intellectual-property-crime/counterfeiting-and-product-piracy for counterfeiting and product piracy and https://www.oecd.org/publications/dangerous-fakes-117e352b-en.htm for dangerous fakes.
Rims and wheels have been under discussion regarding design protection for many years.
[[{"type":"media","fid":"5456","view_mode":"default","alignment":"center","instance_fields":"override","attributes":{"style":"height: 400px; width: 400px;"},"field_file_image_alt_text[und][0][value]":"EUIPO Decision on Wheel Designs","field_file_image_title_text[und][0][value]":"EUIPO Decision on Wheel Designs"}]]
Before analyzing the interesting design case dated 7 October 2022, before the EUIPO about wheels/tyres, some background information should be mentioned. S Dizing S.r.l. (‘the design holder’), based in Romania, is the holder of the Community Design No 7397146-0001 (‘the contested design’). The design indicates wheels for vehicles. The registration was filed on 14 December 2019 and published in the Community Designs Bulletin on 8 January 2020.
Concaver Sp. z.o.o. ('the invalidity applicant’), based in Poland, is the owner of Registered Community Design (‘RCD’) No 7307277-0001 (‘the prior design’) which was filed on 28 November 2019 and published on 10 December 2019. The invalidity applicant filed an application for a declaration of invalidity of the contested RDC on 5 June 2021. The application was based on Article 25(1)(b) of Community Design Regulation (‘CDR’), in conjunction with Articles 4(1), 5(1)(b), 6(1)(b) and 25(1)(e).
The Prior Design RDC No 7307277-0001 | The Contested Design RCD No 7397146-0001 |
|
A. Invalidity Application No ICD 115928
The invalidity applicant claimed that the prior design is identical to the contested design, differing only in immaterial details and creates the same overall impression on the informed user as the contested design. In other words, the contested design lacks novelty and individual character.
The Invalidity Division declared the contested RCD invalid on 15 November 2021. As stated in the judgement the informed user is likely to be a professional in the vehicle tyre trade acquiring wheel rims for fitting tyres onto vehicles. From the standpoint of the informed user, taking into account the designer’s freedom in the contested design and the other circumstances of the case as set out above, the overall impression conveyed by the contested design does not differ from that conveyed by the prior design.
The designer’s freedom is restricted because the wheel must be compatible with the vehicle for which it is intended. This is why wheels normally have evenly distributed repeating elements. However, there are many ways to shape, in particular, the elements connecting the rim to the hub. Although, the contested design and the prior one look strikingly similar with only minor differences.
The contested RCD is invalid, based on the findings that the contested design lacks individual character within the meaning of Article 6(1)(b) CDR when compared with the invalidity applicant’s earlier RCD No 73072770001. Since the application was fully successful on this ground, the Invalidity Division found that there was no need to examine the other grounds invoked in the application.
B. Appeal
On 11 January 2022, the design holder filed an appeal against the contested decision, requesting that the decision be set aside. In its statements of grounds, the design holder did not put forward any argument with reference to the lack of distinctive character of the contested RCD when compared with the invalidity applicant’s earlier RCD No 7307277-0001, but claimed instead that the contested decision must be annulled because the invalidity applicant’s RCD No 7307277-0001 does not constitute a valid earlier disclosure capable of invalidating the contested design.
i. Scope of the appeal and the evidence submitted at the appeal stage
Although the holder did not directly refer to any provision of the CDR in support of its claim, the Board notes that exceptions to disclosure are set out by Article 7(2) and (3) CDR. In light of the above, the question of at what stage of the administrative procedure the proprietor of a contested design may rely on the exceptions provided for in Article 7(2) and (3) CDR arises and, in particular, whether he can do so for the first time before the Boards of Appeal.
The design holder remained silent before the Invalidity Division. However, the Board considered that no provision of the CDR precludes the benefit of said exceptions from being relied on, for the first time, before the Board of Appeal, in response to the decision of the Invalidity Division. Consequently, the Board of Appeal has jurisdiction, inter alia, to rule on the claims of the design holder relating to the benefit of Article 7(2) and (3) CDR. Therefore, although the Board will assess the legality of the contested decision in full, only the evidence and arguments provided by the opponent in its statement of grounds will be analyzed in depth, namely the issue of the disclosure of the invalidity applicant’s earlier RCD No 7307277-0001.
ii. The evidence submitted for the first time at the appeal stage
Pursuant to Article 63(2) CDR, the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. In stating that the Office may, in such a case, decide to disregard evidence, Article 63(2) CDR grants the Board a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account.
The Board notes that, in the present case, the evidence filed at the appeal stage is prima facie relevant for the outcome of the case. In addition, although the evidence at issue is new, and not supplementary to evidence already submitted or be filed to contest findings made in the contested decision, the Board considers that it should be taken into consideration. These documents refer, in fact, to the exceptions presented by the design holder before the Board. Given that said exceptions must be accepted, in light of what has been explained above, it follows that the documentation in support of them shall be accepted, too.
iii. Disclosure pursuant to Article 7 CDR
Pursuant to Article 7(1) CDR, for the purposes of applying Article 5 or Article 6 CDR, a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the filing date or, as the case may be, the priority date of the contested design, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the European Union.
The design holder argues that the wheels for vehicles as covered by the contested RCD were disclosed by the same design holder before the disclosure of the prior design; thus, the contested RCD was the first made available to the public. He presented evidence from previous automotive fairs to prove his claim. The Board notes that the arguments and evidence provided by the holder do not contain sufficient reference to the fact that the holder itself could be considered as the creator of the prior design, nor the successor in title to that creator. Therefore, the exception to disclosure under Article 7(2) CDR does not apply in the present case.
In light of the aforesaid, the Board concludes that the design holder has not proved that in the case at issue the exceptions to disclosure provided for by Articles 7(2) and (3) CDR apply.
iv. Lack of individual character pursuant to Article 6 CDR
As stated above, the design holder did not put forward any argument with reference to the lack of distinctive character of the contested RCD when compared with the invalidity applicant’s earlier RCD No 7307277-0001.
The contested RCD and the previous design create the same overall impression and they are highly similar: Both share the same two major elements: both have spokes; the number of spokes is identical (ten); the spokes taper towards the rim; the junction between the spokes and the rim is identical; the spokes have an identical front surface shape, especially on their front side; the spokes when viewed from above are similar to the shape of a letter ‘Y’; the spokes form five pairs of spokes. They differ in some banal elements that can be considered immaterial, however, these features are not of such a character as to alter substantially the product’s appearance. From the informed user’s perspective, both designs produce the same overall impression. The designs are therefore identical in the sense of Article 5 CDR. Even if the contested design is new, it certainly does not have individual character. As a result, the Board confirms that the contested design lacks individual character within the meaning of Article 6(1)(b) CDR.
C. Conclusion
Since the appeal has been unsuccessful, the design holder must be ordered to bear the costs incurred by the invalidity applicant, in accordance with Article 70(1) CDR.
The significance of comprehending the scope of protection given to marks with a reputation in EU law was brought up again in a recent case. The trademark at issue in this case is unquestionably one of the most well-known brands in the world: GOOGLE. This judgment again confirms that well-known trademarks enjoy a much broader scope of protection.
A. Subject Matter of Dispute/Background
On 9 January 2019, Mr. Zoubier Harbaoui, a French citizen, sought to register the EU Trademark Application “GC Google Car” (word/device mark) to the European Union Intellectual Property Office (‘EUIPO’). The application was filed for ‘vehicles and conveyances’ in Class 12. The application was published on 21 February 2019. On 20 May 2019, Google LLC, based in the USA, filed an opposition.
| |
Earlier EU Trademark No. 1104306 |
Contested EU Trademark Application No. 18007095 |
B. Opposition
Google LLC filed an opposition against Mr. Zoubier Harbaoui. The opposition was based on EUTM registration No. 1104306 “GOOGLE” (word mark) and 12 other earlier EUTMs of the company containing the word Google (e.g. Google Chrome, Google Lens, Google Duo, Google Jump etc.). The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of European Union Trade Mark Regulation (EUTMR).
[[{"type":"media","fid":"5455","view_mode":"default","instance_fields":"override","attributes":{"style":"width: 283px; height: 400px;"},"field_file_image_alt_text[und][0][value]":"Google vs. GC Google Car","field_file_image_title_text[und][0][value]":"Google vs. GC Google Car"}]]According to the opponent, Google LLC, the earlier trademark has a reputation in the European Union, therefore the grounds for refusal of Article 8(5) EUTMR are applicable to the case. In support of this argument, the opponent submitted documents showing how well-known the company is in the relevant market and how valuable the ‘GOOGLE’ trademark is. The mark is recognized as a search engine, but also as a mapping or a translation application/software; it has also been demonstrated that the opponent is at the forefront of technological innovation and has been actively involved in the research in the field of self-driving vehicles. The opposition division agreed that these arguments were valid and ‘GOOGLE’ is well-known worldwide.
The signs “GOOGLE” and “GC Google Car” have been found similar. The relevant public will establish a link between the signs, in other words “GOOGLE” will be perceived as the main badge of origin of the respective goods and services in both signs. The contested sign is likely to harm the earlier reputed mark in the sense that its capacity to arouse immediate association with the opponent’s company would be diminished. Furthermore, the use of the contested trademark would take unfair advantage of the distinctive character and the reputation of the earlier trademark and be detrimental to its distinctive character.
On 4 March 2020, the Opposition Division upheld the opposition for all the contested goods considering the distinctive character and repute of the earlier ‘GOOGLE’ trademark and the EUTM application was rejected in its entirety on the basis of Article 8(5).
C. Appeal
On 13 May 2020, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The EUIPO’s First Board of Appeal examined the reputation of the earlier trademark and stated that the earlier mark enjoys a truly global reputation. Afterwards, the signs were compared and at least an average level of similarity between the conflicting signs has been found. It was also pointed out that the fact that the opponent is also developing its own project in the automotive sector, will necessarily make the consumers link the conflicting marks. In the present case, the applicant has used the term ‘GOOGLE’ together with a descriptive addition ‘CAR’ and the acronym ‘GC’, which is likely to be read as the initial letters of the words ‘Google Car’. The reference to Google is more than obvious. Therefore the use of the contested sign is liable to take an unfair advantage of the opponent’s reputation.
The Board concluded that the conditions for the application of Article 8(5) EUTMR are met in the present case. The appeal was dismissed on 18 June 2021.
D. Decision of the European General Court (EGC)
Mr. Zoubier Harbaoui, sought annulment of the decision (‘the contested decision’) of the EUIPO’s First Board of Appeal dated 18 June 2021 and filed a further appeal with the European General Court (EGC). The Court conducted its review under three headings: (i) incorrect visual and conceptual comparison of the signs at issue, (ii) incorrect assessment of the existence of a link between the marks at issue, and (iii) incorrect assessment of the risk of unfair advantage.
(i) Incorrect visual and conceptual comparison of the signs at issue
The applicant alleges that the Board of Appeal made an error of assessment in its comparison of the signs at issue, the similarity between signs in this context is not average but low. The applicant does not challenge the Board of Appeal’s assessment that the marks at issue have an average degree of phonetic similarity.
The court held that although the abbreviation “GC” was the dominant part of the mark, the Google Car words underneath were also prominent. In this respect, it found no error in the previous decision and concluded that the signs are averagely visually similar.
An acronym representing the initials of the other word elements of the mark can even support the relevant public’s perception of the word combination of those elements. In the present case, the element ‘gc’ emphasizes the reference to the earlier mark “GOOGLE” from the point of view of the relevant public. Another point to add is that the word “google” has no specific meaning as such, however, generally associated with the intervener’s internet search engine or internet searches in general, as shown by its inclusion in the online English-language dictionary Collins. The Board of Appeal found that the degree of conceptual similarity between the signs at issue was high. The Court decided that the Board of Appeal did not make an error of assessment in finding that the signs at issue have an average degree of conceptual similarity.
(ii) Incorrect assessment of the existence of a link between the marks at issue
According to the applicant, the reputation of the earlier mark is based on search engine services and not cars. Therefore, consumers will therefore not establish a link between the marks at issue. The applicant claims that consumers will recognize the specific mark WAYMO, which the intervener uses to operate in the automotive sector, as the mark under which the intervener markets cars and car services and not Google Car. Second, the applicant argues that the application for registration of the mark applied for covers cars in general, without specifying that they are self-driving cars. Third, he submits that the parties’ business focuses are different from each other, which strongly reduces the risk for consumers of making a link between the signs at issue.
The Board of Appeal observed, that although the goods covered by the mark applied for are not similar to the goods in respect of which the earlier mark enjoys a reputation, the relevant public will be aware of Google’s reputation and will therefore associate the mark applied for with a car linked to Google. The public will clearly recognize the term “google” and assume that the vehicles and conveyances incorporate Google technologies. First, the mere existence of a separate mark used by the intervener in connection with its cars (WAYMO) does not in any way affect the fact that consumers will establish a link between the signs. Secondly, vehicles, as a broader category, include cars, including self-driving cars and therefore the applicant’s argument that the fact that the goods covered by his application are not self-driving cars must be rejected. Thirdly, the argument that the business focuses of the parties are far from each other must also be rejected, because there is in actual fact an overlap between commercial activities owing to the intervener’s activity in the automotive sector. As a result, the Board of Appeal did not commit an error of assessment in considering that the relevant public will establish a link between the marks at issue.
(iii) Incorrect assessment of the risk of unfair advantage
According to the applicant, the Board of Appeal erroneously determined that there was a danger of unfair advantage. The strength of the mark's image, the degree of distinctiveness of the mark, the degree of similarity between the marks in question, and the nature and proximity of the products or services are just a few of the factors that must be considered in order to reach an unfair competition conclusion. The more quickly and strongly the later mark conjures up the earlier mark, the more likely it is that the later mark is being unfairly used now or in the future.
The Board of Appeal stated that the applicant would unfairly advantage the earlier mark's attractiveness given the more than clear reference to it and its extremely strong reputation. The intervener's mark, WAYMO, wouldn't stop someone from using the previous mark unfairly. The Court ruled that unfair advantage exists.
Conclusion
Having regard to all the foregoing considerations and given that none of the three parts of the single plea raised by the applicant in support of the form of order sought is to be upheld, the Court decided that the action must be dismissed. Consequently, the EU Trademark Application No. 18007095 “GC GOOGLE CAR” cannot be registered as a trademark.
Millions of spectators from various countries participate in the tournaments organized around the world every year. In this context, marketing, advertising, and branding sports events have gained great importance. Sport teams and sports personalities are looked at as big business opportunities. Intellectual property is also becoming increasingly important in this growing industry.
[[{"type":"media","fid":"5454","view_mode":"default","instance_fields":"override","attributes":{"style":"height: 253px; width: 700px;"},"field_file_image_alt_text[und][0][value]":"Sports and IP","field_file_image_title_text[und][0][value]":"Sports and IP"}]]
To recap briefly, intellectual property (IP) refers to an umbrella term used to describe creations of the mind and includes patents, trademarks, artistic works, trade secrets, copyrights, designs, etc. When IP is specifically examined for sports, it can be seen that patents can be used for the development of sports equipment; trademarks, brands, and designs can be used to define the unique personality of a team or sporting event; and copyrights play a role in conveying sports events to their audience through media.
This blog article will look at the various forms of IP that may be found in the world of sports. The aim is to give a short overview.
1. Sports Trademarks
When we think of the Olympics, do we not all remember the brand consisting of five hoops? When buying the uniform of the football team we support, does not the team's logo appear on it? When we hear the slogan "Impossible is nothing", don we not think of Adidas, whose logo consists of 3 stripes? These are some examples of trademarks that are being used in sports. One of the most common intellectual properties associated with sports is a trademark. Trademarks can be names, captions, symbols, numbers, colors, shapes, sounds, etc. They allow the customer to recognize the product and understand which company the product belongs to. In addition to providing a manner of identification, trademarks can also add to the value of a mark when used in various forms such as merchandise, sponsorships, etc. To determine a franchise's brand equity, ads and sponsorships are typically linked to trademarks.
When we think about the logo of the FC Bayern München Football Team. The logo comprises three colors: red, blue, and white. The texts on the logo are written in a certain font, and the width and length proportions of the logo were determined. This is the trademark of FC Bayern München, an important asset that, if used successfully, helps consumers develop trust, confidence, and loyalty in a product, which, for example, can be the uniform of the team. In addition, a trademark in general, especially a famous one like FC Bayern München trademark, has an incredible economic value.
In general, trademark protection is created by applying for a trademark at a trademark office. However, in some countries (e.g. USA), protection is also created by mere use of the mark. Once registered, they may be used for an endless period of time if renewed, usually every then years. The Madrid System, which is used by a United Nations agency, the World Intellectual Property Office (WIPO) to register international trademarks, enables trademark owners to submit a single application for registration across numerous jurisdictions and to maintain and renew their marks using a single process. Currently, there are 114 Contracting Parties covering 130 countries (status: 24 November 2022) Member States to the Madrid Protocol/Agreement.
2. Sports Patents
Sports technologists have used their creativity, innovation, and expertise to create better, safer equipment in the pursuit of sporting success. For instance, new high-tech materials used to create stronger and lighter athletic footwear have allowed football athletes all over the world to achieve new levels of success while reducing the danger of injury. Patents protect these inventive sports technologies under the IP system. Sports patents include gym equipment, sportswear, energy drinks, nutritional supplements, etc. For the duration of the patent, which is typically 20 years, it prevents an innovation from being used without permission by a third party.
Patents are territorial, just as other intellectual property rights are; they only have legal standing in the nation or territory in which they were granted. Thus, obtaining patent protection across numerous nations may be time-consuming and costly. Inventors can start the process of securing patent protection in individual countries or in several nations by submitting a single international application under WIPO's Patent Cooperation Treaty (PCT).
3. Designs in Sports
Designing a product in a way that appeals to consumers has a crucial role in enhancing its commercial worth and increasing its marketability in a highly competitive market. In order to create designs that are successful and adapt to shifting consumer preferences, businesses devote significant resources and experience. For example, some textiles are designed to provide insulation and protection against wind and water, qualities that are crucial for athletes competing in colder areas.
Sports-related products with unique 2D or 3D shapes are protected by design legislation, which is a significant source of IP protection in the sports sector. To be protected by law, an industrial design must typically be registered. Protection, however, is only offered in the nation in which the design is registered. The Hague System of the WIPO offers secure protection for an industrial design across several nations. Companies can protect themselves from lookalikes and fake products by registering their designs and acquiring intellectual property rights over them.
4. Copyright and Broadcasting Rights in Sports
Of course, it is not a coincidence that nobody is out on the streets on the days of big games! Everyone is either attending the game in person or watching it on television. This allows billions of people all over the world to experience the thrill of major sporting events at the same time. The sale of broadcasting and media rights has become the primary source of income for the majority of sports organizations, providing the money required to support major athletic events.
The connection between sport and television and other media is supported by copyright and related rights. Broadcasters have exclusive rights for 20 years to permit rebroadcasting, recording, reproduction, and public communication of their broadcasts under the Rome Convention, which was signed in 1961 and is for the protection of performers, producers of phonograms, and broadcasting organizations. The creation of an international legal framework that effectively and appropriately guards against broadcast signal piracy is the goal of ongoing WIPO negotiations.
5. Licensees in Sports
Licensing and merchandising enable fans to support a sporting event by providing them with actual, officially licensed products. Caps, t-shirts, mugs, shoes, toys, lighters, and other items are among the most typical and well-liked merchandise options. So, IP right owners who hold patents, trademarks, and copyrights may provide licenses to third parties in exchange for payment. Without giving ownership of the intellectual property, licenses give rights for technology usage, publishing and entertainment, merchandising, and trademark use.
6. IP and Dispute Resolution in Sports
In the area of intellectual property and sports, disputes may arise over sports broadcasting and media, licensing and merchandising rights for important sporting events, and commercial exploitation of athletes' image rights, among other issues. The WIPO Arbitration and Mediation Center offers alternative dispute resolution (ADR) guidance and case administration services as part of the WIPO ADR Services for Specific Sectors to assist parties in resolving disputes arising in the areas of intellectual property (IP) and sports without resorting to court litigation.
Conclusion
IP is used to characterize all types of mental works, including patents, trademarks, literary and artistic creations, trade secrets, copyrights, and designs, and can be used to create sports gear, trademarks, branding, and designs, as well as to establish the distinctive character of a team or sporting occasion. Protecting intellectual property rights holders' interests and avoiding harm to them are crucial. Legal protection of IP rights is achieved through registrations that can be made locally or internationally.
For more information, please see the link below for the WIPO brochure "Reference Guide to Sustaining Sport and its Development through Intellectual Property Rights": https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf
The European Law Students’ Association (ELSA) is an international organization that brings together law students and young lawyers from many countries throughout Europe, helps them expand their knowledge of different legal systems, and promotes mutual understanding, exchange of information, and personal contacts between young lawyers and law firms.
[[{"type":"media","fid":"5451","view_mode":"default","instance_fields":"override","field_file_image_alt_text[und][0][value]":"Traineeship LexDellmeier","field_file_image_title_text[und][0][value]":"Traineeship LexDellmeier"}]]
Background to ELSA Traineeships
ELSA Traineeships is one of ELSA's oldest projects, organized twice a year, and provides opportunities to apply for various internships at law firms across Europe. In the past 14 years, the IP boutique firm LexDellmeier headquartered in Munich, Germany, has offered one 3 – 6 month internship to ELSA per year.
This year, the application cycle for ELSA Traineeships was very competitive (48 applications for one open traineeship at LexDellmeier), and the overall quality of applications received was extremely high. After evaluating the applications, we welcomed our new intern in February 2023, who will work with us for three months.
About Sabah Mine Cangil
Ms. Sabah Mine Cangil is 24 years old, speaks Turkish, German and English and lives in Istanbul, Turkey. She decided to study law after graduating from Istanbul German High School in 2017 with an Abitur Diploma. She graduated from Istanbul University Faculty of Law in 2021. This year, she will graduate from the second undergraduate program she studies at Istanbul University, which is sociology. She is also a student of the Public Law Master's Program at Istanbul University Institute of Social Sciences and is writing her master’s thesis now.
After her graduation, she completed her oneyear compulsory legal internship at GEMS Schindhelm Law Firm in Istanbul and just recently received her lawyer's license in December 2022. During her legal internship, she worked mainly in the fields of commercial law, labor law, and immigration law.
While gaining various experience in the legal field and looking into the field of intellectual property, she also tries to spare time for her hobbies: playing the drums, singing, and doing sports. As a singer-songwriter, she has two original songs published on digital platforms. In the field of sports, she did Aikido for many years; now she does reformer Pilates.
During her undergraduate studies, she attended many international seminars and did a lot of comparative law studies (DigiCrimJus, Dreiländerseminar, etc.). She has previously participated in law summer schools in Innsbruck, Austria, and Athens, Greece, and had the opportunity to do an internship in Athens through ELSA, gaining international experience. Therefore, she applied for the ELSA Traineeships again. Intellectual property law is an area she would like to specialize in, so she wanted to apply for the internship at LexDellmeier IP Law Firm. She has been accepted for the internship and is very excited to work for three months, half remotely and half on-site in Munich, Germany.
Expectations regarding the ELSA Traineeship
During her time at LexDellmeier, she would like to expand her knowledge in the field of intellectual property (IP). In this context, she will be assisting the LexDellmeier team in the preparation of counseling and litigation services they provide to clients on an international basis. She will also be researching and writing blog posts on specific topics of intellectual property and will take part in a 3-month project during her internship. She firmly believes that working at a law firm in Germany will improve her language skills (English and German) professionally, improve her ability to communicate with people, and teach her how to work collaboratively in an international business environment with international colleagues and clients.
We warmly welcome her to the LexDellmeier team!
What a ride and wake-up call for McDonald’s.
[[{"type":"media","fid":"5450","view_mode":"default","instance_fields":"override","attributes":{"style":"width: 300px; height: 229px;"},"field_file_image_alt_text[und][0][value]":"Burger Clock","field_file_image_title_text[und][0][value]":"Burger Clock"}]]
After the European Union Intellectual Property Office (EUIPO) had been of the opinion in the first instance that genuine use of EUTM 000062638 “BIG MAC” (word mark) had not been proven sufficiently by McDonald’s, the EUIPO’s Board of Appeal (BoA) now reversed the first-instance decision – also after classifying all kinds of additional evidence as eligible for consideration.
The following blog article shows how hard it may be nowadays for trademark owners to prove sufficient use of their trademarks for the goods and services registered. Trademark owners must be careful and diligent when compiling so-called “proof-of use” materials. And, always keep in mind that the standards to prove use are different around the world!
- First instance proceedings before the EUIPO Cancellation Division (CD)
On 11 January 2019, the EUIPO caused quite a stir among trademark experts with its first instance decision (Case no. 000014788) that EUTM 000062638 “BIG MAC” of McDonald’s International Property Company, Ltd. is not genuinely used for the goods and services for which it had been registered, which are the following:
Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts;
Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar;
Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.
In its first instance decision, the EUIPO inter alia assessed that
- three affidavits (with attached examples of packaging, promotional brochures etc.) have “less weight than independent evidence”;
- the EUIPO proprietor failed to prove the extent of use of its mark;
- all remaining evidence originates from the EUTM proprietor itself;
- Wikipedia entries cannot be considered as a reliable source of information;
- taking into account the submitted evidence as a whole, the documents do not provide conclusive information that the products marked with the EUTM (“BIG MAC”) are offered for actual sale, as there is no confirmation of commercial transactions and
- there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.
- Appeal proceedings before the EUIPO Board of Appeal (BoA)
McDonald’s, of course, appealed and the BoA has now it its decision of 14 December 2022 – quite rightly – acknowledged that McDonald’s has sufficiently proven genuine use of the mark “BIG MAC” for at least the following goods and services (in bold):
Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts;
Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar;
Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.
- Evidence considered in the appeal stage
The BoA of course examined the evidence McDonald’s had provided in the first instance proceedings.
However, in addition to that, McDonald’s had submitted a large amount (700 pages) of additional evidence as to genuine use in the appeal stage, namely
- consumer surveys
- online newspaper and magazine articles regarding the “BIG MAC Index” (which is an informal way of measuring the purchasing power parity between two currencies)
- photographs of original packaging used in relation to the “BIG MAC” product
- various copies of receipts and/or excerpts from electronic cash registers
- screenshots of TV commercials
- photographs showing the adverts used at bus stops
- advertising material
- photographs of menus in McDonald’s restaurants
- news articles and third party publications (for example screenshots of YouTube videos)
- Google analytics report relating to McDonald’s websites displaying the “BIG MAC” product
- a financial audit report
- further affidavits and a letter of confirmation.
- further affidavits and a letter of confirmation.
The Cancellation Applicant of course argued that the additional evidence should be rejected in its entirety because it constitutes a significant and substantial part of the evidence of use and was only submitted at the appeal stage without due cause.
It is very interesting from a procedural point of view that the BoA considered all the approximately 700 pages of newly submitted documents from McDonald’s and did not reject them as delayed. They have, however, dealt with the question of admissibility of these documents very carefully and concluded that the conditions for accepting the additional evidence submitted by the EUTM proprietor have been met, as the additional evidence only supplements and builds on the evidence submitted before the CD.
- Evaluation of the evidence – overall assessment
As regards the evidence provided in the first instance proceedings, the BoA found that the affidavits cannot be disregarded as merely internal documents deriving from the EUTM proprietor. Their probative value was supported by all the other evidence, including the evidence on the sale, marketing and restaurant services. As to the Wikipedia extracts, the BoA explained that it contains many references and external links, including references to reputable sources such as articles in know newspapers and magazines and that, therefore, it has confirmatory value.
Remarkable regarding the consumer surveys is the BoA’s explanations in response to the Cancellation Applicant’s arguments that they do not date from the relevant time period. Here (cf. 82), the BoA noted that “it would be unreasonable, rigorous and highly economically burdensome to require the proprietor of each mark to have consumer surveys covering all periods of the EUTM’s registration available for the entire duration of the EUTM’s validity.” Moreover, the market surveys would be “supplementary evidence which reflects the degree of awareness of the relevant public of that particular mark, which, particularly in the case of such an extensive awareness of the “BIG MAC” mark in the relevant market, is built up over a long period of time, in the order of years.”.
In sum, the BoA found that the evidence, taken as a whole, fulfils all conditions (place, time, nature and extent) of use, but not with respect to all registered goods and services. Well, the most important goods and services for McDonald’s “BIG MAC” – food prepared from meat, meat sandwiches and restaurant services – should now still be included in the list of goods and services (slight exception: use for “franchising restaurants” in class 42 was not seen as proven; however “operating restaurants” is still included in class 42).
All in all, the BoA concluded that the evidence submitted during both stages shows that the EUTM “BIG MAC” was not only used to identify a specific product (sandwich), but also to distinguish the restaurant services provided by McDonald’s from similar services of other providers.
According to the BoA, the evidence as a whole proves that the EUTM proprietor has seriously tried to acquire, and actually keeps a significant commercial position in relation to the contested mark in the relevant market. “In fact, the Board confirms that this is also common knowledge” (cf. 191).
- Comments
Even if the impression arises that the BoA was kind of generous, e.g. on questions of the admissibility of late submissions, the judgment is to be regarded as correct.
That the trademark “BIG MAC” is used in most of the claimed goods and services should be completely out of the question. “BIG MAC” is probably even to be considered a famous trademark. For us, it was out of question that McDonald’s could prove proper use of its trademark “BIC MAC” in the EU. However, the EUIPO decisions show that “lovelessly” compiled documents and mere own belief the mark is used will collide with the EUIPO Guidelines of proof of use and an extremely strict CD. In the appeal stage, McDonald’s made significant improvements in the documentation they submitted and the BoA rightly took corrective action.
It remains to be seen whether the Cancellation Applicant (Supermac’s (Holdings) Ltd.) will file an appeal to the General Court.