On 23 June 2016, the referendum held in the UK tailored history and after 43 years of membership, a small majority of UK citizens decided to leave the EU. As one of the leading countries, with the second largest nominal GDP in the EU, it is safe to say things will now have to notably change. However, it should be mentioned that the switch will not come overnight, there are negotiations to be held and conditions to be met, and the real exit is not expected for a couple more years.

First thing to know is that EU trademark and design systems will no longer be applicable in the UK. Likewise, EU Courts will no longer be an option for the UK citizens.

UK-based lawyers will not be able to represent their clients in front of the EUIPO. They ought to expect a drop in their workload, because companies might change to attorneys eligible for EU-wide representation. In case the UK joins the European Economic Area (EEA), there is a possibility of representation, but this is very uncertain at this early stage.

Current trademark owners might have to reapply for UK national trademark via UK IPO or WIPO. It is probable that there will be a transitional period for UK trademark owners, but there are several possible scenarios that could play out. Whether there will be a conversion process or will UK decide to keep the status quo, it is currently impossible to tell.

As a result, all of this is predicted to affect UK business. The process of registration will now be more complex and lengthier, and more displeasing for both the UK-based and the international companies. Therefore, it a drop in economy is expected.

For more detailed information, please visit http://www.itma.org.uk/membership/resources/eu_referendum.

There has been another round in the legal arena for Rubik´s cube, and this one might be a sign of a shift of powers. So far, all EUIPO´s and EGC´s decision were in favor of protecting the cube, but after the Advocate General´s unfavorable opinion towards this practice, it seems plausible that the European Court of Justice might agree with him.

Background of the case

The British company Seven Towns and German manufacturer Simba Toys have been disputing since 1996 whether the frustrating-yet-beloved Rubik´s cube is eligible for trademark protection. More precisely, is the three-dimensional shape of the cube (EUTM no. 162784) eligible for patent registration solely or for 3D trademark registration. Simba argued that the shape was a technical solution and purely functional. The Cancellation Division, Board of Appeal and the General Court of the European Union (the EGC) all agreed this claim was not true. The EGC (case T‑450/09) stated that the graphical representation of the shape of the cube and its grid structure did not imply any technical solutions. The background behind the rotation of the cube is not important for trademark protection. One might think this ruling was “game over” for Simba, but after appealing to the CJEU, Simba´s position just might be changing.

For a more detailed summary of the case, please visit our previous blog post.

Opinion of the Advocate General and future actions

The case (C-30/15 P) is yet to be decided by the CJEU. However, AG Szpunar handed in his opinion on 25 May 2016. He states that EGC´s line of thinking about the link between functionality and the graphic representation of a trademark might harm the public interest. Also, when it comes to protecting a shape mark, a broader picture should be observed and other factors taken into consideration. The AG backed his claims with previous case law, namely Pi Design (Case T-416/10) and Lego (Case C-48/09). The AG is of the opinion that the rotation of the grid is the epitome of its function, and that, beyond that, the cube has no decorative elements. Therefore, the decision of the EGC ought to be reconsidered. The final teaser AG Szpunar gave was that the CJEU has already disregarded EGC´s theory on restriction of functionality analysis just to the trademark´s graphic representation. It is yet to be seen if this really was an indication of CJEU´s line of thought.

The two Merck pharmaceutical magnates have shared one name for decades. However, their coexistence has become anything but peaceful, with mutual lawsuits filed all over Europe, and not without good reason. The namesakes managed to confuse everyone, including Facebook, and it is safe to say it is time for a new solution of their problem. Even the European Court of Justice (ECJ) got involved, as their case pointed a few questionable areas of the European Union Trademark Regulation.

Background of the case

Merck was established 1668 in Germany. After the World War II the company decided to split into two parts: Merck KGaA or Merck Global and Merck US. Predicting that the same name might present a problem, the parties entered an agreement where Merck US was allowed to use their name in the US and Canada, while Merck Global kept the rights to the name towards the rest of the world. However, Merck US could still operate under their full name of Merck Sharp & Dohme Corp (MSD) or with the addition of a geographical indication (like Merck US). The agreement was concluded in 1955 and renewed in 1970. Unfortunately, the 1970´s agreement could not predict the massive globalization or the Internet. Therefore, when it came to large numbers of UK citizens visiting merck.com (belonging to MSD), the problem reappeared. The confusion did not stop there, as Facebook accidentally allowed for both companies to share one Facebook domain. Another thing that did not help the situation was MSD´s new campaign, starring the word “Merck” alone, without the necessary accompaniments. And finally, Merck Germany underwent a brand makeover, calling themselves the “Originals” and adding fuel to the fire. This escalated to crossfire of lawsuits all over Europe, with both parties claiming breach of the other. On 15 January 2016 the English Court decided that MSD was overstepping the boundaries, as parts of their website were clearly intended for British customers (decision HC 13 B00955).

Future of the case

The Merck case reached a new level on 25 April 2016, when the Regional Court of Hamburg (Landgericht Hamburg) asked the CJEU for a preliminary opinion on seven questions (case C-231/16). The questions evolve around Article 109(1(a)), titled “Simultaneous and successive civil actions on the basis of EU trademarks and national trade marks”. Specifically, the article says:

 “Where actions for infringement involving the same cause of action and between the same parties are brought in the courts of different Member States, one seized on the basis of a EU trade mark and the other seized on the basis of a national trade mark:

(a) the court other than the court first seized shall of its own motion decline jurisdiction in favour of that court where the trademarks concerned are identical and valid for identical goods or services. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested;”

Firstly, the Hamburg Court asked what does the EU entail? Is a virtual “territory” the same as the material? If there are two parties operating under the same domain, does it equal to them operating on the same territory?

Secondly, what is the scope of declining jurisdiction? When an application for a national trademark was prior to the European one, is the second court supposed to decline jurisdiction only for the territory of the national trademark or does the domestic court get to decide for the rest of the EU too?

Thirdly, what is the meaning of action withdrawal? If the plaintiff withdraws the national lawsuit, does it preclude declining the jurisdiction of the second court?

Finally, in the case where only some of the registered classes of the Nice Classification are identical, which Court gets jurisdiction regarding the rest?

Europe is definitely caught up in football fever. Not even the European General Court (EGC) was spared. Rendering their decision on the case Cule v Kule, they decided on the link between a football club and its fans, at least when it comes to proving genuine use of a trademark.

Background of the case

KULE LLC is an American designing company owned by Nikki Kule, famous for their striped shirts collection. They protected the word mark “KULE” on 22 April 2011 in front of the European Union Intellectual Property Office (TM no: 009917097). They sought protection for classes 14, 18 and 25, mainly regarding to fashion industry. However, Fútbol Club Barcelona opposed the mark (case 001926917), basing it on their Spanish marks for the word “CULE” (TM nos: 2 716 946, 1 021 594, 1 021 596). Cule is a famous nickname for a FC Barcelona fan. A recognizable term all over Europe, FC Barcelona used this fact as an additional ground for opposition, saying that as a well-known mark, no goods or services could use this name. To prove the use of the trademark they submitted a dictionary entry backing up their claims of the term being used in relation to the football club. Also, they added various internet print-outs. However, the Opposition Division did not find this sufficient evidence, and the opposition was rejected. Next, FC Barcelona filed an appeal to EUIPO´s Board of Appeal (case R2375/2013-4), also with a negative outcome.

Decision of the Court

The case continued on in front of the EGC, which decided on it on 16 June 2016 (case T‑614/14). The Court stated that it had to examine the length and frequency of use of the trademark, as well as the ways it was used and commercialized. However, the Court found it problematic that all the proof of use was actually connected to the fans, and not to the club itself. Therefore, the Board of Appeal did not err in its assessment that the submitted evidence does not prove genuine use.

On the final morning of the ECTA Annual Meeting, the first four sessions were all about presenting different points of view on the same topic. One session was on Prior Rights Agreements, introducing the topic from an industry worker’s perspective and a practitioner’s. The parallel session was on Copyrights. The first speaker was Dr. Florian Drücke from German Federation of the Music Industry. He started by admitting that the industry reacted very late to the emerge of the Internet. They did not take it seriously until early 2000, but, after realizing it is a tool that is here to stay, expressly started finding ways to protect copyright online. Their current goal is the development of a sustainable digital market and establishing better offer of legally downloadable goods. However, battling pirate content is proving to be very hard. They are using two methods, “follow the money”, where they are following the money path to the first uploader of the content, and “notice-and-takedown/staydown” strategy, but these fights are taking up a lot of time and effort. The thing that makes it easier is cross-border enforcement and awareness raising initiatives. Although they both still need some refinement, they are proving to be successful in the long run.

Next, we heard about the different debates concerning exceptions and fair use in copyright by Prof. Niklas Bruun. He talked about the WIPO, WTO, EU and US debates and how big of an impact they have on this subject. He summarized by saying the EU uses Berne Convention’s 3-step test and that the author has the exclusive right to authorize reproduction of his work and that the EU Member States decide their own exemptions, while the US approach is inclining towards “fair use” concept.

Finally, we heard about future technology developments and how will legislation and practice have to deal with it. The Internet is now a network including the Internet of people, things and services. Therefore, it is unavoidable, and it is up to us to adjust. All “smart” objects contain a copyrighted software, which is then licensed to the end user. This may be considered as restricting user freedom in the market, and even the courts are in disagreement on this topic. The US Courts find it permissible, while the EU Court does think it is a restriction. The EU Courts have not yet taken (but will soon) a stand towards market dominance that occurs with the network of smart objects. They usually connect with one another, creating a network of compatible products. The next problem we might have to tackle is a smart object as an author of copyrighted work. The famous example the court had to decide on was selfie-taking monkey, but smart object could create works far more sophisticated works than this. Although in concordance that an animal or a machine cannot have copyright, it is debatable if there is a person who is entitled to it and who that person is.

The next two parallel sessions were about filing a global trademark without national objections and IP matters in China. There is a dialogue between the EU and China lasting for over a decade now. This strategy coordination led to many improvements. Some of the current topics discussed are the problems of the 2014 Chinese Trademark Reform (like battling bad faith applications), Patent System amendments, protection of trade secrets, judicial and academic cooperation, and fighting online sale of counterfeit goods. A special problem is the lack of IP Courts in China (only 3 now, all in big cities, but, the problems constantly emerge in the smaller towns and villages).  When it comes to the distribution of pirated goods, enforcement has been singled out as the biggest problem. Due to the size of the country, it is very hard to cover all places where fakes are being developed. The European Commission has suggested the “follow the money” approach, but it has not yet marked any success. The biggest problem of the Chinese system still remains its “double track system”. You can choose either the administrative or judicial path for protection, but they do not cooperate. In fact, they tend to deliberately ignore each other.

Talking about the changes in the Chinese trademark system, they can be divided into three categories: procedural, substantial and enforcement changes. Procedural changes include the possibility of registering sound marks (so far, there has not been a single registration), easy e-filing and multiclass applications. However, the latter are not recommended because the possibility of division later is very limited. Also, a good tool in theory are examination notices, which allow for correspondence with the examiner in order to amend the application instead of rejecting it. However, the examiners do not use this because of their huge workload. Further, the right to oppose a trademark is given solely to the owner of prior right and it has to be done within 12 months. If you fail with the opposition, there is no court remedy, and your TM will be deleted automatically. Regarding substantive changes, the most important ones include the definition of use and infringement of a trademark. Also, you can ask for revocation of third party trademark if you can prove the third party knew about your trademark or prove first use, even though you trademark has not yet been registered. From an enforcement standpoint, the penalty has increased to up to five times the illegal turnover and up to 250000 CNY (approximately 35000 EUR). If there are “serious consequences”, the damages triple. A useful tool is that the Court can order a party to disclose account books under the threat of higher damages.

Finally, we received a real example of how the Chinese system works. Thomas Jullien of the Bordeaux Wine Council told us the story of registering a collective mark in China, and all the obstacles they encountered with Chinese administration. In the end, they were successful, but it took a lot of work and strategizing. The future for them is obtaining the status of a well-known mark, which also does not come very easily.

The next session was a very inspiring and modern outlook on all the changes technology brings and the roles of lawyers in it. Titling his presentation “Rogue Waves and Crosswinds: The past and the future of intangible assets in a digital, networked world”, Mr. Mladen Vukmir said that this is the time we are redefining sovereignty. Every technology changes the definition of copyright, and to truly innovate in our profession means more than just to adapt to the change. If we do not embrace it, we cannot control it. The recent movement goes towards the maxim “Authenticity is invaluable, originality is non-existent”. There are not many new things to be discovered, but putting your own mark on someone else’s idea or using it as a starting point, this is where copyright protection is headed towards. How should IP practitioners swim in these new waters? It is important to remember that the law does not come first, people and innovation come first, and law should serve them, and not the other way around.

The closing session of the Meeting was an update on current case law. First from Mr. Justice Arnold, Judge of the Chancery Division of the High Court England and Wales. Reassuring us that Britain’s recent decision to leave the EU will not have an impact for the Court for some time to come, he gave us an overview of case law concerning condition six, Article 9 of the Trademark Regulation. Mr. Christoph Bartos gave us a low-down on EUIPO’ s Board of Appeal’s Case Law, and Mr. Fabio Angelini talked about the strange practice and the “fuzzy logic” of the CJEU when deciding in the case Iron & Smith kft v Unilever NV (case C-125/14).

These were the final words from Dubrovnik. Next year the Meeting will be held in Budapest, Hungary, and there is no doubt it will be just as amazing of an experience as it was this year.

The day started with welcome speeches given by ECTA’s President, Mr. Mueller, Dubrovnik’s Deputy Mayor Mr. Raguž, Mrs. Kauterovac, Director General of Croatian IPO and the organizing Committee, led by Mr. Vukmir.

Next, the keynote speech gave us a perspective from a different, entrepreneurial point of view. Mr. Emil Tedeschi, one of the most successful entrepreneurs in Croatia talked about the growth of his business empire and the importance of brands and trademarks. He said that the competition is so enormous that even if titans like Nestle ceased to exist, it would not make much difference in the world. So how did a small company from Croatia that started with tissue papers grow into a regional distributor of companies like Mars, Johnson & Johnson, Duracell and Wrigley’s? The first commandment is to know your market and competitors, and do not fight lost battles. There is no shame in quitting, if your competition is too strong and you would finally end up at a loss. Connected, it is very important to know what distinguishes you from the others. It can be competitive production prices or uniqueness of your product, but the focus should be on that characteristic. And finally, branding is key. It is not just about the quality of the product itself, it is about the whole package, making your product as recognizable as it can be. An example was Cedevita, a famous Croatian vitamin drink. As it was considered as an old-fashioned and outdated product and everyone crossed it out as a thing of the past. Mr. Tedeschi rebranded it and created and patented a special unique bottle cap, making the old brand stronger than ever.

Next, we got an overview of novelties in IP world. Firstly, EUIPO’s Executive Director Mr. Campinos gave us an overview of EUIPO’s work and latest changes. It is fascinating to know that 35% of EU workers work in the IP-strong industries, and this business makes for 90% of EU export. Also, we got a short report on results of researches conducted in cooperation with other international bodies. Currently, EUIPO is facing a noticeable rise in applications, which counts 11% in 2015, and 15% in the first months of 2016. What EUIPO is hoping to achieve is better quality service with e-filing, fast track applications and constant updating of their Guidelines for their employees. Also they are hoping to continue nursing current collaborations and working on European Patent, Digital Market, Geographical Indications…

After this, we got an update on EUTM Report Implementation by Dr. Michael Koenig. He talked about secondary legislation and transposing the Package into national laws. It will not end there, implementation workshops with Member States will also be held. He then talked about EU IP policy beyond Trademark Reform: evaluation of Design legislation, Geographical Indications for non-agricultural products, SME package (mostly focusing on patents) and the IP Chapter of the Single Market Strategy.

Then, it was WIPO’s turn. Mrs. Valdimarsdòttir talked about news considering Madid and Hague Agreements. The main point made about the Madrid Agreement was its constant growth in accession. Every year they get new signatories and the next focus will be on Latin America.  Also, they are marking a staggering growth in application numbers: 25% in the USA and EU, 30% in Australia and 40% in India. On the gloomier note, Madrid International Registrations Information System (MIRIS) was mentioned. Although it started with a bang, there are a few issues with the system to work on.  The biggest novelty with the Hague System was that US and Japan joined in 2015, and it has been proven that WIPO’s system is easier and faster than the domestic ones.

Finally, Marc van Wesemael of EURID gave us low-down on latest efforts concerning .eu domain. He introduced us to the marvelous term BHAG (big, hairy, audacious goal) and said that theirs was is full trustworthiness. Luckily, they have more than a few good ideas on how to achieve this. Firstly, correct registration is crucial. Currently, they have a manual check of suspicious registrations, but an automatized one would be a lot more efficient, and they are working on algorithms to achieve it. Also, they have an idea of collecting review data from various sites and creating a general “trust score”. They are planning more collaborations, just like the latest one, created on 23. June 2016 with EUIPO. From now on, when a registered domain is similar to an existing one, the information will be directly sent to EUIPO, because of the likeliness of a parallel trademark infringement.

The rest of the day was reserved for European Trade Mark Legislative Package. There were presentations on the absolute and relative grounds for refusal by Prof. Dr. Dr. h.c. Annette Kur and Dr. Andreas Renck. There was a lot of talk about the deletion of the requirement of graphical representation, and the common opinion is that, although sound and motion trademarks will benefit from it, other types of trademark will probably not be as impacted as they should have been. Also, position trademarks are continuing to be a prickly topic. Some would argue if they should be a special type of trademark, and if yes, how should they be represented. The other changes in trademark system involve the special relative ground for PDOs and PGIs, mandatory national administrative opposition and cancellation proceedings…

The novelty with filing process is that it now includes the countries of the EEA, not just the EU. When it comes to the examination, the prohibition of voluntary disclaimers is new. Also, third party observations have become more efficient: now they can be expressed at any point of registration process, and even can lead to reopening of the examination.

When talking about company name defense, the new Package specified that only a natural person should never be blocked to register a TM if the trademark equals his name. This presentation tackled intervening rights too. This is relevant for “dormant rights”, which are registered, but unused trademarks. Now, this defense method is allowed for national trademarks too. Changes in this practice will add to legal certainty and put a stop to old strategies, like acquiring an earlier unused trademark.

Final part of the session was on Anti-Counterfeiting and Enforcement. First, Mrs. Sylvie Harding from Chanel talked about storage and destruction costs, followed by Mr. Ninoslav Babić of Croatian Customs Directorate. He explained Croatian Customs’ strategy. It does use EU Guidelines, but trying to be as proactive as possible, with a focus on copyright infringement. He enriched his presentation with their real-life examples and experience. The last speaker of the day was Mrs. Nicole Semjevski of EUIPO, who introduced EDB, Enforcement Database. It is a platform build on TMview and Designview, in order to help enforcement authorities to distinguish original goods from fakes. What makes it different is that it allows manufacturers themselves to upload data on their products.

As mentioned in the previous post, LexDellmeier is attending the ECTA Annual Meeting. ECTA, short for European Communities Trademark Association is an association promoting the knowledge and professionalism of members and owners alike in the fields of trade marks, designs, copyrights and other Intellectual Property rights, within the European Union. Among many other activities, they organize the Annual Meeting, this time taking place in the beautiful Dubrovnik, a historic gem in the south of the Croatian coast. We have prepared a short overview of each day of the Meeting.

The first workshop of the day was dedicated to giving us a well rounded overview of awarding damages in trademark cases in America and several countries of the EU. Although the general misconception is that it is easier to obtain damages in America, the speaker, Mr. David Donahue, explained it is not all smooth sailing. There are hurdles to cross, and the worst thing is that they vary from coast to coast and from court to court. These uneven decisions are fertile ground for forum shopping. There are multiple types of damages to be obtained: firstly, there is hypothetical royalty, where the jury estimates a higher atonement than the actual damage. This principle is not acknowledged by all American courts.  Secondly, there is corrective advertising. The question that had risen was what if the money for advertising was never spent, for the lack of funding or for other reasons, and the Court decided that perspective damages are also possible. The final type of damages, and a very rare one, are treble damages. Those are imposed only when it is possible to prove an intentional infringement. Another problem mentioned was willfulness. As it is hard to prove in IP cases, two fractions have occurred: the majority still holds its ground that intent should be proven. However, a growing minority is rejecting the idea of proving willfulness.

The EU perspective was an array of interpretations and particularities coming from interpretation of the Enforcement Directive.

In the UK, the choice of remedies is between damages and accounts of profits. However, the trial is split, which means the actual amount of damages is determined after the decision on the existence of infringement. This resulted in injunction becoming the most important remedy available. In general, the system has many similarities with the American one. However, the British Courts took an interesting stand on protection of copyrights. They have decided that an author only has rights to the amount covering the economic loss, but nothing for harm of morals, as said in the Henderson case. As they believe, there is no reputation impairment, like in nude photographs publication. This is certainly an intriguing, if not controversial point of view.

In Germany, all existing methods of deciding on damages in practice usually come down to one: in 95% of cases it boils down to the fictional royalties. Those are the sum of net retail turnover and agreed rates, which are usually from 1-5% of turnover, but can amount to a lot more. Additional damages are rarely granted, but can be given on top of other damages. The specialty of German law are the “claims with the chain of distribution”, where you can get damages from every link in the chain of distribution, instead of seeking it from the manufacturer. Another difference is the prescription period of ten years. What it means is that even after the passage of the statute of limitations of three years, you can still get damages due to the other party’s unjust enrichment.

Report by Paul Maier of EUIPO that there are still many differences with conduct and practice of EU countries. An example of this is the estimation of prohibited punitive damages. In Belgium double damages are considered as “over the top”, while in Germany, they are considered as tolerable, as long as they do not reach the amount of three times the damages.

If this panel could be summarized in one sentence, it would be the one stated by Mrs. Annick Mottet Haugaard, the moderator of the panel: “We all have to work on harmonization, on both sides of the ocean.”

The second workshop was organized by EUIPO, and it was about the importance of the HDB, Harmonized Database, which contains more than 70 000 terms from which applicants can select the goods and services for which they seek protection in their trademark applications. The database is growing daily, with more and more local databases joining in. Following this introduction was short demonstrations of TMClass, the tool which helps to classify and search goods and services, and of Goods and services builder, which is a tool easing the process of the filing for the next trademark.

Although the INTA Annual Meeting has just finished, European IP professionals have another opportunity to meet, mingle and discuss the latest novelties in the field of IP. European Communities Trade Mark Association (ECTA) is organizing their annual meeting from 22 June to 25 June, 2016. The venue is the historic town of Dubrovnik, Croatia. With its colorful naval and merchant past, the organizers considered it to be symbolic to what is currently happening with the new trademark protection system, and named this year´s conference “Rogue Waves and Crosswinds: Trade Marks in Motion”. Although the program predicts a plethora of topics, they will all be emphasizing the new EU Legislative Package Trademark Reform. Although you will get a daily summary of the event, this is a short introduction to the planned discussions, workshops and events.

The Conference starts on Wednesday, 22 June 2016, with Committee Meetings, followed by the workshop “Award of damages in trade mark cases: Perspectives from the United States and the European Union”. With Mr. David Donahue representing the American colors, the European perspective will be observed from multiple standpoints: Mr. Simon Miles will confer the British, Dr. Richard Dissmann the German and Mr. David Pellisé the Spanish points of view. Comparing such versatile systems is sure to lead to an interesting panel discussion afterwards. The next workshop is organized by EUIPO, where Mrs. Inge Buffolo will hold a presentation on the new classification tools, mainly HDB. HDB is an abbreviation for Harmonised Database, the largest multilingual database of goods and services. The advantages of using the HDB are the pre-approval of terms by all national IP offices, as well as EUIPO, and the instant translation into all EU languages, which makes the process of registration run more smoothly.

The second day of the Conference starts with a Welcome speech by the ECTA Organizing Committee, followed by the Keynote speech by Mr. Emil Tedeschi. He is the founder, President and CEO of Atlantic Group, a leading food and beverages producer and distributor in South East Europe, and one of the most prominent and versatile Croatian entrepreneurs. After his speech, a short overview of the latest IP news is planned. Mr. António Campinos from EUIPO will start off with a report on trademark cooperation, whether it is between the National and Regional IP Offices and other IP Organizations, like in The European Trade Mark and Design Network (EUTMDN), or international, like within the TM5. Next, Dr. Michael Koenig from the European Commission will update us on EU Trade Mark Reform implementation, followed by Mrs. Àsta Valdimarsdòttir from WIPO, who will give us the new information on Madrid, Hague and other Treaties. The discussion will be closed with the update on status of the .eu domain, given by Marc van Wesemael, the General Manager of EURID. The next two sessions address the changes in the European Trade Mark Legislative Package. We will be introduced to crucial changes in the registration system, as well as their impact on current and future trademarks. The final session of the day is dedicated to counterfeiting, another burning issue in IP. The recent publication of OECD/EUIPO report showed some worrying figures, and the discussion on anti-piracy policy and enforcement, as well as its impact on trademark reform is expected to be very stimulating.

The final working day starts with two parallel sessions. The first one is on copyright, dealing with problems of modern technology, both from a legal and a music professional´s point of view, as well as with the thin line between necessary exceptions and fair use. The second session is on Prior Right Agreements, again opposing an industry perspective and a legal one. After a short break, the participants of the Conference can choose to attend a session on Chinese trademark law and practice, its current and future challenges, and the cooperation of China and the EU within the IPR Working Group. Alternatively, there is a possibility of attending the WIPO session on successfully filing a global trademark. The next session, titled “Rogue Waves and Crosswinds” by Mr. Mladen Vukmir will encapsulate the past, present and future of intellectual property and its meaning in today´s digital world. The final session of the Conference will bring us up to date with current case law.

We intend to post an update during the conference on important key issues.

The recent case the General Court of the European Union (the EGC) had to resolve was a great example of the correlation of conceptual similarity and public confusion. What conceptual similarity entails and how (not) to defend it, this case presents a systematic lesson for everyone.

Background of the case

On 10 February 2012 Marbella Atlantic Ocean Club registered their logo in Spain. The sign in question was a blue figurative trademark (no. 3004401), protected for class 41 of the Nice Classification, for the offering of their entertainment services. Therefore, when the Office for Harmonization of Internal Market (OHIM, now EUIPO) registered a similar figurative trademark (CTMA no. 010610525) on 29 March 2012, they decided to oppose (case 002015835). The new application was filed by Ice Mountain Ibiza, in order to recieve protection for their film dubbing services. The Opposition Division ruled in favor of the earlier right (decision of 12 September 2013). They said that both services are intended to entertain customers and are very similar or identical. When comparing signs, the Opposition Division said the dominant word element of the sign can only be the word “ocean”, but is still weak both to the eyes and attention of the consumers and in comparison to the figurative element of the sign. Therefore, the signs are similar. Ice Mountain Ibiza appealed on 11 November 2013 (case R2207/2013-1). The Board of Appeal conducted a diligent analysis of the trademarks and their impact on consumers, and sided with the decision of the Opposition Division. The similarity of the services was not even questioned, everyone agreed they were similar. Ice Mountain Ibiza based the appeal on the figurative element of the sign, saying that the font and colors are different, but so is the perceived concept of the sign. They said that the older mark was a circle and a half-circle, obviously standing for the word “OC”. However, their figurative sign would be perceived as a stickman. The Board did not agree, deeming both signs would still present “OC” to the public and designating conceptual similarity to the trademarks. With all the mentioned similarities, consumers might be led to confusion. This was not the end of the case, as Ice Mountain appealed again, this time to the EGC.

Decision of the Court

The decision of the EGC (T-6/15), dated 25 May 2016, agreed with the previous decisions and repeated most of the Board’s reasoning. The first step the Court took was establishing the relevant public. They said it consisted of reasonably well-informed and reasonably attentive consumers. Next, it swiftly confirmed that the goods and services are similar or identical. More attention was given to the comparison of the mark itself. Visually, they looked rather similar. They do consist of the same letters, just rotated. Ice Mountain abandoned their stick figure theory and tried to argue that only figurative elements are dominant, and that the other words are insignificant, but the Court stated that even if that were true, the visual similarity still exists. The phonetic similarity was undisputed, so the applicant tried to shift the importance to visual (dis)similarity, saying that in that services sector it is more common to give weight to the visual. Thirdly, the court found it wrong to narrow the conceptual similarity just to the figurative element of the trademark, but even with that in mind, considers every part of the trademark conceptually similar. Finally, it was left to the Court to sum up and assess the likeliness of confusion. The Court decided it would be expected for the consumer to be confused, and that OHIM was right to reject Ice Mountain’s application.

Welcome to Whatsapp.com! Step one, choose a preferred language for a more personalized experience. That is, unless you are looking for the Terms of Service (ToS). Although being one of the most important elements of this messenger service, they are provided in English only. The Berlin Court on 8 April 2016 rendered the ToS invalid, requesting WhatsApp to adjust to their German-speaking users.

Background of the case

The dissatisfaction with WhatsApp´s ToS started two years ago when the Federation of German Consumer Organizations (Verbraucherzentrale Bundesrepublik, VZBV) had taken the Facebook-owned message service provider to the Berlin Municipal Court, claiming they are violating German law. They said the Terms and Services (German:  Allgemeine Geschäftsbedingungen, AGB) were in English only, and therefore not understandable to German citizens. Also, they lacked a German representative in the country, as the only way to contact WhatsApp was via email. The Court ruled in their favor (case 15 O 44/13), asking WhatsApp to translate their Terms of Service. WhatsApp appealed soon after, taking the case to a higher-instance court.

Decision of the Court and its consequences

The Kammergericht, the highest state court for the state of Berlin, upheld the previous decision on 8 April 2016 (case 5 U 156/14). They ordered WhatsApp to define an alternative way of contacting the company apart from the provided email form in order to conform to the German Telemedia Act. Also, WhatsApp will have to translate their ToS into German. The judge said that although many Germans do speak English, this is specialized, legal English, which is harder to understand for the average citizen. And if incomprehensible, the ToS are ineffective and invalid. In case WhatsApp decides not to oblige, it is facing a fine up to 250 000 EUR or a six-month imprisonment of their CEO. It is yet to be seen if WhatsApp will file an appeal to the German Supreme Court.

This ruling has two major impacts. The first one targets WhatsApp itself. Their ToS are in English only and their webpage is offered in over fifty languages. If their wish is to provide equal service to all of their users, it is to be expected they provide translations.

The second impact is external, including all other companies following WhatsApp´s practice. The VZBV showed they will not tolerate such behavior and that they will have to put the safety of their users first.