On 3 December 2018, the World Intellectual Property Organization (WIPO) published its annual report on World Intellectual Property Indicators 2018 (WIPI). The report analyzes the IP activity around the world in the previous year 2017 and gives an insight on the overall number of filings, registrations and maintenance of trademarks, patents, utility models and designs.

                                                                                                   Source: WIPI

As in the year 2016, China remained the overall leader according to volume of applications for all intellectual property rights. The highest growth of filing activity was then monitored in the field of trademark applications, when in just one year the number grew from 9.77 million to 12.39 million trademark filings.

Trademarks – overall number of filings in 2017: 12.387.600

• China: 5.739.823
• U.S.: 613.921
• Japan: 560.269

The most trademark applications were accounted in Asia with 66,6 %. Europe´s share fell to 17,7 %, third is a combined share of Africa, Latin America, Caribbean and Oceania with 9,2 % and the last is North America with 6,4 %.

In 2017, most of the trademark applications were sought for the field of advertising and business management. The second most “common class” of application was clothing, then computers/software and instruments and then followed by the education and entertainment sector.  

Patents – overall number of filings in 2017: 3.168.900

• China: 1.381.594
• U.S.: 606.956
• Japan: 318.479

Utility models – overall number of filings in 2017: 1.761.200

• China: 1.687.593
• Germany: 13.301
• Russian Federation: 10.643

Industrial designs – overall number of filings in 2017: 1.242.100

• China: 628.658
• EUIPO: 111.021
• Republic of Korea: 67.357

For the whole report and rankings for 2017, please click here.

On the 12 December 2018 our law firm LexDellmeier is organizing an online webinar with the topic “Changes in German Trademark Law” which are going to come into effect on the 14 January 2019.

Date:               Wednesday, 12 December 2018 - LIVE WEBINAR

Time:              10:00 – 11:00 am

Place:               Webinar (online) – at your computer

ALLTERNATIVE:

The webinar was recorded on 12 December 2018. If you wish to listen to the content and see the presentation, please use the follwing available registration:

Registration:    Email: info(a)lexdellmeier.com - LogIn data will be sent to you (former registrants - free of cost - new registrants: fee: 59,90 EUR)

Documents:      [[{"type":"media","fid":"4945","view_mode":"default","instance_fields":"override","attributes":{"class":"file"},"link_text":"final_lexdellmeier_webinar_momag_aenderungen_dt_markenrecht_12_dez_2018.pdf"}]]

The webinar is in German and covers - among others - the following topics:

• legal background of the changes
• changes regarding renewals and fees
• significant changes in German opposition proceedings
• new absolute grounds of refusal
• changes in cancellation/revocation proceedings

IT IS TIME TO CELEBRATE !!! 

What inspired me (Alexandra Dellmeier) to write this article? Well, I was born in Bavaria - in the capital city of Munich to be precise - and, I am an intellectual property attorney. Even though I had the opportunity to live in the US for a total of six years and do internships there and in Israel, my "roots" lie in Bavaria. Naturally, I want to write about the 100th anniversary of my "homeland" in combination with start-ups, trademarks and how Bavaria has developed over the past decades. 

Bavaria - in German called the "Freistaat Bayern" (Free State of Bavaria) just turned 100 years old. Officially, Bavaria was founded on 8 November 1918 after the last king was disposed of. Bavaria today is known for its world famous Oktoberfest. However, there is much more to it than beer and pretzels. Did you know that we have our own "Statue of Liberty" which is called "Bavaria" (as seen in the picture below)? It stands on top of the hill at the "Theresienwiese" in Munich, Germany, where the Oktoberfest takes place every year and is a symbol of freedom and peace and also represents strength and glory.

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Bavaria has approx. 13 million inhabitants (Germany in total has approx. 83 million) and is one of the largest out of the 16 federal states of which Germany consists of. Over the past 50 years, Bavaria has changed considerably. From the outset, the majority of the income was made through farming and agricultural products. This has changed. Bavaria has meanwhile become "tech land". Most people know that large companies like BMW, Siemens, Airbus, Mercedes, Porsche, Brainlab, Fresenius, Krones AG etc. who are either headquartered or have large manufacturing facilities in Bavaria. However, what makes Bavaria economically and financially strong are the large number of mid-size and family owned businesses - the so-called "Hidden Champions". But also the start-up scene is on the rise. Every year, one of the most outstanding start-up meetings - "Bits & Pretzels" - takes place during the Oktoberfest in Munich, Germany. Speakers and participants dress up in traditional Bavarian clothing (Dirndl and Lederhosen) and meet to discuss what start-ups need, how to get venture capital, how to protect intellectual property and more. LexDellmeier IP Law Firm, Munich, Germany, regularly attends this start-up conference and and helps some of the companies set up their trademark, design, copyright and licensing portfolio in Germany, the EU and with the help of associates around the world on an international basis.

As regards trademarks and patents: Bavaria is and has been front runner in the past years. According the the German Patent and Trademark Office (GPTO) and its 2017 Annual Report, 15,482 patent applications were filed in 2017 (32.4% of all German domestic applications). The number of trademarks applied for in Bavaria in 2017 reached 12,518. According to the GPTO and its statistics, the inhabitants of Bavaria were the most creative, filing 97 trademark applications per 100,000.

For more information on trademarks, Bavarian castles (including the trademark battle regarding "Neuschwanstein") see the what the GPTO has to say and write about the 100th Anniversary of the "Freistaat Bayern" (in English) here: 

If you would like to know what events are going on, please look at the the offical website of the State of Bavaria - here on the events page (in German). An English summary of the offical website can be found here.

On 5 November 2018, Canada became a contracting party to the Hague Agreement. As of this day, the users of Hague System are newly allowed to designate Canada in their international design application.

Source: Pixabay

In the international design application, the applicant can name all countries that are parties to the Hague Agreement. The total number of contracting parties is now 70, including Germany, United States of America, United Kingdom, Russian Federation, BENELUX countries, Switzerland etc.

For the whole list of contracting parties, please click here.

Interbrand just released its new rankings of the best global brands for the year 2018. By no surprise, the leading companies are again mostly active in the technology sector.

Source: Interbrand

Interbrand is a brand consultancy company that is specialized in brand strategy, brand analytics and brand valuation. For 19 years, Interbrand is gathering the performance of brands throughout various sectors, analyzing the information and creating ratings of the most successful ones. Now, they released a ranking of the Best Global Brands for the year 2018 regarding the value of brands.

According to the statistics, the best global brand of this year was the American smartphone and computer developer Apple. The value of the Apple brand has risen during the examined time period over 16% and the current brand value is estimated to be around USD 214,480 million.

The second place goes to Google, which is also active in the technology sector. The brand value has grown approx. 10% and is now at USD 155,506 million. Google is then followed by Amazon.com, the largest Internet retailer. In 2018, the American company detected the biggest brand value growth – more than 56%. Its value has been constantly growing since 2010 and is now at its maximum of USD 100,764 million.

The next places then go to Microsoft, Coca Cola, Samsung, followed by the automotive companies Toyota and Mercedes and social media giant Facebook. Last but not least, place 10 in the ranking goes to McDonald´s.

For a better insight on this topic and all the rankings, please read here.

On 15 August 2018, the World Intellectual Property Organization (WIPO) published its Information Notice No. 12/2018. In this Notice, WIPO released a new version of the 11^th edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) that will enter into force on 1 January 2019.

Source: Pixabay

The new version “NCL (11-2019)” is going to be applied by the International Bureau of WIPO to any international registration that fulfills following requirements:

• “The application for an international registration is received by the Office of Origin on or after 1 January 2019”, or
• “The application for international registration is received by the International Bureau of WIPO on or after 1 January 2019, when the said application is received by the International Bureau of WIPO after the two-month time limit referred to in Article 3 (4) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks".

According to this announcement, the Madrid Goods and Services Manager (MGS) is also going to be updated in order to reflect all the changes in the NCL (11-2019).

For a better insight on this topic, read the new 11^th version of the Nice Classification or the whole Information Notice No. 12/2018 which are available on the WIPO website here.

On 26 June 2018, the General Court (GC) upheld the decision of the Board of Appeal (BoA) and confirmed that the word and device trademark “France.com” cannot be registered in the EU due to a likelihood of confusion with the earlier trademark “France”.

                                                  Applicant´s EU Trademark No. 013158597 (word/device mark)          

                      Opponent´s International Registration No. 1032440 designated for the EU (word/device mark)

I. Background of the case

On 9 August 2014, an American company FRANCE.COM, Inc. filed an application for registration of the EU Trademark No. 013158597 (word/device mark) for the services in the class 35 (advertising services), class 39 (services related to travel) and in the class 41 (on-line publications).

The application was then later, on 5 December 2014, questioned when the French Republic filed a notice of opposition. The opposition was based on its prior international registration No. 103244 (word/device mark) which was in 2010 designated for the area of the European Union. This earlier trademark was registered for goods in the class 9 (apparatus and media for recording) and 16 (printed matter) and further for services in the class 35 (advertising services) and 41 (cultural activities and on-line publications). The opponent claimed likelihood of confusion set out in the Article 8 (1) b) Regulation No. 207/2009 (now Art. 8 (1) b) Regulation No. 2017/1001).

On 13 October 2015, the Opposition Division firstly rejected the opposition. The opponent appealed against this decision. On 20 October 2016, the Board of Appeal came to the opposite conclusion than the previous instances and annulled the decision of the Opposition Division. The BoA held that the marks are overall highly similar. The decision was based on following founding:

• the goods and services in question are in part identical and in part similar
• the marks are registered for the same territory,
• the signs have an average degree of visual similarity and are phonetically and conceptually identical.

France.com then brought the action to the General Court and further requested that the GC refers questions about this case to the CJEU for a preliminary ruling.

II. Ruling by the General Court

On 26 June 2018, the GC came in its decision (T-71/17) to the conclusion that the sought trademark “France.com” cannot be registered due to likelihood of confusion with the prior registered trademark “France”.

The GC answered two main questions concerning this case:

a) Likelihood of confusion - similarity of the signs in question?

The GC emphasized that the global assessment must be based on the overall visual, phonetic and conceptual impression of similarity given by the signs and that important by such analysis are the distinctive and dominant elements of each sign. Likelihood of confusion is then given, if the relevant public considers the signs in question to be too similar.

As depicted above, the marks are a combination of a word and of a figurative element. Regarding the case-law, where a sign is composed of a word and figurative element, the word element is given the primary attention as the average consumer will more easily refer to the goods and services by name than by describing the figurative part of a sign.

In the case at hand, both signs have the same key word element “France”, which is according to the GC to be understood as a shortened name of the official name of a public entity - French Republic. Next, the earlier mark also contains a depictured Eiffel tower, the later one a colored pentagon as well as the abbreviation “.com” in addition to the word element “France”.

The Court ruled that the marks as a whole share only a low degree of visual similarity as the dominant color and the figurative elements are different. Further, the word element is also not completely the same as the later mark has an added “.com”.

Concerning the phonetical similarity of the signs, the Court found the signs to be almost identical. The signs only differ in the word part “.com”. This part is easily noticed by the consumers as a reference to a website and is therefore usually not attended to. As a result, most consumers will refer to the mark applied for only by the word “France”, which is then identical with the earlier mark. When examining a phonetic reproduction, only word elements need to be taken into account as the figurative elements are of more importance when analysing the signs visually.

Finally, also from a conceptional point of view the signs were determined to be identical as they both consist of colors, word and figurative elements that refer to the same concept - to the country - the French Republic.

Further, the Court found that the goods and services in question are partially identical and in part similar.

In light of the above-mentioned examination and given the particularly high degree of phonetic and conceptual similarity between the signs, the GC held that there is a likelihood of confusion within the meaning of the Article 8 (1) b) of Regulation No. 207/2009 (now Art. 8 (1) b) Regulation No. 2017/1001).

b) Request to refer the case to the CJEU  

Next, the Court rejected the applicant´s plea to refer the case to the CJEU for preliminary ruling with the argumentation that the procedure under Art. 267 TFEU is an instrument for cooperation between the CJEU and national courts, and is therefore not admissible to the GC.  

For a better insight on this topic, read the whole decision here.

The Cornell University, INSEAD and the WIPO just published its 11^th edition of Global Innovation Index (GII) for the year 2018 with the theme “Energizing the World with Innovation”. The Global Innovation Index is an annually published report since 2007, which gives an impartial view to the measuring of innovation worldwide. The 2018 edition provides detailed information about the state of innovation performance of 126 countries and economics around the world, which represent about 90,8% of the world´s population and 96,3% of global GDP.

The GII is based on 80 indicators, such as vision of innovation, political environment, education, infrastructure or business sophistication. This year´s 2018 edition was dedicated to the theme “Energizing the World with Innovation” and contains the analysis of the energy innovation landscape for the next decade and identifies some possible breakthroughs in various fields – for example ,energy production, storage, distribution and consumption.

Further, the report also gives a closer look at how breakthrough innovation occurs at the grassroots or how small-scale renewable systems are on the rise.

Rankings

According to the GII 2018, the top six most globally innovative countries are:

• Switzerland,
• the Netherlands,
• Sweden,
• the United Kingdom,
• Singapore and
• the USA.

In comparison to the last year, the European countries held their leading positions.

In the category “Innovation efficiency ratio”, the following countries are at the top: Switzerland, Luxembourg, China, the Netherlands, Ukraine and Republic of Moldova.

Then, in the next category “Innovation input sub-index”, the top countries are ranked as follows: Singapore, Switzerland, Sweden, the United Kingdom, Finland and the USA.

And finally, in the ranking concerning “Innovation output sub-index”, the countries are listed as follows: Switzerland, the Netherlands, Sweden, Luxembourg, Germany and the United Kingdom.

For a better insight on this topic, read the whole report here. Furthermore, to learn about the current rankings of the countries based on different indicators, have a look here.

On 4 May 2018, the General Court (GC) dismissed the action filed by the trademark applicant Skyleader. The GC stated that in revocation proceedings, the EUIPO cannot accept evidence of proof of use which is submitted after the time limit. Further, the EUIPO is not allowed to exercise discretion on whether or not to take such evidence into account. It has no other option than to revoke such trademark if use documents are not filed on time.  

EU Trademark No. 006347827 (word/device mark)

I. Background of the case

On 1 November 2007, Skyleader a.s., a Czech company active in the light aircraft industry applied for the EU Trademark No. 006347827 (word/device mark) for the goods and services in following Nice Classes:

• Class 12: vehicles, apparatus for locomotion by land, air or water
• Class 41: education, providing of training, entertainment, sporting and cultural activities.

On 14 October 2008 the trademark was then registered by the Intellectual Property Office of the European Union (“EUIPO”). But later in 2015, Sky International AG (“Sky”), a Swiss entertainment group, filed an application for revocation for all registered goods and services on the grounds that the trademark had not been genuinely used for the required five-year time period.  The Cancellation Division of EUIPO then set a time limit of three months for the owner of the challenged trademark to submit proof of genuine use, which expired on 13 October 2015.

On 12 October 2015, one day before the end of the deadline, the owner of the trademark filed a two-page fax to the EUIPO. In the fax, Skyleader was seeking to challenge the application for revocation and then, in annexes, listed which proof of genuine use that had been sent to the EUIPO via a courier. These documents, containing proof of use on 211 pages, arrived at EUIPO on 15 October 2015.

On 15 October 2015, the Cancellation Division informed the parties that the submitted documents by Skyleader cannot be taken into account because they did not meet the given deadline. The owner then argued that the fax arrived at EUIPO on time and that the documents had been dispatched by the official post office of the Czech Republic also within the deadline on 7 October 2015. Therefore, Skyleader could not further influence the delivery time.

Nevertheless, the Cancellation Division did not accept this argument and revoked the trademark in its entirety as of 24 June 2015. Against this decision, Skyleader filed a notice of appeal with EUIPO, but, only to be dismissed by the Fourth Board of Appeal of EUPO (“BoA”) on 21 November 2016. The BoA stated that the actual original documents containing proof of use need to arrive by the EUIPO within the time limit, not simply a letter listing them. And if it is not the case, they cannot be taken into account. Further, it was Skyleader´s error that it did not request an extension of the time limit.

II. Ruling by the General Court on genuine use deadlines

Skyleader then brought an action against the decision of the BoA to the General Court (“GC”). On 4 May 2018, the GC came to its decision and assessed to Skyleader´s two main arguments as follows:

a) Misinterpretation and misapplication of the Rule 40 (5) of Regulation No 2868/95 in light of Article 76 (2) of Regulation No 207/2009 (CTMR)

The substance of the case was a different interpretation of the word “may” in following provisions:

- The Rule 40 (5) of Regulation No 2868/95 states that in case of an application for revocation, the EUIPO shall invite the proprietor of the trademark to furnish proof of genuine use. The Office shall further set a period of time in which this has to occur. For the case it is not provided within this period, the Office should revoke the trademark.

- Art. 76 (2) of Regulation No 207/2009 states that EUIPO “MAY” disregard facts or evidence which are not submitted within the time period.

The applicant claimed that the BoA misinterpreted the rules and the meaning of the word “may”. In its view, the word “may” grants the Office the possibility of discretion – to decide whether to take into account evidence which was provided after the deadline - and that this should also apply on the evidence of proof of use in revocation proceedings.

Regarding this, the Court explained that Art. 76 (2) of Regulation No 207/2009 provides a general rule (unless specified otherwise) that the submission of facts and evidence is also possible after the time limit and that the EUIPO is not prohibited from accepting such facts and evidence. Based on the wording, the EUIPO has a wide discretion to decide whether or not take these into account because the provision does not include a regulation of how the time limit is to be set.  The EUIPO then also needs to give reasons for either accepting or refusing such evidence.

On the other hand, the Rule 40 (5) of Regulation No 2868/95 is also clear in its wording. This special provision on submitting evidence of proof of use in revocation proceedings allows the EUIPO to specify the time limit within the proprietor needs to furnish proof of genuine use. But if this is provided after the limit, the EUIPO must revoke that trademark. For such cases, the wording of the provision does not allow the EUIPO to exercise discretion, but, to only automatically reject such delayed evidence. The Court further explained that the EUIPO possesses discretion just in the situation when the party submitted the evidence on time and after the time limit wants to submit some additional evidence.

Therefore, in the case at hand the Court did not consider the cover letter sent by the applicant via fax as a proper proof of use because it did not include real evidence but just a listing it.

As a result, GC upheld the decision of BoA and declared the trademark as correctly revoked from the register due to late submission of proof of use.

b) EUIPO - violation of the principle of sound administration in not informing the applicant of the means for rectifying the late submission of proof of use

In this regard, the Court explained that there is no legal background giving the EUIPO the duty to inform a party of the procedures available to it in order to rectify the late submission of proof of use (Art. 81 and 82 of Regulation No 207/2009). Moreover, all such information for the parties is contained in the Guidelines for Examination in the Office.

As a result, the EUIPO did not violate the principle of sound administration and so the Court dismissed the action filed by Skyleader in its entirety.

On 20 June 2018, the General Court of the European Union (GC) ruled that the distinctiveness of the trade mark ‚POLO’ by Ralph Lauren’s eponymous fashion brand is indeed so famous that it requires broader legal protection against similar trademarks. What is significant in this decision is the fact that, even though a mark may not be exceptionally distinctive, its recognition by the public combined with its acquired reputation and its influence on the market is enough to grant ‘POLO’ enhanced protection against the registration of similar marks.

                                        POLO                                               vs.                                                      HPC POLO

                        (EU Trademark No. 4049334)                                                                  (EU Trademark No.  013531462)

                                  (Word mark)                                                                                                  (Word mark)

I. Background of the case

On 5 December 2014, the applicant Mr. Gidon Anabi Blanga,a resident of Mexico, filed an EU trademark with the European Union Intellectual Property Office (EUIPO). The mark the registration was requested for was the word sign HPC POLO (Trademark No. 013531462). The goods in respect of which registration was applied for belong to Classes 18 and 25 of the Nice Agreement. After the publication of the trademark application, the intervener, The Polo/ Lauren Company LP filed a notice of opposition with the EUIPO, citing the similarity between the trademarks and the goods and services covered (Article 8(1)(b) of the Community Trade Mark Regulation-from now on CTMR), as well as the reputation of the trademark ‘polo’(Trademark No. 4049334) within the Community (Article 8(5)  CTMR), as reasons for which the registration of the later mark should not be granted.

The EUIPO’s Opposition Division upheld the opposition, after which Mr. Blanga filed a notice of appeal, which in turn the First Board of Appeal of EUIPO dismissed in accordance to Articles 8(1)(b) and 8(5)  CTMR. According to the Board, the goods covered by the two marks were found to be identical and the signs in question similar to an average degree, on account of their common element ‘polo’. The average consumer in the European Union (EU), claimed the Board, could likely confuse the two marks, given the reputation the word mark ‘POLO’ has acquired and its immediate connection to a particular fashion house. Mr. Blanga then turned to the General Court of the European Union (GC), asking for the annulment of the contested decision to the part where the Board of Appeal upheld the merits of the opposition.

II. Decision of the GC (T-657/17) 

In its preliminary observations the GC confirms that a likelihood of confusion between the two marks exists, namely because the average consumer in the EU territory could quite possibly associate the HPC POLO word sign with that of the world-famous fashion brand. Moreover, the fact that the goods the signs represent, are identical and come from economically-linked undertakings (as they both have to do with leather goods and clothing) further adds to the confusion created on the market. The element ‘HPC’ of the mark Mr. Blanga applied for was deemed insufficient to differentiate the signs from each other, given that the perception of the mark from the consumer is based on its entirety and not on an analysis of its various details. By examining each mark as a whole, along with the element ‘HPC’, the GC upheld the Board of Appeal’s argument that they were visually, phonetically and conceptually similar and that the aforementioned element was included in its entirety within the mark applied for. This is further strengthened by the lack of a respective claim by Mr. Blanga, who failed to argue that the ‘HPC’ element gives the overall sign a completely different meaning from that of the trademark of the famous fashion brand. The Court specified that, even though the word ‘polo’ could immediately correspond to a certain type of clothing in the minds of consumers, it is still not generic enough and must be protected, since it is also one of the most influential trademarks internationally. On that note, the Court deduced that signs that are especially popular in the market should and must enjoy broader protection given the high risk of confusion with other similar marks and the similar goods and services they may offer.

It remains to be seen if Mr. Blanga appeals this decision and takes it to the last instance, the European Court of Justice (ECJ).