Quarterly bulletin
no. 2/2014 (14)
Trade marks
and unfair competition
Introduction
It is my pleasure to present our readers with our latest quarterly bulletin describing the most
important events in trade mark and broadly understood competition law. I am even more
pleased that, in addition to our French co-authors, we have been joined by a colleague from
Australia. We are thus able to inform you of IP news from this continent. Trade marks and
brands have an international character; in fact, it would be difficult to think of any other
area of law in which the international element is just as important; events in other remote
jurisdictions may have a direct impact on the legal situation of the rightholder.
Chris Round of the K&L Gates Melbourne office has prepared some material on the changes
in the opposition procedures in Australian legal system. In Europe some major changes are
also underway – ongoing work on the reform of trade mark law. The planned withdrawal from
examining the relative grounds of registration will cause a material revolution in the system of
trade mark protection. This will require increased activity of the rightholder entitled to trade
marks, since the burden of eliminating trade marks not meeting the relative grounds will be
shifted to them. In jurisdictions where the authorities dealing with intellectual property so
far have been studying the full range of negative prerequisites, rightholders may experience
a revolution. They will undoubtedly be forced to adapt to the new system.
In France, a new type of exclusive right has appeared, namely, the right to a geographical
indication of industrial and handicrafts products. As we know, products from certain places
and regions may enjoy renown and recognition among consumers. Traditionally, these are
food or alcoholic drinks. This catalogue has been expanded in the French legal system by
granting legal protection to products of material culture of the various geographical regions.
On behalf of the all co-authors, I wish you pleasant reading. As always, I encourage you
to share your opinions and insights with us, which will help to increase the quality of the
bulletin.
Oskar Tułodziecki
K&L Gates Jamka sp.k.
Al. Jana Pawła II 25
00-854 Warszawa, Polska
www.klgates.com
T: +48 22 653 4200 F: +48 22 653 4250
Contents
Legislative initiatives
EU – Changes in trade mark protection in the European Union ..................................4
PL – Uniform standards for the protection of trade secrets:
Draft position of the Republic of Poland.....................................................................4
Case-Law
EU – Invalidation of a trade mark due to earlier copyright: ruling of the EU Court
of Justice .................................................................................................................6
EU – Prior international registration of a trade mark does not provide a basis
for the registration of a Community trade mark: Ruling of the EU General Court .........6
EU – TEEN VOGUE is misleading: Ruling of the EU General Court .............................8
PL – Is the advertising slogan “LODY PRAWDZIWIE DOMOWE” subject
to protection?: Ruling of the Supreme Administrative Court ...................................... 9
PL – Order to return marketing charges: Ruling of the Court of Appeal
in Gdansk ................................................................................................................9
Other issues
FR – Creation of a new industrial property right in France: “The geographical
indication of industrial and handicraft products”......................................................11
AU – Review of changes in opposition procedures in Australia .................................13
Legislative initiatives
EU – Changes in trade mark
protection in the European Union
Work is under way on an amendment
of Directive 2008/95/EC to approximate
the laws of the Member States relating to
trade marks and Council Regulation (EC)
No. 207/2009 on the Community trade mark
closer into line. In legislative resolutions of
25 February 2014, the European Parliament
presented amended drafts of the Directive
and the Regulation.
One of the most important changes planned
provides for a solution under which domestic
trade mark offices considering cases of trade
mark registration would confine themselves
to investigating the absolute grounds for
protection of a mark. They would no longer
consider relative grounds, that is, those
referring to the existence of earlier similar
or identical trade marks belonging to other
entities, which could constitute an obstacle
to the registration of a given mark.
The draft directive also foresees the
establishment of administrative procedures
concerning the invalidation of protection
rights to trade marks in those countries in
which such procedures are not in force.
The provisions of the Industrial Property Law
provide an administrative legal procedure
for the invalidation of trade marks in dispute
proceedings before the Polish Patent Office,
and so that change should not cause any
modification of the current system for
invalidation in Poland.
The fate of the graphic criterion for the
representativeness of a designation as part
of the definition of a trade mark hangs in the
balance. That criterion will not disappear
altogether, but will be replaced by more
detailed guidelines resulting from a ruling of
4 Trade marks and unfair competition
the Court of Justice in the case Sieckmann of
12 December 2002 (case file No. C-273/00).
The ruling of the ECJ in the Sieckmann
case is of key importance to forming
a practical definition of a trade mark and the
requirement of graphic representativeness.
The presentation of a mark will not be
“graphic”, as it has been, but must be
clear, precise, self-contained, easily
accessible, intelligible, durable and objective.
The presentation of a mark must be precise
and clear enough that it is understandable to
any person having an interest in becoming
acquainted with the registration of marks,
including competitors. This amendment
will concern Community and domestic trade
mark applications.
Source: www.europarl.europa.eu
PL – Uniform standards
for the protection of trade
secrets: Draft position of the
Republic of Poland
In the last issue of the bulletin we reported
on a draft Directive of the European
Parliament and of the Council presented by
the European Commission on the protection
of classified know-how and trade information
(trade secrets) against their being unlawfully
acquired, used or disclosed.
Under the draft directive, the plan is
to introduce uniform standards for the
protection of trade secrets in all Member
States. Uniform legal means should provide
businesses with effective legal protection for
their trade secrets throughout the EU.
The government of the Republic of Poland
has taken the position that this initiative
aimed at unifying the measures used to
protect trade secrets should certainly be
supported, since differences among Member
States may lead to the interests of businesses
not being safeguarded to the same degree,
which could in turn lead to a disturbance of
competition on the internal market.
The assumptions presented by the European
Commission, which set out the need to
protect the holder of a trade secret against
violations where the secret is not protected
by the provisions of intellectual property law
and the business cannot make direct use
of the protection for intellectual property
rights provided by Directive 2004/48, have
been wholly approved. Separate protection
regulations, therefore, are necessary in just
this scope.
With strong support from the Polish
government, the draft contains both
temporary and remedial means, which are
only in the form of examples, giving Member
States the regulatory freedom they need to
adapt the changes to the legal system in
force.
One proposal by the European Commission
was met with criticism, however – that
of limiting an opposing party’s access to
evidence and its participation in hearings
during court proceedings concerning
cases of an infringement of trade secrets.
In this respect, in the opinion of the Polish
government, that regulation stands in clear
contradiction of Article 6 of the European
Convention on Human Rights, which
introduces the principle of due process.
No party to a proceeding should be deprived
of its right to a defense.
Also not deemed worthy of support, for being
much too short, is a restriction proposed in
the directive of a maximum of two years in
which the holder of a trade secret is entitled
to bring a claim. In the opinion of the Polish
government a longer limitation period should
apply.
The most important effect of the acceptance
of the proposed directive, in light of the
position presented, will be to ensure that
trade secrets are effectively protected, which
will translate into businesses becoming more
competitive. This will undoubtedly lead to
an expansion of the range of products and
services, or to a reduction in prices, from
which consumers themselves will indirectly
benefit.
Source: www.adwokatura.pl
2/2014 5
Case-Law
EU – Invalidation of a trade mark
due to earlier copyright: ruling of
the EU Court of Justice
The Court also referred to a ruling of the
Cassation Court of 14 June 2007, although
it did not previously grant the parties
an opportunity to present their remarks
concerning that ruling. Nor was there any
written indication from the Court as to what
parties were called on to present a position
with regard to Article 2704 CC. Nor had that
provision been analyzed previously in the
contested OHIM decision.
Parties have the right to familiarize
themselves with charges raised ex officio
by a Court that the Court intends to base its
ruling on, and to respond to those charges.
Thus rules the Court of Justice, setting
aside a ruling of the EU General Court in
the case of the National Lottery Commission
with its registered office in London (NLC)
v. OHIM (C-530/12P). The case concerned
the invalidation of a trade mark due to the
existence under Italian law of an earlier
copyright to an almost identical mark.
NLC obtained a registration for the following
graphic Community trade mark (hereinafter
the “contested trade mark”) on 2 October
2007.
On 20 November 2007, Mediatek Italia
Srl and Giuseppe De Gregorio filed an
application with OHIM, on the basis of Article
52 par. 2 letter c) of Regulation No. 40/94 on
the Community trade mark, for a declaration
that the contested trade mark was invalid by
virtue of the existence of an earlier copyright
owned by G. De Gregorio in the following
graphic mark (hereinafter the “mano
portafortuna”):
6 Trade marks and unfair competition
In a decision of 16 July 2009, the
Cancellation Division of the OHIM ruled in
favor of that motion. NLC lodged an appeal
against that decision, but this was dismissed
by the OHIM First Board of Appeal because,
in the Board’s view, the parties moving for
invalidation of the right to the mark had
presented evidence of the creation of the
work and had shown that they held copyright
over that work by providing a photocopy of
an agreement in written as of 16 September
1986 (“the 1986 agreement”) in which the
author of the mano portafortuna declared
that he assigned the right to reproduce and
use the work reproduced to one of those
parties. The Board of Appeal did not agree
with NLC that the agreement is improper, in
particular, that it refers to 70-year copyright
protection when such protection was
introduced only in 1996, and that the postal
stamp is from a day falling on a Sunday,
when post offices are not open.
NLC brought an action for annulment of the
contested decision. The Court referred to the
provisions of Italian law, including Article 2704
of the Italian Civil Code, and to Italian case
law of the Cassation Court, in according with
which NLC had the right to present evidence
that the 1986 agreement was in fact drawn
up on a date other than that which appears
on the postal stamp, without the necessity of
initiating a proceeding on establishing fraud.
The Court of Justice set aside the ruling
of the EU General Court, stating that
the Court had violated the principle of
contradictoriness by not allowing the parties
to address certain elements of Italian law
raised ex officio by the Court.
The Court of Justice held that the state of
proceedings did not allow a ruling to be
handed down, and referred the case back to
the General Court for a ruling on the merits
of the acion.
Source: www.curia.europa.eu
EU – Prior international
registration of a trade mark
does not provide a basis for the
registration of a Community trade
mark: Ruling of the EU General
Court
In March 2014, the EU General Court
issued a ruling in case T-291/12 in which
Deutsche Bank AG brought an action against
a decision of the OHIM Fourth Board of
Appeal of 24 April 2014 concerning an
application for registration of the word trade
mark “PASSION TO PERFORM”.
In January 2011, the World Intellectual
Property Organization (WIPO) registered the
above mark internationally for use within
the EU. The OHIM was notified of the
registration. The mark was designated for
services from classes 35, 36, 38, 41 and 42
of the Nice Classification.
A month after receipt of the notification, the
OHIM representative conducting an analysis
of the grounds for the registration of the
mark informed Deutsche Bank AG about
its reservations concerning the registration,
based on the lack of distinctive character of
the mark. The bank nevertheless decided to
continue with its application, for which the
OHIM eventually refused to grant protection.
Deutsche Bank AG filed a notice of appeal
with OHIM, but the Fourth Board of Appeal
did not agree with the bank’s opinion, and
upheld the view that the mark “PASSION
TO PERFORM” is totally devoid of distinctive
character.
The decision of the OHIM Fourth Board
of Appeal was based on the premise that,
for an advertising slogan to be registered
as a trade mark, it must be associated by
the relevant group of consumers with the
specific business using that slogan on its
goods or services. The relevant consumer
group in this case is customers in Great
Britain and Ireland. The level of attention
of those consumers, however, is rated as
low in the case where a mark is only of the
promotional nature. The OHIM also found
that neither the meaning of the individual
elements of the mark nor the phrase
they comprise meets the requirement of
originality; they merely assure customers of
Deutsche Bank AG that the bank will perform
its services with passion. Additionally, the
Fourth Board of Appeal emphasized that
a basis for registering a Community trade
mark cannot be provided by the earlier
registration of the same or similar marks by
domestic trade mark offices. In summarizing
its decision, the OHIM stated that the mark
in question would be perceived by the
relevant consumer group only as a phrase
in praise of the bank’s services, and so does
not serve to distinguish the services offered
in accordance with the requirements of EU
regulations.
Deutsche Bank AG accused the OHIM of
applying too strict criteria when evaluating
the distinctiveness of the advertising
slogan and of not analyzing the specific
market situation concerning the selected
services. The OHIM rejected those charges,
emphasizing that the distinctiveness of
a given mark should indicate the origin of
the services it identifies and distinguish
those services from those provided by
other entities on the market. The Court
emphasized that, while an advertising slogan
need not meet certain requirements such
as being fantastic in nature or introducing
an element of surprise in order to attain
a minimal level of distinctiveness, it should
indicate the origin of a given service, and
not only act as a promotional slogan. In the
case in question, the mark “PASSION TO
PERFORM” did not fulfill that basic task.
A further charge of Deutsche Bank AG was
that the OHIM did not properly assess that
the mark does not indicate the origin of the
services under consideration. In support of
that charge, the bank pointed to an error in
the evaluation of the level of attention of the
target consumer group, and to a failure to
take account of the multiple meanings of the
mark in question, its originality, and the prior
registration of the mark in other countries.
In addition, the applicant claimed there had
been a failure to uphold the principle of
equality by having registered similar trade
marks for the benefit of other entities.
The Court ruled that the accusation of
an erroneous assessment of the level of
attention of the relevant consumer group
was groundless, repeating after the OHIM
that a trade mark that is promotional in
nature causes a low level of attention on the
consumers. Even if the relevant consumer
group pays more attention to one type of
services provided, this does not change the
general conclusion in this regard.
In its analysis of the advertising slogan, the
OHIM found that it consists of a verb and
a noun in English which, when combined,
create a clear message. There is no need
to evaluate the meanings of the individual
words comprising the mark because,
in line with existing case law, the average
consumer will perceive the mark as a whole.
The Court, therefore, rejected that argument
of the applicant as well.
The next argument raised in favor of the
registration of the mark was its alleged
originality. Here as well, the Court concurred
with the opinion of the OHIM Fourth Board of
Appeal that the mark consists of two popular
words written with a capital “P”, forming
the equivalent of a sentence consisting of
a word referring to an emotion and a word
referring to the intellect, and in the long run
it constitutes only a simple, grammatically
correct message in English. For these
reasons as well, the advertising slogan under
consideration is not distinctive.
Deutsche Bank AG also pointed to other
existing registrations of the mark in a number
of English-speaking countries. The Court
agreed with the OHIM that existing identical
or similar registrations at the domestic level
in no way constitute a basis for registering
a Community trade mark that is devoid of
distinctive character. The OHIM is guided by
2/2014 7
an independent legal regime created by the
EU. Neither the OHIM, therefore, nor any
EU court is in any way bound by decisions
made by Member States or third states.
Nor did the Court agree applicants had been
treated unequally in connection with the
registration of a similar trade mark, “PASS
ON YOUR PASSION”. The Court agreed
with the OHIM that the fact that a similar
mark was registered does not provide
a basis for the registration of a mark that is
devoid of distinctive character. Additionally,
every case is treated individually and each
registration is preceded by an in-depth
analysis. In the case of the advertising
slogan ‘PASSION TO PERFORM”, no
basis was found for the registration of
a Community trade mark.
Source: www.curia.europa.eu
EU – TEEN VOGUE is misleading:
Ruling of the EU General Court
On 31 October 2003, the plaintiff company
Advance Magazine Publishers, Inc. filed
with OHIM an application for registration
of a Community trade mark for the word
designation “TEEN VOGUE” for goods such
as clothing, footwear, head coverings and
associated accessories. The company
Nanso Group Oy, acting as an intervener,
filed a notice of opposition to the registration
of the above mark for those goods.
The opposition was based on the prior
registration of the Swedish word trade mark
“VOGUE”, the Swedish graphic trade mark:
8 Trade marks and unfair competition
a registered Finnish word trade mark,
“VOGUE”, and a registered trade name
“VO Gue”. In its opposition, Nanso Group
Oy invoked Article 8 par. 1 letter b) of
Regulation No. 40/94 (currently Article 8
par. 1 letter b) of Regulation No. 207/2009),
pursuant to which “…a submitted trade
mark shall not be registered if, because
it is identical or similar to an earlier trade
mark, or the goods or services it refers to are
identical or similar, there exists a likelihood
of public opinion being misled within
the territory in which the earlier mark is
protected; the likelihood of consumers being
misled also concerns the likelihood of an
association being made with the earlier trade
mark”.
The company Advance Magazine Publisher
Inc. appealed against the opposition upheld
by the Objections Department of the OHIM,
but that appeal was dismissed by the OHIM
Fourth Board of Appeal. The Board held
that the likelihood of consumers being
misled could not be ruled out because of
the identity or similarity of the goods bearing
the trade mark, and because of the average
level of similarity between the designations
concerned. Moreover, the Board found that
the use of the earlier trade mark “VOGUE”
had been sufficiently demonstrated by Nanso
Group Oy, though only for knitted garments.
Advance Magazine Publishers, Inc. then
brought an action to the EU General Court in
which it sought the rejection of the opposition
within the scope concerning head coverings,
shoes, boots, sandals, women’s blouses,
dresses, skirts, jackets, pullovers, suits,
cardigans, trousers, shorts, swimwear, coats,
scarves, suspenders and belts. The Court,
however, dismissed the action brought and
charged Advance Magazine Publishers, Inc.
with the costs of the proceedings.
The applicant argued, among other things,
that the Board of Appeal did not place
enough weight on the significance of the
element “TEEN”, even though that word
element, positioned at the beginning of
the trade mark submitted, is of particular
importance to the overall impression
made by the mark. In the plaintiff’s view,
that element comprises a distinguishing
element of the mark. In respect of the
goods themselves, the plaintiff pointed out
that those goods “are not in a competitive
relationship with each other”.
The EU General Court agreed with the Board
of Appeal that, for the relevant group of
consumers (i.e., all consumers in Sweden),
there is a visual and phonetic similarity
between the contested designations, and that
taking account of English-speaking Swedish
consumers also leads to the conclusion that
a conceptual similarity between the two
designations does exist.
Given the visual and phonetic similarity
between the contested designations and the
fact that the goods identified by the earlier
Swedish word trade mark “VOGUE” on the
one hand, and the submitted trade mark
on the other hand, are partly identical and
partly similar, there does exist a likelihood
of confusion. The EU General Court, then,
confirmed that the OHIM Opposition Division
had justly refused to register the trade mark
submitted.
Source: www.curia.europa.eu
PL – Is the advertising slogan
“LODY PRAWDZIWIE DOMOWE”
subject to protection?: Ruling of
the Supreme Administrative Court
In a ruling of 4 February 2014 (II GSK
1708/12), the Supreme Administrative
Court (SAC) dismissed a cassation appeal
by “E.C.” sp. z o.o. against a ruling by the
Provincial Administrative Court in which that
court upheld a decision by the Polish Patent
Office (PPO) that was unfavorable towards
the appellant, concerning a refusal to grant
a protection right to a trade mark.
E.C. applied for registration of the word trade
mark “LODY PRAWDZIWIE DOMOWE” for
goods and services such as milk products,
frozen yoghurts, dough for waffles for ice
cream, waffles for ice cream, sweets, edible
ices, powdered edible ices, sorbets, binders
for edible ices, confectionery products, ice
cream advertising, fast-food bar, cafeteria,
café and restaurant services for the
production and sale of ice cream.
In the decision in February 2011, the PPO
refused to grant E.C. a protection right to the
trade mark submitted. In the PPO’s opinion,
the designation was not sufficiently distinctive.
The PPO also noted in its decision that the
designation submitted, in relation to goods
other than ice cream, is misleading in nature.
Moreover, in the authority’s assessment, the
contested designation does not meet the
basic function of a trade mark, which is to
identify a business. In the opinion of the
PPO, the designation in question would not
be perceived by consumers as a trade mark,
only as a descriptive designation having no
connection with any specific business entity.
The PPO held that “semantically, the
combination of the word elements “lody”,
“prawdziwie” and “domowe” does not create
a concept far enough removed from the
content of those words simply read together
to act as an indication of the commercial
origin of goods”. The absence of any graphic
element (additional elements) also prevents
consumers from associating the mark with
a specific source of the goods bearing it.
The PPO held that the designation is not
distinctive, and so registering it would violate
the principles of freedom of economic activity
and fair competition.
In considering the appeal against the PPO
decision, the SAC found that, semantically,
the combination of the word elements
“lody”, “prawdziwie” and “domowe” is
neither fantastic nor abstract in nature,
and so does not meet the characteristic
functions of a trade mark. The SAC also
so ruled, referring to a ruling also cited by
the court of first instance, that by the ECJ
of 23 October 2003 (C-191 P), according to
which the registration of a trade mark should
be rejected if even one of the meanings
of an element of the mark describes the
characteristics of the goods or services.
In analyzing the case at hand, the SAC
categorically stated that “the contested
word trade mark “LODY PRAWDZIWIE
DOMOWE” transmits information in
a descriptive way about the characteristics
of the goods (truly homemade), as results
from the very meaning of the words used
therein”. E.C.’s attempt to appeal to other
decisions in which the registration of a mark
containing the word “domowe” was allowed
proved ineffective because, as the court of
first instance had held, every trade mark is
considered individually.
The PAC further held that “slogans are
subject to protection as trade marks, but
their submission is subject to evaluation by
the PPO under rules similar to those for all
other types of trade marks”.
The SAC fully agreed with the exhaustive
argumentation of both the PPO and the
court of first instance, which had stated that
the designation submitted is an advertising
slogan, and cannot be granted protection as
a trade mark.
Source: www.orzeczenia.nsa.gov.pl
PL – Order to return marketing
charges: Ruling of the Court of
Appeal in Gdansk
At the beginning of this year, another
important ruling was handed down in
a case concerning fees charged by chain
stores for the acceptance of goods for sale
(case file No. I ACa 702/13).
A supplier brought the case against the
owner of a hypermarket, which included
a series of marketing charges in an
agreement, which it then regularly collected
from the supplier.
The claimant sought the return of the
amounts paid, together with interest.
It argued that the value of the charges paid
as a fee for alleged marketing services did
not result in a benefit provided in return.
As a result, in the claimant’s opinion,
those charges, while formally due to the
defendant for marketing services, in fact
constituted charges for the acceptance
of goods for sale, which is prohibited
by Article 15 par. 1 pt. 4 of the Act on
Combating Unfair Competition.
2/2014 9
The agreement concluded between the
parties contained an obligation to pay the
defendant charges for “advertising the
product on billboards” and for “promoting
the brand, product range and new
products, and taking part in advertising
and marketing activities”. An appendix
to the agreement states that the supplier
undertook to allocate a minimum of 8
per cent of net turnover (settled monthly,
quarterly and at mid-year) for advertising
services relating to the claimant, for
advertising its brand and products. The
defendant issued invoices for marketing
services and then deducted the related
amounts from the amounts due to the
supplier for deliveries of goods. The
defendant claimed that it had actually
performed the services in question for the
claimant, and that, therefore, it could not
be held that its collecting charges was
unlawful.
The court of first instance found in
favor of the store owner, stating that the
claimant was not entitled to a return of the
charges paid for marketing services. The
products of the claimant were published
in the hypermarket’s anniversary leaflet
and national catalogue. Moreover, the
defendant offered goods of the claimant
in its stores at promotional prices and
displayed them in a special way. The
Regional Court also found that, since
the claimant concluded the cooperation
agreement in question, that means that
it agreed with the conditions contained
therein.
The Court of Appeal in Gdansk, however,
overturned the ruling of the court of first
instance. It noted that the promotions
in the defendant’s stores were run at the
expense of the supplier, because it granted
10 Trade marks and unfair competition
the defendant a promotional discount.
The court also analyzed the agreement
binding the parties and found that it clearly
described the benefits the defendant was
to obtain for the alleged marketing services
(at least 8 per cent of net turnover) but did
not state what specific benefits the supplier
(claimant) was to obtain in return for paying
the agreed amount.
In respect of the material evidence
provided by the defendant in the form of
advertisements intended to show that the
marketing services had been performed
for the benefit of the claimant, the court
found that, in essence, these advertised the
store and not the products. The claimant’s
products were shown in leaflets among
many other offers and in were in no way
highlighted from among those others.
For those reasons, the Court of Appeal in
Gdansk overturned the ruling and ruled that
the defendant pay the claimant the amount
demanded, together with interest.
Source: www.orzeczenia.gdansk.sa.gov.pl
Other issues
FR – Creation of a new industrial property right in France:
“The geographical indication of industrial and handicraft products”
Olivia Roche, Claude-Etienne Armingaud
The law no. 2014–344 on consumption, named “Hamon Act” and dated March 17, 2014, creates a new industrial property right:
the “Geographical Indications protecting Industrial Products and Crafts” (or “Indications Géographiques protégeant les Produits Industriels
et Artisanaux”, herein, IGPIA). Until now, the protection of geographical indications was reserved, both at French and European level,
to agrofood products, leaving aside the industrial and handicrafts products, whose quality is related to a specific know-how linked to their
geographical origin. The IGPIAs cover well-known products, such as Quimper pottery, Limoges porcelain, Basque linen or Calais lace. Nine
new provisions have been added to the French Intellectual Property Code (IPC), in order to clarify the implementation mechanisms for
the management and the protection of IGPIAs.
This new regulatory framework completes the legal arsenal for the protection of industrial property. These new provisions must be combined
with the existing rules of trademark law, and thus emphasize a possible competition between the two regimes.
A previous protection exclusively reserved to agrofood products
The protection system of geographical indications of origin for food and agricultural products dates back to the early 20th century. At the
French level, the label “Controlled Designation of Origin” (AOC) protects wine products (since 1935), and all agricultural and food products,
raw or processed (since 1990). In 1992, the protection of the geographical origin of agrofood products was extended to the European level
by the creation of “Protected Geographical Indication” (PGI) and “Protected Designation of Origin” (PDO). These two indications identify
agrofood products according to their characteristics and their geographical origin with, PGI offering a more flexible protection, in terms
of the link between the product and the territory, than PDO.
The famous case of the “Laguiole” cuttery, where the trademark “Laguiole” was filed without difficulty by a third party before flooding the
market with poor quality knives, made in
​​ China, highlighted the risks related to this lack of protection. Thus, the initial protection project,
initiated before the change of political majority, has been endorsed by the Hamon Act.
A new industrial property right
The new Article L.721-2 of the IPC follows the rationale behind the definition of geographical indications by the World Intellectual Property
Organization (WIPO). The stated objective of the IGPIA is to identify a product – industrial or craft-based – according to its geographical origin,
when said product meets a specific quality, reputation or other characteristics that are essentially attributable to that geographical origin.
The production or the processing operations must take place in the identified area. The IGPIA criteria, in terms of link between the product
and the territory, are the more flexible than for the AOC and PDO (e.g., the raw materials used for the manufacture of products, do not need
to come from the geographical area identified). Therefore, the IGPIA regime is closer to the European PGI.
The application for approval and the monitoring of an IGPIA must be made, at the French National Institute for Industrial Property (INPI), by
an “Organization for Defense and Management”, bearing legal personality (art. L.721-4 of the IPC), according to specifications, which must
indicate precisely the relationship between the product and its geographical indication. The IGPIA enjoys a broad protection that guarantees
the products against any practice likely to mislead the consumer with regards to its true origin and its qualities. Any breach of protection given
to a product by an IGPIA may be punished by a sentence up to two years imprisonment and a € 300,000 fine.
2/2014 11
Competition with the trademarks law?
The IGPIA system must be analyzed in connection with legal provisions already applicable to trademarks protection, thus likely creating
competition between beneficiaries of the two regimes. According to Article L.712-4 of the IPC, as amended by the Hamon Act, the right
of opposition may now be exercised by a local authority or an Organization for Defense and Management of an IGPIA. Similarly, the Hamon
Act amends Article L.711-4 of the IPC, the IGPIA being added to the list of prior rights, which may justify the reject of an application for filling
or the cancellation of a registered trademark. Thus, a trademark may be canceled pursuant to Article L.714-3 of the IPC if it affects the prior
rights related not only to a “geographical indication”, but also to “the name, the image or the reputation of a territorial authority”. Finally,
Article L.712-2-1 of the IPC creates a warning system for territorial authorities, which can now request from the INPI to be informed in the
event of the application for a trademark containing their name.
The Hamon Act, with the creation of IGPIA, offers to the industrialists and the artisans a new legal tool in order to defend their knowhow and for the territorial authorities to protect their local economy. For now, the effective protection of IGPIA stops at national borders.
Nevertheless, the EU is seriously considering the possibility to extend the IGPIA to non-agrofood products. Consequently, a true evolution of
the protection system of industrial property has been initiated.
Indeed, the owner of a trademark containing a geographical indication, when its production does not bear a sufficient connection with a local
know-how, could see its trademark canceled, if a local authority proves that it infringes on its name, image or reputation, or if the owner of
an IGPIA claims a first-in-time priority. Trademarks holders will now have to take into account the interests and prerogatives of local authorities
and local actors wishing to protect their handcraft and reputation.
12 Trade marks and unfair competition
AU – Review of changes in opposition procedures in Australia
Chris Round
Introduction
The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (“Act”) came into effect on 15 April 2013, and represents
a significant revision of Australian trade marks law. In particular, the Act seeks to strengthen and streamline the trade mark opposition
and enforcement system by making significant changes to the Trade Marks Act 1995 (Cth). There are further changes relating to patents,
copyright and registered designs that are not the subject of this article.
The most significant aspects of the trade mark law reforms brought in by the Act are:
•
•
•
•
•
the inclusion of a presumption of registrability for marks with respect to descriptiveness;
a revised process for the opposition of trade mark applications;
a strengthened customs seizures regime;
an increased variety of options for the enforcement of trade mark rights; and
an extension of attorney-client privilege to fully embrace trade mark attorneys.
I intend to focus on the changes to the opposition process in this article.
Reform of the process for opposition of trade mark applications
One of the most significant effects of the Act is to alter the process for opposing applications for registration of trade marks, with a strong focus
on reducing potential delays in the system.
Some of the most noteworthy alterations to the trade mark opposition process include that:
• opponents will no longer have to notify the applicant of the opposition, as this will now be undertaken by IP Australia;
• instead of filing just a notice of opposition, opponents will be required to file a notice of their intention to oppose the registration of
a trade mark within two months of the acceptance of the trade mark, and then file a statement of their grounds for the opposition within
one month of filing the opposition. This reform is intended to prevent opponents from claiming all grounds in every opposition unless
warranted;
• a pplicants will be required to file a notice confirming their intention to defend their mark against the opposition within one month of the
opposition being filed or the application for registration will lapse. This will ensure that the opponent need not pursue the opposition
process to hearing without the participation of the applicant, as was previously possible;
• extensions of time will still be available but they will be significantly harder to obtain; and
• there is an allowance for regulations to be made relating to trade mark opposition issues such as the rules about filing and serving
documents in an opposition and rules about the amendment of documents filed in an opposition.
All of these changes to the trade mark opposition process are overtly designed to streamline the opposition process, which had been
considered by some to be overly cumbersome. In Australia, trade mark oppositions could often take three to five years due to unreasonable
delays undertaken by the parties at each step of the process. The changes to the opposition procedures are designed to speed up
oppositions, including by a summary dismissal of an application if the owner chooses not to defend.
As a result, legal practitioners and trade mark owners must be vigilant of the changes or trade mark applications will be registered or may
lapse due to non-compliance with procedural matters. Additionally, as a statement of the grounds for the opposition needs to be filed
2/2014 13
by the opponent, parties seeking to oppose a trade mark must efficiently define the grounds on which an application will be opposed prior to
the issuing of the notice or risk being unsuccessful on the grounds claimed.
Conclusion
After 12 months, it appears that the Act has had the practical effect of speeding up opposition matters and focusing opponent’s attention on
the real issues in dispute at a far earlier time. The days of endless extension of time applications in Australian oppositions appears to be over.
This is an excellent result and provides certainty to both applicants and opponents far sooner.
14 Trade marks and unfair competition
Information on the activities of the K&L Gates Warsaw
intellectual property team
K&L Gates’ intellectual property team consists of seven lawyers (including a patent and
trademark attorney) who provide services to Polish and foreign clients on all aspects of
their businesses.
We advise on protecting intellectual property rights, including in litigation, customs
protection proceedings, and penal proceedings concerning piracy and other exclusive
rights infringements. We prepare applications and submissions to the Polish Patent Office
and the Office for Harmonization in the Internal Market (OHIM) on registering trade marks,
and we represent clients in dispute proceedings. We also focus on various issues relating
to unfair competitions and conflicts between designations.
We have extensive experience in preparing agreements concerning copyright and media
concluded between business entities, including licensing, publication, distribution and
dubbing agreements, as well as agreements concerning film and television production.
We deal with the regulations covering new technologies, personal data protection and
issues relating to the protection of business secrets and advertising law.
Our intellectual property experience is wide and varied. We represent clients before both the
civil and criminal courts, as well as before public authorities and the administrative courts.
For further information please, contact:
Oskar Tułodziecki
Oskar.Tulodziecki@klgates.com
Marta Wysokińska
Marta.Wysokinska@klgates.com
Agata Lewartowska-Błaszczyk
Agata.Lewartowska-Blaszczyk@klgates.com
Michał Ziółkowski
Michal.Ziolkowski@klgates.com
Dorota Koseła
Dorota.Kosela@klgates.com
Chris Round
Chris.Round@klgates.com
Ewelina Madej
Ewelina.Madej@klgates.com
Claude-Etienne Armingaud
Claude.Armingaud@klgates.com
Ewa Rusak
Ewa.Rusak@klgates.com
Olivia Roche
Olivia.Roche@klgates.com
K&L Gates Jamka sp.k.
K&L Gates
K&L Gates LLP
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