Round Table Friday 12 October 2012 Sofitel Legend The Grand, Amsterdam

Transcription

1 Round Table Friday 12 October 2012 Sofitel Legend The Grand, Amsterdam How do congestion -and suggested measures against congestion- affect your rights and your daily practice?

2 Round Table Chair: Professor Tobias Cohen Jehoram, De Brauw Blackstone Westbroek/Erasmus University Rotterdam Panel: Simone Pelkmans, Legal Counsel Unilever Camille Janssen, Staff Lawyer Benelux Office for Intellectual Property (BOIP) Monique Granneman, European Trade Mark Attorney Novagraaf

3 1. The genuine use requirement in Directive and Regulation is intended to avoid congestion of the trademark register

4 1. The genuine use requirement in Directive and Regulation is intended to avoid congestion of the trademark register Camille: Trademarks are born by application/ registration Not by use! Trademarks have (potentially) an eternal life Trademarks are meant to serve as a tool to distinguish in the market We need a mechanism to keep the register clean We should prevent the existence of rights that have no added value for their proprietors while they re at the same time preventing the birth of other rights that do!

5 1. The genuine use requirement in Directive and Regulation is intended to avoid congestion of the trademark register Monique: Intention = to prevent infinite enforceability Economic role use should aim at maintaining or creating market share Current interpretation of genuine use of CTM s actually causes congestion

6 2. Congestion of the register is not a real problem

7 2. Congestion of the register is not a real problem Camille:

8 2. Congestion of the register is not a real problem Camille:

9 2. Congestion of the register is not a real problem Simone: Clearance procedures are often not feasible anymore Has become a risk and cost/benefit analysis rather than full clearance focus on identical trade marks and known competitors

10 3. Congestion is only a problem for companies choosing descriptive trademarks. We need a higher threshold for distinctive character, and all congestion problems are solved

11 3. Congestion is only a problem for companies choosing descriptive trademarks. We need a higher threshold for distinctive character, and all congestion problems are solved Camille: The ECJ is clear on this point! Libertel: It must be a stringent and full examination, in order to prevent trade marks from being improperly registered. Canon: In any event, for reasons of legal certainty and proper administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered. The more reliable the register, the easier it is to establish when (not to) apply!

12 3. Congestion is only a problem for companies choosing descriptive trademarks. We need a higher threshold for distinctive character, and all congestion problems are solved Monique: Threshold is already quite high Promotes use of unregistered marks Distinctive character is not static Court may rule distinctive, but without registration...

13 4. We need an intent of use declaration requirement to avoid congestion

14 4. We need an intent of use declaration requirement to avoid congestion Monique: Honest intent to use in combination with filing proof and with proper sanction Discourages filing alternate registrations Discourages broad filings Discourages re-filings

15 4. We need an intent of use declaration requirement to avoid congestion Simone: Freedom to operate 5 years term Big administrative burden More costs Which sanction if later proven not to be used?

16 5. We need a proof of use-requirement after 5 or 10 years, to clear the register

17 5. We need a proof of use-requirement after 5 or 10 years, to clear the register Monique: Clarity in register which marks are still valid Clarity in register what G/S are still claimed (provided with an acceptable term to submit proof) (provided that the threshold is low)

18 5. We need a proof of use-requirement after 5 or 10 years, to clear the register Simone: Administrative burden Higher costs Too difficult to get required information from business in time If in combination with renewal and acceptance of broad range of proof, possibly acceptable

19 6. We need a new, quick and cheap administrative procedure at the Benelux Trademark Office for cancellation of trademarks not genuinely used

20 6. We need a new, quick and cheap administrative procedure at the Benelux Trademark Office for cancellation of trademarks not genuinely used Monique: This would clear the way easily Low threshold And fortunately that is coming Provided appeal with court

21 6. We need a new, quick and cheap administrative procedure at the Benelux Trademark Office for cancellation of trademarks not genuinely used Simone: Not necessary; procedure before District Court works well enough. Better suited to weigh genuine use arguments If introduced, Appeal before Benelux Court of Justice administrative burden, higher costs than national procedure

22 7. IP Translator means that for old trademarks, using class headings protection is limited to the literal goods/services explicitly mentioned only

23 7. IP Translator means that for old trademarks using class headings protection is limited to the literal goods/services explicitly mentioned only Simone: Has always been Unilever s approach product portfolio fits within clear classes Seems more an issue for services and goods like software, computer related goods

24 7. IP Translator means that for old trademarks using class headings protection is limited to the literal goods/services explicitly mentioned only Monique: OHIM Comm. 2/12 intention of the applicant Legal insecurity (OHIM Comm. 4/03) Not literal, if clear and precise regarding extent New filings seniority claim? Need for transitional phase

25 8. IP Translator promotes too broad filings, leading to further congestion of the register

26 8. IP Translator promotes too broad filings, leading to further congestion of the register Camille: Coffee, tea, cocoa and coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices; sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces, spices, ice, substitutes for coffee, chocolate, granola bars, pasta, noodles, biscuits, cake, chocolate, ice cream, frozen confectionery; pesto, herbs, products prepared for consumption and mainly composed of the aforesaid goods; potato flour for food; algae [herbs], almond paste, aniseed, flavorings for beverages [other than essential oils]; flavorings for cakes other than essential oils, flavorings, other than essential oils, aromatic preparations for food; vinegar, baking powder, baking soda, pastries, sandwiches, biscuits, processed gluten for food, beer, vinegar, binders for ice cream; binders for sausage, biscuits, macaroons, bean flour, butter biscuits, bread, buns, cocoa, cocoa beverages with milk, cocoa products, cakes pastries, cheeseburgers, chocolate, chocolate beverages with milk, chocolate, chow chow [spices]; chutney [spicy sauce]; chicory [coffee substitute], ices; couscous, crackers, cream of tartar for culinary use, cream of tartar for use during cooking, custard, dough for cakes, pasta, based desserts mousse [[pastry]; beverages based on cocoa, beverages based on chocolate; beverages based on coffee, drinks based on tea, licorice [confectionery]; liquorice sticks [confectionery]; essences for foodstuffs [except etheric oils]; fondant [ confectionery]; cake powder, turmeric for food; ground corn, ginger [herbs], hulled oats, hulled corn kernels, crushed oats, puffed corn [popcorn]; dishes based on flour, roasted corn, barley [Hulled], barley [crushed or mashed], barley flour, yeast, ferments for dough, glucose for use during cooking, gluten additives for use during cooking; preparations made from cereals, cereal bars with increased protein, cereal flakes, dried, semolina, groats for human consumption; halva [turkish sweets]

27 oatmeal, oats, honey, ice, natural or artificial material; iced tea [based drink tea], candy, cinnamon [spice], capers, caramels [candy]; gum; curry [herbs]; ketchup [sauce], salt, Cookies, Ice for refrigeration, coffee, coffee flavorings, coffee beverages with milk, coffee, royal jelly, spices [spices], herbal infusions, not medicinal, spice mixes, sauces, seasonings, spice cake, cloves, flaxseed for human consumption, egg rolls, meals basis of noodles, macaroni, maize porridge, water or milk base [hominy], maltose, marinades, marzipan, mayonnaise, corn meal, corn flakes [cereal]; flours, flour, flour, molasses, treacle, mustard, mustard flour, malt for human consumption, malt biscuits, malt extracts for food; granola, nutmeg [herbs], natural sweeteners, noodles, green coffee, unleavened bread, breadcrumbs, pancakes, porridge made from milk; pies [pastry]; pies [pies]; pastilles [confectionery], pepper, peppermint for confectionery, peppermint candies, pesto, petit fours [pastry]; allspice [herbs], pizza, vegetable preparations as substitutes for coffee; powders for ice cream, chocolates, products for meat tenderization, domestic use, products for stabilizing whipped cream, propolis, puddings, quiches, ravioli, Relish [spices], rice, rice cake, ice cream, saffron [herbs], sago, celery salt, salad dressings, sweets, soybean paste [herbs], soy flour, soy sauce; sherbets [ices]; spaghetti, spices, star anise, sugar, icing for the preparation of hams, icing for cakes, candies, confectionery for decorating Christmas trees; sweets made from almonds, sugar-based peanuts, sushi, cakes, tabbouleh, tacos, tapioca, tapioca flour for food; wheat germ for human consumption, tea, tomato sauce, tortillas, herbs, preserved; vanilla [flavor], vanillin [vanilla surrogate]; thickening agents for cooking foodstuffs; noodles, snacks made from cereals, snacks made with rice, pies, meat pies, meat sauces and foods made from oats, fruit pastes [confectionery]; fruit sauces, waffles, yogurt, sea water for use during cooking, food starch, salt for preserving foodstuffs; leaven [ yeast].

28 8. IP Translator promotes too broad filings, leading to further congestion of the register Simone: Could be broader but most likely also clearer Easier to interpret when searching

29 9. To limit congestion the single filing fee for 3 classes should be abandoned in favour of a fee per class

30 9. To limit congestion the single filing fee for 3 classes should be abandoned in favour of a fee per class Camille:

31 9. To limit congestion the single filing fee for 3 classes should be abandoned in favour of a fee per class Simone: Most brands cover more than one class anyway so not a choice to limit Unlikely that fee per class will be limited to 1/3 of current fee higher costs

32 10. To limit congestion the filing fee should be raised for every single good/service mentioned

33 10. To limit congestion the filing fee should be raised for every single good/service mentioned Camille: For the same reasons, but improving even more Will raise awareness of the way the system works, both administrative but also legally

34 10. To limit congestion the filing fee should be raised for every single good/service mentioned Monique: Only profitable for companies with few goods/services With the need to be clear, less items is not always an option Practically inconvenient

35 11. To limit congestion we should do away with classification altogether (Canadian system)

36 11. To limit congestion we should do away with classification altogether (Canadian system) Camille: The use of the classification system is misleading applicants No added value anyway: Class has no influence similarity/ identity of G&S Classification is administrative burden on both applicant and offices

37 11. To limit congestion we should do away with classification altogether (Canadian system) Monique: Clearance more difficult Administrative burden

38 12. There is a need for national trademarks next to Community trademarks, also in the Benelux, so that we should (re)introduce a Dutch, Belgian and Luxembourg trademark

39 12. There is a need for national trademarks next to Community trademarks, also in the Benelux, so that we should (re)introduce a Dutch, Belgian and Luxembourg trademark Simone: Trademark owner only active in one of the Benelux countries now empty handed regarding protection of trade marks which need to acquire secondary meaning Could be an annotation in the Bx register

40 12. There is a need for national trademarks next to Community trademarks, also in the Benelux, so that we should (re)introduce a Dutch, Belgian and Luxembourg trademark Camille: Art 10 Paris Convention Acquired distinctiveness is hardly ever a prerequisite Only 0/00 of applications The exception to the exception to the rule ECJ jurisprudence Having a reliable register is in everybody's interest, even if this results in a minimum of players that will have to work harder to defend their position!!

41 THANK YOU FOR YOUR VOTES!

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