European Commission's new strategic vision on Modern, New European IPR regime aimed at a Single Market for intellectual property rights had been announced by EC. EC identified intelectual property right in different forms as key assets for European market. New proposals include a unified patent litigation system; modernisation of trade mark system; Creation of a comprehensive framework for copyright in the digital single market;European copyright governance and management; Private copying levies;Facilitating the preservation and dissemination of Europe's rich cultural and intellectual heritage and encouraging the creation of European digital libraries; Performers' rights; Artists' resale right; Trade secrets and parasitic copies;
Non-agricultural geographical indications; Enhanced fight against counterfeiting and piracy; A more sustainable structure for the European Observatory on Counterfeiting and Piracy and new tasks;
Bilateral negotiation and co-operation on IP protection with third countries.
The new communication of EC is aimed at revolutionising the intelectual property regime in Europe.
Wednesday, July 20, 2011
Thursday, June 17, 2010
Trademark should be choosen on good faith
Section 3(6) of the Trade Mark Act 1994 provides:
“A trade mark shall not be registered if or to the extent that the application is made in bad faith.”
This provision implements Article 3(2)(d) of Directive 2008/95/EC of 22 October 2008 (First Council Directive 89/10 4/EC of 21 December 1988) to approximate the laws of the Member States relating to trade marks.
The Section 3(6) the Trade Mark Act 1994 dealt with by the courts in the cases of Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd [1999] RPC 367, Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028, [2005] FSR 10, Ajit Weekly Trade Mark [2006] RPC 25, Royal Enfield Trade Marks, Hotpicks Trade Mark [2004] RPC 42 and Nonogram Trade Mark [2001] RPC 21, together with relevant principles derived from Barlow Clowes International Ltd v Eurotrust International Ltd [2005] UKPC 37, [2006] 1 WLR 1476 and Re H (minors) [1996] AC 563, in paragraph 117 of his decision as follows:
“Bad faith includes dishonesty and ‘some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular field being examined’. Certain behaviour might have become prevalent but this does not mean that it can be deemed to be acceptable. It is necessary to apply what is referred to as the ‘combined test’. This requires me to decide what Mr Maslyukov knew at the time of making the application and then, in the light of that knowledge, whether his behaviour fell short of acceptable commercial behaviour. Bad faith impugns the character of an individual or collective character of a business, as such it is a serious allegation. The more serious the allegation the more cogent must be the evidence to support it. However, the matter still has to be decided upon the balance of probabilities. The issue has to be considered as at the date of application for registration. An act of bad faith cannot be cured by an action after the date of application.”
In Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd, [1999] R.P.C. 367 Lindsay, J. of Chancery Division held, dismissing the passing off claim, finding respondent's registration valid and infringed by petitioner , and ordering revocation of petitioner’s registration, that (1) respondent's application had not been made in bad faith. Bad faith included dishonesty and some dealings which fell short of the standards of acceptable commercial behaviour. It was, however, to be decided by reference to the Trade Marks Act 1994 and with regard to all the material circumstances. The exclusive distributorship agreement with petitioner’s only covered the UK, mainland Europe and the Middle East, and was limited in time, so respondent retained the right to appoint other distributors. The fact that plaintiff would be recognised by its customers as the guarantor of the quality of the products, and not respondent, and that complaints would be directed to petitioners and not respondent was usual in any such agreement; (2) respondent's registration did not mislead the public pursuant to s.46(1)(d) of Trade Marks Act 1994. It was not a requirement that a mark must denote the manufacturer nor was there a rule that the relationship between the owner of the mark and the goods should not change. At no stage did the mark cease to fulfil its purpose of signifying goods with which respondent had a substantial connection. Nor could it be argued that the mark had come to signify goods sold by petitioner to the extent that the public would be misled if they were sold by someone else; s.46(1)(d) did not have that effect, which would apply to many exclusive distributorships, at least where the owner of the mark had, as here, retained a significant role as manufacturer and regulator of quality; (3) respondet's mark would not be revoked under s.46(1) for non use on the basis that its mark should have been registered in Class 17 and not Class 24 since there had been use within Class 24. Even if there had not been, there would still have been a powerful argument that the discretion to revoke should not have been exercised, or there may have been a proper reason for non use; (4) petitioner had infringed respondent's mark; (5) since respondent's registration predated petitioner's application, and as there was a likelihood of confusion, the discretion available under s.47(2) would be exercised by declaring petitioner's mark invalid, and (6) with respect to passing off, the goodwill in the name GRO-SHIELD was vested in respondent and petitioner jointly and therefore as petitioner had failed to show it had a monopoly and sole right to use the mark, there was no passing off.
In Maslyukov v Diageo Distilling Ltd[2010] EWHC 443 (Ch); [2010] E.T.M.R. 37 the court found that the above said preposition of law to be accurate. The court upheld the hearing officer decision who cited the judgment of the Court of Justice of the European Communities (as it then was) in Case C-529/07 Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH [2009] ECR I-0000 at [40]-[51].
As held by the ECJ, the fact person who applies for the trademark knew of the use of the name for similar or identical products and applied for those names is not an act of bad faith per se. It will depend on the circumstances of the case. … especially taking into account the traditions of the trade, is still involved in the trade by reference to this sign.
The court in Maslyukov v Diageo Distilling Ltd[2010] EWHC 443 (Ch); [2010] E.T.M.R. 37 held that the petitioner is using the trade mark applications to appropriate the reputation of the earlier reputed names; something very useful to a new business which has no history in the trade, especially when tradition and heritage are key parts of the trade. There is no doubt that reasonable and experienced men in the trade would consider that filing the applications falls short of the standards of acceptable commercial behaviour. (There are experts in the trade who say as much.)
The limitation of the rights in the applications was after the date of application, and the question of bad faith has to be considered at the date of application. Even if I take into account the limitations I do not consider that this affects my deliberations as to the views of reasonable and experienced men in the Scotch whisky trade to the applications.
The issues must be judged on whether the general categories of goods encompass goods for which there can be objection as per the judgment of the CFI in Duro Sweden AB v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case T- 346/07 …
The court upheld that the hearing officer was entitled to conclude that petitioner had acted in a manner which fell short of the standards of acceptable commercial behaviour.
“A trade mark shall not be registered if or to the extent that the application is made in bad faith.”
This provision implements Article 3(2)(d) of Directive 2008/95/EC of 22 October 2008 (First Council Directive 89/10 4/EC of 21 December 1988) to approximate the laws of the Member States relating to trade marks.
The Section 3(6) the Trade Mark Act 1994 dealt with by the courts in the cases of Gromax Plasticulture Ltd v Don and Low Nonwovens Ltd [1999] RPC 367, Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028, [2005] FSR 10, Ajit Weekly Trade Mark [2006] RPC 25, Royal Enfield Trade Marks, Hotpicks Trade Mark [2004] RPC 42 and Nonogram Trade Mark [2001] RPC 21, together with relevant principles derived from Barlow Clowes International Ltd v Eurotrust International Ltd [2005] UKPC 37, [2006] 1 WLR 1476 and Re H (minors) [1996] AC 563, in paragraph 117 of his decision as follows:
“Bad faith includes dishonesty and ‘some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular field being examined’. Certain behaviour might have become prevalent but this does not mean that it can be deemed to be acceptable. It is necessary to apply what is referred to as the ‘combined test’. This requires me to decide what Mr Maslyukov knew at the time of making the application and then, in the light of that knowledge, whether his behaviour fell short of acceptable commercial behaviour. Bad faith impugns the character of an individual or collective character of a business, as such it is a serious allegation. The more serious the allegation the more cogent must be the evidence to support it. However, the matter still has to be decided upon the balance of probabilities. The issue has to be considered as at the date of application for registration. An act of bad faith cannot be cured by an action after the date of application.”
In Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd, [1999] R.P.C. 367 Lindsay, J. of Chancery Division held, dismissing the passing off claim, finding respondent's registration valid and infringed by petitioner , and ordering revocation of petitioner’s registration, that (1) respondent's application had not been made in bad faith. Bad faith included dishonesty and some dealings which fell short of the standards of acceptable commercial behaviour. It was, however, to be decided by reference to the Trade Marks Act 1994 and with regard to all the material circumstances. The exclusive distributorship agreement with petitioner’s only covered the UK, mainland Europe and the Middle East, and was limited in time, so respondent retained the right to appoint other distributors. The fact that plaintiff would be recognised by its customers as the guarantor of the quality of the products, and not respondent, and that complaints would be directed to petitioners and not respondent was usual in any such agreement; (2) respondent's registration did not mislead the public pursuant to s.46(1)(d) of Trade Marks Act 1994. It was not a requirement that a mark must denote the manufacturer nor was there a rule that the relationship between the owner of the mark and the goods should not change. At no stage did the mark cease to fulfil its purpose of signifying goods with which respondent had a substantial connection. Nor could it be argued that the mark had come to signify goods sold by petitioner to the extent that the public would be misled if they were sold by someone else; s.46(1)(d) did not have that effect, which would apply to many exclusive distributorships, at least where the owner of the mark had, as here, retained a significant role as manufacturer and regulator of quality; (3) respondet's mark would not be revoked under s.46(1) for non use on the basis that its mark should have been registered in Class 17 and not Class 24 since there had been use within Class 24. Even if there had not been, there would still have been a powerful argument that the discretion to revoke should not have been exercised, or there may have been a proper reason for non use; (4) petitioner had infringed respondent's mark; (5) since respondent's registration predated petitioner's application, and as there was a likelihood of confusion, the discretion available under s.47(2) would be exercised by declaring petitioner's mark invalid, and (6) with respect to passing off, the goodwill in the name GRO-SHIELD was vested in respondent and petitioner jointly and therefore as petitioner had failed to show it had a monopoly and sole right to use the mark, there was no passing off.
In Maslyukov v Diageo Distilling Ltd[2010] EWHC 443 (Ch); [2010] E.T.M.R. 37 the court found that the above said preposition of law to be accurate. The court upheld the hearing officer decision who cited the judgment of the Court of Justice of the European Communities (as it then was) in Case C-529/07 Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH [2009] ECR I-0000 at [40]-[51].
As held by the ECJ, the fact person who applies for the trademark knew of the use of the name for similar or identical products and applied for those names is not an act of bad faith per se. It will depend on the circumstances of the case. … especially taking into account the traditions of the trade, is still involved in the trade by reference to this sign.
The court in Maslyukov v Diageo Distilling Ltd[2010] EWHC 443 (Ch); [2010] E.T.M.R. 37 held that the petitioner is using the trade mark applications to appropriate the reputation of the earlier reputed names; something very useful to a new business which has no history in the trade, especially when tradition and heritage are key parts of the trade. There is no doubt that reasonable and experienced men in the trade would consider that filing the applications falls short of the standards of acceptable commercial behaviour. (There are experts in the trade who say as much.)
The limitation of the rights in the applications was after the date of application, and the question of bad faith has to be considered at the date of application. Even if I take into account the limitations I do not consider that this affects my deliberations as to the views of reasonable and experienced men in the Scotch whisky trade to the applications.
The issues must be judged on whether the general categories of goods encompass goods for which there can be objection as per the judgment of the CFI in Duro Sweden AB v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case T- 346/07 …
The court upheld that the hearing officer was entitled to conclude that petitioner had acted in a manner which fell short of the standards of acceptable commercial behaviour.
Friday, December 25, 2009
European Commission once more proved that they can play GOD
Microsoft offered legally binding commitments to boost competition on the web browser market which was adopted by the European Commission. The Commission expressed it’s concerns that Microsoft may have tied its web browser Internet Explorer to the Windows PC operating system which will amounts to breach of EU rules on abuse of a dominant market position as envisaged under Article 102 of the Treaty on the Functioning of the European Union -TFEU.
Under the commitments approved by the European Commission, Microsoft will make available for five years in the European Economic Area (through the Windows Update mechanism) a " Choice Screen" enabling users of Windows XP, Windows Vista and Windows 7 to choose which web browser(s) they want to install in addition to, or instead of, Microsoft's browser Internet Explorer.
The commitments also provide that computer manufacturers will be able to install competing web browsers, set those as default and turn Internet Explorer off.
By way of a Statement of Objections sent to Microsoft by the European Commission on 15 January 2009 which outlined the European Commission’s preliminary view that Microsoft may have infringed Article 82 of the EC Treaty (now Article 102 of the Treaty on the Functioning of the European Union) by abusing its dominant position in the market for client PC operating systems through the tying of Internet Explorer to Windows.
The Commission take a view at first instance that competition was distorted by Microsoft tying Internet Explorer to Windows, because it offered Microsoft an artificial distribution advantage not related to the merits of its product on more than 90 per cent of personal computers. Furthermore, the Commission hold such a view that this tying hindered innovation in the market and created artificial incentives for software developers and content providers to design their products or web sites primarily for Internet Explorer.
The commitments filed by Microsoft and approved by the European Commission address these concerns. PC users, by means of the Choice Screen, will have an effective and unbiased choice between Internet Explorer and competing web browsers. This should ensure competition on the merits and allow consumers to benefit from technical developments and innovation both on the web browser market and on related markets, such as web-based applications.
The Commission's decision is based on Article 9 of Regulation 1/2003 on the implementation of EU antitrust rules. It takes into account the results of the market test launched in October 2009. This decision, which does not conclude whether there is an infringement, legally binds Microsoft to the commitments it has offered and ends the Commission's investigation. The Commission could impose a fine of up to 10% of Microsoft's total annual turnover without having to prove any violation of EU antitrust rules, if it turned out later that Microsoft broke its commitments. A review clause in the commitments allow the Commission to review the commitments in two years, as Microsoft will report regularly on the implementation of those commitments and under certain conditions make adjustments to the Choice Screen upon the Commission's request. Microsoft also made proposals in relation to disclosures of interoperability information that would improve interoperability between third party products and several Microsoft products, including Windows, Windows Server, Office, Exchange, and SharePoint.Competition Commissioner Neelie Kroes in a press release by the EC expressed that : "Millions of European consumers will benefit from this decision by having a free choice about which web browser they use. Such choice will not only serve to improve people's experience of the internet now but also act as an incentive for web browser companies to innovate and offer people better browsers in the future
Under the commitments approved by the European Commission, Microsoft will make available for five years in the European Economic Area (through the Windows Update mechanism) a " Choice Screen" enabling users of Windows XP, Windows Vista and Windows 7 to choose which web browser(s) they want to install in addition to, or instead of, Microsoft's browser Internet Explorer.
The commitments also provide that computer manufacturers will be able to install competing web browsers, set those as default and turn Internet Explorer off.
By way of a Statement of Objections sent to Microsoft by the European Commission on 15 January 2009 which outlined the European Commission’s preliminary view that Microsoft may have infringed Article 82 of the EC Treaty (now Article 102 of the Treaty on the Functioning of the European Union) by abusing its dominant position in the market for client PC operating systems through the tying of Internet Explorer to Windows.
The Commission take a view at first instance that competition was distorted by Microsoft tying Internet Explorer to Windows, because it offered Microsoft an artificial distribution advantage not related to the merits of its product on more than 90 per cent of personal computers. Furthermore, the Commission hold such a view that this tying hindered innovation in the market and created artificial incentives for software developers and content providers to design their products or web sites primarily for Internet Explorer.
The commitments filed by Microsoft and approved by the European Commission address these concerns. PC users, by means of the Choice Screen, will have an effective and unbiased choice between Internet Explorer and competing web browsers. This should ensure competition on the merits and allow consumers to benefit from technical developments and innovation both on the web browser market and on related markets, such as web-based applications.
The Commission's decision is based on Article 9 of Regulation 1/2003 on the implementation of EU antitrust rules. It takes into account the results of the market test launched in October 2009. This decision, which does not conclude whether there is an infringement, legally binds Microsoft to the commitments it has offered and ends the Commission's investigation. The Commission could impose a fine of up to 10% of Microsoft's total annual turnover without having to prove any violation of EU antitrust rules, if it turned out later that Microsoft broke its commitments. A review clause in the commitments allow the Commission to review the commitments in two years, as Microsoft will report regularly on the implementation of those commitments and under certain conditions make adjustments to the Choice Screen upon the Commission's request. Microsoft also made proposals in relation to disclosures of interoperability information that would improve interoperability between third party products and several Microsoft products, including Windows, Windows Server, Office, Exchange, and SharePoint.Competition Commissioner Neelie Kroes in a press release by the EC expressed that : "Millions of European consumers will benefit from this decision by having a free choice about which web browser they use. Such choice will not only serve to improve people's experience of the internet now but also act as an incentive for web browser companies to innovate and offer people better browsers in the future
Sunday, August 2, 2009
EC's communication on Competition Law applicable to motor vehicle sector
European Commission had published a communication on new competition law applicable to motor vehicle sector as the Commission Regulation (EC) No 1400/2002 ("the Regulation”), which was adopted in July 2002 (applicable on 1 October 2003) will expire on 31 May 2010.
The specific block exemptions regulations since the mid-eighties, to the motor vehicle sector, which includes passenger cars and commercial vehicles regulated by Commission Regulation (EC) No 1400/2002 relieving the contracting parties from the need to analyse whether those agreements can benefit from the exception provided for in Article 81(3) is to be replaced. So the EC had invited stakeholders to submit comments on it before 25th of September 2009.
The specific block exemptions regulations since the mid-eighties, to the motor vehicle sector, which includes passenger cars and commercial vehicles regulated by Commission Regulation (EC) No 1400/2002 relieving the contracting parties from the need to analyse whether those agreements can benefit from the exception provided for in Article 81(3) is to be replaced. So the EC had invited stakeholders to submit comments on it before 25th of September 2009.
Thursday, July 30, 2009
Nevada Trademark Law
For filing a trademark in Nevada State, US you should submit Mark registration form 1 along with a fees of $ 100/-. The term of the mark is for 5 years and should be renewed before the expiry of the term. Nevada Revised Statutes -Chapter 600 deals with the registration of trademarks.
NRS 600.340 Application for registration: Contents; requirements; fee; return for correction.
1. A person who has adopted and is using a mark in this State may file in the Office of the Secretary of State, on a form to be furnished by the Secretary of State, an application for registration of that mark setting forth, but not limited to, the following information:
(a) Whether the mark to be registered is a trademark, trade name or service mark;
(b) A description of the mark by name, words displayed in it or other information;
(c) The name and business address of the person applying for the registration and, if it is a corporation, limited-liability company, limited partnership or registered limited-liability partnership, the state of incorporation or organization;
(d) The specific goods or services in connection with which the mark is used and the mode or manner in which the mark is used in connection with those goods or services and the class as designated by the Secretary of State which includes those goods or services;
(e) The date when the mark was first used anywhere and the date when it was first used in this State by the applicant or his predecessor in business which must precede the filing of the application; and
(f) A statement that the applicant is the owner of the mark and that no other person has the right to use the mark in this State either in the form set forth in the application or in such near resemblance to it as might deceive or cause mistake.
2. The application must:
(a) Be signed and verified by the applicant or by a member of the firm or an officer of the corporation or association applying.
(b) Be accompanied by a specimen or facsimile of the mark on white paper that is 8 1/2 inches by 11 inches in size and by a filing fee of $100 payable to the Secretary of State.
3. If the application fails to comply with this section or NRS 600.343, the Secretary of State shall return it for correction.
(Added to NRS by 1979, 596; A 1993, 489; 1997, 159; 1999, 1636; 2001, 3195; 2005, 2277)
NRS 600.343 Criteria for specimen accompanying application for registration; change after registration.
1. A specimen accompanying an application for the registration of a mark must meet the following criteria:
(a) The specimen must agree with the mark as described in the application, must agree with the mark as used, and evidence use of the mark.
(b) If the specimen is a drawing, it must be a substantially exact representation of the mark as actually used.
(c) The specimen must fit on a page of paper not larger than 8 1/2 inches by 11 inches.
(d) A specimen may be a facsimile or photograph of the mark.
(e) The specimen must be suitable for reproduction, retention and retrieval.
2. After registration, an applicant may not change the specimen if the change constitutes a material alteration of the mark.
(Added to NRS by 1997, 158)
NRS 600.290: "Service Mark" means a Mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.
NRS 600.300: "TradeMark" means any word, name, symbol or device or any combination of them adopted and used by a person to identify goods made or sold by others.
NRS 600.310: "Trade name" means a word symbol device or any combination of them used by a person to identify his business, vocation or occupation and distinguish it from the business, vocation or occupation of others.
Monday, July 27, 2009
Trademarks defined in Indian Law
Section 2 [1](zb) of Trademarks Act 1999 “trade mark” means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and
combination of colours: and--
(i) in relation to Chapter XII (other than section 107), a registered
trade mark or a mark used in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between the
goods or services, as the case may be, and some person having the right as
proprietor to use the mark: and
(ii) in relation to other provision of this Act, a mark used or proposed to
be used in relation to goods or services for the purpose of indicating or so to
indicate a connection in the course of trade between the goods or services as
the case may be, and some person having the right, either as proprietor or by
way of permitted user, to use the mark whether with or without any indication
of the identity of that person , and includes a certification trade mark or collective
mark:
which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and
combination of colours: and--
(i) in relation to Chapter XII (other than section 107), a registered
trade mark or a mark used in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between the
goods or services, as the case may be, and some person having the right as
proprietor to use the mark: and
(ii) in relation to other provision of this Act, a mark used or proposed to
be used in relation to goods or services for the purpose of indicating or so to
indicate a connection in the course of trade between the goods or services as
the case may be, and some person having the right, either as proprietor or by
way of permitted user, to use the mark whether with or without any indication
of the identity of that person , and includes a certification trade mark or collective
mark:
VW and Porsche Merger
Wendelin Wiedeking, Germany's highest-paid executive,The chief executive of Porsche, forced to quit along with , Holger Härter, Finance chief. Will this accelerate merger of Volkswagen and Porsche.VW chairman Ferdinand Piëch, is the grandson of Ferdinand Porsche who designed the original VW Beetle. Ferdinand Porsche is the founder of Porsche and VW during 1930s. Yet another Merger and Acquisition process watched by commercial world as well as the watchdogs, Competition Authorities round the globe.
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