SEPTEMBER 21, 2017 | COURT OF JUSTICE ON ABSOLUTE NOVELTY IN EU DESIGN LAW

In its judgment of September 21, 2017 in joined cases C‑361/15 P and C‑405/15 P, Easy Sanitary Solutions BV v EUIPO/Group Nivelles NV, UK intervening, ECLI:EU:C:2017:720, the European Court of Justice for the first time made a statement of fundamental importance concerning the understanding of novelty in European design law.

In a nutshell, the indication of products limits neither the scope of protection nor the scope of citable prior art.

In detail:

  • The scope of protection of a Community design is not limited to the product indicated in the application for registration (paras. 93-95).
  • The assessment of novelty of a Community design is not limited to the products indicated in the application but has to consider each earlier design, whatever the product in which that earlier design is intended to be incorporated or applied (paras. 96, 104).
  • The exclusion of events which could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community, is to ensure that events that are difficult to verify and that occur in a third country are not capable of constituting such disclosure, and not to make a distinction between various business sectors within the European Union and to exclude the possibility that events that relate to a business sector that cannot reasonably be known to the specialised circles of another sector within the European Union may constitute a disclosure to the public (para. 102).
  • The informed user – without being a designer or a technical expert – knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them (para. 125).
  • There is no requirement for the invalidity applicant to demonstrate a second disclosure to users of the type of product relevant to the contested design (para. 133). The product must not be known by the informed user (para. 134).

Accordingly, it can be expected that European design practice will adopt an almost-absoulte novelty in design cases.

 

 

FEBRUARY 15, 2016 | EUROPEAN UNION TRADEMARK REFORM PACKAGE

The upcoming European Union (EU) trademark reform package will lead to significant changes for the trademark practice.

Regulation (EU) No. 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation has been published in the Official Journal of the European Union on December 24, 2015. The Regulation will enter into force 90 days after publication, thus on March 23, 2016.

Briefly, the most relevant amendments implemented by the European trademark reform package are as follows:

•          Terminology changes: The Office for the Harmonization in the Internal Market OHIM will become the European Union Intellectual Property Office. In addition the Community trademark will be renamed the European Union trademark. All existing Community trademarks and Community trademark applications will automatically become European Union trademarks and European Union trademark applications, respectively. Applicants or holders do not have to take any action.

•          Broader definition of an EU trademark: The Regulation is amended to remove the requirement of graphic representability of the trademark. Henceforth, an EU trademark can be registered, when the trademark is represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection. The new definition leaves the door open to registering marks that can be represented in any available technology. This opens the possibility to file odor marks or sound marks, for example. This will come into force from October 1, 2017.

•          Extension of absolute grounds of refusal: In the future, all designations of origin, geographical indications or protected traditional terms for wine and traditional specialties are excluded from registration as a trademark. Above that, the rules for registration of shape trademarks are also applied to other kinds of trademarks with functional signs which are now possible (see above).

•          Extension of rights conferred by an EU trademark: The proprietor of an EU trademark will be entitled to prevent all third parties not having his consent from using an identical or similar sign as a trade or company name or part of a trade or company name. It is further clarified that the proprietor may prevent the use of his trademark in comparative advertising where such comparative advertising does not satisfy the requirements of the Misleading and Comparative Advertising Directive (Directive 2006/114/EC).

•          Increased counterfeit protection: The proprietor of an EU trademark now, under certain circumstances, may prohibit the mere transit of goods as well as certain preparatory acts. The former applies to third parties bringing goods into the EU bearing an infringing sign even where those goods are not being released for free circulation. The latter means that affixing infringing signs on packaging, labels, tags, security or authenticity features or devices or any other means where the risk exists that said means could be used in relation to goods or services, may be considered an infringing act, too.

•          Limitation of the effects of an EU trade mark: An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, the name or address of the third party, where that third party is a natural person. Accordingly, company names are no longer subject to a limitation of the effects of an EU trade mark.

•          Changes in claiming priority: Priority claims have to be filed together with the EU trademark application and have to include the date, number and country of the previous application. The documentation in support of priority claims have to be filed within three months of the filing date.

•          Changes in opposition proceedings: The relevant five year period for proof of use of the earlier mark in opposition proceedings is amended to be that preceding the date of filing, or the date of priority, of the EU trademark application, not the date of publication. Above that, the timing of the opposition period for International trade marks designating the EU is revised to run from one month following the date of publication instead of six months following that date.

•          Introduction of EU certification marks: An EU certification mark shall be an EU trademark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.

•          Introduction of a Mediation Centre: Any natural or legal person may use the Centre's services on a voluntary basis with the aim of reaching a friendly settlement of disputes.

•          Changes in supervision: The European Parliament will have a seat in the management board of the Office.

•          Changes to the designation and classification of goods and services: The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. Proprietors of EU trademarks applied for before June 22, 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing. At latest, such declaration shall be filed at the Office by September 24, 2016.

•          Changes to official fees and new ‘one-class-per-fee’ structure:  The amended fee structure for application and renewal of EU trademarks may be of special interest for future trademark applicants as well as for current trademark holders. The official basic fees for application and renewal of an individual EU trademark by electronic means are reduced to 850 Euro. Said fees however will only cover one instead of three Nice-classes.  The second class will be subject to an official fee of additional 50 euros and additional classes exceeding two then will cost an extra fee of 150 euros each. In summary, the future official fees for an application and for a renewal amount to 850 Euro in one class, 900 Euro in two classes and 1,050 Euro in three classes. Among several other changes, the official costs for filing an opposition are increased to 320 Euro.

 

 

 

NOVEMBER 15, 2015 | VALIDATION OF EUROPEAN PATENTS IN THE REPUBLIC OF MOLDOVA (MD)

Effective November 1, 2015, it is possible to validate European patent applications and patents in the Republic of Moldova at the applicant's request. Unfortunately, such validation is not available for applications filed prior to that date, or for any European patents resulting from such applications.

European applications and patents validated for the Republic of Moldova will have the same legal effects there as national ones, and will be subject to national patent law. With other words, after validation, they will confer essentially the same protection as patents granted by the European Patent Office for the currently 38 member states of the European Patent Organization.

The validation fee currently amounts to 200 Euro for the Republic of Moldova. It must be paid to the European Patent Office within six months of the date on which the European Patent Bulletin mentions the publication of the European search report, or, where applicable, within the period for performing the acts required for an international application's entry into the European phase.

 

 

 

DECEMBER 28, 2015 | STATUS OF THE UNITARY PATENT PACKAGE

By decision of May 05, 2015, the European Court of Justice (CJEU) has rejected the Spanish complaints against the Unitary Patent Package.

Spain’s challenge was directed against two acts implementing enhanced cooperation in the area of the creation of European Unitary Patent, namely against the Regulation regarding the establishment of unitary patent protection (No. 1257/2012) as well as against the Regulation regarding the applicable translation arrangements (No. 1260/2012). Together with the Agreement on a Unified  Patent Court, these Regulations form the so-called Unitary Patent Package.

By means of said decision, one of the last remaining obstacles for the creation of the Unified Patent Court and the Unitary Patent has been removed.

The Package may come into force after ratification by at least thirteen Member States, including, France, Germany and the United Kingdom. Currently it has been ratified by nine of the Member States including France. Accordingly, the Unitary Patent Package is not yet in force.

The Unified Patent Court will comprise a decentralized Court of First Instance with local, regional and central divisions located in the member states and a common Court of Appeal. The Unified Patent Court will be responsible for both classical European patents and unitary patents. There will be exclusive jurisdiction by the Unified Patent Court to hear actions for infringement of patents and of supplementary protection certificates, counterclaims for revocation, revocation actions, actions for provisional and protective measures and injunctions as well as actions against decisions of the EPO relating to unitary patents. During a 7-year transitional period a possibility for opt-out and choice of forum is provided for so that during this transitional period European patents may still be handled by national courts.

The unitary patent is a new version of the European patent granted by the EPO under the rules and procedures of the European Patent Convention. Upon request of the patent proprietor, unitary effect is given for the territory of 26 member states of the European Union participating in the unitary patent scheme.

The unitary patent will co-exist with national patents and with classical European patents for which after grant a validation in the corresponding member states is necessary. This will not be necessary any more, if a unitary patent is chosen. Patent proprietors will in future be able to choose between various combinations of classical European patents and unitary patents. Accordingly, a patent proprietor may choose a unitary patent for 26 Member States of the European Union which participate in the unitary patent scheme together with a classical European patent taking effect in one or more EPC contracting states which do not participate in the scheme, such as Spain, Switzerland, Turkey, Norway, Iceland, etc.

In the meantime The Select Committee of the Administrative Council of the European Patent Organization decided on December 15, 2015 on the renewal fees which will have to be paid for unitary patents. Accordingly, applicants can already now consider whether it will be interesting to choose the unitary patent instead of the classical European patent with respect to the annuity fees which will have to be paid for national parts of the classical European patent versus the unitary patent depending on the number of member states for which protection is sought. Please note that for the unitary patent the annuity fee can only be paid for the participating 26 member states as one fee so that afterwards the patent has to be maintained for all participating member states or has to be given up for all member states.

The fees amount to

- for the 2nd year                      35 EUR,

- for the 3rd year                     105 EUR,

- for the 4th year                     145 EUR,

- for the 5th year                     315 EUR,

- for the 6th year                     475 EUR,

- for the 7th year                     630 EUR,

- for the 8th year                     815 EUR,

- for the 9th year                     990 EUR,

- for the 10th year               1.175 EUR,

- for the 11th year               1.460 EUR,

- for the 12th year               1.775 EUR,

- for the 13th year               2.105 EUR,

- for the 14th year               2.455 EUR,

- for the 15th year               2.830 EUR,

- for the 16th year               3.240 EUR,

- for the 17th year               3.640 EUR,

- for the 18th year               4.055 EUR,

- for the 19th year               4.455 EUR and

- for the 20th year               4.855 EUR.

 

 

 

AUGUST 04, 2015 | GERMAN PATENT AND TRADE MARK OFFICE PARTICIPATES IN THE GLOBAL PATENT PROSECUTION HIGHWAY PILOT

Effective July 06, 2015, the German Patent and Trade Mark Office (GPTO) joined the Global Patent Prosecution Highway (GPPH) pilot. The GPPH pilot allows patent applicants to benefit from accelerated patent prosecution procedures at any of the offices involved in the pilot, if substantial examination already was conducted by any of the other offices involved in the pilot.

As was previously the case, accelerated examination could be requested in the People’s Republic of China, the United Kingdom, the United States, Korea, Canada, Finland, Singapore and Austria subsequently to grant by GPTO.  Such accelerated proceedings were based on bilateral patent prosecution treaties.

By joining the multinational GPPH pilot, GPTO expands the possibility for accelerated examinations to the following Offices: IP Australia (IP Australia), Danish Patent and Trademark Office (DKPTO), Estonian Patent Office, Russian Federal Service for Intellectual Property (ROSPATENT), Hungarian Intellectual Property Office (HIPO), Icelandic Patent Office (IPO), Israel Patent Office (ILPO), Norwegian Industrial Property Office (NIPO), Spanish Patent and Trademark Office (SPTO), Swedish Patent and Registration Office (PRV), Portuguese Institute of Industrial Property (INPI) and the Nordic Patent Institute (NPI).

The GPPH pilot replaces the existing treaties. Only accelerated patent prosecution with the Chinese State Intellectual Property Office (SIPO) will still be based on a bilateral agreement.