From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 21 February 2017

Copyright law in the UAE: it's not what you might think

Practitioners who think that copyright in the United Arab Emirates (UAE), a market of increasing importance for IP owners, is similar to that
in place in common-law jurisdictions, will be surprised to learn that this is not so. Kat friend Vanessa Delnaud of the Dubai office of Gowling WLG puts us straight on some of the major features of copyright law in the UAE.

“It is common practice for many companies operating in the UAE to run their business on the assumption that the principles enshrined in the UAE Federal Copyright Law are the same as those applied in common law jurisdictions. This is not the case. This false belief may have a significant impact on businesses, since it may result in authors' rights arising out of the company's activities not being effectively passed through to the company, rather remaining with the individuals who created those rights, thus putting the company at risk.

In fact, the UAE is a civil law jurisdiction, highly influenced by French law and Islamic law. As such, the provisions of the UAE copyright law fundamentally diverge, in some respects, from copyright law in common law jurisdictions. It is paramount for companies employing people and/or commissioning works in the UAE to be familiar with the typical main differences between the copyright law in the UAE and the copyright laws in common law jurisdictions.


In common law countries, the copyright may initially vest in the employer or another person/entity for whom the work was prepared. For example, in the United States, under the "work made for hire" doctrine, copyright in a work created by an employee within the scope of his/her employment will automatically (without a written assignment) and initially vest in the employer. A commissioner may also own the copyright in a work made by an independent contractor as a work made for hire under certain circumstances. A similar rule exists under the laws of the UK and of Ireland with respect to works made by employees.

In civil law countries, however, ownership of copyrights in a work vests in the author of such work, until the copyright is assigned through a written assignment instrument. (But, in some countries, there may be some specified rebuttable presumptions of transfer with respect to, for instance, employee-created software, audiovisual works and collective works – works involving numerous contributors). Under the UAE Copyright Law, absent a written assignment of copyright in an employment contract or commissioning agreement, the copyright will not be passed through to the employer or commissioner of the work. Rather, it will remain with the employee or the independent contractor (unless the work may qualify as a collective work under Article 1 of the UAE Copyright Law, which may be difficult to prove in practice). This means that a clause merely referring to the assignment of all the rights in the works as works 'made for hire' would be irrelevant and ineffective.

It is important to note that a copyright assignment is only valid under the UAE Copyright law if it satisfies a number of conditions, including that the assignment should: (1) be in writing, (2) expressly specify the rights assigned, and (3) include statements of the purpose for which the rights are assigned and the geographical area in respect of which the rights are assigned. Without an assignment that complies with the provisions of the UAE Copyright Law, companies are at risk of having to defend a copyright infringement claim from the owner of the rights that were not transferred (either an employee or a contractor), and/or a contractual liability claim from their third party licensee/assignee facing a copyright infringement claim from the owner of the rights. Also, if a company cannot prove its ownership of copyright, it may have a significant impact on the admissibility of any infringement claims against potential infringers as well as on its ability to find investors or on the price of its business when trying to sell it.


In common law countries, there is no prohibition on the contractual assignment of a future copyright in a work that has yet to be created. In civil law countries, however, as a general rule, an agreement that concerns all the works or all the works of a specific type that will be created by an author in the future is void. In particular, the UAE Copyright law contains a provision that deems any disposal of the author's future intellectual rights in five or more future works to be null and void. But if, for example, an employee is employed in a creative role, he/she may complete five or more works within a few hours of signing his employment agreement. As a result, in order to overcome such restrictions, we recommend that companies put in place with their employees and service providers in the UAE a system of confirmatory assignments that should be completed and signed by the employee/service provider once it has created and delivered any work in the context of its employment or service agreement.


Moral rights are personal and cannot be assigned. However, in most common law jurisdictions, moral rights can be waived. It is therefore usual practice to see in assignments or licensing agreements governed by US, UK or Irish law, provisions under which authors waive their moral rights. Such an approach is consistent with the functional view of authors' rights in these countries.

On the contrary, in civil law countries, including the UAE, a general waiver of moral rights would ordinarily be unenforceable. This is because it would be equivalent to an assignment of moral rights, which is prohibited in accordance with the traditional approach of copyright in civil law jurisdictions (pursuant to which authors' works are protected as the products of the authors' personality, so that authors should be protected against any modification of their works). An author may only undertake in writing not to exercise his/her moral rights in relation to a specific person or entity, provided that the agreement specifies the work(s) and specific uses to which the undertaking applies. The more detailed these provisions are, the greater the likelihood that they will, if challenged, prove valid and enforceable in court.”

Never Too Late: If you missed the IPKat last week!

Be ready for the 134th edition of Never Too Late!

InternKat Hayleigh Bosher recaps the highlights of some IP blogs.

Kittens in love …
A Never Too Late celebration of Valentine's day!
Neil Wilkof muses about the intriguing topic of keeping the ‘aura’ of artistic works that are preserved by technological means.

Eleonora Rosati discusses Cartier and Others v BSkyB and Others, after permission to appeal was granted by the UK Supreme Court regarding whether costs should be borne by right holders in the case of a blocking injunction granted due to trademark infringement.

Katfriend Danny Friedmann provides an overview of the National IP Strategic Plan, which sets out various measures for the next five years with the goal of improving the protection and enforcement of IP Law in China.

Mark Schweizer discusses G 1/15 decision issued by the EPO’s Enlarged Board of Appeal, whose outcome means that so-called poisonous divisional applications are dead.

Mark Schweizer presents the second part INGRES annual conference, which covered topics such as Trade Secret Directive, Proposal Directive of the European Parliament and of the Council on Copyright in the Digital Single Market, and the MEGA Brands case.

Eleonora Rosati highlights five common mistakes made by students and non-students, including the non-use of ECLI citation system.

Mark Schweizer shares the remarks of the annual conference of INGRES (Institut für gewerblichen Rechtsschutz), which covered diverse patent topics such as the assignment of priority rights and the Agreement on a Unified Patent Court.

Guest Kat Rosie Burbidge reminisces about the "father" of one the most popular video games, whose colorful ghosts and music have entertained to whole generations, including this Kitten.

This Kitten reports the launch of the latest issues of JIPLP and EJLT, as well as forthcoming events.


Never Too Late 133 [week ending on Sunday 29 January] | IP Summit 2016 (First Part) | When a quote becomes famous: even if it was never quite said that way | The trademark licensing question that won't go away: the standing of a licensee to sue | Would you like a side of Mr Justice Arnold on SPCs with your wind turbine? Teva v Gilead, Abraxis v Comptroller and Wobben v Siemens kick of 2017's patent cases | AIPPI (UK) Event: 2016's patent cases - all you really need to know | BREAKING: CJEU rules that EU law does NOT prevent punitive damages in IP cases | Supreme Court rules Act of Parliament is needed to initiate UK leaving the EU | Book review: "From Maimonides to Microsoft: The Jewish Law of Copyright Since the Birth of Print" | Applications for information on infringers can be made outside of IP infringement proceedings | The Michael Jordan case in China – to be continued | Around the IP Blogs | Sunday Surprises

Never Too Late 132 [week ending on Sunday 22 January] | When this Kat doesn't know, he reaches out to Kat readers: what really happened at the dawn of modern commercial trademark use? | Does the economic impact of SPCs necessitate SPC Regulation reform? The European Commission wants to find out | A look at the proposal for the ePrivacy Regulation | Around the IP Blogs! | BGH: to cease means to recall | Social media, "WikiLeaks" and false news in the 18th century: Thomas Jefferson and the "Mazzei letter"

Never Too Late 131 [week ending on Sunday 15 January] | Arrow declarations can be granted: Fujifilm v AbbVie | Guest Post - China's Patent Boom | Watch out lawyers - do you own your name?

Never Too Late 130 [week ending on Sunday 8 January] | Around the IP Blogs | Sunday Surprises | Trademark and co-branding as a badge of … did you say "location"(?) | 15 fully-funded IP PhD positions are calling for candidates | Never Too Late: If you missed the IPKat last week! | Around the IP Blogs | Biosimilars battle in clearing the way - Fujifilm v AbbVie continues | Book review: Maintenance time and the industry development of patents

Monday, 20 February 2017

Monday Miscellany

The 2017 U.S. Chamber International IP Index entitled “The Roots of Innovation” is now available. The Index provides a roadmap of the IP environment of 45 countries. The results can be also consulted via the interactive tool on the Global Intellectual Property Center of the U.S. Chamber of Commerce website.

On the road of IP environment!
On 28 January 2017, the depletion period for the transitional provisions for the repeal of section 52 of the Copyright, Designs and Patents Act 1988 ended. Therefore, all the replicas or unauthorized copies of artistic works industrially manufactured must be sold or destroyed. 

The first WIPO-WTO Colloquium for IP Teachers and Researchers in Asia will be taking place from 20 until 22 February 2017 in Singapore. Participants of the Colloquium may also attend the 2nd Works-in-Progress Conference “IPScholars Asia” which will take place on 23 and 24 February 2017 at the Singapore Management University. The Conference is a good opportunity for scholars in the field of IP Law and related issues in Asia to present their works in progress. There is no registration fee for attending the Conference. More details, here.

The Conference Copyright 4.0 will take place on 22 February 2017 at the Faculty of Law of the University of Geneva. The Conference will discuss the challenges of IP Law from an international, European and Swiss perspective. Sessions will be in French and English with no simultaneous translations. More details, here.

Free webinar on “IP Commercialization Tactics for Wealth Generation & Innovation”. Patrick Terroir will discuss some means for commercializing IPRs such as patent brokerage, IP sales and licensing. The webinar is hosted by OxFirst and will take place on 23 February 2017 at 5 pm (CET). More information and registration here.

“Showbiz and more … Intellectual Property in the Entertainment Industry” will take place from 19 to 21 March 2017 in Puerto Rico. The event is organized by the Inter-American Association of Intellectual Property (ASIPI) and includes topics such as the challenges of music streaming, the economic model of the big soccer clubs, live presentations and the contracts required and, the industry of video games. More information here.

A call for papers for the 9th Annual Junior Scholars in Intellectual Property (JSIP) Workshop organized by the Michigan State University College of Law. The Workshop will take place on 17 and 18 May 2017 and involves receiving feedback from established scholars in the field of IP Law, communications and cyberlaw. Deadline for submissions is 6 March 2017.

The Faculty of Law at the University of Szeged is calling for papers for the 9th Annual Conference on Innovation and Communications Law (CICL), which will take place on 29 and 30 May 2017 in Szeged, Hungary. Abstracts must be submitted before 31 March 2017 by sending an email to Prof. Péter Mezei at More information, here

*Picture: “Socks the Cat Perched on the Backseat of a Van”, 09/16/1993, William J. Clinton, White House Photograph Office.

Major changes to trademark law in Turkey: read all about it

The long-awaited New Turkish IP Code of Industrial Property, no. 6769, entered into force upon publication in the Official Gazette of January 10, 2017. The new Code repeals and replaces the Decree Laws on Patents and Utility Models, Trademark and Service Marks, Industrial Designs and Geographical Indications. The new Code is set to profoundly change the IP landscape in Turkey, affecting the legislative, administrative and professional components of the law. Kat friend Okan Can, of the Deris Law Firm in Istanbul, summarizes the changes to the trademark law; a further report on the new patent law will follow.

Several major changes have been introduced regarding registrability.
1. Colors and sound marks have been included in the definition of signs that may be protected as a trademark. The wording of the Code also paves the way for motion marks.

2. Trademark applications consisting of a registered geographical indication will be rejected by the Office. Therefore, words that have been registered as a geographical indication will no more be accepted for registration as a trademark.

3. The Code introduces the use of a Letter of Consent, by which the owner of an earlier trademark may consent to the registration and the use of an identical or similar trademark later filed for the same or similar goods or services. The absence of the possibility to submit a letter of consent under the former law was criticized.
Concerning oppositions, these changes are noteworthy:
1.The opposition period- which used to be three months, has been shortened to two months.

2. Bad faith is explicitly mentioned as a ground for filing an opposition.

3. The Code, unlike the former law, enables the applicant of an opposed trademark to require from the opponent show evidence of the use of the trademark on which the opposition is based, if the five-year grace period for non-use of the opponent’s trademark has passed. The same non-use argument can be claimed in a trademark infringement or cancellation action.

4. The parties may settle an opposition through mediation as per the Mediation Law.
The Patent Office will implement the administrative proceedings for a cancellation within seven years of entry into force of the Code, namely by 2024. These proceedings will include cancellation of a registered trademark on grounds of:
1. Non-use;

2. Becoming generic (on the products / services on which the trademark is used);

3. Deceiving the public (as to the characteristics, quality or geographical source);

4. Use of a certification mark contrary to the terms of its technical regulation that are provided to the Patent and Trademark Office.
Concerning infringement, the following changes are especially interesting:
1.The Code specifically provides that the use of a trademark as an essential part of a company/establishment name, or its illegal use in comparative advertisements, is prohibited.

2. Mere registration of a trademark does not constitute a legitimate defense against an infringement claim brought by the owner of an earlier IP right. This is a material change to the law, as the previously- settled Supreme Court case law deemed the mere fact of registration of a mark as a legally protectable use until cancellation of the mark by the Court. The same non-use argument can be claimed in a trademark infringement or cancellation action.

3. The Code introduces the international exhaustion principle instead of the national exhaustion principle provided by the former legislation.
As for criminal aspects, the Code provides for two notable provisions:
1. The Code introduces criminal provisions for trademark infringement only; there are no corresponding criminal provisions concerning patent, industrial design or geographical indications.

2. The Code regulates criminal offences concerning the counterfeiting of trademarks by providing that producing goods or providing services, exposing for sale or selling, importing or exporting, purchasing, keeping, transferring or storing for commercial purposes, by means of a counterfeit mark that infringes the registered trademark rights of a third party, is subject to a term imprisonment of between one and three years as well as the imposition of a monetary fine.

Thursday, 16 February 2017

Tartan Army scores own goal?

The defendants' magazine
Via Katfriend Gill Grassie (Brodies LLP) comes a trade mark story from Scotland, that tells the tale of the trade mark ‘Tartan Army, its alleged infringement, and the resulting decision by the Court of Session. The case is Tartan Army Ltd v Sett GmbH and Others [2017] CSOH 22. 

Here’s what Gill writes:

This was a trade mark/passing off case relating to UK and EU registered marks ‘Tartan Army’ (the Mark) decided just last week by the Court of Session in Edinburgh.

It has all the ingredients of a hard-fought football match between two rivals determined to get the better of each other.

It involved numerous tactical moves, lots of emotion, a few penalties, many injuries and stoppages, extra time and ultimately an own goal just before the final whistle.

The stakes

The ‘honourable referee’ was Lord Glennie, who is an IP designated judge in the Court of Session.

Ultimately, this referee decided there was no infringement or passing off and that a number of trade marks in various classes should be revoked or specifications restricted. 

The case started as long ago as 2009. Now, on the face of it, that seems an inordinately long time to reach what is only the first instance decision. The case rather surprisingly was not brought as an IP case and so was not dealt with under the strict IP case management rules. In addition, it was stayed for a period of a whole 4 years from 2010 to 2014. The lack of any case management followed by this long stay contributed to the delays and only when the case was ultimately transferred to the IP procedure was any swift and focused progress really made. 

Despite the obvious determination by both sides to see this through, there was not a huge amount at stake. The claim for damages and net profits was dropped - probably because the Mark had not been particularly successfully exploited – and the only claims were for injunctive relief (interdict), destruction of infringing materials and expenses/costs. 

The marks

The pursuers (claimants) owned  a number of UK and EU registered marks in respect of the Mark. It seems that some of the more relevant EU trade marks were allowed to lapse in error along the way with applications for new ones, in exactly the same classes, being made as late as May 2016. After a non-use attack ultimately, the only relevant ones left standing in the trade mark team were those in classes 25, 32 and 41. 

Notably there was only one UK valid trade mark in class 25 (articles of clothing, headgear, footwear etc). There were valid EU trade marks however for all three of the relevant classes. [Class 25 being for articles of clothing, headgear and football strips, Class 32 for beers, minerals and aerated waters and other non-alcoholic drinks … Class 41 for publishing services; on line publishing, the provision of on line and electronic publications and digital music, entertainment, sporting and cultural services, information and advisory services related to all of these.]

A tartan army
The beautiful game?

The case did not ultimately turn any issue on disputed facts. Rather it was all about the law as applicable to those facts, ie the rules of “the beautiful game” of trade mark law! 

Just about every point imaginable was argued. 

The pursuers were successors in title to the Mark with first dated UK registration being in 1996. The mark was filed in numerous different classes with widely drafted specifications. Perhaps the zenith of its use was in 1998 coinciding with that 1998 World Cup. It was used for fan merchandise and a few licenses were granted but the commercial results were not great. Use was sparse and intermittent but not commercially significant since around 2008. It had only been used in classes 25, 32 41- albeit not across the full width of the specifications, since 2010.

Personal bar/consent (estoppel) – the first goal to the pursuers’ team!

The defenders were publishers of a magazine called, “The Famous Tartan Army”.  They had approached the then owners of the Mark in 2005 for permission to use the name ‘Tartan Army’ to produce a magazine. An email had been sent on behalf of the then owners on 2 September 2005 authorising use for a magazine called, “The Famous Tartan Army”. Nothing was said in the email as to whether this authorisation  was revocable or not. The pursuers in the action had purported to terminate any informal licence which may have  been granted by that email, by a subsequent email of 31 July 2008. The defenders attempted to rely upon personal bar/consent (estoppel) to argue reliance on the original email granting consent such that it could not later be cancelled. However, this was undermined by evidence that the defenders had already begun to prepare to use the Mark for a magazine with the relevant title in 2004/05.

The judge indicated that he had no doubt that even if the defenders had not received the original email, they would have carried on in any event and used the name for that purpose. In addition, permission, unless otherwise stated, could be revoked on reasonable notice, which would be determined by the specific circumstances. Here notice had been given in July 2008 via the relevant email and the action was not started until 2009. This was more than sufficient time here. 

Also any licence in the 2005 email was personal and not transferable and the owners of the Mark had changed through assignations etc since then. Further the decision to revoke the licence in the later email only came about in light of concerns that the defender’s use was going beyond mere production of a magazine in any event. 

Thus this argument was rejected.

Validity - a draw?

There was also a validity challenge on two main grounds – absolute grounds of refusal and non-use for five years.

The former attack was based on an argument that the trade mark was incapable of distinguishing goods or services etc. Section 3(I)(a)(b)(c) and (d) of the UK Trade Marks Act 1994 were all relied upon. 

The ‘honorable referee’ blew the whistle on this pretty quickly!

Even if the Mark would have generic meaning for the mass of Scotland’s football fans, it could still be distinctive in the sense of being capable of identifying goods or services for which the trade mark was registered as coming from a particular undertaking as opposed to identifying the actual undertaking as the source. That dealt with (a) and (b). Also the fact that the term might often be used as a badge of allegiance to the Scottish Football Team (the Arsenal and Tottenham cases etc) would not prevent its registration as a trade mark.  As (c) and (d) were merely specific instances of lack of distinctive character, these grounds were also dismissed accordingly. 

There was also an argument of 5-year non-use which was a little more successful, with the registered trade marks in classes 24, 27 and 35 all being deleted. This left only classes 25, 32 and 41 standing but with some restrictions to the specifications. 

There was a very interesting argument by the pursuers as an attempt to fall within the exception to non-use by trying to establish that there were proper reasons for it. This was, as the judge put it, “the ebb and flow of the fortunes of the Scottish Football Team (presently more ebb than flow) made it perfectly reasonable for the pursuer to seek a wide protection for the Mark without actually making use of the Mark in relation to items such as carpets, which were only likely to be marketable as and when the Scottish Football Team qualified for a major championship.  This applied across the whole range of classes protected by the trade marks – the larger and/or more expensive the item, the more justification there was for putting off use of the trade mark in relation to the use of that item until the national team enjoys greater success.  He compared the situation to that of World Cup Willie, a Mark in respect of which the Court had accepted that it was reasonable not to have used it for many years.”

However the referee in this instance did not accept that comparison and made the point that World Cup Willie was specifically linked to the success of the English football team on home soil in 1966 and commented that, “it was not surprising that it will have lain dormant for many years since then without that non- use necessarily resulting in revocation.”

Don't overlook the importance
of (case) management
In contrast, the judge remarked that the Mark here had “never specifically attached to one particular occasion” and that the use had been continued in certain respects in relation to clothing and a website despite the lack of success of the Scotland football team.  It was not the case that the Mark’s use had been put into abeyance awaiting the prospect of future success. This argument therefore also failed dismally.

The ultimate own goal?

All of the above was however in vain as the ultimate own goal was that what was left of the pursuers’ brand armoury was held not be infringed.  It was decided very briefly by the judge that there was no infringement or passing off.  The marks were not identical given the use of the qualifier ‘Famous’ which was more than just a mere descriptor. Whilst the marks were similar and  in so far as use for a magazine was concerned  fell within class  41 there was no likelihood of confusion or evidence of such.  There was also a case argued for infringement by use for travel services but the relevant EU trade mark was no longer in play so it was dismissed.
Furthermore, it was not a well-known trade mark under Section 10(3).  For similar reasons, the case on passing off also failed.

Injury time and to appeal or not to appeal?

We are now in the long overdue period of injury time and it remains to be seen if the pursuer will still have sufficient passion (not to say the funds) to lodge an appeal.

Lessons learned

The case got off to a bad start by not being designated as an IP case.  Doing so at the outset would have avoided long delays and considerable (no doubt) wasted costs. The IP Court Rules and Procedure offer very close and strict case management of the proceedings  from the earliest possible stage – ie within just over a month of the case being started. Use of these rules would have kept expenditure and time under control, and added  considerable focus to the action. 

Secondly, use your registered trade mark!

Thirdly, don’t fight for the sake of it, especially when the tide is ‘ebbing away’ rather  rapidly. 

Of course had the Scottish National team been playing in better form over the period in question things might have turned out quite differently …”

Book review: "Brandfather: John Murphy, The Man Who Invented Branding"

Most of us like to read the story of successful people. And there are few personalities in the IP world whose aura is so identified with success as that of John Murphy. Murphy's name may not be well-known for the under 40's crowd, since his glory days were in the 1980's and 1990's, when he created Interbrand and quickly turned it into a (the?) pioneer in the emerging field of branding and brand valuation. Having sold the company in 1993, Murphy has been engaged since that time mainly in specific business projects. Nevertheless, for those who recall him in his full active glory, the publication of his short memoir, "Brandfather: John Murphy, The Man Who Invented Branding", promises a chance to relive those times from the vantage of a person who was central to it all.

What the reader gets is a large dose of the author, as he interweaves himself into numerous anecdotes, taking us down the path of his career since the 1970's. Murphy recounts how he moved from a job in corporate planning to the creation of a brand naming (e.g., PROZAC and ZENECA) and trademark prosecution company to the establishment of Interbrand and, in particular, the development of the field of brand valuation. In doing so, he seems to have a wonderful recollection of personalities and events, reminding us how little things can have a huge impact on one's business trajectory. Murphy did not intend to become a brand naming or brand valuation guru, but he was adept in spotting opportunities and taking advantage of them.

This reviewer found Murphy's description of how his team managed to turn a commission for valuation into the foundation for the field of brand valuation of particular interest ("… indeed, establish the entire concept and grab the market for ourselves"). As he tells it, the seminal work was done literally over a weekend later to be validated by the professional and academic community. To be clear, this is not a book about learning the art (and science?) of brand valuation. Murphy has published others works in this vein for those who wish to learn how it is done (e.g., here). Rather, it is an account about how circumstance, vision and grit can be brought to bear to make the most of a business opportunity. In reading the book, the words "first mover", "luck" and "fun" come to mind. All three terms seem to have been significant components in Murphy's success.

Murphy does not suffer from shyness or self-deprecation; he often reminds the reader that the book is ultimately about him. Also a bit more context would have been nice, such as the rise in corporate interest in the 1980's in something called brands (think about the iconic end-of-the year 1988 cover story that appeared in The Economist—"The Year of the Brand"). But that is also the charm of the book. Murphy has enjoyed a singular career that continues to impact on the way that trademarks and brands are treated. More power to him. For those who want a narrow window into how this came about, go out and read this slim volume.

Brandfather: John Murphy, The Man Who Invented Branding, by John Murphy, 184 pages,The Book Guild Ltd., 2017, ISBN:978 1911320 357, is available here.

Review by Neil Wilkof

Tuesday, 14 February 2017

IP Summit 2016 (Second Part)

Be ready for the second part of this Kitten’s report! Check out the first part here.

Unconventional Trade Marks under the New EUTM System

The conference was chaired by Dr. Thies Boesling. The speakers, Dimitris Botis (EUIPO) and Simon Barker (FREETHS/UK), provided an overview of the registrability of unconventional trade marks in the context of the latest amendments to the EU Trade Mark Directive and the Regulation.

Botis noted that, for filing purposes, even though the graphic representation requirement was deleted from the definition of an EU trade mark, according to Recital 9 of the Trade Mark Regulation, the representation of the sign must still fulfil the so-called Sieckmann criteria: it should be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In addition, the mark “should be permitted to be represented in any appropriate form using generally available technology.”

In this regard, Botis discussed some of the applicable rules regarding the representation of an unconventional trade mark. For 3D trade marks, 3D modelling in motion and CAD formats are now accepted. For position marks, visual means (i.e. broken lines) must indicate the disclaimed part and for pattern marks, the pattern must be reproduced repetitively, so for both types of marks, the description of the sign is kept as a complement to delimit the scope of protection. For colours per se, it is compulsory to indicate the colour codes. For sound and motion marks, even though a sound or video file will suffice, musical notation and a series of still images can also be used.

From the point of view of a practitioner, Simon Barker discussed some notable cases related to the registrability exclusions set forth in article 7(1)(e) of the Trade Mark Regulation. In particular, he provided an overview of the Nestlé Kit Kat bar, Yoshida knife handle, Rubik’s cube, Trip Trapp chair and London Taxi Corp cases, which involved either the registrability exclusion of a shape resulting from the nature of the goods, the necessity of obtaining a technical result or adding value to the product.

Simon considered the particular challenges in registering a 3D trade mark by having to show by, virtue of acquired distinctiveness, that a shape fulfils the essential trademark function. This Kitten found the session most interesting because these registrability exclusions have intrigued her for a long time, particularly the one about the substantial value added to the product.

The growing importance of online services and restoring the “value gap”

The conference was chaired by Fabienne Brison. The speakers, Jackie Alway (Universal Music Publishing), Pierre Mossiat (Strictly Confidential) and Lauri Rechardt (IFPI) provided insights about the so-called "value gap" within the context of article 13 of the proposal for a Directive on Copyright in the Digital Single Market.

First, Lauri Rechardt explained that the recording industry is continuing to face difficult times. Even though there is growth in streaming as revenue model, there still remains a mismatch between the levels of consumption and the revenues paid to creators and producers. He stressed that less than 4% of industry revenues are paid in connection with User Uploaded Content (UUC) services, despite having a consumer basis of around 900 million users. Lauri also highlighted that UUC services, being the largest providers of music on-demand, are undermining the development of digital markets because they are not liable for the uploading of infringing content.

Jackie Alway stressed that licensing benefits the creators, fans and partners, fostering creativity and maximising commercial opportunities. In order to fix the market distortions faced by the music industry, it is necessary to amend the current legal framework so that right holders can negotiate fair terms with the UCC platforms. In addition, she mentioned that further consideration regarding the prevalence of takedown notices in that 94% of them are recidivist notices.

Pierre Mossiat (Strictly Confidential) remarked that streaming is the future for the music industry, as is evidenced by the decrease in revenues derived from the sale of physical means (i.e. compact discs and vinyl records). He stressed that streaming brings to the fore legal issues that need to be solved, which is more urgent than takedown notices for restoring the value gap.

The social programme included a Gala Dinner at Chalet Robinson, where in a relaxed atmosphere participants had the opportunity for networking as well as meeting old colleagues and friends. This social event was a delight!

*Pictures are courtesy of Premier Cercle team.

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