Key International Patent Offices Consider Impact of AI

On 15/16 January representatives from the IP5 offices (the Chinese, European, Japanese, Korean and US Patent Offices) and WIPO (the World Intellectual Property Office) held their first IP5 Task Force meeting on New Emerging Technologies and Artificial Intelligence in Berlin.

The task force has been set up to consider legal, technical and policy aspects of AI and other new technology. This includes the question of what happens if an AI system develops a new invention. Can a patent be obtained for such an invention? Who is the inventor? Who is the owner? Can rights in the invention be transferred to a company that owns the AI system?

The inaugural Task Force meeting follows a recent decision by the European Patent Office (EPO News) refusing two patent applications  (EP Appn 18275163 and  EP Appn 18275174) where the “inventor” was an AI system.

By Tom Faulkner

Color trade mark protection in the fashion industry

Colour inevitably plays a central role in fashion—and public attitudes about fashion—from Coco Chanel’s iconic little black dress to Meryl Streep’s unforgettable cerulean sweater monologue in The Devil Wears Prada to the collective journalistic obsession with the shade known as “millennial pink” in more recent years. The Pantone Company, known for its proprietary colour-matching system, even releases a “Fashion Color Trend Report” coinciding with New York Fashion Week as a guide to forthcoming colour trends in fashion.

Colour is also a profoundly powerful marketing tool, with companies like Tiffany & Co and Cadbury jealously guarding single colours associated with their brands. But when and to what extent should colours be protected by law as trade marks? While consumers may well come to recognise certain colours or colour combinations as identifying the source of products, there is a strong interest in keeping colours available for use by competitors, particularly in the fashion industry, where aesthetics, trends, or the need to communicate a certain message may demand a particular palette.

The eye-catching red sole of a Christian Louboutin stiletto cuts right to the heart of this conflict between genuine widespread brand recognition on one side and the need to maintain free competition and protect creative expression on the other. Unsurprisingly, Louboutin’s registered trade marks in the contrasting red sole have been litigated in numerous jurisdictions, with divergent results.

In 2018, the CJEU gave a judgment in favour of Christian Louboutin on a request for a preliminary ruling on the question of whether its mark of a red sole shown on the contour of a shoe constituted a three-dimensional shape mark. The CJEU ruled that mark did not consist “exclusively of a shape” and so was not subject to the additional restrictions on registration.

While this was hailed as a victory for Louboutin, the judgment interpreted an earlier provision of the Trade Marks Directive that applied only to shapes. The amended Article 4(1)(e)(iIi) in Directive 2015/2436, however, applies to “the shape, or another characteristic, which gives substantial value to the goods”. The CJEU has since clarified that the amended article does not have retroactive effect on previously-registered marks. But it is unclear how this will affect future colour-mark registrations; there could easily be challenges based on the argument that a colour or combination of colours can give substantial value to goods by virtue of aesthetic merit.

Anyone thinking about protecting a colour mark in the EU must also take note of the CJEU’s recent judgment in Red Bull (C‑124/18), where it rejected Red Bull’s request to set aside the General Court’s judgment relating to invalidity proceedings for its silver-and-blue combination colour mark (below). The General Court had confirmed that the mark and description was insufficiently precise and durable to meet the requirements of graphic representation—Heidelberger Bauchemie, (C‑49/02) having established that a “combination of colours must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way” in order to meet the requirement of graphic representation.

Not unlike Louboutin, the court in Red Bull was interpreting a provision from an earlier version of the EU Trade Mark Regulation under the shadow of recent changes to the law; under Section (1)(4)(b) of  Regulation 2017/1001, the requirement of graphic representation has been removed, instead requiring marks to be represented “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”. While this might appear at first glance to be a relaxation of the requirement of graphic representation, the General Court in Red Bull asserted that the new wording is, in fact, more restrictive because itexpressly incorporates into the body of that provision the objectives identified in” the cases of Heidelberger and Sieckmann.

Just like fashion, trade mark law has its trends. With the changes to European trade mark law, and the CJEU’s approach in Red Bull,  it is looks like the latest trend in Europe is towards making it more difficult to protect colours as trade marks.

By Dr Barbara Lauriat, Senior Lecturer, The Dickson Poon School of Law, King’s College London.

The history of nanotech

Despite nanotechnology being a relatively recent development in scientific research, the development of its central concepts have taken place over a longer period of time. (more…)

What patents already exist in nanotechnology?

According to StatNano, a total of 13,046 published patent applications related to nanotechnology were filed at the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) in 2018. (more…)

Cleveland Scott York’s top tips on how to trade mark a medical device

Our top tips for effectively protecting marks in the medical devices sector split into recommendations which apply generally in relation to all industries, and those which are sector-specific. (more…)

OHIM renamed European Union Intellectual Property Office

As part of a package of reforms of EU trade mark law, OHIM (also known as the CTM Office) has now been renamed the European Union Intellectual Property Office (EUIPO).

 New terminology will also now be used for “Community Trade Marks” (CTMs) – they will now be known as European Union Trade Marks (EUTMs).

 The Office’s revamped website, reflecting these changes, can be found here:

 https://euipo.europa.eu/ohimportal/en/

 We report on the most significant of the trade mark law reforms here.[:]

The Glee Club Wins but What About Series Trade Marks?

The English owner of THE GLEE CLUB trade mark achieves victory against Twentieth Century Fox – but significant questions of law about series trade marks remain.

Comic Enterprises Limited opened a stand-up comedy venue in Birmingham, under the name THE GLEE CLUB, in 1994. It has operated a small number of similar venues in the UK since that date, although latterly also providing live and recorded music, as well as stand-up comedy. In 1999, Comic Enterprises registered its THE GLEE CLUB mark, as a series mark registration, and as represented above. (One of the representations of the mark claims colour as an element and the other is simply in black and white.)

Twentieth Century Fox Film Corporation launched a musical comedy television series in the UK, under the name GLEE, in late 2009 and has since generated significant publicity and audience. Comic Enterprises sued Twentieth Century Fox for infringement of their THE GLEE CLUB registration and were successful in both the High Court and now most recently in the Court of Appeal. A large proportion of the Court of Appeal’s judgment focuses on the question of the evidence of confusion adduced by the Claimant and points of law about the test for a likelihood of confusion.

One issue that was raised by the Court of Appeal, however, and was not resolved was that of the meaning and scope of protection of “series” trade marks under the UK Trade Marks Act. (Series mark registrations, as historically understood, are intended to facilitate protection of variations of marks, where those variations differ only as to “matters of a non-distinctive character”. An example of a historically acceptable series might be a cartoon character in a variety of different poses.)

In fact, the Court of Appeal went so far as to say that the question arose at the appeal hearing as to whether series marks were compatible with EU law. Whilst the Court appreciated the general importance of the issue, it indicated that it would, “if necessary”, give further directions for the resolution of this issue, after giving its main judgment. It is not clear whether the Court of Appeal will at a later date give further judgment on this issue.

In the absence of any further judgment, it is clear that a very serious difference of opinion has been raised between the UK Intellectual Property Office and the High Court as to the meaning and scope of series trade marks. The Court of Appeal explained that the UK IPO’s position, as set out in its written submissions to the Court, is that series marks are wholly compatible with EU law and that:

“a series of trade marks is a bundle of separate and individual trade marks each of which must comply with the requirements of the Directive, and each of which is entitled to the protection afforded to every trade mark under EU law”.

This is in direct contrast to earlier findings of the High Court, for instance in the decision of Mr Justice Birss, in Thomas Pink Limited v Victoria’s Secret UK Limited, where the judge found that:

“When faced with a series mark it is necessary to bear in mind that there is only a single registered trade mark. All the instances in the series are manifestations of the same mark. So in order, for example, to carry out a comparison with a sign so as to assess infringement, it is necessary to work out what the single registered mark is so as to provide a single point of comparison with the sign alleged to infringe”.

This would appear to reflect an entirely different approach to the meaning of a series of trade marks and the infringement rights granted by such a registration. Absent resolution of the issue by the Court of Appeal, therefore, we are left with the following unattractive and contradictory propositions:

1          According to the Court of Appeal, series marks may in fact be contrary to the requirements of the underlying EU Trade Mark Directive (and, as a result, potentially may be invalidly registered);

2          According to the High Court, registration of a series of trade marks constitutes protection for, in essence, a single trade mark and relevant tribunals need to assess what is the underlying single mark protected (that may not be immediately apparent on the face of the register);

3          According to the IPO, registration of a series of trade marks constitutes a bundle of different and separate, but related, trade marks.

In THE GLEE CLUB case, the registration in issue comprised two quite closely related, though not identical, trade marks. There are, however, a very large number of series mark registrations on the UK register which comprise more significant numbers of marks, with more significant variations. It is hoped that the UK Courts will soon have the opportunity to bring clarity to this issue, given the uncertainty that now is placed on the meaning and scope of protection of those series marks.

Brexit: its impact on trade marks in the UK

David Cameron’s attempt to renegotiate a new settlement between Britain and the other 27 countries of the EU is a hot-news topic, but very little has been written about the impact of a Brexit on Trade Mark law in the UK. As most of our clients will know, whilst it is possible to protect trade marks in the UK by filing national applications at the UK IPO, it is also possible to protect them in the UK via the Community Trade Mark (CTM) system – soon to be renamed the EU Trade Mark system. The CTM system, operating in parallel with the national filing systems in each EU country, has been remarkably successful, given that it is a relatively inexpensive way of protecting marks in all 28 member states. Indeed, many of our clients have opted for the CTM system over the years precisely because of the cost benefits.

If the UK were to leave the EU, the option of protecting trade marks in the UK via the CTM system would disappear. But what would happen to existing CTMs?  We have the example of how the CTM system was affected by new member states joining the EU – in those cases, complex transitional measures were implemented to seek to adjudicate on the trade mark conflicts that would inevitably arise. Little has been written about what would happen if a country were to leave the EU. Given Britain’s complex relationship with the EU, there is likely to be a long transitional period, and events would not move quickly. But one option may be for existing CTMs to be divided into CTMs and national UK marks, as an automatic process, or as a process which requires the Trade Mark owner to make an application to do so. And once the CTM has been divided in this way, it is clear that any remaining CTM registration would not be sustained on the basis of use in the UK, and would have no further effect in the UK. Nevertheless, there will likely be vigorous negotiation on precisely how the restructuring is achieved since both British companies, and companies abroad, will likely have a keen interest in maintaining trade mark protection in the UK, given the size and importance of its market.

For the moment, whilst we know that a referendum will take place, we do not know when this will be, or, of course, the outcome. In the event, however, that the UK opts to leave the EU, there remain wholly unanswered questions as to how this would affect trade marks and other intellectual property rights in the UK which have been the subject of European harmonisation for the past thirty years at least.

High Court Ruling on Nestle’s Four Finger Chocolate Bar Shape – Not Registrable As A Trade Mark

The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:zh]The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:ja]The High Court of England and Wales has just rejected Nestle’s appeal against the Registrar of Trade Mark’s decision to reject the shape of its four-finger KITKAT chocolate bar for trade mark registration in the UK.

The UK Registrar found the shape applied for to be unregistrable for all goods except “cakes” and “pastries”, and, found that Nestle had demonstrated insufficient evidence of its acquired distinctiveness through use.

Nestle’s appeal challenged the Registrar’s findings. In particular Nestle argued that it had shown sufficient distinctive character acquired through use, via the results of a survey in which over half of those who took part recognized or used the word “KitKat” in their response, thus identifying the image of the four-finger shape with Nestle’s KITKAT product.

Cadbury cross-appealed against the acceptance by the Registrar of the mark for “cakes” and “pastries”.

In an earlier judgement last year, Justice Arnold allowed Cadbury’s cross-appeal and found that the Registrar was incorrect to accept the mark for registration for “cakes” and “pastries”. Arnold referred to the CJEU for a preliminary ruling on 3 questions (concerning acquired distinctiveness of the mark through use, and, necessity for the product to be shaped in a particular way in order to obtain an technical result).

Following the CJEU ruling, Justice Arnold has now completed his decision, and has found that the Registrar of Trade Marks correctly held that the shape of the bar was devoid of inherent distinctive character, and, that Nestle had not shown sufficient acquired distinctive character in it, as a trade mark.

In particular, the Registrar had been correct to conclude that whilst Nestle’s survey had shown association of the chocolate bar shape among consumers with the KitKat product/Nestle,  it hadn’t shown that consumers were, in fact, relying on the shape itself in a trade mark sense, ie as the indicator of the source of the product:

“In my view, the applicant has shown recognition of the mark amongst a significant proportion of the relevant public for chocolate confectionery (only), but not that consumers have come to rely on the shape to identify the origin of the goods. This is because:

  1. i) There is no evidence that the shape of the product has featured in the applicant’s promotions for the goods for many years prior to the date of the application;
  2. ii) The product is sold in an opaque wrapper and (until a few months before the filing of the application – and then only for a subset of the goods placed on the market), the wrapper did not show the shape of the goods;

iii) There is no evidence – and it does not seem likely – that consumers use the shape of the goods post purchase in order to check that they have chosen the product from their intended trade source.

In these circumstances it seems likely that consumers rely only on the word mark KIT KAT and the other word and the pictorial marks used in relation to the goods in order to identify the trade origin of the products. They associate the shape with KIT KAT (and therefore with Nestlé), but no more than that. Therefore, if it is necessary to show that consumers have come to rely on the shape mark in order to distinguish the trade source of the goods at issue, the claim of acquired distinctiveness fails.”

The full judgment of the court can be found here.[:]

EU Trade Mark Law Reform

The Community Trade Mark Amending Regulation was published in December and will enter into force on 23 March 2016. This new legislation implements long-discussed proposals for reform of EU trade mark law. As part of the reform and updating package, OHIM (the CTM Office) will be renamed the EU Intellectual Property Office (EUIPO) and the CTM will be known as the European Union Trade Mark.

There are a wide range of substantive changes to the law including most prominently:

• the abolition of the “3 for the price of 1” class fee structure for both trade mark applications and renewals. Instead, fees are incurred on a class by class basis. Notwithstanding this, applicants can expect to make significant savings as fees in general will be reduced (starting at €850 for filing in one class and an additional €50 for each extra class).

• an amendment to the period for filing opposition to EU designations of International Trade Mark Registrations. This period currently begins 6 months after publication and expires 9 months from publication. Under the new rules, the period runs 1 month from publication and expires 4 months from publication.

• The setting of a six-month period for proprietors of existing trade mark registrations to amend the specification of goods/services under their trade marks to be IP TRANSLATOR-compliant, where they wish to do so. (The IP TRANSLATOR decision of the Court of Justice held that where a proprietor of a trade mark filed before 22 June 2012 had used in its specification the “class heading” description of the Nice Classification, that description would be deemed to include not all of the goods/services of that class but those goods/services in the alphabetical list of the Nice Classification – which could still be a significantly broader range of goods/services than would be the case under a “literal” reading of the class-heading description used. The new Regulation now obliges a proprietor within the grace period to explicitly state that it intended to cover all goods/services in the alphabetical list, when using the class-heading description, in order to obtain that coverage. The intention being to ensure as far as possible that in the future specifications in CTM/EU registrations “mean what they say”.)

• the removal of the requirement to represent a trade mark ‘graphically’ in an application, enabling potentially easier registration of non-conventional marks such as sounds/smells etc.

The broad thrust of these reforms is to modernise the EU trade mark system and increase accessibility for smaller businesses.

Meanwhile, the European Commission has published the new Trade Marks Directive which aims to bring national trade mark systems further into line with each other. This will come into force on 13 January 2016 but Member States have a 3 year period to implement the required changes.