Newsletter IP law 6/18

AMENDMENT TO INTELLECTUAL PROPERTY LAW

A draft amendment to the Intellectual Property Law (hereinafter “IPL”) has been introduced to the Sejm.  It contains a number of proposed changes and is primarily related to the necessity of implementing Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks. We discuss below several important changes proposed in the amendment.

NEW TRADEMARK DEFINITION

One of the most important changes proposed by the draft is the new definition of a trade mark.

The new regulation lifts the requirement that a graphical representation of the trade mark be attached to the application. Thus, the applicant will be entitled to present the mark in a form of his choice, with the use of generally accessible technologies. However, the manner of presentation must be unambiguous and precise. This change will result in an increase in applications for the so called unconventional marks (e.g. fragrances or sound marks, the latter being even mentioned in the catalogue of examples in Art. 120 (2) IPL). Applicants will now be allowed to present their marks in the form of e.g. audio files rather than the hitherto required musical notation. The changes also apply to motion marks, which under the new regulations can be presented as videos rather than as still pictures with verbal description, which was the case previously.

The change is important in that the current definition of trademark de facto precluded from registration many untypical mark forms. The Patent Office will face a considerable challenge of having to ensure the “technical” possibility of submitting such unconventional marks and, more importantly, of making such marks available in the register in a manner allowing every interested party to find out about them.

CANCELLATION OF A TRADEMARK

It will not be possible to cancel the protection afforded to a trademark on account of similarity to an earlier trademark if proceedings were initiated, prior to the relevant application, for cancellation of the protection for the earlier trademark. The application for cancellation will only be processed after the decision cancelling the earlier protection right has become final.

The proposed change should be assessed positively. For if an earlier trademark providing grounds for the application for cancellation of a later trademark is cancelled, then the proceedings will be groundless.

THE MOMENT OF EXPIRY OF A TRADEMARK PROTECTION RIGHT

The amendment provides for a change of the provision determining the moment of expiry of a trademark protection right. According to the revised provision, the protection right for a trademark expires on the date the application is filed for determination of expiry. However, the Patent Office will determine, at the party’s request, the expiry of the right on the date on which the event occurred resulting in the expiry of protection under the law.

The current provision contains a rather obscure wording to the effect that the right expires on the date on which the event occurred resulting in the expiry of the protection under the law. This stipulation is both ambiguous and controversial. Both the Patent Office and applicants themselves often had problems determining that date. After the amendment, the date of expiry of the protection right to a trademark will be, as a rule, the date of filing the application.

We will certainly keep informing you of the changes proposed in the amendment.

 

CASE LAW: 

THE FAMOUS RED SOLE STILL ONLY FOR LOUBOUTIN

In our June IP Newsletter we discussed the controversial issue of a trademark in the form of the red sole for high-heeled shoes.

Christian Louboutin, a famous French designer applied for registration of a trademark in the following form:

and subsequently sued a footwear shop chain in Holland for marketing shoes with red soles, which had become the designer’s characteristic mark. A Dutch court filed to the EU Court of Justice for a preliminary ruling asking whether such mark was not in violation of the absolute grounds for registration under Article 3 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

The provision in question provides that marks which consist exclusively of a shape increasing the value of the product will not be registered or where registered may be declared invalid.

The Court was de facto required to answer the question whether the fact that a given colour (red) has been applied in a certain place on the product means that the mark in question is constituted by a shape for the purposes of the article at issue.

The Court found that a mark such as that in the main proceedings cannot be deemed as constituted exclusively by the shape as the key element of the mark is its colour rather than a particular shape of the sole.

The judges eventually acknowledged that Article 3(1)(e)(iii) of Directive 2008/95 does not preclude from being registered the trademarks of the form mentioned above.

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