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Is there anything morally wrong with “Je suis Charlie”?

In continuation of the terrible terror attack on the French satirical magazine Charlie Hebdo, social medias were flooded with the phrase “Je suis Charlie” (“I am Charlie”) as a message of condolence, outrage and defiance, as well as support for the right to free expression.

As expected, this social media wave resulted in a vast amount of speculative trademark applications being filed for the phrase around the world, as well as registrations of domain names under .fr, .com, .org, and .co.uk.

The need for applicants to exploit a tragic event is not a new trend. As recent examples, trademark applications were also filed for the Malaysian Airlines flight numbers “MH.17” and “MH.30” in continuation of the plane crashes in 2014, and the phrase “I can’t breathe” was filed as a US trademark after the highly debated death of Eric Garner caused by a police officer.

Now, it appears that OHIM has finally had enough, as on 16 January 2015, they issued a statement saying that they normally do not comment on individual cases, but that the registration of “Je suis Charlie” could be considered to be of overriding public interest. Furthermore, OHIM found that the mark could be contrary to public policy or to accepted principles of morality and thus be denied registration with reference to article 7(1)(f) of the Community Trademark Regulation. OHIM also found the mark to possibly be viewed as devoid of distinctive character.

The aim of this statement seems to be to limit the interest in speculative trademark applications aiming at capitalizing on current trends in the media picture. OHIM simply points out that such may be rejected on absolute grounds.

But even though the intention from OHIM is understandable, and speculative trademark applications should be prevented, one cannot help but wonder in what way “Je suis Charlie” is contrary to principles of morality. The mark is neither offensive nor vulgar. There is little doubt that the problem with this phrase and prior similar applications is not the marks themselves, but the identity of the applicants, who has no connection with Charlie Hebdo, Malaysian Airlines or Eric Garner. However, the relevant article 7(1)(f) relates only to the mark itself and not the name of the applicant. Consequently, the above statement from OHIM indicates an expansion of article 7(1)(f), which might be difficult to interpret going forward. Because is it only Charlie Hebdo who will be able to obtain a registration for this phrase, or will non-profit organizations against terror or for the right to free expression also be able do to so? And what happens if an original, non-offensive phrase which refers to a tragic event is filed before it becomes well-known through social media?

In my opinion, a better option for OHIM would have been to do like the French IP office did with 50 applications for the same phrase, and simply reject these applications for “Je suis Charlie” due to lack of distinctive character, and the fact that this slogan now belongs to the public. The phrase will hardly function as an indication of origin for any product or any person not in some way connected to the magazine of Charlie Hebdo.

Anders Michael Poulsen, Attorney at Law, LL.M.

Swedish supreme court: Trademark infringement is not a crime for which “the nature of the crime” motivates imprisonment

It is rather well-known that a trademark infringement may result in claims for damages. On the other hand, the awareness is probably not as high about the risk for an individual to end up in jail for the very same violation. The extent to which the latter should happen was the question to be decided in the so-called SKF case, a criminal case for which the Swedish Supreme Court recently issued an opinion.

Due to its intrusive nature for a convicted individual, the legislature has emphasized that usage of imprisonment as penalty should generally be avoided in favor for less severe penalties, such as “suspended sentence” and probation. According to the Swedish Penal Code there are three situations that each independently point in the direction of imprisonment:

  1. when the “total penal value” for the crimes committed is found to be one (1) year or higher,
  2. when recidivism is at hand (the accused is re-committing crimes) or
  3. when the “nature of the crime” as such justifies imprisonment.

The first two situations are relatively “hands-on” and easy to evaluate whether applicable or not. The third situation though, the “nature of the crime” (“brottets art” in Swedish), is somewhat ambiguous. Introduced in 1989, along with a general reform of the Swedish penalty system, the concept has been described as a reflection over the fact that certain types of crimes “in themselves” traditionally have been seen as more serious and reprehensible compared to other crimes, rendering imprisonment even in cases when the total penal value falls below one year or when there is no recidivism (the situations 1 and 2 above). Crimes that historically have been included in this group are for example cases of assault, drunk driving and perjury.

In the SKF case, the accused was found guilty of having imported counterfeit bearings from China, reselling them to Swedish customers using the SKF trademark. One customer experienced trouble with the bearings and complained directly to SKF, after which the counterfeit activities were discovered.

Both the District Court and the Court of Appeals found the accused guilty of intentional trademark infringement. However, the courts disagreed on the penalty.

The District Court, siding with the prosecutor, sentenced the accused to one year of imprisonment (after having found that the total penal value for the crime was one year). In this respect, the District Court argued inter alia around the seriousness of the crime, mentioning the severe risks for damages on property and persons that had arisen. Since the total penal value for the crime committed was deemed by the District Court to be one year there was no need to consider recidivism or the “nature of the crime”.

The judgment was appealed by both parties (the prosecutor and the accused) to the Court of Appeals. The Court of Appeals mitigated the penalty, sentencing the accused to a “suspended sentence” in combination with fines. The Court of Appeals stated that the total penal value of the crime was four months, thus remarkably lower compared to what the District Court had ruled. Since the penal value was determined to be less than one year, and the accused had not been sentenced previously, the remaining path for legitimizing imprisonment was to argue for the “nature of the crime” aspect. But this argument was also dismissed by the Court of Appeals. The Court of Appeals stated inter alia that risks for damages on property and persons were outside the scope of the trademark infringement legislation, and could therefore not be taken into account when determining the sentence.

The prosecutor was not satisfied and appealed to the Supreme Court, stating e.g. that counterfeit crime is an increasing problem for society, posing a treat towards economy, public finances and the protection of consumers, why imprisonment for the accused in the case at hand was justified.

The Supreme Court granted the appeal. One of the central questions for the Supreme Court to decide was pretty straightforward: is trademark infringement a crime for which the “nature of the crime” as such motivates imprisonment, even when the total penal value falls under one year and the accused is not a recidivist?

The Supreme Court reply was in-line with the Court of Appeals, namely “no”. The Supreme Court stressed that neither the preparatory works to the Trademark Act nor case law hold that trademark infringement is a crime of such a dignity that there is a reason for any special treatment when it comes to determining the penalty. The Supreme Court continued expressing that the reasons brought forward by the prosecutor in the appeal were not “strong enough”. The Supreme Court estimated the total penal value to eight months, enabling the penalty to come to a halt at “suspended sentence” combined with fines.

The Supreme Court’s verdict is no doubt interesting and can be said to have high precedential value. Firstly, it indicates that trademark infringement indeed is not part of the “nature crime group”. Secondly, concerning the concept of “penal value determination”, it makes it clear that even relatively large-scale trademark infringement hardly motivates significant penal values. One question to be asked though is if the argumentation put forward by the Supreme Court could be used “analogously” in cases concerning other types of IP infringements, such as patents and copyright? Future judicature will have to give the answer.

Anders Sparlund, Associate

Nobel, Nobel …

‘Tis the season when the Nobel Prizes get announced, when science and scientists get their share of media attention. This blog joins in the chorus.

Your inventions don’t need to be Nobel-class to get patent protection, but the Physics and Chemistry laureates do hold patents, dozens of them and really fresh ones too. This year however, Awapatent IP Blog directs the spotlight to someone special, Jean Tirole, who is the Economy laureate¹  – and does research on patents!

In one recent article, Prof. Tirole and coauthor study standard-essential patents, the legal rights that committees like the ETSI, MPEG or IEEE have promoted into industry-wide norms. A patent that makes it into a standard will be a basis for steady royalty income, albeit moderated to be FRAND². In complex technologies where hundreds of patents may be essential, basically everyone pays to use the standard, but the stronger your own portfolio is, the smaller your net payment.

The article is joyful reading for a telecom patent attorney like myself. With a background in mathematical research, I also don’t mind spices like Brouwer’s fixed point theorem and other tools from convex optimization theory that Prof. Tirole uses to explore the effects produced by this workflow:

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These and other statements are proved:

  • The competitive equilibrium of the licensing game is unique under certain conditions.
  • A patent holder is more eager to avoid price commitments the less essential his patent.
  • If technical functionalities in the candidate IP are ranked by their essentiality, the selection of a standard delivers suboptimal social welfare.
  • So-called structured price commitments would be a better way to negotiate new standards.

Anders Hansson, European Patent Attorney

1) Strictly speaking, he is the awardee of the Nobel Memorial Prize in Economic Sciences.
2) Fair, reasonable and non-discriminatory – a licensing obligation that is often required by standardizing organizations for members that participate in the standard-setting process.

Copyright in relation to e-books

The copyright protection of authors is being increasingly challenged by the continuing digitalization of the book market. The emergence of the e-book has caused a very IP-relevant question: Is the consumer allowed to re-sell the e-book he purchased?

When it comes to physical works such as hard copy books, European copyright legislation clearly states that once a work has been sold within the EEA, with the consent of the owner, this item can freely be resold to third parties. However, the copying and distribution of digital works is more easy, cost-free and difficult to control. Accordingly, there are many arguments as to why the exhaustion of rights should not apply in the same degree to intangible items.

Despite hereof, the CJEU stated in the UsedSoft/Oracle judgment (C-128/11) of 2012 that the rules on exhaustion does indeed also apply to intangible copies of computer software, as long as the first sale of these was accompanied by a user license agreement. The outcome makes sense as a license agreement does at least limit the possibility of buyers performing unlimited copying and second hand sale.

E-books are typically not sold with licenses, and despite the above decision from the CJEU it therefore remained unanswered whether such could be treated as other software and be legally distributed to third parties after the first sale, without the consent of the copyright owner.

In July 2014, the Amsterdam District Court, somewhat surprisingly found that this was indeed the case. The Dutch website www.tomkabinet.nl provided consumers with the opportunity of re-selling their used e-books for half price of the original e-book. The Dutch publisher union NUV tried to stop this website, as they found such re-sale infringing. However, although the Dutch court agreed this was a grey area, they found that it would be too drastic a measure to close the website, and instead encouraged NUV to refer this question to the CJEU in order to have them decide whether the rights are also exhausted when it comes to sale of intangible items that are not accompanied by licensing agreements.

It will be very interesting to know, whether the CJEU finds such second sale of e-books without accompanying licensing agreements legal and, if so, how copyright owners can be sure that no illegal reproduction of copies is taking place. Obviously, digital security measures are already being taken in order to prevent the copying of e-books. But these are far from bullet-proof, and without actual licensing agreements, it seems very difficult for copyright owners to trace illegal copies and distinct them from the legal originals.

However, the difficulties in controlling the market do not seem to bother the CJEU as demonstrated by a very recent decision of 11 September 2014 (C-117/13), concerning the digitization of books by libraries. The CJEU stated that libraries pursuant to article 5(3)(n) of the Infosoc Directive are allowed to digitize work contained in their collections, and offer them on their publicly accessible databases, regardless of whether a specific licensing agreement has been offered to the library by the right holder. Furthermore, member states may permit users to print out on paper or store on a USB stick the books digitized by the library, as long as a fair compensation is paid to the right holders. Accordingly, things do not seem to become easier for copyright holders to written works.

Anders Michael Poulsen, Attorney at Law, LL.M.

Danish law can be applicable to infringing sales from UK websites

The Danish Maritime and Commercial Court has recently rendered a decision in a case regarding sale of infringing furniture designs from two British websites. The decision is interesting for practitioners as it explains which exact elements are added substantial weight, when defining which law is applicable to an online infringement.

When deciding whether sale of furniture designs identical to famous products from Arne Jacobsen and Poul Henningsen among others constitutes a copyright infringement, it can be of high significance whether Danish or UK law is applicable. As explained in this bloggers article in the latest edition of AWA Review, there is a difference of protection even though this will be reduced due to the approaching repeal of Section 52 of the UK Copyright Designs and Patents Act.

The two websites in question were www.interioraddict.co.uk and www.nlini.com. The first website was written in Danish and with a Danish speaking customer service. For those reasons alone, the court found Danish law applicable to the infringements. The latter website was originally also in Danish, but had since changed to an English version. However, as the court noted that (1) it is possible to order products to be delivered in Denmark, (2) reviews of the website and its products were available in Danish, and (3) the website had been advertised in Denmark, Danish law was also applicable to this site.

This reasoning confirms the principles of the Donner case (C-5/11) in which the European Court of Justice listed relevant factors when deciding the applicable law as choice of advertising material, choice of language and opportunities for foreign distribution. However, the Danish decision is interesting and helpful to right holders, as it confirms that these principles also apply to a website with a .co.uk domain name which is normally not seen as targeting foreign consumers. Consequently, this decision indicates that infringers cannot circumvent the requirements and protection given by Danish law simply by selling from a foreign domain address. A much welcome development for the many right holders of famous Danish design products.

When assessing the damage claim, the court gave detrimental effect to the fact that the defendants had not supplied any information as to the revenue or amount of products sold. Furthermore, and more interestingly, the court did find some degree of substitution for the less expensive products (despite these still being cheaper and marketed as replicas). Accordingly, the court found market disturbance and roughly estimated the total damage claim to be DKK 200,000 for each website.

Anders Michael Poulsen, Attorney at Law

Protecting the FIFA brands

With the 2014 FIFA World Cup coming up in Brazil times are busy for organizer The Fédération Internationale de Football Association, FIFA. FIFA continuously takes action against ambush marketers, advertising or promoting around the World Cup without authorization.

The preparations of the 2014 FIFA World Cup were initiated several years ago and an important part thereof has been the work with trademarks. FIFA has developed and protected an assortment of words, logotypes, titles, symbols and other trademarks, for example FIFA, WORLD CUP, COPA 2014 and BRAZIL 2014. FIFA recognizes the commercial rights to the FIFA World Cup as its greatest commercial asset and the fact that it is essential that they protect the integrity of the event’s brand for several reasons. The fact that FIFA would not be able to stage the event without the support of commercial affiliates is one of the main reasons for protecting an exclusive use of the trademarks.

In order not to risk losing its legal rights to the exclusive use of the trademarks FIFA therefore continuously work against any unauthorized use of its trademarks and had already by June 2013 taken action against 100 ambush marketers somehow trying to take advantage of the interest and profile of the event by creating a commercial association or seeking promotional exposure without the authorization of FIFA. Also, counterfeit products bearing FIFA’s official trademarks without the required license such as footballs, keychains and toys is a problem which FIFA needs to deal with.

FIFA works with brand protection in three steps. The first step is communication, meaning that FIFA in order to avoid accidental unauthorized use communicate the regulations through awareness campaigns. The next step and important element in the brand protection work is surveillance in order to identify trademark infringements. An example thereof is the enactment of Commercial Restriction Areas (CRAs) around the stadiums and other official sites. The CRA is an imaginary line wherein local laws provide additional legal protection against prohibited marketing activities without limiting any commercial activities not specifically targeting the FIFA event. Enforcement is the third step in the brand protection. When detecting an infringing situation FIFA’s brand protection team assesses the most effective way to bring the situation to an end, without having to resort to disproportionate enforcement actions. In more serious situations where the intention to take a free ride on the goodwill of the FIFA trademarks is clear, FIFA may need to engage in court proceedings to put the infringement to an end and to seek financial compensation. However, according to FIFA their approach to brand protection still focuses rather on education and guidance. The results thereof will be well visible this summer.

Hanna Hansson, Attorney at Law

Aren’t those Louboutin?

Whenever a woman sees a pair of shoes with red soles, the luxurious brand of Christian Louboutin springs to mind. This feature and the right to use it is worth millions, as it does what a trademark is supposed to, it is a clear indication of origin.

Source: www.halalbook.fr

Source: www.halalbook.fr

However, the very fact that the red sole is so valuable to the product has left Louboutin with quite a predicament, as the on-going saga regarding the protection of their “red sole” trademark took a new turn in the beginning of April when a Belgian Court declared the mark in Benelux invalid during infringement proceedings against the Dutch shoe company, Van Dalen Footwear BV.

The Benelux trademark.

The Benelux trademark.

The court began by defining the mark as a shape mark and not a colour mark, as the red sole must be viewed in context of the shoe as a whole. The court then stated that the shape mark of the red soles are the primary selling point of the shoes, and therefore should be declared invalid as it gives the shoes their substantial value.

The relevant provision in this regard exists in order to prevent a trademark holder from establishing monopoly on technical, functional or aesthetic qualities of a product. Such qualities should rightly be sought protected by other IP rights such as patents, designs or copyright, as these rights do not last eternally.

Without needing to, the Belgian court went on to assess whether the shape mark significantly departed from the norm, so that it could serve as an indication of origin of the goods in question. As the defendant, Van Dalen, had shown many examples of shoes with a red sole, which did not originate from Louboutin, the court concluded that this feature was common, and the shape therefore lacked distinctive character.

The latter conclusion is quite different from the US decision of 2012, where the Second Circuit Court found the red sole to be a distinctive symbol that qualifies for trademark protection, when the red sole is in contrast with the colour of rest of the rest shoe. In that regard, the US court noted that “By placing the color red in a context that seems unusual and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand, to those in the know, instantly denotes his shoes’ source.

When assessing this decision, the invalidity of the shape mark due to the “substantial value” provision seems wrong in this writer’s opinion, as the Louboutin mark is not comparable to other marks typically being declared invalid due to the same provision such as the shape mark for the Bang & Olufsen speakers. The substantial value of the latter mark depends on the design itself, whereas the value of the red soles is not in the design of the shoe as this is not unique. The value is in the red sole but only because of what it represents – the luxury world-known brand Louboutin. Consequently, the reasoning given by the Belgian court can seem dubious. It can in some way appear ironic that the very success of these products later lead to the invalidity of the right to use the mark.

Instead of applying this provision, the court should have merely discussed the acquired distinctiveness and perhaps noted that the requirements for achieving a sole right to a normal colour as red for a broad item such as women’s shoes’ soles are very high. Had distinctiveness been found, the court could have gone on and discussed whether this is diluted due to the many similar products out there. As most people still relate the red sole to the Louboutin mark – despite the many copies – the outcome of this discussion is not clear, and therefore very interesting.

The Louboutin saga is a good illustration of the difficulties in registering and protecting shape marks. Especially when the mark is a simple colour of a sole. The global legal battle regarding this mark once again confirms that while trademark protection of shapes may seem to be a good choice, as it offers the potential of unlimited renewal, there is an apparent risk of the mark being declared invalid either due to lack of distinctive character, or dilution as a result of the product’s success.

Anders Michael Poulsen, Attorney at Law

Fighting the bad guys with customs surveillance

Most classic feel-good Hollywood movies reach a point when things look most bleak, and you almost doubt whether the hero will defy all odds and beat the villain.

The eternal fight against counterfeiting is starting to reach a similar point. As IP specialists and larger companies are aware, one of the most effective remedies in this battle is the cooperation with and help from EU national customs authorities, which offer the free service of monitoring the borders and detaining suspicious consignments being imported from countries outside of EU.

In 2012 EU Customs detained more than 40 million items of fake goods worth approximately EUR 1 billion. However, it is estimated that this only equals around 1% of the total number of counterfeit goods being imported into the EU. Surely, things do not look good for our hero.

When facing the impossible in the world of movies, the average hero typically regroups, changes strategy and returns even stronger.

A similar strategy is being employed by the legislators fighting on behalf of all right holders in this aspect. Accordingly, a new Customs Regulation has come into force on 1st of January 2014 with the aim of streamlining the process and extending customs’ authorities to also include possible infringement of trade names and utility models. The new regulation also introduces a new procedure for small consignments containing 3 or less units, whereby these can be handled by customs themselves and destroyed without contacting the rights holder. Especially the latter part will help right holders in their endeavor as it will limit the costs for the smaller insignificant matters and thereby help both parties focus on the larger consignments.

Furthermore, a major key to successful customs surveillance is for the right holders to provide customs with as much information as possible regarding their authentic products, including the place of production, shipping routes, packaging, distributors, countries of distribution and details of the products. Therefore, the new regulation also introduces a centralized database where all information is shared between the right holders and customs authorities.

Whether this new regulation will make for a happy ending remains to be seen. However, as long as there are customers, the producers of counterfeit products will continue to emerge. Therefore, it is evidently that the many arguments against the strict customs rules due to the protection of the unaware consumers are slowly silenced as the most effective way to fight “the bad guys” seems to be to deter customers from buying such products. This is probably also the reason why the European Court of Justice has recently allowed for the destruction of consignments being purchased for private use.

At Awapatent we stride to help right holders make their customs surveillance more effective and realize that cooperation and sharing of information with customs authorities are key elements in this fight. Counterfeiters also change strategy and are constantly developing their illegal methods and pirated products. Accordingly, the fight continues.

To stay in the movie analogy, the obvious movie comparison is “The Never Ending Story”.

Anders Michael Poulsen, Attorney at Law

The procedure up to grant

In March 2011, I submitted my application to Awapatent. I received a confirmation from the HR department acknowledging a date of filing. I had fulfilled the basic requirements: a) an indication of the subject-matter  the position – sought, b) a statement of my name and address allowing them to contact me, and c) a description of myself.

As a date of filing was accorded, the examination with regard to formal requirements started. Did I speak the required and preferred languages? Had I included all necessary information in my application? Did the content of the application actually originate in me? Did I claim priority in any kind of way? Was I situated in the relevant geographical area and available for an interview?

As the formal requirements were fulfilled, I was passed from the Receiving Section to the Search Division. From being mainly dealt with by the HR department, I was now accepted to meet my colleagues at my home office.

The search – the trainee period – was initiated. Theoretical weeks were mixed with practical work. The theoretical weeks were like assessing novelty: black or white, yes or no, right or wrong. The practical work was rather like assessing inventive step: a greyscale, maybe, it depends. I went from dealing with the words patent and intellectual property rights as abstract terms to slowly putting them in a structure and in relation to the known art.

In April 2012, it was time to get known to the crowd. I was no longer a trainee with limited capacity, but an associate fighting on the same conditions as all other employees with full capacity. It was time to face my strengths and weaknesses, to combat for my survival in the public domain, and to be substantively examined during several years. Thus, I was forwarded from the Search Division to the Examining Division.

Since September 2013, we are about 10 colleagues struggling monthly with the European Patent Convention preparing to pass the European Qualifying Examination. It is a tough examination preferably resulting in a grant and the professional title of European Patent Attorney. Recently we met in Malmö for the sixth session of preparation, and received another “communication” indicating which parts each of us still has to improve before the mention of grant.

To pass the European Qualifying Examination is a great goal, but for a patent attorney, as for a patent application, the procedure up to grant is only the very start of a long and exciting journey.

Ingela Svanäng, Associate

Don’t let your trademark be guillotined!

Throughout history we have learned that revolutions can be very bloody. Or at least, the bloodiest and most horrible revolutions are the ones we remember from our history lessons back in school.

I remember a little play about the French revolution from my own school time. All the girls wanted to play Marie Antoinette. Not because her character had many lines, except the famous one to the starving people: ‘Let them have cake’! Nor because she wore a beautiful dress and a huge wig, but because she got to squeeze a little tube of fake blood when guillotined!

Now we are standing in front of a new revolution, yet a quite different one: a revolution of the Internet. Will this revolution also be bloody? Well, perhaps not, but we expect that 600-700 new generic top level domains will be released over the following three years and this will without doubt give rise to some conflicts between trademark owners.

Some of the new domains will appeal only to a specific business like .film, .architect, .airforce, .doctor, .university, etc.

For instance, I don’t think that the trademark owner of the famous cognac brand Renault will be interested in the domain name renault.car. But I´d be very surprised if the trademark owner of the famous car brand Renault will not have an interest in that domain.

But what about .luxury? Or .email? Or domains that may be attractive for marketing campaigns like .events or .vip?

It´s not hard to imagine that co-existing brands will share a common interest in some of the domains. And what will happen if both the car and the cognac trademark owners file for the same domain in the sunrise period? Remember that we will be dealing with hundreds of new and probably very different registries with different sets of rules. So it’s not quite clear yet, how these conflicts between trademark owners will be handled by each registry. A method that we have seen from previous sunrise periods is that the domain is put up for an auction between the applicants.

However, what is absolutely clear is that you must pre-protect your trademark in the sunrise database for trademark owners (the so-called Trademark Clearinghouse database) if you don’t want to see your trademark being guillotined! If your trademark is not protected here you will not be able to file any domains at all in the sunrise periods.

By the way, I didn´t get the role as Marie Antoinette but this shouldn’t stop me today from saying to all trademark people: ‘Let them have trademarks’

Dorthe Vangsgaard Sørensen, Paralegal