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Intellectual Property Matters – April 2015

Intellectual Property Matters – April 2015

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10/04/2015

3D printing and the issues for rights holders

The growth of 3D printing It has been reported that Boeing has recently filed a […]

The growth of 3D printing

It has been reported that Boeing has recently filed a patent application related to the 3D printing of replacement aircraft parts. This is part of a trend of an increasing number of filings of patent applications related to 3D printing. We are also starting to reach the point where private individuals and businesses may be starting to think seriously about buying a 3D printer. In other words, 3D printing is beginning to enter the mainstream.

3D printing presents both an opportunity and a problem for rights owners. On the plus side, it could facilitate the production process and will enable products to be customised to meet individual demand: customers will want to buy a 3D printer and start using it to customise the latest brands and products to their taste before “printing off” at home. On the other hand, it will also be easier for counterfeiters to create replica copies. There is also a risk that the use of personal printing at home could reduce demand for genuine designer goods and could even devalue brands.

The intellectual property implications in the UK

Patent, trade marks and copyright are all potentially affected by 3D printing. However, the most obvious place to start is designs.

Designs

Registration of a design is comparatively quick and easy (and is surprisingly often overlooked). Designers should consider very seriously applying to register their designs, if they have not done so already.

The Registered Designs Act 1949 provides a regime for the protection of designs against copying by third parties. More specifically, it states that registration of a product protects the “appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation”. A product for these purposes is any industrial or handicraft item.

However, the component parts of a complex product can only be protected as a registered design if they are visible and are of a novel and industrial design. Also, designs that are dictated by their technical function cannot be protected as registered designs, nor can they be protected where the features of a product must be reproduced in the form that they are in, in order to fit with a product to which they are connected or in which they are incorporated. These are important exemptions and will cover many items that would be obvious candidates for 3D printing. The difficulty will be working out whether the exemptions apply.

Designs may also be protected by unregistered design right, although the protection afforded is less than with registered designs. Like copyright, this right arises automatically and without the need for registration. Unregistered design right subsists in the shape and configuration of an item but not its method or principle of construction nor its surface decoration. The design must be original. Features that are required for it to be “connected to, or placed in, around or against another article so that either article may perform its function” (the ‘must fit’ exemption) are excluded as are features that are “dependent upon the appearance of another article of which the article is intended by the designer to form an integral part” (the ‘must match’ exemption).

Copyright

Copyright exists in “works of artistic craftsmanship” and also in sculptures (among other types of work). The work need not demonstrate originality in order to benefit from copyright protection; commonplace works may be protected. Recent case law [1] suggests that in order to benefit from copyright as a work of artistic craftsmanship or as a sculpture, the work must have been created principally for its artistic merit. This is an important narrowing of the scope of copyright protection; many every-day articles will not be covered. However, graphic designs on the surface of such an item may be protected by copyright – all of which is relevant to 3D printing.

Patents

The use of a 3D printer to make a copy of a patented item will prima facie constitute patent infringement. However, there are exceptions where the copying is done for private, non-commercial purposes and also for purposes of experimentation.

Trade marks

Trade mark registration can protect designers where any trade mark is copied by 3D printing, notably any logos incorporated in or affixed to the product. It is possible that eventually we will see less importation of counterfeit goods – given that the counterfeiters will be able to make replicas more easily rather than, as at present having to rely on low cost labour for the creation of the replica and then move the goods across borders. This may necessitate a change of enforcement strategy on the part of the rights holder.

Enforcement

A risk for rights owners with 3D printing may be peer-to-peer (P2P) file-sharing, an issue that has troubled notably the music and film industry. The sharing of digital files would enable the easy, unauthorised reproduction of designer works. There are already websites offering downloads free of charge of files to print non-designer objects. We have seen recently the grant of blocking injunctions against Internet Service Providers to prevent access to websites providing copyright (and trade mark) infringing content. It may be that we begin to see the same in respect of designs.

Conclusion

It is early days, of course, and there is no guarantee that 3D printing will take off – there is an argument that consumers are still struggling to get to grips with 2D printing, and the technology, at least at the consumer level, is still relatively unsophisticated. However, the emergence of 3D printing is an issue that rights holders need to keep an eye on. A good starting point is a design registration.

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[1] Lucasfilm Ltd v Ainsworth [2010] FSR 10. In that case, Stormtrooper helmets used in the Star Wars films did not benefit from copyright protection in the UK.

Acquiescence as a bar to trade mark infringement proceedings

The French Supreme Court has rejected an appeal by Hachette Filipacchi Presse, the owners of […]

The French Supreme Court has rejected an appeal by Hachette Filipacchi Presse, the owners of the magazine, Paris Match, against a decision of the Paris Court of Appeal that it could not claim infringement of the marks MATCH and PARIS MATCH by the dating website, Match.Com.

Hachette issued proceedings in 2006, claiming that the Community Trade Mark MATCH.COM infringed its marks MATCH and PARIS MATCH. The claim was successful at first instance.

On appeal, Match.com argued that as its registration was filed in 1996 and Hachette had filed an unsuccessful opposition to that application, culminating in the registration in 2004, Hachette was aware that the sign was being used in France. As such, so Match.com maintained, Hachette had acquiesced to its use of the sign for a period of at least five years and was prevented from instituting proceedings under Article 54 of the Community Trade Mark Regulation. Article 54 states:

“Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith.”

The Paris Court of Appeal accepted Match.com’s argument. It found from the evidence that Hachette was aware of the use of the MATCH.COM sign in France from at last 2000. That finding was upheld on Hachette’s appeal to the Supreme Court with the consequence that by the time Hachette came to file its action for infringement, it had knowingly acquiesced in the use of the sign for more than five consecutive years so that its action could not be sustained.

The case highlights that, in cases involving acquiescence, it is the date of use of the sign constituting the Community trade mark registration that is material not the date of registration.

Cigarettes, plain packaging and trade marks

In March, MPs backed legislation for the plain packaging of cigarettes. Only health warnings, a […]

In March, MPs backed legislation for the plain packaging of cigarettes. Only health warnings, a bland colour covering the entirety of the packaging and brand names in plain, black text will be permitted.

Health campaigners have welcomed the news; tobacco companies have not. One of the arguments used by the tobacco companies is that the plain packaging legislation amounts to an unlawful and unwarranted interference with their property rights, namely the brands in which they have invested substantial sums of money over, in some cases, several decades. The possibility of compensating the brand owners for the effective confiscation of these rights does not appear to be on the table.

Under EU and UK law, if a brand owner does not use its mark, the mark is liable to revocation – a situation the tobacco companies could find themselves in if the draft legislation becomes law.

A plain packaging law has been in effect in Australia for over two years now. The jury is still out on the health benefits of the law but one apparent consequence, not perhaps foreseen by the legislator, is an increase in the number of counterfeit cigarettes circulating on the Australian market. The counterfeit cigarettes continue to carry branding and appear to be popular with consumers. The guarantee of origin, and quality, is, however, missing from counterfeit goods; the tobacco companies are arguing that, perversely, the ban on plain packaging may be leading to greater risks as smokers cannot be sure what they are inhaling from counterfeit cigarettes.

There is an argument, which the tobacco companies can be expected to use, that the legislation may be in breach of the Paris Convention on the Protection of Intellectual Property and of various provisions of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS).

Assuming the draft legislation makes its way onto the statute book, it seems very likely that one or more of the tobacco companies will take legal action. Indeed, the Australian law is currently the subject of a challenge by tobacco companies.

Interestingly, there is now a debate in Australia about whether plain packaging legislation should be extended to obesity-producing foodstuffs, particularly where targeted at children. So, other brand owners – not just in the tobacco industry – will be watching developments closely.

Green Smoke, Greenworld and Distinctiveness

Contrasting decisions involving applications for registrations of the respective marks GREEN SMOKE and GREENWORLD are […]

Contrasting decisions involving applications for registrations of the respective marks GREEN SMOKE and GREENWORLD are instructive in highlighting registry approaches to the concept of distinctiveness.

In the GREEN SMOKE case, the applicant had sought a registration in Finland of the mark GREEN SMOKE in respect of electronic cigarettes. The application was refused by the Finnish Trade Mark Office on the ground that the mark lacked distinctiveness, “green” meaning green as either a colour or an ecological concept and “smoke” meaning a cigarette or tobacco. On appeal, the Finnish Market Court stated that in order to be eligible for registration, a mark must be capable of distinguishing the proprietor’s goods from those of others and that a mark that denotes the kind, quality, quantity, use, price or place or time of manufacture of goods shall not, as such, be regarded as distinctive.

The Market Court considered that the word “green” in GREEN SMOKE was primarily referring to the colour “green”. In this case, the mark was referring to electronic cigarettes that were not, in fact, green in colour. With regard to the word “green” in its ecological context, again the connection between the word and electronic cigarettes was unclear – smoking and a clean environment are not, after all, two concepts that do not sit easily together. Thus, in connection with electronic cigarettes, the word “green” was distinctive. Accordingly, the appeal was allowed.

GREENWORLD was a decision of the EU General Court [1]. The applicant had sought to register the word mark GREENWORLD in connection to fossil fuels, gas, electrical energy and their supply. The Examination Division and the Board of Appeal both rejected the application on the basis that the mark consisted exclusively of indications serving to designate characteristics of the goods or services in question and as such was not capable of registration

On appeal, the General Court stated that the word “green” commonly meant eco-friendly and that products described as “green” were generally perceived as products that were less harmful to the environment. This was true of the types of goods in respect of which registration was sought. Taken together, the words “green” and “world” were descriptive of the characteristics of the goods to which they applied.

It was also immaterial, the General Court said, that the mark GREENWORLD had been successfully registered as a Community trade mark in respect of other classes of goods – each case had to be determined according to its particular facts.

Accordingly, the General Court dismissed the appeal.

The cases are useful in highlighting the approach taken by the courts to the issue of descriptiveness. The word “green” in respect of fossil fuels was found to be descriptive, not so in respect of electronic cigarettes.

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[1] Case T-106/14 Universal Utility International GmbH & Co KG v OHIM

Stricter rules on filing of evidence in trade mark hearings

The practice note has been published to meet concerns that parties to hearings before the […]

The practice note has been published to meet concerns that parties to hearings before the Registrar are filing large volumes of irrelevant or unnecessary evidence, adding to the cost of proceedings and taking up a disproportionate share of resources. The practice note gives as an illustration of this a recent analysis of 27 trade mark opposition and cancellation proceedings, where five cases had over 900 pages of evidence, much of which was irrelevant or unnecessary.

The practice note says that the following limits should suffice and that if they are likely to be exceeded, the party should either review its evidence or seek directions:

evidence in chief: 300 pages
evidence in response: 300 pages
evidence in reply: 150 pages.

These limits refer to evidence only and do not include written submissions.

If the Registrar finds that the above limits have been exceeded without the party concerned seeking directions, a Case Management Conference will be appointed at which the Hearing Officer will review the evidence and exercise the Registrar’s powers to determine whether the (proposed) evidence goes to issues on which evidence is required. If the Hearing Officer considers that the evidence may be relevant, he may give directions as to the form in which the evidence is placed before the Registrar. If he considers that that the evidence is not relevant, he may exclude it.

The practice note also includes guidance for parties regarding the filing of evidence:

it is not appropriate to file submissions in the form of evidence
it is rarely necessary to file copies of hundreds of internet pages and never appropriate to file such evidence without an analysis or explanation as to what they show
it is not appropriate to file evidence from after the relevant date, at least without an explanation as to how it sheds light on the factual position at the relevant date
filing the whole of a bulky promotional brochure is rarely justified if only one or two pages are relevant
similarly, it is not necessary to file the whole of a company’s annual report if just the front cover and a few relevant pages will suffice
it is not appropriate to file the results of searches of trade mark registers showing that other marks are registered in the names of third parties, without evidence that those marks were in use in the UK at the relevant date
it is not appropriate to file search engine auto prompt evidence as evidence of a likelihood of confusion.

The practice note comes into effect with respect of any evidence due to be filed on or after 30 April 2015.

Trade mark invalidity applications and the importance of filing relevant evidence

Walker Morris has successfully acted for an applicant for invalidity in respect of the registered […]

Walker Morris has successfully acted for an applicant for invalidity in respect of the registered mark SOLAFIELDS. The Registrar found the mark, registered in Class 40 for the “production of electricity from solar photovoltaic farms” invalid and cancelled its registration.

The proprietor of the SOLAFIELDS mark, GB Renewables Investments Ltd, sent a letter before action to the applicant for invalidity who trades as SolarFields UK. The applicant for invalidity adduced evidence to support its argument that the term Solar Fields was a descriptive term used to describe solar photovoltaic installations located in fields and that numerous traders used those words to describe installations of this kind. In the judgment, the Registrar emphasised the importance of the applicant’s evidence taken from UK websites showing that people used the terms “solar farm” and “solar field” interchangeably. In this sense, the case is a good example of the importance of adducing evidence that relates to the case – evidence relating to developments elsewhere in the word was not, in this case – which pertained to a UK registered trade mark – relevant.

In issue in the case was section 3(1)(c) of the Trade Marks Act 1994, which states that a trade mark shall not be registered if it consists “exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services”. The Court, having considered the evidence, considered that the term SOLAFIELDS was “not sufficiently far removed” in meaning or in sound from the descriptive words “solar” and “fields” to avoid being excluded from registration by section 3(1)(c).

The Registrar also found that the mark should have been excluded from registration under section 3(1)(b), namely that as a descriptive mark, SOLAFIELDS was devoid of distinctive character.

The Registrar then considered whether, despite having failed to meet the requirements of sections 3(1)(b) and (c) the mark had nevertheless acquired distinctiveness through use and found that it had not done so.

Accordingly, the Registrar gave judgment for the applicant.

Trade marks: registry review – April 2015

DATABAY [1] The Opposition Division has upheld eBay’s opposition to an application for registration of […]

DATABAY [1]

The Opposition Division has upheld eBay’s opposition to an application for registration of the mark dAtAbAy based on its earlier EBAY registration.

The Opposition Division held that the EBAY mark enjoyed a reputation for the purposes of Article 8(5) of the Community Trade Mark Regulation and that registration of the dAtAbAy mark would take unfair advantage of the EBAY mark so that the services covered by the dAtAbAy mark would be perceived by the relevant public as promising the quality, reliability and, in a broader sense, the worldwide availability of eBay’s services. The Opposition Division did not need to consider eBay’s alternative ground for opposition under Article 8(1).

BELLA VITA [2]

The Opposition Division has upheld an opposition to registration of the mark BELLA VITA based on the prior registration BELVITA. The contested goods were “wine” while the opponent’s mark was registered in respect of “alcoholic beverages (except beers)”.

The Opposition Division considered that in view of their visual, aural and conceptual coincidences, the two signs were similar and that there were no elements which could be clearly considered more dominant than other elements. The earlier sign had an average degree of distinctiveness and the goods were found to be identical. Taking all this into account the Opposition Division concluded that there was a likelihood of confusion on the part of the public.

NISSAN JIDOSHA [3]

The EU General Court has dismissed an appeal against a ruling of the OHIM Board of Appeal removing a Community trade mark registration on the basis that the Community Trade Mark Regulation does not permit renewal requests to be staggered over time in respect of different classes of goods or services.

The appellant had requested renewal in relation to two classes before the deadline set out in Article 47(3) of the Regulation and then requested renewal in relation to the third class after the deadline but during the grace period. The Court held that it was clear from the wording of Article 47 that the possibility of submitting a renewal request after the expiry of the initial period was conditional on no renewal request having been submitted during that period.

McSALAD [4]

The Opposition Division has refused an opposition challenge to registration of the word mark McSALAD based on the prior Community trade mark registration of the figurative mark McSALAD. The prior registration was in respect of “sandwiches” while the applicant (McDonald’s) was seeking registration in respect of “potato, antipasto, garden, Caesar, fruit and vegetable salads” and “pasta salads”. The Opposition Division held that the categories of goods of the competing marks were clearly dissimilar and therefore the opposition must be rejected.

SOLAFIELDS

Walker Morris has successfully acted for the applicant for invalidity in respect of the registered mark SOLAFIELDS. We have written about this separately here.

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[1] OHIM, Opposition No B 2 340 704, eBay Inc v Omnicom International Holdings Inc
[2] OHIM, Opposition No B 2 353 434, Eckes-Granini Deutschland GmBH v BV Trading LDA
[3] Nissan Jidosha KK v OHIM, Case T 572/12
[4] OHIM, Opposition No B 2 322 538, Artesania de la Alimentacion SLU v McDonald’s International Property Company Ltd

Contacts

Alan Harper, Senior Associate, Intellectual Property & Trade Marks at Walker Morris LLP

Alan Harper
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