This was the last step required to complete the ratification process of the unitary patent package.
It also triggers the countdown of Article 89 UPCA, whereby the Court will open its doors on 1st June 2023 and Unitary Patents will be available from same date.
We have updated our timeline accordingly
As our readers will know, this is a major change in the European patent landscape.
Decisions have to be taken taken now by patent owners, since early requests for unitary patent protection can be already lodged with the EPO. Furthermore, the German ratification triggers the sunrise period, during which patent proprietors can opt out their European patents from the exclusive competence of the new Court.
Please contact your usual Freylinger patent attorney for questions you may have on the UP and UPC. You may also refer to our news on this topic:
Office Freylinger participates in the CEIPI Job Fair!
Office Freylinger is proud to participate in the CEIPI Job Fair on February 16th, 2023.
Lawyers, engineers, IP professionals in the making, do not hesitate to send us your applications !
BIG MAC’s big victory before the EUIPO Board of appeal
McDonald’s has recently obtained a decision in its favour from the EUIPO Board of Appeal, overturning the original decision of the Cancellation division which revoked the EU trademark “BIG MAC” in its entirety in 2019.
You certainly remember the 2019 EUIPO Cancellation Division decision that cancelled the “BIG MAC” EU trademark on the basis-of non-use.
This decision had surprised the public for whom it was inconceivable to imagine McDonald has lost the BIG MAC trademark in the EU. Indeed, who does not know the BIG MAC mark? How could it be therefore considered that the BIG MAC mark had not been used in the European Union?
This case is the perfect example of the difference between the perception of the use of a mark by the public and EUIPO’s application of the legal requirements in a revocation action. EUIPO’s position can be sometimes considered too strict on this subject by the owners of widely-known marks which think that EUIPO’s decisions are not in line with reality.
However, there is a simple principle in trademark law: a trademark should be used for the goods and services covered after registration in order to remain protected and upon request at the competent trademark office by a third party, the trademark owner has to prove the genuine use of the trademark. The indications and evidence of use must establish the place, time, extent and nature of use of the trademark for the goods and/or services for which it is registered. Therefore, the EUIPO cannot rely on facts that are not submitted to it.
In the decision of 11th January 2019, the Cancellation Division found that the evidence provided by McDonald’s was insufficient to establish genuine use of the BIG MAC trademark.
The EU trademark BIG MAC was revoked in its entirety.
Following this decision, McDonald’s has lodged an appeal before the EUIPO Board of Appeal.
The EUIPO Board of appeal overturned the original decision in a decision dating from 14th December 2022.
The following relevant points should be noted:
McDonald has submitted a lot of additional evidencewhich have been accepted by the Board of Appeal, including consumer surveys, advertising materials, Google Analytics data and a financial audit report prepared by an independent auditing firm to demonstrate genuine use of its trademark
The Board of Appeal has been more accurate in its assessment of the submitted documents than the Cancellation Division, which has led to the acceptation of some documents which have been initially disregarded, including the printout from Wikipedia and affidavits signed by representatives of McDonald’s.
Big MAC lovers can be therefore reassured at least for now because the decision can be appealed to the General Court.
In the meantime, there are important lessons to be learned:
It is not because the mark is widely known that its genuine use will be automatically recognized by the EUIPO. Proof of use should be submitted as for any other trademarks. Proof of the use of a trademark must be provided according to certain criteria, the EUIPO not being able to rely on facts that are not submitted to it
This case is an opportunity to remind trademarks owners of the importance of collecting regularly relevant documents showing the use of their trademarks to be able to defend their rights within the scope of a non-use cancellation action.
Do not hesitate to reach out to Office Freylinger’s trademark team to discuss the best way to prepare your files and to check if your trademark rights might be affected by a revocation action for non-use.
Eugénie Desmet
Fonds PME 2023
Fonds PME 2023
Bonne nouvelle ! En 2023, l’Office de l’Union européenne pour la propriété intellectuelle (EUIPO), conjointement avec la Commission européenne et les offices nationaux de la propriété intellectuelle de l’UE, réitère son aide financière aux petites et moyennes entreprises (PME) de l’Union européenne.
Le Fonds pour les PME, intitulé « Ideas Powered for business », est un programme de subventions qui vise à améliorer l’accès à la propriété intellectuelle des petites et moyennes entreprises de l’UE et leur faire ainsi gagner en compétitivité.
Cette aide financière permet de demander le remboursement d’une partie des taxes officielles payées dans le cadre d’un dépôt de marque ou modèle. Selon le territoire désigné dans la demande, il est possible de prétendre à un remboursement de 50 à 75 % du montant total des taxes officielles déboursées, avec un plafond de 1000 EUR par subvention.
Cette aide ne concerne pas uniquement les dépôts effectués directement auprès de l’EUIPO ; elle s’adresse également aux demandes déposées dans un pays membre de l’Union européenne ou auprès de l’Organisation mondiale de la propriété intellectuelle (OMPI).
Afin d’être éligible, le demandeur doit être une micro, petite ou moyenne entreprise établie dans l’un des États membres de l’UE et correspondre à la définition d’une PME telle que développée dans la recommandation 2033/361/EC de la Commission du 6 mai 2003.
Cette année, il sera possible d’introduire des demandes de subventions du 23 janvier 2023 au 15 décembre 2023. Attention, le Fonds est limité et disponible selonle principe du« premier arrivé, premier servi ».
Veuillez noter également que les demandes de subvention doivent être introduites et acceptées AVANT de procéder aux dépôts. Mieux vaut donc ne pas tarder !
N’hésitez pas à nous contacter pour obtenir davantage d’informations sur les modalités pratiques de cette subvention. Tout comme en 2022, l’équipe d’Office Freylinger se fera un plaisir de vous accompagner dans cette démarche !
UP/UPC – Postponement of the start of the Sunrise Period
On October 6th 2022, the Unified Patent Court Preparatory Team excitedly shared their implementation roadmap for the Unified Patent Court Agreement. The roadmap had initially planned the final ratification of the UPCA for the second half of December 2022, which would then define the date of entry into force of the UPCA to April 1st 2023 and the start of the Sunrise Period to January 1st 2023.
Unfortunately, in order to give enough time for users to prepare for the new system (and in particular in relation to the authentication keys required to access the Case Management System), the UPC has announced today that the start of the Sunrise Period will be delayed to March 1st 2023.
Accordingly, the date of entry into force of the UPCA and the date of application of the regulations regarding the Unitary Patent will be postponed to June 1st 2023.
The start date of the transitional measures regarding the Unitary Patent seems unchanged. From our understanding, it will thus be possible to file an early request for unitary effect and a request for a delay in issuing the decision to grant a European patent as of January 1st 2023.
Abolition of the ten days rule and consequences on the calculations of periods
On the 1st November 2023, the ten-day rule will be abolished and documents communicated by the EPO will be deemed to be notified at their indicated date.
Associated periods will thus begin to lapse from the date mentioned on communications by the EPO. These periods expiring inevitably earlier, owners of pending patent applications and their legal representatives will need to adjust their tracking of deadlines.
Webinaire – le nouveau brevet unitaire européen – 16.12.2022
Office Freylinger vous propose un webinaire consacré au système du brevet unitaire européen qui entrera en vigueur au printemps 2023. Il s’agit d’une révolution dans le monde des brevets en Europe.
Le webinaire se tiendra le vendredi 16 décembre de 11h00 à 12h00.
Philippe Ocvirk, European Patent Attorney, présentera ce nouveau système qui est attendu depuis plus de 50 ans et repose sur deux piliers :
le brevet européen à effet unitaire (brevet unitaire) – une protection facultative, qui peut être obtenue à la délivrance d’un brevet européen.
la création d’une juridiction européenne spécialisée en matière de brevets : la Juridiction unifiée du brevet (JUB).
Le webinaire propose une introduction à ce nouveau système. L’Office européen des brevets a annoncé des mesures transitoires qui permettent d’opter dès le 1er janvier 2023 pour un brevet unitaire à la délivrance du brevet européen. La nouvelle juridiction aura compétence pour tous les brevets européens, unitaires ou classiques, y compris ceux déjà délivrés.
Tous les propriétaires de brevets européens sont donc concernés par le nouveau système.
Inscription gratuite en remplissant ce formulaire :
The present article presents some considerations on the possibility of opting out patents from the exclusive competence of the Unified Patent Court.
Staying in to benefit from the UPC system
The UPC will include:
Judicial judges experimented in patent matters
Technical Judges that are likely to have a better understanding of technically complex inventions and a better reasoning on patent infringement.
The new Court will obviously prevent situations of contradictory decisions that may occur when litigating the same case before different national Courts.
The Rules of Proceeding of the UPC are designed to reach decisions within one year, if the defined schedule is respected, thus substantially reducing the duration of proceedings compared to some national Courts.
The UPC is particularly powerful in case of multiple infringements in different European countries, since a decision can be obtained through a single action brought before the UPC and will have effect over all UPC-A member states. Choosing the UPC will, then, significantly reduce the litigation costs in comparison with several litigations to be carried out in different countries.
Reasons to opt out
With the UPC, a European patent can be revoked in all states by a single decision. This will allow third parties and suspected infringers to efficiently challenge the validity, during the whole lifetime of the patents. Hence European patents obtained before the UPC opening and for which the opposition period has expired will remain at risk of central revocation.
Moreover, the lack of experience and case law from the UPC may make choosing the UPC risky as we do not know yet the position that will be taken by the Court, in particular regarding the validity of patents. Also, UPC rules and procedures are obviously untried; it will take several years to achieve consistency in decisions.
Another element to consider where making the choice to opt out patents is that opt-out must be made by all proprietors and in respect of all of the states for which the European patent has been granted, not only EU member states. The first difficulty that may arise from this rule is to identify the true proprietors of the patent, which will not necessarily be the registered proprietors, especially when patents have been assigned from a third party. Ownership should be checked, although there is no necessity to update/correct registers. The second difficulty is the necessity for all the proprietors to join the opt-out request. As such, it is likely that when litigation arise, the opt out itself may be subject to discussion.
A proprietor having registered an opt-out and wishing to bring an action before the UPC to benefit from its pan-European jurisdiction may opt in again, by withdrawing the opt-out. However, the proprietor may be impeded from opting back in where an action has already been brought before a national Court; the patent is thus locked out of the UPC forever.
Philippe OCVIRK, Partner | European patent attorney
UPC and Opt-Out
UPC and Opt-Out
The Unified Patent Court (UPC) will open its doors in spring 2023. The date of 01.04.2023 has been announced by the Preparatory Committee . Its jurisdiction will extend over all European patents in the territories of EU member states having ratified the Agreement on a Unified Patent Court (UPC-A). Antagonistically, while the UPC-A creates the long-awaited European patent Court, it also comprises provisions to derogate from its competence, known as ‘opt-out’.
Jurisdiction of the UPC
According to Art. 3 of the Agreement on a Unified Patent Court (UPC-A) the future UPC will have jurisdiction not only over European patents with unitary effect, but also over traditional European patents (‘validated’ patents) and pending applications, and over SPCs, even if these are granted before its entry into force.
During a ‘transitional‘ period however, the national Courts will remain competent to hear cases relating to validated European patents.
Opt-out definition
Opting-out is the option open to patentees and applicants to exclude disputes related to any of their validated European patents (in force or expired) or pending applications from the UPC’s jurisdiction. Any action for infringement or for revocation of an Opted-out European patent may only be heard by the competent national Courts, as is currently the case. An opt-out has effect in all Member States and for the entire lifetime of the patent.
The UPC Preparatory Committee has decided that there will be no official fee for filing a request for an opt-out. There will however be costs associated with the handling of the opt-out procedure through your patent attorney firm.
For the avoidance of doubt, European patents with unitary effect cannot be opted out.
When to opt out
The registration of opt-outs will only be possible during the limited ‘transitional’ period (7 years, prolongable by 7 years). Practically, opt-out’s can be notified to the UPC Registry by the latest one month before expiry of the transitional period . It should be noted that opting out will be possible during a ‘sunrise’ period spanning the three months preceding the opening of the UPC. The sunrise period is expected to start on 01.01.2023.
Important note: An Application to opt out a given patent cannot be registered if an action relating to said patent has already been brought before the UPC .
How to opt out
An application to opt out must be lodged with the UPC Registry. Opt-outs are to be registered on a right per right basis and in the name of each and all proprietors or applicants. The registers need not be updated, but in case of discrepancy a declaration must be filed alongside, stating that the requesters are entitled to be registered in the national patent registers.
The Application to opt out shall be made in respect of all of the states for which the European patent has been granted or which have been designated in the application.
The opt-out is only effective from the date of entry into the Register.
Withdrawal of the opt-out
An opt-out can be withdrawn at any moment, provided no action has been brought before a national Court . This opt-in will then be definitive: the patent proprietor will not be able to opt out its European patent again .
If an opt-out application was registered for a pending European patent application, said opt-out will be automatically deemed withdrawn should the patentee decides to request unitary effect (obtain a unitary patent).
Philippe OCVIRK, Partner | European patent attorney
Unitary patent – Delaying grant and early requests for unitary effect
The EPO has announced that its transitional measures for Unitary Patents (UP) will start on 1 January 2023.
From that date, applicants who have received a communication under rule 71(3) EC (intention to grant) may file:
an early requests for unitary effect and/or
a request for a delay in issuing the decision to grant a European patent.
The measures are applicable until the entry into operation of the UP system and UPC, which is expected to be on 1 April 2023.
The two transitional measures are interrelated but separate from a procedural perspective.
1. Early request for unitary effect
Early requests for unitary effect may only be filed for European patent applications in respect of which a communication under Rule 71(3) EPC has been despatched.
If the requirements for the registration of unitary effect as provided for in the Rules relating to Unitary Patent Protection are met, the EPO will register unitary effect once the Unitary Patent system has started and communicate the date of this registration to the requester. Otherwise, it will invite the requester to correct the deficiencies if applicable (already before grant) or reject the request for unitary effect.
The request should be filed using dedicated EPO Form 7000 and thus include the required translation.
2. Request for a delay in issuing the decision to grant a European patent
This transitional measure allows the applicant to delay grant of a European patent in order to make it eligible for Unitary Patent protection.
A request for delay may be validly filed only for European patent applications in respect of which the applicant has been informed of the text intended for grant by a communication under Rule 71(3) EPC but has not yet approved that text.
A request for delay filed can be filed on the same day as the approval of the text intended for grant. The request for delay must be filed using dedicated EPO form 2025.
Unitary patent transitory measures set to start on 1.01.2023
The European patent office (EPO) announced earlier this week the starting date of its transitional measures relating to unitary patent protection.
As of 1 January 2023, patent applicants will be able to:
file early requests for unitary effect; and
file requests for a delay in issuing the decision to grant a European patent.
These two measures – announced in December 2021 – were introduced to support an early uptake of the Unitary Patent by the users. Cautiously, the EPO initially considered that these measures would only apply after Germany would have effectively ratified.
With this announcement the EPO hence anticipates the German ratification, following the lead of the Unified Patent Court, who declared that it will open its doors on 1st April 2023 (see implementation roadmap)
The transitory measures are applicable until the entry into operation of the Unitary Patent Protection system.
Philippe OCVIRK, Partner & European patent attorney
Benelux Court of Justice re-confirms dissimilarity in signs despite identical word elements
We, Office Freylinger SA have been delighted to assist our client, ACCESSIT SARL in the opposition proceedings in relation to their trademark against .
We are very happy to announce that the Benelux Court of Justice rendered its decision in our client’s favour by following our submitted observations emphasising that despite the similarities between both signs regarding the descriptive verbal element “LUXAUTO, the signs differ in many aspects including the typeface used, the choice of colours, the designs, the number, position and size of the graphic elements.
The Court confirms the BOIP’sopposition decision that these different elements are more decisive for the overall appreciation of the sign of the trademark than the common descriptive word element and thus no likelihood of confusion could be determined.
The decision of the Benelux Court of Justice can be accessed in full here.
against 
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