About 150 participants had registered for the 3rd edition of Office Freylinger’s seminar on Intellectual Property (La Propriété Intellectuelle, en pratique).

Check out the video report on our partner’s website: paperjam business club.

Since may 2008, the London Protocol –an optional agreement that reduces the translation requirements for European patents– has led to substantially reductions in translations costs for patent proprietors.

Up to now, Belgium has not adhered to this protocol and has required a French, German or Dutch translation of the full specification to be filed when the patent was granted in English.

 As of January 1, 2017 Belgian patent law changes: a European Patent granted in English, French or German will be in force in Belgium without any translation requirement.

The new law will be applicable to European Patents granted on or after January 1, 2017.

The Belgian Office (OPRI) will thus no longer accept translations filed for the validation of European patents granted in English in respect of which the mention of grant, maintenance in amended form or limitation is published in the European Patent Bulletin on or after 1 January 2017.

Early publication of a translation of the claims of a pending European Patent application will remain available for parties wanting to establish provisional protection.

The expenses for obtaining patent protection in Belgium via the European route will thus be reduced to the costs of annual maintenance fees, which will please patent proprietors.

This being said, it still remains advisable to provide an address for service.

Today at the EU’s Competitiveness Council meeting in Brussels, the UK announced that it is proceeding with preparations to ratify the Unified Patent Court Agreement.
This puts an end to the uncertainty period that started with the Brexit vote back in June this year.

The Unified Patent Court will be competent for classic European patents and have exclusive jurisdiction for the new European patent with unitary effect (Unitary Patent).
The Unitary Patent is an EU wide patent that can be requested at the grant stage of the conventional European patent. The Unitary Patent Court will permit EU-wide enforcement of European patents, making them more valuable.

Ratification by 13 countries is required for the new system to start, including France, Germany and the United-Kingdom. Today, 11 countries have ratified (AT, BE, BG, DK, FI, FR, LU, MT, NL, PT, SE), and 4 are ready to ratify – including the UK. Germany is reportedly ready for ratification.

With this good news, entry into force of the Unitary Patent system may again be expected in 2017.

Philippe Ocvirk

Office Freylinger organise le 1er février 2017, à l’Abbaye de Neumünster, la 3e édition de la journée thématique :

La propriété intellectuelle, en pratique.

Une journée composée de six ateliers différents consacrés à la propriété intellectuelle, qui traiteront de la détection et l’appropriation des droits de PI tels que les brevets, marques et modèles, des logiciels, de la gestion et valorisation (évaluation/licensing) de la PI, ainsi que des aspects de fiscalité.

On y abordera également l’actualité de la PI avec des évolutions majeures : paquet marques, directive « secret des affaires » et le brevet unitaire européen.

Programme détaillé et inscription sur le site de notre partenaire Paperjam Business Club.

 

Avec la participation de :

Applicants should pay attention not to file trademarks containing or imitating elements of flags or state emblems.

Proof of it is the success achieved in the case concerning the cancellation request filed by the European Union in 2009 against the semi-figurative German trademark

N° 30 2008 032 360 filed for various customs and transport services in classes 36 and 39.

According to the provisions of Art 6ter of the Paris Convention, flags and emblems of member states as well as names and emblems of international intergovernmental organizations (IGOs) are protected against unauthorized registration and use as trademarks.

However the German Patent Office rejected the EU’s cancellation request in April 2010 considering that the semi-figurative trademark EUROKURIER did not evoke any association with the EU institutions, neither in the comparison between the signs nor in the comparison with the protected commercial services.

Thanks to solid arguments filed by Office Freylinger S.A., this first instance decision has now been rejected by the German Federal Patent Court (BPatG) pointing out that the design of twelve five-pointed stars on a dark background is sufficient to constitute an imitation of the official emblem in its heraldic meaning and that the additional elements could not avoid a risk of confusion with the activities of the EU institutions. Moreover the German Federal Patent Court has confirmed that the commercial customs clearance and transportation services run by EUROKURIER could also be allocated to the European Union institutions.

Consequently the German trademark application N°30 2008 032 360 was ordered to be cancelled.

Case Reference : 26W (pat) 73/10 of 28 July 2016

Nathalie CAILTEUX

On 14 April 2016, the European Parliament adopted the draft on the new Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure .

The directive introduces an EU-wide definition of “trade secret”, meaning information which is secret, has commercial value because it is secret, and has been subject to reasonable steps to keep it secret.

The text offers means of action and remedies against ‘unlawful acquisition, use and disclosure of confidential commercial information’, such  as injunctions and correctives measures, damages and provisional and precautionary measures.

The Directive also contains provisions on the preservation of confidentiality of trade secrets in the course of legal proceedings.

According to the press release, ‘MEPs ensured that freedom of expression and information will be protected and that the rules will not restrict the work of journalists.’

After adoption of the text by the Council, the Member States will have two years to implement the provisions of the Directive into national law.

Philippe Ocvirk

After long discussions and analyses, the reform of the European Trademark Law, the so-called “Trademark Package”, was adopted on 15 December 2015 by the European Parliament and will come into effect on 23 March 2016 for the Community Trademarks.

This reform contains two texts, the objective of which is the enhanced harmonization of the trademark law in the European Union.

• The new Regulation No 2015/2424 amends Council Regulation (EC) No 2007/29 of
  26 February 2009 and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trademark.
• The new directive No 2015/2436 replaces directive No 2008/95/CE: it aims to a harmonized functioning of the trademark systems and the unitary character of the trademark law both at national and Union level. The new directive was published on 23 December 2015 and came into effect on 13 January 2016. Unlike the Regulation, it does not have a direct effect and will have to be implemented by the member states within 3 years. However, it should be noted that a period of 7 years is allowed for the implementation of important dispositions about the new administrative procedures for opposition, revocation and invalidity.

No doubt that the upgrade brought by the new Regulation and Directive of the “Trademark Package” will have consequences in the trademark owners’ everyday life. The present summary does not comment each new measure of the Trademark Package but only the most important and noticeable changes.

A new name: “European Union trademarks”

It has been a long time since the “European Community” became the “European Union”. In order to align with this new name, the “Community Trademark” now becomes the “European Union Trademark” or “EU trademark”.

In the same way, the OHIM changes its name and becomes the EUIPO, i.e. European Union Intellectual Property Office.

Removing the graphical representation requirement

This is probably one of the most important improvements brought by the Trademark Package. In the past, the graphical representation requirement made it almost impossible to register sound trademarks, olfactory or gustative trademarks. From now on this provision of the Amending Regulation should make it easier to protect such trademarks.

The disappearance of this basic criterion means that it will be necessary to establish new technical standards and acceptable criteria in order to enable trademark owners to file their trademark applications and to allow the comparison of signs and determine a potential risk of confusion.

This amendment provides new protection opportunities to European trademark owners and is to be welcome as an evolution in line with technical developments.

Codification of case law IP TRANSLATOR

A trademark is a protected sign for specific products and services. These products and services are integrated in 45 classes sorted according to the international Nice classification. All classes include generic definitions (class headings) and numerous detailed products or services.

With the IP Translator decision the Court of Justice of the European Union requested a clear and precise description of the products and services to be protected by the trademark registration.

In the past, if you used the class heading, the protection covered all the products or services included in this class. The protection of such trademarks will from now on be limited to the list of goods and/ or services as indicated in the filing request.

The owners of the trademarks filed before 22 June 2012 now have the possibility to comply with the new requirements established by the decision IP TRANSLATOR until 24 September 2016, i.e. they can file a declaration requesting the amendment of the specification of their trademark registrations in order to meet the new criteria.

Consequently, if the concerned trademark owners do not clearly describe their products and services within this deadline, the scope of protection of their trademark will be limited to the literal sense of the definitions in the class headings.

Deciding not to modify the description of the products and services will thus limit the economic and legal value of trademarks and could even prevent trademarks owners from claiming their trademark rights against potential frauds or counterfeiters. We therefore recommend analyzing in detail the existing trademark registrations in order to avoid such inconveniences.

The end of the system « three classes for the price of one »

Until now the official filing fees for a community trademark amounted to 900 EUR for an application in one to three classes. As soon as the new Regulation comes into force the official filing fee for a EU trademark application filed electronically in one class will amount to 850 EUR, plus 50 EUR for the 2nd class and 150 EUR for each additional class. This corresponds to an increase of 150 EUR for a trademark application in three classes, whereas many European trademark owners need more than 3 classes for an adequate protection.

Contrary to what the official communications indicated, this is actually a tax increase.

The aim of this measure is to encourage the applicants to file their trademark applications only for the classes that are absolutely necessary and to slim down the European trademark registries. It might be interesting to verify whether the national Offices will also adopt on a voluntary basis this new facultative system.

Implementation of administrative procedures concerning cancellation or revocation

Currently the cancellation or revocation procedures of national trademarks are solely dealt with on a judicial basis, which often means high costs and long-lasting procedures.

The new Directive aims to simplify these proceedings by enabling the trademark owners or their representatives to initiate cancellation or revocation actions before the competent national trademark offices.

It is very likely that the amount of cancellation and revocation actions will increase exponentially if the new Directive is correctly implemented into the various national legislations.

Various changes

Furthermore, the “Trademark Package” will bring several other changes, some of which are listed hereafter:

• The possibility to register guarantee or certification trademarks
• An improvement in combatting fraud, especially by deleting the condition that fraudulent or counterfeited goods have to be sold in the territory of the European Union, but also by prohibiting to affix a sign identical with, or similar to a registered trademark, on all kinds of packaging, labels, tags, security or authenticity features or devices or any other means to which the mark may be affixed.
• The traditional terms for wine, traditional specialties guaranteed and the designation of plant varieties, protected on a national level, will also constitute obstacles against the registration of European Union trademark applications.

* * *

The “Trademark Package” maintains the coexistence of the two systems of trademark protection at national and European level but should lead to a harmonization of the procedures in both systems.

The ” Trademark Package ” is indeed a mix of small and major changes, that brings an evolution of the rules rather than a revolution of the European trademark law.

Watch out our short film (in French):

Office Freylinger protects your intellectual property!

The decision taken on September 07, 2015 by the Benelux Office (full decision here) in the opposition proceedings filed by eBay Inc. against the Benelux trademark application N°1245888 “Sportbay” shows the limits of a famous trademark.

Although well-known trademarks may under certain conditions claim wider protection for uncovered products and services, the Benelux Office has considered that the repute of “eBay” could not prevent the registration of the trademark “Sportbay” for products and services which are not protected by the trademarks “eBay”.

Despite the fact that a certain level of similarity between the signs “eBay” and “Sportbay” has been outlined, the BOIP considers that the risk of confusion between both signs remains limited to identical goods and services.

As a consequence, the trademark “Sportbay” will be registered in classes 22, 25, 28 as well as for services in class 35 which are not protected by the trademarks “eBay”.

Nathalie Cailteux

A New interpretation of Regulation (EC) No 469/2009 — Article 13(1)

The European Court of Justice rendered a decision on the 6.10.2015 in Case C‑471/14, Seattle Genetics Inc. v Österreichisches Patentamt,

The Court ruled that Article 13(1) of Regulation No 469/2009 is to be interpreted as meaning that the ‘date of the first authorisation to place the product on the market in the [European Union]’ within the meaning of that provision is the date on which notification of the decision granting marketing authorisation was given to the addressee of the decision.

In particular it is thus not the date of the decision that must be taken into consideration but the date this decision was notified to the applicant.

Click here for the full decision.

A lot of SPCs need to have their duration recalculated.

Pierre KIHN

On 18 March 2015, the Luxembourg Parliament approved the Agreement on the Unified Patent Court (UPC). Upon signature by the Grand Duke and ratification, Luxembourg will join the 6 EU states that are already formally in the game (Austria, Belgium, Denmark, France, Malta and Sweden).

The creation of the Unified Patent Court is a major evolution for patent enforcement. It will be competent for infringement and nullity actions for both classical European Patents and European Patents with unitary effect. A patentee will thus be able to enforce his rights in all the member States though a single court action.

Luxembourg is in the heart of the new system: the Court of Appeal of the UPC and the Courts’ Registry will be located in Luxembourg. Of course, the Court of Justice of the European Union (CJEU) is also located in Luxembourg, and will have the final say on any points of European law referred by the Unified Patent Court.

Furthermore, Luxembourg is centrally located between the Paris and Munich sections of the Central Division of the UPC, and the Munich and The Hague offices of the European Patent Office.

Philippe OCVIRK

Fort du succès de 2013, Office Freylinger organise la 2ème édition de la journée thématique

La propriété intellectuelle, en pratique

le 5 mars 2015 de 9h à 16h à l’ Abbaye de Neumünster.

L’intérêt pour la propriété intellectuelle ne faiblit pas. Chaque entreprise cherche à protéger ses créations, à valoriser des recherches, à profiter des incitations fiscales.
L’actualité récente démontre l’intérêt des utilisateurs et pouvoirs publics : brevet unitaire, directive secrets d’affaires, protection du logiciel et des marques.

De 8h30 à 16h00, six ateliers vous sont proposés sur les différents thèmes de la PI tels que : détection/appropriation, brevet unitaire européen, logiciels et internet, licensing, valorisation et fiscalité (article 50 bis).

Programme détaillé et inscription sur le site de notre partenaire Paperjam Business Club.