INTEGRITES Intellectual Property practice team prepared a compilation of relevant news in the field of protection of IP rights for the second quarter of 2019.
In this issue, you can read about the latest legislative initiatives in the field of intellectual property, significant legal findings of the Supreme Court and the high-profile case of foreign judicial practice, as well as legal news in the world that can strengthen the protection of authors against unfair copying, namely:
✓The Supreme Court clarified the circumstances need to be established to invalidate the certificate for a sign for goods and services;
✓The process of implementation of the provisions of the European Union law in the field of intellectual property continues: the draft law No. 9385 of December 10, 2018 was adopted;
✓The General Court has canceled registration of Adidas Trademark in the form of three parallel stripes;
✓In the US, appearance of Adidas Yeezy Boost is protected by copyright.
The Supreme Court clarified the circumstances need to be established to invalidate the certificate for a sign for goods and services
In case No. 910/513/18, the sign for goods and services “AMG” belonging to LLC “Amgroup”, was declared invalid on the basis of its similarity with the sign “AMG” of Daimler AG, previously registered in Ukraine for related goods 12 and services 36, 37, 39, 41 classes of NCL.
The Supreme Court clarified that in order to invalidate the certificate for a sign for goods and services, the marks should be evaluated for similarity as a whole, comparing selected elements of marks to establish their similarity is methodologically incorrect.
It is insufficient to establish the visual similarity of signs, as well as the identity of the list of goods and services for which signs are registered. Additionally, the courts should evaluate whether the consumer may have an idea that the goods and services belong to one person.
As a result, the Supreme Court reversed court decisions and sent the case for a retrial to the court of first instance.
Source: the Supreme Court resolution dated 09.04.2019 in a case No. 910/513/18, Daimler AG against LLC “Amgroup”, the Ministry of Economic Development and Trade of Ukrainе over the dispute on the invalidation of the certificate of Ukraine No. 195028 for a sign for goods and services, as well as the obligation to amend the State Register of Certificates of Ukraine for signs for goods and services.
On 09 April 2019, at the meeting of the Committee on Science and Education of the Verkhovna Rada of Ukraine, according to the results of the first reading, the draft law No. 9385 regarding the implementation of certain provisions of the European Union law in the field of intellectual property of December 10, 2018 was adopted as a basis.
The draft law provides, in particular, such innovations:
✓ Regarding the inventions and utility models:
🔺 the object of the utility model is only the device (the product, substance or process in the field of technology are excluded);
🔺 the possibility to invalidate the rights to the invention / utility model in administrative order (post-grant opposition);
🔺 the patent will no longer protect new forms, properties, use of the invention / utility model known by the level of technology;
🔺 the “Bolar Provision”, according to which, the use of someone else’s invention in research conducted to prepare and provide information for registration of a medicinal product will no longer be considered a violation of the rights to the invention. This means that generic companies will be able to develop, study, research and register generics before the expiration of the patent for the original medicinal product.
✓ Regarding the industrial designs:
🔺 the additional protectability criterion – an individual character of the industrial design;
🔺 the legal protection of unregistered industrial designs;
🔺 the rights to the industrial design will be valid for no more than 25 years (now – 15 years);
🔺 the type of security document: the patent is changed to a certificate;
🔺 the possibility of pre-trial revocation of the certificate in the Appeals Chamber (the struggle against the patent trolling).
✓ Regarding the signs for goods and services:
🔺 the possibility of filing an application in electronic form (now only in writing);
🔺 the possibility of registering a collective trade mark (now only individual);
🔺 the list of grounds for refusal to register or invalidate trademark registration is expanding;
🔺 the procedure for granting legal protection under international registration is being specified.
As of today, the draft law No. 9385 is expected to be considered in the second reading.
The General Court has canceled registration of Adidas Trademark in the form of three parallel stripes
On 19 June 2019, the General Court canceled registration of Adidas trademark consisting of three parallel stripes, on the basis that the Adidas logo does not contain sufficient characteristic features that can be protected as a trademark. The court found that the sign lacks distinctive features, but only provides the company with a broad monopoly allowing to prohibit the use of the sign by third parties.
This story commenced in 2009, with a dispute against the Belgian company Shoe Branding Europe BVBA, where Adidas demanded from BVBA to change its shoe logo in the form of two parallel oblique stripes on the basis of close similarity with the Adidas logo. The case was not successful for Adidas. Moreover, in 2017, the European Intellectual Property Office (EUIPO), at the request of BVBA, canceled the registration of the said Adidas trademark.
Thus, the General Court only confirmed the legality of the EUIPO decision.
Adidas has two months to appeal the decision to the European Court of Justice. However, this shall not be interesting for Adidas, since the company owns dozens of other trademarks that protect the three stripes in various shapes and colors.
Source: the General Court decision dated 19 June 2019 in the case T‑307/17 Adidas AG v EUIPO.
In the US, appearance of Adidas Yeezy Boost is protected by copyright
Having lost registration of a TM in the form of three parallel stripes on the territory of the EU, Adidas has acquired copyright protection by registration for “Yeezy Boost 350 Version 1” and “Yeezy Boost 350 Version 2” sneakers on the territory of the US.
The Review Board of the United States Copyright Office, having reversed the previous decision has given green light for copyright registration of the sneakers as artwork and sculpture.
The first decision refusing registration was based on the “useful article” criterion present in IP laws of majority jurisdictions. In essence, it means that articles with intrinsic utilitarian function are not copyrightable.
However, the Review Board has decided that design of the sneakers of the specified models can be perceived apart from the utilitarian function of the sneakers. According to the decision, aesthetics of “Yeezy Boost 350 Version 1” and “Yeezy Boost 350 Version 2” prevails over functionality.
This case deviates from traditional practice in protection of design articles. The Review Board decision strengthens protection of authors from copying.
The Ukrainian copyright law does not contain similar direct prohibition on the protection of useful articles. However, in practice, courts are not inclined to recognize such items, in particular, clothing / footwear, or furniture, copyrightable. A traditional way to protect the design of such products is to obtain a patent for an industrial design, which has a direct analogue in American legislation – design patent, which is also the main method of protecting the appearance of useful articles in the United States.
On the territory of the EU, the tool for protecting design of useful articles is Registered Community Design Right, subject to registration, and more limited in protection Unregistered Community Design Right effective for a period of 3 years if the author / owner has chosen not to register the design of an article.
Source: U.S. Copyright Office Review Board Decision dated 09 May 2019 in response to request for review of decision refusing copyright registration for “Yeezy Boost 350 Version 1” and “Yeezy Boost 350 Version 2”.
This newsletter should not be used as an instruction for taking legal advice in any particular case. If you have any questions, you are welcome to contact: Daryna Demchuk,Associate, email: firstname.lastname@example.org.
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