Non classé

Applications to register the trademarks “distinctive flavor of peppermint” and “a peppermint scent” for a nitroglycerine  spray have recently been rejected by the  Trademark Trial and Appeal Board (TTAB) of the US Patents and Trademarks Office (USPTO). In the event, the TTAB highlighted the fact that the peppermint substance comprises a functional matter of the product and that the applicant had provided no proof as to the distinctive nature of the trademarks.

Peppermint as a functional characteristic of the product

The examiner held that peppermint has an exclusively functional characteristic within the product and is not a distinctive sign that could qualify it as a trademark. To clarify this “functional” notion, reference was made to the US Supreme Court case of Inwood Laboratories, INC v Ives Laboratories, INC in 1982 in which it was ruled that a characteristic of a product is “functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article”.

In this case, the defendant argued that it is an inactive ingredient of the medication that has no therapeutic properties. Thereby, according to him, it could not be considered to have a functional characteristic.

However, the examining attorney demonstrated by producing the description of an American patent granted for a nitroglycerine spray that the use of menthol improved the medicine’s effectiveness and limits its side effects.

The peppermint is therefore not superfluous but a truly useful ingredient of the medication.

The distinctive character

Distinctive character is an essential condition for obtaining a trademark. The mark must not only enable customers to distinguish the product from those of its competitors, but it must also be sufficiently different from the product or service designated.

The examining attorney stated that the use of peppermint in a nitroglycerine spray by the Company is not exclusive because it is also used in other sprays. He also underlined that aromas and scents have never intrinsically been of a distinctive nature and that therefore the applicant must demonstrate how this scent could fulfill the requirements of a trademark.

In the event, the applicant had provided no convincing proof as to the distinctiveness of the trademark.

Counterfeiting is an economic and social curse: according to the OECD, counterfeiting accounts for 5 to 7% of world trade, or an approximate value of 200 billion euros.

Contrary to common beliefs, it is not limited to the trade of cigarettes or luxury goods.

Counterfeiting evolves in parallel to the legal market and affects all sectors: food, clothing, personal care or medication. Some seizures made this year highlight this phenomenon. For example, on May 17, 2013, the Customs of Le Havre’s port seized 1.2 million packets of counterfeit aspirin from China. In another case: on May 15, 2013, an inspection at the port of Marseille resulted in the interception of 10,000 packets of biscuits counterfeiting the famous brand “BN”.

Although significant, these seizures are not enough to bring a smile back to the face of French customs. Despite a growing influx of counterfeit goods, mainly from Asia (70%), seizures collapsed in 2012. Constantly increasing, they had reached 8.9 million items seized in 2011 to then fall to 4.6 million the following year. A drop of… 47 % !

If budget cuts also affect the French Customs, they attribute this decline rather more to the effect of the European Court’s decision Nokia-Philips (EUCJ, December 1, 2011, aff. C-446/09 and C-495/09, Koninklijke Philips Electronics NV c/ Lucheng Meijing Industrial Company Ltd and a. and Nokia Corporation c/ Her Majesty’s Commissioners of Revenue and Customs).

Indeed, the approach taken by the Nokia-Philips decision limits the intervention of Customs on goods suspected of infringement in transit or transshipment, including requiring official evidence justifying its action. Thus, since early 2012, the French Customs has stopped working on suspected counterfeit goods in transit or transshipment. This case clearly exposes Europe to the risk to become a platform for counterfeit redistribution!

However, the Nokia-Philips case law is not yet set in stone. The EU Regulation No. 608/2013, which comes into force on January 1 2014, does not proscribe the detention of goods in transit or transshipment. In addition, the European Commission, via its proposals of March 27 2013, has stated its desire to make EU regulations more effective on this point.

French Customs also report an exponential increase in the sales of counterfeit goods on the Internet. These items seized by postal or express freight involved 1% of the items seized in 2005 (35,000 items) and 15% in 2011 (1,421,773).

In 2012, counterfeit items sold on the Internet represented a total of 1,428,281 or 30% of the seizures! Having realized the extent of trafficking in counterfeit goods on the Internet, French Customs launched in March 2009 a special operations unit called “Cyberdouane” (“Cyber Customs”). These findings are also due to the increased activity of this unit.

Thereby, to face counterfeiters in constant evolution, the French Customs has sought to adapt. To be effective, this adaptation by Customs must rely on the ongoing cooperation with all stakeholders directly or indirectly involved.

Among them, are other Customs Services, both Europeans and foreign. If greater harmonization at European level is in progress, including through the EU Regulation No 608/2013 and the proposal of the “packet mark” of the European Commission dated 27 March 2013, it remains a long-term process. As for cooperation with foreign customs services, the French Customs has realized the extent of its importance, and is constantly trying to reinforce ties, mainly with Chinese and Hong Kong services.

In addition, partnership with rights holders improves the efficiency of services. For instance, rights holders can make intervention requests. Free and valid for one year, the intervention requests allows Customs to detain any suspect goods for 10 days and enable them to better target their controls. It also allows holders to successfully protect their intellectual property rights in court.

Between the protection of intellectual property rights on the one hand, and the freedom of circulation of legitimate goods on the other hand, the French Customs is constantly seeking a balance without always having the means to achieve its ambitions.

The Benelux countries, namely Belgium, Luxemburg and Holland, have adopted certain changes concerning the protection of trademarks and designs on their territories.

In a desire to simplify procedures, the Benelux Office for Intellectual Property has made 4 major changes:

Marks can be renewed simply by paying the renewal fee

As from October 1st 2013, sending the renewal payment fee is sufficient to maintain trademark protection. It is no longer necessary to send a prior written request. Moreover, it is possible to pay fees online on the Office website which thereby simplifies the procedure.

A new working language

French and Dutch were the two official languages, but as from October 1st 2013 English is now a third option. In effect, applications can now be filed in English which would lead to the whole procedure being completed in English.

Calculation of the opposition period

The calculation of the opposition period will no longer be based on the first day of the month following publication but on the publication date itself. In other words, for a publication made on November 20 2013, the opposition period would expire on January 20 2014 and no longer on February 1st 2014.

Extension of the period for the suspension of oppositions

In the event of the suspension of an opposition procedure, the previous delay of two months has now been extended to four months.

If Belgium and Luxembourg have not previously been part of the system for international industrial designs, it now is. This is respectively because on June 7 2013 and September 3, 2013, the Belgian and the Luxembourgian government signaled the deposit of its instrument of ratification of the Hague Agreement.

Although in contrast to the European Union, Benelux is not a member of the Hague Agreement. For this reason it is important to specifically designate the three countries when filing an application in order to ensure effective protection across these territories.

As a reminder, this system concerns the international registration of industrial designs. An attractive proposition, it affords protection in the different member countries (61 at present(1)) by means of a single application to the World Intellectual Property Organization (WIPO) in a single language (French, English or Spanish) which is relatively inexpensive.

Moreover, processing is relatively quick since in principle the publication of the registration occurs six months after filing the application and protection is guaranteed for 5 years. As for extensions, they can be obtained in accordance with the legislation of each member country, though this is limited to 25 years for the European Union. This system is an excellent mechanism for the protection of international industrial designs.

Although Belgium’s and Luxembourg’s accession will not greatly enhance the attractiveness of this Agreement, the impending membership of the United States and Great Britain, on the other hand, will undeniably reinforce the scope of this system established by the Hague Agreement.

We are glad to see additional countries joining this system for international protection which clearly demonstrates its effectiveness.

                                                                       
(1)    http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/hague.pdf

The Ministry of Commerce and Industry responsible for the protection of trademarks in Saudi Arabia has recently made significant changes to the trademark application process, with effect from September 25 2013.

A dedicated online platform

The main novelty is the digitalization of the procedure for registering a mark. In effect, requests to register a trademark from now on can only be filed online via the portal provided on the Ministry website(1). But it is important to specify that local agents specialized in the protection of trademarks must ensure prior registration in order to provide access to this platform.

The process for filing an application

In order to apply to register a trademark, the applicant must provide his agent with a signed power of attorney by sending a scanned color copy to the dedicated platform. The same day, or by the following morning, the Trademark Office will either reject or approve the power of attorney.

However, the procedure is not fully digitalized, so that if power of attorney is approved, the original version must still be sent to the Office. There again, the anticipated processing time is short: that same day or shortly afterwards the power of attorney will be added to the online account of the local agent who will therefore be able to initiate a trademark application request on behalf of his client. Power of attorney registered in this way will be valid for all future applications.

As for the choice of classes, these are limited to the categories listed in the 10th edition of the Nice classification published in 2012. The only inconvenient aspect of this new procedure is that in the event of a priority claim, the priority document must be produced at the time of the claim in a scanned version as well as sending the original hard copy to the Trademark Office.

Updates on the application use modern communication channels.

In a desire to reflect modern trends, information about the progress of the dossier is sent to the local agent by SMS or by e-mail.

The digital process is limited to new applications.

It is important to note that this procedure only applies to new applications for the time being, whilst extensions, changes to the name of the mark holder and other related amendments are not yet available online.

All these changes reflect the desire for modernization in recent years that Saudi Arabia has expressed in terms of trademark protection. We warmly welcome their approach.

                                                               
(1) http://tm.mci.gov.sa.

In the US, judicial actions are possible for multiple domain names on the basis of the Anti-cybersquatting Consumer Act and the Lantham Act.

Two types of actions are possible depending in the objective of the trademark holder. In this respect, the possibility to claim compensation and the reimbursement of the attorney fees may be a crucial issue in the decision-making process for a judicial action in the US.

If this objective is pursued, the choice of an action in personam may constitute an appealing choice. It is ground on the capacity of the parties to activate the jurisdiction of a US Federal Court (the registrant is domiciled in the US, the trademark owner has right protected in the US) and authorizes the claimant to claim compensation and reimbursement of attorney fees.

Since this action cannot cover all situations, it should be noted that an action in rem in other words directed against the domain name themselves may be considered for the registrant that cannot fit in the first category.

Dreyfus is at your disposal for any advice you might need.