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Launch of WIPO PROOF
Last Wednesday, WIPO launched a new service called WIPO PROOF. This tool provides a digital evidence of any file stating its existence date and its authorship. A proof that is actually essential as a preventive measure in order to be well-prepared in a possible court action against copyright infringement or trade secret misappropriation at a future stage.
New article release
The obtaining of trademark rights over shapes of products or packagings remains a hard battle in many jurisdictions, Switzerland included. While unfair monopolies must be avoided, are these signs inherently able to identify a company? Our last paper outlines the criteria of their eligibility for protection and continues the debate.
No confusion between Manor logo and Bodewo logo
The use and registration of Manor's new logo for retail activities was found to not infringe the trademark rights of Proverum in their logo (registered as such, in black and white and in color too). In a decision of 28 October 2019, the Commercial Court of Zurich considered that the two logos were not liable to be confused, one being made of hexagonal-shaped components while those of the other are petal-shaped. The resembling color and structure of the logos were not deemed sufficient to lead to a same overall impression. This case illustrates the difficult defense of figurative trademarks but also the need for searching them to avoid infringement claims when using a logo. The decision is available through this link.
Revision of Swiss Copyright Law
On April 1, the revision of the Federal Act on Copyright and Related Rights (Copyright Act, CopA) came into force. New provisions were introduced to combat online piracy, in particular for compelling providers of internet hosting services to take necessary measures to prevent content which infringe copyrights from being put back online after removal. The new law also allows the processing of data for criminal proceedings based on copyright infringement. In addition, photographs no longer need to have individual character to get protected. Finally, the protection of the works of performers is extended from 50 to 70 years from the performance, and the latter are now entitled to remuneration on their performances contained in an audio-visual work (including videos on demand), through collective rights management organisations. This legislative change follows the Directive (EU) 2019/790 which was adopted one year ago and has to be transposed into national laws of EU member states by 7 June 2021.
New factsheet release
SME and entrepreneurs, in these times for reflection, maybe you are thinking about finding a name for your offering ? Are you wondering about the purpose of trademark searches or about the benefits of filing a trademark ? You will find some answers and food for thought in our factsheet available in PUBLICATIONS. Intellectual property comes at a cost but is a success vector. Don't miss it.
World Intellectual Property Day
How beautiful is green - evoking both hope and the nature we all love. Yesterday occurred World Intellectual Property Day with this year's theme "Innovate for a green future". As WIPO's Director General puts it, "Together we can innovate for a greener, brighter and more sustainable future". As the world slows down and fights against a collective sanitary threat, it's good time to reflect on how we will build tomorrow together. Innovation is key to environmental sustainability and goes hand in hand with intellectual property created in the new ecotechnologies.
Blockchain's growing role against counterfeiting
Last month, Swiss luxury watchmaker Breitling announced reintroduction of its famous Top Time timepiece endowed with digital identity certificate. Through a QR code, buyers get an e-warranty card designed to prove the authenticity and ownership of the timepiece. This solution is part of Arianee blockchain as already used by Audemars Piguet, MB&F, Roger Dubuis and Vacheron Constantin. Through blockchain, information is stored in a decentralized, transparent and secure way. As such, it allows to better track a product's lifecycle. No less than 40 millions of fake timepieces are sold each year. Hence, this technology comes to play a key role in fighting against counterfeiting in the luxury industry and actually, many others too. It is currently being studied to spot fake KN95 face masks which are manufactured in China.
Rise in fraudulent COVID-19 domain names
The current epidemic outbreak has led to an amazing number of purchase of domain names containing the terms "covid", "coronavirus" or "corona", most with the intention of speculative sale or sending scam emails to visitors of the website. Fortunately, many domain name registers are taking preventive steps to block such fraudulent registrations. In this context, Apple just registered the domain name applecoronavirus.com after last Friday's announcement of launching a Bluetooth-based contact tracing platform together with Google.
New article release
Commercial names are difficult to defend in Switzerland, as illustrated by the recent case law. Trademark rights confer a wider and safer protection. To learn more in this regard, read our latest piece in PUBLICATIONS.
Consultation on reforming the laws against counterfeiting
The sale of counterfeit goods continues to increase in Switzerland, currently the fourth country which is the most affected by counterfeiting. It consists mainly in the importation of fake goods which are purchased through e-commerce and originating from Asia. Earlier this year, the Federal Council opened a consultation on the introduction of a simplified procedure for the destruction of suspect consignments by FCA (Federal Customs Administration). It is proposed that for small consignments, the owner of the intellectual property rights is informed only where the buyer objects to the destruction. This less administrative burden would save FCA's time to intercept more counterfeit goods. The consultation procedure will end on 30 April 2020. If the opinions collected are favorable, the new procedure will get reflected in the legislation.
In these difficult times, all our best thoughts are going to people affected by Covid-19, their caregivers and all those working to ensure the continuity of services. We also wish the greatest courage to companies in their efforts to pursue their business activities, especially SMEs. Take care of you and let's keep positive and confident.
SEDIN remains operational
Regarding the preventive measures taken by the Swiss authorities, we wish to reassure you that our office remains fully operational. We are well prepared and equipped to work remotely. Our networks and file management systems are encrypted and protected so all operations are fully secured.
To date, the Swiss Intellectual Property Office and the World Intellectual Property Organization are still open. This may change in the coming days and if so, we will make sure that all deadlines are met and new ones respected.
Our priority remains to take care of our clients' intellectual property rights for which they have entrusted us with the representation and handling. We are available to answer any question and to provide our assistance in respect to the protection and defense of communication assets.
Our thoughts are with all those affected and we hope that the spread of the virus will be under control soon.
Mexico joins the International Design System
Last Friday, Mexico adhered to the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs. The Geneva Act will enter into force in Mexico on 6 June, 2020. From then on, designs rights could be obtained in Mexico through the international route. These new legislative developments will represent an attractive option compared to the national design in terms of costs and formalities.
New article released
Trademarks containing a geographical name are difficult to protect in Switzerland. Yet, the authorities' examination practice has recently shown signs of greater flexibility. To learn more in this regard, read our latest piece in PUBLICATIONS.
Attendance to INTA roundtable in Geneva
Nathalie Denel and Isabelle Bruder will join the next International Trademark Association (INTA) roundtable which will take place on March 3 in Geneva. The discussions will focus on recent developments in Swiss Company Name Case Law with the valuable insights of Professor Dr. Daniel Kraus. Especially of interest will be the examination criteria for the risk of confusion between company names and trademarks.
Jägermeister's logo found not offensive
Jägermeister's logo is not immoral as ruled by the Swiss Federal Administrative Court on 5 February 2020 (decision B-1440/2019). The logo depicts a stag along with a shining white cross between its antlers. It is used for a famous liquor made from herbal medicine. Mast-Jägermeister SE sought trademark protection for a very broad range of products and services including cosmetics, mobiles phones, catering services etc. The Swiss examiners accepted the sign in relation to clothing and alcoholic beverages only. All other items were refused on the basis that the sign would offend the religious beliefs of the Christian community. The Swiss judges disagreed. They found that it would not be perceived as associated to the Christian cross but instead to Jägermeister branded liquor. The extensive use of the sign was a decisive factor. A great win and a significant competitive advantage for this company.
Here we are. Today 11pm GMT, the UK will leave the EU and the Withdrawal Agreement will take effect. But there is no reason for businesses to worry about their IP rights. Until the so-called IP Completion Day on 31st December 2020, EU law continues to apply in the UK. This means that EU trademarks and designs still enjoy protection there for the entire year. And what will happen next? Nothing raising big concerns either. New UK equivalent rights will be automatically created for registered EU trademarks and designs. For the others, it will be necessary to re-file for said equivalent rights, which will need to be done before 1st October 2021.
Confusion and misleading of the public
Last Wednesday, Hollywood Symphony Orchestra band performed in Geneva. Spectactors could legitimately believe that they would attend a concert by the famous Californian band and enjoy listening to the most beautiful film music of John Williams performed by virtuoso musicians. The disappointment was up to the surprise when they discovered another band from Barcelona playing on stage. Unfortunately, the US band doesn't hold any trademark rights over their name in Switzerland, but only in their home country. No trademark, no exclusivity. QED. A legal claim can be considered on the ground of copyright infringement and in arguing unfair competition. But trademark rights would have had a deterrent effect or failing that, much eased the court action. What a pity for the band and their fans. Consumers, beware of copies! Companies, beware of protecting your names!
We are much delighted to start the New Year with the venue of Catherine Monfort into the team. Catherine will bring her contribution as Senior Intellectual Property Paralegal thanks to her solid and extensive background in all aspects of the management of intellectual property rights, with notably a strong expertise in patent filing and prosecution, in particular at EU and international levels. She gained such experience by working in several Swiss intellectual property firms and in a major international company in the pharmaceutical industry. Feel free to reach out to Catherine and please join us in congratulating her for her new role!
No use, loss of exclusivity
In a decision of October 21, 2019 (TAF B-6505/2017), the Swiss Federal Administrative Court confirmed the dismissal of the opposition filed by Puma against a third party's trademark containing the word element PUMA. The conflicting trademark covers waters, fruit juices, non-alcoholic and alcoholic beverages. The plaintiff did not manage to show sufficient use of their trademark in relation to the stated goods for a 5-year period preceding the non-use counterclaim raised by the other side. It is interesting to note that Puma's trademark designates not less than 42 classes of goods and services. This protection strategy was however not successful for preventing registration of the disputed trademark. A targeted protection is sometimes a better choice to ensure exclusivity at lower cost.
Upcoming raise in trademark fees in the US
Some months ago, the United States Patent and Trademark Office proposed significant increases in the existing fees for the trademark registration and maintenance and even new ones for some actions which were previously available for free. After the public comment period, these adjustments could apply from August 2020. In view of this, it is worth considering early protection of the trademark in the US for cost saving reasons.
Significant move in the protection of geographical indications
Last Tuesday, European Union has joined Geneva Act of Lisbon Agreement, thus enabling its entry into force on February 26, 2020. Among others, this Act puts in place the international registration of geographical indications and appellations of origin through a single registration procedure with WIPO allowing to designate all contracting parties. In addition, it permits the accession to the Act by certain intergovernmental organizations. In Switzerland, a consultation was initiated by the Federal Council in May of this year and terminated two months ago, which should lead to the soon adhesion of this country too.
APRAM/EUIPO Annual Conference
SEDIN will attend the next conference of Association des praticiens du droit des marques et modèles (APRAM) and European Union Intellectual Property Office (EUIPO) which will occur in Paris on the 29th of November. SEDIN will be represented by Nathalie Denel and Isabelle Bruder. Should you wish to meet them on this occasion, please do not hesitate to get in touch. During this event, the main decisions issued this year in relation to trademarks and designs at EU level will be reviewed. This is key information for Swiss practice since the Swiss administrative and judicial bodies widely follow the positions taken by European authorities in this field.
Entry into force of revised Chinese Trademark Law
Today comes into effect the Fourth Amendment to China's Trademark Law which was passed on 23 April 2019. The changes should help in improving damages and measures of anti-counterfeiting and combating bad faith trademark applications. According to Article 4, "malicious trademark applications which are not for the purpose of use shall be rejected". This new intent-to-use requirement is a major step in dealing with the issue of trademark squatting. This requirement already exists in other jurisdictions like in the US. In Europe, it might soon come on the table too. In a dispute between Sky and Skykick, the Advocate General recently gave an opinion in favor of considering the trademark owner's intent to use the mark so as to avoid unjustified monopolies which prevent competition. This matter is pending before the Court of Justice of the EU for a much awaited preliminary ruling in the coming months.
Twentieth anniversary of UDRP
Yesterday was held a major conference at WIPO’s headquarters to celebrate the WIPO-designed Uniform Domain Name Dispute Resolution Policy (UDRP) which was initiated in 1999. The event looked back over two decades of 45'000 cases, and ahead to new online issues and options for improvement. Compared to litigation, UDRP continues to serve as the most effective and low-cost tool to combat cybersquatting. Nathalie Denel attended this event along with Kerim Yardimci from Sedin's allied firm Deris as UDRP panelist.
World Intellectual Property Indicators 2019
Two days ago, the World Intellectual Property Organization published the annual World Intellectual Property Indicators report. Overall, the number of trademark applications increased by 19.2%, with 10.9 million trademark applications filed last year. This figure doubled compared to five years ago. The Chinese applications account for up 84.4% of the total trademark applications filed, which is twelve times more than the US applications. On a global scale, the trademark area is more crowded than ever. In this context, trademark searches are indispensable to identify the legal risk prior to starting any use. First, opting for a distinctive name is definitely a good means of decreasing the likelihood of potential legal IP issues.
EUIPO and EPO's study about business value of IP rights worth reading
Some months ago, the European Union Intellectual Property Office (EUIPO) and the European Patent Office (EPO) released a study over the importance of IP rights for high-potential SMEs in Europe. While 40% of large companies hold IP rights, that figure drops to only 9% when it comes to SMEs. But interestingly, SMEs have 32% higher revenue per employee when they hold IP rights. And businesses that have filed at least one trademark are 13% more likely to experience high growth. Investing in protecting IP assets is sometimes perceived as low priority as being too costly for no immediate return. But from these data, it's clear that thinking long-term turns out to pay off with increase in turnover in the five coming years. Full report there.
Join us! We are looking for a Senior IP Paralegal
In the frame of the development of our activities, we are seeking an experienced IP Paralegal to assist us in serving our clients. The purpose of the role is to prepare and file trademark, design and patent applications, handle the prosecution until registration, take care of some defensive aspects and conduct IP searches. If you have the necessary skills and are rigorous, autonomous, well organized and collaborative, we look forward to your application.
Malaysia joins the International Trademark System
Last Friday, Malaysia has joined the International Trademark System administered by WIPO. The Madrid Protocol will enter into force for Malaysia on December 27, 2019. This country ranks in the 25th most competitive ones in the world according to the 2018 edition of the Global Competitiveness Report issued by World Economic Forum. Its economy grew by 4.7% last year. Swiss companies are among the main investors from Europe. Thanks to this adhesion, it will be easier and cheaper for them to protect their trademarks when selling their products and services in this market.
SEDIN attended "Exporter demain!" held by S-GE
Every year, Switzerland Global Entreprise (S-GE) gathers SMEs and startups from French-speaking Switzerland. The purpose is to gain knowledge in the future of trade relations in the current political context, get information from the field relating to the markets and share recipes for international success from other entrepreneurs. The theme this year was "Europe, USA & Cie: Expand in mature markets". SEDIN, represented by Isabelle Bruder and Nathalie Denel, joined this event to enhance its knowledge on commercial opportunities and clients' concerns for the purpose of giving the most business-oriented advice on the protection of IP assets abroad. See attached report to get the key insights from this event.
Armani’s eagle bitten by Glycine
On June 14, 2019, Giorgio Armani S.p.a (Armani) lost the Swiss proceedings it brought against the watch manufactory Glycine Watch SA (Glycine). Indeed, the Swiss Federal Court seized by Glycine reversed the decision of the Commercial Court of Bern. It denied any likelihood of confusion between Armani’s prior logo (on the left hand side) and Glycine’s logo (on the right hand side) in relation to watching goods and services in classes 14 and 37 (TF 4A_651/2018).
Apart from the presence of the word element “Glycine”, the Federal Court ruled that Glycine’s logo will not necessarily be perceived as a bird but could be seen as a stylized “W” letter or a winged crown. Glycine’s logo was therefore found sufficiently different from Armani’s logo, even assuming that the latter would have acquired a high degree of distinctiveness in relation to watches due to its reputation. Therefore, the question of the reputation of Armani’s logo for watches remains open in Switzerland.
Thereafter, Glycine entered into an extrajudicial agreement with Armani, letting their eagle be the only king in the Swiss skies.
SEDIN will attend MARQUES Annual Conference
Nathalie Denel will take part in the annual conference of MARQUES which will be held in Dublin from 17-20 September. This year, the conference will look at the impact on brands of changes in today’s fast-moving world, driven by legal and regulatory developments but also by politics, technology and new business models. Nathalie will also participate in the Geographical Indications Team.
Switzerland is the world’s most-innovative country
According to the 2019 edition of the Global Innovation Index published yesterday by the World Intellectual Property Organization, Switzerland is the most innovative country in the world. Highly industrialized and constantly looking for cutting-edge innovations, Switzerland tops the ranking for the ninth consecutive year. The index is based on 80 indicators, from research and development investments and international patent and trademark applications to newer indicators including mobile-phone app creation and high-tech exports (full data available here). The protection of intellectual property is key to allowing industrial exploitation of these innovations, in particular for raising funds from potential investors.
Brazil joins the International Trademark System
Brazil has joined today the International Trademark System administered by WIPO. Brazil is not only one of the world's top ten economies but also Switzerland's largest trading partner in Latin America. As of October 2, 2019, it will be possible to designate Brazil in an international trademark. That will be a major benefit for securing trademark rights in this country as opposed to a national application. Indeed, this route will be cheaper (no translation cost, no need for appointment of a local representative, multiple-class option) and shorter (examination period reduced to 18 months from filing). Following this, other Latin America countries are expected to join the Madrid Protocol soon.
Strenghtening of SEDIN team
Isabelle Bruder has joined today the legal department of SEDIN SA. She worked as an IP Lawyer for 12 years including 6 years in Switzerland for various leading IP firms. Her expertise covers the protection and defense of your trademarks, designs, domain names and copyrights.
An apple is an apple. Really ?
On April 9, 2019, Apple Inc. won a case before the Swiss Supreme Court for the registration of the trademark "Apple" applied for jewelry and other goods in class 14 and electronic toys hereunder computer and video games in class 28. The Supreme Court overturned a decision of the Federal Administrative Court. The latter found that in examining the distinctive character of a sign, it should be looked at as applied for and any effective use or perceptions of the relevant public disregarded. However, the Supreme Court pointed out that if a word has several meanings, the meaning as understood by the relevant public as the most important cannot be ignored. As "Apple" is one of the best known brands in the world, the average Swiss consumer does not primarily recognize "Apple" as a fruit, that is in its literal meaning, but directly as an indication of the concerned company, Apple Inc. The sign is consequently distinctive for the designated goods.
World Anti-Counterfeiting Day
Established by Global Anti-Counterfeiting Group in 1998, World Anti-Counterfeiting Day is held today as every June. It aims at raising public awareness on the extremely damaging effects of counterfeiting and piracy, at both health and economic levels. In 2018, the total value of counterfeit and pirated products caught by Swiss customs authorities amounted to 18.9 millions Swiss francs. They mainly consist of handbags, travel bags, watches and jewelry.
In the fight against counterfeits, it is as much important to watch the market, especially the online selling platforms, as to take measures through Swiss Customs assistance, criminal complaints and legal actions to stop the selling and claim damages. On top of intervening where the products are sold, actions must be taken in the countries of manufacturing and transit. Sedin can assist you on these steps in Switzerland as well as in Turkey, the second largest counterfeit market behind China, through our partner firm Deris.
Swiss patents - Decrease in official annuity fees
As of July 1, 2019 the fees to maintain a Swiss patent in force will reduce considerably. Over the entire maximum duration of protection, patent owners will save CHF 1'440, being a reduction of more than 15%. It will therefore be more advantageous to keep the patent alive throughout its entire life time of 20 years. Please contact us for a detailed overview of the revised annual fees.
SEDIN's new website now available
Our new website has been launched. It reflects our new identity and our core values. We hope you will enjoy the visit. You will access insightful news and articles with more to regularly be added. Please let us know your feedback and contact us for any question.
World Intellectual Property Day 2019 – IP and Sports
On the occasion of World IP Day events at WIPO in Geneva, Olga Fayad was present at WIPO. With the motto “Reach For Gold”, this year’s celebrations focus on the role that IP plays in encouraging innovation and creativity in sports.
Apple lost against Swatch and its tagline Tick Different
As decided by the Federal Administrative Court of Switzerland, Apple failed against Swatch's trademark "Tick Different" for watch products in class 14 (decision of March 15, 2019, B-5334/2016). Apple did not hold prior trademark rights in its tagline "Think Different" in class 14 and relied on the US unregistered mark arguing that it was notorious . However, the Court found that this tagline was not sufficiently known in Switzerland. Swatch can therefore keep its trademark and use it freely. After the decision, Apple filed its trademark in class 14 in Switzerland, but being younger, it is not effective against the prior rights of Swatch. Competitive markets are a race against the clock and the first to protect the trademark is most often the winner ! Read more in PUBLICATIONS.
SEDIN will attend INTA Annual Conference
As with every year, SEDIN will be present at the annual conference of the International Trademark Association (INTA) gathering more than 10'000 participants involved in intellectual property. The convention takes place in Boston from May 18 to May 22, 2019. SEDIN will be represented by Nathalie Denel.
If you would like to meet her during the event, please do not hesitate to contact her for a meeting proposal.
Brexit impact on European Union (EU) trademark rights
If the UK Parliament agrees on a Brexit deal, the validity of EU IP rights will be governed by the draft Withdrawal Agreement of March 19, 2018. EU trademark (EUTM) registrations will automatically be converted into national registrations keeping the filing and registration date. For pending EUTM applications, it will be possible to apply for a UK trademark without losing the filing date during the transition period (duration not known yet). International trademarks designating the EU will be treated the same way but the protection mechanism has not yet been decided.
In the case of a no-deal Brexit, the UK government has already prepared measures for EUTM registrations and applications ensuring the same rights in the UK as described above. A similar situation is envisaged for international trademarks designating the EU.
As no agreement was voted on on 29 March 2019, it is currently uncertain if a transition period will apply and if so, for how long. We will inform you of any new developments.
Canada joins the International Trademark System
On March 17, 2019 Canada joined the International trademark system (the Madrid System) which will come into effect on June 17, 2019 . On this date, it will be possible to designate Canada under an international trademark application or subsequently designate the country in an existing registration. With Canada acceding the Madrid System, it will be easier and less expensive for companies to protect their trademarks in Canada.