Law and practice snippets: June 2023
An update on this month’s practice points by our Law and Practice Committee including updates from the EUIPO, the Benelux trade mark register and Hague online payments.
News of note
IPEC – Processing of cases filed in the Small Claims Track (“SCT”) from 3rd July 2023
Following last month’s update reporting that all claims filed either on CE File or in person in London will be transferred to Manchester and case managed by District Judges in the Manchester Civil Justice Centre from 1st June 2023, this has now been pushed back to 3rd July 2023. This is to allow more time to ensure the transfer goes smoothly.
More information is available here.
Working with the registries
Via the Law and Practice Committee, CITMA meets regularly with the UK IPO and other registries to discuss in detail points of practice and raise important feedback and questions submitted by members.
Wish-list for UK IPO One IPO Transformation Project
The Law & Practice Committee regularly discuss the One IPO Transformation Project with the UK IPO.
A number of items have been suggested by the Committee and by members, which have been added to a wish-list for consideration.
If you have any questions or feedback for the UK IPO relating to law and practice, including any items you would like to add to the ‘wish list’ for consideration as part of the digital transformation project, please email [email protected] marking it for the attention of the Law & Practice Committee.
Sharp practice
Together we continue to monitor requests for payments and other examples of sharp practice.
Please also continue to send examples to [email protected], along with confirmation that your client is happy for the information to be sent to the UK IPO.
USPTO – Warning regarding spoof calls to trade mark applicants
The USPTO has issued a warning regarding trade mark applicants being contacted via telephone by scammers.
The callers falsely claim to be from the USPTO, often using a tactic called “spoofing” where they use a fake caller ID so that the call displays a name, number and location different from the caller’s real details.
The calls are an attempt to obtain personal information and/or money.
Trade mark applicants are reminded that USPTO employees will never ask for personal information or payment information over the phone.
The USPTO has provided advice about what to do in the event of receiving a suspicious call, and information for anyone who has been scammed.
More information is available here.
International updates
EUIPO – Image search in TMview extended to all TM5 offices
The EUIPO has confirmed that as of 15th May 2023, the images of trade marks from the non-EU TM5 Office have been integrated into TMView.
TM5 consists of the five largest trade mark offices in the world, namely China National Intellectual Property Administration (“CNIPA”), Japan Patent Office (“JPO”), Korean Intellectual Property Office (KIPO), United States Patent Trademark Office (“USPTO”) and the EUIPO.
Together the five offices are responsible for 60% of the world’s internationally filed trade marks.
This latest addition means that the TMview image search is now available to all the TM5 in addition to the EU IP offices in the European Union Intellectual Property Network (EUIPN).
More information is available here.
EUIPO – New pre-assessment check feature
New pre-assessment checks are available for EU trade mark applications, enabling applicants to run some of the checks usually carried out by EUIPO examiners in order to detect specific problems before filing.
This new feature is not a substitute for the examination of each application on a case-by-case basis and cannot be considered legal or professional advice.
The results of the tool are purely informative and non-exhaustive.
Currently, applicants can use the feature to automatically check whether a trade mark is deceptive, offensive (in any EU language), registered as an EU domain or if it is in conflict with a plant variety. More information is available here.
EUIPO – Extension of time limits for parties in Ukraine
The Executive Director has issued Decision EX-23-6 granting a new extension of time limits to all parties in proceedings before the Office having their residence or registered office in Ukraine.
The extension entered into force on 25th May 2023 and extends all time limits expiring between 5th June 2023 and 14th September inclusive until 15th September 2023. More information is available here.
Technical issues relating to EU trade marks on the Benelux trade mark register
The exchange of data between the European Union Intellectual Property Office (“EUIPO”) and the Benelux Office for Intellectual Property (“BOIP”) temporarily suffered a technical malfunction.
As a result, EU trade marks were not fully shown over the past few months in the Benelux Trademark Register.
Since 31st May 2023, the data has been fully updated again and the problem has been solved. Furthermore, measures have been taken to avoid such situations in the future. More information can be found here.
WIPO - New Method of Online Payment of Fees under the Hague System
The WIPO Pay platform now offers an additional online payment method for the payment of filing and renewal fees under the Hague System to the International Bureau: ‘eWallet’ can now be used by Hague users who have Apple Pay, Google Pay and Samsung Pay accounts.
Other fees payable to the International Bureau cannot currently be paid via WIPO Pay. Further information can be found here.
Cases of note
Emmentaler Switzerland v EUIPO T‑2/21
In 2017, Emmentaler Switzerland - Consortium Emmentaler AOP applied to register the word mark “EMMENTALER” for products in class 29, namely for cheeses with the protected designation of origin “EMMENTALER”.
The EU Examiner rejected the application on the basis of Article 7(1)(b) and (c) and Article 7(2) of Regulation 2017/1001, finding the mark descriptive and not capable of designating the geographical origin of the goods.
The applicant’s appeal to the Board of Appeal was dismissed in February 2020, following which the applicant appealed to the General Court with regard to the descriptive character and the refusal of protection of the sign as a collective trade mark.
In its decision dated 24th May 2023, the General Court upheld the decision of the Board of Appeal, confirming that the mark has a descriptive character in part of the EU, which may be a single Member State (in this case Germany).
The General Court also found that the mark does not enjoy protection as a collective mark.
By way of derogation from Article 7(1)(c) of Regulation 2017/1001, signs or indications that may be used to identify the geographical origin of the goods or services may constitute collective trade marks according Article 74(2) of that Regulation.
This derogation has to be interpreted and applied strictly. Only signs which are considered as being an indication of the geographical origin of goods will fall within the application of that derogation and be eligible for protection as a collective trade mark.
On the other hand, signs which are regarded as an indication of the kind, quality, quantity, intended use, value, time of production, or other characteristic of the goods are excluded from that protection.
Therefore, the Court concludes that it does not enjoy protection as a collective trade mark. The full decision is available here.