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Chile's accession to the International Trademark System
Last month, on May 19, Chile approved a bill accepting the adhesion to the Madrid Protocol. The country’s accession to the Protocol, once it joins, will make it the sixth Latin American member of the International Trademark System. Chile, the fifth largest economy in the region, will follow Brazil, Colombia, Cuba, Mexico and Trinidad & Tobago which can be protected through an international trademark. Another possible choice alongside the 124 countries already available.
Referral to CJEU in Louboutin v Amazon case
Is Amazon directly liable for trademark infringement if a counterfeit product is being promoted, sold, stocked and shipped through its platform? This is the question recently asked by Christian Louboutin to the Court of Justice of the European Union (referral, Case C-148/21). The Court already ruled out on a similar question last year. In the decision Coty v Amazon(referral, Case C-567/18), the judges ruled out any direct liability for storage of counterfeit products. But further light will be welcome. As will be the Digital Services Act - a coming new EU legislation addressing illegal content on online platforms. The legislative proposal was submitted by the European Commission last December. It is currently reviewed by the European Parliament and the Council of the European Union. With respect to this important topic, the new developments at both judicial and legislative levels will be shared on SEDIN website.
APRAM/Universities conference "The infringement of trademark rights on the internet"
The last conference of APRAM (Association des praticiens du droit des marques et modèles) took place today, on the theme of the infringement of trademark rights on the internet. With the growth of business activity online, the counterfeits multiply. A challenge which implies a targeted and constantly adjusted response strategy, in the interests of the company and of the consumers too. Deactivating the most harmful websites, discontinuing them of search engines and deleting unlawful contents in social networks are all measures that require up-to-date knowledge of law, tools and commercial implications for the company.
Champagne vs Champagne: the legal battle is not over
The litigation between the municipality of Champagne and the French Comité interprofessionnel du vin de Champagne started decades ago about the protection of the white wine produced in the Swiss locality of Champagne (Canton of Vaud) continues. In April 2021 the Swiss controlled designation of origin “Municipality of Champagne” were cancelled by the Constitutional Court of the canton of Vaud (see our previous news). In early May 2021, the Cantonal Economic Department has filed an appeal up to the Federal Court. We will report further developments in this matter.
Chinese trademarks added to TMView
Since last Wednesday, registered Chinese trademarks are available in TMView trademark search tool. The database has suddenly grown from +60 million to +90 million trademarks. Launched in 2010 with trademark data from a few EU intellectual property offices, TMView has steadily expanded and now covers 75 intellectual property registries worldwide. Today, it is the largest trademark database in the world, and it is free. The access to trademark details, especially their status, is of help in many cases. But regarding a trademark search, a local IP expert's opinion is necessary to determine whether or not a found trademark is of concern.
FAQ soon available
Our FAQ will soon be ready for the purpose of guiding you in the field of intellectual property. And we are being questioning ourselves about... What do they want to know? Which are their concerns and what do they expect from the protection and defence of their brands? But putting ourselves in your shoes is not that easy. And what about simply listening to them? What do they usually ask? But if we just answer your questions, you will miss important information. So what do they need to know? How can we make them understand that these steps are crucial and that they have everything to gain by taking them? We are preparing a tailor-made FAQ in order to advise you at best, in your company's interest. Stay tuned to the website to discover it shortly.
Amazon's Brand Protection Report
Amazon published yesterday its first Brand Protection Report. This report highlights the results achieved in 2020 thanks to the initiatives started the year before for ensuring sale of authentic products. Interestingly, only 6% of attempted account registrations passed the verification process to get on its shelves. Among the sale requirements, the product brand must be protected i.e. “to be eligible for Amazon Brand Registry, your brand must have an active registered trademark in each country where you wish to enroll or have a pending trademark application filed through Amazon IP Accelerator.” Protecting the trademark is an essential step of sales plans. Our team can advise you on a tailor-made and solid protection strategy.
Invalidation of the trademark MONOPOLY for bad faith filing
In a decision of April 21, 2021 (Case T‑663/19), the EU General Court upheld the decision which invalidated the EU trademark over the sign MONOPOLY. In particular, the Court found that the trademark owner, the company Hasbro, had “intentionally sought to circumvent the proof of use rule to derive an advantage.” The new trademark was therefore cancelled insofar as it covered the same goods and services as the previous trademarks. As stated last year by the Court of Justice of the European Union in the Sky v Skykick case, filing a trademark without intention of using it constitutes bad faith. Refiling every five years, namely at the expiry of the grace period, is therefore not a sound strategy. Rather, efforts should be put on collecting and storing evidences of use.
The wine of the Swiss locality Champagne cannot be called “Champagne”.
The white wine produced in the Swiss locality of Champagne (Canton of Vaud) cannot wear the name “Champagne”. The new provisions creating the controlled designation of origin “Municipality of Champagne” and the new wine region “Champagne” implemented on January 13, 2021 by the State Council of the canton of Vaud have been cancelled by the Constitutional court of the same canton. This decision is grounded on the violation of the international regulations, namely the Agreement between the Swiss Confederation and the European Community on trade in agricultural products dating back to June 21, 1999. This Agreement grants the exclusive right to use the appellation “Champagne” to the wines coming from the French region Champagne. The Court here confirms the position of the Federal authorities who had validated this protection in 2012 notwithstanding the homonymy with the name of the Swiss municipality.
World Intellectual Property Day
As every year, the 26th of April is the opportunity to celebrate the World Intellectual Property Day aiming at raising awareness about the importance of the intellectual property rights for the innovation and the creativity. This year, particular emphasis is given to the essential role of trademarks, patents, designs and copyrights in allowing SMEs to build stronger, more competitive and resilient businesses. The protection and use of intellectual property rights are a good way to, inter alia, turn ideas into business opportunities and generate value.
Champagne in victory against Champaws
In a decision of 21 December 2020, the Opposition Division of the European Union Intellectual Property Office denied the registration of the trademark "Champaws" for pet beverages. The ground for this decision is that the sign evokes the geographical indication "Champagne" which is protected for wines. This case is a further illustration that Article 103(2)(b) of Regulation (EU) No 1308/2013 also applies where the goods covered by the protected geographical indication and those for which trademark protection is claimed are not comparable.
.com domain extension now covered in TMCH alerts
Since August last year, the Trademark ClearingHouse (TMCH) informs trademark owners of the domain names with a .com extension which contain their trademarks. To benefit from it, the trademark has to be registered with the TMCH. Another advantage is the priority access to the registration of domain names where new domain extensions are launched. SEDIN can assist you with these steps.
CCIFS e-B2B Franco-Suisse #2
Nathalie Denel attended today the e-B2B session held by France-Switzerland Chamber of Commerce and Industry (CCIFS). SEDIN thanks the organizers for this opportunity to meet and exchange with participants from French and Swiss companies and, on this occasion, to sensitize them on the benefits of protecting their intellectual property assets, especially their brands as trademarks.
SEDIN joins oriGIn
SEDIN is pleased to have become a member of oriGIn, a non-for-profit non-governmental organization for an international geographical indications network. oriGIn’s goals are to campaign for the effective legal protection and enforcement of geographical indications at the national, regional and international level, and to promote geographical indications as a sustainable development tool for producers and communities. In this frame, we are delighted to attend the next webinar which will hold today about trademark applications in conflict with geographical indications, with expert speakers from i.a. Interprofessional Champagne Committee, European Union Intellectual Property Office, Institute of Intellectual Property Protection in Peru and Scotch Whisky Association.
New article release
Jewels are artistic creations but valuable commercial assets, too. Copies are frequent so their legal protection is a must. In addition to the unfair competition law, copyrights, designs and trademarks allow to deter infringers and to have legal means to take action against copies. A Swiss perspective of these various instruments is provided in our latest article.
China-EU Agreement on Geographical Indications now in force
The "Agreement between the European Union (EU) and the Government of the People’s Republic of China on cooperation on, and protection of, geographical indications (GIs)", which was signed on 4 December last year, has come into force on 1st March 2021. The Agreement protects around one hundred European agri-food names in China and one hundred Chinese agri-food names in the EU against imitation and usurpation. The list includes Champagne, Cava, Feta, Irish whiskey, Münchener bier, Ouzo, Porto, Prosciutto di Parma and Queso Manchego as well as Wuyuan green tea, Pixan bean paste, Anji white tea, Panjin rice and Anqiu ginger. Within the next four years, the agreement will expand to cover about 175 additional names. Let's celebrate it soon, with a glass of Champagne or a cup of Wuyuan green tea!
International Women's Day
SEDIN wishes a super Women’s Day to all the Superwomen in the world!
Federal Council's decision on bakery products
Two days ago, the Federal Council has decided that bakery products sold in Switzerland will have to get their source indicated. In particular, the bakeries and restaurants will have to clearly show to clients the country of origin of bread and bread made food (such as sandwiches). A draft bill will be submitted to the Parliament to this end. Due to the imports of cheaper frozen products, about sixty bakeries go out of business each year. The economic damage also result in a loss of know-how. With this measure, Swiss made croissants will gain market visibility and... get eaten even faster!
Pakistan joins the international trademark system
Last Wednesday, the Islamic Republic of Pakistan joined the Madrid System administered by the World Intellectual Property Organization. As of May 24, 2021, it will be possible to designate this country in an international trademark. Thanks to this adhesion, it will be easier and cheaper to get trademark rights there as opposed to via a national application. The Madrid System now covers 124 countries in total.
Swiss legislation on foodstuffs: Lindt Excellence case
No chocolate in the latest edition of Excellence branded chocolate launched by Lindt & Sprüngli. Or more specifically, chocolate originating entirely from cacao-trees and without refined sugar, one of the ingredients that is required for being qualified so according to the Swiss legislation, namely the Ordinance of the Federal Department of Home Affairs on foodstuffs of plant origin, mushrooms and edible salt of 16 December 2016. No sugar, no permission to use the word "chocolate" to describe the nutritional composition of the product. But fortunately, the pleasure of cacao taste and the health benefits remain.
WTR 1000 2021
World Trademark Review has released the 2021 edition of ‘World’s Leading Trademark Professionals’ (WTR 1000) in which Nathalie Denel appears among the recognized leading trademark practitioners in Switzerland. The guide notably reflects the depth of expertise, the complexity of work dealt with, as well as positive client and peer feedbacks. It therefore serves as a one-stop source of reference for anyone seeking trademark legal services worldwide. It includes most of our partnering lawyers and firms - to which we extend our congratulations!
Brand Finance Global 500 2021
A brand can worth billions. More specifically, USD 263 billion as estimated for the trademark Apple in the 2021 edition of Brand Finance Global 500 published last Tuesday. So Apple has reached the top of the podium this year, ahead of Amazon, among the most valuable brands in the world. Without surprise, several other brands in the information technology industry are there, too. But many, many other brands are also valuable, even if they are not in the ranking. Actually, any brand which is used has a commercial value and deserves protection. Like the big ones!
Use of a trademark, the value of the convention between Germany and Switzerland of 1892
In Switzerland, a trademark must be used within five consecutive years of the registration. Failing that, it remains valid but a third party (whom, for example, would like to use it) can bring a court or administrative action to request its cancellation for non-use. The use is required in connection with the goods and/or services designated, and in the form in which it is registered (except minor changes). According to the territiorality principle, the use must take place in Switzerland. However, a bilateral convention of April 13, 1892 between Germany and Switzerland on the reciprocal protection of patents, designs and trademarks provides that the use of a trademark in Germany is equivalent to its use in Switzerland, and vice versa, on the condition that the trademark is registered in both countries (Article 5, para 1). Thus, using a trademark in Germany allows to demonstrate its use in Switzerland. This provision is still valid today and might come in handy.
Our team is very pleased to welcome Christelle Callegaro as accounts receivable responsible. She notably brings a long practice in this field along with international experience. Do not hesitate to contact her and join us in congratulating her on this new role!
New article release
How preventing a trademark from becoming the generic name of a product or a service, and thus risking losing the exclusive rights? The more the trademark is used, the better of course but it should still identify the company. In our latest article, we outline our recommendations to avoid the degeneration of a trademark in Switzerland.
SEDIN joins CCI France Suisse
SEDIN is pleased to join the France-Switzerland Chamber of Commerce and Industry (CCIFS), which is a bilateral, non-profit association under local law that comprises over seven hundreds Swiss and French companies. SEDIN is delighted to have this opportunity to contribute to CCIFS's missions of accompanying companies, to meet with members and to introduce its services at a future e-presentation event.
Revision of the Nice and Locarno classifications
On January 1st, 2021, the eleventh edition of the Nice classification and the thirteenth edition of the Locarno classifications have come into force. They respectively apply to new trademark and design applications filed before the World Intellectual Property Organization and in countries which are members of the corresponding agreements, of which Switzerland is part.
Federal Council’s report on Swissness legislation
White and red are associated with Santa, Coca Cola and… the Swiss cross! On 18 December 2020, the Federal Council published a report about the Swissness legislation. Since 1 January 2017, specific rules are in force for the use of the Swiss cross or the denomination "Swiss made" to promote products and services. The Federal Council considers that the Swiss brand fulfils its purpose. It adds value to the Swiss economy - 1.4 billion Swiss francs revenue per year - and leads to a decrease in domestic misuses. But there is potential for improvement in the enforcement abroad and with respect to foodstuffs.
Future accession of Chile to the International Trademark System
On December 2, 2020, the government of Chile introduced to the National Congress the bill for the approval of the Madrid Protocol. Following the accession of Brazil last year, Chile prepares to be the second country of Latin America to join the International Trademark System.
New article release
Nowadays, all businesses have no choice but to have a web presence. On the protection side, it is necessary to secure proper trademarks and domain names. In our latest publication, you will find our recommended steps for optimum and coordinated protection on both fronts.
Brexit: which impact on EU trademarks?
In three weeks, a new year will start and the United Kingdom (UK) will leave the European Union (EU). Should your company export in the UK, it is important that you make sure to safeguard your trademark rights there.
Good news: if you hold an EU trademark, or an international trademark designating the EU, and it is registered, it will be automatically cloned onto the UK register. Though care should be taken with, inter alia, recordals of possible licences and the renewal of the UK trademark. But one cup of tea at a time: the first step is to audit the IP rights in place.
For any question, our team would be pleased to advise you on the necessary steps.
APRAM/EUIPO Annual Conference
Isabelle Bruder and Nathalie Denel attended the conference of Association of Trade Mark and Design Law Practitioners (APRAM) and European Union Intellectual Property Office (EUIPO) which held online yesterday and today. SEDIN thanks the organizers and the speakers. Over 400 participants, what a success! The yearly review of IP case law at EU level was very insightful notably in relation to the Swiss practice, which widely follows the EU practice. It is worth mentioning the increase in EU design and trademark applications which continue to raise a strong interest.
Launch of GIview
Yesterday, the European Union Intellectual Property Office has released GIview, a search engine including more than 5,000 geographical indications protected in the European Union. Very helpful and user friendly too, as notably is the map display of the hits. A good reminder to not forget geographical indications in clearance searches over prior intellectual property rights.
Evaluation of EU legislation on design protection
Are changes expected in the EU design legislation?
On 6 November, the European Commission has published its report on the evaluation of EU design protection framework. Overall, it still broadly fits for purpose. But it should be adapted to the digital and green transitions underway (e.g. uncertainties regarding the possibility to protect graphical user interfaces or icons as designs). The shortcomings include in particular lack of clarity and robustness on the certain key elements of design protection (subject matter, scope of rights and limitations), outdated or overly complicated procedures, inappropriate fee levels and fee structure, lack of coherence of the procedural rules and incomplete single market for spare parts.
Facegirls loses face in front of Facebook
Despite the graphical differences and the different endings of the signs, the Federal Administrative Court found that the Swiss public could confuse the trademarks Facegirl with Facebook in the field of dating services. In particular, the judges found a risk of wrong belief that the offerings of each trademark could come from the same company or from two economically linked companies. The opposition lodged by Facebook was therefore confirmed and the trademark Facegirl was denied protection for most of the goods and services covered. This decision of May 27, 2020 further reaffirms the distinctive strength of the trademark Facebook, built on its reputation. On the same basis, the tribunal previously cancelled the trademark StressBook for computer software and services of design and development of computer hardware and software, in a decision of January 23 , 2018 (B-681/2016). As shown again, the well-known status of a trademark - which involves the storage of evidence showing that, is a precious means of broadening the scope of its protection.
Revision of Patent Law of China
The decision on revising the Patent Law of China was passed on October 17, 2020 after eight years of discussions. Among others, the duration of a design patent is extended from ten to fifteen years. This might indicate China’s willingness to join the Hague Agreement Concerning the International Registration of Industrial Designs which is currently being discussed with the World Intellectual Property Organization. Also, it will be possible to file a partial design application, namely to claim protection for only a part of a product shape. The new provisions will come into force on June 1st, 2021.
Consultation on the Patents Act revision
Trinidad and Tobago joins the International Trademark System
Last Monday, Trinidad and Tobago joined the Madrid System administered by the World Intellectual Property Organization. As of January 12, 2021, it will be possible to designate this country in an international trademark. Thanks to this adhesion, it will be easier and cheaper to get trademark rights there as opposed to a national application. A sound option, knowing that Trinidad and Tobago has a high economic growth rate but is also one of the world's counterfeiting hotspots.
EUIPO and EIT's cooperation
Five days ago, the European Union Intellectual Property Office (EUIPO) announced the signature of an agreement with the European Institute of Innovation and Technology (EIT). Both organizations intend to cooperate in increasing SME knowledge on intellectual property to fully benefit from its potential, such as accessing the market safely and giving value to products and services.
Mozambique, new member of ARIPO
From August 15, 2020, the Banjul Protocol applies to Mozambique which is now part of ARIPO (African Regional Intellectual Property Organization). In practice, Mozambique can be designated in an ARIPO trademark, in addition to the 18 other member states, which are mostly English-speaking African countries.
General Court’s decision about Brexit
What will happen to UK and EU trademarks in light of Brexit negotiations starting tomorrow? Last week, the General Court issued a decision (Case T-421/18) confirming that Regulation (EU) 2017/1001 fully applies until the end of the transition period on December 31, 2020, which may be extended once, for a maximum duration of up to one or two years. It follows that the opponent had a legitimate interest in filing an opposition to a EU trademark on the basis of earlier UK trademarks.
If you wish to create a company in western Switzerland, It is worth thinking about the support provided by Fédération des entreprises romandes (FER) for administrative and legal steps among others. As well, consider contacting GENILEM association which offers coaching in building an innovative and viable business along with gaining clientele. Also make sure that you have a distinctive trademark to foster your visibility and that you get it protected to avoid it being diluted. In this field, SEDIN can assist you.
7h30 de la Chambre
Isabelle Bruder and Nathalie Denel were very pleased to present the services of SEDIN during the 7h30 de la Chambre event yesterday. Thank you to Geneva Chamber of Commerce, Industry & Services (CCIG) and to participants for their attention and feed-backs. Protect and defend its visual identity and immaterial assets means taking care of them for what they are: valuable, and belonging to your company.
Global Index Innovation 2020 released
Last week, WIPO has released the 2020 edition of the Global Innovation Index, which ranks world economies according to their innovation capabilities and results. For the tenth consecutive year, Switzerland has been ranked as the world’s most innovative country. This is thanks to high records in respect to the number of patents filed, strength of workforce and universities, published scientific articles and government effectiveness. As WIPO’s Director highlighted, all with innovative and collaborative new ideas for the post-COVID era must be supported because innovations equal solutions.
Future accession of Hong Kong to the International Trademark System
On June 19, 2020, the Trade Marks Ordinance of Hong Kong was amended to provide a basis for the application of the Madrid Protocol. Once in force, it will be possible to designate Hong Kong in an international trademark, which is a cheaper and easier way of getting trademark rights than through a national trademark. This step paves the way for the implementation of the Madrid Protocol which is expected in the next two years.
New trademark database in Switzerland
A new database containing all details of Swiss trademarks, more than 476,000 titles to date, has just been launched by the Swiss Federal Institute of Intellectual Property. It is available via the following link: https://database.ipi.ch/database-client/search/query/chmarke?lang=fr. This tool allows for a better display of the results. It also makes it easier to find data thanks to advanced search options. It should however be noted that international trademarks with designation of Switzerland are not yet contained in the database. Further, users must be made aware that both the scope of a search and the analysis of the results require legal expertise to identify the potential obstacles to the use and registration of a trademark.
Online use of a trademark
Is mere online use sufficient for a trademark to remain valid? Where the trademark is shown on a website but without physical or e-commerce sales of the branded products in the country? Not a small question in today’s more-than-ever digital world. Yes, answered the Swiss Federal Supreme Court in a decision of 29 April 2020 (ATF 146 III 225), in a trademark infringement case opposing Merck and MSD over the pharma brand MERCK. But with conditions. It’s not enough that the website is accessible from Switzerland. A sufficient link to, or commercial effect in Switzerland, must exist too such as business operations there.
No confusion between SMAC and LISSMAC
In Switzerland, no less than four official languages are spoken - French, German, Italian and Romansh. A trademark must therefore be distinctive in all those languages. This was illustrated in a decision issued by the Federal Administrative Court on 25 February 2020 (B-2191/2018). For Italian speaking customers, the sign SMAC refers to the term “smacchiare » which means “remove stains”. In relation to cleaning products, it is descriptive of the purpose of said goods. Even though it is fully reproduced in the sign LISSMAC, there is no risk of confusion. The opposition was rejected. Another example that it is always better to adopt a fanciful or arbitrary name. Indeed, purpose of a trademark is not to get a registration certificate but to secure strong rights to defend against copies.
Support for financing entrepreneurial projects
You plan to launch a startup and need support for your project ? Venture Kick helps startups to get funding, with a capital which could go up to CHF 150’000, along with the access to an enlarged network and valuable tips. You can also benefit from the support of Fongit, a foundation which help startups operating in fintech, ICT, engineering and medtech sectors and first incubator in Switzerland. Also, do not forget to de-risk your project, a sound argument to convince investors. SEDIN can assist you in making sure that your startup name does not infringe trademark rights of another company.
Forbes 2020 ranking on world’s most valuable brands
Is investing in the registration of a trademark really worth it? Well, no doubt, just having a look at how much its value can be. Two weeks ago, Forbes released the 2020 ranking of the world’s 100 most valuable brands, valuing their revenue and earnings. The top five are the same as last year: Apple, Google, Microsoft, Amazon, and Facebook. There are some newcomers like Nintendo, Burger King, Hennessy and AXA. Apple’s brand value is estimated at US$ 241.2 billion - not a bad harvest for this brand for which, like others, the building, protection and defense have borne fruits- and what fruits!
Milka lost against Ritter Sport
Who doesn’t know Milka milk chocolate ? The brand was created in Switzerland in the early 19th century. It belongs today to Mondelez International. Some days ago, it suffered a severe legal setback. After a ten-year fight against its rival Ritter Sport, the final decision was made on 23 July 2020 by the Federal Court of Justice in Germany (Cases I ZB 42/19 und I ZB 43/19) : Ritter Sport’s 3D trademarks for the square-shaped forms of chocolate bar packages are valid. They belong to them and nobody can graze on their lands (especially a purple cow).
Patents in the medical field in Switzerland
Switzerland holds, by far, the record for the number of patents per inhabitant in the European zone. Many of them belong to the pharmaceutical sector or the medtech industry. The current context raises the question of the public interest of a relaxation of the monopoly of use conferred by patents while the investments made in the research and development of medical solutions also need to be taken into account and fostered. About twelve patent applications related to Covid-19 have already been received by the Swiss Institute this year.
New EUIPO service for .eu domain names
Welcome news is the new service launched by EUIPO allowing to be informed whether a domain name with .eu extension is available for a name filed as EU trademark application. This will help business owners in coordinating the domain name and trademark protection steps. Those must be taken based on a well-thought strategy and importantly, early on before a third party might do so.
Future accession of Switzerland to the Geneva Act
Last 5th June, the Federal Council approved and proposed to the Parliament the ratification of the Geneva Act of the Lisbon Agreement on Appellations of Origin (AOs) and Geographical Indications (GIs). The project will be examined at the end of the year and should be ratified in mid-2021. This accession would enable Swiss producers to use the international registration procedure for protected AOs and GIs. Our last paper gives an overview of the protection system in Switzerland along with the consequences of the likely upcoming ratification of the Geneva Act.
Similarity of the trademarks Blancpain and Reapain
In a decision of 10 December 2019 (B-2232/2019), the Federal Administrative Court partially admitted the appeal filed by Blancpain SA against the Swiss Register’s decision rejecting its opposition against the trademark Reapain. The reputation of the trademark Blancpain in the watchmaking industry was recognized, thus allowing it to benefit from a wider scope of protection. Consequently, a risk of confusion was found for jewelry and precious stones as designated in the trademark Reapain. Still, the latter remains valid for precious metals and alloys which are seen as different from watches.
Revision of the Swiss Data Protection Law
Last week, the European Commission spoke on whether the Federal Act on Data Protection (FADP) is equivalent or not to the General Data Protection Regulation (GDPR). But it will be some time before knowing its position. The Commission decided to wait for the decision of the European Union Court of Justice in the Schrems II case. Also, the Swiss authorities were asked to make progress in the ongoing revision of the FADP. At the same time, the SwissCovid contact-tracing application was launched, in conformity with the national measures for guaranteeing privacy and control over personal data of its users. It has already been downloaded by over 800,000 people.
Ritz Hotel lost against RITZCOFFIER
If you say that you are famous, then prove it. This is the hard lesson learned by Ritz Hotel in their opposition to the Swiss trademark RITZCOFFFIER. On 19 November 2019 (decision B-5177/2017), the Federal Administrative Court ruled that this trademark is valid. Ritz Hotel based their claim on the notoriety of their brand, in accordance with Article 6bis of Paris Convention and Article 3 al.2 let.b of the Swiss Trademark Protection Act. Unfortunately, no opinion poll was submitted to justify it. This poll is not needed where the notoriety of the trademark is a publicly known fact as per Article 151 of the Civil Procedure Code. However, according to the judges, the trademark RITZ is not eligible to this status because it is not certain that the majority of Swiss people know it. Consequently, the opposition of Ritz Hotel is regarded as baseless.
New article release
Which are the new Swiss copyright rules introduced by the revision of the Copyright Act? Significant amendments have been made. Find them outlined in detail in our latest publication.
New EUIPO’s reports on counterfeiting
How much lost due to counterfeiting? Over fifteen billion euros a year, just as the EU is concerned. In other words, the equivalent of building thirty-three hospitals. This is among the findings of the two reports released by EUIPO last Wednesday, one about the damaging effects of counterfeiting and the other, jointly produced with Europol, addressing the link between IP and other types of crimes. In this fight, a welcome initiative was lately taken by Google: a new option to review and take down counterfeit goods from search results.
We are pleased to announce that our colleague Olga Fayad successfully completed the Certificate of Advance Study Intellectual Property Paralegal at ZHAW School of Management and Law. This training allowed her to gain enhanced understanding of IP management and prosecution procedures, for a better service to our customers.
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 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 in 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.