Friday, 3 January 2014

Most Interesting Trademark Issues from 2013: From gTLDs to Specsavers and SkyDrive!

Happy New Year 2014!

As 2013 is now officially closed, it is time to look at the most interesting pieces of news from IP world and this time I thought that I write about trademarks. There are many good listings on trademark cases and issues that should be worth our attention, but personally I believe that WTR daily e-mail service is one of the most reliable (we have also submitted some articles to that as well if I recall so it must be good)! They have created a splendid survey on trademark issues and cases which have been on their "most read" blogs listing during the last year and while there is naturally a European focus in this, there are definitely issues that are relevant also here in our domestic markets and naturally these further  highlight market developments. 

We are of the same opinion with the author Trevor Little when he says that "After covering the development of ICANN’s online expansion for over five years, it is perhaps not a surprise that a blog noting that new gTLDs finally became a reality after the first of the new strings were delegated to the root zone took top spot in the list of ‘most read’ blogs in 2013". But what are the other actual top stories  of which one would be aware of is more difficult question, well this is what WTR's statistics say about this:

  • gTLDs (and their subsequent brand challenges)
  • potential overhaul of European trademark environment ("Draft legislation by the European Commission concerning the European Trademark System which leaked to public")
  • Apple and Samsung battle for title of world’s most valuable brand
  • Logo-free initiative highlights the power of designs and trade dress
  • With Harris + Hoole coffee shops, Tesco takes phantom branding to the next level (on phantom brands, check out Lyndsay Peck's article from here to give you some background)
  • Rapid rise of the ‘cronut’ gives pointers for early-stage trademark strategy
  • Open source principles influence Debian’s new trademark policy
  • INTA 2013 ("probably always on the list")
  • ECJ decision in Specsavers v Asda: a 'significant win' for brand owners
The full story of WTR Blog's can be read from: here

I would add one interesting case to the list which is Sky International and others (Sky), owners of various UK and Community trade marks for Sky, who sued Microsoft Corporation and an associated company ("Microsoft") for trade mark infringement under Article 9(1)(b) and Article 9(1)(c) of the Community Trade Mark Regulation and the equivalent UK national provisions; and for (ii) passing off.

Relevant Articles are the following:

"...(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."

In this case both claims where upheld (See more details from here). Briefly in this case Sky produced a TV set-top box which included digital storage so that viewers could both record and replay content, and, around 2005-6, it started transmitting its content over the internet and we all know Microsoft, which launched its "SkyDrive" product in 2007. This product provided consumers with an online storage facility for document files, photos and the like, which they could then access from anywhere on the internet and make them  available for sharing with others. There was likelihood of confusion as "Sky" would be bound to be seen as the dominant element of the SkyDrive sign: the average consumer would therefore see "Sky" as fulfilling a trade mark function rather than the SkyDrive mark as a whole.

Please note the procedural evidence point (which is why help desk calls are recorded!) - there had also been evidence of actual confusion in the form of calls to the Sky helpline.

I will revert to Nordic and Finnish IP issues in general (and not only to trademarks!) and litigations shortly afterwards with analysis but in the meanwhile feel free to post proposals for top 10 Finnish IP issues from 2013 - what is your favourite? Submit you views and we promise to give to you an analysis! We would perhaps give our vote to good will protection under Finnish law which is discussed also in our earlier blog: Thoughts on Goodwill Protection and Trademarks in Finnish IP Litigations!

Cheers,

               Jan