keeping the faith in pelicans! ohim approach article 51(1)(b) ctmr: where the applicant was acting...
TRANSCRIPT
Keeping Faith in Pelicans! (or OHIM Cancellation Guidelines: the
Pelican case)
PTMG - London - Spring 2014
The Savoy, London
Did you know:
• Savoy Court is the only road in the UK where you can drive on
the right-hand side.
• The Savoy boasts a private pier just a few steps from the riverside.
• Previous guests include Sir Winston Churchill, Frank Sinatra, Christian Dior, Marilyn Monroe, Claude Monet, John Wayne, Katherine Hepburn and Miss Piggy.
• Kate Hudson and Katy Perry have both been in trouble for smoking in the ballroom.
• The Savoy Cocktail book was created over 80 years ago and is still regarded as ‘the bible’ for bartenders.
Keeping Faith in Pelicans!
The next 40 minutes……
A. A cross border introduction to re-filing trade
marks and bad faith:
- OHIM
- UK
- Germany
- France
B. Bad faith examples relevant to the pharmaceutical
industry
C. Bad faith…so what!
An introduction to bad faith….
A very English saying…….
“Don’t teach your grandmother to suck eggs!”
Teaching grandmother to suck eggs is an English saying meaning that a person is giving advice to someone else about a subject that they already know about (and probably more than the first person). "Egg sucking" removed the egg contents while preserving the shell intact. Two small holes were made on the ends of the egg, and the contents sucked out. The shell could then be painted or otherwise used for decorative purposes without it becoming rotten and smelling bad.
The OHIM Approach
Article 51(1)(b) CTMR:
Where the applicant was acting in bad faith when he filed the
application for the CTM it is liable to be declared invalid.
Bad faith is not defined and it is therefore left to the court to
interpret.
R 582/2003-4 (EAST SIDE MARIO’S):
Bad faith can be considered to mean “dishonesty which would fall
short of the standards of acceptable commercial behaviour”.
Old OHIM Guidelines (Part D, Section 2,
paragraph 4.3.3) – pre Pelican case:
‘Where a CTM owner makes repeated application for the same
mark with the effect of avoiding the consequences of revocation
for non-use the proprietor is acting in bad faith’.
OHIM Guidelines
The Guidelines have been drawn up to cover
the majority of current cases, and consequently
can be regarded only as general instructions.
These Guidelines are not, therefore,
legislative texts. The parties, and the Office,
must where necessary refer to Regulation No
40/94 on the Community trade mark, the
Regulation implementing that Regulation, the
Regulation on fees and the Regulation for
proceedings before the Boards of Appeal and,
finally, the interpretation of these texts handed
down by the Boards of Appeal and the Court of
Justice of the European Communities, including
the Court of First Instance of the European
Communities.
https://oami.europa.eu
The OHIM Approach
Pelicantravel.com v OHIM (T-136/11)
– Pelikan owned the earlier trade mark:
– Having failed to use the earlier trade mark, three
months before the expiry of 5 year grace period it
registered the later trade mark:
The OHIM Approach
Pelicantravel.com applied to invalidate the later mark
on grounds of bad faith arguing Pelikan was simply
attempting to get around the 5 year non-use provisions.
The General Court agreed that the marks were identical
(the differences being insignificant).
However, the General Court accepted that the reason
for the new application was genuine in that it had
decided to modernise the mark to celebrate its 125th
anniversary and consequently decided to file the
modernised version as a result.
The General Court ruled no bad faith (purpose was
modernisation not an attempt to circumvent 5 year
rules)
OHIM Guidelines – Post Pelican
OHIM Guidelines (Part D, Section 2, paragraph
3.3.2.1 (3(b)):
‘Where a CTM owner tries to artificially extend the grace period for
non-use by filing a repeat application of an earlier CTM’, this may be
taken into account to assess whether the proprietor acted in bad faith.
Possibly relevant factors indicating bad faith:
Identity/confusing similarity of signs;
Knowledge of use of an identical or confusingly similar sign;
Dishonest intention;
Artificially extending the grace period for non-use;
Existence of invalid national trade mark based on bad faith; and
Circumstances under which the contested sign was created.
OHIM Guidelines – Post Pelican
Factors unlikely to indicate bad faith
• Extending protection of a national mark by registering it
as a CTM (falls within normal commercial strategy)
• Applying for a long list of goods or services which exceed
the applicant’s current goods and services that it markets
• The mere fact that the differences between an earlier
CTM and repeat application are insignificant as not to be
noticeable to the average consumer
• Fact application is filed less than three months prior to
the expiry of an earlier identical CTM alone is not
sufficient.
The OHIM Approach
Decided based on overall assessment of all
relevant factors
Presumption of good faith until invalidity
applicant adduces evidence to the contrary.
Very difficult to prove bad faith
Burden falls to the party trying to prove
bad faith
Re-applying for the same mark within the 5
years does not necessarily constitute bad faith
Consider reasons on a case by case basis in
light of commercially acceptable practices in
sector concerned
Bad Faith: The UK Approach
Section 3(6): A trade mark shall not be
registered if or to the extent that the
application is made in bad faith.
No statutory definition of bad faith.
The law is generally the same as before OHIM.
Only difference is its interpretation.
Combined test (i) a reasonable and honest
person would consider the act dishonest
(objective); (ii) based on that standard, the
Defendant was aware that his act was
dishonest.
ECJ in Lindt (Chocolate Bunnies) questions this
approach
Bad Faith: The UK Approach
Main difference compared to OHIM:
– In the UK and Ireland, when applying for the
mark you must have a bona fide intention to
use the mark.
– Applications made without a ‘genuine
intention to use’ may constitute bad faith
(OXYFRESH (SRIS 0-095/99) and DEMON ALE
(SRIS 0-072/99)).
– This can include applying for a very wide
specification of goods and services (Mickey
Dees (nightclub) Trade Mark [1998] RPC 359)
Bad Faith: The German Approach
Section 8 (2) no. 10 of the German Trade Marks Act
(GTMA):“Excluded from registration are trade marks
(…) which have been applied for in bad faith”.
Bad faith may include:
– speculative purposes (applying without real
intention to use)
– without reasonable cause (applying when aware
third party has right)
– misuse the registration in a competitive wars
Bad Faith generally does not include:
– stockpiling
Bad Faith: The German Approach
Bundesgerichtshof (Federal Supreme Court),
Judgment of 3 November 1994, I ZR 71/92 –
“NEUTREX”
– Repeated applications are not unlawful as such. It must be
evaluated as to whether the applicant has a legitimate
interest in re-filing an application
Bundespatentgericht (Federal Patent Court), Decision
of 29 April 2010, 25 W (pat) 151/09 – “Maxitrol”
– Bad Faith present if application is being filed in the
expectation that the producer of special pharmaceutical
products will need the mark in future.
Bad Faith: The French Approach
“mauvaise foi”, literally translated as “bad faith”, is not
expressly defined by law.
Courts tend to use the notion of fraud defined as an act
(done “in bad faith”) with the intention of obtaining an
unfair or unlawful moral or material advantage or by
passing the Law and legal duties.
Whilst re-applying for the same French mark could be
deemed a fraud, reapplying for the same mark as a CTM
unlikely to be caught.
Bad Faith: The French Approach
Examples of Bad faith:
– Registration of a trade mark with the sole
intent to harm a competitor by artificially
preventing him from selling his products on
the French market (Cour de Cassation,
Commercial Chamber, February 26, 2008,
Nr 06-18123);
– Re-filing of a not exploited trademark
vulnerable to a non-use action in order to
artificially increase the length of the monopoly
(Tribunal de Grande Instance Paris
November 30, 2012);
France – Bad Faith
PIBD 1992 N°520 III-230) Laboratoires Biogalénique v.
Société Conseil de Recherche et d’applications
scientifiques
– SCRAS filed a first trade mark GINKEBRAL in 1981 for
pharmaceutical and medical goods (mark 1). SCRAS applied
for regulatory approval in 1987. SCRAS filed a second identical
GINKEBRAL mark in 1988 (mark 2)
– Court of Appeal ruled that pending regulatory approval is
legitimate reason for non-use (Mark 1 survives). However,
SCRAS applied for Mark 2 to artificially maintain its rights =
fraud (mark 2 falls)
Bad Faith?
Potential pharmaceutical filing strategies which could be
deemed bad faith:
– Pipeline
Scenario: To ensure you have ‘cleared’ marks in key jurisdictions
for when products come through the pipeline, you stockpile a
portfolio of marks to choose from ‘as and when’ each new product is
developed.
OHIM/France/Germany: Stockpiling itself is unlikely to be
deemed bad faith. No requirement to certify intention to use on
filing.
UK: Stockpiling may fall foul of the ‘intention to use’ requirements.
Would need to rely on argument that at time of filing you did intend
to use you just don’t know for what product it will be used on.
Bad Faith?
– Re-filing after 5 years to preserve the mark
Scenario: You have spent a considerable amount of time clearing
your mark globally and have just obtained regulatory name
approval. Your product is to be launched within 6 months but your
mark is now vulnerable to a non-use challenge. Do you re-file?
OHIM/UK/France/Germany:
– Danger re-filing will be deemed bad faith subject to opponent
proving your intent. However, subject to competition law
concerns, the only downside is loss of the later filed mark. Are
you any worse off than if you did not re-file in the first place?
For larger pharmaceutical companies, consider competition law.
– You can also rely on proper reasons for non-use to try and save
the earlier mark. However, you are left exposed if you don’t re-
file.
What happens if product launch is 2 years away?
Bad Faith?
– Variations
Scenario 1: Filing slight variations of marks to
increase your chances of getting one of them through
regulatory approval.
– Europe/France/Germany: unlikely to be deemed
bad faith.
– UK: legitimate reasons but genuine intent to use all
marks in series?
Scenario 2: You are using brand [X] to sell you
product and apply for slight variations to increase your
armoury against third parties.
– Europe/France/Germany/UK: Could be bad faith?
Can the other side prove Scenario 2 compared to
Scenario 1?
Bad Faith?
– Blocking Registrations
Scenario: You know your biggest competitor is
thinking of bringing its blockbuster US product to
Europe. You apply for its trade mark in Europe to stop
them using the mark in Europe.
OHIM/UK/France/Germany: Bad Faith!
Any Questions…..
Eifion Morris [email protected]
+44(0)20 7809 2347
With thanks to:
Christian Spintig (Germany)
Pascale-lambert (France)
Rob Jacob (UK)