IP Summit 2016 (Second Part)

Be ready for the second part of this Kitten’s report! Check out the first part here.

Unconventional Trade Marks under the New EUTM System

The conference was chaired by Dr. Thies Boesling. The speakers, Dimitris Botis (EUIPO) and Simon Barker (FREETHS/UK), provided an overview of the registrability of unconventional trade marks in the context of the latest amendments to the EU Trade Mark Directive and the Regulation.

Botis noted that, for filing purposes, even though the graphic representation requirement was deleted from the definition of an EU trade mark, according to Recital 9 of the Trade Mark Regulation, the representation of the sign must still fulfil the so-called Sieckmann criteria: it should be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In addition, the mark “should be permitted to be represented in any appropriate form using generally available technology.”

In this regard, Botis discussed some of the applicable rules regarding the representation of an unconventional trade mark. For 3D trade marks, 3D modelling in motion and CAD formats are now accepted. For position marks, visual means (i.e. broken lines) must indicate the disclaimed part and for pattern marks, the pattern must be reproduced repetitively, so for both types of marks, the description of the sign is kept as a complement to delimit the scope of protection. For colours per se, it is compulsory to indicate the colour codes. For sound and motion marks, even though a sound or video file will suffice, musical notation and a series of still images can also be used.

From the point of view of a practitioner, Simon Barker discussed some notable cases related to the registrability exclusions set forth in article 7(1)(e) of the Trade Mark Regulation. In particular, he provided an overview of the Nestlé Kit Kat bar, Yoshida knife handle, Rubik’s cube, Trip Trapp chair and London Taxi Corp cases, which involved either the registrability exclusion of a shape resulting from the nature of the goods, the necessity of obtaining a technical result or adding value to the product.

Simon considered the particular challenges in registering a 3D trade mark by having to show by, virtue of acquired distinctiveness, that a shape fulfils the essential trademark function. This Kitten found the session most interesting because these registrability exclusions have intrigued her for a long time, particularly the one about the substantial value added to the product.

The growing importance of online services and restoring the “value gap”

The conference was chaired by Fabienne Brison. The speakers, Jackie Alway (Universal Music Publishing), Pierre Mossiat (Strictly Confidential) and Lauri Rechardt (IFPI) provided insights about the so-called "value gap" within the context of article 13 of the proposal for a Directive on Copyright in the Digital Single Market.

First, Lauri Rechardt explained that the recording industry is continuing to face difficult times. Even though there is growth in streaming as revenue model, there still remains a mismatch between the levels of consumption and the revenues paid to creators and producers. He stressed that less than 4% of industry revenues are paid in connection with User Uploaded Content (UUC) services, despite having a consumer basis of around 900 million users. Lauri also highlighted that UUC services, being the largest providers of music on-demand, are undermining the development of digital markets because they are not liable for the uploading of infringing content.

Jackie Alway stressed that licensing benefits the creators, fans and partners, fostering creativity and maximising commercial opportunities. In order to fix the market distortions faced by the music industry, it is necessary to amend the current legal framework so that right holders can negotiate fair terms with the UCC platforms. In addition, she mentioned that further consideration regarding the prevalence of takedown notices in that 94% of them are recidivist notices.

Pierre Mossiat (Strictly Confidential) remarked that streaming is the future for the music industry, as is evidenced by the decrease in revenues derived from the sale of physical means (i.e. compact discs and vinyl records). He stressed that streaming brings to the fore legal issues that need to be solved, which is more urgent than takedown notices for restoring the value gap.

The social programme included a Gala Dinner at Chalet Robinson, where in a relaxed atmosphere participants had the opportunity for networking as well as meeting old colleagues and friends. This social event was a delight!

*Pictures are courtesy of Premier Cercle team.