lundi, avril 18, 2011
dimanche, avril 17, 2011
Action en réduction des libéralités ou comment respecter la part réservataire
Switzerland: Use of stars to classify hotels: public domain or trademark protected?
The Federal Supreme Court recently had to decide whether the use of stars to classify hotels belongs to the public domain, or whether such use may be subject to trademark protection.
Since 1979 the Swiss Hotel Association has used a classification system whereby hotels which are affiliated to its association are given a rating of between one and five stars. Since 2004 the association has also offered non-members the opportunity to be classified under its star system in return for payment. For that purpose, the association registered several guarantee trademarks (differing from each other only in the number of stars) pursuant to Article 21 of the Trademarks Act:
GastroSuisse, which is also an inter-trade organisation for the hotel and restaurant industry, began negotiating with the association in 2003 regarding the method of classifying those hotels in Switzerland that had not already been classified (which was around 60% of all hotels in Switzerland). However, the two parties failed to reach an agreement and in 2005 GastroSuisse filed several trademark applications with the intention of establishing its own classification system. The trademarks in question also contain between one and five stars:
In response, the association filed a request for provisional measures and an action in order to prevent the use and registration of GastroSuisse's trademarks. The request for provisional measures was granted by the competent court. On January 12 2011 the Federal Supreme Court reached a decision on the principal proceedings.
Federal Supreme Court decision
The court found no risk of confusion between the trademarks in question and therefore dismissed the association's action. The court based its decision on a number of arguments.
The court pointed out that stars were the only corresponding elements contained in the contentious trademarks. Therefore, only the stars as such were capable of creating a risk of confusion between the trademarks. According to the court, the average customer is likely to associate the use of stars in connection with accommodation services with the quality of the respective hotel. The stars as such are not inherently distinctive, but purely descriptive for the registered purpose, and make no reference to a particular company or group of companies. Therefore, stars belong to the public domain in relation to hotels and cannot be monopolised, particularly as there is no reasonable alternative open to the association's competitors for the classification of hotels. The slightly lower requirements for distinctiveness that apply, according to established practice, to guarantee marks could not change the court's position.
Furthermore, the court found that the association's stars had not acquired distinctiveness. The court ruled that acquired distinctiveness will not be considered by the courts where there is an absolute requirement to keep a sign free for all to use, as in the case at hand.
The court then evaluated the marks' scope of protection based on its decision that the stars are in the public domain. Considering that the other elements of the association's trademarks – in particular, the cross element and the word 'hotel' – are of a descriptive character, the court found the scope of protection of these trademarks to be very limited. Accordingly, the court found no risk of confusion between the contentious trademarks, despite the offered services being identical.
Finally, the association raised arguments based on unfair competition law. However, the court did not judge GastroSuisse's actions to be contrary to the rules of good faith and so found that they did not constitute unfair competition. Due to the fact that GastroSuisse had created a different logo, the court considered that it had taken all reasonable steps to distinguish its marks from the association's trademarks.
According to the Federal Supreme Court, stars should be free for all parties to use for the purpose of the classification of hotels or the like. In this light, it will be interesting to observe whether additional competitors will now enter the Swiss market and establish their own star-based systems of hotel classification.
For further information on this topic please contact Silvana Schweri or Roger Staub at Froriep Renggli by telephone (+41 44 386 6000) or by fax (+41 44 383 6050) or by email (firstname.lastname@example.org or email@example.com).
New Zealand: Draft amendments to designs regime
Contributed by A J Park
The Designs Amendment Act 2010, which relates to the restoration of designs, will come into force on April 19 2011, unless the governor general appoints an earlier date. Before the act comes into force, the Designs Regulations 1953 must be updated. The Ministry of Economic Development is drafting amendments to the regulations and recently asked design practitioners and some private applicants to provide feedback on some of its proposals.
The act provides that if a request for restoration is made within a prescribed period, it must be shown that the lapse was unintentional. The commisioner may extend the period, but the applicant for restoration must show that restoration was applied for without undue delay. The prescribed period will be defined in the regulations.
The ministry asked for feedback on suitable prescribed periods. It proposes a period of six months after the expiry of the renewal fee grace period as the period for a lapsed registration, and three months beyond the period initially set by the examiner for correcting technical errors in a pending application.
Regulations will be drafted to protect third parties that used a design during the period in which the design application or registration had lapsed. The ministry proposes that a third party which has started to use the design or has taken definite steps to use the design during this period should be entitled to continue using the design after the application or registration has been restored.
The proposal appears more generous to third parties than the equivalent provision in the Patents Regulations 1954. These regulations provide that products made during the period of lapse can be sold, but manufacture cannot continue after restoration; otherwise, the product claim in the restored patent would be infringed. However, the proposal to enable a third party to continue using the design after restoration is similar to existing provisions in Australia and the United Kingdom.
The ministry also proposed that the third party would not be entitled to increase manufacturing capacity after restoration of the application or design. This provision would differ from the position in Australia and the United Kingdom and might be unclear, as it could be difficult to determine actual capacity at a given time.
The ministry is proposing to implement a formal system for postponing registration of a design after the application has been filed.
At present, a design application proceeds to registration and publication as soon as all documentary requirements are complete. Applicants can benefit from postponing registration in order to keep the content of their application confidential and avoid alerting competitors to details of their forthcoming product. If registration is postponed and there has been no non-confidential disclosure or commercialisation of the product, the applicant may be able to file overseas applications after the normal six-month convention period.
Postponement of registration can be achieved by withholding documents or filing informal versions. However, this increases the examination burden on the New Zealand Intellectual Property Office, which must re-examine the applications when the formal documents are filed. Another drawback is that if a New Zealand design application is the first application for protection, it is preferable to file all documents formally in the first instance in order to secure an ideal priority date.
The maximum period of postponement that can be achieved informally under the existing system is 15 months from the filing of the application. However, if the formal documentary requirements are completed in the final three months of that period, it is necessary to request an official extension of time when filing the formal documents. This may result in an additional cost for the applicant.
The implementation of a formal system for postponing registration will enable applicants to file formal copies of all documents without being disadvantaged by early registration and publication. It is strongly arguable that the maximum period of postponement should be 15 months from filing, as it is under the existing system.
The responses will be collated and reviewed by the ministry's regulations team and will be taken into account when the amendments to the Designs Regulations are drafted. The regulations will be finalised and approved by the Cabinet shortly.
Japan: IP High Court rejects collective trademark
Contributed by Nishimura & Asahi
On November 15 2010 the IP High Court affirmed a Japan Patent Office trial decision that had, in turn, upheld the rejection of an application to register KITAKATA RAMEN as a special collective trademark for a geographical name. Ramen are a type of noodle, typically served in broth. They are eaten throughout Japan.
The court ruled that the trademark KITAKATA RAMEN could not be recognised as having become well known - as a result of its use among consumers in Fukushima and the surrounding region - as indicating the services connected with the plaintiff's business or that of its members. The court affirmed the trial decision, which had upheld the rejection of the application for failure to satisfy the requirements of Article 7bis(7-2)(1) of the Trademark Law (127/1959, as amended).
Article 3(2) of the law provides that:
"In the case of a trademark falling under items 3 to 5 of the preceding paragraph, where, as a result of the use of a trademark, consumers can recognize goods or services as being connected to a certain person's business, trademark registration may be obtained notwithstanding the provisions of the preceding paragraph."
Article 7 of the law provides that:
"General aggregate corporations and other corporations (excluding those that are not legal entities and companies), or industrial business cooperative associations and other associations established under the special law (excluding those that are not legal entities), or foreign legal entities corresponding thereto, shall be entitled to obtain a collective trademark registration with respect to a trademark for use by their members.
(2) For the purpose of Article 3(1), 'its business' in Article 3(1) shall read 'their members' or their own business'.
(3) Any person desiring the registration of a collective trademark under the preceding paragraph shall submit to the Commissioner of the Patent Office with respect to a trademark application under Article 5(1) a document proving that the applicant is a legal entity referred to in the preceding paragraph."
Article 7bis(7-2) of the law provides that:
"(1) Industrial business corporative associations and other associations established under the special law (limited to those established under such special law, excluding those that are not legal entities, and having therein the provision to the effect that any person qualified to be a member shall not be refused membership, or stricter conditions imposed than those imposed upon the present members at the time of joining shall not be imposed upon such qualified person without legitimate reason), or foreign legal entities corresponding thereto (hereinafter referred to as 'associations, etc') shall be entitled to obtain, with respect to a trademark falling under any of the following trademarks caused to be used by their members, a registration of a special collective trademark for a geographical name, when such trademark, as a result of its use, has become well known among consumers as indicating the goods or services as being connected with their own or their members' business, notwithstanding Article 3 (except where a trademark falls under item 1 or 2 of Article 3(1)):
(i) trademarks which consist solely of characters indicating, in a common way, a geographical name and the common name of the goods or services in connection with their own or their members' business;
(ii) trademarks which consist solely of characters indicating, in a common way, a geographical name and the name customarily used, indicating the goods or services as being connected with their own or their members' business; and
(iii) trademarks which consist solely of characters indicating, in a common way, a geographical name and the common name of the goods or services relating to their own or their members' business or the name customarily used, indicating such goods or services, and characters indicating, in a common way, the customarily used characters applied when the origin of goods or location of services provided are indicated.
(2) 'Geographical name' in the preceding paragraph means the origin of goods or the location of services provided with respect to a trademark used by the applicant's own or their members' business under the application for trademark registration from a time prior to the filing of such application, and other geographical name recognized to have a correspondingly close relationship with such origin or location, in terms of the relevant goods or relevant services, or the abbreviation thereof.
(3) For the purpose of Article 3(1), paragraph (1) (limited to the portion of item 1 or 2), 'its business' in Article 3(1) shall read 'their members' or their own business'.
(4) Any person desiring to obtain the registration of a special collective trademark for a geographical name under paragraph (1) shall submit to the Commissioner of the Patent Office with respect to a trademark application under Article 5(1) a document proving that the applicant is an association, etc. and a document required for proving that the trademark under application for trademark registration contains the geographical name referred to in paragraph (2)."
The plaintiff, Business Cooperative Association Kuranomachi Kitakata Romen-kai, filed an application to register the mark KITAKATA RAMEN in standard characters for the designated goods, which were "ramen noodles produced in Kitakata City, Fukushima Prefecture, and instant ramen produced in Kitakata City, Fukushima Prefecture" in Class 30 and "service of ramen in Kitakata City, Fukushima Prefecture or originating from Kitakata City, Fukushima Prefecture" in Class 43 on April 1 2006. It subsequently deleted the designated goods in Class 30 and amended the designated goods in Class 43 to read "service of ramen in Kitakata City, Fukushima Prefecture".
The Patent Office rejected the application on March 31 2008, finding that it did not satisfy the requirements of Article 7bis(7-2)(1) of the law. The plaintiff filed an application for trial with the Patent Office on May 7 2008.
Patent Office decision
On November 12 2009 the Patent Office issued a trial decision, upholding the original decision. Its reasoning was that:
- the trademark could not be recognised as having become well known among consumers as an indication of the service connected with the plaintiff or its members as a result of use - for example, among consumers in Fukushima and its neighbouring prefectures;
- as such, the trademark did not satisfy the requirements of Article 7bis(7-2)(1); and
- therefore, the original decision based on this reasoning was correct and should not be cancelled.
IP High Court decision
The plaintiff appealed to the IP High Court on December 25 2009. The court affirmed the trial decision on November 15 2010.
On the question of the interpretation of Article 7bis(7-2), the court held as follows:
- Looking at the history of the legislation, the reason for establishing the system of special collective trademarks for geographical names was to lessen the requirements for registration in respect of word trademarks consisting of local geographical names and the names of goods and services - often termed 'local brands' - in order to maintain the business reputation of local products, reinforce Japan's industrial competitiveness and stimulate the local economy through brand protection.
- Before the establishment of this system, word trademarks consisting of geographical names and the names of goods or services, which originally fell under any item of Article 3(1) of the law, could not obtain registration unless the requirements for acquiring distinctiveness under Article 3(2) of the law were met. Thus, third-party free riding could not be prevented until such trademarks became well known throughout Japan. The registration of a trademark with a device mark could not effectively prevent use of the word or words by a third party. The new system remedied this by permitting the registration of word trademarks consisting of local geographical names and the names of goods or services, thus protecting the goodwill in local products of this type.
- The purpose of the main text of Paragraph (1) - which considers the position where such a trademark, as a result of use, has become well known among consumers as indicating that goods or services are connected with the user's business or that of its members - is to discern the value of the trademark that has gained the goodwill of the applicant association to the level necessary for protection, or to a certain level of likelihood of free riding by third parties, since such use will be restricted following registration of a collective trademark for a geographical name as a word trademark consisting of the local geographical name and the name of the goods or services.
- The lessening of the requirements extends to distinctiveness (ie, the scope of the consumers in question and the qualitative degree of recognition). However, there is no lessening of the requirement for recognition of the connection between the trademark and the goods or services in question from the standpoint of consumers and commercial parties.
The court concluded that the Patent Office had not erred in its trial decision. In order to decide whether a trademark has become well known among consumers through use, the following factors should be examined:
- trademarks in actual use and services rendered;
- the date on which use began;
- duration of use;
- territory of use;
- scale of business (eg, number of outlets, business area and total sales);
- the timing and methods of advertisement;
- number of advertisements in newspapers, magazines and similar publications;
- use or non-use by other parties; and
- other factors.
On the question of the applicability of Article 7bis(7-2), the court held as follows:
- On the date of the trial decision, November 12 2009, there were 92 ramen shops in Kitakata - including the usual restaurants, cafes and other shops serving ramen - of which 43 (or 47%) were members of the plaintiff organisation. Of the 73 shops using the words 'Kitakata ramen', members of the plaintiff represented 59%.
- Thus, the ramen shops that were members of the plaintiff represented, at most, 60% of the ramen shops in Kitakata. Furthermore, several ramen shops in the city that were well known throughout Japan were not members at that time.
- It was clear that certain ramen chain shops, such as Kitakata Ramen Kura, had been operating as ramen shops and using indications or marks incorporating the words 'Kitakata ramen' for a long time before the trial decision.
- Therefore, the connection between the indication or name 'Kitakata ramen' and the service identified in the trademark application (ie, "service of ramen in Kitakata City, Fukushima Prefecture") was remote or diluted from the perspective of consumers and retailers in areas outside Kitakata, particularly in the Tokyo metropolitan area and other parts of Japan that are a long way from Kitakata.
- Even if the plaintiff or its members had been using the name or indication 'Kitakata ramen' and serving the ramen in Kitakata, as well as aggressively conducting an advertising campaign with respect to the designated service, it was considered that the trademark KITAKATA RAMEN could not be recognised as having become well known as indicating the service connected with the plaintiff or its members among consumers in Fukushima and its neighbouring prefectures. This conclusion could not be overturned on the basis of the sales results of ramen noodles by the manufacturers of such noodles in Kitakata, or by other factors. It took account of:
- the status of the plaintiff's membership among ramen shops in Kitakata as a whole;
- the fact that non-members had been operating ramen shops using the indication or name; and
- the fact that, for a long time, non-members had been using the various trademarks incorporating the words 'Kitakata ramen' by obtaining such trademarks outside Kitakata.
- The plaintiff asserted that in several Article 7 cases, collective trademarks had been accepted as registrable by applying Article 3(2) even if members of the applicant association represented less than 50% of the total number of operators in the relevant industry. The court held that this argument was irrelevant in the context because the trademark was to be determined under Article 7bis(7-2), not under Article 3(2).
- The plaintiff asserted that it had been established to maintain the reputation of the business embodied in the trademark and to maintain and promote the quality of Kitikata ramen. It had filed an application for the trademark on behalf of the ramen shops that had been serving a certain type of ramen in Kitakata. It asserted that all of the non-member ramen shops in Kitakata had consented to its application, and that the city authorities supported the plaintiff's application in order to protect economic activity in the region. This argument was rejected, the court finding that it could not neglect the requirement that a special collective trademark for a geographical name, such as a trademark, must be based solely on the rationale of supporting the region's economic interests.
- The plaintiff asserted that the trademark application indicated the service provided by certain ramen shops, which serve a certain type of ramen - thick, curly noodles with a plain taste - that originate from Kitakata. The plaintiff argued that this was well known, not only in Fukushima and its neighbouring prefectures, but all over Japan. The court did not accept that the trademark indicated the service provided by the plaintiff and its members (ie, that of serving a certain type of ramen with a particular taste) or that this was as well known as the plaintiff had claimed.
The system of special collective trademarks for geographical names (being a combination of the geographical name and the name of goods or services) was introduced under Article 7bis(7-2) in 2006. This system was established to foster local brands.
A total of 468 special collective trademarks for geographical names had been registered with the Patent Office as of March 1 2011. Two are special collective trademarks for foreign geographical names, registered in the name of foreign associations: PROSCIUTTO DI PARMA and CANADA PORK.
This is the first court decision on the issue of whether a trademark should be registered under this system. The court's consideration of the extent to which the system can protect a geographical name is particularly significant. The main factors in this case were the existence of:
- many non-members of the plaintiff in Kitakata City; and
- many examples of the use of the words 'Kitakata ramen' by third parties outside Kitakata, including users that had obtained registration for trademarks incorporating the words 'Kitakata ramen'.
As a result of this case, it is likely to become more difficult to obtain registration under the system if the marks involved are considered famous and are already sufficiently generic, such as 'Sapporo ramen' and 'Hakata ramen'.
The case has been appealed to the Supreme Court.
mardi, avril 12, 2011
La femme est une perle (humour confuciuesque)
Un jeune disciple, assidu et perturbé, est plongé dans la lecture de Confucius lorsqu’il découvre, avec stupeur et perplexité, cette maxime
"De tout l’univers, la femme et la perle sont les deux plus belles merveilles qu’il se puisse concevoir, principalement la perle".
Aussitôt, le disciple se tourne vers son mentor et lui dit : "Grand Maître, veuillez pardonner par avance mon impertinence mais quel est donc le sens profond de cet adage ?"
Le Maître : "ô, jeune et perturbé disciple, sache donc du plus loin de ton inexpérience que, s’il est vrai qu’autant la femme que la perle se peuvent enfiler, la perle, elle, le peut être par les deux bouts".
Le jeune disciple fronce les sourcils et ose : "mais Grand Maître,veuillez pardonner mon impertinence, et me châtier si je le mérite, mais n’est-il pas vrai que la femme puisse également s’enfiler par les deux bouts ?"
Le Maître : "ah, jeune et indiscipliné que tu es, juste cela est, mais dans ce cas, c’est une perle !"