Author: PGA

Recruitment – Trademark Attorney

by PGA PGA No Comments

We are currently recruiting for the position of Trademark Attorney.

Requirements:
– professional qualification as a Treademark Attorney for at least 5 years;
– native italian speaker and fluent in English;
– precision and attention to details;
– proactive approach and ability to work in small teams, at least 3 years’ experience in the field.

Place of work: Milan, Italy

If you are qualified and interested in this opportunity, please submit your CV to the following e-mail address: milano@pga-ip.com

PGA Intellectual Property Newsletter – April 2022

by PGA PGA No Comments

Unified Patent Court: Provisional Application Period Begins

On January 19, 2022, Austria deposited its instrument of ratification of the Protocol on Provisional Application of the Unified Patent Court Agreement. This event marks the start of the Provisional Application Period (PAP) and the birth of the Unified Patent Court as an international organisation.

During the PAP, the last part of the preparatory work in establishing the Court will be conducted. The practical work will start with the inaugural meetings of the governing bodies of the Court, namely the Administrative Committee, the Advisory Committee and the Budget Committee. Thereafter the crucial work of finalising the recruitment of the judges of the Court will be carried out. It is deemed that the PAP will last at least eight months. When the State Parties are confident that the Court is functional, Germany will deposit its instrument of ratification of the UPC Agreement, which will trigger the countdown until this Agreement’s entry into force and set the date for the start of the UPC’s operations.

EPO President António Campinos said in a statement, “The imminent completion of the ratification process by Austria is the final door opener for the long-awaited Unitary Patent scheme in Europe. In a few months from now it will be possible for innovating businesses, scientists and inventors to effectively protect their new technologies with a cost-attractive patent uniformly covering the territory of all participating EU member states”.

PGA is available to help you explore the opportunities provided by the Unitary Patent and the possible impact on the existing European patents.

Feel free to contact our patent attorneys for any further information you may need.


2021 IPTO Report on patent applications

On February 8, 2022, the Italian Patent and Trademark Office (IPTO) published its report on patent filings in Italy for 2021.

Although the IPTO is an independent Office, it is undeniable that it is part of a wider European framework. For this reason, while waiting for the related 2021 EPO Report, the data shown by the Italian Patent Office may only give a partial view of the real performance of the Office.

That said, the Report shows a growth in the number of patent applications for industrial invention (+0.50% compared to 2020, +8.9% compared to 2019). The data thus confirm a positive trend dating back to 2013.

On the other hand, patent applications for utility models have decreased (-15.03%), thus confirming a “swinging” trend that is not fully consolidated yet.

Finally, validation requests in Italy of European Patents show a decrease for the second year in a row (-12.58% compared to 2020, -18.76% compared to 2019).

In light of the above, only a comparison with the EPO 2021 Report will confirm or not the trends briefly reported above.


EUIPO: Volkswagen van is a valid three-dimensional trademark

The EUIPO recently decided whether Volkswagen’s well-known “Bulli” van is a valid three-dimensional trademark.

By application filed on May 2, 2017, Volkswagen applied to the EUIPO for the registration of the three-dimensional trademark above, No. 016675721.

In a decision dated October 30, 2020, the EUIPO rejected the application, deeming the shape of the Bulli to be devoid of distinctive character for vehicles.

Volkswagen then appealed against this decision, an appeal which was upheld, with the annulment of the contested decision by the First Board of Appeal, in a ruling of November 29, 2021 (R 2421/2020-1).

In that decision, the First Board of Appeal recalled that, with regard to the assessment of the distinctive character of a three-dimensional mark:

  1. the assessment criteria to be applied to shape marks are no different from or more restrictive than those applicable to other types of marks;
  2. the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product for which registration is sought, the more likely it is that the shape is devoid of distinctiveness;
  3. where a shape mark consists of the shape of the goods for which registration is sought, only a mark consisting of a shape which departs significantly from the norm or customs of the sector, and thus fulfils its essential function as an indication of origin, is not devoid of the distinctive character required for registration.

In this case, the EUIPO found that the V shape on the front of the van, which also resembles the head of a bug, is positioned where the public would normally expect to find a radiator grid. Therefore this shape, perceived as a distinctive feature of the Bulli, would allow the relevant public to distinguish between models of different manufacturers on the market, even without the addition of the VW logo. Moreover, the other characteristic features such as the rounded shape of the van, the division of the windscreen into two parts and the round headlights are also so unusual on the car market, that the target public would be able to recognise an indication of origin in the shape of the vehicle.

Also the shape of the Bulli was not common for vans on the market, not only at the time of filing, but also in the 1950s when the Bulli was first placed on the market.

In conclusion, Volkswagen’s application was therefore remanded to the Examination Division for further proceeding.


Distinctive character in the three-dimensional trademark: the MOON BOOT case

In a recent judgment, the EU General Court has ruled on the validity of the following three-dimensional trademark:

Registered by Tecnica Group S.p.A. for Classes Nos. 18, 20 and 25, the trademark depicts the après-ski known as “MOON BOOT”.

In 2017, Zeitneu GmbH filed an application with the EUIPO for a declaration of invalidity of the MOON BOOT trademark on the basis of Article 7(1)(b), (c), (d) and (e) of Regulation 207/2009. The Cancellation Division decided for partial invalidity of the trademark for class 25 (i.e. Clothing, footwear, headgear; soles for footwear; insoles; heels for footwear; uppers for footwear).

The decision was upheld by the Board of Appeals. As a matter of fact, the Board remarked the lack of distinctive character of the trademark, which could not be derived from its frequent imitation.

The EU General Court of First Instance has been addressed on the matter and has taken the opportunity to set out certain aspects concerning three-dimensional trademarks.

In particular, the Court reiterated that the analysis of distinctiveness of these trademarks is not substantially different from that of other types. However, it is important to remember that the perception of a three-dimensional mark is not the same as that of a figurative and/or verbal trademark. In fact, the public usually does not derive the commercial origin of a product from its shape and/or packaging.

For this reason, the Court concluded by noting that only a three-dimensional trademark, consisting of the outward appearance of the product itself, which departs significantly from the norm or customs of the sector concerned and, therefore, is capable of fulfilling its original essential function is not devoid of distinctive character under Article 7(1)(b) of Regulation No. 207/2009″.

Recruitment – Trademark Paralegal

by PGA PGA No Comments

We are currently recruiting for the position of Trademark Paralegal.

Requirements: fluency in the English language, attention to details, proactive approach and ability to work in small teams, at least 3 years’ experience in the field.

Place of work: Milano

If you are qualified and interested in this opportunity, please submit your CV to the following e-mail address: milano@pga-ip.com

PGA appoints new Partners: we bet on our people!

by PGA PGA No Comments

Since day 1, PGA S.p.A. has never stopped growing, with a consistent and quite remarkable pace.

This steady growth certainly reflects the expertise and dedication of its people who have become an essential part of the PGA family and an important asset of the Firm.

The time to reward these valuable talents is now. PGA has indeed decided to appoint four new Partners: Alessandro Cavazzin, Veronica Raffi, Daniele Rosa e Paolo Santonicola.

Being certain that they will honour the greater responsibility that this appointment entails, PGA wishes the new Partners all the best in terms of personal and professional achievements.

PGA Intellectual Property Newsletter – Dicembre 2021

by PGA PGA No Comments

CASE LAW


What happens if the national patent claims a broader range of protection than the European one?

In a recent judgment, the Court of Rome provided important clarifications on the relationship between a European patent and its Italian portion. As is well known, the European patent is granted after a unified procedure, which has effect in all the Member States designated by the applicant. Read more

Recruitment – Senior Patent Paralegal

by PGA PGA No Comments

We are currently recruiting for the position of Senior Patent Paralegal.

Requirements: fluency in the English language, attention to details, proactive approach and ability to work in small teams, at least 5 years’ experience in the field.

Place of work: Milan (Italy).

If you are qualified and interested in this opportunity, please submit your CV to the following e-mail address: milano@pga-ip.com

Revaluation of IP in the financial statements: tax benefits for companies

by PGA PGA No Comments

Article 110 of the so-called “August Decree” (Italian Legislative Decree no. 104 of August 14, 2020, converted into Law no. 126 of October 13, 2020) allowed Italian companies to re-evaluate company assets on their balance sheets.

First, the initiative allows companies to revalue their assets for accounting purposes, allowing them to increase their capitalization. But that’s not all. The real benefits are appreciated at tax level: the positive revaluation of company assets allows to increase the value of depreciation and, consequently, to reduce the tax burden. In this case, the payment of a facilitated substitute tax is required. Read more

PGA becomes Audirevi’s partner

by PGA PGA No Comments

We are pleased to announce that PGA Intellectual Property has entered into a strategic partnership with Audirevi S.p.A., a multi-functional company that provides services for clients in the areas of auditing, transaction services, compliance, professional training, consulting and electronic auctions.

Audirevi is also a member of Nexia International, one of the world’s largest networks, which brings together more than 258 independent audit companies, tax assistance and management consulting firms in over 125 countries around the world, with over 35,000 professionals serving the companies of the group.

Through the collaboration with Audirevi, PGA intends to expand its network, combining its skills with those of players of recognized quality. All this in order to provide an even more complete assistance, aimed at supporting and enhancing the business of clients in any field.

Reopening of the calls “Marchi+3” and Disegni+4“

by PGA PGA No Comments

The Italian Ministry of Economic Development (Directorate General for the Protection of Industrial Property – Italian Patent and Trademark Office) has adopted the decree to reopen the calls “Marchi+3” and “Disegni+4”, that had been closed due to the exhaustion of financial resources in recent months.

The call “Marchi+3” will reopen from 9:00 a.m. on September 30, 2020.
The call “Disegni+4” will reopen from 9:00 a.m. on October 14, 2020.

Applications may be submitted until  resources have been available.

The Call for Marchi+3 allows for facilitations relating to expenses incurred between June 1, 2016 and the date of submission of the request for facilitations for: project of the trademark, prior art searches and subsequent filing of the European Union or International trademark, as well as for any legal costs for trademark protection actions in response to Office actions or third party oppositions.

The incentive provided for in the Disegni+4 notice is recognized for the enhancement (production and marketing) of a single design or of one or more designs belonging to the same multiple application, registered – with any national or regional intellectual/industrial Property Office – starting from January 1 2018 and in any case on the date prior to the submission of the facilitation application.

The full version of the Calls and the related documentation required for the submission of applications are available on the following websites:
https://www.marchipiu3.it/
http://www.disegnipiu4.it/

The PGA staff is at your disposal for any clarification.