The Ministry of Economic Development has launched the Brevetti+, Disegni+ and Marchi+ calls aimed at financing the purchase of specialized services for the economic valorization of intellectual and industrial property titles.
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:
- the assessment criteria to be applied to shape marks are no different from or more restrictive than those applicable to other types of marks;
- 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;
- 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″.
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.
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.
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
Lombardy has issued the Call for Patents 2021 allocating funds for new European or International patent applications filed after March 29, 2021 or claiming priority of Italian patent applications filed after March 29, 2020. Read more
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
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.
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 PGA staff is at your disposal for any clarification.
Infringement of IP and internet provider liability
The Swedish Court of Appeal condemned the provider Telia Company for having favoured certain internet sites in the infringement of intellectual property. The ruling was issued following an action taken in 2018 by Disney, Universal Studios, Warner Bros. and several other multinational companies. In particular, the Swedish Court had already intervened in the past by issuing a so-called dynamic injunction against Telia Company. The provider was ordered to block access to The Pirate Bay, Dreamfilm, Nyafilmer, Fmovies and many other sites for violation of section 53B of the Swedish Act on Copyright in Literary and Artistic Works. The applicants submit, therefore, that Telia, by providing internet access to its customers and also allowing access to those sites, cooperated in the infringements found.
The decision confirms the approach adopted by many countries and the recent growth in the use of dynamic injunctions to paralyze IP infringements.
The use of patronymic as a company name
In a recent ruling, the Italian Supreme Court of Cassation clarified the scope of Article 21, paragraph 1, letter a), of the Italian IP Code, regarding the use of patronymics in economic activity. This is the final event in a complex dispute brought by Salini Costruzioni S.p.a. against Salini LocateIli (now ICS Grandi Lavori S.p.a.), Salini Global Service S.r.l. and Claudio Salini. In particular, Salini Costruzioni acted in order, among other things, to prevent its counterparties from using the patronymic “Salini” as a company name.
On the basis of consolidated jurisprudence on the matter, the Italian Supreme Court has ruled that where two companies with share capital have the same name, the priority must be given to registration in the company register. On the contrary, neither the mere past use of the same name by another company, which has long ceased to operate and which was owned by family members of the partner of one of the companies registered second, nor the fact that the name of the latter coincides with the surname of one of those partners is relevant.
The registrability of commercial slogans
In a recent judgment (T-156/19, 13/05/2020, Koenig & Bauer), the General Court (EU) refused registration as a Community trade mark of the English language idiomatic expression ‘We’re on it’ to distinguish goods and services in classes 1 to 4, 7, 9, 11, 16 and 35 to 42.
According to the decision, in particular, the expression “We’re on it” would convey the idea that the applicant “will take care of it” or that it is worthy of trust or confidence. However, according to the Court, the message in question would be applicable to any type of product or service. The sign would therefore lack the necessary distinctive character.
With regard to the registration of slogans, reference is made to the famous judgment of the Court of Justice in the “AUDI” case. On that occasion, the CJEU ruled that the distinctive function of the mark may be compatible with that of the slogan provided that it is assessed on the basis, on the one hand, of the nature of the goods or services for which registration is sought and, on the other hand, of the perception of the relevant public.
The trademark “booking.com” cannot be considered generic
A trademark consisting of a generic term for the class of goods or services offered alongside the “.com” portion is not necessarily generic. On the contrary, if consumers do not perceive the mark as generic for the class of goods or services to which it refers, the mark can be considered distinctive and therefore registrable.
In this sense, the Supreme Court of the United States of America, in its ruling of 30 June 2020, ruled on the trademark “Booking.com” in the United States Patent and Trademark Office v. Booking.com.
As is well known, a trademark can be generic, descriptive, suggestive, arbitrary or imaginative. Suggestive, arbitrary and imaginative trademarks are inherently distinctive. Descriptive trademarks can only be registered if they have “acquired distinctiveness” in the assessment of the consumer public. On the contrary, generic marks do not qualify for registration because any economic operator may use the generic term of the mark itself to refer to the designated good or service without being the exclusive owner of the generic distinctive sign.
On this basis, the US Supreme Court has specified that a term is defined as generic when, taken as a whole, it indicates to consumers the class of goods or services offered under the mark. Since consumers do not perceive “booking.com” as the class of online travel booking services, “Booking.com” is normally not a generic mark. It is the consumer’s impression of the brand that determines whether the brand is generic or not. Consequently, the Court held that trademarks consisting of a generic term and “.com” are not necessarily generic.
The “Trentino apples” become PGIs
With the approval by the European Commission of the relevant implementing regulation, “Mele del Trentino” are officially recognised as a protected geographical indication.
In particular, with Regulation (EU) no. 2020/890 of 23 June 2020, published in the Official Journal of the European Union no. L 206 of 30 June 2020, the name “Mele del Trentino” was entered in the European Register of Protected Designations of Origin and Protected Geographical Indications, as a product in class 1.6. Fruit, vegetables and cereals, fresh or processed, listed in Annex XI to Commission Implementing Regulation (EU) No 668/2014.
Protection of the distinctive signs of political parties
Outside the business activity, the protection of the distinctive signs against the risk of confusion aims, not to guarantee economic interests, but to protect that set of values and aims pursued by the group through its participation in collective life. In relation to political parties, in particular, the protection of identity, summarized in the name and distinctive signs, finds its constitutional basis in Articles 2, 21 and 49 of the Constitution and expresses the need to avoid, precisely in relation to public debate, confusion, as regards the elements that characterize them as autonomous centers of expression of ideas and actions.
In this sense, the Italian Supreme Court ruled in its decision no. 11635, filed on 16 June 2020, by which the Court upheld the appeal brought by the Associazione Alleanza Nazionale and the Fondazione Alleanza Nazionale against the association Movimento Sociale Italiano – Destra Nazionale – Nuovo MSI.
Cyprus: new trademark law approved
On 05.06.2020 the Republic of Cyprus adopted the new Trademark Law, published on 17.06.2020. The European Intellectual Property Office (EUIPO), within the framework of the European Cooperation Programme (ECP2), has actively participated in the achievement of this goal, offering legal assistance throughout the process of drafting the new text.
Among the topics addressed in the new Cypriot Intellectual Property Act are included:
– the transposition of Directive (EU) No 2015/2436;
– the introduction of the multi-class system;
– the discontinuation of the need for the power of attorney document;
– new paper applications;
Cyprus’ new Trademark Law has simplified the whole application and registration procedure. Deadlines have been introduced for the completion of opposition, cancellation and revocation procedures and putting an end to excessively lengthy processes.