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  • Friday, August 10, 2018 6:55 AM | Deleted user

    On June 27, 2018, the Government of Canada published the finalised version of the revised Regulations on Industrial Designs. The amended Regulations have not only become the embodiment of the modernised law but have also paved the way towards Canada’s accession to the Hague Agreement. The most noteworthy changes in the Regulations are described below. 

    The filing requirements have been facilitated. There are now no prescribed forms to be filled in. A brief design description is now optional, whilst the design representation requirements are much more flexible. Consequently, in order to establish the filing date for a design application, it is now enough to file a request for registration, indicating the applicant’s name and contact details, as well as the design representation. 

    Besides these changes, the requirements for representatives have been slightly simplified. An applicant may appoint a patent agent or file an application, pay any fee or file a request for transfer by himself or authorise a third party for such an action. Moreover, now the applicant may communicate with the CIPO regarding the whole design portfolio, unlike the previous requirement of communicating about each design separately. 

    The Regulations also clearly stipulate and broaden the concept of divisional application. The applicant will now have up to two years from filing the earliest parent application to file a divisional one or to have the latter further divided.

    In addition, the term for responding to Office Actions has been reduced. Namely, the applicant has now three months instead of six to file a corresponding response with the possibility of further extension of this term for six months. 

    Under the updated Regulations, a design application is published upon its registration or 30 months from the earliest priority date, whichever expires earlier; before amendments, it was published only upon registration. 

    Furthermore, the maximal term of design protection has been extended from 10 years after the design registration date to 15 years after its filing date. 

    Amongst other things, the Regulations now clarify the procedures for an advanced examination, delayed registration, amendments, claiming priority, refunding the fees, and recordals. Accordingly, the recordal of a transfer of rights has been simplified, so that documents evidencing the assignment, are no longer required anymore. It is only necessary to indicate the name and address of the assignee and pay a corresponding fee. 

    The amended Regulations also include a whole chapter related to the filing, prosecuting and granting of the international applications under the Hague Agreement, for which Canada will be selected amongst the designated countries. The applicants will be able to use the benefits of the Hague system from November 5, 2018, when the corresponding provisions will finally become effective in Canada. 

    It is noteworthy that despite the substantial legal changes, the CIPO’s fee schedule remains unchanged. 

    With the modification of the design regime, Canada strives to reduce difficulties experienced by applicants, to provide them with the possibility of filing international applications under the Hague Agreement, to encourage businesses and to align its design registration framework with international practices.


  • Friday, August 10, 2018 6:31 AM | Deleted user

    Andrew McWhirter (Brodies LLP ) published an article for Lexology regarding an opposition lost by the fashion brand Mango.

    The case concerns an application for a UK trademark YANGO for identical and similar goods to those under Mango brand.

    Against this application, an opposition was filed based on a series of earlier Mango trademarks. On top of that, a reputation for Mango mark was stated before the Patent Office.

    The UKIPO ruled that there are no grounds for consumer confusion. The arguments for this conclusion were that although there are some visual and phonetic similarities between the signs in general, there are not similar enough because of the lack of conceptual similarity ( Mango is a fruit, whereas Yango has no meaning) and the fact that the beginning of the marks are different – M and Y.

    Most likely this decision will be appealed. Nevertheless, however, it is indicative of how difficult the protection of such marks could be.


  • Thursday, August 02, 2018 4:55 AM | Deleted user

    One of the main traps that start ups fall into is considering IP too late in the journey. With over 80% of most companies’ value now stemming directly from intangible assets it is something to start thinking about as soon as you have a business idea – many businesses think it is something that can be considered at a later date, and are surprised to find that this can lead to all kinds of difficulties.

    (1) Startups need to think about IP right from the beginning

    In fact, many start-ups still don’t think about IP (or their wider intangible assets) until “the horse has bolted”. We unfortunately see many start-ups that have lost their brand name and domain names because they have not realised that registration at Companies House doesn’t automatically secure rights to use their trademarks and brand.When someone else has already registered the mark with the registration body it is difficult to then claim that the mark really belongs to your company. Even worse, many companies inadvertently infringe registered trademarks because they have not checked the register before they start trading.It is not just the potential damages that they risk paying, it is the costs of rebranding, signage and printing and the reputational damage or loss of reputational capital that ensues. We see some large organisations that have developed through rapid organic growth in this category too.

    (2) Your intangible assets might be greater than you realise

    Intellectual property provides you with rights that protect your products, brand name and services with patents, trademarks, copyright and so forth and all these have a value.The people-based assets of a company – for example, key skills, know-how and other processes, such as the way your company does business, also have a value, as do assets such as relationships, branding and reputation which provide the route to commercialization. A tangible monetary value can be assigned to these assets.

    IP value Protect your IP, it could be more valuable than you think

    (3) Businesses need to avoid leaking their IP rights

    Technology start ups are often so driven by the excitement of progressing an inventive idea, and so keen to take it to market that they don’t stop to do the necessary due diligence.There are still companies – both large and small - that are disclosing their inventions and ideas – perhaps when discussing collaboration or standards with other companies, or at exhibitions and conferences - before patent or design applications are filed – this “leakage” means that the company may never be in a position to control its IP rights. A chance word at the wrong time could lead to serious losses.

    (4) Startups need to have a full overview

    Whilst some start ups may seek to apply for IP protection, it is not often from a full perspective of all the technical, legal and commercial angles necessary.Very often scientists and developers will know where the respective R&D and product competition lies – however they overlook the IP competition – that is the design and patent applications that have already been filed that are not yet evident in the literature or marketplace.This competing IP is often a real threat – not just to the success of the start-ups product, but also to the potential for infringement and freedom for the start up to actually produce their product.

    (5) Inventors need to be IP cost-aware

    Single inventors and small start-ups often do not investigate the full cost of patent ownership and exploitation. They begin filing a patent and then decide that they cannot afford the costs of continuing the process and seek to sell the invention during the patent application stage.Typically the market is not open to acquiring single patents at an early application stage, so the inventor faces the option of having a very limited patent coverage to keep costs down with the consequential limited market, abandoning the patent application or seeking third party investment with consequential encumbrance from the third party.Patents following the standard processing route can take three to five years to reach the stage of a fully granted patent. Inventors often do not realise that they might have to hold an application for that length of time before they can consider selling the patent.

    inventors Hold on lads, can you afford to patent that?

    (6) Don’t assume you are automatically protected when you start to trade internationally

    Each country has different processes and methods for protecting IP and the pitfalls in obtaining IP protection in each country also vary. In Europe, a system operates to provide a method of protection across the EU states, thereby making it more streamlined to obtain patent protection.In the EU, different trade restraints apply, and it is especially important to consider competition law – which covers the free movement of goods around the EU and the avoidance of the abuse of a dominant position in the market – when planning your IP strategy.Not all countries recognise IP rights in the same way as in Europe and in the US. India, China and Russia their IP laws operate very differently from those in the West.

    (7) Remember that IP needs to be reviewed regularly

    Just as companies are not static, neither is IP. It can pay dividends for companies to undertake a thorough review of their IP portfolio, as the company grows and changes, to determine what it is worth keeping in terms of intellectual property for further development and commercialisation, and what it might be better to sell or lease.And patent portfolios need to be reviewed on a regular basis to ensure that as organizations and legislation change, full protection remains in place.

    (8) IP can be a tradeable asset including a vehicle to raise finance

    Together with the acceptance that there are valid and objective evaluation methods that can be properly applied to determine the value of intellectual property, has come the increasing acceptance of IP as a tradeable asset.In order to use IP assets as collateral to obtain finance, organisations need to be able to prove they have a cash value which is lasting, and have a realisable market value.All this depends on a properly established valuation. An option for raising finance, especially for firms with limited resources, is to sell IP rights to a company pension trust fund and buy them back under a long-term leasing arrangement.This also ensures that even if the business runs into hard times, the IP remains secure within the pension trust fund.

    About the Author

    Dr Jackie Maguire - CEO and Founder of Coller IP 

  • Thursday, August 02, 2018 4:17 AM | Deleted user

    The Senate passed on Aug. 1 the National Defense Authorization Act (NDAA), which had already been approved by the House by a vote of 359–54 on July 26. Experts say one purpose of the mammoth $716 billion defense authorization bill is “to rein in China’s investments in the United States.”

    The bill includes reforms to the Committee on Foreign Investment in the United States (CFIUS). Speaking at a Hudson Institute forum on reforming CFIUS on July 31, Michael Allen, managing director of Beacon Global Strategies, said that the House intelligence committee started to notice the threat from the communist regime in China as early as 2011.

    “One of the first things that came at us was the National Security Agency briefing the committee on aggressive Chinese cyber attacks,” he said, recalling his days working for the House Permanent Select Committee on Intelligence.

    “Gradually people came to understand what we now know,” Allen said. “It is sort of the intent, the design, to create a regime to systematically take intellectual property here in the U.S.”

    Allen said that the “systematic” theft was not just done through cyber theft, but also through the deployment of students throughout the United States, as well as through venture capital.

    Allen sees the reform of the CFIUS as a response to the fear from both the Congress and the defense policymakers about the “apparently narrowing edge” of America in many areas, including artificial intelligence.

    Derek Scissors, a resident scholar at the American Enterprise Institute, thinks that there is a “three-dimensional threat” from the Chinese regime: theft, “which is considerable”; exports and transfers outside the United States; and acquisitions in the United States.

    The White House praised the House passage of the legislation on July 26 in a statement. “It also takes positive steps that are consistent with the Administration’s commitment to maintaining a strong and resilient manufacturing and defense industrial base,” it said.

    The CFIUS measures are among a series of proposals being considered by the White House and Congress to address what it sees as China‘s unfair trade and market access practices. Others include tariffs on goods ranging from aluminum to automobiles, and efforts to prevent the growth in the United States of Chinese telecommunications companies Huawei and ZTE


  • Monday, July 30, 2018 2:28 AM | Deleted user
    Disposable dish biodegradable from cassava flour achieved patent of the SIC.

    The material could be used for containers or containers for fast foods, bakery and pastry, fruit, seeds, among others

    The Superintendence of Industry and Commerce granted the University of Cauca a patent for the creation of a biodegradable dish made from the mixture of cassava flour and fique fiber, which can be used as a container or container for meals.

    The dish with good mechanical properties and is friendly to the environment, because it has cassava flour and fiber de fique and has a coating of components such as beeswax and gelatin, which makes its degradation process faster.

    The container has physical properties similar to those of a conventional dish, and thanks to its components this avoids the presence of cracks, pores and fragility, due to its semi-rigid biodegradable material, this at the same time, can be used for containers or containers for meals fast, bakery and pastry, fruits, seeds, among others.


  • Monday, July 30, 2018 1:01 AM | Deleted user

    Even if it looks like a Kit Kat, it might not be.

    The European Court of Justice has thrown out an appeal by the chocolate bar's maker, Nestlé, which argued that it owns the shape of the teatime treat.

    Nestlé has spent more than a decade fighting to trademark the four-fingered wafer shape - something that rival Cadbury had fought hard against.

    But Wednesday's judgement found that a previous court had been right to annul the decision by Europe's trademark group.

    That could bring an end to the snack's protected European status - and a saga that has proved expensive for both sides.

    It also takes the pressure off identical treats like Norway's Kvikk Lunsj - pronounced "quick lunch" and which has been around for 80 years - and opens the door to own-brand imitations at your local supermarket.

    A tale of four fingers

    British and US readers may not even have heard of Kvikk Lunsj.

    Norwegians, though, have national pride in the snack, and its long-running image as a meal on the go for healthy Scandinavian hikers.

    Its chocolate has a different flavour from the Kit Kat, similar to parent company Mondelez's Milka brand. Taste-testing from the Guardian newspaper last year concluded that Kvikk Lunsj was, in fact, the superior product.

    The Norwegian bar has been made since 1937, a mere two years after Kit Kat - originally called Rowntree's chocolate crisp - hit the market in 1935.

    For 65 years, the two crispy treats lived together in harmony - until Nestlé went on the offensive.

    In 2002, the global chocolate giant applied for a trademark in Europe for Kit Kat. There was no issue with the bar itself, embossed with the Kit Kat logo.

    But it also applied for the trademark for the shape of a Kit Kat - or "four trapezoidal bars aligned on a rectangular base" as a top EU legal adviser put it.

    A real Kit Kat has logos - but what about the shape on the left, from Nestlé's application?

    After four years of back-and-forth, the EU trademark granted Nestlé the shape as a trademark.

    The makers of Kvikk Lunsj, Mondelez, also owns brands including Cadbury, Milka, Oreo, and Toblerone - and Cadbury took issue with Nestlé's new trademark.

    Mondelez also makes the Leo bar - another four-fingered chocolate treat.

    In 2007, the court battle began in earnest, see-sawing from one side to the other during appeal after appeal.

    Can the KitKat shape be a trademark?

    The battle to stop people from copying shapes

    What's in a shape?

    Wednesday's ruling threw out Nestlé's appeal, telling the EU trademark office it has to "reconsider" its decision - essentially annulling Kit Kat's claim.

    The case was about whether the brand had become distinctive enough to deserve its trademark - that its shape alone was how people recognise the snack.

    In 2016, a lower EU court decided that Nestlé had to prove a Kit Kat was recognisable in every EU country - and no evidence had been provided for Belgium, Ireland, Greece and Portugal.

    And none of the parties involved - Mondelez, Nestlé, or the European trademark office - were happy about that.

    Nestlé and the EU's trademark office appealed against the 2016 decision. If proof of distinctiveness had to be shown for every single member state, they argued, no company could ever reach that high standard.

    Mondelez, meanwhile, argued that it was wrong to conclude that Kit Kat had "distinctive character" anywhere - including countries like the UK, Germany and France.

    The European court threw out all those objections.

    The result is that the EU's top court has now declared that it's not enough to prove that a product has become iconic in "a significant part" of the EU - it has to be proven across all the markets of the bloc, not just some.

    Is this the end of the road?

    Nestlé said that Wednesday's judgement was "not the end of the case" and that it believed the EU trademark office will side with the company anyway.

    "We think the evidence proves that the familiar shape of our iconic four-finger Kit Kat is distinctive enough to be registered as an EU trademark," a spokesman said.

    John Coldham, partner at the UK law firm Gowling WLG, said that rather than cancelling the trademark the court decided it should never have been awarded at all on the basis of the evidence.

    That means the decision heads back to the EU trademark office.

    "Assuming the EU Intellectual Property Office does not have evidence that the shape is distinctive across the EU, I would expect it to remove the mark from the register now," Mr Coldham said.

    "It is open to Nestlé to apply again, and to put stronger evidence in, so this may well not be the end of the road," he added.

    "No-one is saying it is impossible to get a trade mark for the Kit Kat shape - just that there needs to be evidence that the shape is distinctive of Kit Kat in every part of the EU."

    So the Kit Kat is set to lose its EU trademark - for now. But there is still a fight to be fought.

    Triangular trials

    European status aside, chocolate is serious business for trademark lawyers on a country-by-country basis.

    Nestlé had been looking for Europe-wide protection for the Kit Kat shape. But the trademark still exists on national level in some countries, including France, Germany, Spain and Italy.

    When the UK considered it, however, a lengthy court case ended in a 16,000-word ruling that Kit Kat had "no inherent distinctiveness".

    Cadbury, meanwhile, lost its own trademark battle when it tried to register a shade of purple.

    And, back in 2006, a case involving gold chocolate bunnies asked similar questions to the Kit Kat saga.

    Lindt reportedly suggested its rival change their gold wrapper to bronze, and ban the red ribbon

    Swiss chocolatier Lindt applied for a trademark for its Easter bunnies with a red ribbon, which are iconic in many countries - but not all.

    In Germany, the Riegelein company also made gold-wrapped bunnies, and the case made it to both European and German courts - where Lindt eventually lost.

    And while Mondelez won the argument that you can't trademark the shape of a Kit Kat, it's sure you can trademark a Toblerone - which it owns.

    Toblerone to revert to original shape

    Toblerone's shape was registered in 1998 - but was only put to the test last year, when British retailer Pound land designed an off-brand version.

    Featuring two rows of triangular bumps rather than one, Poundland argued that its copycat wasn't a trademark infringement - especially since Toblerone had changed the shape of their UK product to reduce weight.

    That disagreement was settled out of court.


  • Monday, July 30, 2018 12:44 AM | Deleted user

    Apple’s “victory” shows that well-crafted design patents can offer broad protections against even slight infringements by competitors, and that a well-written design patent can provide tremendous benefits to the patent owners.

    On May 24, 2018, we received the third (trial) installment in the seven-year legal battle between Apple and Samsung over the design of smart phones and related devices. At issue on this go-round was a retrial solely directed to the issue of damages – how much did Samsung owe Apple for infringing several design patents generally directed to various features of Apple’s iPhone and iPad devices? The issue of liability had been decided long ago by an earlier jury trial and affirmance from the Federal Circuit Court of Appeals. More particularly, the San Jose jury was this time asked to determine whether the drawings of the design patents at issue captured the entire “article of manufacture” ultimately sold by Samsung.

    The hope for patent practitioners across the county was that the trial and its ultimate verdict would provide detailed guidance on how to counsel clients on both prosecution of design patents as well as providing reliable advice on dealing with allegations of design patent infringement. The jurors deliberated for more than three days on what constitutes an “article of manufacture” and how much Samsung’s infringement on Apple’s iPhone design is worth, but provided no significant insight into how they conducted their deliberations or what may have swayed them to award Apple half a billion dollars in damages. So, we continue to wait.


    Apple first filed the patent infringement action in 2011 in the Northern District of California. That suit alleged (among other things) that Samsung’s smartphones infringe three of Apple’s design patents. Those patents covered various ornamental features of Apple’s smartphones, including their black rectangular front face having rounded corners, a raised rim associated with the same, and a grid of sixteen colorful icons on a black screen. The jury ultimately found those patents infringed and entered a $399 million final judgment for Apple. The Federal Circuit upheld the decision

    However, upon taking up the case, the Supreme Court reversed the decision. It charged the Federal Circuit court (who then punted back to the district court) to determine the appropriate legal standard to define “article of manufacture.”

    Why is article of manufacture what we are concerned about?

    The newest dispute focused on whether the specific design features Samsung used in its smartphones were the driving force behind consumers’ purchases of the infringing phones.

    Defining the “article of manufacture” was merely a way of approaching the larger question of damages. The Supreme Court left open the possibility that Samsung could pay less than its full profits from its infringing devices because the Court agreed that an “article of manufacture” need not be the entire device, but could be component parts of a product. Even so, the Court did not preclude a jury from awarding the full value of those profits if they found that the “article of manufacture” was essentially synonymous with the product as a whole.

    On remand, the issue left for trial was damages. More particularly, the battle lines would be on what is an “article of manufacture” under the Patent Act. Without significant direction from the Supreme Court’s decision, Judge Lucy Koh of the Northern District of California rejected proposed tests for “article of manufacture” from both Apple and Samsung, instead adopting a four-factor test (recommended by the U.S. Government during the Supreme Court phase of this matter, emphasizing the jury’s role as the sole body able to properly define the “article of manufacture.” The test asks the jury to consider (1) the scope of the design patent, including the drawing and written description, (2) the relative prominence of the design within the product as a whole, (3) whether the design is conceptually distinct from the product as a whole, and (4) the physical relationship between the design and the rest of the product, including whether the component can be purchased separately and otherwise be physically separated from the device. This same four-factor test was used earlier this year in the matter of Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., then pending in the Southern District of California.

    At trial, Samsung pointed to recently conducted consumer surveys about purchasing decisions to approximate the values of specific design components. Apple disputed the surveys’ relevance, claiming instead that these surveys ask participants about arbitrary smartphone features that did not correlate directly with Samsung’s profits. The jury seems to have aligned with Apple’s position, awarding $539M, $140M more than the previous jury award.

    The ambiguity surrounding just how to determine what constitutes an “article of manufacture” when calculating damages will continue for the foreseeable future. The four-factor test provides little clarity on its own, and the submitted (and returned) jury verdict form provides no greater insight into how the jury actually used the test, if at all.

    What we do know is that Apple was able to convince the jury that their three design patents for the iPhone’s screen and GUI were sufficiently synonymous with the iPhone as a whole, making Samsung liable for nearly all of its profits generated from sales of the offending devices. One juror mentioned after the trial that the jury believed the design of the icon layout of the iPhone’s GUI covered Samsung’s entire phones. This surprising decision, which runs contrary to the speculation leading up to the verdict, highlights just how fickle the new test may be, yet also indicates how powerful well written design patents can be in protecting valuable design features of larger products from infringement.

    What This Means to You

    Ultimately, the jury’s large damage award might not be the lasting storyline of this case. Apple’s “victory” here shows that well-crafted design patents can offer broad protections against even slight infringements by competitors, and that a well-written design patent and a well-argued case can provide tremendous benefits to the patent owners. Given the relatively inexpensive design patent process and what will only be continued speculation as to how these damages should be calculated, a design patent remains a great defense in the face of even limited infringement by market competitors.

    About the Authors

    Michael Annis is a Partner in Husch Blackwell LLP’s St. Louis office and belongs to the firm’s Technology, Manufacturing & Transportation industry group.

    Myers Dill is an Associate in Husch Blackwell LLP’s St. Louis office and belongs to the firm’s Technology, Manufacturing & Transportation industry group.


  • Friday, July 20, 2018 6:43 AM | Deleted user

    In the current scenario, there is great competition among a myriad of business organizations. Law firms are not different in this regard. They are facing cut throat competition from their rivals and need to come up with new ideas to optimize their business potential. Law office management services have been proven to be the most effective solution for large and small law firms to manage work more effectively and efficiently.

    Here are a few tips which can help large and small law firms in making itself successful:

    Eliminate the unnecessary employee benefits– Every law firm management offers certain benefits to its employees like travel allowance, health insurance etc. In order to reduce the expenses, those benefits which are not necessary or beneficial for the organization should be withdrawn.

    Use a virtual office– Generally, law firms utilize the services of a number of lawyers. This requires a lot of seating space. Many law firms have to hire commercial offices for their staff. This involves a lot of expenditure. By using a virtual office in which attorneys based in remote locations can be assigned tasks and they can coordinate with each other as per requirement, you can save a lot of funds. Though this arrangement might not suit all firms, certainly firms can benefit from this idea must use it.

    Using outsourced legal services– Outsource law support services is also an option which can be used for enhancing the revenues of the firm. This option can prove to be extremely useful for lawyers who cannot effectively manage their own law firms. By outsourcing some of the less important tasks, they can enhance their productivity. Moreover, it also offers the chance to reduce some of the expenditure incurred on the payroll of some of the attorneys. The costs charged by the outsourcing firms in developing nations are much than the local rates in developed nations.

    Offering discounts to old clients– By offering slight discounts to old clients, you can ensure that they don’t go to other law firms. Generally, these law firms have standard fees, but these rules can be relaxed in case of older clients. This will help in strengthening the customer base.

    All these tips can prove to be useful for law firms, but it is up to the law firm management to decide what is useful for them.

    Cogneesol is among the top outsourcing companies offering affordable law firm outsourcing services to law firms all over the world. These services are aimed at ensuring a reduction in operational expenditure and optimizing the revenue.


  • Friday, July 20, 2018 6:01 AM | Deleted user

    For a long time, EU law considered it theoretically possible to protect a fragrance in trademark law, but practically impossible. Because a trademark and even a fragrance brand had to be graphically displayable. Since the EU trademark reform in 2017, this is no longer obligatory: easy going for scent trademark protection the EU?

    No uniform jurisdiction in the EU

    Scent trademarkA look at the European jurisdiction on fragrance brands shows that there is no fundamental case law on the subject. The 2006 “Bsiri-Barbir v. Haarmann Reime” case from France is legendary. Fragrance is an application of purely technical knowledge without signs of creativity, therefore no trademark protection is possible.

    Also in 2006, the Netherlands decided exactly the opposite, in the case of Lancôme v. Kecofa (2006). Perfumes that use very different chemicals and even smell identical can be a work in the sense of copyright, they said.

    Legal basis for Protecting Scent Trademarks

    Until the EU trademark reform in 2017, the decisive question was whether an olfactory mark can meet the requirement of graphic representability under Sec. 8 (1) Marking.

    Since October 1, 2017, however, Regulation (EC) No. 207/2009 has applied – we reported ( Info Blog: Videos and sounds as EU Trade Mark ). Under this Regulation, representation of a trademark has not longer to be graphically displayable – if the trade mark can also be described in another way in such a way that the subject matter of protection is clearly and precisely defined. This leads to the interesting consideration: how to present a fragrance?

    The comparative description of a fragrance like “Scent of burnt almonds” or “Scent of a ripe strawberry” does not meet the legal requirements for the representation of an olfactory mark and has so far been rejected. The background for this is that odours are largely subjective sensory perceptions that are perceived very differently on an individual basis.

    Patent protection for fragrances

    What then would be an indication of the chemical composition? Legally, patent protection, which can be granted for chemical substances and active substances, would be an option. In Germany alone, for example, there are over 100 patent applications for laundry detergent. So why strive for protection status as scent trademark, anyway?

    Fragrance is more than its chemical composition

    The purely chemical view does not describe a scent trademark completely. A fragrance composition is a complicated mixture of several natural and synthetic fragrances, which are also released in a temporal sequence. A scent classification, which could be used comparable to the current colour classification, is not yet available. Scent samples do not provide the stability and durability required for trademark protection in the EU. On the other hand, in the U. S. it is generally possible to protect a scent as a trademark – just a few weeks ago, toy manufacturer Hasbro has received scent trademark rights from the US Patent and Trademark Office (USPTO) for the unique scent of its “Play-Doh”.

    Lack of distinctiveness

    Of course for EU scent trademarks it would be essential to be distinctive. This can be problematic, vanillin for example is largely excluded for trademark protection. It is devoid of any distinctive character for cosmetics in Class 3, as vanillin is a necessary fixative in the base note. However, distinctiveness is also an issue for the entire fragrance. Again and again bitter arguments between brand perfume manufacturers and cheaper imitators have been brought to court, mostly because of the packaging of fragrances. The more scent trademarks are granted, the more liklihood of confusion will be found.


    The new EU Trademark Regulation encourages creativity in the application for EU scent trademarks. Therefore the development of a perfume or fragrance should be documented in detail, and moreover there should be an attempt to apply for scent trademark protection. Because as soon as more fragrance brands will be protected in the EU, it will also be necessary to be able to show distinctiveness and priority one’s own fragrance.


  • Friday, July 13, 2018 9:00 AM | Deleted user

    Online shopping has become the go-to for both consumers and businesses seeking speed and convenience. According to the latest report from the Office for National Statistics, e-commerce sales in 2016 were made up of £236 billion in website sales and £274 billion in electronic data interchange (EDI) sales or business-to-business sales.

    The BBC recently reported on the growth of the online fashion retailer Boohoo. Boohoo saw their revenues jump by 53% in the three months to the end of May, with UK revenues up by 49% and US revenues up by 75%. In a previous report in March, the company stated that pre-tax profit had risen by 40% to £181.3 million.

    The success of the online-only retailer is a stark contrast to the many household names making the headlines in recent weeks as retail brands continue to struggle in the market. Businesses that have dominated the high street for decades are being forced to announce store closures and job losses as they face difficult times. While it cannot be said that the growth in online shopping is the sole cause of the current problems facing the high street, it can be assumed that it is a contributing factor.

    For many businesses, an e-commerce presence is now a necessity, enabling them to reach a far greater percentage of potential buyers. It is important, however, that brands considering the benefits of e-commerce are prepared for the risks that operating online can bring, especially from a legal perspective.

    Businesses that are in the process of launching e-commerce platforms need to consider the actions that they need to implement to protect their brand. Copyright or trademark infringements that take place online can be more difficult to take action against.


    The difference between the Internet and the "real world" is that the Internet allows people their anonymity. If someone really wants to hide their identity online they can, and in most cases, they do so very easily.

    If a copyright or trademark infringement were to happen away from the Internet then you can take action against the infringer because you know who they are. You are able to get a court order to prevent them from doing it again, and hopefully a damages payment and your costs covered. This process does not work on the Internet. Infringements online can be difficult to take action against because you may not be able to identify the infringer and they could be anywhere in the world.

    Even if you are able to narrow down the infringer's whereabouts to a specific country then there are other issues you will need to consider. You may not be able to prove that the infringement has occurred in that jurisdiction. You may also not be able to take action because you do not have intellectual property protection in that country. You would also need to consider things like where the infringer's servers are based. If they're in another country then you may have difficulty proving the infringement. You would also need to consider the countries that the goods are being sent from and where the customers that have bought them are based.

    The issue with infringements online is that even if you do manage to take action against the infringer they can always set up another website elsewhere and still reach the same customers.

    In a lot of cases, infringers can often be identified, tackled at the source and their infringement stopped. The problem is that sellers of counterfeit goods are often serial infringers and they can be evasive.

    Due to the nature of how infringement occurs online, it's a good idea to be aware of techniques that you can utilize to protect your brand and make infringement more difficult.


    One approach to help protect your brand online is "domain name complaints". A domain name is the address that is used to access your website, e.g. Gowling WLG's domain name is "". Domain names attract the people you want to sell to and give credibility to the websites that use them.

    For example, if you come across a domain name such as "" you may think that discount handbags are genuinely on sale when they could just be counterfeits sold by anyone who has the ability to set up a website. It is common for domain names to be used in this way to commit fraud. To make sure that these domain names are not available to be used in such a way you are able to take action and have them transferred to you. For example, as Gucci's brand name is being used in the domain name then they would be able to request for the domain to be transferred to them.

    If asking for the transfer of a domain name does not work then it is possible to have them forcibly transferred to you through a domain complaint. When you register for a domain name, you have to agree to a contract with the registrar. The fine print of the contract will state a number of mandatory terms. For example, the person registering the domain will need to agree to not register or use the domain name in a way that will infringe anyone else's intellectual property rights.

    Domain name contracts also state that if there is a dispute concerning a domain name it has to be dealt with under a standard dispute resolution policy. There are several different dispute resolution policies that are dependent on the different domain extensions such as .com or While there are different policies in place, the basic premise is that the owner of a brand can take action and make a complaint and, if successful, can have the domain name transferred to them.


    If you do experience some form of copyright or trademark infringement that is having a negative impact on your business you can stop the perpetrator from gaining money from the activity by blocking the payment methods on their website. This is where you ask the payment processor (such as PayPal or Visa) to stop processing payments if websites are selling counterfeit versions of your product or services. While the infringer could move to a different processor, you are making the process of gaining money from selling your goods more difficult.

    To put a payment method block in place you can either contact the specific payment processor directly or use the International AntiCounterfeiting Coalition's (IACC) Rogueblock reporting tool which covers several different processors.


    If you are considering e-commerce, or have a platform already in place, you need to be confident that you are able to protect your brand online from copyright or trademark infringement. Even businesses who do not operate using an e-commerce platform should consider how copyright infringement online can damage your brand and relationships with potential customers. A business with a website used only for marketing purposes can still be a victim of copyright or trademark infringement.

    Our Insights and Resources are recommended for businesses considering e-commerce or concerned about protecting their copyright or trademarks online. We will update you regularly with information from our legal experts on intellectual property law, as well as other sectors and services you may be interested in.


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