Thursday 30 August 2018

.eu domain names after UK withdrawal

Some 317,000 domain names in the .eu top level domain (TLD) are registered to UK holders, who look likely to be inconvenienced (at least) by the UK's withdrawal from the EU. The regulatory framework for the .eu TLD, principally Regulation (EC) No 733/2002, does not permit .eu domain names to be registered by non-EU registrants, as Article 4(2)(b) (as interpreted by the Court of Justice in Case C-276/11 Pie Optiek) makes clear. The Commission's Notice to Stakeholders dated 27 March 2018 makes clear that "[a]s of the withdrawal date, undertakings and organisations that are established in the United Kingdom but not in the EU and natural persons who reside in the United Kingdom will no longer be eligible to register .eu domain names or, if they are .eu registrants, to renew .eu domain names registered before the withdrawal date." So that seems like three different ways to say the same thing.

UK registrants will not be eligible to have .eu domain name registrations after E-Day. They will neither be able to register nor renew them. It is not clear whether they will be able to hang on to them until they become due for renewal: EurID can revoke registrations on its own initiative but there are doubts about whether it has sufficient capacity to do much about so many registrations.

There are further ramifications for the .eu TLD arising from the UK's withdrawal. UK rights will no longer count against bad faith registrations - so UK registered trade marks will not give protection against others registering .eu domain names. So long as businesses maintain EU trade marks as well as UK ones, this will not be a problem, but it could be a persuasive reason for registering more trade marks.

Finally, agreements with registrars handling .eu domain registrations will no longer be able to designate UK law, courts, or dispute bodies in their dispute resolution procedures. UK-based registrars will be excluded from handling .eu TLD registrations anyway, but for other registrars who are still in business after E-day this will mean that they might have to change their contract terms.

Exhaustion of trade mark rights after B****t

If and when the UK crashes out of the EU (and whatever agreement is made to soften the blow, it will be a crash, certainly as far as trade marks are concerned) the Trade Marks Act 1992 will not be unchanged. The European Union (Withdrawal) Act 2018 sees to it that the government will be able to change it to take account of the new circumstances - using what have come to be referred to as Henry VIII powers, after that paragon of democracy and due process. One aspect of huge volumes of legislation that will need attention is that the statute book is peppered with references to the European Union, which when they were written included the UK. So, as in the case of public lending right about which I wrote the other day, it might be necessary to change it to "UK and EU". More often, I suppose, it will be changed from "EU" to "UK" - after all, that's what the Will of the People asked for (American readers please note, that statement is heavy with irony).

Section 12 says that the trade mark owner's rights are exhausted when the goods have been placed on the market in the European Economic Area by the trade mark owner or with their consent. Within a single market that's an important exception to the general idea of trade mark protection (or any other form of IP, come to that). So from E-day, or perhaps from the end of the transition period, section 12 should refer to placing the goods on the market in the UK.

Or must it? It's not many years ago - OK, it is quite a few years ago, but it's within living memory - that the UK government thought it would be a nice idea to replace the EU-exhaustion rule with an International-exhaustion one - so if the trade mark owner had placed the goods on the market anywhere in the world they would be unable to resist parallel imports into the EU. The government's idea seemed to be that this would ensure cheap designer clothes for the masses, who would then re-elect it. Our EU partners were almost unanimous in declining to support the UK government in this - as I recall, only Sweden agreed. But after withdrawal we won't have to worry what the EU27 (or the EEA members) think, and given that the government will be casting around for some benefit to highlight to the electorate I have a horrible feeling that this will be back on the agenda.

Trade marks after B****t

If and when the UK leaves the EU, which still cannot be considered a certainty, trade mark practice will change dramatically. The law will remain mostly unchanged, as having implemented the trade marks directive the Trade Marks Act 1992 stands on its own merits, but this conceals some radical changes to the way UK trade mark owners will have to protect themselves. While the directive will survive in the guise of the Act, the same is not true of the EU trade marks regulation: what will happen there will depend on the terms on which the UK leaves.

The draft withdrawal agreement covers much of the ground, of course, but it's just that: a draft. Every day the chances of a "no deal" departure seem to grow, so while it's obviously important to consider the draft agreement we've got to remember that the UK could still be crashing out with no agreement on these important points.

From "exit day", 29 March 2019 (the name comes from the European Union (Withdrawal) Act 2018, a surprisingly concise piece of legislation considering it rewrites most of the statute book), EU trade marks (and Registered Community Designs, a topic for another day) will cease to give protection here. That's pretty obvious. According to the draft agreement, a magical process will be put in place to carve out from existing EU trade marks the rights that apply in the UK, creating equivalent registered and enforceable rights or "corresponding" UK trade marks and the government (in the draft withdrawal agreement) promises that this will be without charge. Whether the temptation to raise some revenue from the exercise proves too much, only time will tell.

Non-UK owners of corresponding trade marks will, presumably, need a correspondence address in the UK: and by the same token UK owners of EU trade marks will need correspondence addresses in the EU27. Of course before red tape can be abolished more has to be created, and additional costs must be imposed on business before they can enjoy savings! And UK practitioners will no longer be able to represent clients before the EUIPO, so clients will need new representatives and will, of course, incur additional expenses. The UK professions will lose important export business, too, and being deprived of the right to pursue part of my practice is enough to make me unhappy, and justifiably I think.

EU trade mark applications that remain pending on E-Day will not be dealt with automatically. Corresponding trade marks will not be available - UK trade marks will have to be obtained separately. Applicants will be given a nine-month priority period during which they will be able to file in the UK and claim priority from the earlier EU trade mark application. One thing that might help trade mark owners here is that if their EU application faces a potential opposition but is OK in the UK, they can wait and take advantage of the priority period to file a UK application.

If an EU trade mark is subject to invalidation or revocation proceedings on exit day, and is later cancelled, the corresponding trade mark rights in the UK will be lost too unless the grounds for cancellation do not apply in the UK (which might be because there is a conflicting trade mark in Malta or the trade mark is descriptive in Estonian, or something like that which would count against an EU trade mark but not a UK one). New secondary legislation will be needed to achieve this. Where the EU trade mark from which the corresponding trade mark is derived enjoys priority from an earlier trade mark, or has the seniority of an earlier UK trade mark (this refers to the process by which trade mark owners were allowed effectively to backdate their EU trade mark to the date of national trade marks, so they could then allow them to lapse - which would never have been a great idea, in fact) the corresponding trade mark will benefit from the priority or seniority.

What if the EU trade mark has not been used in the UK in the past five years? Then it will be immune to challenge on those grounds until the end of the transition period (31 December 2020). Similarly, during the transition period owners of EU trade marks will be able to rely on a reputation in the EU for the purposes of UK infringement proceedings, but after the end of the transition period their reputation will have to be in the UK.

I have been advising clients that it would be a good idea to go for UK national trade marks even if they have EU ones for some time already. The application of the rules about use and reputations if the trade mark has not been used widely in the EU make relying on UK trade marks rather uncertain already, and withdrawal is not going to make it any easier.

There are questions still to be dealt with concerning the treatment in the UK of internationals designating the EU, especially if they have not been granted protection by E-Day. These are for the UK to sort out - nothing to do with Brussels.

One aspect of the Trade Marks Act which will change is section 12, which deals with exhaustion of trade mark rights. That's a topic for another posting, I think.

Thursday 23 August 2018

Brand extension: A step too far?

The news (here in The Guardian) that Tesla is facing competition is, at first glance, probably welcome. Anything that takes Elon Musk down a peg or two can't be a bad thing. But the competition comes from an unexpected quarter: the putative manufacturer is Kalashnikov, a brand whose values do not seem at first sight to be particularly congruent with the electric vehicle field. Can the fearsome reputation that the Kalashnikov brand has undoubtedly accumulated translate into this new field?

Wednesday 22 August 2018

India: Use of a trade name similar to a trade mark does not necessarily constitute infringement

In a recent Trademark infringement matter, the Delhi High Court has held that in order to qualify as infringement under Section 29(5) of the Trademarks Act, 1999 (“Act”) there has to be exact use of the registered mark and mere use of a prefix/suffix would not amount to infringement. The Court was hearing a trademark infringement matter wherein the defendant had used a word “MERCYKIND” as part of its trade name which was allegedly similar to that of Plaintiff’s registered trademark “Mankind”.


Mankind Pharma Ltd., one of India’s largest Pharmaceutical Company (the “plaintiff”) instituted a Trademark Infringement suit seeking an injunction against Chandra Mani Tiwari and Mercykind Pharmaceuticals Pvt. Ltd[i]., for infringing its registered trademark “MANKIND” and a series of other marks with the suffix/prefix “KIND” and for passing off their business/goods by adopting and using the trade name “MERCYKIND PHARMACEUTICAL PRIVATE LIMITED”.
While passing the order, the Court mentioned that the registered trademark “MANKIND” would be infringed under Section 29(5), if the defendants were found to be using “MANKIND” as part of their trade name. Here, the defendants are using “MERCYKIND” as part of their trade/corporate name which is not a registered trademark of the plaintiff. Thus, there would have been infringement under Section 29(5), if the defendants, as part of their trade name, had used “MANKIND”. Merely because the name of the defendant’s Company is deceptively similar to the plaintiff’s trademark “MANKIND” or any other registered trademarks of the plaintiff with “KIND” as prefix or suffix, it does not amount to infringement under Section 29(5).
This case makes an interesting read for the following reasons:

He who comes into equity must come with clean hands:

In this case, the Court took a strong objection to the fact that the plaintiff had concealed certain information from the Court which the Court considered to be relevant and had weightage in the matter.

The Plaintiff, not so long ago while responding to certain Trademark Examination Report for registration of two of their trademarks had taken a stand that “ATORVAKIND” (plaintiff’s mark) is different from “ATORKIND”; and “STARKIND” (plaintiff’s mark) is different from other cited marks such as “KINDERPLEX”, “KINDERBON”, “KINDERCAL”, “KINDIGEST”, “STAR-VIT”, “STAR”, “STARNET” and “STARCET”. The Court stated that such conduct of the plaintiff disentitles them to the equitable relief. Though the plaintiff contended that the statement made by the advocates for the plaintiff in the communications to the Trademark Registry is a submission of law made in the context and the plaintiff cannot be bound, however the Court refuted the plea and stated that the said contention would not make the fact “irrelevant”.

“Use” of a trade mark:
Since the Plaintiff had alleged infringement under sub-sections (1) to (4) of Section 29, the Court took cognizance of the fact and considered to test whether the defendants were really using “MERCYKIND” as a trade mark.  
Section 29(6) of the Act defines the “use” of the mark: a person is considered to be using a registered mark, if, in particular, he—
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.”

In this case the primary objection of the plaintiff was the word “MERCYKIND” which was being used by the defendants. However, upon observation, the Court found that the word “MERCYKIND” was used only in the name of the defendant Company. The Plaintiff had also contended that the defendants are carrying on the business in the same goods as the plaintiff, under the marks “MERCYMOX”, “MERCYCOUGH”, “MERCYCOPE”, etc. The Court observed that the issue was about the usage of the word “MERCYKIND”, which in fact was not the trade mark of the defendants and was also not used as a trade mark by the defendants. Once, it was established that the defendant’s trademarks were words with the mere prefix “MERCY”, the question of “MERCYKIND” also being the trade mark of the defendants with respect to the same goods of the defendants would not arise. Therefore, it was observed by the Court that “MERCYKIND” was not the trade mark of the defendants, therefore, Section 29(1) to (4) do not apply in this case.

Infringement of a trademark under Section 29(5):
The Court further determined the alleged infringement test under Section 29(5) of the Act, which is: “A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.”
What has been constituted as infringement under Section 29(5) is use of the registered trade mark as trade name or part of the trade name. Thus, the Court held that there would have been infringement under Section 29(5), if the defendants had used the plaintiff’s registered Trademark “MANKIND” as part of their trade name. Merely because “MERCYKIND” is the name of defendant Company, which may be deceptively similar to “MANKIND” or any other registered trade mark of plaintiff with “KIND” as prefix or suffix, would not amount to infringement under Section 29(5). Therefore, it was held that the use of a trade name similar or deceptively similar to the registered trade mark would not constitute infringement under Section 29(5). Thus, prima facie, no case of infringement within the meaning of Section 29 is made out.

Tuesday 21 August 2018

No B****t dividend for authors

In the Public Lending Right Scheme 1982 (Amendment) (EU Exit) Regulations 2018 which were published on 13 August (they have not yet been laid before Parliament), the Government has paved the way for public lending right to carry on unchanged after the UK leaves the EU. As PLR is not a creature of EU law, you might wonder why this is necessary: the answer is that the Regulations will ensure that UK-resident authors will still be eligible to register for PLR after the UK is no longer a member of the EEA. This requires an amendment of the definition of "eligible person", effected by these regulations - made under the Henry VIII powers given by the European Union (Withdrawal) Act 2018.

The amendment inserts the words "the United Kingdom or" before "EEA", meaning that the geographical extent of the scheme remains the same - authors resident in other EEA countries (or, from "exit day", authors in EEA countries) will be eligible. Since PLR is distributed out of a set fund, the amount available per loan depends on how many eligible authors there are. Leaving the EU might have meant a huge reduction in their numbers - but it won't, and my PLR statements will probably continue to tell me that I haven't earned enough to justify the writing of a cheque. Still, it's not the sort of windfall I'd have wanted.

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