#IPStats – Statistics of international filings, especially of trademarks

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In contrast to patent filings and trademark values, European countries, including France and the United Kingdom, maintain commendable place in the rankings of the number of filings of trademarks.

The statisting of filings of international trademark applications from the World Intellectual Property Office (WIPO), ranks France as 4th (with 4,261 international filings, and a raise of 3.3%) and the United Kingdom as 5th (with 3,292 filings , and a raise of 9.3%).

At the top of the ranking are the USA (with 7,884 filings, and a raise of 2%) followed by Germany (with 7,316 filings, and a decrease of 3%), and China (with 5,230 filings, and a raise of 36.3%). %).

Japan and Korea, ranked ahead of France and the United Kingdom in the number of patent filings (PCTs), are ranked behind these countries in trademark filings, which shows that business development is not only about developing patent portfolios, but also marketing campaigns associated with the development of the intellectual property portfolio in a broad sense, including trademarks and designs.

The first applicant is L’OREAL (FR) with 198 filings, followed by the following companies:

– RICHTER GEDEON NYRT (HU – 117 filings),
– ADP GAUSELMANN GMBH (DE – 104 filings),
– NOVARTIS AG (CH – 96 filings),
– ABERCROMBIE & FITCH EUROPE SA (CH – 82 filings),
– APPLE INC. (US – 74 filings),
– BRILLUX GMBH & CO. KG (DE – 73 filings),
– KRKA, TOVARNA ZDRAVIL, D.D., NOVO MESTO (SI – 73 filings),
– BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT (DE – 70 filings),
– AUCMA COMPANY LIMITED (CN – 62 filings).

In conclusion, European multinationals seem to be the ones that best protect their intellectual property in all fields internationally.

SOPERYAH IP

#PatLaw – The non-patentability of subject matters considered contrary to public order or morality.

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The question of the non-patentability of inventions said to be contrary to public order or morality, differs according to local legislation and “good” morals.

A decision by the Indian Office rejected a patent application for a vibratory sex stimulator (WE VIBE brand of STANDARD INNOVATION Corp. (CA)). The decision is dated April 17, 2017, and can be reviewed at the link below.
http://ipindiaservices.gov.in/decision/4668-DELNP-2007-35516/4668-delnp-2007%20refusal.pdf
The first objection comes directly into the heart of the matter and has a wording that surprises:
The examiner considered in essence that the exploitation of the claimed object is contrary to public order and morality, and falls under the provisions of Section 3 (b) of the Indian Patent Law, and is not acceptable.
The examiner further argues that importing and selling sex toys is considered “obscene” and therefore illegal in India.
Most surprisingly, these arguments are supported by Indian law. The examiner cites section 292 of the Indian Penal Code, and refers in addition to section 377. If the first concerns obscene objects whose definition interpreted by the examiner as including sex toys, seems debatable, the second refers to a prohibition of sexual intercourse that is unnatural biologically.

These objections seem insurmountable. The Applicant has obviously not made any counter-arguments.

Objections of this kind would surely have occurred also in countries where legislation is based on religious texts.

For the protection of this type of invention in “sensitive” countries, particular attention must be paid to provide, in the application, ways to overcome this type of objection where possible.

Unlike these countries, the protection of this type of invention at the European Patent Office does not raise this type of problem. Provisions of contravention of public order and morality exist (Article 53a EPC, GII4.1) but the corresponding objections are not conventionally raised for sextoys-type inventions. These objections are almost never raised in other cases.

The Guidelines for the EPO Examination provide in essence that if the invention in question would appear to the public [in all the EPO Contracting States] so repugnant that it would be inconceivable to patent it. The rejected applicant in India (STANDARD INNOVATION Corp.) has several European patents granted.

The EPO Directives mention, for example, a printer-type case with a good resolution enabling to make counterfeit banknotes. In this case, an objection may be raised, and will be surmountable by removing references to making counterfeit banknotes.

SOPERYAH IP

#IPstats – Stats of the WIPO PCT review 2018

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The World Intellectual Property Office (WIPO) has published its annual PCT review in August 2018.

For the record, the PCT (Patent Cooperation Treaty) is the international convention that regulates the filing of international patent applications (so-called PCT filings).

You can find the review on the following link:
http://www.wipo.int/edocs/pubdocs/en/wipo_pub_901_2018.pdf

The PCT statistics do not go in the same direction as the rankings of brand values. The ranking tops are Asian then US.

The overall figures for 2018 have not recorded a big improvement.

The number of national phases fell to 615,400 (-1.4%).

The number of new PCT filings reached 243,500 (+ 4.5%).

As for the number of applicants, it reached 52,355 (+ 3%).

The top 10 places are occupied by well known companies:
– 3 Chinese companies (HUAWEI-1ère, ZTE-2e, BOE-7e):
– 2 US companies (INTEL-3e, QUALCOMM -5e);
– 2 Japanese companies (MITSUBISHI-4e, SONY-9e);
– 2 Korean companies (LG-6e, SAMSUNG -9e); and
– 1 Swedish company (ERICSSON-10e).

Classification (number of applications in 2017):
1 HUAWEI TECHNOLOGIES CO., LTD. CN – 4,024;
2 ZTE CORPORATION CN – 2,965;
3 INTEL CORPORATION USA – 2,637;
4 MITSUBISHI ELECTRIC CORPORATION JP – 2,521;
5 QUALCOMM INCORPORATED USA – 2,163;
6 LG ELECTRONICS INC. KR – 1,945;
7 BOE TECHNOLOGY GROUP CO., LTD. CN – 1,818;
8 SAMSUNG ELECTRONICS CO., LTD. KR – 1,757;
9 SONY CORPORATION JP – 1,735;
10 TELEFONAKTIEBOLAGET LM ERICSSON (PUBL) SE – 1 564.

Remarkably, among the GAFAs, there is no record of APPLE and FACEBOOK, which shows that the patent strategy, while important, is not enough in itself to the development of the company. A brand strategy, a communication and marketing strategy are other important tools to implement to increase turnover and market share.

The ranking nevertheless shows an indicator of the most innovative companies.

The first European company is BOSCH (14th), the first French (the only one of the top 50) is MICHELIN (44th). No UK company is in the top 50.

Outstanding highlights: the number of PCT filings broke records in 2017 with said 4.5% increase. As a reminder, apart from a 4.8% drop in 2009, the number of PCT filings is growing every year by around 2 to 5% since 2003, with peaks exceeding 11% in 2005 and 2011.

The number of States Parties to the PCT has increased to 152, with after Djibouti, Cambodia and Kuwait in 2016, the ratification of Jordan in 2017. PCT applications have been filed in 126 countries.

Asia takes the largest share of PCT filings (49.1% in 2017 compared to 27.6% in 2007) with China as a locomotive (50,674 filings).

CEA (FR) stands out as the leading applicant in the government / PRO sector.

Congratulations to Freddy GUEMENI and IMPERIAL INNOVATIONS (UK), who are among the top 50 university applicants with 53 filings (3rd European after OXFORD UNIV INNOVATIONS (75 filings), DANMARKS TEKNISKE UNIVERSITET (54 filings).

As far as the technical fields are concerned, the largest numbers of filings concerns:
1 °) computer technology (19,122 filings, 8.6% of the filings);
2 °) digital communication (18,122 filings, 8.2% of the filings);
3 °) appliances, energy and electrical machinery (15,223 filings, 6.8% of the filings);
4 °) medical technologies (15,024 filings, 6.7% of the filings);
5 °) instrumentation measures (10,082 filings, 4.5% of the filings);
6 °) transport (9,753 filings, 4.4% of the filings);
7 °) pharmacy (8,750 filings, 3.9% of the filings);
8 °) audiovisual technologies (7,520 filings, 3.9% of the filings);
9 °) optics (10,082 filings, 3.2% of the filings); and
10 °) biotechnologies (6,545 filings, 2.9% of the filings).

The report shows that progress continues to move forward, even though Europe is lagging behind the US and Asia.

SOPERYAH IP

#IPLaw #TMlaw – UE Decision against the 3D Mark of KitKat Bars

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Since 2007, a litigation occurs between NESTLE (CH) and MONDELEZ (US) (formerly CADBURRY), in particular in Europe. This litigation and the underlying legal reasoning illustrate some elements to be taken into account when a three-dimensional (3D) trademark filing is envisaged.

The subject-matter of the litigation concerns the 3D mark recorded by NESTLE on a chocolate product with 4 glued bars, with an ingot shape. The graphic representation of the mark includes a view in the black and white space of the 4 associated bars without logo.

The European Union Intellectual Property Office (EUIPO) has accepted the registration of the mark with effect from August 7, 2006, with number 002632529, in class 30, designating: “Sweets; bakery products, pastries, cookies; cakes, waffles”.

On 23 March 2007, CADBURRY (later MONDELEZ) initiated a procedure at EUIPO to cancel the 3D mark in question. Looking in the details of this case, we can see that MONDELEZ sells a similar chocolate bar claimed as being a Norwegian chocolate bar “Kvikk Lunsj” (for “Quick Lunch”) marketed since 1933 by the Norwegian company FREIA, bought in 1993 by KRAFT FOODS, which became MONDELEZ Intl. This gives a clear picture of the interest of MONDELEZ in this case.

As for Kit Kat products, they would also have been marketed since 1933.

On 11 January 2011, the EUIPO annulled the mark in first instance, which NESTLE appealed to later obtain a cancellation of the first instance decision and a rejection of the demand of MONDELEZ. In second instance, EUIPO essentially held that even if there is no “inherent distinctiveness”, NESTLE had shown that that mark had acquired such a character in relation to those goods by the use which has been done.

The Court of the European Union seised by MONDELEZ considered in substance that:

1 °) the distinctive character by the use should have been considered not only in the category (30) but in each subcategory (including in particular bakery products) and concludes that the proof is not established for the products other than sweets and biscuits.

2) EUIPO should have taken into account the distinctiveness achieved by use in EU countries. The investigations showed that the distinctive character was acquired in 10 out of 28 countries (Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland,
Sweden and United Kingdom), but EUIPO did not analyze the evidence for the other Member States, namely Belgium, Ireland, Greece and Portugal.

The EU Court refers the case to EUIPO to re-examine the EU-wide distinctiveness for sweets and biscuits.

This shows a disadvantage of unitary IP titles, because individual marks would have been more likely to succeed in each relevant country.

An English decision of January 2016, also went against NESTLE, judging that the shape of chocolate bars can not be filed as a trademark.

As a conclusion, the acquired distinctiveness
– in the relevant category(ies) and subcategories, and
– in the relevant territory
are  thus important features to review when intending to claim a protection of a 3D shape as a trademark.

SOPERYAH IP