Goods in transit
The Gallo-Rapkay amendments on goods in transit put forward in a report on the Community Trade Mark Regulation and Trade Mark Directive have been adopted by the Members of the European Parliament. Following the European Court of Justice’s decision in the Nokia/Philips case, European Customs could check for counterfeit goods in transit within the EU, but only had the power to stop the goods where there was a risk they could enter into the single market. This led to a loss in power to seize goods. If adopted by the Council, the effect of the amendments would be to overturn this decision and give customs the ability to confiscate imitation products regardless of their final alleged destination.
Three United Nations agencies, UNODC, UNWTO and UNESCO, have launched a joint campaign to fight trafficking of illegal goods and services. ‘Your Actions Count – Be a Responsible Traveller is the joint venture between the agencies which aims to educate travellers on the implications of purchasing illicit products, and raise awareness in the trading of people, animals and illegal drugs. In educating people, it is hoped this will encourage consumers to make ethical choices when faced with these offers which will lead to the demand for products decreasing along with the profits made through organised crime.
UAE – New draft anti commercial fraud law moves closer
The draft law contains a range of measures designed to fight both goods and services fraud and will set up for the first time a single body responsible for combatting counterfeiting across the UAE. Under the draft law it is an offence to import, sell, display, market, or possess counterfeit goods. However, the extent to which ‘lookalike’ goods that don’t use the brand owner’s registered trade mark will be covered by the anticounterfeiting provisions is unclear. We expect the draft law to come into effect before the end of this year.
Fast track examination of trade marks
The UK IPO is considering reintroducing a fast-track trade mark registration service. This was previously introduced in 2008, but stopped the following year due to a lack of interest in the service as the IPO already had a relatively fast turnaround time for applications. As there has since been a vast increase in trade mark applications, the examination period has increased. However, in 2013 a new IT processing system was introduced, reducing the time period for trade mark applications to be examined. The UK IPO has therefore been consulting on whether there is currently a requirement for a fast track service.
EU enforcement database
The Enforcement Database has been launched by the European Observatory on Infringements of Intellectual Property (an anti-counterfeiting and piracy unit of OHIM). The database allows rights holders to upload information about their products to a centralised database which would assist customs officers and the police in identifying counterfeit and pirated goods. Information could include photographs, company details, relevant contact details, identifying features and anything that can assist distinguishing legitimate products from copies. The information can be accessed across the EU (translated into the local language) and the rights owner can customise who can see what information. The database is free to use and the only requirement is to have a valid registered trade mark in the EU.
OHIM announcement regarding scope of protection of black and white trade marks
OHIM has announced a new common practice regarding trade marks registered in black and white. This considers whether a trade mark filed in black and white and/or greyscale is identical to the same trade mark in colour with respect to priority claims and relative grounds for refusal. In addition, OHIM addresses whether the use of a colour version of a trade mark filed in black and white (and vice-versa) is acceptable for the purposes of establishing genuine use. The basic approach of the common practice is that identity between a trade mark filed in black and white and/or greyscale and a sign in colour exists only when the signs are the same in all respects, or the differences are so insignificant that they may go unnoticed by the average consumer. The common practice is expected to be implemented in the next update of OHIM’s Guidelines. Whilst the common practice and Guidelines are not binding on Courts, where marks are used in a particular colour but registered in black and white, brand owners should consider whether colour versions of such marks should also befiled. We would be happy to assist with this review.