Goodbye OHIM, Hello EUIPO− −Changes to Trademark Law in Europe

By Steven Abreu. A member of our Trademark Practice Group

On March 23, 2016, the European Union’s trademark authority, known as the Office of Harmonization in the Internal Market (OHIM), changed its name to the European Union Intellectual Property Office (EUIPO). This change was just one of several made in an effort to modernize the trademark protection scheme in the EU. While we practice directly in front of the US Trademark Office, many of our clients also choose to protect their brands overseas by participating in Europe’s trademark registration process. As a result, we have been actively discussing the changes with our European associates in order to make sure that our filing and opposition strategy remains current.

Here are seven things to know about the new regulations now in effect:

• In addition to the change of the name of the office, the name of the resulting registration, previously known as a Community Trademark (CTM), has changed to a European Union Trademark (EUTM).
• Because of the name changes to the office and the registration, the European authorities have been warning their customers to expect a spike in the activity of scammers and unofficial publication services that may seek to take advantage of the confusion that the name change may create.
• Previously an application could be filed in the European Union in one, two or three international trademark classes for the same filing fee, namely, 1,050 euros. The fact that three classes could be included in the application for the same price as one class led many applicants to file in three classes of goods and services even if the mark was being used in only one or two classes. This was especially true of European-based applicants. Now  a base application in one class costs 900 euros and each additional class 150 euros. We believe the price changes will lead to fewer applications in three classes when only one class is truly of interest.
• Trademark registrations in Europe are vulnerable to cancellation on the basis of non-use after a five-year grace period expires. Under the prior regulations the five-year clock began at the date of the registration. Under the new regulations it starts ticking from the earliest priority date in the application (either the filing date or the date of any priority claim).
• Requirements for the description of goods and services in Europe are far more lax than the USPTO’s requirement of specificity and definiteness. In Europe some applicants employed a filing strategy that used class subheadings as a shorthand to designate any and all goods or services falling under that subheading. By using all the subheadings, applicants believed that they could cover the entire class. However, a recent European decision in the IP Translator case put a stop to that practice and held that subheadings covered only the goods which were logically described in the heading itself. The new regulations provide applicants who used the subheading strategy a six-month window in which to name the specific goods they wish to protect under each subheading. Since we have routinely advised against this strategy, this change should not affect our clients’ rights. (MORE)

How Should the PTO Interpret Patent Claims? The Federal Circuit Weighs In, Yet Again

By Bruce Sunstein. A member of our Patent Practice Group

 

The claims of a patent determine its power. Unlicensed activities that fall within the scope of a patent’s claims can be subject to royalties or an injunction, but when claims cover subject matter deemed to be within the prior art, the claims can be invalidated.

How a claim is interpreted can often make the difference between whether it is so narrow that it is not infringed, or broad enough to cover a third party’s activity (so as to give the patent owner damages or an injunction or both) or so broad that it covers prior art (so as to be invalid).

For the patent owner, the claims of an ideal patent are a little like the porridge of Goldilocks and the Three Bears. They should be in the middle between too much and too little—but in this case, we are talking about breadth of claims instead of the temperature of porridge. Ideally for the patent owner, the claims are broad enough to cover any product or method that may be used by a competitor, but narrow enough to avoid covering prior art that would invalidate the claims.

How a patent claim is interpreted, of course, depends on the words used in the claim. But the interpretation of a claim also depends on where the claim is being interpreted. If a claim is interpreted by a court, one set of rules comes into play, but if by the Patent and Trademark Office (the “PTO”), another set of rules comes into play.

The dissimilar impact wrought by these two sets of rules was highlighted in a February 22, 2016 decision by the Federal Circuit Court of Appeals, PPC Broadband, Inc. v. Corning Optical Communications RF, LLC . The case involved appeals from a number of PTO proceedings, called IPRs (Inter Partes Reviews), in which claims of two patents owned by PPC Broadband were attacked by Corning Optical and invalidated on the basis that they covered subject matter in the prior art. (MORE)