The use of figurative signs and words that evoke a geographical area which is associated with a protected designation of origin may constitute an unlawful evocation of the latter. This was the CJEU’s conclusion in its judgment of 2 May 2019 concerning a legal dispute about the protected designation of origin for Manchego cheese (C-614/17).
The Plaintiff is the Foundation responsible for managing the Protected Designation of Origin Queso Manchego (Foundation), whose purpose is primarily to manage and protect this designation of origin. The Defendant is Industrial Quesera Cuquerella SL (IQC), which, for marketing purposes, uses labels on three of its cheese products that show an illustration of a rider resembling the typical depictions of Don Quixote de la Mancha, a bony horse and landscapes with windmills and sheep, as well as the words “Quesos Rocinante”. This is a reference to the novel “Don Quixote de la Mancha” by Miguel de Cervantes, with “Rocinante” being the name of the horse ridden by Don Quixote.
The Foundation therefore brought an action seeking a declaration that the labels used to market the three cheeses not covered by the protected declaration of origin “queso manchego” and the use of the aforementioned words give rise to an infringement of the protected designation of Manchego cheese. In the Foundation’s opinion, the illustrations and words constituted an unlawful evocation within the meaning of Regulation (EC) No 510/2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs.
The Spanish courts of first and second instance took the view that the labels in question evoked the region of La Mancha, but not necessarily the cheese covered by the protected designation of origin. The Supreme Court of Spain, which heard the case, ultimately referred the matter to the CJEU for clarification of the legal questions raised. Continue Reading
The United States Patent and Trademark Office (“USPTO”) has recently reiterated its commitment to stemming the tide of inaccurate and fraudulent trademark applications originating primarily from China. On May 9th, the Director of the USPTO, Andrei Iancu, testified before the U.S. House Subcommittee on Courts, Intellectual Property, and the Internet, and fraudulent foreign trademark applications took center stage. Specifically, Director Iancu acknowledged that the number of fraudulent applications is “an increasing problem” noting that the USPTO has done “a number of things and can do more” to stem the tide of fraudulent applications.
What steps is the USPTO taking to identify and prevent fraudulent applications?
Director Iancu in his testimony and statement to the Subcommittee identified the following:
- Piloting software capable of detecting altered photographs submitted as specimens of use;
- Increasing the number of post-registration maintenance filing audits; and
- Providing training to trademark examiners to identify and more closely scrutinize suspicious specimens.
Additionally, Director Iancu’s statement highlighted the importance of the proposed rule published in February requiring U.S. counsel to represent foreign-domiciled trademark applicants, noting that “the rule would enable the USPTO to more effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory [trademark] requirements.”
While the USPTO has not yet provided details regarding the steps being taken to detect and prevent fraudulent applications, we are monitoring the USPTO’s efforts and will provide more details as they become available.
Data forms the cornerstone of the current economy. Last year, the GDPR and the EU Trade Secrets Directive created the legal framework for the protection of the most important data in a company: personal data and trade secrets.
On 23 May 2019, Hogan Lovells’ Amsterdam office will host this seminar in Dutch entitled ‘Bescherm je data!’ (‘Protect Your Data!’). Joke Bodewits and Ruud van der Velden will talk about the legislation and the opportunities it provides to companies. The focus will be on the “lessons learned” with respect to privacy, cybersecurity and trade secrets. Among the topics to be discussed is the overlap between the protection regimes and the importance to consider these in combination in order to fully utilize the possibilities for data protection.
This seminar is of interest to in-house counsels, in-house patent attorneys, privacy officers, CISO’s and IT managers.
For registration or further information, please contact Sandra Buitendam
We are delighted to announce that in the Legalcommunity IP&TMT Awards in Milan last night, we were awarded Best Law Firm of the Year, for the second time.
The Legalcommunity awards recognize excellence in the legal market in the field of intellectual property protection, telecommunications and media, and our widely regarded as one of the most important Italian award in the sector.
Please join our Hogan Lovells IP team this year at INTA Annual Meeting in Boston for an interactive and engaging breakfast seminar on the evolving IP landscape in China. As China continues to top the list of largest trademark filing countries, brand owners are facing increasing challenges in gaining and maintaining a foothold in a heavily crowded trademark pool. Trademark hijacking remains prevalent, and trademark applications regularly clash. Use of registered trademarks is also becoming more scrutinized, as some courts start to require use to enforce monetary damages and infringement decisions… it can take more than mere registration for a likelihood of confusion to arise.
During this seminar, our INTA Greater China team will take you through the following key issues, best practices, developments and more:
- Hit the road Jack: Developing a practical and multi-layered strategy to curb trademark hijacking
- Coexistence or no existence: Benefits and limitations of coexistence agreements in trademark registration
- Use it or lose it: What constitutes trademark use and how to maintain trademark use to support enforcement actions
We look forward to seeing you in Boston! Please contact Carrie Ballew for more information.
Date: Sunday, 19 May 2019
Venue: Westin Copley Place, Empire Room, Seventh Floor, 10 Huntington Avenue, Boston, MA 02116
Time: 8:30 a.m. – Registration and breakfast / 9:00 a.m. – 10:30 a.m. – Program
Meet our Greater China IP team at INTA!
Higher Regional Court Frankfurt am Main “Exzenterzähne II” (“Eccentric Teeth II”)
The Higher Regional Court Frankfurt am Main ruled that the unique selling point (USP) or “individual character” of a product that serves as an indication of origin may lose that function if the manufacturer of the original product has previously allowed a competitor to adopt that feature into one of its own products. However, the function as indication of origin will only be lost or diminished if the competing product that adopts that special feature is present on the market on a large scale.
The applicant, a company based in Austria, manufactures and sells plug-in technology products. These products are used to attach plastic pipes and cables for electrical installations. The unique feature of the applicant’s plug-in technology is that the products can be attached in a drilled hole without further aid. This is possible due to uniquely shaped expansion elements – called “eccentric teeth”. The product was protected by a patent until 2004.
Through an agreement with a competitor the applicant had allowed that competitor to use parts of the applicant’s plug-in technology in its own product. This competitor then implemented that technology in its new product which it started selling in Germany.
The defendant, formerly the applicant’s sales partner in Germany, began manufacturing its own products using the same plug-in technology in September 2009 and started to sell the product in 2010.
The applicant requested the immediate termination of production and distribution of the defendant’s products that allegedly contain its own proprietary technology as previously described.
Decision Continue Reading
On 23 April 2019, both China’s Trademark Law (“TML“) and its Anti-Unfair Competition Law (“AUCL“) were amended. The amendments to the TML are aimed at curbing bad faith trademarks and increasing damages for infringement, while the changes to the AUCL are aimed at improving the protection for trade secrets. The changes to the TML will enter into force on 1 November 2019, while the changes to the AUCL are effective immediately, as from 23 April 2019.
These amendments will have a profound impact on the Chinese trademark and trade secret practice. In particular, the provisions regarding the rejection of bad faith trademarks at the examination stage and regarding the reversal of the burden proof in trade secret cases are hailed by IP practitioners as some of the most significant legal breakthroughs in Chinese IP law in recent years.
To read the full article, please click here.
On April 16 we held the latest Innovation Lounge at our Washington D.C. office. Law students, associates, counsel, and government employees alike listened to a select panel of tech titans from Koch, MOBORK, Rosetta Stone, and GE address the latest issues in the innovative tech and regulatory space. Senior Associate Andrea DiSandro chaired the event with pertinent questions which fostered a lively debate on the following issues:
- Data privacy in an increasingly digitized world was addressed by Ryan Brown, Assistant General Counsel & Director, Legal at Rosetta Stone.
- Drones and the ways in which 3D printing is causing a shift in manufacturing were discussed with Michael Fitzpatrick, Head of Regulatory Advocacy at General Electric.
- Handling data for the benefit of everyone was addressed by Marty Kwedar, Senior Counsel of Koch Companies.
- Key issues relevant to autonomous vehicles and artificial intelligence were discussed with Miguel Payán, Founder of MOBORK Advisors, and former Global Head of Mobility for Ford.
Topics included the extent to which machines are supplanting human judgement, and how regulators and technology firms can work together in a way that doesn’t stifle innovation. Our panelists’ experience brought great value to the event, from amusing personal anecdotes to in-depth analysis of disruptive trends and market perceptions.
Hogan Lovells Innovation Lounge is an associate-lead event series in which associates invite leading innovators in tech to speak on a panel in front of an audience of lawyers, technologists, and other professionals. The panel is followed by a networking session with drinks and hors d’ouvres.
If you weren’t able to join us at our April Innovation Lounge, please mark your calendar for the next one in July 2019. We hope to see you there! For more details, please contact Tara Hanley.
We are delighted to announce our three Influential Women in IP in World IP Review’s new project focusing on gender diversity in the IP legal sector. See the newly-launched WIPR Influential Women in IP eMag and diversity platform for more details:
This is a great reflection of the diversity and inclusion values at the core of who we are and how we do business. We are a high-performing global team with people from different backgrounds, perspectives and life experiences. We are at our best when we can be ourselves – working together and delivering for our clients.
Learn more about diversity and inclusion at Hogan Lovells here
On May 1, 2019, the National institute of Standards and Technology (NIST) announced a Request for Information (RFI) in the Federal Register regarding ongoing efforts to develop technical standards for artificial intelligence (AI) technologies and the identification of priority areas for federal involvement in AI standards-related activities. Responses to the RFI are due by May 31, 2019.
The RFI comes in response to President Trump’s Executive Order to Maintain American Leadership in Artificial Intelligence, which among other actions directs NIST to develop a plan to guide the federal government’s engagement with initiatives to develop technical standards for AI technology. This RFI, along with others released by this Administration, reflect a desire to promote AI technologies that enhance America’s interests and strengthen the public’s trust and confidence in AI.
According to the RFI, NIST is seeking input from a variety of stakeholders, including industry, academia, and civil society, with the hopes of understanding more fully the following topics:
- The current status and plans regarding the availability, use, and development of AI technical standards and tools in support of reliable, robust, and trustworthy systems that use AI technologies;
- Needs and challenges regarding the existence, availability, use, and development of AI standards and tools; and
- The current and potential future role of Federal agencies regarding the existence, availability, use, and development of AI technical standards and tools to meet the nation’s needs.
To achieve a better understanding of the points above, NIST identifies 18 specific topics that it considers to be the “major areas” about which it needs more information. NIST categories these topics into three groupings:
- AI Technical Standards and Related Tools Development: Status and Plan
- Defining and Achieving U.S. AI Technical Standards Leadership
- Prioritizing Federal Government Engagement in AI Standardization
NIST will also be gathering information from the public through additional means, including public workshops, and it plans to release the draft Plan for public comment. It has also published a page dedicated to the AI Standards effort.
Visit the Hogan Lovells Artificial Intelligence Topic Center for notable developments and thought leadership on the promises and perils of artificial intelligence.