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Infringement of the Protected Geographical Indication COGNAC
The INPI recognizes an infringement of the Protected Geographical Indication COGNAC by a trademark claiming eaux de vie benefiting from the geographical indication “Cognac”.
The COGNAC appellation is protected as a Protected Geographical Indication (PGI) at the European level.
The use of the COGNAC appellation is therefore regulated so that only spirits produced within a delimited production area and respecting the particular conditions of production as to the method of production, ageing and alcoholic strength defined by the specifications attached to this PGI, can benefit from it.
On November 3, 2021, the company COGNAPEA filed an application for the French trademark Cognapea which, following an objection from the INPI, claimed “Eaux de vie benefiting from the geographical indication “Cognac” in class 33.
Following the publication of this trademark application, the Institut National de l’Origine et de la Qualité (INAO) and the Bureau National Professionnel du Cognac (BNIC) jointly filed an opposition to the registration of this trademark application on the basis of the infringement of the geographical indication COGNAC.
INPI recalled that the geographical indication COGNAC is protected at the European Union level and that any infringement must be examined exclusively in the light of Regulation (EU) 2019/787 of April 17, 2019, which provides in particular in Article 21 that geographical indications are protected against “any usurpation, imitation or evocation, even if the true origin of the goods or services is indicated (…)“.
INPI further clarified that, according to the aforementioned article of the Community Regulation, geographical indications may be used by any operator marketing a spirit drink that complies with the corresponding specifications, but that according to the same article, the “evocation” of these geographical indications for such products is not allowed.
The INPI recognized that this trademark application constituted an infringement by “evocation” of the COGNAC indication insofar as it consisted of the sequence COGNA- and claimed products identical to those benefiting from the geographical indication.
It also admitted that such an evocation, by only partially reproducing the geographical indication COGNAC, could lead to a weakening of its reputation by trivializing it.
Consequently, and even though the contested trademark application claimed exclusively “Eaux de vie benefiting from the geographical indication “Cognac”, the INPI pronounced the total rejection of the Cognapea trademark application (INPI Opposition Decision n°OP22-0433 of 26/08/2022).
National measures accompanying the implementation of the unitary patent
It is expected that the Agreement on a Unified Patent Court (UPCA) will enter into force in spring 2023. At the same time the European Union regulation 1257/2012 and 1260/2012 will enter into force relating to the European patent with unitary effect (Unitary Patent) and the translation arrangements.
The booklet “National measures accompanying the implementation of the Unitary Patent” is inspired by the online publication “National law relating to the EPC” and contains information regarding the most important national measures accompanying the implementation of the Unitary Patent. It is accessible on the website of the EPO.
The booklet contains information about:
• a safety net for validating a EP patent in a participating member state in case the request for the unitary patent protection is rejected – this concerns for example the payment of annual fees, filing of a translation or other formalities;
• the simultaneous protection of a Unitary Patent or a classic European patent and a respective national patent;
• territorial field of application of a unitary patent, namely the effect of the unitary patent in overseas territories and areas; and
• other various aspects.
The booklet is regularly updated in its HTML version. A pdf version will be published soon.
The information published by the EPO depends on the information provided by the member states and the information may be not accurate or incomplete. The booklet is intended to give a first overview and before taking any decision the information is to be confirmed by a specialized national patent attorney, patent agent, or attorney-at-law.
Systematic top-up search for earlier national rights by the EPO
The EPO will conduct additional searches to determine earlier national rights and further determine their prima facie relevance starting September 1, 2022.
The EPO already carries out a search for prior European patent applications, which are filed before, and published after, the filing date of a European patent application in question. Such earlier European patent applications are relevant for novelty in the sense of Art. 54(3) EPC.
As of September 1, 2022, the EPO will further conduct systematic searches to further identify prior national rights and assess their prima facie relevance free of charge.
An earlier national right is a national application filed before, and published after, the filing date of a European patent application in question.
Earlier national rights are not considered prior art in the context of a European substantive examination, but may be invoked in national proceedings to revoke the European patent in the country in which the earlier national right was filed, according to Art. 139(2) EPC. To address an existing earlier national right in a particular country, applicants may file separate sets of claims for said country before the European examination is complete, as stipulated in R. 138 EPC.
The examining division will forward any relevant national rights together with a communication under R. 71(3) EPC informing on the EPO’s intention to grant a European patent.
This newly offered service of the EPO intends to help applicants to make informed decisions when considering applying for a Unitary Patent, which allows only one set of claims for all participating EU Member States.
More details on the additional search may be found under https://www.epo.org/news-events/news/2022/20220725.html.
EPO welcomes Montenegro as new member state
Montenegro accomplished the final step towards acceding to the European Patent Convention on July 15, 2022, and will thus become the 39th member state of the European Patent Organisation from October 1st, 2022.
1. Until now, Montenegro had the status of Extension State and it was thus possible to extend to Montenegro the protection conferred by the European patent applications or patents by paying the corresponding extension fee within six months of the date on which the European Patent Bulletin mentions the publication of the European search report, or, where applicable, within the period for performing the acts required for entry of an international application into the European phase.
The extension system remains applicable to European and international patent applications filed before termination of the relevant Extension Agreement and to European patents granted on the basis of such applications.
2. It will be possible to seek protection in Montenegro as a designation state through payment of the designation fee for all European and international patent applications filed from October 1st, 2022.
3. The current list of member states of the EPO with the corresponding accession dates can be found at: https://www.epo.org/about-us/foundation/member-states.html.
This IP Alert is for information purposes only and does not constitute legal advice.
METAVERSE: How to protect trademarks and designs in a virtual universe?
The Metaverse is a new place of exchange, not only for playful activities but also for commercial ones. Brands and products known on the traditional markets are offered to Metaverse users.
A new trend is to use the Metaverse as a base for launching new products, in particular through a NFT (Non Fungible Token) which represents the virtual image of a product offered for sale on the traditional market. Thus, the purchaser of a NFT representing the image of a product, will be able to get the product upon presentation of the NFT, the NFT being used as proof to establish the property of the purchased product, proof of authenticity and the right to have the product delivered on request.
There is thus a certain porosity between the traditional markets and the virtual world of Metaverse.
Therefore, how to prevent the use of a trademark or a design in the Metaverse? Conversely, how to protect a trademark or a representation of a product which has been created in the Metaverse in order to prevent third parties from using it on the traditional markets?
Given this new economic challenge, which is the strategy to protect trademarks and creations?
Trademarks are registered for the products in respect of which they are intended to be used, e.g. clothing, shoes, perfumes, sports goods. Is this protection sufficient for a trademark use in the Metaverse?
The use of a trademark in the Metaverse can be done in different ways:
- Use for the promotion of a product sold on the traditional market, and/or
- Use for the offer or sale of a NFT representing the virtual image of a product, on the Metaverse,
A company could offer for sale with the same mark both the real product and the NFT representing the virtual image of this product.
In such a case, the protection of the trademark must be adapted to the market on which it is to be used, this use being a use in the course of trade. Thus, it will be appropriate to extend the protection of the trademark to goods and services offered on the Metaverse, such as digital images of footwear, computer programs, services for the presentation of goods through virtual images for sale and services for the presentation of virtual images of goods for recreational or educational purposes.
The trademarks used on the Metaverse will also have to be protected against their use in the virtual world and on the traditional market too.
As regards designs, if they are new and have an individual character, we shall have to examine the opportunity to register them not only for the physical product (e.g. for shoes) but also for the digital representation of the image of the product (e.g. the virtual image of the shoe).
Designs may also be registered for the representation of avatars, virtual environments, and also logos when these are used for decorative purposes in the Metaverse.
Watch is also recommended to ensure that third parties are not using the trademark or design without the owner’s consent.
Watch of marketplaces such as Amazon or Alibaba must be complemented by a watch of NFTs’ sales platforms, such as OpenSea, in order to identify and stop the sale of NFTs representing virtual images of trademarked products, often proposed under accounts identified with the owner’s trademark, without its consent.
Lavoix remains available to discuss the above at your best convenience.
EPO survey on grace period
1. The European Patent Office published recently the result of a survey regarding a grace period for novelty.
The EPC requires to date strict novelty for the subject matter of EP patents, rendering publication of claimed subject matter before filing of the EP patent application opposable to the patent irrespective of the question whether the publication stems from the applicant.
Other jurisdictions (e.g. US and JP) provide grace period systems that permit obtaining valid patents even if the claimed subject matter was published by the applicant before filing the patent application.
The survey assesses the impact of the current strict system and the possible impact of a system with grace period.
2. Most of the users of the EPO grant system are aware of the constraints and comply if needed by postponing disclosure of an invention. The highest rate of negative impact of the current system is borne by research organizations (universities), due to their need of early publication of research results.
Universities also have the highest rate of EP applications that are prevented due to the subject matter being disclosed before the possibility to file. Second to universities, applications from US companies are prevented due to pre-filing disclosure.
3. European SMEs, universities and Japanese/Korean companies suffer most from postponed disclosures with a negative impact rate of 68%, 71% and 82% respectively.
Public research organizations (PRO), European universities and Japanese/Korean companies are most impacted by pre-filing disclosures with a negative impact rate of 100%, 95% and 99% respectively.
4. The report also presents possible advantages and inconvenients of four grace period systems: an unrestricted grace period system in which the applicant does not need to accomplish any supplementary act in order to benefit from the grace period; a declaration based system in which the applicant has to declare the pre-filing disclosure; a prior user rights system in which use based on the pre-filing disclosure is not infringing; and a safety net system which combines the two latter systems.
Whether the EPC will be amended in the future, and if so in which way, needs to be seen.
The whole survey is available here
This IP Alert is for information purposes only and does not constitute legal advice.