Geographical Indications (GIs) and the upcoming changes to the EU system starting in December 2025
The protection system of geographical indications (GIs) in the European Union is set to undergo changes as two new specific EU regulations were recently adopted. The framework in place since 1992 to protect wines, spirit drinks and agricultural products will be modernised, while geographical indications for craft and industrial products will be eligible for protection at EU level for the first time in history.
[[{"type":"media","fid":"5478","view_mode":"default","alignment":"left","instance_fields":"override","attributes":{"style":"height: 367px; width: 550px;"},"field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
- What is a GI?
According to the European Union Intellectual Property Office (EUIPO), geographical indications are intellectual property rights protecting the name of a product that has a specific geographical origin and owes its qualities and/or reputation to its particular origin. They are meant to protect such products against misuse or imitation of the registered name and guarantee the true origin of the products to the customers. Well-known GIs are for example: Parmigiano Reggiano, Kalamata olives and Bayerisches Bier.
A study published by the European Commission on 20 April 2020 has shown that geographical indications are key assets for the EU economy, as the sales value of agri-food and drink products whose names are protected represent a sale value of no less than 75 billion Euros (see also our blog article from 5 February 2021 – “GIview – the new database for Geographical Indications”).
- The upcoming changes to the EU protection system for GIs
For the first time in history, an EU Regulation will provide protection to geographical indications for craft and industrial products. Under the current system of protection, no protection is granted at EU level for this type of products: GIs for crafts and industrial products are only protected on a national basis, with only 16 EU Member States having implemented a specific protection system. Producers of craft and industrial products whose quality or reputation are essentially attributable to their geographical origin will now have the possibility to benefit from a uniform protection system across the entirety of the EU. A straightforward two-step registration process must be followed for a name to obtain protection as a GI. The full competence for the management of the registration process of this new IP right is given to the EUIPO, whereas the EU Commission remains the competent authority for the registration of GIs for wine, spirits and agricultural products. In addition, producer groups will be able to apply for protection of a name as a GI for craft and industrial products (such as textile, porcelain, jewellery or glassware, such as Bohemian glass), similarly to producers of agricultural products. The new EU regulation on GI protection for craft and industrial products will be applicable from 1 December 2025.
It is not yet known when the upcoming EU Regulation on GI for wine, spirit drinks and agricultural products will be applicable, as the co-legislative bodies of the EU still need to formally approve the text. What is certain is that the existing GI system will be improved with the introduction of a simplified registration procedure: whereas there currently exist separate procedures for the registration of GIs in each of the three sectors (wine, spirits and food), the new regulation will provide for a single registration procedure with shorter registration times. Protection will also be granted to GI names that are used as domain names, forcing EU Member States to block domain names infringing GI names, and additional rules will be aimed at ensuring that GIs used as an ingredient in a processed product and GI products sold online remain protected. Finally, producers will be able to form groups to better manage, enforce and develop their GIs, with the added possibility of deciding to make some sustainable practices mandatory for their products.
- Links with more detailed information
For more information on GIs and the incoming changes to the protection system of the GIs in the EU, please consult the following links:
LexDellmeier, the creative trademark, design, copyright and licensing law experts from Munich, Germany, and its team members would like to extend to all clients, colleagues and IP friends from around the world a happy, healthy and successful New Year 2024!
[[{"type":"media","fid":"5476","view_mode":"default","instance_fields":"override","attributes":{"style":"height: 337px; width: 500px;"},"field_file_image_alt_text[und][0][value]":"lexdellmeier_calender_2024.jpg","field_file_image_title_text[und][0][value]":"lexdellmeier_calender_2024.jpg"}]]
Our specialized IP firm is turning 15 years on 1 May 2024 and for this reason printed a 2024 calender - the front page of which you see here. Our aim was to thank our clients and trademark, design, copyright and patent friends from around the world with a gift that would bring joy all year around. In 2024. LexDellmeier celebrates its firm’s anniversary on 1 May 2024. This calendar shows our passion for our work with clients and IP as well as for our hometown Munich, Germany – one of the major hubs for intellectual property in Europe. In order to see the calander and the pictures electronically, please see: https://monochrome-fineart.de/referenzen
Thank you, Ralf Gebhardt – for all your hard work, patience and advice in creating this special calendar for LexDellmeier – Intellectual Property Law Firm. It has been a great pleasure and honor working with such a fantastic photographer. With a passion for photography, he loves to search for images in nature, mountains and cities. His entire portfolio can be viewed on his website and is available as a limited edition in gallery quality. For more photographs and pictures please see his website at: www.monochrome-fineart.de
Some interesting and fun facts about LexDellmeier:
- We all still LOVE our job(s) and are PASSIONATE about intellectual property and our clients.
- Our "founding" office manager Elisabeth (and my first employee) still works at LexDellmeier (special thanks from my side here - could not have done it without her or the other long-standing team members, such as Andrea, Karolin, Eva and all the others on the team).
- LexDellmeier has an office dog "Ben" - a dachshund - who comes to work every day - cheering everyone up in the office.
- Working paperless for many, many years helped us get through the pandemic and supported all lawyers and staff members by being to be able to work remote.
- Winning three large new clients in 2022/2023 with over 1,500 trademarks (and beating some of our large IP firm competitors in tenders - so-called "beauty contests") has made us really proud and makes us work even harder.
- State of the art technology and letting clients have access to their files has really given the firm a boost in the past 15 years.
NOTICE: If anyone we know or who knows us did not receive a calender - this might be caused to either a delay or loss via the German Post Office (which seems to have happened). We still have a few calenders at the office. Please send a short personal message to me via LinkedIn or via email to info(a)lexdellmeier.com and we will send you one - or, alternatively, look at the calendar online at: https://monochrome-fineart.de/referenzen
Protecting slogans as trademarks is becoming more difficult. The European Union Intellectual Property Office’s (EUIPO’s) Board of Appeal (BoA) has dealt with the question of registrability of slogans as trademarks in no less than three decisions recently.
[[{"type":"media","fid":"5472","view_mode":"default","instance_fields":"override","attributes":{"style":"height: 264px; width: 400px;"},"field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
The slogans concerned were:
- “IN PURSUIT OF ANSWERS” (case R 2424/2022-4, decision of 8 August 2023)
goods/services: a.o. diagnostic test kits (class 10) and diagnostic and analytical testing services (class 42)
- “VISION OF TOMORROW” (case R 1707/2022-4, decision of 8 August 2023)
goods/services: a.o. business consultation services in relation the optical sector (class 35)
- “GUTER GESCHMACK GUTES GEWISSEN” (English: „good taste good conscience”) (case R 883/2023-1, decision of 14 August 2023)
goods/services: a.o. liver; charcuterie; sausages (class 29) and meat pies (class 30)
1. EUIPO’s examination criteria
In all three cases, the EUIPO’s basically argued as follows:
- A trademark which is devoid of any distinctive character is not to be registered.
- A trademark has distinctive character when it serves to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus distinguishing the goods or services from those of other undertakings.
- As regards signs which are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded per se.
- It is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of signs.
- A trademark is devoid of distinctive character if its semantic content indicates to the consumer a characteristic of the product or service relating to its market value which comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of origin.
- The question whether a sign has distinctive character must be assesses by reference to the goods or services in question and the perception of the relevant public.
So far, so good. However, the EUIPO also claimed in the above cases:
- A higher level of attention and knowledge of the relevant public does not necessarily imply that a sign is less subject to any absolute grounds for refusal. In fact, it can be quite the contrary since well-informed consumers do not see purely promotional indications as decisive.
So, the BoA on the one hand acknowledges that actually no stricter examination criteria should apply with respect to slogans. However, the fact that the relevant public does not necessarily perceive each category in the same way and therefore, it may prove more difficult to establish distinctiveness for some categories of trademarks than for others…
… resulting de facto in: stricter criteria for slogan marks than for other categories of trademarks.
2. The slogans at issue
Let us take a closer look at what the EUIPO’s BoA had to say to the three slogans at issue, all of which were refused to be registered as trademarks with the argument of being non-distinctive:
1) “GUTER GESCHMACK GUTES GEWISSEN” (English translation: “good taste good conscience”)
goods/services: a.o. liver; charcuterie; sausages (class 29) and meat pies (class 30)
- The sign lacks distinctiveness, even if it is a tautogram. The average consumer will not even notice that it is a tautogram, since there is no reason for a deeper analysis.
- The goods are everyday goods which are bought quickly and without great attention. The level of attention will be low.
- The sign is a mere laudatory slogan indicating that the goods taste good and the consumer is allowed to have a good conscience when consuming them.
2) “VISION OF TOMORROW”
goods/services: a.o. business consultation services in relation the optical sector (class 35)
- The sign lacks distinctiveness, even if it may contain different meanings, as “vision” may not only be understood as “perspective”, but (as the applicant explained) also as “power of imagination“ and as “ability to see”. The two latter definitions do not have a bearing on the distinctiveness of the sign, as the message remains purely promotional.
- Regardless how the word “vision” is understood, the message remains that the services in question are related to the optical industry and that they are provided in such a way that they incorporate the most innovative methods and standards.
3) “IN PURSUIT OF ANSWERS”
goods/services: a.o. diagnostic test kits (class 10) and diagnostic and analytical testing services (class 42)
- The sign lacks distinctiveness, as it will be understood by the relevant public (whose attention will be above average) as “trying to achieve a solution to a problem”. The purpose of the goods/services at issue is to provide an answer/solution to a health-related problem or the diagnosis of a disease or condition. Hence, the addressed public will see a direct link to the contested goods/services.
- The relevant public does not expect promotional signs to be precise or to fully describe the characteristics of the goods/services.
3. LexDellmeier Comment
The slogan “GUTER GESCHMACK GUTES GEWISSEN” is – admittedly – descriptive for food products. The BoA consequently denied trademark protection.
The two other cases are in our view open to discussion.
In “VISION OF TOMORROW”, the EUIPO acknowledges that this sign may be understood in three (!) ways with completely different meanings. So, there could be three consumers understanding the sign in different ways. According to the BoA, This is still not sufficient for the required “minimum level of distinctiveness”.
And honestly, the EUIPO takes the cake when translating “IN PURSUIT OF ANSWERS” into “trying to achieve a solution to a problem”. An answer is not always a solution to a problem. When for example a testing kit – let’s say a pregnancy test – is used by the consumer – and it tests positive, it only says “yes”. While “yes” may be an answer, it is far from being the “solution” to a “problem”…
However, all this is of course a matter of finding and tailoring arguments. . From the perspective of a trademark lawyer, the only conclusion that can be drawn here is that EUIPO seems to become even stricter (as it used to be already) when it comes to the question of registrability of slogan marks.
Protection of slogans as trademarks differ around the world. In case of questions to protection of trademarks and/or slogans in Germany or the EU, please feel free to contact us at: info@lexdellmeier.com
All these small Gimmicks – Trademark Infringement?
Vacation time. Travelling time. Hamburg. Miniatur Wunderland - the world´s largest model railway. An amazing place to spend a whole day, discovering all the small gimmicks that the Wunderland crew has built and is still continuing to expand. Looking at all the trademarks used, one might wonder if this could be considered trademark infringement. Earlier this year, the German Federal Supreme Court (BGH) had to decide about a similar question and we would like to share the decision.
[[{"type":"media","fid":"5468","view_mode":"default","alignment":"center","instance_fields":"override","attributes":{"style":"height: 199px; width: 800px;"},"field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
(Source: BGH, I ZR 86/22, Decision of 12 January 2023)
The last time I was at Miniatur Wunderland in Hamburg, I overheard a young boy telling his dad how amazing it was to see all these real-life places, trains, cars, buildings and more. Obviously, he had just discovered a truck with advertisement for a product he knew and he could not wait to find more. His dad responded that he also liked to look out for signs, designations, trademarks, comic figures and the like that he knew, but that he was not sure if Miniatur Wunderland was really allowed to use all these references to real-life designations and landmarks as they might be protected by third party intellectual property. Hearing these words brought to mind that the German Federal Supreme Court (BGH) had just decided about a similar question earlier this year.
BACKGROUND
The court’s decision of 12 January 2023 (see here) concerned use of German Trademark No. 30 2008 055 294
[[{"type":"media","fid":"5470","view_mode":"default","alignment":"left","instance_fields":"override","field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
and German Trademark No. 30 2009 028 020
[[{"type":"media","fid":"5471","view_mode":"default","alignment":"left","instance_fields":"override","field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
both registered since 2008 and 2009, respectively, for goods and services in logistics and transport covering Classes 9, 35, 39 and 42.
The trademark owner had sued a company specializing in scale modeling and in particular in the sale of models of landscapes, buildings and vehicles, including the following truck and warehouse models:
[[{"type":"media","fid":"5469","view_mode":"default","alignment":"center","instance_fields":"override","attributes":{"style":"height: 199px; width: 800px;"},"field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
(Source: BGH, I ZR 86/22, Decision of 12 January 2023, see here)
The claims were based on an alleged infringement of the abovementioned trademarks being well-known and reputed. The trademark owner won the first instance but lost on appeal. It then took the case to the BGH for review.
DECISION
In accordance with existing case law, the BGH rejected this further appeal and confirmed that use of the registered “DACHSER” marks on model toys was no trademark infringement. It held
- that detailed replicas have been existing in scale model toy construction for decades and that the public was expecting them to be as close to the original as possible;
- that there was a legitimate interest in replicating a vehicle that exists in reality and affixing to it not only the trademark of the manufacturer of the vehicle, but also trademarks that companies use on such vehicles for the purpose of advertising their services;
- that it is no exploitation of the reputation of a well-known service mark "in an unfair manner" if a truck model faithfully reproduced in detail the image of the well-known mark in the same place where it was shown on real-life trucks for advertising purposes;
- that there was no difference in consumer expectation regarding replicas of toy cars and other scale modeling items like buildings;
- that there is a justified interest of toy manufacturers to be able to sell not only vehicles but also buildings as scale models on which well-known trademarks are affixed, insofar as they represent a miniature representation of reality;
- that, depending on the circumstances of the individual case, it may be sufficient for toy buildings if the scale model adopts the design features that are decisive for the corporate identity of a company, including the logo, so that the public recognizes in the model the replica of a building of the trademark owner that typically occurs in reality.
So, overall, no reason for the dad of the young boy mentioned above to worry about trademark infringement by use of replica trucks, trains, buildings and the like.
Are you a fan of Miniatur Wunderland and would like to share your thoughts on the above, let us know. If you are a trademark owner and would like to discuss a possibly infringing use of your trademarks by someone else, you are also welcome to contact us by phone at 089 55 879 870 or by email at info@lexdellmeier.com.
The EUIPO is establishing an important feature, a new initiative that they call “a ground-breaking step in global supply chain product authentication”: “EBSI-ELSA”.
[[{"type":"media","fid":"5460","view_mode":"default","instance_fields":"override","field_file_image_alt_text[und][0][value]":"","field_file_image_title_text[und][0][value]":""}]]
As reported in our blog article of 29 June 2023, the European Union Intellectual Property Office published a consumer study on “European Citizens and Intellectual Property: Perception, Awareness and Behaviour” on 12 June 2023. Results of this study were, on the one hand, that consumers are becoming increasingly wary of counterfeits, on the other hand that there is still a lot of work to be done to fight product piracy and to curb counterfeits. According to this study, global trade in counterfeits amounted to EUR 412 billion in 2021, which was 2.5% of all global trade. In addition, a great number of European consumers are unsure of the authenticity of products which they buy.
The EUIPO is now establishing “EBSI-ELSA”. “EBSI-ELSA” is a European Logistics Services Authentication (ELSA) initiative for products within the global supply chain using the European Blockchain Services Infrastructure (EBSI).
The aim of this initiative is to reassure and protect consumers, while providing comprehensive support to IP rights holders from filing to enforcement. Product authenticity should be assured by promoting information sharing among the participants in the supply chain. This should happen within a secure environment using blockchain technology. EUIPO has recently finalized the set up and they are now performing real-life operational tests. On 31 May 2023, the EUIPO hosted an event where the new name – “EBSI-ELSA” – as well as the promising results of this initiative were presented.
Outlook according to the EUIPO: “by the end of 2023, EBSI-ELSA is expected to be an open-source platform to authenticate products and exchange data between all the parties in the supply and logistics chain, interconnecting products’ track and trace solutions with the risk analysis systems of enforcement authorities and the EUIPO tools (TMview, DesignView, IPEP and IP Register in Blockchain). By doing so, custom officers, as well as transport and logistic operators, can boost their process-productivity and focus their efforts on suspicious goods, while brand owners can use the authenticity claim in litigation cases (e.g. parallel imports) and have a clear overview of their products’ journeys from manufacturer to reseller.”
For us as IP and especially trademark experts, this is promising. EBSI-ELSA seems to be developing into a powerful but also easy tool supporting the fight against product piracy.
More information can be found in the detailed FAQs on the different aspects of the infrastructure. Additional information for each stakeholder group can also be found on the website, including short videos for brand owners, custom officers, transport and logistics operators, and users. To know more about European Blockchain Services Infrastructure (EBSI), visit this website.
Be honest - Have you ever bought counterfeit goods or illegally consumed digital content?
On 12 June 2023, the European Union Intellectual Property Office (EUIPO) published an interesting article on counterfeits and illegal electronic content. As an IP boutique specializing in non-technical intellectual property rights, we come across counterfeits all the time and we found the study very interesting and would like to share some of its main findings with you.
(Source: Shutterstock; 502909426)
The EUIPO recently conducted a consumer study on „European Citizens and Intellectual Property: Perception, Awareness and Behaviour“ by interviewing over 25,000 consumers of all ages and across all EU member states. The full document can be found here.
The study found that European consumers are becoming increasingly wary of counterfeits and electronic content from illegal sources. They admitted to being conscious of the risks that can arise from buying and using such products:
- About 83 % deemed buying counterfeits as supporting unethical behavior;
- About 82 % agreed that accessing digital content illegally could lead to scams and exposure to inappropriate content for minors;
- About 80 % of the interviewed believed that criminal organizations were behind counterfeit products and acknowledged that such purchases harm businesses and employment;
- About 66 % recognized the potential threats to health, safety, and the environment.
While these numbers are quite high and seem to show that the awareness raising initiatives by various stakeholders over the past years have been successful, the study also revealed that there is still work to do.
While consumers are growing wary of counterfeits, price remains a deciding factor in purchasing decisions. 43 % of the interviewed said that a more affordable price for original products was the top reason for them to refrain from buying counterfeit products, followed by the risk of poor quality (27 %), safety concerns (25 %), and legal repercussions (21 %).
On average, one in three surveyed consumers (31 %) found it acceptable to buy counterfeit products if the price of the genuine product was “too high”. Among consumers aged 15-24, this figure rose up to 50 %. This means, every other young consumer finds it acceptable to – intentionally – buy fake products or use illegal digital content.
While this might be economically understandable from an (especially young) consumer’s point of view, the risks remain and they are real. Overall, the study shows that the awareness raising efforts need to continue and we look forward to reading the next EUIPO IP Perception Study to see how public awareness of counterfeit products will have changed.
For further information on tackling fakes and counterfeits, see our blog article of 25 April 2023 at https://www.lexdellmeier.com/de/node/1857 summarizing the European Union’s Strategy Plan to combat product piracy over the next years.
For questions regarding counterfeit products or if you are interested in helping to raise consumer awareness on fakes, you are welcome to contact us by phone at 089 55 879 870 or by email at info@lexdellmeier.com.
Alexandra Dellmeier of LexDellmeier - Intellectual Property Law Firm Intellectual Property Office talks about her career in IP and running her own firm. In April 2023, Managing IP launched Women Founders list, a publication dedicated to highlighting the intellectual property firms that were founded or co-founded by women. The full interview in Managing IP can be found at: https://lnkd.in/eAkzqJkW and is also copied into the LexDellmeier Blog below.
Alexandra Dellmeier of LexDellmeier Intellectual Property Office talks about her career in IP and running her own firm.
About you and your career in IP
When did you decide to pursue a career in law?
Rather early, at the age of ten. Being German and having lived in the US from the age of eight to thirteen, I loved watching any TV shows that dealt with legal issues and had lawyers and judges in them. I was so impressed with the role of an attorney-at-law that I decided to become one myself – much to the dissatisfaction of my father at first, a chemist, because he did not like lawyers at all.
Why did you choose IP law?
Out of coincidence, curiosity, and luck. I knew that I wanted to work in an international field of law. However, the fact that I ended up in IP law had to do with the fact that I originally only planned a 3-month internship (which ended up being my part-time job, next to my required clerking until my bar exam two years later) at a renown Munich-based IP firm.
How did you get into the IP profession? Did you experience significant challenges?
On my first day as a legal intern at the Munich IP firm in 1997, I discovered a gigantic shelf of adidas t-shirts, shorts, and jogging suits in the office. I was deeply impressed and immediately ran to one of the partners and said, "I would like to join the firm’s soccer team!" The managing partner looked bewildered and told me that the firm did not have a soccer team. I persisted, "But, I saw the full shelf of sports clothing." I still remember his loud and hilarious laugh. After a moment, he finally explained that they were counterfeits confiscated by the German Customs from a ship coming from Turkey into Hamburg harbour.
So, trademark infringement, counterfeits, and border seizures were my first contacts with IP. I will never forget that first day, which sparked my interest in intellectual property.
Did you work in-house before joining your current firm? If so, which company?
Prior to starting my own firm, LexDellmeier IP Law Firm, in 2009, I was an equity partner at another renowned German IP firm for almost seven years. Another milestone at the very beginning of my career was my in-house position at Merchandising Media AG / PRosiebenSat.1 AG, a German TV station and merchandising company. Heading the art licensing and IP department at a multi-national company significantly broadened my horizon and understanding, especially with respect to business issues on a global basis.
How have you found the transition from in-house to private practice? Or, in terms of your experiences, what would you say is the key difference between working in-house and working in private practice?
Working in-house requires more in-depth knowledge of internal strategy as well as business issues. The fun aspect of working in-house is that you usually work together with different teams and departments (marketing, sales, accounting, etc.). Working at a law firm, you can usually concentrate more on legal issues and advise the client regarding specific questions they have regarding prosecuting or litigating IP.
Why do you enjoy IP work?
In a nutshell, I love IP! It is extremely interesting and challenging to work internationally on different aspects of IP law. In addition, I am able to use my bilingual language skills in English and German. I very much enjoy working with international clients and colleagues from around the world.
What career advice would you give to women interested in joining the IP profession?
Do at least a 3-month internship with an IP firm dealing with international clients and potentially try to get "your foot in the door" at that firm. Also, be sure your oral and written English skills are really, really good. Approximately 70 – 80% of all IP work is conducted in English. This means that you will also have telephone and Teams/Zoom calls with international clients. Having profound English skills is key to communication with clients, IP offices, courts, and colleagues. It is also helpful to get an LL.M. in IP law (usually a one year course) from a university in the UK or USA. Many firms seek such an additional qualification in IP before you start your first job nowadays.
What advice would you give anyone thinking about setting up and running their own firm?
You need entrepreneurial skills, including being good with numbers and making business decisions quickly. You need to love what you do, treat your clients and staff really well, be well organised, and be ready to work hard and sometimes long hours.
About your firm
When did you set up your firm?
In 2009.
Why did you decide to start your own firm?
It was a very simple decision: I was frustrated. Most German IP firms are predominantly headed and run by male partners. Most German law firms, if they have female partners at all, have a female partner percentage of on average 10 to maximum 25%. Even though I was tough enough to become an equity partner at an IP firm with approximately 100 employees, I was not happy with how things worked.
I thought I could do it better. I hoped I could do it better. I believe I am doing it better now, but I guess it is for our clients, colleagues and team members to judge this.
What challenges did you face when setting up the firm?
I started the firm in 2009, in the midst of a financial and economic crisis. My clients (and admittedly, I too) were shocked at first and saw the global financial crisis as something life-threatening and frightening. Not knowing what the future would bring was a crucial experience, both personally and with respect to my clients’ businesses. The whole issue and the magnitude of the impact took us all by surprise.
How did you overcome those challenges?
The financial crisis, in essence, had similar impacts as the COVID pandemic from 2020 to 2022.
The core question was: How do you tackle such a global crisis? As an optimist, you will realise that any crisis creates opportunities. Whether it is the opportunity to gain market share, renegotiate contracts, buy a competitor, or start your own IP law firm, as I did. Being proactive, flexible, and creative is vital in such a situation.
Clients with good financial controls and management were able to take advantage of some of these previously unknown and unforeseen opportunities. All of my clients reviewed or needed to review their expenses; none of them cut budgets in the areas of technology, innovation, product development, branding or design protection, as IP is vital for their business. However, I encouraged my clients to take the time to invest in IP counselling with the goal of improving their overall IP portfolio by making it more strategically aligned and cost-effective.
What was the easiest part of setting up and running your own firm?
Having a vision, a business plan, a fantastic assistant/IP paralegal (that still works for me after 14 years and has attended law school meanwhile), and state-of-the-art technology for managing deadlines, IP renewals, etc. Having almost 10 years of IP experience did not necessarily make it easy, but it made the risk of setting up and running my own law firm manageable.
How do you ensure your firm delivers high-quality services to clients?
All the lawyers and almost all IP professionals and paralegals have dual qualifications in law, IP, and languages. Our staff is extremely well educated, and we have quality control processes in place in order to ensure that each client is served according to their needs and wishes in a cost-effective manner.
How would you describe the culture of your firm?
We are international, open-minded, hard-working, friendly, supportive, and fun to work with. Approximately 50% of our IP team work in our office premises in the centre of Munich, Germany. The other 50% usually work from home. Because we work hybrid, we make an effort to meet in person every few weeks and go out for lunch, dinner or drinks. We also organise special events, e.g. get-togethers with clients or, an internal spa and strategy meeting over the weekend, where we take the time to discuss the newest changes in IP law, client needs and expectations and also just spend time together.
If you have corporate social responsibility initiatives in your firm, please briefly tell us about one or two of them, why you have them, and the impact or achievement(s).
Twice a year, we offer 3- to 6-month IP traineeships. We accept students still in law school with a bachelor's or master's degree in law. At least once a year, we work together with the European Law Students Association (ELSA), where students can apply for the traineeship.
Over the past 14 years, we have had approximately 20–25 legal interns from around the world. Currently, we have an intern, a young woman, from Istanbul, Turkey.
We see it as our obligation to give young law students the opportunity to gain work experience at a law firm. And we very much enjoy working with bright, young talents.
We also support Ukrainian refugees. Our firm and individual team members have been supporting Ukrainian refugees since the war began in February 2022. We have given our law firm’s apartment to Ukrainian refugees and have supported them by helping them with paperwork for administrative purposes, organising language courses, preparing job applications, etc.
What do you enjoy most about running your own firm?
The clients and staff I work with, challenging IP cases, and being able to take quick, decisive decisions as a business owner together with knowledgeable colleagues and team members to the benefit of all involved.
Client work
What is your most memorable piece of work as an IP practitioner?
Getting seven marks registered at the German Patent and Trademark Office within 24 hours (this is possible because, as an applicant, you can request expedited examination of your trademark application) and winning an extremely important and prestigious trade mark case for a foreign, well-known car manufacturer.
Could you briefly share two interesting client matters you handled within the past 18 months?
We were able to overturn a case before the European General Court and come to an overall worldwide settlement with the applicant. The case was challenging for mainly two reasons: the previous law firm handling the case had lost the first two instances before the European Union Intellectual Property Office.
As a boutique IP law firm with ten team members, it is challenging to take over large trade mark and design portfolios of 1,500 or more marks at once. A new client challenged us in 2022 to organise the takeover of approximately 1,200 files within two weeks and have all deadlines docketed on our IP docketing system. Due to the technology and the IP administration system we use, the programmers we have access to, and the technical and fundamental expertise we have, we were able to comply with the client’s wish.
Did you find any part of the work you have just described uniquely challenging? If so, what were the challenges, and how did you overcome them?
The case mentioned above was challenging because it dealt with cryptocurrency and the "metaverse". Some law firms are not familiar with new trends and technologies. Therefore, in order to advise start-ups and clients in the field of cryptocurrency, you need to have a fundamental technical understanding of the issues in order to advise the client from a legal point of view.
We love challenges. So, when we participate in a tender or "IP beauty contest" for a new client, we need to work hard to fulfil the client’s wishes and aims. In the case of taking over 1,200 files, including docketing deadlines within two weeks, this is only possible if you strategically think the matter through and have the technical know-how to get this challenging task done.
What qualities and skills are required to do your job?
You need expert legal knowledge in IP, enthusiasm, creativity, business acumen, and a passion for trade marks, branding, designs, technology, and innovation. The ability to listen to clients’ needs, strong communication and language skills, as well as "thinking outside the box" are important attributes too.
What key principles do you follow or use to deliver the best possible outcome for a client?
Passion: We love what we do.
Excellence: Our work reflects our best efforts, never less.
Communication: Quick, clear, and effective communication is what we provide.
Integrity: Honesty and trustworthiness are what we stand for at LexDellmeier.
Teamwork: We believe the best client results are achieved through teamwork.
Creativity: Thinking outside the box, and solving complex problems with creative, cost-effective solutions.
Diversity: We treat everyone with respect, fairness, and courtesy.
What if things don’t go according to plan, what keeps you going or motivated?
Support and help from co-workers help solve the problem, or just a big hug from my husband or sons when I come home from work.
The IP market and future
What are the key challenges and opportunities in the next decade for firms in your jurisdiction and/or region?
Challenges include finding motivated, interested, and well-educated young lawyers and IP professionals. As for opportunities, due to the technological evolution, we have already made it possible for any and all team members with a sense of adventure to work from anywhere they want. The use of state-of-the-art technology will help young professionals with children to continue to pursue their career – also on a part-time basis.
As the firm’s leader, what is your top priority for next year?
Keeping clients and staff happy.
Life outside work
Are you working on any interesting projects outside your firm? If so, please tell us a little bit about the project and why you care about it?
Having a husband, 24-year-old twin sons, and a dog, as well as running a firm and supporting law students and Ukrainian refugees, does not leave a lot of time for many other projects. I am not "superwoman". There are boundaries to the time and effort you can invest to make sure you stay healthy and well.
What is your favourite food or sport?
All Italian and Japanese food. Ice-skating and dancing.
What is your favourite hobby?
Sailing, swimming, and bike riding.
Could you share a fun and interesting fact about you?
Some team members believe I have a crystal ball beneath my desk, which, by the way, is not the case. I guess I have a good instinct for certain situations and can sometimes read someone’s mind. I just use my common sense and can put two and two together. I guess that I trained myself by reading too many mystery books and novels when I was young. The funny thing is, whenever something I foresaw becomes reality, family members, clients, or team members do approach me and say, "You knew and foresaw it!" My reaction is to just smile.
[[{"type":"media","fid":"5457","view_mode":"default","instance_fields":"override","attributes":{"style":"height: 306px; width: 550px;"},"field_file_image_alt_text[und][0][value]":"WorldIPDay23","field_file_image_title_text[und][0][value]":"WorldIPDay23"}]]
In honor of World Intellectual Property Day, the LexDellmeier Intellectual Property Law Firm, is conducting interviews with deservingly inspiring female IP professionals. By praising and rewarding innovators and creators, a fair IP system makes sure that society benefits from their creativity and brilliance. Join us as we recognize the accomplishments of trailblazing women throughout the globe and spread awareness of the significance of encouraging more women to engage in the IP system. Look at the story of young entrepreneur Dila BALCI, founder of Hive Events. While the company provides event planning and consulting services, it also provides design & development of the digital assets for the event (logos, banners, on-screen collaterals, pre-recorded videos).
Hello Dila! Thank you very much for agreeing to an interview. Can you tell us a bit about you? What led you to this career path?
Being born into a business family I have always been fascinated by the idea of entrepreneurship. Thus, ever since I could remember, I have been attempting to gain exposure to as many industries, ecosystems, nodes and business functions as possible.
I graduated from the University of Bath, UK, in July 2020, after completing a degree in BSc International Management. During my studies, I spent a semester in Singapore, working as a Business Development Analyst at an ecosystem builder start-up, operating within the high-tech industry along with undertaking an exchange programme at Schulich School of Business (University of York), Toronto.
My academic endeavors, along with various extracurricular initiatives I took amid my studies made me realise that I had a passion for event management. Hence, I started off my quest by getting involved in the curation and execution processes of educational events, youth forums and open days. My pleasing experiences compelled me to pursue a career on events management.
Shortly after my realisation, the pandemic hit the events industry drastically (just as it did pretty much everyone). The industry adapted almost immediately to the new “normal”. Multiple event tech tools and event management software were launched, and the new “virtual event” industry started growing. My skillset (mainly technical/technological) allowed a smooth transitioning.
I am now running my own start-up, Hive Events, offering end-to-end event management services to produce innovative, accessible and engaging virtual and hybrid events.
You studied international business in the UK. Have you always known what kind of startup you wanted to create?
At a certain point, as I briefly explained in my answer above, I knew I wanted to operate within the events industry. Yet, the answer to this very question is a definite no, as “virtual events” was an unfavored format before the pandemic. A few years ago, if someone were to tell me that I would be operating within a tech related/heavy industry, I would have struggled believing them.
However, that being said, I was hoping to set up an inclusive and international business since day one. The virtual-mode, albeit hindering the “human” element (i.e getting together, physical connections) allows the reach of entities and initiatives to be broader.
What was the process of creating Hive Events as a brand?
The very first step was to define the audience. During the pandemic, companies, groups and individuals started looking for ways to keep in touch with their stakeholders. Many of them almost immediately started using video conferencing platforms (i.e Zoom, Meets, Teams). These platforms were excellent for meetings, but not really suitable for events. Many key elements, engagement in particular, were getting lost in translation, while these gatherings were being carried from the physical to the virtual world. Thus, I targeted those (entities/individuals) who are looking to produce innovative, accessible and engaging virtual events.
As a young woman entrepreneur myself, I wanted the brand to have a young, innovative personality. The logo, visual identity and approach were all aligned with such character. I worked with multiple entrepreneurs while building the brand up.
Does intellectual property have an impact on your business?
We have a chief designer in our team who does design & development of the digital assets for the event (logos, banners, on-screen collaterals, pre-recorded videos). Since we are talking about logo designs, intellectual property is important for our business. We are happy to support our customers in this way as well. Our customers then directly work with lawyers and law firms to protect their trademarks once created by us.
Where do you look for creative inspiration? Is it hard to stay innovative?
It most certainly is - especially as Hive operates within a fast growing space. I attend many events, organised by various event management companies, read and write blogs and case studies, follow industry trends and product updates and stay connected via continuous networking. Co-creating is a fast growing trend in many industries. Therefore networking, both inter and intra industries, is highly valuable.
Do or did you have a woman leader as a mentor or are there specific women who inspired you and why?
I had the privilege to meet and work closely with Dr. Yvonne Thomson and Cydnie Thompson. Dr. Yvonne Thompson is a business leader, honored by Queen Elizabeth II. She received 2 doctorates for her work in the Entrepreneurship, Global Diversity and Equality arenas. Cydnie Thompson on the other hand works for and with women in business to create mutually beneficial outcomes. Together, they run a women in business network, WinTrade Global.
These two women, who were initially my clients, inspire, empower and support me on my entrepreneurial path. Their success stories alone are inspiring, but they are also mentoring me on PR, outreach, sales pipeline and leads generation alongside entrepreneurial mindset optimization.
Have you been confronted with gender-related roadblocks in your career?
Against all odds, I fortunately did not experience roadblocks. But I often came across microaggressions.
How should women support other women in their organizations?
By empowering each other! The “can do” attitude is contagious. Within organisations, women need to share & spread their stories to inspire each other, and support one another’s growth and well-being to enable progress. Such empowerment eventually would allow everyone in the organisation, regardless of their individual differences, to prosper within highly diverse and inclusive working communities. My personal experiences taught me that individual traits and personal capabilities, when brought together, not only foster uniqueness and innovativeness but also prepare the optimal ground for success.
What advice would you give to young girls starting their careers?
I trust that in today’s world, given that access to information is easier and faster than it has ever been, adaptability is what drives success. Thus, as the “new ways of doing things” often somehow involve technology within the process, my humble advice would be to develop technological and adaptive capabilities.
We would like to thank Dila for answering the questions and sharing her experience with us. We wish her a very successful future and may she continue to be creative. Check out Hive Event's website: HIVE Events - Social Webinars and Conferences (hive-events.org)
The EU set its priorities for the next four years of combating severe and organized crime in May 2021. Within the framework of the European Multidisciplinary Platform Against Criminal Threats (“EMPACT”), a strategy plan has been developed and will be put into action between 2022 and 2025.
EMPACT has a clear methodology for setting, implementing, and evaluating priorities in the fight against organized and serious international crime. Intellectual property (“IP”) crimes are also on EMPACT's radar. With a focus on products harmful to the EU economy, consumers' health and safety, and the environment, the main objective is to combat and disrupt criminal networks and criminal individual entrepreneurs involved in IP crime and in the production, sale, or distribution of counterfeit goods or currencies (both physically and online). In other words, as the trade in counterfeit products becomes widespread, the sales and revenues of the companies are negatively impacted, and economic, health, safety, and security problems arise.
I. Effects of Counterfeiting on Companies
Product piracy and counterfeiting are serious threats to any company. If someone is making counterfeit versions of your company’s products, offering them for sale, and distributing them, this will have negative consequences for your company, such as:
1. Loss of sales: The main effects of counterfeit products are losses in sales and earnings. Especially nowadays, when online sales are at their peak, it becomes very difficult to understand whether a product is original or fake. This can lead the customer to unknowingly buy the counterfeit product and reduce the company's sales in this context.
2. Damage to the brand image and product liability: It is common for counterfeit goods to be of poor quality, so the businesses also risk brand image loss and the product liability. It is possible that the customers are unaware that they have purchased a counterfeit and believe they have purchased a high-quality product manufactured by the company. They will blame the original manufacturer if it malfunctions, breaks, or fails to meet their expectations.
3. Negative impact on the company’s recognition and reputation: Counterfeit products do not meet the company’s quality standards, which reduces brand recognition and credibility.
4. Loss of trust between business partners: Product piracy leading to a lack of trust will reflect on the partnership and result in an unsuccessful business.
Because of all these reasons, a promising and effective strategy for combating product piracy must be developed.
II. Effects of Counterfeiting on Public Health, Safety and Security
Counterfeit products jeopardize public health and safety. For example, counterfeit cigarettes contain wood dust, mold, insects, insect larvae, and other very dangerous additives. Alcoholic beverages, particularly the methyl alcohol used in the mix, can poison and blind people. Creams that claim to prevent hair loss cause serious skin diseases. Fake perfumes can cause serious disorders in the lungs and kidneys. Contact lenses, dental equipment, tanning products, baby formulas, etc. were among the potentially dangerous counterfeit goods.
Dangerous counterfeit products are not only dangerous for where they are produced. Given today's transportation and logistics possibilities, counterfeit goods produced in one country can be exported to another country from thousands of kilometers away. Preventing counterfeit products will therefore protect both companies and the public.
III. Taking Preventative Action to Stop Counterfeiting
Counterfeit products must be removed from the market in order to protect the company's profits, avoid a drop in sales, and maintain brand value, on the one hand, and avoid environmental, health, and safety issues, on the other.
Legal measures can stop counterfeits from entering the market. One of the most important and basic actions to take is to register your trademark. Trademark registration helps to put a chokehold on counterfeiters' operations. Other possible measures are an application for border seizures via customs authorities, criminal or civil court actions, etc.
A brand protection strategy should be established based on the nature of business, including market surveillance, test sales, digital/online strategies etc.
IV. Conclusion
To protect companies, especially brand value, measures should be taken to prevent counterfeit products. If counterfeit products are already on the market, legal action should be taken. Preventing the production, sale, and international trade of counterfeit products is crucial for both companies and the public’s health, trust, and safety.
For more information, please see https://www.europol.europa.eu/crime-areas-and-statistics/crime-areas/intellectual-property-crime/counterfeiting-and-product-piracy for counterfeiting and product piracy and https://www.oecd.org/publications/dangerous-fakes-117e352b-en.htm for dangerous fakes.
Rims and wheels have been under discussion regarding design protection for many years.
[[{"type":"media","fid":"5456","view_mode":"default","alignment":"center","instance_fields":"override","attributes":{"style":"height: 400px; width: 400px;"},"field_file_image_alt_text[und][0][value]":"EUIPO Decision on Wheel Designs","field_file_image_title_text[und][0][value]":"EUIPO Decision on Wheel Designs"}]]
Before analyzing the interesting design case dated 7 October 2022, before the EUIPO about wheels/tyres, some background information should be mentioned. S Dizing S.r.l. (‘the design holder’), based in Romania, is the holder of the Community Design No 7397146-0001 (‘the contested design’). The design indicates wheels for vehicles. The registration was filed on 14 December 2019 and published in the Community Designs Bulletin on 8 January 2020.
Concaver Sp. z.o.o. ('the invalidity applicant’), based in Poland, is the owner of Registered Community Design (‘RCD’) No 7307277-0001 (‘the prior design’) which was filed on 28 November 2019 and published on 10 December 2019. The invalidity applicant filed an application for a declaration of invalidity of the contested RDC on 5 June 2021. The application was based on Article 25(1)(b) of Community Design Regulation (‘CDR’), in conjunction with Articles 4(1), 5(1)(b), 6(1)(b) and 25(1)(e).
The Prior Design RDC No 7307277-0001 | The Contested Design RCD No 7397146-0001 |
|
A. Invalidity Application No ICD 115928
The invalidity applicant claimed that the prior design is identical to the contested design, differing only in immaterial details and creates the same overall impression on the informed user as the contested design. In other words, the contested design lacks novelty and individual character.
The Invalidity Division declared the contested RCD invalid on 15 November 2021. As stated in the judgement the informed user is likely to be a professional in the vehicle tyre trade acquiring wheel rims for fitting tyres onto vehicles. From the standpoint of the informed user, taking into account the designer’s freedom in the contested design and the other circumstances of the case as set out above, the overall impression conveyed by the contested design does not differ from that conveyed by the prior design.
The designer’s freedom is restricted because the wheel must be compatible with the vehicle for which it is intended. This is why wheels normally have evenly distributed repeating elements. However, there are many ways to shape, in particular, the elements connecting the rim to the hub. Although, the contested design and the prior one look strikingly similar with only minor differences.
The contested RCD is invalid, based on the findings that the contested design lacks individual character within the meaning of Article 6(1)(b) CDR when compared with the invalidity applicant’s earlier RCD No 73072770001. Since the application was fully successful on this ground, the Invalidity Division found that there was no need to examine the other grounds invoked in the application.
B. Appeal
On 11 January 2022, the design holder filed an appeal against the contested decision, requesting that the decision be set aside. In its statements of grounds, the design holder did not put forward any argument with reference to the lack of distinctive character of the contested RCD when compared with the invalidity applicant’s earlier RCD No 7307277-0001, but claimed instead that the contested decision must be annulled because the invalidity applicant’s RCD No 7307277-0001 does not constitute a valid earlier disclosure capable of invalidating the contested design.
i. Scope of the appeal and the evidence submitted at the appeal stage
Although the holder did not directly refer to any provision of the CDR in support of its claim, the Board notes that exceptions to disclosure are set out by Article 7(2) and (3) CDR. In light of the above, the question of at what stage of the administrative procedure the proprietor of a contested design may rely on the exceptions provided for in Article 7(2) and (3) CDR arises and, in particular, whether he can do so for the first time before the Boards of Appeal.
The design holder remained silent before the Invalidity Division. However, the Board considered that no provision of the CDR precludes the benefit of said exceptions from being relied on, for the first time, before the Board of Appeal, in response to the decision of the Invalidity Division. Consequently, the Board of Appeal has jurisdiction, inter alia, to rule on the claims of the design holder relating to the benefit of Article 7(2) and (3) CDR. Therefore, although the Board will assess the legality of the contested decision in full, only the evidence and arguments provided by the opponent in its statement of grounds will be analyzed in depth, namely the issue of the disclosure of the invalidity applicant’s earlier RCD No 7307277-0001.
ii. The evidence submitted for the first time at the appeal stage
Pursuant to Article 63(2) CDR, the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. In stating that the Office may, in such a case, decide to disregard evidence, Article 63(2) CDR grants the Board a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account.
The Board notes that, in the present case, the evidence filed at the appeal stage is prima facie relevant for the outcome of the case. In addition, although the evidence at issue is new, and not supplementary to evidence already submitted or be filed to contest findings made in the contested decision, the Board considers that it should be taken into consideration. These documents refer, in fact, to the exceptions presented by the design holder before the Board. Given that said exceptions must be accepted, in light of what has been explained above, it follows that the documentation in support of them shall be accepted, too.
iii. Disclosure pursuant to Article 7 CDR
Pursuant to Article 7(1) CDR, for the purposes of applying Article 5 or Article 6 CDR, a design is to be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the filing date or, as the case may be, the priority date of the contested design, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the European Union.
The design holder argues that the wheels for vehicles as covered by the contested RCD were disclosed by the same design holder before the disclosure of the prior design; thus, the contested RCD was the first made available to the public. He presented evidence from previous automotive fairs to prove his claim. The Board notes that the arguments and evidence provided by the holder do not contain sufficient reference to the fact that the holder itself could be considered as the creator of the prior design, nor the successor in title to that creator. Therefore, the exception to disclosure under Article 7(2) CDR does not apply in the present case.
In light of the aforesaid, the Board concludes that the design holder has not proved that in the case at issue the exceptions to disclosure provided for by Articles 7(2) and (3) CDR apply.
iv. Lack of individual character pursuant to Article 6 CDR
As stated above, the design holder did not put forward any argument with reference to the lack of distinctive character of the contested RCD when compared with the invalidity applicant’s earlier RCD No 7307277-0001.
The contested RCD and the previous design create the same overall impression and they are highly similar: Both share the same two major elements: both have spokes; the number of spokes is identical (ten); the spokes taper towards the rim; the junction between the spokes and the rim is identical; the spokes have an identical front surface shape, especially on their front side; the spokes when viewed from above are similar to the shape of a letter ‘Y’; the spokes form five pairs of spokes. They differ in some banal elements that can be considered immaterial, however, these features are not of such a character as to alter substantially the product’s appearance. From the informed user’s perspective, both designs produce the same overall impression. The designs are therefore identical in the sense of Article 5 CDR. Even if the contested design is new, it certainly does not have individual character. As a result, the Board confirms that the contested design lacks individual character within the meaning of Article 6(1)(b) CDR.
C. Conclusion
Since the appeal has been unsuccessful, the design holder must be ordered to bear the costs incurred by the invalidity applicant, in accordance with Article 70(1) CDR.