The Trade Marks and Designs Registration Office of the European Union
This month James Nurton speaks to French trade mark attorney Aurélia Marie about distinctiveness, design rights and trade mark use on the internet.
How did you start working in trade marks?
I have always worked in IP. I started as a barrister doing litigation, including in patents and trade marks. Then I joined Cabinet Beau de Loménie in 1993 and worked as a trade mark attorney. I had to complete the trade mark attorney exam as you cannot work as a barrister in a patent and trade mark firm in France.
I became a partner in 2003 and am now head of the firm's trade mark and design department.
Why did you change?
I wanted to really develop my skills and knowledge in IP. As a barrister I did many different things but this was a good opportunity to focus more on trade marks and designs.
There are two things I greatly appreciate about this work. First, I have a really direct relationship with my clients at all stages of their projects. Before, even though I was advising clients, I didn't feel as close to them. Second is the international aspect of the work. Every day I am working with colleagues in foreign countries and often working in English.
About 40% to 45% of our clients are overseas. We do a lot of work with clients in Asia, especially Japan.
How big is the firm's trade marks and designs department?
We are about 45, which is the biggest single department in the firm. That includes both legal and administrative staff, who handle filings, renewals and recordals. Our work covers everything from filing and prosecuting trade marks to watching, handling opposition cases, drafting contracts and managing litigation.
Last year we filed more than 500 French trade mark applications and about 200 Community trade marks (direct filing at OHIM). But now we often use the Madrid system, starting with a French application and then filing an international registration, including the EU.
It makes sense to use the national registration for the Madrid system because we can get a French registration sooner than a CTM.
It is more secure to file nationally: we don't have to fear oppositions from 27 countries. Also, with a French trade mark as the basis, the international registration is governed by the Madrid Arrangement and the official fees are less expensive.
What do you think of the CTM system?
At the beginning, France was a little reluctant. Perhaps we were afraid we would have to face many oppositions. But now we see that we do not have that many problems and it is popular.
Globally speaking the system works well. I think there is room for improvement regarding the examination of the distinctive character of trade marks. Some names that are accepted are in my opinion descriptive, when figurative trade marks rarely are, and sometimes I feel the decisions could be more harmonised.
It is interesting for me to deal with CTM oppositions, more so than in France, as they are often done in English and there can be different IP rights involved – not just trade marks. Overall the CTM system is more pragmatic: proof of use can come from a very practical point-of-view. So one has to think a bit differently.
But as the years pass, our French system is changing and we are getting closer to the Community model. We have to follow the European case law: regarding infringement matters, we no longer have the notion of partial reproduction for instance.
What about the timing and costs at OHIM?
The time period within which we are invited to answer an opposition is quite good, but sometimes we have to wait a long time for the Office to rule, which means we don't know when we will have the decision. That could be improved.
Another difficulty is proving use. The documents required can be very numerous and take a lot of time to get together. It can be difficult to collect all the evidence by the deadline.
What is the most unusual trade mark you have worked on?
We tried to file an orange colour for a very well-known company in the field of luxury goods, but it was refused as OHIM did not accept that it had acquired distinctiveness even though this company uses this colour in association with all its products.
When it comes to shapes, you have to decide whether it is better to file a trade mark, or a design, or both. With designs you have to think before filing about how the design will be used and the different ways it will be developed. The harmonization with the Directive on designs and the creation of the Community design system changed the French system and our practice a lot. In France, before the Directive, disclosure by the applicant before filing was of no effect.
The Community design is very cheap and quick and overall we would rather file Community than French designs. One of the big advantages of filing designs is that you are not limited by a list of designated products so it can give broader protection as to the field of use, but the downside is that it is limited in time.
However, the Community design system is still new and we need case law to resolve some issues such as what are complex products and parts of complex products, or what is visible. This concerns important sectors from an economic point-of-view and we need clarification.
What are the big challenges in your work today?
The internet issue is very important for trade marks. You have to ask yourself: is there use of a trade mark? How can the use be qualified? And who is responsible for the use? There is a lot of litigation over these sorts of issues in France. For example, I have some cases involving websites comparing products and prices from retailers, where you can enter a trade mark into the search and the results don't show genuine products but only compatible or similar ones. This sort of case is becoming typical.
We have also seen cases where you have a change of licensee and up to a year later you still see the products made by the old licensee on sale on the internet. It can be very embarrassing for the licensor and problematic for the new licensee. The internet gives visibility to everything.
The law is always running after the changes in technology. Everybody has to adapt their practice to the new technology, with the help of case law.
And what about the future?
We have a worldwide market and new competitors. We have to be much quicker and more reactive, especially as so much work is done online now. Of course we use the electronic services at OHIM and we can now file online in France, although oppositions and recordals are still done on paper. Filing electronically is a big improvement: for example when we file designs we can be sure the quality of all the views is good, which was not always the case before.