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CITMA Spring Conference – London – March 2019

Artificial intelligence and “ Skykick ” some disruption in trade mark law. CITMA Spring Conference – London – March 2019. Sylvie Martin – EMEA Trademark Counsel – IBM France. ARTIFICIAL INTELLIGENCE…. Machine learning Expert systems Object/Voice/Speech recognition Creation systems

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CITMA Spring Conference – London – March 2019

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  1. Artificial intelligence and “Skykick” some disruption in trade mark law CITMA Spring Conference – London – March 2019 Sylvie Martin – EMEA Trademark Counsel – IBM France

  2. ARTIFICIAL INTELLIGENCE… • Machine learning • Expert systems • Object/Voice/Speech recognition • Creation systems • Control systems • … …

  3. ARTIFICIAL INTELLIGENCE … … isalmosteverywhere…

  4. ARTIFICIAL INTELLIGENCE… IMPACT IN TRADEMARK LAW

  5. ARTIFICIAL INTELLIGENCE… IMPACT IN TRADEMARK LAW Buying process Retailing • Early 1900 : Self-service* • 1990s : Worldwide Web / Internet • Early 2000 : Social Media Artificial Intelligence = A new buying process Revolution * : In 1917, the US Patent Office awarded Clarence Saunders a patent for a "self-serving store."

  6. ARTIFICIAL INTELLIGENCE… IMPACT IN TRADEMARK LAW Assessment of similarity AverageConsumer Risk of Confusion ImperfectRecollection

  7. ARTIFICIAL INTELLIGENCE… IMPACT IN TRADEMARK LAW Assessment of similarity AverageConsumer Risk of Confusion ImperfectRecollection

  8. ARTIFICIAL INTELLIGENCE… IMPACT IN TRADEMARK LAW New/EnhancedTrademark Tools • Trademarksearching & analysis / Clearances • Image recognition • Statisticaltools • Goods and services classification • On-line trademarkfiling • Case lawsearching & analysis

  9. ARTIFICIAL INTELLIGENCE… IMPACT IN TRADEMARK LAW Filing Goods & Services • New technology • Manyfields of application  severalproducts & services categories • Uncertainty about new product or services areas • Uncertainty about the future business direction

  10. Sky PLC and others v Skykick UK Limited and another proceeding in the CJEU as Case C-371/18 [case in progress]

  11. Sky PLC and others v Skykick UK Limited and another Questions referred to the Court Can a trade mark registration be declared wholly or partially invalid on the basis that the specification of goods/services was not defined with sufficient clarity or precision to enable the extent of registered trade mark protection to be determined ? If the answer to the first question is yes, is the term "computer software" sufficiently clear and precise to enable the scope of protection to be determined ? Can it constitute bad faith to apply to register a trade mark without having any intention to use the mark in relation to the specific goods/services claimed ? and If the answer to the third question is yes, is it possible to hold that an Applicant may have filed the application partly in good faith and partly in bad faith, where it only had an intention to use the trade mark on some of the goods/services covered by the application, but no intention to use the mark in relation to the remaining goods/services ?

  12. Sky PLC and others v Skykick UK Limited and another Can a trade mark registration be declared wholly or partially invalid on the basis that the specification of goods/services was not defined with sufficient clarity or precision to enable the extent of registered trade mark protection to be determined ? If the answer to the first question is yes, is the term "computer software" sufficiently clear and precise to enable the scope of protection to be determined; Can it constitute bad faith to apply to register a trade mark without having any intention to use the mark in relation to the specific goods/services claimed; and If the answer to the third question is yes, is it possible to hold that an Applicant may have filed the application partly in good faith and partly in bad faith, where it only had an intention to use the trade mark on some of the goods/services covered by the application, but no intention to use the mark in relation to the remaining goods/services? IP Translator - ECJ C‑307/10 - 19 June 2012 Products and services designated in the trademark application must be identified with sufficient clarity and precision as to be able to determine the scope of protection requested […] Invalidity ?

  13. Sky PLC and others v Skykick UK Limited and another If the answer to the first question is yes, is the term "computer software" sufficiently clear and precise to enable the scope of protection to be determined ? Scope of Protection Understanding the goods and services Vs. Whereas (28) and Article 33(2) EUTMR & EUIPO Trademark Guidelines – Part B – 4.1 “Clarity and precision” The goods and services for which protection of the trade mark is sought should be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of protection sought. A description of goods and services is sufficiently clear and precise when its scope of protection can be understood from its natural and usual meaning. Natural and usual meaning’ refers to the inherent definition of a term, in other words how the term is commonly understood. […]

  14. Sky PLC and others v Skykick UK Limited and another Can it constitute bad faith to apply to register a trade mark without having any intention to use the mark in relation to the specific goods/services claimed ? • TM Directive & EUTM Regulation • No requirement of use at filing  No requirement of intent to use at filing • Chocoladefabriken Lindt & Sprüngli - ECJ C-529/07 - 11 June 2009 • Bad faith is a subjective state – an intention incompatible with accepted standards of honest or ethical conduct – which is ascertainable from objective evidence, and which must be assessed case by case. […]

  15. Sky PLC and others v Skykick UK Limited and another Can it constitute bad faith to apply to register a trade mark without having any intention to use the mark in relation to the specific goods/services claimed ? • PELIKAN - T-136/11 – 13 December 2012 Where the applicant for a declaration of invalidity seeks to rely on that ground, it is for that party to prove the circumstances which substantiate a finding that the Community trademark proprietor had been acting in bad faith when it filed the application for registration of that mark (see Case T 33/11 PeetersLandbouwmachines v OHIM – Fors MW (BIGAB) [2012] ECR II 0000, paragraph 17). • The question whether, as alleged, the applicant acted in bad faith when filing the application for registration of the Community trade mark must be assessedsolely in light of EUTM Regulation and Implementing Regulation (see, to that effect, Case T 410/07 Jurado Hermanos v OHIM 6/12 (JURADO) [2009] ECR II 1345, paragraph 20].

  16. Sky PLC and others v Skykick UK Limited and another Can it constitute bad faith to apply to register a trade mark without having any intention to use the mark in relation to the specific goods/services claimed ? Chocoladefabriken Lindt & Sprüngli - ECJ C-529/07 - 11 June 2009 To determine whether the applicant is/was acting in bad faith within the meaning of Article 51(1) (b)* of Regulation No 40/94, the national court must take into consideration all the relevant factors specific to the particular case at the time of filling the application for registration of the sign as a Community trade mark, in particular: the fact that the applicant knew or must have known that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; the applicant's intention to prevent that third party from continuing to use such a sign; and the degree of legal protection enjoyed by the third party's sign and by the sign for which registration is sought. (*) now Article 59(1)(b)

  17. Sky PLC and others v Skykick UK Limited and another If the answer to the third question is yes, is it possible to hold that an Applicant may have filed the application partly in good faith and partly in bad faith, where it only had an intention to use the trade mark on some of the goods/services covered by the application, but no intention to use the mark in relation to the remaining goods/services ? EUIPO Trademark Guidelines – Part D – 3.3.2 “Concept of Bad Faih” Bad faith cannot be found on the basis of the length of the list of goods and services set out in the application for registration (07/06/2011, T-507/08, 16PF, EU:T:2011:253, § 88). As a rule, it is legitimate for an undertaking to seek registration of a mark not only for the categories of goods and services that it markets at the time of filing the application but also for other categories of goods and services that it intends to market in the future (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 25; 07/06/2011, T-507/08, 16PF, EU:T:2011:253, § 88) – [PELIKAN - T-136/11 – 13 December 2012)]

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