USE IT OR LOSE IT: How Apple lost its THINK DIFFERENT trademark in the EU

In a recent judgement, the General Court of the EU ruled that Apple’s trademark registration in the EU for the slogan “THINK DIFFERENT” shall be revoked as the tech giant hasn’t been using the slogan on its products.

The judgement follows applications by Swatch in 2016 at the European Union Intellectual Property Office (EUIPO) to revoke Apple’s trademark registration for the slogan on the grounds that Apple had not been genuinely using the trademark for an uninterrupted period of five years.

Swatch’s applications were accepted and Apple’s trademark was revoked by the Cancellation Division of EUIPO revoked Apple’s trademark registration. Unhappy with EUIPO’s decision Apple brought three actions before the General Court of the EU.

Unfortunately for Apple, the General Court agreed with the EUIPO that Apple has not put to genuine use its “THINK DIFFERENT” slogan on its products. The General Court’s decision may mean that any businesses in the EU may now use the slogan on their own products.

This case shows that trademark owners must use their trademarks after they are registered, otherwise, the trademark registrations can be revoked for non-use. In Malaysia, any trademark registration can be revoked by the court if it is not use in good faith for 3 years after it is registered.

inTOXICating LEGACY OF LEHMAN BROTHERS

The world is once again at the precipice of yet another financial crisis, brought on by an overachieving virus and an overreaching Russia. We’re being reminded daily that the global economy could very well descent into the chaos of the 2007 – 2008 global financial crisis where even the mightiest of banks were dropping like radioactive lead zeppelins, including the international investment bank - Lehman Brothers.

After several years of having its name dragged through the mud (quite justifiably), the poster boy of the subprime mortgage crisis seemed to have risen from the ashes, in the guise of a whiskey brand by TIGER LILY VENTURES LTD., a London based company who’s decided that the name Lehman Brothers shall ne’er be too far from the lips of those who’d caused us so much misery in the first place. The resurrection of the name did not sit well with Barclays Bank, which bought over Lehman’s North American operations along with the latter’s trademarks right. Unfortunately, Barclays had allowed all of Lehman Brothers’ US trademark registrations to expire.

In 2013, Tiger Lily filed to register the trademark “LEHMAN BROTHERS” in the States for beer, spirits and F&B services. And in the same year, Barclays filed to re-register the same trademark for various financial services. Both parties then decided to oppose the trademark applications of the other at the United States Patent and Trademark Office (USTPO).

Barclays claimed that Tiger Lily’s use of the Lehman Brothers trademark will cause confusion as the public might think that Tiger Lily’s products and services are somehow related to Barclays. On the other hand, Tiger Lily claimed that Barclays had abandoned the Lehman Brothers trademark and have no genuine intention to ever use it.

The USPTO allowed Barclays opposition, as it was convinced that the use of the Lehman Brothers trademark by Tiger Lily would actually cause confusion. Tiger Lily’s opposition was however rejected as the USPTO found that Barclays had not abandoned the Lehman Brothers trademark and it has intention to use the trademark eventually. Unhappy with the USPTO’s decisions, Tiger Lily decided to appeal at the Federal Circuit.

Unfortunately, the appeal court agreed with USPTO’s decisions. The court found that Tiger Lily’s use of the Lehman Brothers trademark is likely to cause confusion as banks have been known to use their trademarks on merchandises (including food and alcohol) to promote their business. The court also found that Barclays had not abandoned the Lehman Brothers trademark (even though it had not renewed its trademark registrations) as it had continued to use the trademark in various capacity, including in the ongoing bankruptcy proceedings.

This case shows the difficulties that a business may face in using an unrelated legacy brand, especially if the brand is famous. So, for anyone who is banking on a seemingly disused brand, perhaps it’s worth doing a bit of due diligence before you take out that second mortgage.

The New Normal for Malaysian Patent Law

Amendments to the Malaysian Patents Act & Regulations came into force on 18 March 2022 without much fanfare (at least the 2019 updates to the Trademarks Act & Regulations received some coverage from our local newspapers). Some of these changes harmonise certain aspects of Malaysian patent law with that of other countries, while some other changes eliminate ambiguities that have existed due to lack of clear wording in the Act & Regulations.

Much-needed clarity

Changes to the Act & Regulations have removed ambiguities concerning certain subjects, such as sequence listings, microorganism samples and who are persons considered resident in Malaysia.

Sequence Listings

For quite a while now, drafters and filers of application which disclosed a sequence listing were unsure as to where to position the sequence listing, whether as part of the description before the claims, as figure sheets or as a separate document. One thing was certain, failure to number the sheets of the sequence listing always attracted an office action instructing the applicant to remedy this. The updated Act & Regulations now clearly state that sequence listings are to be submitted as a separate part of the description in electronic form and will follow the standard as described by the Patent Cooperation Treaty.

Budapest Treaty

Another issue prior to the update was that applicants who wanted to patent inventions related to microorganisms or microbiological processes had to complete a statutory declaration (SD) permitting access to samples of the microorganisms so that the applications could be examined substantively, which would have guaranteed an Office Action on this matter if the unwitting patent agent did not submit the SD at the time of filing the application. Now that the laws have been updated and Malaysia has acceded to the Budapest Treaty, an applicant need only deposit a sample at a Depositary Authority (not Suppository Authority) and make reference to the deposit in the application without having to complete the statutory declaration.

Persons Resident in Malaysia and Permission to file abroad

The older wording of the Act states that a person residing in Malaysia is not permitted to file a patent application overseas unless certain conditions are met. The question was then, ‘Who is a person residing in Malaysia?’ Are Malaysian SMEs ‘persons’ residing in Malaysia? Is a foreign consultant working in Malaysia under a short-term contract a person residing in Malaysia? What about an AI housed in a computer which is physically located in Cyberjaya? Is that even an inventor?

Persons residing in Malaysia are now clearly defined as the following:

1. a Malaysian citizen residing in Malaysia;

2. a non-Malaysian citizen validly residing in Malaysia; or

3. any local bodies established or registered in Malaysia.

With that settled, we now come to the issue of requesting clearance to file an application overseas first. Before, a request may have been accompanied with a copy of the patent specification to be filed overseas first. Now, the amended Regulations clearly indicate that applications should be submitted together with a description of the invention and the appropriate fee.

Major change

One major change to the Act & Regulations is the ability to make third-party observations and patent oppositions.

Third-party Observation and Patent Opposition

Prior to the amendments, there were no means available to oppose a patent prior to it being granted and patents could only be invalidated in Court after they were granted. Now, any application may be challenged at the time it is first published after 18 months following the filing/priority date or at the time the patent is granted.

For those unfamiliar with these procedures, a third-party observation is where a third party submits prior art references against an application which has been published prior to it being examined substantively. If an Examiner finds that these references are relevant, they will be cited against the application.

A patent opposition on the other hand, is done after the announcement that a patent is granted, and the grounds for opposing a patent will be similar to those for invalidating a patent i.e. the claims are not novel, inventive, industrially applicable; the disclosure or drawings lack sufficiency; the patent is not granted to the rightful person; or the patent was obtained on deceptive grounds.

In conjunction with the new third-party opposition and patent opposition options, applications which have passed the 18th month period and patents which are granted will now be published in the Official Journal for Patents as opposed to the older practice where only patents which are granted are published in the Journal.

Restoration of priority right

For quite a while now, any applications that claimed the priority of an earlier application but were not timely filed within 12 months from the date of the priority application lost their priority claim and this right could not be restored. Now, the Act & Regulations allow for the restoration of priority right if a request for the restoration of the priority right is made in a timely manner.

However, the Registrar must be satisfied that the failure to meet the deadline was unintentional or due to circumstances beyond the applicant’s control, e.g. the docketing software was locked by a ransomware because someone got seduced by some sweet-tongued ‘Nigerian prince’ and so the deadline was missed.

Deferment of Substantive Examination

Applicants now do not have the option of deferring the filing of the request for substantive examination, and must do so within 18 months from the filing date.

However, if the applicant has a corresponding application elsewhere in Australia, Japan, South Korea, the US, UK or at the European Patent Office and wishes to rely on a patent granted in any of these countries/patent office to request a modified substantive examination (MSE), the option of deferring the filing of the request for a modified substantive examination is still available.

This means that if you are not relying on a MSE to have your patent granted, you need to decide within 18 months from the date you filed your application whether you want to go all-in and have your application examined substantively.

Other changes

Some other changes which have come into effect have to do with time limits for certain actions, such as responding to examination reports, converting an application for a patent to an application for a certificate of utility innovation/utility model or responding to a hearing notice.

• Applicants now have 3 months to convert a patent application to an application for a certificate of utility innovation or vice versa following the first SE/MSE report instead of 6 months.

• Applications which have been granted, refused, withdrawn or deemed withdrawn or abandoned can no longer be divided.

• Applicants now have 3 months to respond to a SE/MSE Adverse Report instead of 2 months, which is somewhat of a U-turn from the previous amendment which shortened the duration from 3 months to 2 months.

• Lump sum payment of annuities can be made for 2 years or more but not more than 5 years.

• A lapsed patent must now be reinstated within 1 year instead of two years.

• A notice of express trust can now be entered into the register.

• Patents can now be the subject of a security interest.

• Patent owners who make post-grant amendments may be required to submit a request for re-examination of the amendments.

• More time is given to respond to hearing notice.

• Requests for extension of time can now be filed within 6 months after the deadline.

These changes appear to be positive, largely in favour of applicants and patent owners and aimed towards improving the efficiency of the patent office. In some way, it shows that MyIPO has been engaging their stakeholders and listening to them.

Want to submit a third-party observation but not sure if a dusty book in a public library can be considered as prior art? Why not give us a holler? After all, we’re here to help.