Trademark law: how does it work? 

As you know, I am an intellectual property lawyer. 

However, trademarks are part of intellectual property (just like for example, copyrights, patents, designs, and models). 

trademark watch service cost, consultations, and related litigation are therefore part of my daily practice. 

Recently, I have noticed that the greatest confusion reigned in the matter and it, therefore, seems to me today opportune to proceed to a summary about the marks, their functions, their usefulness… 

What is a brand? 

  1.     A trademark is a distinctive sign. It is used to distinguish the products and services of one company from those of another.

A trademark does not therefore necessarily protect a creation (unlike copyright, which protects literary and artistic works; and patent law, which protects inventions). 

Indeed, the mark may very well relate to an existing term, egg. The “Orange” brand for telecommunication products and services (formerly Movistar) or egg. The “Mont Blanc” brand for luxury products (the famous Mont Blanc pens). 

The term “Orange” was not created by the eponymous brand (it is a color in the dictionary or the name of fruit). 

Likewise, the term “Mont Blanc” was not invented by the eponymous brand (the culmination of the chain of the Alps was already named thus before the luxury brand…). 

But, conversely, a brand can very well be the result of the creation or linked to creation. Let us think of the various “Tinting” brands registered by the Moulin art company. The term “Tinting” is the result of the creation of Herger. It is therefore not a (pre) existing term (egg in the dictionary) but a creation… 

The mark, therefore, protects distinctive signs, which are not necessarily the result of creation but which can be. 

The different types of brands 

  1.     A trademark protects a distinctive sign which may take one of the following forms:
  2. a)   A word or a combination of words (this is referred to as a wordmark);
  3. b)   An image, a drawing, a logo, (this is referred to as a figurative mark);
  4. c)   A mixture of the word (s) and image (s), design (s), logo (s), stylization, etc. (this is referred to as a semi-figurative mark);
  5. d)   A color, egg. the Pantone 137 C color over which Verve Aliquot has trademark rights; cf. on this subject, Benelux registration n ° 0746608 and the judgment of the Brussels Court of Appeal of June 24, 2004 (we speak  of a color mark ); 

The following trademarks (which are examples given by EUIPO, the European Trademark Office) show that colors or combinations of colors can be protected by trademark law: 

  1. e)   A shape (this is referred to as a shape mark or a three-dimensional mark), such as for example the following mark covering a Coca Cola bottle shape:

The “Rubik’s cube”, discussed here, was also registered as a shape mark or three-dimensional mark before the Court of Justice finally invalidated this shape mark in a judgment of November 10, 2016: 

Shape marks can also contain word elements, such as the famous triangular mark “Tobler one”: 

  1.     Alongside these classic or traditional marks, there are many developments allowing the filing of more original marks as to their subject matter, egg. Of sound marks, the position marks, the hologram marks, the media brands, etc.

Article 3 of Implementing Regulation (EU) 2018/626 on the European Union trade mark (EUTMIR) refers to these somewhat more specific marks. 

  1. On the     other hand, smells and tastes cannot, in the current state of the law, not be registered as trademarks – as previously explained in point 5 of my post entitled“ Exclusion of tastes and flavors from law author: my first thoughts ”. 

You have to be careful when registering your mark and be careful about what you want to cover by your mark (the object of the mark). 

5. I remember, for example, this client who, when selling his business, said to me: “I registered the name of my activity as a brand and I, therefore, want to promote this aspect as well”. However, after having checked the register, I realized that he had deposited an only figurative sign (a pure logo) without the name! 

He, therefore, did not have a wordmark or a semi-figurative mark covering the name of his activity; but simply of an exclusively figurative mark covering a pure logo. It is obviously not the same thing especially if one wishes to promote the name… 

Filing (and therefore protecting) a name requires the filing of a wordmark or at the very least of a semi-figurative mark (logo + name), and not the filing of a pure figurative mark (without the name or included in the figurative aspect). 

Mistakes are very common and you must therefore be vigilant. 

It is a bit like if you register a color mark (covering only the color), it is then the color and only the color that is protected as a mark, and not a name. 

Conversely, filing a name on a colored background is not filing a color mark, it is filing a semi-figurative mark (a stylized name). 

So be careful what you want to protect (what you want to be considered a brand): 

  • pure name; 
  • name with stylization / design / logo; 
  • stylization / design / pure logo; 
  • color as such; 
  • form; 
  • etc. 

A mark is “relative”: it is only valid for the goods and services for which it has been registered (principle of specialty) 

  1.     Contrary to popular belief, a trademark is only valid for the goods and services for which it has been registered.

This is the reason why when you register a trademark, you have to choose classes of goods and services. 

Apart from these classes of products and services, you will therefore have no monopoly or exclusivity, subject to one nuance (similar products and services) and one exception (famous brands); nuance and exception discussed below. 

This also explains why several identical brands can co-exist in the same territory for different products and services. 

But therefore contrary to popular belief: it is not because you have registered a mark that you will be able to oppose any use of this mark (or of a similar mark) by a third party; you can oppose only if such use involves products and services covered by your brand, or at least to products and services similar (see the section below). 

  1. Nuance: even if you have registered a mark for such and such products and services, you may nevertheless (attempt to) oppose the use of this mark (or of a similar mark) for products and services which are not strictly identical, provided that those goods and services are similar and that there is a likelihood of confusion in the mind of the relevant public. In these cases, the debate will also crystallize on the similarity (or not) of the goods and services and on the existence (or not) of a likelihood of confusion.
  2. Exception: if your mark is “renowned”, it is possible, under certain conditions, to oppose identical or similar marks even if they are used for goods and services which are neither identical nor similar to the goods and services for which you have registered your trademark.

The leading brands, therefore, allow, under certain conditions, to object to the use of these, even for products and services different. But the fame of these brands must be proven! 

A brand is territorial (principle of territoriality) 

  1.     Trademarks are territorial intellectual property rights.

This is the reason why the same mark designating identical services can belong to different operators in different territories; without this posing a legal problem (this will probably pose a “commercial” or “strategic” problem for each of these operators, if they are not linked … because their territorial expansion risks being hampered, not to say prevented). 

  1.      The territorial co-existence of brands poses many problems via the Internet because on the Internet it is difficult to define “borders”.

If you have a brand only in the Benelux, but your website is accessible throughout Europe – and worse! - Which you sell throughout Europe; while another operator has registered the same mark in another European country (where you, therefore, do not have a mark) … a problem will quickly arise. 

  1.     It is, therefore, necessary to think carefully when filing a trademark on the following questions: what is the nature of the activities and what is their territorial scope (are we going to limit ourselves to a country? to a region? to Europe? etc.).
  2.     Conversely, this does not mean either that it is necessary to automatically cover the whole of Europe or even the whole world.

This can be costly in terms of registration fees. 

In addition, after a certain period of time, you will need to be able to prove that you are actually – seriously – using your mark wherever you have registered it. In other words, if you deposit for the whole world, but only use in Belgium, it may after a while be a problem anyway. 

But this means that when you register a brand, it is useful to think concretely about the strategy, its market, its territorial base, etc. (just as it is necessary to think about the products and services for which you want to register your trademark – see the previous point about the relativity and specialty of trademarks). 

  1.     To show that this question of territoriality is not at all theoretical, I am still thinking of this case where one of my adversaries opposed, in court, a French brand against one of my clients active in Belgium.

A French trademark having no effect in Belgium, his request was rejected by the judge… 

But this example has the merit of showing that attempts or confusion are great in this area; and it also shows that if this opponent had had a valid mark in Belgium (Benelux mark or European mark), the solution for him could perhaps have been different. However, if this opponent wanted to cover Belgium and be active in Belgium (in short: to oppose the use of a similar mark in Belgium), he would have had to file a mark valid in Belgium… 

To be continued… 

In Part 2, which I will publish shortly, we will examine the issue of the distinctiveness of a mark (a mark to be valid must have distinctive power and the relevant public must be able to perceive the registered sign as a mark) and on the problems that await descriptive or generic brands. We will also discuss the advantages of copyright over trademarks and vice versa (especially when it comes to expressions, titles, slogans, etc.). And lots of other things! 

Who is the copyright owner?

A frequent question…

Who owns the copyright?

This question comes up frequently in my practice as a copyright lawyer.

It seems to pose difficulties, because the answer may seem counter-intuitive. It, therefore, seems useful to clarify things.

The original creator

We must retain a founding and transversal principle: it is always the original creator who is the holder of the copyright.

And by the original creator, we must understand the physical person who creates the work.

Indeed, a legal person (a company, an association…) cannot strictly speak, create. The legal person will therefore never be the original owner of the copyright. To be able to hold all or part of these rights, the legal person must obtain an assignment of rights for its benefit (to be proven in writing; and of restrictive interpretation, always in favor of the original author).

Article XI.170 of the Code of Economic Law sets out this founding and transversal principle.

From this founding and transversal principle flow, all the lessons are presented below.

The employer

The employer is never the original owner of copyright! He must acquire the rights from his employees by an express assignment for his benefit (to be proven in writing; and of restrictive interpretation, always in favor of the original author).

Moreover, the only rights that the employer can acquire are economic rights (because moral rights are not transferable and always remain, whatever happens, in the hands of the original creator, in this case: the employee).

The mere existence of an employment relationship and the sole payment of a salary to the employee is therefore not sufficient to presume an assignment of copyright for the benefit of the employer. See on this subject my article entitled Copyright and employee creations: beware of misconceptions. There are a few exceptions to this principle, but they are strictly interpreted.

As summarized well by Christophe Caron, “the wage system does not hunt the authorship” (Copyright and Related Rights, 5 the ed., LexisNexis, 2017, p. 177).

The sponsor or the principal

And the one who orders a work then?

Same answer as for the employer: the sponsor or the principal is never the original owner of the copyright.

He must acquire the rights from the creator on order by an express assignment for his benefit (to be proven in writing; and of restrictive interpretation, always in favor of the original author). This assignment can only concern economic rights (since moral rights are not transferable).

The mere existence of an order relationship, an order contract and/or a price for the order (or remuneration for the creator on order) are therefore not sufficient to presume a transfer of rights. Author for the benefit of the sponsor or the client.

This principle has existed for a long time and was put in place by the legislator knowingly (Erdman II Report, p. 7).

The legislator pronouncing itself in exactly the same way for principals and sponsors as for employers indicated (Erdman Report II, p. 7):

  • “The existence of a contract for the hiring out of a work or of services does not imply a derogation from copyright”;
  • “The employer or the entrepreneur may obtain the assignment of the copyright” but, in order to do so, “the contract must expressly provide that these rights are transferred to the employer or to the entrepreneur”. 

Beware of misconceptions! It is not because you order work that you are automatically the rights holder… Not at all! On the contrary: in the absence of an express assignment (to be proven in writing), the rights remain in the hands of the author, even if he created on order.

Editor

The publisher also needs a contract … otherwise the rights remain in the hands of the author, i.e. of the original natural person creator. This contract can only concern, as has already been said above, economic rights.

The publisher is therefore never presumed to be the owner of the copyright, nor automatically to it.

The law also provides for specific provisions (art. XI.195 to XI.200 CDE) which govern the publishing contract.

Without a contract, the publisher is illegal if he exploits the work of the original creator.

It should be noted, by the way, that in general publishing is conceived of as literary publishing (novel, comic strip, etc.). But, in reality, the edition is much broader and can concern any type of work (musical edition, software edition, video game edition…). What characterizes publishing is: the obligation for the publisher (I) to manufacture supports for the work (material manufacture; the “print”) and (ii) to disseminate or distribute these supports, and this at its own risk and expense. If the author has to pay to be “edited”, it is not a publishing contract (but an author-account contract). In addition, in general, the publisher must remunerate the author (the law even provides that the rule – unless otherwise stipulated -,

The producer or promoter

Is it different for the producer or the promoter? That is to say for the person, natural or legal, who would take the initiative of a project and its creation (often with multiple collaborations; with the help of numerous authors…). For example the promoter of a live performance or the producer of an audiovisual work?

Could we not say that since the producer or the promoter takes the initiative in the creation, he would necessarily have the copyright?

Copyright registration service usa is the most trusted and easiest way to get a trademark and copyright.

NO! The notion of collective or directed work, i.e. work created on the initiative, financing, and control of a producer or promoter, even if it was considered when the 1994 law was drafted, was ultimately not retained in Belgian law.

Also, the producer or promoter is never the ab initio owner of the copyright and must therefore obtain these from all the people he involves in his project.

This is not illogical insofar as a producer/promoter is often in a situation similar to that of the sponsor or the principal (the only difference which exists is that the producer or the promoter will often be confronted with many more authors; consequence: he must rigorously acquire the rights of each of them – beware of oversights!).

Once again, this acquisition of copyright can only concern economic rights (moral rights always remaining in the hands of the original authors).

There is mitigation to this principle. It is to be found in audiovisual matters. The producer of an audiovisual work is, in fact, automatically presumed assignee of the economic rights of audiovisual exploitation of the work of which he takes the initiative and assumes the financing (see article XI.182 of the Code of Economic Law).

This reduction, of restrictive interpretation, was decided on because of the colossal investments which generally involve audio-visual production. There is therefore no question of applying by analogy this presumption of transfer to other areas. Thus, for example, a producer of live shows is never presumed to be the assignee of the copyrights… and must acquire them from all the authors who have contributed to the production of the show.

Furthermore, it should be noted that the presumption of transfer for the benefit of the audiovisual producer is not a presumption of ownership (the audiovisual author (s) remain the authors and rights holders; simply, the law presumes the automatic transfer of part of these rights to the benefit of the producer; which means that the latter does not necessarily have to conclude contracts). This presumption of exceptional transfer exists, in a context of very heavy investments (related to audiovisual), precisely given the rigor of the principle according to which the author is the creator natural person who creates the work…

Note that in practice audiovisual producers (practically) always sign contracts with their authors, despite the presumption of legal transfer in their favor. Why? Because the presumption of transfer is limited to the audiovisual exploitation of the work… but does not extend to other exploitations (egg derivative: merchandising, etc.). Without a contract, non-audiovisual operations, egg. Of a film, therefore remain in the hands of the authors…

We understand better, under these conditions, why audiovisual producers still sign copyright transfer contracts. The following formula, which I find excellent, from Pierre-Yves Gautier, illustrates the phenomenon well: “it suffices to read the contracts of any producer, to realize, not without surprise, that both in their own body and in large soporific and annexes are eons with meticulous details luxury rights, rights and sub-sub-sub rights transferred to the producer (always the extraordinary conservatism practice law) “ ( Literary and Artistic Property, 10 the end ., Paris, PUF, 2017, p. 654, n ° 601).

Conclusion

Whatever the context in which the creation takes place (commission, work, production, edition, promotion, etc.), the creator who is a natural person is always originally the holder of copyright within the meaning of our legislation.

This means that the author’s interlocutors (the employer, the sponsor, the ordering party, the publisher, the producer, the promoter, etc.) can only become the copyright holder through an express assignment (to be proven in writing), which will always be interpreted restrictively in favor of the author. Doubt always benefits the author!

Employers, sponsors, contractors, publishers, producers, promoters, etc. can therefore only be derivative owners (never original owners) and only property copyright (moral rights always remain with the original natural person creator.).

This derivative ownership can never be tacit or implied (since an express assignment is required, to be proven in writing).

Apart from a few exceptions (rare and of restrictive interpretation), these principles are constant!

Caution therefore to all those who tacitly think of acquiring copyright because of a working relationship, commissioning, publishing, production, promotion… It is a false idea, which will cause many disappointments.

10 ways insurance companies cheat you

Delaying and violating deadlines, reducing payments, imposing services, and other tricks of insurers.

Certain types of insurance and the conditions for their provision are determined by current legislation, for example, Federal Law No. 4015-1 of November 27, 1992, but in practice, consumers are faced with situations when the products offered to them imply many exceptions and clauses, including those not provided for by law.

The article summarizes the main situations when insurers or their representatives can impose on the consumer favorable conditions for themselves, which, as a rule, entail a refusal, a decrease in insurance payments, or require significant costs from the consumer that are not mandatory.

  1. Discrimination in life insurance payments

To obtain insurance under such an agreement, before concluding it, you must carefully read the list of insured events.

Some insurers do not recognize as insured events death or disability as a result of an accident or illness resulting from the insured person’s pregnancy or events related to it (care, interruption, etc.).

In addition, at-risk (special conditions of the contract) are disabled and people suffering from cardiovascular diseases, cancer, HIV-infected persons, the elderly, and others.

  1. Abuse in credit insurance through bank life and health insurance

Insurance through a bank, when concluding a loan agreement, is often accompanied by the following “traps” for the consumer:

  • the choice of an insurance company is limited – as a rule, it is an organization affiliated with the bank;
  • therefore, at the time of signing the contract (policy), the consumer buys a “pig in a poke”;
  • often an insurance product is imposed that is not suitable or is simply not needed, while a significant part of the amount withheld from the borrower remains with the bank as a commission from the insurance company;
  • including insurance in the body of the loan, the bank also charges interest on it, thereby increasing the cost of the loan;
  • many banks deliberately do not inform consumers about the possibility of withdrawing insurance during the “cooling period”;
  • most borrowers face difficulties in returning the insurance policy: both during the “cooling period” and early repayment of the loan.
  1. Scanty payments for investment life insurance (ILI)

Analysis of consumer complaints shows that the victims of insurance fraud are often bank customers, to whom the IOL is often sold under the guise of a deposit. Bank managers say that an investment life insurance policy is a complete analog of a deposit, but with a higher yield. At the same time, it is silent that:

the funds invested in the ILI are not insured by the DIA (deposit insurance agency) and the state does not guarantee their safety;

before the end of the contract (up to 5 years), it is impossible to withdraw money without losses ;

income is not guaranteed (the company in whose management the money is transferred may have losses or show minimum profitability).

The listed conditions are essential, but banks do not warn about these risks. According to the data of the Bank of Russia, the average yield on the three-year ILI contracts that ended in 2017-2018 was 3.3% per annum, and for five-year contracts – only 2.4%.

  1. Imposing services when insuring bank cards

Recently, insurance of plastic cards (debit and credit) has become popular, and very often the card is issued with insurance, even if its owner did not ask for it. After all, the bank’s employees are motivated: the more options they connect, the higher the salary bonus! The list of insurance risks is approximately the following:

  • loss of a card as a result of a robbery or robbery;
  • taking possession of the PIN-code of the card by using violence or threats;
  • forgery of the client’s signature when withdrawing money at the bank office;
  • fraud with the use of technical means (phishing, skimming).

Judging by the list, the cardholder pays a significant part of the insurance premium for what is already guaranteed to him by law, since the bank is obliged to ensure the safety of the funds entrusted to him.

According to the data of the Bank of Russia, in 2019 the volume of transactions performed without the client’s consent using electronic means of payment amounted to 426.5 million rubles. Moreover, 69% of transactions were carried out as a result of deception or abuse of the client’s trust. Such cases are usually excluded from the scope of insurance obligations.

  1. Delay in payments for property insurance

Taking advantage of the fact that special laws governing the contract of voluntary insurance of property of citizens (Chapter 48 “Insurance” of the Civil Code of the Russian Federation, Law of November 27, 1992, No. 4015-1), liability for violation of the terms of payment of insurance compensation are not provided, many insurers “pull” with payments even admitting an insured event.

To counteract this practice, the Presidium of the Supreme Court of the Russian Federation in its ” Review on Certain Issues of Judicial Practice ” dated December 27, 2017, noted that in cases where the insured states a claim to recover a penalty provided for in Art. 28 of the Law on the Protection of Consumer Rights (dated 07.02.1992 No. 2300-1) for failure by the insurer to fulfill its obligations, such a claim is subject to the satisfaction, and the penalty is calculated depending on the amount of the insurance premium (clause 16 of the Review).

  1. Refusal of payments for property insurance

Arbitrarily interpreting the terms of the contract, the insurance company may refuse to pay. The “ Review of Judicial Practice ” sets out the following case: the plaintiff (citizen) insured the car from the defendant (insurance company) under a voluntary CASCO insurance contract (risks: “damage” and “theft”). The plaintiff’s car was stolen by an unidentified person, and at the same time, the investigator opened a criminal case on the basis of a crime under Part 3 of Art. 159 of the Criminal Code of the Russian Federation (fraud).

The insurer refused to pay the insurance indemnity on the basis that theft of a car by fraud is not an insured event in its Vehicle Insurance Rules.

The Presidium of the Supreme Court of the Russian Federation expressed its opinion on this matter, namely: in case of doubts about the interpretation of the terms of the contract set forth in the policy and insurance rules, and the impossibility of establishing the actual general will of the parties, taking into account the purpose of the contract, contra proferentem should be applied – the most favorable interpretation for the consumer, especially when these conditions have not been individually agreed with him.

With regard to the case under consideration, this means that since the contract provides for the obligation of the insurer to pay insurance indemnity in the event of theft of the car, the claim of the plaintiff must be satisfied.

  1. Failure to pay compensation for travel medical insurance

The minimum package of medical insurance for tourists traveling abroad includes emergency services, including:

  • transportation to the clinic;
  • outpatient and inpatient treatment with a threat to life and health;
  • emergency dentistry;
  • evacuation of the injured tourist to his homeland.

However, not all insurers promptly respond to these cases. As practice shows, the insured person has to pay for the treatment himself, since the payment for it from the insurer is not timely transferred for various reasons.

Upon returning home, there is hope to receive compensation. However, here too there are many obstacles: from the collection and submission of numerous supporting documents to the clarification of the fact that the treatment provided during the trip does not belong to the insured event. A good payout can only be if the tourist gets a disability.

  1. Reduction of compensation for luggage insurance

Damage or loss of luggage during a trip is not a pleasant experience. This is used by insurers, promising their clients substantial payments when insuring such risks. However, the insurance contracts they offer contain many “traps” that allow either not to pay insurance compensation, or to limit the number of payments to the minimum amount.

For example, luggage insurance rules may stipulate that compensation will be paid taking into account the depreciation rates from the original cost of lost items – but only if the owner confirms it with sales (cash) receipts or other documents. If such supporting documents are not provided, the insurer will make payments at the minimum rate.

9. Delaying payments on insurance against travel abroad

Medical insurance should not be confused with travel cancellation insurance. These are two different things. Travel cancellation insurance should protect you from losing money in case the trip is canceled for any reason (for example, the hotel went bankrupt, or a visa was not given, etc.). Maybe that’s why it costs, as a rule, 5-10% of the tour cost, which is a lot.

However, even in these cases, getting insurance is very difficult. If, when drawing up a policy and receiving money from a client, almost all insurance companies use an electronic form of communication (through the website and the client bank), then if an insured event occurs, their Insurance Rules come into force, according to which documents are accepted from the insured only at the office or when sending through the Russian Post.

In this case, before issuing a policy, the policyholder must make sure that the procedure for paying out insurance compensation will be as prompt as the payment for this policy.

10. Assessment of the insured event by an interdependent expert

Usually, the Insurance Rules provide for the possibility of an independent choice of an expert appraiser by the insured, because otherwise it will be recognized as illegal. However, in practice, many insurers refuse to pay for the services of an independent expert, referring to the company’s internal regulations.

In real life, the insured is offered to contact an “independent” expert firm, which at the same time has not advertised connections with the insurance company. This becomes clear from the amount of damage that their expert will indicate in the report.

In such cases, the insured needs to be calm about the meager amount of payments. It is necessary to obtain insurance since the fact of payment will be proof of recognition of the insured event by the insurer. Then you will need to contact a truly independent expert and receive an official statement of damage assessment, which will serve as the basis for contacting the financial institution or a court. If such an act is recognized, then a decision will be made on the additional payment of the difference to the insured according to two expert assessments.