Arguments in case of trademark oppositions – Advocate General’s position

pexels-photo-613508The Advocate General of the European Court М. BOBEK has issued an opinion in the case C‑702/18P  Primart Marek Łukasiewicz v EUIPO. The case concerns the following:

On 27 January 2015,  „Primart” filed an application for registration of an EU trademark with EUIPO for the following figurative sign:

The goods in respect of which registration was sought are in Class 30: ‘Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas, cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; processed grains, starches, and goods made thereof, baking preparations and yeasts; crackers’.

On 29 April 2015, Bolton Cile España, SA, filed a notice of opposition to the registration of the mark applied for in respect of all the goods referred to in the previous point. The opposition was based in particular on the Spanish trademark PRIMA, registered on 22 September 1973 under number 2 578 815 and renewed on 9 April 2013, designating goods in Class 30 and corresponding to the following description: ‘Sauces and condiments; coffee; tea; cocoa; sugar; rice; tapioca; sago, artificial coffee; flour and preparations made from cereals; bread; biscuits; cakes; pastry and confectionery; edible ices; honey; treacle; yeast, baking-powder, salt; mustard; pepper; vinegar; ice’. The ground relied upon in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

On 2 September 2016, the Opposition Division dismissed the opposition in its entirety. However, following an appeal filed by Bolton Cile España, by decision of 22 June 2017, the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision, upheld the opposition, refused the trademark application and ordered Primart to bear the costs incurred in the course of the opposition and appeal proceedings.

The Board of Appeal held, as regards the earlier Spanish mark, that the relevant territory for analysing the likelihood of confusion was Spain and that the relevant public was the public at large in that Member State. Having compared the signs, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public. In that context, it observed that the word ‘prima’ means ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer. By contrast, the mark applied for lacked any meaning. The Board of Appeal also stated that the earlier national mark’s level of intrinsic distinctive character was average. In its view, the Spanish consumer would not understand the word ‘prima’ as a word denoting the excellence of something, as is the case in other languages of the European Union (such as German or Dutch).

On 24 August 2017, Primart brought an action for annulment against the contested decision before the General Court. In its application, Primart alleged an infringement of Article 8(1)(b) of Regulation No 207/2009.

On 12 September 2018, the General Court dismissed the action, upholding the Board of Appeal’s findings with respect to the existence of a likelihood of confusion between the two signs. In that context, the General Court considered Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark to be inadmissible, in accordance with Article 76(1) of Regulation No 207/2009, in so far as they had not been put forward before the Board of Appeal.

In its appeal before the Court of Justice, lodged on 9 November 2018, Primart asks the Court to set aside the judgment under appeal, annul the contested decision of the Fourth Board of Appeal of EUIPO, order EUIPO and Bolton Cile España to pay the costs of the proceedings before the Board of Appeal and the General Court, and order EUIPO to pay the costs of the proceedings before the Court of Justice.

The Advocate’s opinion:

In my view, Article 76(1) of Regulation No 207/2009 cannot be read as obliging the Board of Appeal to refrain from examining matters of law or fact that, despite not having been specifically raised by one of the parties, are inextricably linked to those raised by the parties.

For example, once a given matter has been put before it, the Board of Appeal cannot be expected to turn a blind eye to provisions of Regulation No 207/2009 that, although not referred to by the parties, are applicable to the situation. Similarly, the legal reasoning that the Board of Appeal ought to follow to rule on a given question raised by the parties might require it to go through various steps. The fact that the parties might not have discussed one or more of those steps does not mean that the Board of Appeal cannot touch upon them.

Against that background, the EU Courts have made clear that there are a number of issues that, despite not having been the subject of the parties’ submissions in the context of an opposition procedure, should nonetheless be addressed by EUIPO and, as a consequence, maybe raised, even for the first time, before the General Court.

That may be the case, inter alia, in relation to questions concerning the distinctiveness of an earlier trademark by reference to which it is alleged that the mark applied for gives rise to a likelihood of confusion.

That finding does not result in an infringement of Article 188 of the Rules of Procedure of the General Court, as argued by Bolton Cile España. The arguments submitted by Primart relating to the intrinsic distinctive character of the earlier mark pertained to an issue that had been addressed by the Board of Appeal and could therefore properly be put before the General Court. In the contested decision, the Board of Appeal found the distinctive character of the earlier mark to be average, taking account of the meaning of the word ‘prima’ and the manner in which that word would be understood by the relevant public (paragraphs 22 and 27 of the contested decision).

In conclusion, Primart’s ground of appeal, relying on a breach of Article 76(1) of Regulation No 207/2009, is well-founded.

“UNITED STATES SEAFOODS” cannot be a trademark in the EU

pexels-photo-2827263.jpegThe General Court of the European Union has ruled in the case T‑10/19, United States Seafoods LLC, European Union Intellectual Property Office (EUIPO). This dispute concerns an attempt for registration of the following European trademark in class 29 ‘Fish; fish fillets’:


The application was refused by the EUIPO on absolute grounds, descriptiveness, and lack of distinctiveness. The phrase “UNITED STATES SEAFOODS” would be perceived by the consumers in the EU as food products produced in the US.

The applicant’s arguments that the presence of a map and the US flag is enough to create a basic distinctiveness of the sign were dismissed. According to the EUIPO these additional elements are not able to create distinctiveness, they even further stress the origin of the goods.

The General Court upheld this decision.

The case at hand is a very good example that although some inherently not distinctive signs can be registered as trademarks when they are combined with other elements, these can happen only if these additional elements are distinctive enough by themselves.

Source: Peter Gustav Olson, Lexology.

The European Union joins the Lisbon Agreement

flag-2608475_960_720WIPO reports about the accession of the European Union to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. The Agreement will come into force on 26.02.2020. In that way, every owner of European geographical indication in the EU will be able to apply for international protection in all Member States of the Agreement based on one application managed by WIPO. This by itself reduces significantly the time and money needed for such a registration process.

For more information here.

Damages in case of unlawful preliminary injunctions – an EU Court decision

justice-2060093_1920.jpgThe European Court has issued a decision in case C‑688/17 Bayer Pharma AG v Richter Gedeon Vegyészeti Gyár Nyrt., Exeltis Magyarország Gyógyszerkereskedelmi Kft.. In brief, the case concerns when delegates can be claimed after potential unlawful preliminary injunctions.

The background of the case is as follow:

On 8 August 2000, Bayer filed an application for a patent relating to a pharmaceutical product containing a contraceptive ingredient at the SNational Intellectual Property Office, Hungary; ‘the Office’. The Office published that application on 28 October 2002.

Richter, in November 2009 and August 2010, and Exeltis, in October 2010, began marketing contraceptive pharmaceutical products in Hungary (‘the products at issue’).

On 4 October 2010, the Office granted Bayer a patent.

On 8 November 2010, Richter filed an application with the Office for a declaration of non-infringement seeking to establish that the products in question did not infringe Bayer’s patent.

On 9 November 2010, Bayer applied to the referring court, the Budapest High Court, Hungary for provisional measures to prohibit Richter and Exeltis from placing on the market the products at issue. Those applications were rejected on the ground that the plausibility of the infringement had not been demonstrated.

On 8 December 2010, Richter and Exeltis submitted an application for a declaration of invalidity of Bayer’s patent to the Office.

On 25 May 2011, Bayer submitted further applications for provisional measures before the referring court, which, by enforceable orders of 11 July 2011, entering into force on 8 August 2011, prohibited Richter and Exeltis from putting the products in question on the market, and also requiring them to provide guarantees.

On 11 August 2011 Bayer initiated infringement proceedings against Richter and Exeltis before the referring court. Those proceedings were suspended until a final decision is issued in the proceedings for the declaration of the invalidity of Bayer’s patent.

Having heard appeals by Richter and Exeltis against the orders of 11 July 2011, the Budapest Regional Court of Appeal, Hungary, on 29 September and 4 October 2011 respectively, set aside those orders on the grounds of procedural defects and referred the case back to the referring court.

By orders of 23 January 2012 and 30 January 2012, the referring court refused Bayer’s applications for provisional measures. Whilst it took into account that Richter and Exeltis had entered the market in infringement of the patent, the referring court held that, having regard, in particular, to the advanced stage of the proceedings for a declaration of invalidity of Bayer’s patent and for revocation of an equivalent European patent, the adoption of such measures could not be deemed to be proportionate. By decision of 3 May 2012, the Budapest Regional Court of Appeal upheld those two orders.

By decision of 14 June 2012, the Office granted in part the application for a declaration of invalidity in respect of Bayer’s patent submitted by Richter and Exeltis. Following a further application by Richter and Exeltis, the Office withdrew its decision of 14 June 2012 and, by decision of 13 September 2012, declared that patent invalid in its entirety.

By order of 9 September 2014, the referring court set aside the Office’s decision of 13 September 2012. It also varied the Office’s decision of 14 June 2012 and declared Bayer’s patent invalid in its entirety.

By order of 20 September 2016, the Budapest Regional Court of Appeal upheld that order.

On 3 March 2017, the referring court terminated the infringement proceedings between Bayer and Exeltis following Bayer’s withdrawal from those proceedings.

By decision of 30 June 2017, the referring court definitively dismissed the claim for infringement brought by Bayer against Richter on the grounds of Bayer’s patent having been definitively declared invalid.

Richter, by a counterclaim brought on 22 February 2012, and Exeltis, by a counterclaim lodged on 6 July 2017, requested that Bayer be ordered to provide compensation for the losses they claim to have suffered as a result of the provisional measures referred to in paragraph 21 of the present judgment.

Before the referring court, Bayer submitted that those claims should be rejected, arguing that Richter and Exeltis themselves caused the losses they claim to have suffered by having intentionally and unlawfully placed the products in question on the market. In accordance with Article 340(1) of the Civil Code, there is therefore no justification for their claim for compensation for these losses.

In that context, the referring court considers, in essence, that, in the absence of any provision in Hungarian law specifically governing the situations referred to in Article 9(7) of Directive 2004/48, the general rules of the Civil Code relating to liability and compensation must be interpreted in the light of that provision. However, the referring court first raises questions regarding the scope of the rule contained in Article 9(7) of that directive and asks, in particular, whether that provision merely guarantees the defendant a right to compensation or whether it also defines the content of that right. Secondly, the referring court asks whether Article 9(7) of that directive precludes the national court, applying a provision of the civil law of a Member State, from examining the defendant’s role in the losses occurring.

In those circumstances, the Budapest High Court, Hungary decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Should the expression ‘provide … appropriate compensation’ referred to in Article 9(7) of Directive [2004/48/EC], be interpreted to mean that Member States must establish the substantive rules of law on the liability of parties and the amount and method of compensation, by virtue of which the courts of the Member States can order applicants to compensate defendants for losses caused by measures which the court subsequently revoked or which subsequently lapsed due to an act or omission by the applicant, or in cases in which the court has subsequently found that there was no infringement or threat of infringement of an intellectual property right?

(2)  If the answer to the first question referred for a preliminary ruling is in the affirmative, does Article 9(7) of [Directive 2004/48/EC] preclude opposition to the legislation of a Member State by virtue of which the rules to be applied to the compensation referred to in that provision of the Directive are the general rules of that Member State on civil liability and compensation according to which the court cannot oblige the applicant to provide compensation for losses caused by a provisional measure which was subsequently held to be unfounded due to the invalidity of the patent, and which were incurred as a result of the defendant’s failure to act as would generally be expected in the circumstances in question, or losses for which the defendant is responsible for that same reason, provided that, when requesting the provisional measure, the applicant acted as would generally be expected in those circumstances?’

The Court’s decision:

Article 9(7) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, in particular, the concept of ‘appropriate compensation’ referred to in that provision, must be interpreted as not precluding national legislation which provides that a party shall not be compensated for losses which he has suffered due to his not having acted as may generally be expected in order to avoid or mitigate his loss and which, in circumstances such as those in the main proceedings, results in the court not making an order for provisional measures against the applicant obliging him to provide compensation for losses caused by those measures even though the patent on the basis of which those had been requested and granted has subsequently been found to be invalid, to the extent that that legislation permits the court to take due account of all the objective circumstances of the case, including the conduct of the parties, in order, inter alia, to determine that the applicant has not abused those measures.

Piaggio lost a dispute in the EU over scooter design

vespa-roller-motor-scooter-cult-159192.jpegThe General Court of the European Union has ruled in the case T‑219/18 Piaggio v EUIPO. The dispute concerns the following registered European design for scooters by a Chinese company in 2010:


The Italian company Piaggio an invalidity procedure in 2014 claiming that this design is very similar to that implemented in its own scooters which are famous amongst the consumers for many years. In addition, some registered designs and trademarks were been invoked too.

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The EUIPO dismissed the application for invalidity concluding that the overall impression created by the later design and that of the earlier one is different.

The decision was appealed.

The General Court upheld the EUIPO’s position on the matter.  According to the court:

First of all, it should be noted, that the applicant has no reason to claim that the fact that process designs have several common elements and, in general, a very similar form, leads to the conclusion that the contested design creates the general impression for “Déjà vu” when compared to earlier industrial designs.

In fact, as the Board of Appeal correctly observed, that while in the contested industrial design, the angular lines were predominant, in the earlier industrial design the lines were rather rounded. The process designs give the opposite impression to the informed consumer, who is given particular vigilance and sensitivity, in particular to the design and aesthetic qualities of the products concerned.

It follows from all of the foregoing that the Board of Appeal did not err in its assessment that the contested and earlier designs gave different general impressions to the informed consumer, concluding that the contested designs were original in the meaning of Article 6 of Regulation No 6/2002 as compared to the earlier one.

As regards the opposing marks, the court considers that:

It follows from all the foregoing that, because, on the one hand, the earlier mark’s overall visual impression is different from that of the contested industrial design and, on the other, the importance that aesthetic qualities have for the choice, the average consumer, who is highly attentive, will not assume that the disputed industrial design uses the earlier mark despite the identity of the products concerned.

(unofficial translation)

Performers explicit consent – an EU Court decision

ballerina-1873265_1920.jpgThe European Court has ruled in case C‑484/18 Société de perception et de distribution des droits des artistes-interprètes de la musique et de la danse (Spedidam), PG, GF

v Institut national de l’audiovisuel. The dispute concerns the following:

The INA is a publicly owned industrial and commercial body of the French State which is responsible for conserving and promoting the national audiovisual heritage. In that capacity, it keeps, inter alia, the audiovisual archives of audiovisual producers, namely national broadcasting companies, and helps with the exploitation of those archives.

PG and GF are the successors in title of ZV, a musician who died in 1985.

During 2009, PG and GF became aware that INA was marketing, in its online shop, without their authorisation, video recordings and phonograms reproducing ZV’s performances during the years 1959 to 1978. It is apparent from the file before the Court that those video recordings and phonograms had been produced and then broadcast by national broadcasting companies.

On 28 December 2009, PG and GF, on the basis of Article L. 212-3 of the Intellectual Property Code, brought an action against the INA in order to obtain compensation for the alleged infringement of the performer’s rights which they hold.

By judgment of 24 January 2013, the Regional Court, Paris, France upheld that action. That court considered, in particular, that the application of Article 49 as amended did not exempt the INA from the requirement to obtain the performer’s prior authorisation for the use of the fixation of his performances. Thus, the sole purpose of the collective agreements provided for in the latter provision is to determine the remuneration due for new exploitations, provided that an initial exploitation has been authorised by the performers concerned. In the present case, proof of such authorisation has not been adduced by the INA. By judgment of 11 June 2014, the Court of Appeal, Paris, France, before which the INA brought its appeal, essentially upheld the judgment given at first instance.

By judgment of 14 October 2015, the Court of Cassation, France set aside in part the judgment of the Court of Appeal, Paris. The Court of Cassation found that that Court of Appeal had erred in holding that the application of the derogating rules at issue was subject to proof that the performer had authorised the initial exploitation of his performance, thus adding to the law a condition that it did not impose.

17      By judgment of 10 March 2017, the Court of Appeal, Versailles, France, before which the case was brought back, dismissed PG’s and GF’s claims. That court considered, in essence, that Article 49 as amended establishes, for the sole benefit of the INA, a simple presumption of the performer’s prior consent, which can be challenged, and thus does not call into question the performer’s exclusive right. The agreements with the trade union organisations referred to in that article do not confer on them the right to ‘authorise and prohibit’, which is vested in the performer, but have the sole purpose of fixing the performer’s remuneration.

18      PG, GF and Spedidam, which had intervened voluntarily before the Court of Appeal, Versailles, brought an appeal against the latter’s judgment before the referring court. The referring court indicates that it has doubts as to the compatibility of the legal rules set out in Article 49 as amended with Articles 2, 3 and 5 of Directive 2001/29.

19      In those circumstances, the Court of Cassation decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Must Article 2(b), Article 3(2)(a) and Article 5 of Directive [2001/29] be interpreted as not precluding national rules, such as those laid down in Article 49 [as amended] [of the Law on freedom of communication], from establishing, for the benefit of the [INA], the beneficiary of the exploitation rights of national broadcasting companies in the audiovisual archives, derogating provisions under which the terms on which performers’ works can be exploited and the remuneration for that exploitation are governed by agreements concluded between the performers themselves or the employee organisations representing performers and that institute, which must specify, inter alia, the scale of remuneration and the arrangements for payment of that remuneration?’

The Court’s decision:

Article 2(b) and Article 3(2)(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as not precluding national legislation which establishes, as regards the exploitation of audiovisual archives by a body set up for that purpose, a rebuttable presumption that the performer has authorised the fixation and exploitation of his performances, where that performer is involved in the recording of an audiovisual work so that it may be broadcast.

The brand new version of Espacenet is available

The European Patent Office announced the brand new version of its patent database Espacenet.

The new version is more modern and dynamic and at the same time allows searching for patent documentation based on different combinations of terms and filters.

In addition, the database will provide its users with better translations of the patent documentation in more languages.

For more information here.