Apple won a trademark case against Xiaomi

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The EU General Court issued a decision on a case between Apple and the Chinese technology company Xiaomi which tried to register an EU trademark MI PAD.

Against this mark, an opposition was filed based on earlier Apple’s trademarks iPad.

EUIPO took a decision that there is a sufficient similarity between both signs bearing in mind the fact that the only difference is the initial letter M in the Xiaomi’s mark which, however, is not sufficient to overcome the possible consumer confusion.

The General Court upheld this conclusion and dismissed the Xiaomi’s appeal.

Source: WIPR.

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Argentina and Moldova join TMview

1EUIPO reports about the accession of Argentina and Moldova to the TM View database for trademarks. In that way the participating offices become 62 giving access to approximately 48 million trademarks around the world.

More information here.

Geoblocking in EU – new rules coming soon

brexit-1497067_960_720The European Parliament, the Council, and the Commission have come to an understanding on the legislation regarding the so-called geoblocking identified by many people as unfair.  According to the statement, the new rules will prohibit geoblocking in three main cases:

· The sale of goods without physical delivery. Example: A Belgian customer wishes to buy a refrigerator and finds the best deal on a German website. The customer will be entitled to order the product and collect it at the trader’s premises or organise delivery himself to his home.

· The sale of electronically supplied services. Example: A Bulgarian consumer wishes to buy hosting services for her website from a Spanish company. She will now have access to the service, can register and buy this service without having to pay additional fees compared to a Spanish consumer.

· The sale of services provided in a specific physical location. Example: An Italian family can buy a trip directly to an amusement park in France without being redirected to an Italian website.

The Regulation does not impose an obligation to sell and does not harmonise prices. It does, however, address discrimination in access to goods and services in cases where it cannot be objectively justified (e.g. by VAT obligations or different legal requirements).

The new rules will come directly into force after nine months from the publication in the EU Official Journal, to allow in particular small traders to adapt.

For more information here.

Copying works on cloud – a European court decision

cloud-computing-1990405_960_720The European court has ruled in case C‑265/16 VCAST Limited v RTI SpA. The case concerns the following:

VCAST is a company incorporated under UK law which makes available to its customers via the Internet a video recording system, in storage space within the cloud, for terrestrial programmes of Italian television organisations, among which are those of RTI.

It is apparent from the order for reference that, in practice, the user selects a programme on the VCAST website, which includes all the programming from the television channels covered by the service provided by that company. The user can specify either a certain programme or a time slot. The system operated by VCAST then picks up the television signal using its own antennas and records the time slot for the selected programme in the cloud data storage space indicated by the user. That storage space is purchased by the user from another provider.

VCAST brought proceedings against RTI before the specialised chamber for company law of the Tribunale di Torino (District Court, Turin, Italy), seeking a declaration of the lawfulness of its activity.

In the course of proceedings, by an order for reference of 30 October 2015, that court upheld in part the application for interim measures submitted by RTI and prohibited VCAST, in essence, from pursuing its activity.

Taking the view that the resolution of the case in the main proceedings depended in part on the interpretation of EU law, in particular on Article 5(2)(b) of Directive 2001/29, the Tribunale di Torino (District Court, Turin) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

(1) Are national rules prohibiting a commercial undertaking from providing private individuals with so-called cloud computing services for the remote video recording of private copies of works protected by copyright, by means of that commercial undertaking’s active involvement in the recording, without the rightholder’s consent, compatible with EU law, in particular with Article 5(2)(b) of Directive 2001/29 (as well as Directive 2000/31 and the founding Treaty)?

(2)      Are national rules which allow a commercial undertaking to provide private individuals with so-called cloud computing services for the remote video recording of private copies of works protected by copyright, even where the active involvement of that commercial undertaking in the recording is entailed, and even without the rightholder’s consent, against a flat-rate compensation in favour of the rightholder, in essence subjecting the services to a compulsory licensing system, compatible with EU law, in particular with Article 5(2)(b) of Directive 2001/29 (as well as Directive 2000/31 and the founding Treaty)?’

The Court decision:

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, in particular Article 5(2)(b) thereof, must be interpreted as precluding national legislation which permits a commercial undertaking to provide private individuals with a cloud service for the remote recording of private copies of works protected by copyright, by means of a computer system, by actively involving itself in the recording, without the rightholder’s consent.

Michelangelo’s David can’t be used for commercial purposes – a court decision in Italy

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Eleonora Rosati published an interesting article about a lawsuit in Italy concerning the use of the image of Michelangelo’s David for commercial purposes. The Florence Court of First Instance prohibited such use by a travel agency based on the Italian Cultural Heritage Code which provides that the authority which administers a cultural good has the right to allow its reproduction, subject to an application and the payment of a royalty set by the authority itself, with the sole exception of reproductions of work for non-profit purposes.

Taking into account that Michelangelo’s David is a cultural good and the fact that the use at hand has a commercial effect the Court issued an injunction against the travel agency.

More information can be found here.

EZMIX can’t be a European trademark – an EU Court decision

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The European Court has ruled in Case T‑771/16, Toontrack Music AB v EUIPO which concerns an attempt by a Swedish company to register a European trademark ‘EZMIX’ for classes 9, 15, 42.

The Office refused this application on absolute grounds, lack of distinctiveness and descriptiveness. The grounds for this conclusion were the fact that EZ is a shortened word for Easy and MIX means mixing music.

The Court upheld this decision. The fact that easy can have different meanings is not sufficient to overcome the collision with the absolute grounds. The reason for this is that it is sufficient only one of the meaning to lack a distinctive character in light of the relevant goods or services so as the sign to be refused.

Subsidiary, parent company and an EU Court decision

111The European Court issued a decision to what extent a subsidiary company can be responsible for action taken by its parent company. The case C‑617/15 Hummel Holding A/S  v Nike Inc.,  Nike Retail BV concerns the following:

Hummel Holding is an undertaking with its seat in Denmark which manufactures sports goods, sports and leisure clothing and sports and leisure footwear. It is the proprietor of the international figurative trade mark registered under No 943057 with effect in the European Union for goods in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Clothing, footwear, headgear’.

Nike, which has its seat in the United States, is the ultimate holding company of the Nike Group, which sells sports goods across the world. Nike Retail, which has its seat in the Netherlands, also belongs to that group. Nike Retail operates the website on which Nike goods are advertised and offered for sale, in Germany in particular. In addition to online sales on that website, Nike goods are sold in Germany through independent dealers supplied by Nike Retail. Wholesale or retail sales in Germany are not directly conducted by the companies in the Nike Group.

Nike Deutschland GmbH, which has its seat in Frankfurt am Main (Germany) and is not a party to the main proceedings, is, according to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), a subsidiary of Nike Retail. Nike Deutschland does not have its own website and does not sell goods to end consumers or intermediaries. However, it negotiates contracts between intermediaries and Nike Retail, and supports Nike Retail in connection with advertising and the performance of contracts. Nike Deutschland also provides aftersales service for end consumers.

Hummel Holding claims that some Nike products, in particular, basketball shorts, infringe the trade mark referred to in paragraph 13 above and that most of the infringements took place in Germany. It brought an action against Nike and Nike Retail before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), which ruled that it had jurisdiction on the ground that Nike Deutschland was an establishment of Nike, but dismissed the action on the merits. Hummel Holding appealed to the referring court against that decision.

Hummel Holding seeks an order that the defendants cease from importing, exporting and advertising those goods, offering them for sale, placing them on the market and allowing them to be placed on the market, in the European Union (in the alternative, in the Federal Republic of Germany) as regards Nike and in the Federal Republic of Germany as regards Nike Retail.

Nike and Nike Retail object that the German courts lack international jurisdiction.

The referring court considers that the international jurisdiction of the German courts to hear the action in respect of the European Union as a whole, brought against the companies in the Nike group, can be based only on Article 97(1) of Regulation No 207/2009. It states, however, that the scope of the concept of ‘establishment’ within the meaning of that provision, with regard to distinct first and second-tier subsidiaries, is disputed and has not been clarified by the Court.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Under which circumstances is a legally distinct second-tier subsidiary, with its seat in an EU Member State, of an undertaking that itself has no seat in the European Union to be considered as an “establishment” of that undertaking within the meaning of Article 97(1) of [Regulation No 207/2009]?’

The Court’s decision:

Article 97(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that a legally distinct second-tier subsidiary, with its seat in a Member State, of a parent body that has no seat in the European Union is an ‘establishment’, within the meaning of that provision, of that parent body if the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which commercial activity is pursued, and has the appearance of permanency to the outside world, such as an extension of the parent body.