Usain Bolt’s trademarks

7734344062_c400fb3191_kThe legendary Jamaican sprinter Usain Bolt has put an end of its professional career recently but this doesn’t mean that the merchandising business regarding his persona has ended too.

As many other well-known sportsmen such as Michael Jorden, for example, Bolt will continue to use its name for different merchandising and endorsement campaigns.

One of the reasons behind this conclusion is not only the Bolt’s celebrity status but the existence of many registered trademarks for his name. A quick check in the TM View database shows the following results:

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Will.i.am lost a lawsuit regarding a trademark in US

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The US Court of Appeals for the Federal Circuit dismissed the appeal by the well-known singer Will.i.am against a USPTO decision for refusal of a trademark “I AM” applied for Classes 3, 9 and 14.

The background of this case is that the Will.i.am’s company Symbolic is the owner of “Will.i.am” trademarks for classes 9 and 41 as well as trademarks “I am” for class 25.

In the case at hand, Symbolic tried to register a word trademark “I AM”for classes 3, 9 and 14.

The USPTO refused the application on the ground of earlier identical marks for similar goods in classes 3, 9 and 14.

Due to this refusal, Symbolic made some specifications in the trademark application stating that all included goods “associated with William Adams, professionally known as ‘will.i.am’”.

The USPTO considered this as insufficient because there was no evidence which to suggest that the singer is well-known under the name “I am” with regard to the relevant goods.

The court upheld this decision as correct not finding stable evidence that William Adams is known as “I am” among the consumers. What’s more, the court considers such specification as insufficient, which cannot overcome the possibility for confusion between the respected trademarks.

 

Thailand joined the Madrid Protocol

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WIPO reports about the accession of Thailand to the Madrid Protocol for international registration of trademarks. The protocol will come into force for the country on 07.11.2017, the date after which Thailand can be designated in applications for international trademarks.

With the accession of Thailand, the number of member states of the Madrid Protocol has become 115.

More information here.

Sculpture, logs, and a moral copyright lawsuit in the US

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The 1709 blog published an interesting article which concerns an alleged infringement of moral copyrights over the sculpture “Log Cabin” made out of wood and created by Cady Noland in the nineties in the US.

The collector Wilhelm Schurmann bought this work and gave it to a museum where it was being exhibited for 10 years. After that, the work was been transferred to Michael Janssen Gallery.

Over the years “Log Cabin” had deteriorated because of which after consultation with a conservator it was been reconstructed with new materials and new logs.

This provoked a lawsuit initiated by the author according to which she hadn’t given any permission for such reconstruction which in turn infringed her moral copyright over the work.

According to the US Visual Artists Rights Act of 1990 (VARA): authors of a work of visual arts have the right “to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and… to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.”

More information can be found here.

 

 

Lighters, trademarks, and a General Court decision

The General Court of the EU has ruled in Case T‑580/15, Flamagas, SA v EUIPO.

The case concerns the following registered three-dimensional EU trademark for classes 4 (fuel gas, compressed), 34 (lighters for smokers) and 35 (advertising, business services):

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Against this mark, a request for invalidation was filed based on the Absolute grounds for refusal of a trademark registration in particular Article 7(1)(a) to (c) and 7(e)(i) and (ii), read in conjunction with Article 52(1)(a), of Regulation No 207/2009:

1.   The following shall not be registered:
(a) signs which do not conform to the requirements of Article 4;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;

Initially, EUIPO dismissed the request but after that, the Board of Appeal upheld the invalidation. This decision was appealed.

According to the intervener, the mark represents the shape of the product which is necessary to obtain a technical result so through acquiring a monopoly right the trademark owner can try to prevent its future use by other producers on the market.

The owner argued that its mark is distinctive because of the word part “CLIPPER” that was included in the sign.

According to the General Court, the word part is not enough for a conclusion that the mark has a distinctive character. The way in which it is represented suggests that it is not a dominant and center part of the mark and pottentially could not be noticed by the consumers taking into account the small font size and the gray background.

What’s more, the Court considers that by not mentioning the word part as an essential element of the mark, the owner himself doesn’t consider it as an important for the sign as a whole.

The Court dismissed the claim for acquired secondary distinctiveness due to the lack of sufficient evidence for this.

Based on the foregoing, a note that can be deduced is that in the case of three-dimensional trademarks, their shape has to depart in some way from the widespread shape typical for the market and any word part attached to it has to be presented properly so to be visible and dominant for the sign as a whole.

Prestige, trademarks, reputation and online sales – an Advocate General’s opinion

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The Advocate General N. WAHL has given an opinion on case C‑230/16 Coty Germany GmbH v Parfümerie Akzente GmbH. The case concerns the following:

Coty Germany is one of Germany’s leading suppliers of luxury cosmetics. It sells certain luxury cosmetic brands via a selective distribution network, on the basis of a distribution contract employed uniformly throughout Europe by it and the undertakings affiliated to it. That contract is supplemented by various special contracts designed to organise that network.

Parfümerie Akzente has for many years distributed Coty Germany’s products as an authorised retailer, both at brick and mortar locations and over the internet. Internet sales are made partly through its own online store and partly via the platform ‘amazon.de’.

It is apparent from the decision for reference that, in the introduction to the selective distribution contract, Coty Germany justifies its selective distribution system in the following terms: ‘the character of Coty Prestige’s brands requires selective distribution in order to support the luxury image of these brands’.

In that regard, as regards brick and mortar retail, the selective distribution contract provides that each point of sale of the distributor must be authorised by Coty Germany, and must meet certain standards, set out in Article 2 of the contract, in terms of environment, décor and furnishing.

In particular, according to Article 2(1)(3) of the distribution contract, ‘the décor and furnishing of the sales location, the selection of goods, advertising and the sales presentation must highlight and promote the luxury character of Coty Prestige’s brands. Taken into account when evaluating this criterion are, in particular, the façade, interior décor, floor coverings, type of walls, ceilings and furniture, sales space and lighting, as well as an overall clean and orderly appearance’.

Article 2(1)(6) of the distribution contract states that ‘the signage for the sales location, including the name of the undertaking and any add-ons or company slogans, must not give the impression of a limited selection of goods, low-quality outfitting or inferior advice, and it must be mounted in such a way that does not obscure the authorised retailer’s decorations and showrooms’.

Furthermore, the contractual framework linking the parties includes a supplemental agreement on internet sales, which provides, in Article 1(3), that ‘the authorised retailer is not permitted to use a different name or to engage a third-party undertaking which has not been authorised’.

In March 2012, Coty Germany revised the selective distribution network contracts and also that supplemental agreement, and provided in Clause I(1) of that supplemental agreement that ‘the authorised retailer is entitled to offer and sell the products on the internet, provided, however, that that internet sales activity is conducted through an “electronic shop window” of the authorised store and the luxury character of the products is preserved’. In addition, Clause I(1)(3) of that supplemental agreement expressly prohibits the use of a different business name and also the recognisable engagement of a third-party undertaking which is not an authorised retailer of Coty Prestige. A footnote to that clause states that ‘accordingly, the authorised retailer is prohibited from collaborating with third parties if such collaboration is directed at the operation of the website and is effected in a manner that is discernible to the public’.

Parfümerie Akzente refused to approve those amendments to the distribution contract and Coty Germany brought an action before a national court of first instance, seeking an order prohibiting Parfümerie Akzente from distributing products bearing the brand at issue via the platform ‘amazon.de’, in application of Clause I(1)(3).

By judgment of 31 July 2014, the competent national court of first instance, namely the Landgericht Frankfurt am Main (Regional Court, Frankfurt am Main, Germany) dismissed the application, on the ground that the contractual clause in question was contrary to Article 101(1) TFEU and to Paragraph 1 of the Gesetz gegen Wettbewerbsbeschränkungen (Law against restrictions of competition).

That court considered, in particular, that, in accordance with the judgment of 13 October 2011, Pierre Fabre Dermo-Cosmétique (C‑439/09, EU:C:2011:649), the objective of preserving a prestige brand image does not justify the introduction of a selective distribution system which by definition restricts competition. According to the national court of first instance, the contractual clause at issue is also a hardcore restriction, within the meaning of Article 4(c) of Regulation No 330/2010, and cannot therefore benefit from a block exemption on the basis of that regulation.

Nor — still according to the national court of first instance — are the conditions for an individual exemption met, since it has not been shown that the general exclusion of internet sales via third-party platforms entails efficiency gains of such a kind as to offset the disadvantages for competition that result from the clause at issue. That court considers that the general prohibition provided for in that clause is not necessary, since there are other equally appropriate means that are less restrictive of competition, such as the application of specific quality criteria for the third-party platforms.

It was in those circumstances, and in the context of Coty Germany’s appeal against the decision of the national first-instance court, that the Oberlandesgericht Frankfurt am Main (Higher Regional Court, Frankfurt am Main) decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Do selective distribution systems that have as their aim the distribution of luxury goods and primarily serve to ensure a “luxury image” for the goods constitute an aspect of competition that is compatible with Article 101(1) TFEU?

(2) If the first question is answered in the affirmative:

Does it constitute an aspect of competition that is compatible with Article 101(1) TFEU if the members of a selective distribution system operating at the retail level of trade are prohibited generally from engaging third-party undertakings discernible to the public to handle internet sales, irrespective of whether the manufacturer’s legitimate quality standards are contravened in the specific case?

(3) Is Article 4(b) of Regulation [No 330/2010] to be interpreted as meaning that a prohibition of engaging third-party undertakings discernible to the public to handle internet sales that is imposed on the members of a selective distribution system operating at the retail level of trade constitutes a restriction of the retailer’s customer group “by object”?

(4) Is Article 4(c) of Regulation [No 330/2010] to be interpreted as meaning that a prohibition of engaging third-party undertakings discernible to the public to handle internet sales that is imposed on the members of a selective distribution system operating at the retail level of trade constitutes a restriction of passive sales to end users “by object”?’

The Advocate General’s opinion is:

(1) Selective distribution systems relating to the distribution of luxury and prestige products and mainly intended to preserve the ‘luxury image’ of those products are an aspect of competition which is compatible with Article 101(1) TFEU provided that resellers are chosen on the basis of objective criteria of a qualitative nature which are determined uniformly for all and applied in a non-discriminatory manner for all potential resellers, that the nature of the product in question, including the prestige image, requires selective distribution in order to preserve the quality of the product and to ensure that it is correctly used, and that the criteria established do not go beyond what is necessary.

(2) In order to determine whether a contractual clause incorporating a prohibition on authorised distributors of a distribution network making use in a discernible manner of third-party platforms for online sales is compatible with Article 101(1) TFEU, it is for the referring court to examine whether that contractual clause is dependent on the nature of the product, whether it is determined in a uniform fashion and applied without distinction and whether it goes beyond what is necessary.

(3) The prohibition imposed on the members of a selective distribution system who operate as retailers on the market from making use in a discernible manner of third undertakings for internet sales does not constitute a restriction of the retailer’s customers within the meaning of Article 4(b) of Commission Regulation (EU) No 330/2010 of 20 April 2010 on the application of Article 101(3) on the Treaty of the Functioning of the European Union to categories of vertical agreements and concerted practices.

(4) The prohibition imposed on the members of a selective distribution system, who operate as retailers on the market, from making use in a discernible manner of third undertakings for internet sales does not constitute a restriction of passive sales to end users within the meaning of Article 4(c) of Regulation No 330/2010.

Furniture and originality in Switzerland

The Swiss Federal Supreme Court has ruled in a copyright lawsuit regarding an individual character of furniture.

The case at hand concerns a design of chairs and bar stools created by the Swiss designer Max Bill in the 50s and 60s of 20 century. These designs have been used by Horgenglarus since them producing the relevant furniture.

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After the death of Max Bill his copyrights started to be managed by the Bill Foundation which gave a license to Horgenglarus that was terminated in 2001. The manufacturer continued to use the designs which provoked a lawsuit. Horgenglarus contended that designs at point did not enjoy any copyright protection because they did not have the necessary individual character to be considered “works” in the sense of copyright law.

The commercial court upheld only the copyright protection over the frame chair considering the bar stool as lacking individual character taking into account the previous similar stools.

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The Supreme court reversed this decision stating that “the degree of individuality (originality) required for a work to have individual character depended on the degree of freedom the category of works permitted. If the degree of freedom was limited, even minor deviations from known designs could convey individual character.”

According to the court the fact that separate elements from the stool are similar to the previous one it doesn’t mean that the relevant design is lacks of originality because the assessment requires the entire design to be taken into consideration.

Based on the foregoing, the court considers that the individual elements had never been combined in the way Max Bill combined them so the work was unique at the time of creation.

More information can be found here.

Source: IP Kat.