French heritage and its commercial use – a court decision

louvre-530058_960_720The Constitutional Court in France has ruled that the last amendments in the Heritage Code are legal and constitutional.

These amendments concern the following:

The use, for commercial purposes, of the image of buildings constituting national domains, on any media, is subject to the prior authorization of the custodian [French term is “gestionnaire”] of the relevant portion of the national domain.  Such authorization may take the form of a unilateral deed or a contract, whether or not in conjunction with financial terms.

The fee shall take into account the advantages of any kind obtained by the holder of the authorization.

The authorization contemplated by the first paragraph is not required where the image is used in the context of the exercise of a public service mission or for ends that are cultural, artistic, pedagogical, for teaching, research, informational and by way of illustration of current events.”

The case was initiated by Wikimedia France which claimed that these amendments as stated are at variance with the French Constitution in particular with the freedom to carry on business, as well as the right of property, and the principle of equality before the law.

According to the Court, however, the above-mentioned amendments are constitutional because they give options for free use of heritage images in case of education, cultural activities, informational purposes and such related to a public service mission.

For more information here.

Source: The 1709 blog.

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Doing business in China – a help from the European Commission

pexels-photo-745243Do you want to do business in China? Do you know what are the legal requirements and how you can protect your intellectual property there?

The European Commission and the EUIPO try to give some clarity on that matter launching a brand new website called IP KEY CHINA, where you can find a lot of information which can facilitate your efforts to enter the Chinese market. The site gives access to a variety of legal documents including such related to intellectual property.

More information can be found here.

“Swiss Military” – between watch industry and the Army

pexels-photo-821650The Federal Administrative Court of Switzerland ruled on a lawsuit between the Swiss Army and the Swiss watch producer Charmex.

The reason for this conflict was the fact that Charmex as an owner of a registered trademark ‘Swiss Military’ for watches filed an opposition against Army’s application for an identical mark for identical goods.

The Patent Office upheld this opposition because of which the Army appealed.

According to the Federal Administrative Court, the Army has the right to register such a trademark. What’s more, only the Army has to have the right to use this mark. The Court considers that there is no evidence suggesting that consumers connect the term ‘Swiss Military’ with the watch producer rather than the Swiss Army.

According to Charmex this decision is quite disappointing for them taking into account all efforts and investments they made in their brand throughout the years of its existence on the market.

Source: WIPR.

 

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Information from Intellectual Property Center at the UNWE. More information can be found here

Red Color, Shoes and Value

pexels-photo-267292The Advocate General of the European Court M. Szpunar gave its opinion regarding the interesting Case C‑163/16 – Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV.

This is his second opinion because surprisingly the Court took a decision to reassign the case to the Grand Chamber.  The Court decided to reopen the oral procedure and requested the interested parties to attend a new hearing.

In a nutshell, the case concerns the following:

Mr Christian Louboutin is a fashion designer who designs, amongst other things, high-heeled shoes for women. Those shoes have the particular feature that the outer sole is always red.

On 28 December 2009, Louboutin lodged an application for a trade mark which led to the registration, on 6 January 2010, for goods in Class 25, namely ‘footwear (other than orthopaedic footwear)’, of Benelux trade mark No 0874489 (‘the contested mark’). On 10 April 2013, the registration was amended so as to limit the goods covered to ‘high-heeled shoes (other than orthopaedic shoes)’.

The trade mark is described as consisting ‘of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’. It is reproduced below:

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Van Haren operates shoe retail outlets in the Netherlands. During 2012, Van Haren sold high-heeled women’s shoes with red soles.

Louboutin brought proceedings before the Rechtbank Den Haag (District Court of The Hague, Netherlands) seeking a finding of trade mark infringement on the part of Van Haren, which it obtained.

This judgment, given by default, was challenged by Van Haren by way of opposition under Article 2.1(2) of the Benelux convention, alleging that the contested mark was invalid.

In the order for reference, the Rechtbank Den Haag (District Court of The Hague) explains that Van Haren’s line of defence is based on the assertion that the contested mark is in fact a two-dimensional mark, more specifically the colour red which, when applied to the soles of shoes, conforms to the shape of the shoes and gives them substantial value.

The referring court considers that the mark at issue is not a simple two-dimensional mark in that it is inextricably linked to the sole of a shoe. It observes that, while it is clear that the contested mark is an element of the goods, it is unclear whether the concept of ‘shape’, within the meaning of Article 3(1)(e)(iii) of Directive 2008/95, is limited to three-dimensional properties of the goods, such as their contours, measurements and volume, to the exclusion of colours.

In this regard, the referring court considers that if it were to be held that the concept of ‘shape’ does not extend to the colours of goods, then the grounds for refusal set out in Article 3(1)(e)(iii) would be inapplicable. It would therefore be possible to obtain permanent protection for marks incorporating a colour resulting from a function of the goods, for example, in relation to reflective safety clothing, or bottles covered with insulating material.

The new Advocate General’s opinion is as follow:

Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.

A wine battle before the General Court of the EU

The General Court of the European Union ruled in the Case T‑102/17, Cantina e oleificio sociale di San Marzano v EUIPO.

This case concerns an attempt by the Italian company  Cantina e oleificio sociale di San Marzano to register the following European trademark for Class 33 – wine:

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Against this mark, an opposition was filed by the Spanish company Miguel Torres based on an earlier mark Sangre de Toro for the same goods.

Initially, EUIPO dismissed the opposition, but after that the Board of Appeal upheld it.

The applicant appealed before the General Court, stating that there are no similarities between the goods, taking into consideration the fact that both wines have different geographical origin, different distribution and so on.

The Court dismissed these arguments as groundless and upheld the opposition.

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Information from Intellectual Property Center at the UNWE. More information can be found here