Proving genuine use of trademark in Switzerland

Marques Class 46 reports about an interesting case regarding proof of genuine trademark use in Switzerland. Sofar Swiss AG applied for YALUAGE trademark for cosmetic products.

Against this mark an opposition was filed by Pierre Fabre based on an earlier mark ELUAGE for the same goods.

Sofar Swiss AG required proof of commercial use of the earlier mark. IPO upheld the opposition after observing the submitted evidences by Pierre Fabre.

What’s happened after that is that the Administrative court overturn this decision. The main argument for this was that all submitted evidences show transactions concerning this mark but only Pierre Fabre and its subsidiary companies in Switzerland which in turn doesn’t prove that the relevant products with the mark were reaching retail stores or end consumers in the country.

This case shows the need for careful analysis in every case of proving genuine use of trademarks because sometimes it could be a tricky business.

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Lending of e-books in EU – Advocate General opinion

The Advocate General of the European Court S ZPUNAR gave an opinion in Case C‑174/15 Vereniging Openbare Bibliotheken v Stichting Leenrecht. The case concerns the following:

There is a lively debate in several Member States, including the Netherlands, concerning the lending of electronic books by libraries. Further to a report commissioned by the Netherlands Ministry of Education, Culture and Science, it was concluded that the lending of electronic books did not fall within the scope of the exclusive lending right for the purposes of the provisions transposing Directive 2006/115 into Netherlands law. Consequently, the lending of electronic books by public libraries cannot benefit from the derogation provided for in Article 6(1) of that directive, which has also been transposed into Netherlands law. A draft law on libraries, based on that premiss, has been drawn up by the government.

However, the applicant in the main proceedings, Vereniging Openbare Bibliotheken (‘VOB’), an association of which every public library in the Netherlands is a member, does not concur with that view. It is persuaded that the relevant provisions of Netherlands law must also apply to digital lending. Consequently, it has instituted proceedings before the referring court against Stichting Leenrecht, a foundation entrusted with collecting the remuneration due to authors under the public lending derogation and the defendant in the main proceedings, for a declaratory judgment holding, in substance, first, that the lending of electronic books falls within the scope of the lending right, secondly, that the making available of electronic books for an unlimited period of time constitutes a sale for the purposes of the provisions governing the distribution right and, thirdly, that the lending of electronic books by public libraries against the payment to authors of a fair remuneration does not constitute copyright infringement.

VOB states that its action concerns lending under the system which the referring court describes as ‘one copy one user’. Under that system, the electronic books at a library’s disposal may be downloaded by a user for a lending period during which those books will not be accessible to other library users. At the end of the period, the book in question will automatically become unusable for the borrower in question and may then be borrowed by other users. VOB has also stated that it wishes to limit the scope of its action to ‘novels, collections of short stories, biographies, travelogues, children’s books and youth literature’.

The interveners in the main proceedings are Stichting Lira (‘Lira’), an organisation which collectively manages rights and represents the authors of literary works and Stichting Pictoright (‘Pictoright’), an organisation which collectively manages rights and represents the creators of visual artworks, both of which support the form of order sought by VOB, and Vereniging Nederlands Uitgeversverbond (‘NUV’), a publishers’ association, which supports the contrary view.

The Rechtbank Den Haag (District Court, The Hague, Netherlands) considers that its response to VOB’s application depends upon the interpretation of provisions of EU law and has referred the following questions to the Court of Justice for a preliminary ruling:

(1)  Are Articles 1(1), 2(1)(b) and 6(1) of Directive 2006/115 to be interpreted as meaning that “lending” within the meaning of those provisions includes the making available for use of copyright-protected novels, collections of short stories, biographies, travelogues, children’s books and youth literature, other than for direct or indirect economic or commercial advantage, by a publicly accessible establishment

–   by placing a digital copy (reproduction A) on the server of the establishment and enabling a user to reproduce that copy by downloading it onto his own computer (reproduction B),

–  in such a way that the copy made by the user when downloading (reproduction B) is no longer usable after the expiry of a given period, and

–   in such a way that other users cannot download the copy (reproduction A) onto their computers during that period?

(2)  If question 1 is answered in the affirmative, does Article 6 of Directive 2006/115 and/or any other provision of EU law preclude Member States from making the application of the restriction on the lending right referred to in Article 6 of Directive 2006/115 subject to the condition that the copy of the work made available by the establishment (reproduction A) has been put into circulation by a first sale or other transfer of ownership of that copy in the European Union by the rightholder or with his consent, within the meaning of Article 4(2) of Directive 2001/29?

(3)  If question 2 is answered in the negative, does Article 6 of Directive 2006/115 impose other requirements concerning the source of the copy (reproduction A) made available by the establishment, such as a requirement that the copy has been obtained from a legal source?

(4)  If question 2 is answered in the affirmative, is Article 4(2) of Directive 2001/29 to be interpreted as meaning that the “first sale or other transfer of ownership” of material referred to in that provision includes the making available for use, remotely by downloading, for an unlimited period, of a digital copy of copyright-protected novels, collections of short stories, biographies, travelogues, children’s books and youth literature?’

The Advocate’s opinion:

(1)  Article 1(1) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property, read together with Article 2(1)(b) of that directive, is to be interpreted as meaning that the lending right enshrined in Article 1 includes the making available to the public of electronic books by libraries for a limited period of time. Member States that wish to introduce the derogation provided for in Article 6 of the same directive for the lending of electronic books must ensure that the way in which that lending is carried out is not in conflict with the normal exploitation of works and does not unreasonably prejudice the legitimate interests of authors.

(2)  Article 6(1) of Directive 2006/115 must be interpreted as not precluding Member States which have introduced the derogation provided for in that provision from requiring that electronic books which are lent under that derogation should first have been made available to the public by the rightholder or with his consent, provided that that limitation is not formulated in such a way as to restrict the scope of the derogation. That provision must be interpreted as applying solely to electronic books obtained from lawful sources.

Brexit – What about IPexit

UK took its decision to leave EU once and for all. Apart from all potential politic and economic consequences, this decision has a direct effect on the IP protection in EU.

It’s widespread opinion that UK was one of the most preferable countries in EU regarding IP protection and management. UK is part of different EU systems for protection of trademarks, patents, designs, trade secrets and so on.

It is too earlier for any predictions what will happen with this IP protection, but it is clear that changes will occur sooner or later and they will be not a good news for the companies and IP owners not only in Europe but around the world too. For example, what will happen with all current EUTMs, are they will stay valid in UK as was the case when Serbia and Montenegro split up.

Another possible IP complication could be if Scotland and North Ireland decide that they want to leave UK and stay in EU.

So to sum up, now we have Brexit but in the future we will have more or less IPexit too.

Barcelona lost a law case on KULE trademark

The General Court ruled in Case  Case T‑614/14 Fútbol Club Barcelona v European Union Intellectual Property Office (EUIPO). The case concerns an attempt for registration of an European trademark KULE for classes 14q 18q 25.

Against this mark an opposition was filed by Fútbol Club Barcelona based on an earlier well-known trademark CULE for classes 14q 18q 25.

EUIPO dismissed the opposition due to the fact that the football club failed to provide sufficient evidence for a genuine use of the mark as well as for its well-known status.

The club submitted different extracts from dictionaries and web sites mentioning the word CULE referring to Football Club Barcelona. According to the EUIPO all of this is indirect evidences and cannot constitute genuine use of the mark or prove its well-known status.

The Court upheld this decision.

Source: Marques Class 46.

The Rubik’s Cube trademark saga continues

The Advocate General SZPUNAR issued an opinion in Case C‑30/15 P Simba Toys GmbH & Co. KG v European Union Intellectual Property Office (EUIPO). The case concerns the following:

 On 1 April 1996 Seven Towns filed with the Office an application for registration of the trade mark formed by the three-dimensional sign represented below for ‘three-dimensional puzzles’ (‘the contested mark’) in Class 28:

That mark was registered on 6 April 1999 (No 162784).

On 15 November 2006 Simba Toys filed a request for a declaration of invalidity of that mark. By decision of 14 October 2008, the Cancellation Division of the Office rejected that request. On 23 October 2008 Simba Toys lodged an appeal against that decision.

By decision of 1 September 2009 (‘the contested decision’), the Second Board of Appeal of the Office dismissed the appeal.Dismissing the objection concerning Article 7(1)(e)(i) of Regulation No 207/2009, the Board of Appeal stated that the shape in question does not obviously embody the form of a puzzle and it cannot be considered that the shape results from the nature of the goods themselves. As regards the objection alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009, the Board of Appeal found inter alia that the essential features of the shape, and in particular ‘the cubic grid structure’, give no indication as to its function, or even whether it has any function.

 The judgment under appeal

By application lodged at the General Court Registry on 6 November 2009 Simba Toys brought an action for the annulment of the contested decision.

Simba Toys raised eight pleas in law, two of which — the second and third — concerned Article 7(1)(e)(ii) and (i) of Regulation No 207/2009 respectively.

In the judgment under appeal the General Court dismissed the action as unfounded in its entirety.

In paragraphs 27 to 77 of the judgment under appeal the General Court dismissed the second plea, which was divided into eight parts, alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009.

Citing the case-law of the EU Courts, and in particular the judgment in Lego Juris v OHIM, the General Court first identified the essential characteristics of the contested mark, holding they are composed of, first, the shape of a cube and, second, the grid structure shown on each surface of the cube .

The General Court then found that it is necessary to assess whether all of the essential characteristics perform the technical function of the goods concerned.

The Court cited paragraph 28 of the contested decision, which had been criticised by the appellant: ‘the grounds for invalidating a three-dimensional trade mark pursuant to Article 7(1)(e)(ii) [of the regulation] must be founded only on the examination of the representation of the mark as filed and not on any alleged or supposed invisible features’; the graphic representations of the contested mark ‘are not suggestive of any particular function, even when the goods, namely “three-dimensional puzzles”, are taken into account’; in making the assessment in this case no consideration should be given to the ‘well-known’ rotating capability of the ‘Rubik’s Cube’ puzzle, and the functionality should not ‘illegitimately’ be read ‘back’ into the representations; the cubic grid structure gives no indication as to its function, or even if it has any structure, and ‘[i]t is impossible to conclude that it may impart some [competitive] advantage or effect in the domain of three-dimensional puzzles’; and the shape under consideration offers ‘no clues to the puzzle that it embodies’.

The General Court dismissed the first, second and seventh parts of the second plea raised by the appellant alleging that the black lines on the grid of the cube ‘are the consequences of a technical function’ consisting in the rotation or other movement capability of the individual elements of the puzzle, or ‘perform that function’ by dividing the individual elements of the puzzle so that they are rotatable (paragraphs 56 to 62 of the judgment under appeal).

Similarly, the General Court dismissed the third and fourth parts of the plea concerning, respectively, the failure to take account of the public interest underlying the provision concerned, and criticism of the Office’s findings in that regard.

The General Court then dismissed the fifth part of the plea, in which the appellant alleged that, as in the present case, in the cases which gave rise to the judgments in Philips and Lego Juris v OHIM — Mega Brands (Red Lego brick) the technical function of the shapes in question was likewise not directly apparent from the signs.

Finally, the General Court dismissed the sixth and eighth pleas concerning, respectively, the lack of any other shapes that could perform the same technical function and the finding that similar three-dimensional puzzles were already known before the contested mark was applied for.

In paragraphs 78 to 83 of the judgment under appeal the General Court dismissed the plea alleging infringement of Article 7(1)(e)(i) of Regulation No 207/2009.

In the other grounds of the judgment the General Court declared unfounded the other pleas raised by the appellant and consequently dismissed the action in its entirety.

 Forms of order sought by the parties

In its appeal Simba Toys claims that the Court should set aside the judgment under appeal and annul the contested decision of the Board of Appeal and also order the Office and Seven Towns to pay the costs of both the appeal proceedings and the proceedings before the General Court.

The Office and Seven Towns contend that the Court of Justice should dismiss the appeal and order Simba Toys to pay the costs of the proceedings.

The General Advocate’s opinion:

In the light of the foregoing considerations, I propose that the Court should set aside the judgment under appeal, annul the decision of the Second Board of Appeal of EUIPO of 1 September 2009 (Case R 1526/2008-2) relating to cancellation proceedings between Simba Toys GmbH & Co. KG and Seven Towns Ltd, and also order the Office and Seven Towns to pay the costs of the proceedings before the General Court and the Court of Justice.

Fair copyright compensation granted from the State Budget – Advocate General opinion

The Advocate General of the European Court SZPUNAR issued his opinion in case C‑470/14 Entidad de Gestión de Derechos de los Productores Audiovisuales (EGEDA), Derechos de Autor de Medios Audiovisuales (DAMA) and Visual Entidad de Gestión de Artistas Plásticos (VEGAP) v Administración del Estado.

The case concerns the following:

The Entidad de Gestión de Derechos de los Productores Audiovisuales (Collecting Society for Audio-Visual Producers, or EGEDA), the Derechos de Autor de Medios Audiovisuales (Collecting Society for Audio-Visual Media Copyright, or DAMA) and the Visual Entidad de Gestión de Artistas Plásticos (Collecting Society for Visual Artists, or VEGAP) are Spanish intellectual property rights collecting societies. On 7 February 2013, they brought an action against Royal Decree 1657/2012 before the Tribunal Supremo (Supreme Court). Other intellectual property rights collecting societies were then given leave to take part in the proceedings.

The Administración del Estado (State Administration), defendant in the main proceedings, is supported by the Asociación Multisectorial de Empresas de la Electrónica, las Tecnologías de la Información y la Comunicación, de las Telecomunicaciones y de los contenidos Digitales (AMETIC), which is an association of undertakings operating in the IT sector.

In support of their claims, the applicants in the main proceedings submit inter alia that Royal Decree 1657/2012 is in two respects incompatible with Article 5(2)(b) of Directive 2001/29 as interpreted in the case-law of the Court. First, they submit, in essence, that Article 5(2)(b) requires that the cost of fair compensation granted to rightholders on the basis of the private copying exception should be borne, at least ultimately, by the persons who cause harm to their exclusive reproduction right as a result of this exception, whereas the scheme established by the Tenth Additional Provision of Royal Decree-Law 20/2011 and by Royal Decree 1657/2012 charges it to the State Budget, and therefore to all taxpayers. Secondly, they argue, in the alternative and in essence, that the fairness of this compensation is not guaranteed by Spanish law, inasmuch as Article 3 of Royal Decree 1657/2012 provides that a cap be imposed ex ante on the annual resources allocated to financing compensation, whereas the harm actually caused to rightholders by private copying can be ascertained only ex post.

In those circumstances, the Tribunal Supremo (Supreme Court) decided to stay proceedings and to refer the following questions to the Court for a preliminary ruling:

(1)  Is a scheme for fair compensation for private copying compatible with Article 5(2)(b) of Directive 2001/29 where the scheme, while taking as a basis an estimate of the harm actually caused, is financed from the General State Budget, it thus not being possible to ensure that the cost of that compensation is borne by the users of private copies?

(2)  If the first question is answered in the affirmative, is the scheme compatible with Article 5(2)(b) of Directive 2001/29 where the total amount allocated by the General State Budget to fair compensation for private copying, although it is calculated on the basis of the harm actually caused, has to be set within the budgetary limits established for each financial year?’

The Advocate’s opinion:

(1)  Article 5(2)(b) 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 financing of the fair compensation referred to therein from the General State Budget.

(2)  Article 5(2)(b) of Directive 2001/29 must be interpreted as precluding the amount of the fair compensation referred to therein being set within the budgetary limits established a priori for each financial year without the estimated harm to rightholders being taken into account for the purpose of setting the amount of compensation.

 

European Commssion’s report regarding design protection in EU member states

The European Commission published a report regarding protection of industrial designs on the territory of EU member states.

It assesses the dual system of design protection at both national and EU level, and evaluates its contribution to the Innovation Union.

It also considers whether the current legal framework requires updating in light of the technological advances and the modern requirements of users.

The study analyses the need for further harmonisation within and beyond the scope of the current Design Directive.

More information here.