1. 2017 summed up: annual report video now available. For more information here.
2. IP enforcement. For more information here.
3. Internet images – know your position. For more information here.
The Eurasian Economic Union (EAEU) is an economic union between Russia, Armenia, Belarus, Kazakhstan, and Kyrgyzstan, which resembles the EU in some way.
From that point of view, Liudmila Serova (Gorodissky & Partners) published a very intriguing article for Lexilogy, which discusses how you can register trademarks in EAEU. In brief, there are three main ways in that regard:
More information can be found here.
The Advocate General of the European Court M. SZPUNAR gave its opinion in case C‑149/17 Bastei Lübbe GmbH & Co. KG versus Michael Strotzer. The case concerns the following:
(not an official translation, by google translate)
As a producer of phonograms, Bastei Lübbe AG, a company incorporated under German law, is the holder of copyright and related rights in the audiobook.
Mr Michael Strotzer is the owner of an internet connection through which, on 8 May 2010, this audio recording was shared for downloading with an unlimited number of users on a peer-to-peer file sharing platform. An expert determines with precision that the IP address belongs to Mr Strotzer.
By letter of 28 October 2010, Bastei Lübbe invited Mr Strotzer to suspend the infringement of copyright. As the latter did not comply with that invitation, Bastei Lübbe brought an action before the Amtsgericht München (Munich Regional Court, Munich) for pecuniary damages against Mr Strotzer as the owner of the IP address in question.
Mr Strotzer, however, denies himself having infringed the copyright and maintains that his Internet connection is sufficiently protected. He further claims that his parents had access to the link in question but who, to the best of his knowledge, did not have the audiobook on their computer, did not know about it and did not use the online software file sharing. At the time of the infringement in question, the computer was disconnected.
The Amtsgericht München (District Court, Munich) dismissed the action for damages brought by Bastei Lübbe on the ground that Mr Strotzer could not be accepted as the perpetrator of the alleged copyright infringement because he indicated that his parents have committed this infringement. Bastei Lübbe appealed to the Landgericht München I (District Court, Munich I, Germany) – the referring court in the present case.
The referring court is inclined to accept that Mr Strotzer is liable as the perpetrator of the alleged infringement of copyright, as it does not follow from his explanations that at the time the infringement was committed the internet connection was used by a third party, which is very likely to be the perpetrator. However, the referring court faces difficulties with regard to the Bundesgerichtshof (Federal Supreme Court) (Germany) case-law, in which it considers that the conviction of the defendant might contradict it.
It is true that, according to the case-law of the Bundesgerichtshof (Federal Supreme Court), as interpreted by the referring court, the applicant is required to set out facts from a legal and factual point of view and has the burden of proving the infringement of copyright. Furthermore, the Bundesgerichtshof takes the view that there is a factual presumption that such an infringement was committed by the internet link holder since no other person was able to use that internet connection at the time of the infringement. However, if the internet connection is not sufficiently protected or deliberately provided for use by other persons at the time of the breach, there is no such factual presumption that the breach has been committed by the link holder.
In such cases, the Bundesgerichtshof (Federal Supreme Court) case-law nevertheless entrusts the holder of the internet connection with a secondary obligation to state the facts in law and in fact. The latter fulfills this secondary obligation when he points out that other persons whose identity may be revealing have separate access to his Internet connection and may therefore have allegedly infringed copyright. However, if a family member had access to the internet connection in question, its holder is not obliged to provide further details on the timing and use of this link in view of the protection of marriage and the family guaranteed by Article 7 of the Charter of Fundamental Rights of the European Union (hereinafter referred to as “the Charter”) and the relevant provisions of German constitutional law.
In those circumstances, the Landgericht München I (District Court, Munich I) decided to stop the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘(1) Must Article 8 (1) and (2) in conjunction with Article 3 (1) of Directive 2001/29 be interpreted as meaning that penalties for infringements of the right to make a work available to the public continue to be’ dissuasive “and excluding liability for damage caused by an Internet connection owner through which Fileharing (” file sharing “) has been infringed if the Internet connection owner identifies at least one member of the family, which he had with him access to that Internet connection without, however, communicating more detailed details of the timing and use of the Internet by that member of the family by means of relevant studies?
2. Must Article 3 (2) of Directive 2004/48 be interpreted as meaning that measures for the enforcement of intellectual property rights continue to be ‘effective’ and where the liability for harm caused by an internet connection , which infringes copyright through Filesharing (“File Sharing”) if the Internet connection owner indicated at least one member of the family who, along with him, had access to that Internet connection but did not announced y by means of relevant studies, made more detailed details on the timing and use of the Internet by this family member? “
The Advocate General’s opinion:
‘Article 8 (2) of Directive 2001/29 / EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society and Article 13 (1) of Directive 2004/48 EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as not requiring in the domestic law of the Member States the introduction of a presumption of liability of the internet owner for infringements of the copyrights made through this connection. However, if domestic law provides for such a presumption in order to ensure the protection of those rights, that presumption must be applied consistently in order to ensure the effectiveness of the protection. The right to respect for family life recognized in Article 7 of the Charter of Fundamental Rights of the European Union cannot be interpreted in such a way as to deprive copyright holders of any real possibility of protecting their intellectual property rights enshrined in Article 17 (2) of the Charter of Fundamental Rights. “
Red Bull won an opposition against the following UK trademark application in Class 11 – barbecue smokers and grills, pellet smokers and grills.
The opposition was based on an earlier word mark RED BULL and the following figurative mark, both in Class11:
According to the the UKIPO, there is a phonetic similarity between the sign which shares identical first part Red Bull. The presence of the words BBQ Grills in the later mark is not sufficient to differentiate them due to its lack of distinctiveness.
From a conceptual point of view, both marks are highly similar wheres from a visual side they are not because of the different graphical representations.
The earlier marks are within their 5 year period for use, so there is no need for a genuine use to be proved although Red Bull doesn’t use its trademarks for such goods.
In its conclusion, the Patent Office summarized that the signs at hand are similar to the extent that they can lead consumers to think that the goods are produced by the same or an economically linked undertaking.
1. First Edition of the EUIPO Trade Mark and Design Education Programme. For more information here.
2. Pharmaceuticals: European Commission refines intellectual property rules. For more information here.
3. Vtree Energy: Building a solar future through intellectual property. For more information here.
Source: Intellectual Property Center at the UNWE. More information can be found here
The European court ruled in case C‑44/17 Scotch Whisky Association v Michael Klotz, which concerns the following:
The Scotch Whisky Association is an organisation constituted under Scottish law. Its objectives include protecting the trade in Scottish whisky both in Scotland and abroad.
Mr Klotz markets, via a website, a whisky under the designation ‘Glen Buchenbach’, which is produced by the Waldhorn distillery in Berglen, located in the Buchenbach valley in Swabia (Germany).
The label on the whisky bottles in question includes, in addition to a stylised depiction of a hunting horn (Waldhorn in German), the following information: ‘Waldhornbrennerei’ (Waldhorn distillery), ‘Glen Buchenbach’, ‘Swabian Single Malt Whisky’, ‘500 ml’, ‘40% vol’, ‘Deutsches Erzeugnis’ (German product), ‘Hergestellt in den Berglen’ (produced in the Berglen).
The Scotch Whisky Association brought an action before the Landgericht Hamburg (Regional Court, Hamburg, Germany) seeking an order that Mr Klotz, inter alia, cease to market that whisky, which is not Scotch whisky, under the designation ‘Glen Buchenbach’, on the ground that use of that designation infringes, in particular, Article 16(a) to (c) of Regulation No 110/2008, which protects the geographical indications registered in Annex III to that regulation, which include ‘Scotch Whisky’.
According to the Scotch Whisky Association, those provisions ensure that a geographical indication registered for a spirit drink is protected not only against the use of such an indication but also against any reference that suggests the geographical origin of that indication. It argues that because the designation ‘Glen’ is very widely used in Scotland instead of the word ‘valley’ and, in particular, as an element of the trade mark in the names of Scottish whiskies, it evokes in the relevant public an association with Scotland and Scotch Whisky despite the fact that other information is included on the label, which specifies that the product at issue is of German origin. Mr Klotz contends that the action should be dismissed.
The Landgericht Hamburg (Regional Court, Hamburg) states that whether the claim is to succeed depends on the interpretation to be given to Article 16(a) to (c) of Regulation No 110/2008. It has therefore decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1) Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of [Regulation No 110/2008] require that the registered geographical indication be used in identical or phonetically and/or visually similar form, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?
If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?
(2) Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of [Regulation No 110/2008] require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?
If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?
(3) When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of [Regulation No 110/2008], does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’
The Court decision:
1. Article 16(a) of Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89 must be interpreted as meaning that, for the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. Accordingly, it is not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the geographical area relating thereto.
2. Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, the referring court is required to determine whether, when the average European consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. In making that determination, the referring court, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the protected geographical indication and (ii) any partial incorporation of that indication in that designation, must take account of the conceptual proximity, if any, between the designation and the indication.
Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned.
3. Article 16(c) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is a ‘false or misleading indication’, as prohibited by that provision, account is not be taken of the context in which the disputed element is used.
The European court has issued an important decision regarding the well-known case C‑163/16, Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV. The case concerns the following:
Christian Louboutin designs and produces shoes.
On 28 December 2009, Mr Louboutin filed an application for registration of a Benelux trade mark with the Benelux Office for Intellectual Property, leading to the registration, on 6 January 2010, under number 0874489, of a trade mark 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, and corresponding to the following description: ‘Footwear (other than orthopaedic footwear)’ (‘the mark at issue’).
That mark is reproduced below:
In the application for registration, the mark at issue is described as follows:‘The mark consists 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 trademark but is intended to show the positioning of the mark)’.
On 10 April 2013, the registration was amended in such a way as to limit the goods covered to ‘High-heeled shoes (other than orthopaedic shoes)’.
In the course of 2012, Van Haren, which operates shoe retail outlets in the Netherlands, sold high-heeled women’s shoes with red soles.
On 27 May 2013, Christian Louboutin initiated proceedings before the Rechtbank Den Haag (District Court, The Hague, Netherlands), claiming that Van Haren had infringed the mark at issue. On 17 July 2013, that court delivered a default judgment upholding in part the claims of Christian Louboutin.
Van Haren challenged that judgment before the referring court, the Rechtbank Den Haag (District Court, The Hague), claiming that the mark at issue was invalid on the basis of Article 2.1(2) of the Benelux Convention. Van Haren maintains that that mark is a two-dimensional figurative mark that consists of a red coloured surface.
The Rechtbank Den Haag (District Court, The Hague) considers, first, having regard to the graphic representation and the description of the mark at issue, that the colour red is inextricably linked to the shoe sole and therefore that mark cannot be regarded merely as a two-dimensional figurative mark. In the view of the referring court, that assessment is not undermined by the fact that the description of that mark states that ‘the contour of the shoe does not form part of the mark’. The referring court states that, on the contrary, that assessment is confirmed by that specification, in particular since, according to the description, the shape of the shoe, as illustrated in the graphic representation of the mark at issue, is not intended to reduce the sign to a two-dimensional mark, but is intended rather to show the positioning of that mark.
The referring court also considers that, in autumn 2012, ‘a significant proportion of consumers of women’s high-heeled shoes in the Benelux States was able to identify [Christian Louboutin] shoes as goods originating from that producer and was thus able to distinguish them from women’s high-heeled shoes [from] other undertakings’. Therefore, at that time, the mark at issue was perceived as a trade mark in relation to those goods.
Furthermore, in the view of the referring court, the red sole gives substantial value to the shoes marketed by Christian Louboutin since that colour forms part of the appearance of those shoes and plays an important role in a consumer’s decision to purchase them. In that regard, the referring court notes that Christian Louboutin first used red colouring on soles for aesthetic reasons and only later started regarding it as an identifier of origin and using it as a trade mark.
Lastly, the referring court states that, since the mark at issue consists of a colour which is applied to the sole of a shoe and is thus also an element of the product, the question arises as to whether the exception set out in Article 3(1)(e)(iii) of Directive 2008/95 applies to that mark. In that regard, it is unsure whether the concept of ‘shape’, within the meaning of that provision, is limited solely to three-dimensional properties of a product, such as its contours, measurements and volume, or whether that concept also covers properties that are not three-dimensional.
In those circumstances, the Rechtbank Den Haag (District Court, The Hague) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:
‘Is the notion of “shape”, within the meaning of Article 3(1)(e)(iii) of [Directive 2008/95] (respectively referred to in the German-, [Dutch-] and French-language versions of [that directive] as “Form”, “vorm” and “forme”), limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non-three-dimensional) properties of the goods, such as their colour?’
The Court’s decision:
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 must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of that provision.