Brief IP news

briefs_1131.  Mexico to use the list of terms from the harmonised database in TMclass. For more information here.

2. Digital royalties to creators top €1 billion as global collections rise 6.2% to €9.6 billion. For more information here.

3. How to label your European Year of Cultural Heritage 2018 event? For more information here.

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PepsiCo won a crisp lawsuit in the EU

snack-1555522_960_720PepsiCo won lawsuit T‑82/17 before the General Court of the European Union regarding invalidation of ‘Exxtra Deep’ European trademark registered by the German-based company Intersnack Group for classes 29, 30 and 31.

According to PepsiCo, this trademark is descriptive and devoid of distinctive character for the goods in the above-mentioned classes.

The EUIPO upheld the invalidation partly, accepting that DEEP can be used from manufacturers to describe the crisp deep ridges, that is to say, the product shape. For some of the products, however, the trademark is not descriptive, namely for dried fruits and preserved vegetables.

PepsiCo appealed this decision.

According to the General Court, the EUIPO erred in its assessment because crisp can be produced based on fruits and vegetables too.

First, as is expressly indicated in the description of the goods in Class 29 covered by the contested mark, snack products (in particular crisps) are made from potatoes, which, it cannot be denied, are vegetables, as demonstrated in particular by the definition in the Oxford English Dictionary, produced by the applicant before EUIPO, according to which a vegetable is ‘any living organism that is not an animal; specifically one belonging to the plant kingdom’. That fact is not disputed by the intervener.

Second, crisps can be made from vegetables other than potatoes, or from fruit, as the applicant points out.

Third, there is nothing to prevent crisps made from vegetables or from fruit from being regarded as dried or cooked vegetables or fruits. As the applicant notes, crisps can be fried or dried or cooked.

Fourth, as the applicant correctly states, fruit and vegetables in Class 29 are ‘preserved, dried and cooked’. They are not fresh fruit, which comes under Class 31. Crisps, or more broadly, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, are produced from preserved, dried or cooked vegetables and fruits.

Thus, on the grounds put forward by the applicant, which are not disputed by EUIPO, ‘extruded and pelletised or otherwise manufactured or processed vegetable and potato products for snacks’, in Class 29, are covered by the category of ‘preserved, dried and cooked fruit and vegetables’ in the same class.

EPO launched a new beta version of ESPACENET

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The European Patent Office launched the beta version of its refreshing database for patent searching ESPACENET. The new version is more modern, dynamic, intuitive and it is optimised to work on different devices including desktop PCs, tablets and smartphones.

The beta version is accessible here. For more information about it, you can watch the hereunder video presentation. EPO encourages sending feedback, which can be done from here.

How Tesco kept the surprise about its new stores?

shop-2607121_960_720Claire Jones (Novagraaf) published an interesting article for Lexology which presents Tesco’s approach regarding the launch of its new retail stores in the UK and what is common with the trademark strategy that the company used.

Tesco, as one of the biggest retailer in the country, decided to launch new stores that would compete directly with Lidl and Aldi under Jack’s brand.

The company desire was to keep this in a complete secrecy because of which Tesco signed non-disclosure agreements with its employees and partners.

So far so good, but what about the trademark protection that this new brand needs. If the company had filed an application in the UK or the EU this would have revealed its intentions to some extent.

To prevent this, Tesco filed for a trademark Jack’s in Sri Lanka for all classes of the Nice classification.

You may ask how this does help the company bearing in mind that the stores are in Europe?

Well according to the Paris Convention for protection of industrial property, if you file for a trademark in one Member State of the Convention and within 6 months you do this in another Member State for the same mark, your second application can use the priority date of the first one.

So in the case of Tesco they did exactly this. Of course, this by itself doesn’t mean that you will register successfully your mark because, for example, owners of earlier identical or similar marks can oppose you. Nevertheless, such a strategy can help you to hide your moves to your competitors.

The full text can be found here.

 

 

Are we on the verge of a new transport revolution?

auto-2651594_960_720.pngAccording to the European Patent Office, we will face a new transport revolution soon considering patent filing trends. Statistics show that there is 330% growth of patent applications related to autonomous driving vehicles between 2011 and 2017. For comparasion, the growth for all other technologies for the same period is 16%.

Curious or not, the applicants of these patents are not only the automobile companies but different tech companies too. The biggest applicants in that regard are Samsung (624 patent filings), followed by Intel (590), Qualcomm (361), LG (348), and Bosch (343).

For more information here.

 

The taste of food is not subject to copyright protection according to the EU Court

pexels-photo-1435184The European Court issued a decision on the case C‑310/17 Levola Hengelo BV vSmilde Foods BV which in brief concerns the question whether the taste of foods can be protected by copyrights.

The background is as follow:

‘Heksenkaas’ or ‘Heks’nkaas’(‘Heksenkaas’) is a spreadable dip containing cream cheese and fresh herbs, which was created by a Dutch retailer of vegetables and fresh produce in 2007. By an agreement concluded in 2011 and in return for remuneration linked to the turnover to be achieved by sales of Heksenkaas, its creator transferred his intellectual property rights over that product to Levola.

A patent for the method of manufacturing Heksenkaas was granted on 10 July 2012.

Since January 2014 Smilde has been manufacturing a product called ‘Witte Wievenkaas’ for a supermarket chain in the Netherlands.

Levola took the view that the production and sale of ‘Witte Wievenkaas’ infringed its copyright in the ‘taste’ of Heksenkaas and brought proceedings against Smilde before the Rechtbank Gelderland (Gelderland District Court, Netherlands).

After stating that, from its point of view, copyright in a taste refers to the ‘overall impression on the sense of taste caused by the consumption of a food product, including the sensation in the mouth perceived through the sense of touch’, Levola asked the Rechtbank Gelderland (Gelderland District Court) to rule (i) that the taste of Heksenkaas is its manufacturer’s own intellectual creation and is therefore eligible for copyright protection as a work, within the meaning of Article 1 of the Copyright Law, and (ii) that the taste of the product manufactured by Smilde is a reproduction of that work. It also asked that court to issue a cease and desist order against Smilde in relation to all infringements of its copyright and, in particular, in relation to the production, purchase, sale, supply or other trade in the product known as ‘Witte Wievenkaas’.

By judgment of 10 June 2015, the Rechtbank Gelderland (Gelderland District Court) held that it was not necessary to rule on whether the taste of Heksenkaas was protectable under copyright law, given that Levola’s claims had, in any event, to be rejected since it had not indicated which elements, or combination of elements, of the taste of Heksenkaas gave it its unique, original character and personal stamp.

Levola appealed against that judgment before the referring court.

The latter considers that the key issue in the case before it is whether the taste of a food product may be eligible for copyright protection. It adds that the parties to the main proceedings have adopted diametrically opposed positions on this issue.

According to Levola, the taste of a food product may be classified as a work of literature, science or art that is eligible for copyright protection. Levola relies by analogy, inter alia, on the judgment of 16 June 2006 of the Hoge Raad der Nederlanden (Supreme Court of the Netherlands), Lancôme (NL:HR:2006:AU8940), in which that court accepted in principle the possibility of recognising copyright in the scent of a perfume.

Conversely, Smilde submits that the protection of tastes is not consistent with the copyright system, as the latter is intended purely for visual and auditory creations. Moreover, the instability of a food product and the subjective nature of the taste experience preclude the taste of a food product qualifying for copyright protection as a work. Smilde further submits that the exclusive rights of the author of a work of intellectual property and the restrictions to which those rights are subject are, in practical terms, inapplicable in the case of tastes.

The referring court notes that the Cour de cassation (Court of Cassation, France) has categorically rejected the possibility of granting copyright protection to a scent, in particular in its judgment of 10 December 2013 (FR:CCASS:2013:CO01205). There is therefore divergence in the case-law of the national supreme courts of the European Union when it comes to the question –– which is similar to that raised in the case in the main proceedings –– as to whether a scent may be protected by copyright.

In those circumstances, the Gerechtshof Arnhem-Leeuwarden (Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  (a) Does EU law preclude the taste of a food product — as the author’s own intellectual creation — being granted copyright protection? In particular:

(b) Is copyright protection precluded by the fact that the expression “literary and artistic works” in Article 2(1) of the Berne Convention, which is binding on all the Member States of the European Union, includes “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”, but that the examples cited in that provision relate only to creations which can be perceived by sight and/or by hearing?

(c) Does the (possible) instability of a food product and/or the subjective nature of the taste experience preclude the taste of a food product being eligible for copyright protection?

(d) Does the system of exclusive rights and limitations, as governed by Articles 2 to 5 of Directive [2001/29], preclude the copyright protection of the taste of a food product?

(2) If the answer to question 1(a) is in the negative:

(a) What are the requirements for the copyright protection of the taste of a food product?

(b) Is the copyright protection of a taste based solely on the taste as such or (also) on the recipe of the food product?

(c) What evidence should a party who, in infringement proceedings, claims to have created a copyright-protected taste of a food product, put forward? Is it sufficient for that party to present the food product involved in the proceedings to the court so that the court, by tasting and smelling, can form its own opinion as to whether the taste of the food product meets the requirements for copyright protection? Or should the applicant (also) provide a description of the creative choices involved in the taste composition and/or the recipe on the basis of which the taste can be considered to be the author’s own intellectual creation?

(d) How should the court in infringement proceedings determine whether the taste of the defendant’s food product corresponds to such an extent with the taste of the applicant’s food product that it constitutes an infringement of copyright? Is a determining factor here that the overall impressions of the two tastes are the same?’

The Court’s 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 must be interpreted as precluding (i) the taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

Asics lost a lawsuit before the EU Court regarding its logo

sneaker-1024978_960_720The well-known Japan producer of  footwear and sports equipment Asics lost a lawsuit before the European Court regarding an opposition filed by the company against the following figurative European trademark for classes 18, 24 и 25:

download (1).pngAgainst this mark, Asics submitted the following earlier EU and Spanish marks in classes 18, 25 и 28:

download.pngThe EUIPO rejected the opposition considering the signs as not confusingly similar. The decision was appealed but the European court upheld it.

According to the to Court:

It should be noted that the mark applied for is composed of four thin straight black lines with a serrated outline. Two of those lines, placed in parallel, go upwards diagonally from left to right and cross, in their middle, two other shorter parallel lines, going downwards diagonally from left to right.

As regards the earlier marks, they are composed of four thick black lines. Two straight lines go downwards diagonally from left to right, while moving slightly apart from each other, and cross two converging curved lines which go upwards from left to right. The convergence and crossing of the straight lines and the curved lines give the earlier marks, which may be perceived as the letter ‘x’ superimposed on the letter ‘v’ or on the character ‘’, an impression of movement.

Thus, even if the consumer does not recall details such as the size or thickness of the lines, the overall impression between, on the one hand, thick lines and curves forming a letter ‘x’ superimposed on a character ‘’ and, on the other hand, thin straight lines that can be perceived as a character ‘#’ inclined backwards to 45 degrees is so different that the consumer will not make a connection between the signs at issue solely on the basis that they are both composed of parallel lines crossing two other longer lines.

In the light of the foregoing, the Board of Appeal found correctly that the overall impression given by the marks at issue was different, which leads to the conclusion that there is no visual similarity.

The Asics’ argument that the signs are similar even more when the way how Asics’ marks are used on some of their products is taken into account was dismissed because the only thing which is relevant for the comparison is the way how signs are registered.

The well-known status of the earlier marks was not be considered too because the Court found that marks weren’t similar enough.

The full text of the decision can be found here.