Debranding screens can infringe Apple’s trademark too

The Supreme Court in Norway has ruled out in a lawsuits regarding the iPhone trademark.

The case concerns not original screens for iPhones imported into the country where the brand logo was covered up.

Initially the Court in Oslo ruled out that there was no infringement because the trademark was not been visible for the consumers.

The Supreme Court, however, overturned that decision stating the contrary. The arguments for this were the fact that although the brand was not visible the covering could be easily reversed in order to make the spare parts more valuable. This can create confusion whether the screen are original or not.

Apart from that, the target consumer group is not the end users but the repairers performing the installation in the repair shops. Because of this there was a higher degree of attention which can lead those consumers to the idea that the screens are counterfeit.

The Court cited the European Court’s position in the case Mitsubishi (C-129/17), where spare parts with even removed brands are considered as trademark infringements.

The only question that can bother the Court and the society as a whole in such cases is the fact that all infringed goods will be destroyed as a general rule of thumb which can reflect negatively on the environment. This issue is valid for most of the countries around the world where the legislation is similar. Probably the law has to stipulates an option at least for recycling.

Advertisement

Abercrombie & Fitch’s Store Front Sculpture can be protected by copyright

• 

The US Copyright Office Review Board has recently issued a decision according to which the following Abercrombie & Fitch’s Store Front Sculpture is copyright protectable:

Initially the Office refused to register this sculpture stating that it is not original enough due to the fact that it consists of ordinary elements such as letters and geometric shapes which are not protected by the US Copyright law.

The Board, however, revised this decision, punting out that although the single elements are not protectable, the whole combination of them can be protected in case that there is at least a minimum level of creativity.

At the case at hand, the Board considered that this is satisfied based on the particular combination between the letters A and F, the ampersand symbol, and the abbreviation “Co.”.

Recently the US Copyright Office ruled out the UEFA Champion League’s logo and Vodafone’s corporate logo is not sufficiently original and refused their registration in the US.

Source: IPKat.

Can Booking.com be a trademark – that’s the question

Megan Taylor (Novagraaf) published an interesting article for Lexology where she discusses the topic for registration possibilities of low distinctive or generic names as trademarks.

The case at hand concerns the Booking.com’s attempt to register this domain name as a word trademark in the US. So far all applications for such trademarks have been refused by the USPTO. The arguments for this were the fact the booking is descriptive word for accommodation services for which the registration was sought.

The company’s position, however, was that the presence of .com makes the difference because it helps consumer to associate the word with the company’s business and in that way to create secondary meaning for the word.

The USPTO considers that such words have to be left for free use by all market participants.

Currently this case is submitted to the US Supreme Court and everyone expect its position.

In contrast, Booking.com was more successful in the EU. They received registration for its word mark in 2007 after proving acquired distinctiveness among the consumers.

Having said that, however, the EUIPO has changed its practice on the matter and nowadays it is really difficult such generic words to be registered as word marks even in case of evidence for a secondary meaning.

Manchester United initiated lawsuits against “Football Manager” video game producers

One of the most famous football clubs in the world the UK Manchester United initiated lawsuits against SI and SEGA which are producers of the video game Football Manager.

The reason for this action was the fact that this video game includes the name of the club and a logo in red and white which although not similar to the original club’s emblem associate with it.

According to Manchester United, when consumers see the name of the football club they will recall about the original emblem. In addition, the video game providers allow using of patches through which gamers can use even the original club’s signs.

For the UK club, all of that ruin the opportunity for licensing revenues from the use of its intellectual property.

The lawyers of the SI and SEGA stated that the potential ban for using the club’s name will restrict the right to freedom of expression. What’s more, the club had no right to claim infringement because it had been aware for this use for years without doing anything. This means that Manchester United had acquiesced in the use of its name by the video game producers.

The court decision is expecting.

Source: UDL Intellectual Property – Christopher Banister, за Lexology.

Abercrombie & Fitch’s Store Front Sculpture can be protected by copyright

• 

The US Copyright Office Review Board has recently issued a decision according to which the following Abercrombie & Fitch’s Store Front Sculpture is copyright protectable:

• 

Initially the Office refused to register this sculpture stating that it is not original enough due to the fact that it consists of ordinary elements such as letters and geometric shapes which are not protected by the US Copyright law.

The Board, however, revised this decision, punting out that although the single elements are not protectable, the whole combination of them can be protected in case that there is at least a minimum level of creativity.

At the case at hand, the Board considered that this is satisfied based on the particular combination between the letters A and F, the ampersand symbol, and the abbreviation “Co.”.

Recently the US Copyright Office ruled out the UEFA Champion League’s logo and Vodafone’s corporate logo is not sufficiently original and refused their registration in the US.

Source: IPKat.

Brief IP news

1. Online content sharing – pay to play? For more information here.  

2. Thinking of moving your business online? Follow these tips. For more information here.  

3.  Looking for IP pro bono providers. For more information here. 

Source: Intellectual Property Center at the UNWE. More information can be found here.

Can a bicycle’s design to be protected by copyright? – the Brompton Bicycle case in the EU

The European Court has ruled in case C‑833/18 Brompton Bicycle Ltd срещу Chedech/Get2Get, which concerns the possibility a bicycle’s design decision to be protected by copyright. The background is as follow:

Brompton, a company incorporated under English law whose founder is SI, markets a folding bicycle, sold in its current form since 1987 (‘the Brompton bicycle’).

The Brompton bicycle, the particular feature of which is that it can have three different positions (a folded position, an unfolded position and a stand-by position enabling the bicycle to stay balanced on the ground), was protected by a patent which has now expired.

For its part, Get2Get markets a bicycle (‘the Chedech bicycle’) which is visually very similar to the Brompton bicycle and which may fold into the three positions mentioned in the preceding paragraph.

On 21 November 2017, SI and Brompton brought an action before the Companies Court, Liège, Belgium seeking a ruling that Chedech bicycles infringe Brompton’s copyright and SI’s non-pecuniary rights and, consequently, an order that Get2Get cease its activities which infringe their rights and withdraw the product from all sales outlets.

In its defence, Get2Get contends that the appearance of the Chedech bicycle is dictated by the technical solution sought, which is to ensure that the bicycle can fold into three different positions. In those circumstances, such appearance could be protected only under patent law, not under copyright law.

The applicants in the main proceedings claim that the three positions of the Brompton bicycle can be obtained by shapes other than those given to that bicycle by its creator, which means that its shape may be protected by copyright.

The Companies Court, Liège observes that, under Belgian law, any creation is protected by copyright when it is expressed in a particular shape and is original, which means that a utilitarian object, such as a bicycle, may be protected by copyright. In that regard, although shapes necessary to obtain a technical result are excluded from copyright protection, the fact remains that doubt arises when such a result can be obtained by means of other shapes.

The referring court states that, in the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), which was delivered in the field of design law, the Court interpreted Article 8(1) of Regulation No 6/2002 as meaning that, in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

It asks, therefore, whether a similar solution should be adopted in the field of copyright when the appearance of the product in respect of which copyright protection is sought under Directive 2001/29 is necessary in order to achieve a particular technical effect.

In those circumstances, the Companies Court, Liège decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Must EU law, in particular Directive [2001/29], which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?

(2) In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:

–   The existence of other possible shapes which allow the same technical result to be achieved?

–   The effectiveness of the shape in achieving that result?

–    The intention of the alleged infringer to achieve that result?

–    The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The Court’s decision:

Articles 2 to 5 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 meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings.