Puma partially won an EU dispute thanks to its strong trademark reputation

The European Court has ruled in the Case T‑71/20 Puma SE v CAMäleon Produktionsautomatisierung GmbH.

It refers to a dispute related to a European trademark application for PUMA SOLUTION filed by CAMäleon for the following goods and services:

_{–  Class 7: ‘Machine tools for machining and cutting profiles; cross-cut saws and circular saws for wood and light alloys; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); packaging machines; automatic warehouses; robots; machines for treatment of PVC; power screwdriver; painting machines; machines for the production of door and window frames; machines for assembling shuttering components; machines for processing aluminium, plastic and steel profiles, in particular for the window, door and facade industry; table and mitre saws; double mitre saws; automatic saws; wedge-cutting and V-cutting saws; milling machines; copy milling cutters; end milling cutters and automatic notching machines; water slot milling cutters; corner crimping machines; rod machining centres; welding machines; roughcasting machines; welding and cleaning lines; bending machines, including bending furnaces and bending installations; screw systems for reinforcing profiles; drilling machines, drilling rigs; punching; stops for machines for processing aluminium, plastic and steel profiles; assembly stands and assembly tables; rotary tables; saw fences for use on table saws; metalworking machine tools’;}

_{–  Class 9: ‘Computer hardware; computer software; computer hardware and software for the management of door and window frame production cycles and installations; magnetic and optical data carriers; computer programmes [programs], recorded; computers; computer peripheral devices; computer hardware and software for automation purposes; computer hardware and software for the management of machine tools; warehouse management systems; management systems for door and window frame production installations; communications systems for data relating to the production, assembly, storage, delivery of door and window frames; automatic handling systems for door and window frame production installations; cell phones; portable computers; printers for computers; programs for personal computers, mobile telephones and handheld computers; heatdetectors; level indicators; headphones; headsets; cables for personal computers, mobile telephones and palmtop computers; bar code readers; measuring instruments; programs for computers; computer-aided design (CAD) software; software for estimating, selling, designing and producing shuttering and curtain walls; software for programming and managing machine tools; software for checking (supervision) of industrial production and automation; computer programs for estimating, selling, designing and producing shuttering and curtain walls; computer programs for programming and managing machine tools; computer programs for checking (supervision) of industrial production and automation; software for the management of door and window frame production cycles and installations; computer programs for managing shuttering production cycles and installations; computers; peripherals adapted for use with computers; magnetic and optical data carriers; data-processing equipment and computers’;}

–  _{Class 16: ‘Catalogues relating to computer software; computer software operating manuals; instruction manuals; instruction manuals for personal computers, mobile telephones and palmtop computers; instruction manuals for the certification of door and window frames; printed forms; printed matter for promoting and selling software for designing, producing and/or selling doors, windows and partitions; printed matter for promoting and selling software for managing machine tools and checking (supervision) of industrial production and automation; books; user manuals (handbooks) for computer programs for designing, producing and/or selling doors, windows and partitions; user manuals (handbooks) for computer programs for managing machine tools and checking (supervision) of industrial production and automation’;}

–   _{Class 42: ‘Updating and maintenance of computer software and programs; configuring computer hardware using software; configuration of computer networks by software; configuration of computer software; computer hardware and software consultancy; creation, maintenance and adaptation of software; installation, maintenance, updating and upgrading of computer software; computer systems integration services; rental of computer hardware and computer software; design, development and implementation of software; computer software research; computer software technical support services; technical project studies in the field of computer hardware and software; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (CAD/CAM); development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; upgrading of computer software; development and testing of computing methods, algorithms and software; computer programming; testing, analysis and evaluation of the goods and services of others for certification purposes; computer programming in relation to applications for designing, producing and/or selling doors, windows and partitions; computer programming in relation to applications for managing machine tools and checking (supervision) of industrial production and automation; creating programmes for data processing.’}

Against this application an opposition was filed by the well-known sportswear producer Puma based on really registered trademarks for PUMA in classes 18, 25, 28.

On top of that, Puma claimed a trademark with reputation on the territory of the EU.

The EUIPO found both marks similar and the fact the earlier mark has a reputation. However the Office concluded that there was no possibility for a consumer confusion because the goods in both signs were completely dissimilar with a few exceptions in class 9. So the Office dismissed the opposition for almost all goods and services.

With regard to the reputation, according the EU law, a trademark with a reputation is able to stop later marks even for dissimilar goods or services in case these three cumulative conditions are met:

• both marks must be identical or similar,
• the earlier mark must have a reputation, and
• that there must be a likelihood that the use of the later mark will take unfair advantage of the distinctive character or the earlier mark’s reputation.

According to the EUIPO, the third requirement was not fulfilled because the target audiences of both signs were so different.

This decision was appealed by Puma.

According to the General Court of the European Union, a presence of reputation is not enough to affirm the existence of a link between two trademarks.

On the other hand, the Court found an error in the EUIPO decision. The Office done an  incomplete examination of the goods and services covered by the mark applied for focusing only on fact that the goods are used by industry professionals. According to the Court, some of the goods and services can be used by the general public too. From that point of view, the target audiences of both sign can overlap to some extent. For the rest of the goods and services, however, there was no evidence that the later mark would take unfair advantages from the reputation of the earlier one.

Taking into account all of this, the Court upheld partially the Puma’s appeal and confirmed the opposition for the following goods and services:

• Class 7: ‘power screwdriver’;
• Class 9: ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’, ‘peripherals adapted for use with computers’, ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’;
• Class 16: ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’;
• Class 42: ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’;

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When Brownies trademarks are really used?

When it comes to protection of trademarks, the law requires these trademarks to be genuine used within 5 years after their registration. If this doesn’t happen or the use is ceased for 5 consecutive years one registered trademark can be revoked.

This is used often in opposition procedures by trademark applicants who ask the opposition applicant to prove trademark use for a period of 5 years. If there is no evidence for such use, oppositions are dismissed.

The General Court has ruled in case T‑598/18 that concerns such a situation. The case background is as follow:

On 30 April 2015, Mr Juan Morera Morral filed an application for registration of an EU trade mark for BROWNIE in classes 18, 25 and 35.

Against this application an opposition was filed by The Guide Association based on earlier marks for BROWNIES and BROWNIE for similar goods and services.

On 26 August 2016, the applicant requested that the intervener furnish proof that the earlier trade mark had been put to genuine use.

On 18 January 2017, the intervener produced several documents, consisting of an affirmed statement by its Corporate Resources Director (‘the affirmed statement’) and five annexes, as proof of genuine use of the earlier mark (‘the second series of documents’). One of the marks was used in this graphic representation:

On 23 October 2017, the Opposition Division partially upheld the opposition. In particular, it considered that the intervener had furnished proof of genuine use of the earlier trade mark for the goods and services such as ‘Key rings’; ‘Rucksacks; daysacks; bags for children’; ‘Articles of clothing, all for girls’; ‘Badges; emblems; ribbons; embroidery; patrol names, shoulder patches, all in the nature of embroidery; woggles’; ‘Organisation of group activities in the education, cultural, training and entertainment fields; provision of courses of instruction and training in camping, sports, homemaking, wood-craft’.

In addition, it found that there was a likelihood of confusion between the marks at issue.

On 18 December 2017, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

By decision of 4 July 2018 the Second Board of Appeal of EUIPO dismissed the appeal. In particular, first, it found that the intervener had furnished proof of genuine use of the earlier trade mark in respect of some of the goods and.

This decision was appealed again.

The General Court dismissed the appeal. In brief, according to the Court, one word trademark can be deemed as used even represented in graphics and colors if there are no significant differences with its dominant and distinctive elements. In the case at hand, although used in a graphic representation, the dominant and distinctive element is still the word part. From that perspective this constitutes proof of use of the registered word mark.

France introduces a new weapon against online piracy

France has introduced new bill targeting online piracy. France’s National Assembly has approved a law based on which holders of copyright and related rights will be able to ask courts for the so-called dynamic injunctions. The purpose of these injunctions is to block all websites and servers that broadcast illegal content.

What’s more, such injunctions will be valid for a year saving copyright owners time and money to keep them in place. In addition, these injunctions will block “mirror” websites that are created for broadcasting of illegal content in an attempt to shirk an already issued injunction.

This new bill is welcomed by all right holders, especially those related to broadcasting of sport events where piracy is a significant problem.

Even before this new law right holders were able to rely on injunctions but the procedure was slower and not completely on par with the dynamic nature of the online broadcasting.

Source: WIPR.

Salesforce lost a trademark dispute in the UK

One of the biggest software companies in the world Salesforce lost a trademark dispute in the UK.

The case concerns a trademark application filed by Syft Online for “SyftForce” for classes 9 (computer software), 35 (personnel placement and recruitment services, 38 ( telecommunications services), 41 (education services) and 42 (software as a service).

Against this application an opposition was filed by Salesforce based on earlier trademarks for SALESFORCE and SOCIALFORCE for similar goods and services.

The UKIPO focused its attention only on the SALESFORCE earlier mark. According to the Office both signs have some visual and phonetic similarities. However this is not enough for a general conclusion that the mark applied for can create a consumer confusion.

The reason for this was the fact that the shared part in both signs – FORCE has low distinctive character in regard to the goods and services covered by the new trademark application.

According to the Cambridge Dictionary, force means a group of people organized and trained, especially for a particular purpose.

Based on this the Office dismissed the opposition in its entirety.

The case is a good example for words with low distinctiveness that are used as trademarks. In some cases such words cannot be protected at all. In other cases, when they are part of complex trademarks with more words or graphics, they can weak their protection abilities.

Source: WIPR.

Pakistan joins the Madrid Protocol for international registration of trademarks

WIPO reports about the accession of the Islamic Republic of Pakistan to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Protocol will come into force for the country on 24.05.2021 after which Pakistan can be designated in applications for international trademarks.

Is it possible for a simple combination between letters and numbers to be a trademark in Japan?

Masaki Mikami reports about an interesting case regarding the hurdles for registration of simple combinations between letters and numbers as trademarks in Japan.

Fette Compacting GmbH filed an international trademark for “FS12” designating Japan. The mark was for class 7 – compression tools (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for producing pellets and tablets; die-table segments (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for rotary presses.

The Japan Patent Office refused to register this sign based on absolute grounds. The trademark law in the country prohibits registration of simple signs as trademarks.

The decision was appealed but the Board of Appeal confirmed it. The sign at hand represents a simple combination between two letters and two numbers. This cannot serve as a source of trade origin because it can be perceived by the consumers as a sign for code, model, value etc.

Source: Masaki Mikami, Marks IP Law Firm.

To what extent linking and framing of copyrighted works is legal in the EU – a new EU Court decision

The European court has ruled in case C‑392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz. This case concerns the question to what extend linking and framing of copyrighted content can be illegal on the territory of the EU.

The case has the following background:

SPK is the operator of the Deutsche Digitale Bibliothek (DDB), a digital library devoted to culture and knowledge, which networks German cultural and scientific institutions.

The DDB website contains links to digitised content stored on the internet portals of participating institutions. However, as a ‘digital showcase’, the DDB itself stores only thumbnails, that is to say smaller versions of the original images of the subject matter. When the user clicks on one of those thumbnails, he or she is redirected to the page concerning the particular subject matter on the DDB website, which contains an enlarged version of the thumbnail concerned, with a resolution of 440 by 330 pixels. When that enlarged thumbnail is clicked on, or the ‘magnifying glass’ function is used, a further enlarged version of the thumbnail, with a maximum resolution of 800 by 600 pixels, is overlaid by means of a ‘lightbox’. Further, the ‘Display object on original site’ button contains a direct link to the website of the institution providing the subject matter, either to its home page or to the page relating to that subject matter.

VG Bild-Kunst maintains that the conclusion with SPK of a licence agreement for the use of its catalogue of works in the form of thumbnails should be subject to the condition that the agreement include a provision whereby the licensee undertakes, when using the protected works and subject matter covered by the agreement, to implement effective technological measures against the framing by third parties of the thumbnails of the protected works or subject matter displayed on the DDB website.

SPK considers that such a term in the agreement is not reasonable in the light of the legislation relating to copyright, and brought an action before the Regional Court of Berlin, Germany seeking a declaration that VG Bild‑Kunst is required to grant SPK that licence without any condition requiring SKK to implement such technological measures.

That action was dismissed by the Regional Court of Berlin. An appeal having been brought by SPK, the judgment of the Landgericht Berlin was set aside by the Higher Regional Court of Berlin, Germany. By its appeal on a point of law, VG Bild-Kunst seeks the dismissal of SPK’s action.

The Federal Court of Justice, Germany points out, first, that, pursuant to the first sentence of Paragraph 34(1) of the VGG, which transposes Article 16 of Directive 2014/26, collecting societies are obliged to grant to any person who so requests, on reasonable terms, a licence to use the rights whose management is entrusted to them.

Second, in accordance with its case-law established in the period during which the national legislation repealed by the VGG was applicable, case-law which, in the opinion of the referring court, continues to be of some relevance, it was accepted that collecting societies could, exceptionally, depart from that obligation and refuse to grant a licence for the use of the rights management of which was entrusted to them, provided that that refusal did not constitute an abuse of monopoly power and that the licence application was objectionable by reference to overriding legitimate interests. In that regard, in order to determine whether there is an objectively justified exception, it was necessary to weigh up the interests of the parties concerned, taking into account the purpose of the legislation and the objective underlying the obligation that applies, in principle, to collecting societies.

The outcome of the appeal on a point of law depends on the issue whether, contrary to what was held by the appeal court, the embedding of a work – which is available on a website, in this instance that of the DDB, with the consent of the right holder – in the website of a third party by means of framing constitutes a communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29 where it circumvents protection measures against framing adopted by the right holder or imposed by him or her on a licensee. If that were the case, the rights of the members of VG Bild-Kunst would be liable to be affected and VG Bild-Kunst could properly subject the grant of a licence to SPK to the condition that SPK undertake, in the licence agreement, to implement such protection measures.

The referring court considers that, when thumbnails are embedded by framing in a third-party website so as to circumvent the technological protection measures adopted or imposed by the right holder, such embedding constitutes a communication to a new public. If that were not the case, the right of communication of a work to the public on the internet would, contrary to Article 3(3) of Directive 2001/29, be de facto exhausted as soon as that work was made freely accessible to all internet users on a website with the authorisation of the right holder, and that right holder would be unable to retain control of the economic exploitation of his or her work and to ensure adequate involvement in its use for economic purposes.

Federal Court of Justice is however uncertain as to the response to that question, having regard to the case-law of the Court in relation to the practice of framing (order of 21 October 2014, BestWater International, C‑348/13, not published, EU:C:2014:2315) and to the freedom of expression and information guaranteed by Article 11 of the Charter of Fundamental Rights of the European Union (‘the Charter’) in the digital context (judgment of 8 September 2016, GS Media, C‑160/15, EU:C:2016:644, paragraph 45), case-law which indicates that hyperlinks contribute to the smooth functioning of the internet and to the exchange of opinions and information, and accordingly it decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

‘Does the embedding of a work – which is available on a freely accessible website with the consent of the right holder – in the website of a third party by way of framing constitute communication to the public of that work within the meaning of Article 3(1) of Directive 2001/29 where it circumvents protection measures against framing adopted or imposed by the right holder?’

The Court’s decision:

Article 3(1) 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 embedding, by means of the technique of framing, in a third party website page, of works that are protected by copyright and that are freely accessible to the public with the authorisation of the copyright holder on another website, where that embedding circumvents measures adopted or imposed by that copyright holder to provide protection from framing, constitutes a communication to the public within the meaning of that provision.