The Supreme Court of Spain confirmed that bullfighting is not copyrightable

Eleonora Rosati published an interesting article for IPKat that discusses the opportunity for copyright protection over bullfighting.

The dispute concerns an attempt by the well-known Spanish matador Miguel Ángel Perera Díaz to register with the Spanish Copyright Office a bullfighting video with description as a copyright work. The Office refused to do that because bullfighting wasn’t able to be copyright subject matter.

The decision was appealed and the Court upheld it. According to the Court bullfighting as well as other sport events are not copyrightable because they require following some strict rules. This in turn leaves no room for creative freedom for the purposes of copyright. The position reflects the European Court practice too (FAPL).

The decision was appealed again this time before the Supreme Court in Spain.

The Supreme Court admitted that there was a room for some level of artistry when matadors performing on the arena. Relying on the EU Court’s decision in Cofemel, the Court considered that copyright arises when there is a work and it is original one.

When it comes to work the Court cited the  Levola Hengelo case: for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

Originality on the other hand reflects the author personality as an expression of his free and creative choices.

According to the Supreme Court bullfighting can fulfil the originality requirement because matadors implement some creative decisions when they are performing. However, bullfighting cannot be a work. The reason for this is that it cannot be expressed in such a way in order to be identifiable with sufficient precision and objectivity.

This is the argument why bullfighting cannot be regard as a choreographic work too. Each bullfight is unique by its nature and cannot be reproduced one to one.

From that perspective the Supreme Court considered bullfighting as not copyrightable.

Source: IPKat.

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A Jeff Bezos’ nonprofit organization lost a trademark dispute in the EU

The Jeff Bezos’ nonprofit organization “The Bezos Family Foundation” lost a trademark dispute in the EU.

The case concerns an EU trademark application ‘Vroom’ filed by the foundation in 2017 for – computer software, specifically “a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education.

Against this application an opposition was filed by the France’s national state-owned railway company SNCF Mobilités based on an earlier French trademark for ‘Pop & Vroom’ for software.

The EUIPO upheld the opposition finding both signs and their goods similar enough to create a confusion in the consumer mind.

The decision was appealed. The foundation claimed that both marks were not similar. The reason for this was that the leading element of the earlier mark is POP which attracts consumer’s attention because as a general rule of thumb the first part of a trademark is more important from that point of view. In addition, the goods in the marks target different audiences. While in the case of the foundation’s mark the software focuses on children education, in the case of earlier mark the focus is on a software for transport services.

The General Court of the European Union dismissed the appeal. According to the Court the signs are visually and phonetically similar to average degree. The fact that the first part of the earlier sign is different is not enough to overcome the similarity because for trademark assessment is important the entire impression produced by the sign.

The Court considers that when a trademark owner register its mark for one a general good, in this case software, the owner has the right to use it for different types of software. In this way, the stated difference in consumers targeting is not sufficient argument.

Source: WIPR.

Husqvarna prevailed over Lidl after a European Court decision

The European Court has ruled in case C-607/19 Husqvarna AB срещу Lidl Digital International GmbH & Co. KG. The case has the following background:

Husqvarna manufactures appliances and tools for gardening and landscaping. It is the proprietor of a three-dimensional EU mark, registered on 26 January 2000 under number 456244 for the goods ‘sprinklers for irrigation’.

From July 2014 until January 2015, Lidl offered for sale a spiral hose set consisting of a spiral hose, a sprinkler nozzle and a coupling sleeve.

Taking the view that the product marketed by Lidl constituted an infringement of its trade mark, Husqvarna brought an action for infringement against Lidl before the Regional Court, Düsseldorf, Germany, for the purposes of, inter alia, bringing the infringement to an end and obtaining damages.

Lidl, by way of counterclaim, requested the revocation of Husqvarna’s rights in the mark at issue in the main proceedings, alleging non-use of that mark.

The Regional Court, Düsseldorf upheld Husqvarna’s claims referred to in paragraph 20 of the present judgment and dismissed Lidl’s counterclaim.

Lidl brought an appeal against the judgment of that court before the Higher Regional Court, Düsseldorf, Germany, which, following the last hearing held before it on 24 October 2017, set aside that judgment and declared that Husqvarna’s rights in the mark at issue in the main proceedings were revoked as from 31 May 2017.

In that respect, the Higher Regional Court, Düsseldorf considered that the relevant date, for the purposes of calculating the continuous period of non-use, was not the date on which Lidl had filed its counterclaim, namely in September 2015, but that of the last hearing before that court, which had taken place on 24 October 2017. That court found that the goods protected by the mark at issue in the main proceedings had no longer been marketed as from May 2012 and therefore concluded that, at the date on which the counterclaim for revocation had been filed, the continuous period of five years referred to in Article 51(1)(a) of Regulation No 207/2009 had not yet expired, whereas that period had expired as at the date of the last hearing.

Husqvarna brought an appeal on a point of law (Revision) before the referring court, the Federal Court of Justice, Germany.

That court takes the view that the outcome of the dispute before it depends, first, on the question whether the determination of the relevant date for the purposes of calculating the five-year period referred to in Article 51(1)(a) of Regulation No 207/2009 and Article 58(1)(a) of Regulation 2017/1001 is governed by those regulations and, second, should that be the case, on how that date is to be determined.

According to that court, neither Article 51(1)(a) of Regulation No 207/2009 nor Article 58(1)(a) of Regulation 2017/1001 indicates the relevant date for the purposes of calculating the five-year period of non-use referred to in those provisions, where the request for the revocation of rights in the EU mark concerned is made by way of counterclaim.

In that regard, the Bundesgerichtshof (Federal Court of Justice) is of the view that that question is a procedural matter and that, in the absence of any clarification in Regulation No 207/2009 and Regulation 2017/1001, it falls within the scope of national law. That court states that that assessment follows from a combined reading of Article 14(3) and Article 101(3) of Regulation No 207/2009 and of Article 17(3) and Article 129(3) of Regulation 2017/1001, as is apparent from the judgment of 22 June 2016, Nikolajeva (C‑280/15, EU:C:2016:467, paragraph 28).

The referring court notes that, according to German civil procedure law, the court must base its decision on all arguments and facts relied on before the date on which the last hearing ends. Where an objection relating to revocation is raised in the course of legal proceedings by way of counterclaim, German trade mark law provides, in the first sentence of Paragraph 25(2) of the MarkenG, that the five-year period within which use must be demonstrated is to be calculated with regard to the date on which the action is brought. However, where the period of non-use comes to an end only after the action has been brought, the relevant date, pursuant to the second sentence of Paragraph 25(2) of the MarkenG, is the date on which the hearing ends. Furthermore, the second sentence of Paragraph 55(3) of the MarkenG provides that, in respect of an application for declaration of invalidity of a trade mark on the ground of the existence of an earlier mark, the proprietor of that earlier mark must, where the defendant has raised an objection, prove that it has been used during the last five years prior to the end of the hearing.

If the answer should be that both Regulation No 207/2009 and Regulation 2017/1001 determine the date with regard to which it must be ascertained whether the five-year period has come to an end, the referring court takes the view that the relevant date should be that of the last hearing before the court hearing the appeal on the merits.

In that regard, the referring court states that that solution is confirmed by recital 24 of Regulation 2017/1001, according to which there is no justification for protecting EU trade marks unless they are actually used. That court adds that taking the date of the last hearing as the relevant date for the purposes of calculating the five-year period of non-use of the EU mark meets the requirement of procedural economy, in that, should that period expire in the course of the proceedings, the party making the counterclaim would not be required to file a new application or counterclaim.

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

‘(1) In the case of a counterclaim for the revocation of rights in an EU trade mark which was filed prior to the expiry of the five-year period of non-use, is the determination of the date which is relevant for the purposes of calculating the period of non-use in the context of Article 51(1)(a) of Regulation No 207/2009 and Article 58(1)(a) of Regulation 2017/1001 governed by those regulations?

(2) If Question 1 is to be answered in the affirmative: In the case of a counterclaim for the revocation of rights in an EU trade mark which was filed prior to the expiry of the five-year period of non-use referred to in Article 51(1)(a) of Regulation No 207/2009 and Article 58(1)(a) of Regulation 2017/1001, must that period be calculated by taking into account the date on which the counterclaim was filed or the date of the last hearing in the appeal on the merits?’

The Court’s decision:

Article 51(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as meaning that, in the case of a counterclaim for the revocation of rights in an EU mark, the relevant date for the purposes of determining whether the continuous five-year period referred to in that provision has ended is the date on which that counterclaim was filed.

Beer, Burger and Barbecue – not the best combination for trademark protection

As a general rule of thumb, not every sign can be registered as a trademark. Trademark legislations around the world prohibit registration of descriptive and not distinctive signs. The reason for this is the fact that such signs cannot be perceived by consumers as a source of trade origin, that is to say that the product or services comes from a particular company.

One interesting case in that regard is from Hungary where a trademark application was filed for “BEER, BURGER, BARBECUE FESTIVAL” in Classes 32, 41 and 43.

The Hungarian Patent Office refused this application based on absolute grounds, descriptiveness and lack of distinctiveness. In the appeal the Court upheld this decision.

The Court stressed the well-known EU Court position that a combination of descriptive elements cannot make one sign distinctive as a whole.

The submitted evidence for acquires secondary distinctiveness was dismissed as irrelevant and not sufficient.

The case comes as a good example about the protection of such signs. By default this is not possible except in cases where distinctiveness is acquired through consistent and long term market use. This means that when you apply for such signs you need to be well prepared with evidence in advance in order to have chances for a successful registration.

Source:  Danubia Patent and Law Office LLC – Sándor Vida