When a letter combination can create trademark problems – an EU Court decision

The European Court has ruled in case T‑860/19, Alkemie Group sp. z o.o срещу Mann & Schröder GmbH.

This dispute concerns a European trademark application for the following classes:

• _{Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;}

• _{Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;}
• _{Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing preparations, shampoos, cosmetic products for therapeutic use, food supplements, hygiene products, clothing, bedding [linen], toys, children’s furniture; advertising and marketing; services relating to the presentation of goods; organization of participation in fairs and exhibitions ”.}

Against this application an opposition was filed by Mann & Schröder GmbH based on early registered trademark for ALKMENE in the following classes:

• _{Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;}

• _{Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;}
• _{Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos ”.}

The EUIPO upheld the opposition finding both sign as confusingly similar for the consumers in the EU. The decision was appealed.

According the the applicant both marks were not similar because their first part ALK had been widely used in many other registered trademarks, which in turn meant that this letter combination was not distinctive.

The Court disagreed. The fact that other trademarks cover the same letters combination doesn’t mean that it is not distinctive. Such an assumption has to be proved by particular evidence that to show low distinctive character of the combination in relation the the particular goods and services. This didn’t happen in the case at hand.

The Court pointed out that when word mark is compared with combined one, the word part has a dominant position in most of the cases.

From that perspective, the Court considered that there is a similarity between both marks. This was due to their identical beginnings as well as to their identical length and similarity from visual and phonetic point of view.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB.

CHANEL lost a trademark dispute in Japan regarding its famous COCO brand

One interesting trademark dispute from Japan where the local company 196+ Inc. applied for a trademark “COCOMIST” in class 3 – cosmetics, perfumery, fragrances, incense, toiletry preparations, etc.

Against this application an opposition was filed by the well-known fashion company CHANEL SARL based on an earlier mark for COCO for the same goods. According to the French company both signs are similar and there is a likelihood for a consumer confusion especially taking into account the reputation of the earlier mark in Japan.

In addition, the company suggested that the COCO reputation is enhanced by the nickname of the French fashion designer “Gabrielle COCO CHANEL” who was the founder of the brand.

The Japanese Patent Office, however, wasn’t impressed enough from these arguments. According to the Office when compared both signs have to be taken in their entirety. From that point of view the signs are dissimilar. The Office couldn’t find any particular meaning when it comes to the mark applied for in order to conclude likelihood of confusion between both marks even though the earlier mark has a strong reputation in Japan.

Source: Masaki MIKAMI, Marks IP Law Firm.

Mont Blanc lost a trademark opposition in Japan

The German company Montblanc-Simplo GmbH last an opposition in Japan in relation to its famous trademark Mont Blanc.

The case concerns the following trademark application filed by a Japanese company for class 25: ‘Medical scrubs; nurse dresses; nurse overalls; nurse pants; nurse uniforms; nurse caps; clothing; nurse shoes; footwear’ 

Against this application an opposition was filed by the German company based on the following earlier mark for pens:

The company claimed a reputation in relation to pens and other writing instruments.

The Patent Office dismissed the opposition in its entirety. Although the Office acknowledged that Mont Blanc has had a strong reputation for almost 100 years in Japan, the goods in both marks were completely different. According to the Office it is highly unlikely consumers to be confused between these marks taking into account the lack of relation between the above mentioned goods in class 25 and different types of pens which earlier mark is known for.

The interesting moment here is why Montblanc-Simplo GmbH didn’t rely on its identical trademarks related to fragrance or watches. These goods have much more in common with the goods in class 25 than writing instruments.

Source: Masaki MIKAMI, Marks IP Law Firm

Geographical indications can cover not only names but product appearance too – an EU Court decision

The European Court has ruled in case C‑490/19 Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS. This case focuses on the issue to what extent protection of geographical indications covers their names as well as the product appearance too. The case has the following bachground:

In accordance with the decree of 22 December 2000, Société Fromagère du Livradois, which had produced Morbier cheese since 1979, was authorised to use the name ‘Morbier’, without the AOC indication, until 11 July 2007. After that date, it substituted for that name the name ‘Montboissié du Haut Livradois’. Moreover, on 5 October 2001, Société Fromagère du Livradois filed an application in the United States for the US trade mark ‘Morbier du Haut Livradois’, which it renewed in 2008 for 10 years, and, on 5 November 2004, it filed an application for the French trade mark ‘Montboissier’.

On 22 August 2013, accusing Société Fromagère du Livradois of infringing the protected designation and committing acts of unfair and parasitic competition by producing and marketing a cheese that has the visual appearance of the product covered by the PDO ‘Morbier’, in order to create confusion with that product and to benefit from the renown of the image associated with it, without having to comply with the specification of the designation of origin, the Syndicat brought proceedings before the Regional Court, Paris, France requesting that Société Fromagère du Livradois be ordered to cease any direct or indirect commercial use of the name of the PDO ‘Morbier’ for products not covered by that name, any misuse, imitation or evocation of the PDO ‘Morbier’, any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product by any means liable to convey a false impression as to the origin of the product, any other practice liable to mislead the consumer as to the true origin of the product and, in particular, any use of a black line separating two parts of the cheese, and to compensate it for the damage suffered.

Those applications were dismissed by judgment of 14 April 2016, which was upheld by the Court of Appeal, Paris, France by judgment of 16 June 2017. The Court of Appeal, Paris held that the marketing of a cheese which has one or more features contained in the specification for Morbier cheese, and which therefore resembles that cheese, did not constitute misconduct.

In that judgment, after stating that PDO legislation aims to protect not the appearance or features of a product as described in its specification, but its name, and therefore does not prohibit a product being made using the same techniques as those set out in the standards applicable to the geographical indication, and after taking the view that, in the absence of an exclusive right, reproducing the appearance of a product falls within the scope of the freedom of trade and industry, the Court of Appeal, Paris held that the features relied on by the Syndicat, in particular the blue horizontal line, relate to a historical tradition, an ancestral technique present in other cheeses, which were implemented by Société Fromagère du Livradois even before the PDO ‘Morbier’ was obtained, and which are not built on the investments made by the Syndicat or its members. That court held that, although the right to use vegetable carbon is conferred only on cheese with the PDO ‘Morbier’, in order to comply with United States legislation, Société Fromagère du Livradois had to replace it with grape polyphenol, and therefore the two cheeses cannot be likened as a result of that feature. Noting that Société Fromagère du Livradois had claimed other differences between the Montboissié and the Morbier cheeses relating, inter alia, to the use of pasteurised milk in the former and raw milk in the latter, the court concluded that the two cheeses were distinct and that the Syndicat was seeking to extend the protection of the PDO ‘Morbier’ for commercial interests, which was unlawful and contrary to the principle of free competition.

The Syndicat appealed on a point of law against the judgment of the Court of Appeal, Paris before the referring court, the Court of Cassation, France. In support of its appeal, it submits, first, that a designation of origin is protected against any practice liable to mislead the consumer as to the true origin of the product and that in holding, however, that only the use of the name of the PDO is prohibited, the Court of Appeal, Paris infringed Article 13 of Regulation No 510/2006 and the same article of Regulation No 1151/2012. The Syndicat submits, next, that by merely stating, first, that the features that it relied on related to a historical tradition and were not dependent on the investments made by the Syndicat and its members and, secondly, that the ‘Montboissié’ cheese marketed since 2007 by Société Fromagère du Livradois was different from ‘Morbier’ cheese, without investigating, as requested, whether Société Fromagère du Livradois’ practices, in particular copying the ‘cinder line’ feature of Morbier cheese, were liable to mislead the consumer as to the true origin of the product, the court of appeal’s decision had no legal basis in the light of that legislation.

For its part, the Société Fromagère du Livradois maintains that the PDO protects products from a defined region, which alone can claim the protected designation, but does not prohibit other producers from producing and marketing similar products, provided they do not give the impression that they are covered by the designation in question. It is to be inferred from national law that any use of the sign constituting the PDO to designate similar products which are not entitled to that designation, either because they do not come from the defined area or because they come from it without having the required properties, is prohibited, but that it is not prohibited to market similar products, provided that such marketing is not accompanied by any practice liable to cause confusion, in particular by the misuse or the evocation of that PDO. It also argues that a ‘practice liable to mislead the consumer as to the true origin of the product’, within the meaning of Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012, must necessarily focus on the ‘origin’ of the product. It must therefore be a practice which causes the consumer to think that the product he or she is encountering is the PDO product in question. It considers that that ‘practice’ cannot result merely from the appearance of the product in itself, without any indication on its packaging referring to the protected origin.

The referring court states that the appeal before it raises the novel question of whether Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012 must be interpreted as prohibiting only the use by a third party of the registered name or whether it must be interpreted as also prohibiting any presentation of the product which is liable to mislead the consumer as to its true origin, even if the registered name has not been used by the third party. Noting in particular that the Court has never ruled on that question, it considers that there is doubt as to the interpretation of the expression ‘other practice’ in those articles, which constitutes a particular form of infringement of a protected designation if it is liable to mislead the consumer as to the true origin of the product.

The question therefore arises, according to the referring court, as to whether the reproduction of physical characteristics of a product protected by a PDO may constitute a practice that is liable to mislead the consumer as to the true origin of the product, as prohibited by Article 13(1) of the regulations cited above. That question amounts to determining whether the presentation of a product that is protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, is capable of constituting an infringement of that designation, despite the fact that the name has not been reproduced.

In those circumstances, the Court of Cassation decided to stay proceedings and to refer the following question to the Court:

‘Must Article 13(1) of Regulation No 510/2006 … and Article 13(1) of Regulation No 1151/2012 … be interpreted as prohibiting solely the use by a third party of the registered name, or must they be interpreted as prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, which is liable to mislead the consumer as to the true origin of the product, even if the registered name is not used?’

The Court’s decision:

Article 13(1) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and Article 13(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs must be interpreted as meaning that they do not prohibit solely the use by a third party of a registered name.

Article 13(1)(d) of Regulation No 510/2006 and Article 13(1)(d) of Regulation No 1151/2012 must be interpreted as prohibiting the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name. It is necessary to assess whether such reproduction may mislead the European consumer, who is normally informed and reasonably observant and circumspect, taking into account all relevant factors in the case.

The taste of food is not copyrightable according to the EU Court

The European Court has ruled in the case C‑310/17 Levola Hengelo BV v Smilde Foods BV. This case concerns the issue whether the taste of food is copyrightable under the EU law. The case has the following background:

‘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 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 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 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 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 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.