Sony lost a dispute for its EU trademark VITA

The General Court of the European Union has ruled in case T‑561/20 Sony Interactive Entertainment Europe Ltd v Vieta Audio, SA. The case concerns the issue with proving trademark use in procedures for revocation.

Sony is an owner of a European word trademark VITA for class 9 – “data carriers containing programs” and “audio and/or image carriers (not of paper).”

Against this mark a revocation request was filed in 2011 based on lack of a real market use. Sony submitted different evidence which showed that the mark was used for video game consoles PlayStation Vita.

The key moment in this dispute was whether video game consoles are “data carriers containing programs” and “audio and/or image carriers (not of paper).”

According to the EUIPO and the General Court this is not the case. The reason is that consumer assessment how and for what the mark is used is crucial. From all submitted evidence and from consumer perspective, the trademark was used for video game devices.

Although these devices technically can fit in the description of “data carriers containing programs” and “audio and/or image carriers (not of paper), practically this is not correct because the main purpose of game consoles are not to store data but to allows playing video games. These consoles are part from class 28 from the Nice classification, not class 9.

The fact that Vita was a trademark with reputation cannot be an obstacle for the revocation because even repute mark has to be used for the goods mentioned in its application.

All in all this case comes to show how important is the correct identification of goods and services for the purpose of trademark filing. What is included in the trademark application defines the scope of protection and based on this scope the mark has to be proved in case of revocation.

Source: Kluwer Trademark Blog

Advertisement

Mandarins, plants varieties and an EU Court decision

The European Court has ruled in case C‑186/18 José Cánovas Pardo SL v Club de Variedades Vegetales Protegidas. This case has the following background:

Following an application lodged by Nadorcott Protection SARL on 22 August 1995 with the Community Plant Variety Office (‘the CPVO’), the CPVO granted it a Community plant variety right in respect of the Nadorcott variety of mandarin tree on 4 October 2004. An appeal with suspensive effect was brought against that decision before the Board of Appeal of the CPVO but was dismissed by a decision of 8 November 2005 published in the Official Gazette of the CPVO on 15 February 2006.

Since 2006, Pardo has cultivated a grove of 4 457 mandarin trees of the Nadorcott variety.

Geslive, on whom the management of the rights over the Nadorcott variety had been conferred, sent Pardo formal notice on 30 October 2007 demanding that, in the absence of the appropriate licence, it cease the cultivation of that plant variety.

On 30 March 2011, CVVP, to whom the management of those rights had been transferred with effect from 13 December 2008, sent Pardo a new letter demanding that, if it were cultivating some 5 000 mandarin trees of the Nadorcott variety, it cease that activity.

Having applied in November 2011 to the Commercial Court, Spain for preliminary measures for a declaration of infringement of the exclusive rights over the Nadorcott variety, CVVP brought two actions against Pardo, one for ‘provisional protection’ in respect of the acts of Pardo prior to the grant of those rights, that is, before 15 February 2006, the other for infringement in respect of acts after that date. In particular, CVVP sought a declaration of infringement of the exclusive rights over the Nadorcott variety from 15 February 2006 until the cessation of cultivation. CVVP also applied for an injunction that Pardo be ordered to bring its unlawful cultivation to an end, to remove and, if necessary, destroy any plant material of that variety in Pardo’s possession, and to pay it compensation in respect of such cultivation.

Having found that a period of time of more than three years had elapsed between the date on which the holder of the rights over the Nadorcott variety had identified Pardo as an unlawful cultivator of that variety, that is, at the latest by 30 October 2007, when Geslive gave formal notice to Pardo, and the date on which CVVP brought its action in November 2011, that court of first instance dismissed the action on the ground that the action for infringement was time barred under Article 96 of Regulation No 2100/94.

Following CVVP’s appeal against that decision, the Provincial Court of Murcia, Spain found that Pardo did not dispute either the cultivation of the trees of the Nadorcott variety or the lack of consent of the holder of the rights in that variety. That court decided that Pardo’s operations resulted in certain acts of infringement which were of an ongoing nature since the trees at issue were continuing to be cultivated. In addition, it held that Article 96 of Regulation No 2100/94 should be interpreted as meaning that the claims relating to those acts of infringement which took place less than three years before CVVP’s action was brought were not time barred but that those relating to acts of infringement which took place more than three years before the claims had been brought were time barred.

Accordingly, Pardo was ordered to pay EUR 31 199 for its acts of infringement and as appropriate compensation for acts performed without the consent of the holder of the Community plant variety right during the period of its provisional protection. In addition, Pardo was ordered to cease all acts of infringement.

Pardo brought an appeal on a point of law before the referring court, the Supreme Court, Spain against that decision of the Provincial Court of Murcia, challenging the latter’s interpretation of Article 96 of Regulation No 2100/94.

The referring court states that, according to the national case-law on matters of intellectual property, occasional acts of infringement must be distinguished from ongoing acts. In the case of the latter, the period of prescription is extended for as long as the act of infringement continues. That court asks whether such case-law can be applied to the rules on prescription set out in Article 96 of Regulation No 2100/94 and, in particular, whether all claims relating to acts of infringement are time barred on the ground that the holder of the Community plant variety right brought his or her action more than three years after becoming aware of those acts of infringement and of the identity of the party liable for them or if only those claims relating to acts of infringement which took place more than three years before the action was brought are time barred.

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

‘(1) Is an interpretation according to which, provided that the period of three years has elapsed since the holder, once Community protection of the plant variety right was granted, became aware of the infringing act and the identity of the party liable, the actions provided for under Articles 94 and 95 [Regulation No 2100/94] would be time barred, although the infringing acts were continuing until the time the action was brought, contrary to Article 96 of [that regulation]?

(2)If the first question is answered in the negative, is it to be considered that, in accordance with Article 96 of [the regulation], the limitation period operates only in respect of infringing acts committed outside the three-year period, but not in respect of those taking place within the last three years?

(3) If the answer to the second question is in the affirmative, in such a situation could the action for an injunction and also for damages succeed only in relation to those latter acts taking place within the last three years?’

The Court’s decision:

1. Article 96 of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights must be interpreted as meaning that, irrespective of the ongoing nature of an act of infringement of a protected variety or of the date on which that act ended, the three-year period of prescription set out in that provision in respect of claims pursuant to Articles 94 and 95 of that regulation starts to run from the date on which, first, the Community plant variety right was finally granted and, second, the holder of the right had knowledge of the act and of the identity of the party liable.

2. Article 96 of Regulation No 2100/94 must be interpreted as meaning that claims pursuant to Articles 94 and 95 of that regulation in respect of a set of acts of infringement of a protected variety brought after more than three years have elapsed are time barred only from when, first, the Community plant variety right was finally granted and, second, the right holder had knowledge of each individual act forming part of that set of acts and of the identity of the party liable for them.

New fees for designation of Canada in international trademark applications

WIPO reports about new individual fees that are due in case Canada is designated country in applications for international trademarks. The new fees are as follow:

UGG boots – a descriptive term or a trademark in the US?

Dennis Crouch, the author of the IP blog Patentlyo reports about an interesting trademark dispute in the US.

The case concerns the term UGG which is used in Australia for describing sheepskin boots. The terms derives from a quote by the surfer Shane Stedman who said that these boots were ugly = ugg.

Different Australian companies use this term for such boots, which are well-known, and from that perspective the term is generic in the country.

The problem arose several years ago when one of those Australian companies imported UGG boots in the US.

A lawsuit for trademark infringement was initiated by Deckers Outdoor Corp based on already registered US trademark for UGG for the same class of goods.

The case was successful for the US company and the Australian importer appealed before the US Supreme Court referring the following questions:

1. Whether a term that is generic in the English-speaking foreign country from which it originated is ineligible for trademark protection in the United States.

2. Whether and, if so, how the “primary significance to the relevant public” standard in 15 U.S.C. § 1064(3) for determining whether a registered trademark has “become” generic applies where a term originated as generic before registration.

It is interesting what will be the Court conclusion on this matter. Nevertheless the case is indicative for the fact that one and the same term can be a trademark and a descriptive term in different countries. This can create risks for both the trademark owners and the users of the term depending where it is used.

Whether decompiling software code is illegal?

The European Court has ruled in case  C‑13/20 Top System SA v Белгия which focuses our attention on the question to what extent decompiling software code can be legal.

Top System is a company governed by Belgian law that develops computer programs and provides IT services.

SELOR is the public body, which is responsible in Belgium, for selecting and orienting the future personnel of the authorities’ various public services. Following SELOR’s integration into the service public fPolicy and Support Federal Public Service, the Belgian State replaced that body as the defendant in the main proceedings.

Since 1990, Top System has collaborated with SELOR, on whose behalf it provides IT development and maintenance services.

In order to fulfil its tasks, SELOR has gradually put in place IT tools to enable applications to be submitted and processed online.

At the request of SELOR, Top System developed several applications which contain (i) functionalities originating from its framework software called ‘Top System Framework’ (‘the TSF’) and (ii) functionalities designed to meet SELOR’s specific needs.

SELOR has a user license for the applications developed by Top System.

On 6 February 2008, SELOR and Top System concluded an agreement for the installation and configuration of a new development environment as well as the integration of the sources of SELOR’s applications into, and their migration to, that new environment.

Between June and October 2008, there was an exchange of emails between SELOR and Top System about operating problems affecting certain applications using the TSF.

Having failed to reach agreement with SELOR on the resolution of those problems, on 6 July 2009, Top System brought an action against SELOR and the Belgian State before the Commercial Court, Brussels, Belgium seeking, inter alia, a declaration that SELOR had decompiled the TSF, in breach of Top System’s exclusive rights in that software. Top System also claimed that SELOR and the Belgian State should be ordered to pay it damages for the decompilation of and copying of the source codes from that software, together with compensatory interest, from the estimated date of that decompilation, that is to say, from 18 December 2008 at the latest.

On 26 November 2009, the case was referred to the Court of First Instance, Brussels, Belgium which, by judgment of 19 March 2013, in essence, dismissed Top System’s application.

Top System brought an appeal against that judgment before the referring court, the Court of Appeal, Brussels, Belgium.

Before that court, Top System submits that SELOR unlawfully decompiled the TSF. According to the applicant, under Articles 6 and 7 of the LPO, decompilation can be carried out only with the authorisation of the author, the successor in title of that author, or for interoperability purposes. On the other hand, decompilation is not permitted for the purpose of correcting errors affecting the functioning of the program concerned.

SELOR acknowledges that it decompiled part of the TSF in order to disable a defective function. However, it submits, inter alia, that, under Article 6(1) of the LPO, it was entitled to carry out that decompilation in order to correct certain design errors affecting the TSF, which made it impossible to use that software in accordance with its intended purpose. SELOR also relies on its right, under Article 6(3) of the LPO, to observe, study or test the functioning of the program concerned in order to ascertain the underlying ideas and principles of the relevant TSF functionalities in order to be able to prevent the blockages caused by those errors.

The referring court takes the view that, in order to determine whether SELOR was entitled to carry out that decompilation on the basis of Article 6(1) of the LPO, it is for that court to ascertain whether the decompilation of all or part of a computer program comes within the acts referred to in Article 5(a) and (b) of the LPO.

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

‘(1) Is Article 5(1) of [Directive 91/250] to be interpreted as permitting the lawful purchaser of a computer program to decompile all or part of that program where such decompilation is necessary to enable that person to correct errors affecting the operation of the program, including where the correction consists in disabling a function that is affecting the proper operation of the application of which the program forms a part?

(2) In the event that that question is answered in the affirmative, must the conditions referred to in Article 6 of the directive, or any other conditions, also be satisfied?’

The Court decision is:

1. Article 5(1) of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs must be interpreted as meaning that the lawful purchaser of a computer program is entitled to decompile all or part of that program in order to correct errors affecting its operation, including where the correction consists in disabling a function that is affecting the proper operation of the application of which that program forms a part.

2.  Article 5(1) of Directive 91/250 must be interpreted as meaning that the lawful purchaser of a computer program who wishes to decompile that program in order to correct errors affecting the operation thereof is not required to satisfy the requirements laid down in Article 6 of that directive. However, that purchaser is entitled to carry out such a decompilation only to the extent necessary to effect that correction and in compliance, where appropriate, with the conditions laid down in the contract with the holder of the copyright in that program.

Hugo Boss lost a trademark dispute against Rakuten in Japan

Masaki Mikami informs us for yet another interesting trademark dispute from Japan.

In the case at hand, the Japanese e-trade company Rakuten filed an application for word trademark BOSS in classes 35 and 42 – providing computer programs on e-commerce, software as a service (SaaS), and other related services.

BOSS in this case is abbreviation from the service ‘Back Office Support System’ offered by Rakuten.

Against this application an opposition was filed by the German company HUGO BOSS Trademark Management GmbH & Co KG, based on an earlier mark HUGO BOSS for which an acquired reputation was claimed.

The German company filed evidence for its reputation including Deloitte’s annual list of the world’s largest luxury companies where HUGO BOSS is No.19 in 2015.

The Patent Office agreed that Hugo Boss has a reputation in Japan but disagreed that this is true for the part BOSS alone taking into account that the earlier mark is used as HUGO BOSS.

However, the Office concluded that even in case both signs are considered similar the respected goods and services are not. The processing services in classes 35 and 42 are not directly associated with clothes, perfumes, jewelry etc., which Hugo Boss is famous for.

From that point of view the Office dismissed the opposition finding highly unlikely consumers to be confused or deceived from the existence of both marks in the market.

Mario Balotelli won a trademark dispute for “MB45” in Italy

The well-known Italian footballer Mario Balotelli won a trademark dispute in Italy.

In 2013, the Italian individual Mr. Gabriele Casagrande registered a trademark “MB45” for class 25 – clothing, shoes, headgear. This mark was duplicated as a European mark and after that both were transferred to a Lithuanian company.

In 2015, finding about this mark, Mario Balotelli initiated a lawsuit asking for invalidation of the sign and the domain name “www.mb45.it”. The grounds for this were the fact that “MB45” is the Balotelli’s pseudonym. MB means Mario Balotelli and 45 is the number of the jersey that he uses. What’s more this sign was used on shoes produced and sold in collaboration with Puma in 2013.

Gabriele Casagrande disagreed with these accusations, stating that his mark “MB45” was inspired by the name of a tugboat of the Russian Navy Morsokoy Buksir with the same name.

The Court in Rome wasn’t impressed by this argument and invalidated the mark. According to the Court, the consumers in Italy, especially the football fans, are quite familiar with “MB45” as an indication related to Mario Balotelli. Additionally, the goods related to Gabriele Casagrande’s mark are typical and common products that famous people and sportsmen used their names or indications for.

The application for the later mark was made only a few days after Mario Balotelli, bearing “MB45”, was included in media materials. Because of this, the application for the mark was deemed as made in bad faith. The same conclusion was reach for the domain “www.mb45.it”.

Source: Martini Manna Law Firm – Margherita Stucchi for Lexology.