Is there copyright infringement of a work used for educational purposes?

Copyright law protects original creative works, a result of intellectual efforts, giving authors control over who and how can use the works.

Although this monopoly right provides authors with a tool to permit or prohibit the use of their works it is not unlimited. There are some exceptions or the so-called fair use which allows free use of works in case of teaching, criticism, commentary, news report, etc.

The lawsuit between Bell v. Eagle Mountain Saginaw Independent School District reminds us of the practical side of these exceptions.

A US school published on its Twitter account apart from one author’s work as a motivational act for its students. The author being not happy with the lack of request for such use filed a lawsuit for copyright infringement.

The court dismissed the claim stating that the use in the case at hand is fair. There is no evidence for any commercial purposes out of this use as well as no harm to the author’s business or reputation.

Source: Deirdre Kennedy for Kluwer Copyright Blog.

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Еlectronic cigarette liquids oils are not similar to donuts – DONUT KING lost a dispute in the UK

One interesting trademark dispute has come to its end in the UK which targets the question of to what extent donuts are similar to electronic cigarette liquids oils.

The following national combined trademark was filed in the UK for class 34 – electronic cigarettes, electronic cigarette liquids oils and flavorings boxes, cartomisers and atomisers:

Against this application, an opposition was filed by the Australian company Donut King Franchise Pty Ltd based on an earlier international trademark DONUTKING with the UK designation. The mark was registered for classes 29, 30, and 43.

According to the company, both signs were similar, the earlier mark was with reputation that the applicant tried to take advantage of, and there was a passing-off action. What’s more the goods in both marks were complimentary. Some UK vape shops were combined with cafes so both groups of goods were offered in one place. Additionally, it was a common practice for electronic cigarette liquids oils to mimic the taste and smell of food products including donuts.

The UKIPO dismissed the claim for complementary goods finding the submitted evidence insufficient. Only 4 vape shops offered such service and only one of them was within the relevant date range. Apart from this complimentary goods require they to be indispensable or important for the use of each other which was clearly not the case when it comes to electronic cigarette liquids oils or cigarettes and food products.

The common taste or smell is not enough to create such a close connection between goods that are so different in their nature, purpose, and use.

According to the Office, the signs were visually similar to a low level and phonetically and conceptually to a medium to a high level.

Nevertheless, the lack of goods similarity was the reason the opposition was dismissed in its entirety.

The claim for acquired reputation in the UK was not accepted because of insufficient exposure amongst the consumers. Because of the passing-off claim was dismissed too.

Source: WTR (by Alison Brennan and Louise Carey – Burges Salmon LLP) for Lexology.

Impact of earlier rights in case of trademark conflicts – an EU Court decision

The European Court has ruled in case C‑112/21 X BV срещу Classic Coach Company vof which concerns an interpretation of earlier rights under Article 6(2) of Directive 2008/95/EC in cases of trademark conflicts.

Between 1968 and 1977, two brothers were partners of a general partnership, established in Amersfoort (Netherlands), engaged in passenger transport by coach, under the name ‘Reis- en Touringcarbedrijf Amersfoort’s Bloei’. Until 1971, occasional coach transport services were provided by their father, who had been engaged in that activity since 1935.

In 1975, one of those brothers (‘brother 1’) created X, which used, from 1975 or 1978, two trade names, one of which corresponded, in part, to the surname of those brothers.

In 1977, following brother 1’s departure from the company created in 1968, the other brother (‘brother 2’) continued that company’s activity with his wife as a joint partner, in the form of a limited liability company, while retaining the same company name as that of the company established in 1968.

In 1991, for tax reasons, brother 2 also formed, with his wife, a general partnership The two companies belonging to brother 2 and his wife coexisted and both displayed signs on their coaches containing a name corresponding to brother 2’s name.

In 1995, after the death of brother 2, his activity was continued by his two sons, Y and Z, who created, for that purpose, Classic Coach, also established in the Netherlands. For a number of years, the Classic Coach coaches have carried a sign on the back of the coach displaying, inter alia, brother 2’s name, or, more precisely, the initial of his first name followed by his surname.

Furthermore, X is the proprietor of a Benelux word mark, which was registered on 15 January 2008, for, inter alia, services in Class 39, including services provided by a coach company. That mark corresponds to the surname common to brothers 1 and 2.

In those circumstances, X brought an action before the District Court, The Hague, Netherlands, seeking, inter alia, an order that the defendants in the main proceedings definitively cease all infringement of its Benelux word mark and of its trade names.

X based its action on the fact that, by using the sign corresponding to the name of brother 2, the defendants in the main proceedings had infringed its trademark rights, as referred to in Article 2.20(1)(b) and (d) of the Benelux Convention, and its trade name rights, as referred to in Article 5 of the Law on trade names.

The defendants in the main proceedings contested the alleged infringement, relying, in particular, on Article 6(2) of Directive 2008/95. Furthermore, the defendants in the main proceedings objected to the alleged trade name infringement by, inter alia, invoking estoppel.

By judgment of 10 May 2017, the District Court, The Hague upheld X’s action but, by judgment of 12 February 2019, the Court of Appeal, The Hague, Netherlands set aside that judgment and dismissed X’s appeal.

X appealed on a point of law against that judgment to the Supreme Court, Netherlands, which states that it has doubts about the answer to the question of what constitutes an ‘earlier right’ within the meaning of Article 6(2) of Directive 2008/95.

In that regard, according to that court, it is conceivable that the assumption of an earlier right would require that that right be capable, under the applicable national legislation, of prohibiting the trademark holder’s use of the mark. It is apparent from the legislative history of that provision that wording appearing in the initial proposal and extending its scope to earlier rights of local significance which can no longer be relied on against the later registered mark was ultimately not adopted.

Moreover, it is also conceivable that, in order to assume the existence of an earlier right of a third party, it is important whether the trademark holder has an even earlier right, recognised by the legislation of the Member State concerned, with regard to the sign filed as a trade mark and, if so, whether the use of the alleged earlier right of that third party can be prohibited on the basis of that even earlier right.

In the present case, the Court of Appeal, The Hague held that X, the proprietor of the Benelux trademark, had even earlier trade name rights than those of the defendants in the main proceedings in respect of the sign which is registered as a trade mark. However, according to that court, X, as a result of limitation in consequence of acquiescence, lost its right to prohibit, on the basis of those earlier trade name rights, the use by the defendants in the main proceedings of the trade name corresponding to brother 2’s name. Thus, X finds itself in a situation in which it cannot prohibit the use by the defendants in the main proceedings of that trade name on the basis of its even earlier trade name rights.

The assessment of the merits of the appeal on a point of law brought against that assessment of the Court of Appeal, The Hague would depend on the scope of the concept of ‘earlier right’ in Article 6(2) of Directive 2008/95. In that regard, the Supreme Court, Netherlands states that it must be assumed that all the trade names at issue in the main proceedings are rights recognised in the Netherlands for the purpose of that article 6(2).

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

‘(1) For the purposes of determining whether there is an ‘earlier right’ of a third party as referred to in Article 6(2) of [Directive 2008/95],

(a)  is it sufficient that, prior to the filing of the trademark, that third party had made use in the course of trade of a right which is recognised by the laws of the Member State in question; or

(b) is there a requirement that that third party, on the basis of that earlier right, under the applicable national legislation, is entitled to prohibit the use of the trademark by the trademark holder?

(2) In answering Question 1, is it also relevant whether the trademark holder has an even earlier right (recognised by the laws of the Member State in question) in relation to the sign registered as a trademark and, if so, is it relevant whether the trade mark holder may, on the basis of that even earlier recognised right, prohibit the use by the third party of the alleged “earlier right”?’

The Court’s decision:

1. Article 6(2) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that, for the purposes of establishing the existence of an ‘earlier right’ within the meaning of that provision, there is no requirement that the proprietor of that right must be able to prohibit the use of the later mark by the proprietor of that mark.

2. Article 6(2) of Directive 2008/95 must be interpreted as meaning that an ‘earlier right’ within the meaning of that provision may be granted to a third party in a situation in which the proprietor of the later trademark has an even earlier right recognised by the laws of the Member State in question over the sign registered as a trade mark to the extent that, under those laws, the proprietor of the trade mark and of the even earlier right may no longer, on the basis of its even earlier right, prohibit the use by the third party of its more recent right.

Apple lost an EU dispute regarding its THINK DIFFERENT trademarks

The General Court of the European Union has ruled in joined cases T‑26/21 to T‑28/21, Apple Inc. v Swatch AG.

These cases concern registered EU trademarks THINK DIFFERENT owned by Apple against which an application for revocation was filed by the Swiss company SWATCH. The gound for the application was non-use for a period of 5 consecutive years.

Apple submitted evidence for genuine trademark use within the EU but the EUIPO and the Board of Appeal after that dismissed them as insufficient.

The General Court upheld the EUIPO’s position on the case. The reason for this negative result for Apple was hidden in the details of how the marks were used and how this was proved.

From the Court decision:

The applicant complains that the Board of Appeal did not take into account the high level of attention of the relevant public when assessing whether the contested marks had been put to genuine use. In particular, it claims that the Board of Appeal disregarded the case-law according to which consumers pay a high level of attention when purchasing durable and highly technical goods and, at the same time, closely inspect their technical specifications. The Board of Appeal thus concluded, wrongly, that the relevant public would carelessly overlook the top part of the packaging of iMac computers displaying their specifications.

Furthermore, according to the applicant, the Board of Appeal failed to take into account the fact that computers and computer accessories in Class 9 are often sold ‘as seen’ on the shelves of department or specialist stores, where consumers have the opportunity to inspect their packaging visually before purchasing them. It adds that, in those stores, in a typical configuration, those goods are sold on a self-service basis, as the new photographs in the application show, and in that case consumers rely primarily on the original packaging.

It is important to note, however, that, even if the Board of Appeal did not consider the high level of attention of the relevant public for personal computers and computer accessories in Class 9, that cannot have any bearing on the conclusion according to which the contested marks accounted for only a rather insignificant space next to the barcode. In any event, the applicant has not demonstrated that such consideration would have led the Board of Appeal to find that the consumer would examine the packaging in any detail and that he or she would pay particular attention to the contested marks.

As regards the process of purchasing the goods at issue, it should first be noted that, in certain cases, computers and computer accessories in Class 9 may indeed be sold on a self-service basis to consumers, displayed on shelves. Next, in other cases, as the intervener points out, they are stored in a place which is not directly accessible to the public (for example, in their packaging or in a storeroom). Consumers may, however, try out the display models that are presented without their packaging on the table and consult the technical sheets placed next to each product. Last, those goods may also be purchased online, on the basis of information appearing in special catalogues or on the internet.

The applicant complains, in essence, that the Board of Appeal erred in finding that the sales figures for iMac desktop computers provided by the applicant related only to certain Member States of the European Union, namely the United Kingdom, Finland, Denmark and Germany. It claims to have sold more than four million iMac computers under the mark THINK DIFFERENT during the relevant period throughout the European Union, as is allegedly proved by the witness statement of the director of its legal department, dated 23 March 2017.

In the present case, as EUIPO correctly submits, the witness statement was drawn up by the director of the applicant’s legal department and therefore cannot have the same reliability and credibility as a statement from a third party or a person who is independent of the company in question. Accordingly, that statement is insufficient in itself and merely provides an indication which must be confirmed by further probative evidence (see, to that effect, judgment of 21 September 2017, Repsol YPF v EUIPO – Basic (BASIC), T‑609/15, EU:T:2017:640, paragraph 64 and the case-law cited).

In that regard, it should be noted that, according to the witness statement of 23 March 2017, more than four million iMac computers under the mark THINK DIFFERENT were actually sold throughout the European Union during the relevant period. Those sales figures contained in the witness statement are not, however, confirmed by any further probative evidence. Indeed, the annual reports for the years 2009, 2010, 2013 and 2015, attached to the witness statement of 23 March 2017, contain only information on the net worldwide sales of iMac computers. They do not provide any details as to the sales figures of iMac computers in the European Union.

The applicant claims that, contrary to the Board of Appeal’s reasoning, the joint use of multiple trade marks on the packaging of iMac desktop computers cannot, in itself, undermine the function of the contested marks as a means of identifying the goods concerned. In its view, the contested marks were used jointly, but autonomously, with the other marks affixed to the packaging of iMac computers in so far as they were set clearly apart from the other marks on the packaging and at sufficient distance from the nearest mark, namely Macintosh.

The applicant criticises the Board of Appeal for having taken into account, in its assessment of the genuine nature of the use of the contested marks, new criteria, contrary to established case-law. According to the applicant, there is no case-law requiring it to be demonstrated that the contested marks have been affixed to a particular place on the packaging of the product concerned and that they appear in large letters.

It is true, as is apparent from the case-law relied on by the applicant, that there is no precept in the EU trade mark system that obliges its proprietor to prove the use of its earlier mark on its own, independently of any other mark or any other sign.

However, a registered trade mark that is used in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1) of Regulation No 207/2009.

In the present case, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not base its conclusions as to the lack of genuine use of the contested marks solely on the finding of the presence of the word mark Macintosh on the packaging of iMac computers next to the contested marks.

On the contrary, the main ground on which the Board of Appeal based its conclusion is that some of the evidence produced by the applicant to that end falls outside the relevant period and that the images produced by the applicant show the contested marks in a single place on the box packaging and that that use alone could not be regarded as genuine in the light of the characteristics of that use, in particular its size and location.

Second, as regards the requirements linked to the positioning and size of the contested marks on the packaging, it is apparent from the case law cited in paragraph 61 above that genuine use of a mark can be found only where that mark is used to guarantee the identity of the origin of the goods or services for which it was registered.

In the present case, as the photographs of the iMac computer packaging in the file illustrate, the word elements ‘think different’ do not appear on the labels affixed to the box packaging in a way which particularly draws the consumer’s attention. On the contrary, those word elements are placed under the technical specifications of the iMac computers, and just above the barcode in a relatively small character size. That expression is, moreover, accompanied by the word ‘macintosh’ of the same size and written in the same font.

It must therefore be concluded that the way in which the contested marks are used on iMac computer packaging does not ground the conclusion that they have been used as trademarks, that is to say, in accordance with their essential function of giving an indication of the commercial origin of the goods concerned.

All of these shows how important trademark placement is. It should be clear and in a way to indicate trade origin. In such cases putting a small R in a circle after the mark could be really helpful because it will show trademark protection.

The English Premier League filed trademarks for virtual goods that will be offered in the future metaverse

More and more companies have started to adapt their business strategies considering all-new blockchain technologies (NFT – non-fungible tokens) and the future metaverse – a digital world that will mimic the real one.

What draws our attention from an intellectual property point of view is that many big companies have started to file trademark applications for a variety of so-called virtual goods such as virtual burgers, virtual clothes, virtual shoes, etc.

At first glance, this may sound abstract and even silly but behind the scenes, it can be a completely new business opportunity. Imagine a virtual world where every avatar will be able to buy unique digital goods in the form of NFTs in order to support its social status. This can be a huge new opportunity for many companies to expand their sales into a new category representing virtual goods. And because the goods will mimic the real ones, they will be branded which in turn requires trademark protection. This will help companies to control who and how can offer virtual goods with their brands. This means profit.

In light of this,  The English Premier League filed the following two US trademarks for goods such as – downloadable virtual goods for use online and in online virtual worlds; Downloadable virtual goods, namely, computer programs featuring footwear, clothing, headwear, sportswear, football shirts, eyewear, bags, sports bags, backpacks, sports equipment:

In that way, the English Premier League will be able to monopolize ist signs for use in the metaverse securing a tool for fighting against infringers.

There is a good chance such intellectual property protection strategy to become a key factor for the future virtual business models.

Source: Findbold

Fiat Chrysler lost a trademark dispute over JEEP in Japan

One new interesting trademark dispute, reported by Masaki Mikami, was solved by the Japan Patent Office.

The case at hand concerns a new trademark application in Japan filed by an individual for the sign JEEPER in class 8 –  hand tools.

Against this application, an opposition was filed by the automotive manufacturer Fiat Chrysler. The ground was an earlier mark JEEP for which the company claimed reputation amongst Japanese consumers due to which arising of confusion was possible.

The Patent Office admitted that the earlier mark JEEP has some level of reputation in the country but disputed the fact that it covers the above-mentioned goods in class 8.

According to the Office, both signs were not similar enough from the visual and phonetic points of view. Conceptually there was no similarity too because the mark applied for had no specific meaning while the earlier mark was associating with 4×4 vehicles.

Based on this the opposition was dismissed in its entirety.

FIFA won a trademark dispute against PUMA regarding the upcoming World Football Cup in Qatar

The Swiss Federal Supreme Court has ruled on a trademark dispute between FIFA and the German sportswear producer PUMA.

The case concerns the following Swiss trademarks registered by the Puma for classes 18, 25, and 28: “PUMA WORLD CUP QATAR 2022” и “PUMA WORLD CUP 2022”.

FIFA as an organizer of the World Football Cup wasn’t impressed by these registrations and attacked them in an attempt to cancelation. The ground for this, however, wasn’t FIFA’s early registered marks for WORLD CUP QATAR 2022 and WORLD CUP 2022 but the misleading nature of the later marks. According to the World Football Federation, reading the marks, consumers can conclude that Puma is the title sponsor of the event which was not the case.

The Court agreed and upheld these arguments. The parts WORLD CUP QATAR 2022 and WORLD CUP 2022 have a direct and clear message that is associated with the World Football Cup because of which such misleading result is possible.

At the same time, the Court upheld PUMA’s counterclaims that FIFA’s earlier marks were descriptive and not distinctive, however, leaving the door open for proving acquired secondary distinctiveness.

Source: Kluwer Trademark Blog