Procter & Gamble won an important lawsuit in the EU regarding the HUGO BOSS trademark

The European Court has ruled in the case C‑355/21 Perfumesco.pl sp. z o.o. sp.k. v Procter & Gamble International Operations SA. The case focuses our attention on the issue of original products illegally sold in the EU without the trademark owner’s (in this case the exclusive licensee’s) permission. The case has the following background:

Procter & Gamble is a producer of perfumery products. Under a licensing agreement granted by HUGO BOSS Trade Mark Management GmbH Co. KG (‘HUGO BOSS TMM’), it alone was authorised to use the EU word mark HUGO BOSS (‘the HUGO BOSS mark’) and to initiate and pursue, in its own name, actions relating to the infringement of the rights over that mark. The mark was registered in respect of the following goods in Class 3:

‘Fragrant sprays; perfumes, deodorants for personal use; soaps; articles for body and beauty-care’.

In order for customers to be able to test the goods bearing the HUGO BOSS mark, HUGO BOSS TMM makes available free of charge to sellers and authorised distributors, samples of products or ‘testers’, solely for the purpose of presenting and promoting cosmetics, in bottles identical to those used for their sale under the HUGO BOSS mark. Their external packaging is a uniform bright colour with clear information stating that the samples are not intended for sale, for example, by one of the following indications: ‘not for sale’ (not intended for sale), ‘demonstration’ or ‘tester’. The samples are not placed on the market in the European Economic Area (EEA) either by HUGO BOSS TMM or with its consent.

Since January 2012, Perfumesco.pl has been operating a wholesale perfumery business through an online shop. It regularly sends price lists to sellers of online cosmetics, offering for sale, in particular, samples of perfumery products bearing the HUGO BOSS mark and marked ‘Tester’, stating that the samples do not differ in terms of scent from the normal product. The referring court states that Perfumesco.pl does not remove or cover bar codes that appear on the external packaging of goods bearing that mark, and that, relying on its contractual partners as to the lawful origin of the goods it buys, it does not verify the origin of those goods nor check whether those bar codes have been removed.

On 28 July 2016, pursuant to a protective order, a court bailiff seized in Poland perfumes, eau de toilette and scented water in packaging bearing the HUGO BOSS mark, namely, testers not intended for sale, products designated by codes indicating, according to Procter & Gamble’s statement, that the manufacturer intended them to be placed on the market outside the EEA and products in respect of which the bar codes affixed to the packaging had been removed or obscured.

Procter & Gamble brought an action before the Regional Court, Warsaw, Poland, which, by judgment of 26 June 2017, ordered, inter alia, Perfumesco.pl to destroy perfumes, eau de toilette and scented water whose packaging bore the HUGO BOSS mark, in particular testers, which had not been placed on the market in the EEA by HUGO BOSS TMM or with its consent.

By judgment of 20 September 2018, the Court of Appeal, Warsaw, Poland dismissed the appeal brought by Perfumesco.pl. That court stated, inter alia, that, in accordance with Article 102(2) of Regulation No 207/2009, the EU trade mark court may take the measures provided for by the applicable law which it deemed to be appropriate in the circumstances of the case and that that provision permitted the application of Article 286 of the Intellectual Property Law. It found that the Regional Court, Warsaw had applied that article without erring.

First, it considered that, on its wording, Article 286 of the Intellectual Property Law applied only if the products had been manufactured or marked illegally and that that was not the case in the dispute before it. Procter & Gamble did not dispute that the perfumes seized were original products, but argued that HUGO BOSS TMM had not consented to their being placed on the market in the EEA and that Perfumesco.pl had not proved the existence of such consent.

Next, that court found that Article 286 should be interpreted in accordance with Article 10(1) of Directive 2004/48, which it transposes into Polish law, and that all goods infringing intellectual property rights had to be considered to be illegally manufactured within the meaning of Article 286.

Lastly, it noted that the perfumes seized bore masking stickers, preventing identification of the geographical region for which they were intended, and that masking codes had been affixed in place of the removed safety codes. It stated that, even if there was no evidence that the removal of those codes was the act of Perfumesco.pl., the latter should have known, as a perfumery professional, that the goods were placed on the market despite their doubtful origin. It also pointed out that testers had been offered for sale by Perfumesco.pl., which should have been fully aware that HUGO BOSS TMM had not consented to their being placed on the market in the EEA.

Perfumesco.pl. brought an appeal on a point of law before the referring court, the Supreme Court, Poland, alleging, inter alia, infringement of Article 286 of the Intellectual Property Law. In that regard, it submits that Procter & Gamble contends a lack of consent on the part of the proprietor of the HUGO BOSS mark to the placing on the market in the EEA of the goods seized, without denying that those goods are original products.

That court observes that the lower courts hearing the case in the main proceedings drew attention to the wording of Article 10(1) of Directive 2004/48 and interpreted Article 286 of the Intellectual Property Law in a manner consistent with EU law. It notes that, according to those courts, Article 10(1) of Directive 2004/48 concerns goods which are found to infringe an intellectual property right and that, therefore, the destruction of goods may be ordered, even where they have not been illegally ‘manufactured or marked’ under national law.

The referring court notes, on the one hand, that several arguments also accepted in the legal literature support a literal interpretation of Article 286 of the Intellectual Property Law, in particular the fact that the amendment of that article in 2007 resulted from the implementation of Directive 2004/48. On the other hand, taking account of the obligation to interpret national law in conformity with EU law, the interpretation of Article 286 should be based on the interpretation of Article 10(1) of that directive.

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

‘Must Article 10 of Directive [2004/48] be interpreted as precluding the interpretation of a provision of national law to the effect that a protective measure in the form of destruction of goods relates only to goods illegally manufactured or illegally marked, and cannot be applied to goods illegally placed on the market in the [EEA] which cannot be found to have been illegally manufactured or illegally marked?’

The Court’s decision:

Article 10(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, must be interpreted as:

precluding the interpretation of a provision of national law according to which a protective measure in the form of the destruction of goods may not be applied to goods which have been manufactured and to which an EU trade mark has been affixed, with the consent of the proprietor of that mark, but which were placed on the market in the European Economic Area without his or her consent.

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Can a trademark be invalidated even if the claim for the lawsuit is withdrawn? – an EU Court decision

The European Court has ruled in an important case C‑256/21 KP v TV, Gemeinde Bodman-Ludwigshafen, which concerns the issue of to what extent one trademark can be invalidated if the main claim for the lawsuit is withdrawn. The dispute has the following background:

KP is the proprietor of the EU word mark Apfelzügle (‘the contested mark’), registered on 19 October 2017 for services in Classes 35, 41, and 43. It is common ground that the term ‘Apfelzügle’ denotes a vehicle designed for the harvesting of apples, consisting of several trailers pulled by a tractor.

On 26 September 2018, TV, which operates a fruit farm, and the Municipality of Bodman-Ludwigshafen published promotional information on an activity involving the harvesting and tasting of apples as part of a ride on the Apfelzügle.

KP brought an action for infringement of the contested mark before the Regional Court, Munich, Germany, seeking an order prohibiting TV and the Municipality of Bodman-Ludwigshafen from using the term ‘Apfelzügle’ for the services covered by that mark. Before that court, TV and the Municipality of Bodman-Ludwigshafen filed counterclaims for a declaration of invalidity of the contested mark, pursuant to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c) and (d) thereof.

At the hearing before the Regional Court, Munich, KP withdrew his action for infringement.

TV and the Municipality of Bodman-Ludwigshafen having pursued their counterclaims in spite of that withdrawal, the Landgericht München (Regional Court, Munich), by a judgment of 10 March 2020, held that those claims were admissible, declared the contested mark invalid in respect of the services in Class 41 and rejected the claims in question as to the remainder.

The Municipality of Bodman-Ludwigshafen appealed against that judgment before the Higher Regional Court, Munich, Germany – the referring court – seeking a declaration of invalidity of the contested mark also as regards the services in Classes 35 and 43.

In its decision, the referring court states that it must first assess the admissibility of the counterclaims brought by the defendants in the light of the withdrawal by KP, noting that it is not bound on that point by the decision of the court of first instance.

In that regard, relying on the spirit and purpose of the counterclaim provided for by Regulation 2017/1001, the referring court expresses doubts as to whether an EU trademark court may rule on such a counterclaim if there has been a withdrawal of the action for infringement in response to which the counterclaim was brought.

Specifically, the referring court notes that the registration of an EU trademark is an act of a body of the European Union and that national courts do not have jurisdiction to annul such acts, save in the case of an exception expressly provided for, such as that of the filing of a counterclaim, which is, moreover, confirmed in Article 128(7) of Regulation 2017/1001. In the view of the referring court, EUIPO has ‘jurisdiction in principle’ in the matter, which is conferred on it ‘as a matter of priority’. That follows, inter alia, from Article 63(1) of Regulation 2017/1001.

The referring court observes that, according to the predominant view in German legal literature, a case such as the present one comes not within the scope of Regulation 2017/1001 but rather, pursuant to Article 129(3) of that regulation, within the scope of the rules governing German civil procedure and, specifically, of Paragraph 261(3)(2) of the ZPO, according to which the jurisdiction of the EU trade mark court established as a result of the filing of a counterclaim is independent of the outcome of the action for infringement and cannot therefore cease to exist in the event that that action is withdrawn.

However, in the view of the referring court, the need to give the defendant an opportunity to defend himself or herself no longer exists where, as a result of a withdrawal, there is no longer any need for the EU trademark court to rule on the action for infringement. That interpretation is, moreover, supported by the judgment of 19 October 2017, Raimund (C‑425/16, EU:C:2017:776). Thus, national procedural law should apply only for as long as an action provided for under EU law is pending. Furthermore, such an interpretation would not place an undue and disproportionate burden on the counterclaimant, since he or she will still be able to bring proceedings before EUIPO under Article 63 of Regulation 2017/1001.

In those circumstances, the Oberlandesgericht München (Higher Regional Court, Munich) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Must Article 124(d) and Article 128 of Regulation 2017/1001 be interpreted as meaning that the EU trademark court has jurisdiction to rule on the invalidity of an EU trademark asserted by a counterclaim within the meaning of Article 128 of Regulation 2017/1001 even after the action for infringement based on that EU trade mark for the purposes of Article 124(a) [of that regulation] has been validly withdrawn?’

The Court’s decision:

Article 124(a) and (d) and Article 128 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark,

must be interpreted as meaning that an EU trademark court hearing an action for infringement based on an EU trade mark the validity of which is challenged by means of a counterclaim for a declaration of invalidity still has jurisdiction to rule on the validity of that mark, in spite of the withdrawal of the main action.

The owner of the PHILADELPHIA trademark prevailed against VEGANDELPHIA in the EU

When you want to use a trademark that even vaguely associates with another well-known mark this always hides potential risks. Such is the case between Intercontinental Great Brands LLC and Costa & Casimiro, Lda.

The Portuguese company Costa & Casimiro registered successfully the following combined European trademark in class 29 – Spreading cream based on almonds; Prepared fruit products; Vegetable fats for edible purposes; Vegetable oils for edible purposes; Mixed vegetable oils for culinary use; Vegetable extracts for food; Vegetable pates; Almonds, processed; Almond oil:

Against this mark, an application for invalidation was filed by the US company Intercontinental Great Brands on the ground of several earlier EU, Spanish and Portuguese trademarks PHILADELPHIA in class 29 – meat, fish, poultry and game; meat extracts; Canned, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products, cheese, cream cheese; edible oils and fats.

On top of that, the US company claimed an acquired reputation for its trademarks based on Article 8(5) EUTMR. According to Intercontinental Great Brands, the Portuguese company tries to take advantage of their earlier marks by using a sign that associates with them.

The EUIPO considered the goods in both marks similar or identical. When it comes to the signs, the Office concluded that they are phonetically and visually similar to a mid-degree. The reason for this was the fact that the first part of the mark applied for VEGAN is descriptive of the goods in class 29. The second part DELPHIA duplicate the earlier marks in their last parts and conveys an association with them.

Conceptually the signs are not similar. PHILADELPHIA is a city in the USA, which name has the necessary distinctiveness for the goods in class 29.

Costa & Casimiro’s arguments that DELPHIA is a personal name were dismissed because there was no solid evidence that many people in the EU have such a name or are aware of it.

On the other hand, the US company successfully proved reputation of its marks in the EU, citing strong market shares in several countries and massive advertisement campaigns.

Based on this, the EUIPO decided that the signs are similar enough and that the available reputation of the earlier marks supports the conclusion that some unfair advantages could be taken from it through the later application. The element DELPHIA associates with PHILADELPHIA and consumers can perceive the VEGANDELPHIA brand as a vegan variant of the earlier signs.

The invalidation was upheld.

Source: Alicante news.

Breaking news – the Unified Patent Court opens its doors

The UPC Preparatory team announced that the Unified Patent Court will open its doors on 01.04.2023. From that date, the Court will start to receive new cases.

As it is well-known the Unified Patent Court will supplement and strengthen the existing centralized European patent granting system. The idea behind the implementation of this new cross-EU court is to save money and time for patent owners when they try to enforce their rights in the EU. So far this was a challenge because patent enforcement has happened only on a national level in every single EU Member State. With the new supranational court, the EU tries to become more competitive for innovation owners and investors from around the world.

An Instagram post of Rihanna has caused trouble for Puma shoe design in the EU

The Board of Appeal of the EUIPO has ruled in one interesting case related to Community designs and why their protection should be considered in great detail.

The case concerns the RCD application filed in 2016 by PUMA for the following design of shoes:

Several years later, an invalidation proceeding was initiated against this design on the grounds of lack of novelty and individual character. For evidence, an Instagram post was submitted where the well-known signer Rihanna was pictured wearing quite similar shoes. The post was dated 2014.

According to the EU legislation, one design is protectable only if it is new and original. Novelty means that there has to be no public information for the design 12 months before the application is filed with the Patent Office.

In the case at hand, The Board found that Rihanna’s post on Instagram, having more than 300 000 likes and additional media coverage, was solid proof that the shoes design was public way before its application with the EUIPO.

Furthermore, the BoA points out that the designs under comparison create similar overall impressions
on account of the same shape and form of the shoe, consisting of an upper part with a number of lines
and holes placed and arranged the same way, as well as the same shape and form of the thick, vertically-striped sole. Thus, the contested design lacks individual character.

The case comes to show us how important is timing in the case of design protection. In such situations, there are two main options, the owner to file an application sooner or the marketing activities to be postponed.

Is the bicycle’s design saddle visible when used or not – a key question for design protection in the EU

The Advocate General of the European Court M. SZPUNAR has issued his opinion in the case C‑472/21 Monz Handelsgesellschaft International mbH & Co. KG срещу Büchel GmbH & Co. Fahrzeugtechnik KG.

This case focuses our attention on the question of to what extent a design incorporated into a complex product should be visible in order to be suitable for industrial design protection. The case has the following background:

Monz Handelsgesellschaft International mbH & Co. KG (‘Monz’) is the holder of design No 40 2011 004 383-0001, registered at the German Patent and Trade Mark Office, DPMA since 3 November 2011 for the products ‘saddles for bicycles or motorbikes’. The design is registered with the following single representation showing the underside of a saddle:

On 27 July 2016, Büchel GmbH & Co. Fahrzeugtechnik KG (‘Büchel’) lodged an application with the DPMA for a declaration of invalidity of the contested design, claiming that it did not meet the necessary conditions for protection as to novelty and individual character. It asserted that the design was excluded from protection under Paragraph 4 of the DesignG on the ground that, as a component part of a complex product such as a ‘bicycle’ or a ‘motorcycle’, it was not visible during normal use.

By decision of 10 August 2018, the DPMA rejected the application for a declaration of invalidity, holding that there were no grounds to exclude the contested design from protection under Paragraph 4 of the DesignG. In its view, although it was true that the design applied for in relation to ‘saddles for bicycles [or] motorbikes’ was a ‘component part of a complex product’, that component nevertheless remained visible during normal use of that complex product. The DPMA considered that normal use also covered ‘the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work’, especially since Paragraph 1(4) of the DesignG contains ‘an exhaustive list of non-normal uses for the purposes of Paragraph 4 of the DesignG, designed as an exception and, as such, to be interpreted strictly’. The DPMA held that it followed from that provision that ‘any use by the end user which is not maintenance, servicing or repair work … therefore constitutes normal use’.

Following an objection lodged by Büchel against that decision, the Federal Patent Court, Germany declared the contested design invalid, by decision of 27 February 2020, on the ground that it did not satisfy the requirements of novelty and individual character. According to the Bundespatentgericht, under Paragraph 4 of the DesignG, only components which remain ‘visible, as component parts of the complex product, after they have been mounted/incorporated in it’ are automatically eligible for design protection. Conversely, a perspective which arises only because or when the component part of a complex product is detached cannot establish visibility such as to preclude exclusion from protection under Paragraph 4 of the DesignG. The Bundespatentgericht considered only riding a bicycle and getting on and off a bicycle as normal use for the purposes of Paragraph 1(4) of the DesignG. In its view, during such uses, the underside of the saddle is not visible either to the end-user or to another person. Monz has brought an appeal against that decision before the referring court.

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

‘1. Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of [Directive 98/71] if it is objectively possible to recognize the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?

2. If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:

(a) When assessing the “normal use” of a complex product by the end-user within the meaning of Article 3(3) and (4) of [Directive 98/71], is it the use intended by the manufacturer of the component part or complex product that is relevant, or the customary use of the complex product by the end user?

(b) What are the criteria for assessing whether the use of a complex product by the end user constitutes a “normal use” within the meaning of Article 3(3) and (4) of [Directive 98/71]?’

The Advocate General’s opinion:

1. Article 3(3) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as meaning that

  • in order for a design applied to or incorporated in a product which constitutes a part of a complex product to enjoy protection under that directive, the component in question must be visible in the situation of normal use of that complex product.

2.  Article 3(4) of Directive 98/71 must be interpreted as meaning that

  • the words ‘normal use’ refer to all situations which may reasonably arise during use of a complex product by the end user.

If this is confirmed by the Court it will mean that designs incorporated into complex products will have broader scope for interpretation of what exactly is a visible use.

Lidl lost a chocolate bunny lawsuit in Switzerland

The Swiss Federal Court has issued a ruling in a lawsuit between the well-known chocolate producer Lindt & Sprüngli and the grocery stores chain Lidl.

The case concerns the following chocolate bunny offered by Lidl under trademark Favorina:

This product resembles the famous golden chocolate bunny produced by Lindt & Sprüngli for which the company has the following registered 3D trademark in Switzerland.

Due to this, a lawsuit was initiated.

Taking into account all facts and evidence, the Court found a trademark infringement considering Lidl’s product similar enough in order to create confusion in the public mind. The Court issued an injunction against Lidl and prohibited the store’s chain from producing and distributing copies of the Lindt golden bunny.

According to the Court, the dermoscopic surveys provided by Lindt & Sprüngli proved unquestionably that the shape of the Lindt Gold Bunny has become a trademark through long and intensive market use. What’s more this conclusion does not depend on the color of the product at hand.

The Court dismissed the argument that the available Favorina trademark label on Lidl’s product can distinguish both products in the consumers’ eyes. The reason for this was the fact that consumers do not pay high attention when purchasing foodstuff which means that they can buy a product only based on its recognizable shape without the need to read the mark on it.

Source: Kluwer Trademark Blog