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Is the re-use of branded carbonated gas bottles allowed – an EU Court ruling

The European Court has ruled in the case C‑197/21 Soda-Club (CO2) SA, SodaStream International BV v MySoda Oy. The main question, in this case, is whether refilled by someone else carbonated gas bottles infringes the trademark rights of the original producer of the bottles. The dispute has the following background:

SodaStream, a multinational corporation, manufactures and sells carbonation devices that enable consumers to make carbonated water and flavored carbonated beverages from tap water. In Finland, SodaStream markets these devices with a refillable carbon dioxide bottle, which it also sells separately. The companies that form SodaStream are the owners of the European Union trademarks and the national trademarks “SODASTREAM” and “SODA-CLUB”. The specified brands are found on the label and engraved on the aluminum body of these bottles.

MySoda, a company based in Finland, markets in that Member State carbonation devices under the brand name ‘MySoda’ in packaging that does not normally include a carbon dioxide bottle. Since June 2016, MySoda has been offering Finnish-filled carbon dioxide bottles for sale, which are compatible with both its own carbonators and those of SodaStream. Some of these bottles were originally marketed by SodaStream.

After receiving empty SodaStream bottles returned by consumers through distributors, MySoda refills them with carbon dioxide. It replaces the original labels with its own, leaving visible the SodaStream branding engraved on the bottles’ bodies.

For this purpose, MySoda uses two different labels. The first has the MySoda logo and the words “Finnish carbon dioxide for carbonation equipment” in large print in pink, and in small print MySoda’s name as the company that filled the bottle, as well as a link to its website for more detailed information. The second white label has the words “carbon dioxide” in capital letters in five different languages, and among the product information, in small print, MySoda’s name as the company that filled the bottle, as well as a statement that it has no relation to the original supplier of the bottle or his company or the claimed brand that appears on the bottle. In addition, this label contains a link to the MySoda website for more information.

SodaStream initiated a lawsuit for trademark infringement. The Supreme Court of Finland wasn’t sure whether such refilling and use of a trademark was a real infringement and asked the EU Court for clarification.

According to the EU Court:

Article 15, paragraph 2 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark and Article 15, paragraph 2 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the laws of the Member States on trademarks

shall be interpreted to mean that:

the proprietor of a trademark who has placed on the market in a Member State good bearing that trademark which are intended for repeated use and refilling, shall not be entitled under these provisions to oppose the further marketing of those goods in that Member State by a reseller, who has refilled them and replaced the original brand label with another label, leaving the original brand visible on those goods, unless this new label gives consumers the false impression that there is an economic relationship between the reseller and the brand owner. This likelihood of confusion must be assessed in light of the information on the product and its new label, as well as distribution practices in the relevant sector and the extent to which consumers are aware of those practices.

(unofficial translation from the Court’s decision)

Belize joins the Madrid Protocol for the registration of international trademarks

WIPO reports about the accession of Belize to the Madrid Protocol for international registration of trademarks. The Protocol will come into force for the country on 24.02.2023, a date after which the country will be able to be designated in applications for such marks.

The country has made some declarations, two of which are that potential refusals for registration can be issued for up to 18 months as well as that there will be individual fees for the designation of Belize.

Can a trademark license be discontinued only by one of the mark’s co-owners?

The Advocate General of the European Court M. CAMPOS SÁNCHEZ-BORDONA has provided an opinion in the case C‑686/21 VW, Legea Srl срещу SW, CQ, ET, VW, Legea Srl.

This case focuses our attention on the question of whether one of the co-owners of a trademark can put an end to a license alone without consent from the other co-owners. The background of the case is as follows:

In 1990, VW, SW, CQ and ET formed a general partnership which, on 29 July 1992, filed an application for national registration of the trade mark Legea for sports goods. Registration was granted on 11 May 1995 under the number 650850.

In 1993, the joint proprietors of the trade mark ‘Legea’ unanimously granted Legea Srl (‘the company Legea’) a licence to use that mark for an indefinite period and free of charge. 

In December 2006, VW expressed his dissent to the continuation of the licence. 

In 2009, the company Legea instituted proceedings before the District Court, Naples, Italy)seeking to obtain, inter alia, a declaration of invalidity of certain marks registered by VW which contained the word ‘Legea’. For his part, VW lodged a counterclaim in the same proceedings.

In those proceedings, the dispute concerned:

–  whether the assignment of the use of the mark in 1993 required the unanimous consent of the joint proprietors or, on the other hand, majority agreement was sufficient;

–  whether that assignment could be revoked by the withdrawal of consent by one of the joint proprietors (VW).

On 11 June 2014, the District Court, Naples gave judgment, ruling that the use of the mark by the company Legea was: (a) lawful until 31 December 2006, since it occurred with the unanimous consent of all the joint proprietors; and (b) unlawful after 31 December 2006, in the light of the disagreement expressed by VW.

An appeal was lodged against that judgment before the Court of Appeal, Naples, Italy, which set the judgment aside in part in its judgment of 11 April 2016.

The appeal court held that use of the mark by the company Legea was also lawful in the period after 31 December 2006, because the joint proprietors had legitimately decided by a three quarters majority to allow that company to continue using the mark after that date. In the case of joint proprietorship, there would be no need for the unanimous agreement of the joint proprietors in order to assign the exclusive use of the trade mark to a third party.

VW appealed against the appellate judgment before the Supreme Court of Cassation. In summary, that court has put forward the following arguments as the basis for its request for a preliminary ruling:

– The provisions of the Civil Code governing joint ownership of property, which are applicable to joint proprietorship of trade marks, along with the provisions governing withdrawal from a contract, must be interpreted in the light of EU trade mark legislation.

–  EU trade mark law provides that trade marks may be the subject of a licence and acknowledges the possibility of joint proprietorship of a mark. However, it does not lay down any express rules governing whether the exercise of the rights relating to joint ownership of property requires unanimous or majority agreement in order to assign the right of exclusive use of a mark to a third party, for an indefinite period and free of charge.

– It is also necessary to clarify whether, where such an assignment occurs by unanimous agreement, one of the joint proprietors may subsequently dissent and terminate the assignment.

Against that background, the Supreme Court of Cassation has referred the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Are the EU rules in question [Article 10 of Directive 2015/2436 and Article 9 of Regulation 2017/1001], in so far as they provide for the exclusive rights of the proprietor of an EU trade mark and, at the same time, for the possibility of such a mark being owned by several individuals in shares, to be interpreted as meaning that the assignment to a third party of the exclusive right to use a shared trade mark, free of charge and for an indefinite period, can be decided upon by a majority of the joint proprietors, or as meaning that it requires their unanimous consent instead?

(2) If it is the latter, in the case where an EU trade mark or a national trade mark is owned by several individuals, would it be consistent with the principles of EU law for it to be impossible for one of the joint proprietors of the mark, after the mark has been assigned to a third party by unanimous decision, free of charge and for an indefinite period, unilaterally to withdraw from that decision or, alternatively, would it, on the contrary, be consistent with the principles of EU law if the joint proprietor were not bound in perpetuity by the original intent, such that he or she could retract, with the resulting effect on the act of assignment?’

The Advocate’s opinion is that there is no harmonisation on the EU level and due to that the issue remains to be solved based on the national law and practice in every Member State:

Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, together with, where relevant, the corresponding provisions of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks and of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark

are to be interpreted as meaning that in the case of joint proprietorship of a trade mark, the formation of common consent on the part of the joint proprietors to grant a third party a licence to use a national or a European Union trade mark, or to terminate that licence, is governed by the applicable provisions of the Member State.

New fees for international trademarks for Norway

WIPO reports about new individual fees for international trademark applications where Norway is a designated country. The new fees will come into force on 01.03.2022 and are as follow:

Access to personal data in case of copyright infringements in the EU

The Advocate General of the European Court M. SZPUNAR has issue an opinion in the case C‑470/21 La Quadrature du Net, Fédération des fournisseurs d’accès à Internet associatifs, Franciliens.net, French Data Network v Premier ministre, Ministère de la Culture.

The dispute concerns the scope of access to personal data in case of copyright infringements on the internet. The case has the following background:

By application of 12 August 2019 and two supplementary submissions of 12 November 2019 and 6 May 2021, La Quadrature du Net, the Fédération des fournisseurs d’accès à Internet associatifs, Franciliens.net and French Data Network brought an action before the Council of State for annulment of the implied decision by which the Prime Minister, France rejected their application for the repeal of the Decree of 5 March 2010, even though, in their view, that decree and the provisions constituting its legal basis unreasonably interfere with the rights guaranteed by the French Constitution and, in addition, infringe Article 15 of Directive 2002/58 and Articles 7, 8, 11, and 52 of the Charter.

In particular, the applicants in the main proceedings argue that the Decree of 5 March 2010 and the provisions constituting its legal basis permit access to connection data in a manner which is disproportionate to minor copyright infringements committed online, without prior review by a court or an authority offering guarantees of independence and impartiality.

In that regard, the referring court states, first of all, that the Court, in its most recent judgment in La Quadrature du Net and Others, held that Article 15(1) of Directive 2002/58, read in the light of Articles 7, 8 and 11 and Article 52(1) of the Charter, does not preclude legislative measures which, for the purposes of safeguarding national security, combating crime and safeguarding public security, provide for the general and indiscriminate retention of data relating to the civil identity of users of electronic communications systems. Thus, such retention is permissible, without any specific time limit being imposed, for the purposes of investigating, detecting and prosecuting criminal offences in general.

The referring court infers from this that the plea raised by the applicants in the main proceedings, alleging that the Decree of 5 March 2010 is unlawful because it was adopted in the context of action to combat minor offences, must therefore be dismissed.

Next, the referring court observes that the Court, in its judgment in Tele2 Sverige and Watson, held that Article 15(1) of Directive 2002/58, read in the light of Articles 7, 8 and 11 and Article 52(1) of the Charter, must be interpreted as precluding national legislation governing the protection and security of traffic and location data, and more particularly, the access of the competent national authorities to retained data, where that access is not subject to a prior review by a court or an independent administrative authority.

It states that the Court, in its judgment in Tele2, made clear that, in order to ensure, in practice, that those conditions are fully respected, it is essential that access of the competent national authorities to retained data should, as a general rule, except in cases of validly established urgency, be subject to the requirement of a prior review carried out either by a court or by an independent administrative body, and that the decision of that court or body should be made following a reasoned request by those authorities submitted, inter alia, within the framework of procedures for the prevention, detection or prosecution of crime.

The referring court points out that the Court recalled that requirement in its judgment in La Quadrature du Net and Others, concerning the real-time collection of connection data by the intelligence services, and in its judgment in Prokuratuur (Conditions of access to data relating to electronic communications), concerning national authorities’ access to connection data.

Finally, the referring court notes that, since its establishment in 2009, Hadopi has issued over 12.7 million recommendations to subscribers under the graduated response procedure provided for in Article L 331-25 of the CPI, of which 827 791 were issued in 2019 alone. To that end, the officials of Hadopi’s Committee for the protection of rights must be able to collect, each year, a considerable volume of data relating to the civil identity of the users concerned. The referring court considers that, given the volume of those recommendations, making such data collection subject to a prior review might make it impossible for recommendations to be issued at all.

In those circumstances, the Conseil d’État (Council of State) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Are the civil identity data corresponding to an IP address included among the traffic and location data to which, in principle, the requirement [of] prior review by a court or an independent administrative entity [whose decisions are binding] applies?

(2) If the first question is answered in the affirmative, and having regard to the fact that the data relating to the civil identity of users, including their contact details, are not particularly sensitive data, is Directive [2002/58], read in the light of the [Charter], to be interpreted as precluding national legislation which provides for the collection of those data, corresponding to the IP addresses of users, by an administrative authority, without prior review by a court or an independent administrative entity [whose decisions are binding]?

(3)  If the second question is answered in the affirmative, and having regard to the fact that the data relating to civil identity are not particularly sensitive data, that only those data may be collected and they may be collected solely for the purposes of preventing failures to fulfil obligations which have been defined precisely, exhaustively and restrictively by national law, and that the systematic review of access to the data of each user by a court or a third-party administrative entity [whose decisions are binding] would be liable to jeopardise the fulfilment of the public service [mission] entrusted to the administrative authority which collects those data, which is itself independent, does [Directive 2002/58] preclude the review from being performed in an adapted fashion, for example as an automated review, as the case may be under the supervision of a department within the body which offers guarantees of independence and impartiality in relation to the officials who have the task of collecting the data?’

The Advocate’s opinion:

Article 15(1) of Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications), read in the light of Articles 7, 8, 11 and Article 52(1) of the Charter of Fundamental Rights of the European Union,

must be interpreted as not precluding national legislation which allows providers of electronic communications services to retain, and an administrative authority, responsible for protecting copyright and related rights against infringements of those rights committed on the internet, to access data which is limited to civil identity data corresponding to IP addresses, so that that authority can identify the holders of those addresses suspected of having committed those infringements and, if appropriate, take action against them, where that access is not subject to a prior review by a court or an independent administrative body, provided that those data are the only means of investigation enabling the person to whom that address was assigned at the time of the commission of the infringement to be identified.

The European Commission has approved new rules for industrial design protection in the EU

The European Commission has approved new rules for the protection of industrial designs in the EU. The proposal aims to:

• Simplify and streamline the procedure for the EU-wide registration of a design: By making it easier to present designs in an application for registration (for instance by submitting video files) or combine more than one design in one application, as well as by lowering the fees to be paid for the first ten years of protection, the new rules will make registered Community design protection more accessible, efficient and affordable in particular for individual designers and SMEs.
• Harmonise procedures and ensure complementarity with national design systems: The new framework aims to ensure greater complementarity among EU level and national design protection rules, for instance on requirements for registering designs or simplifying rules for invalidating registered designs. This will help to create a level playing field for businesses across Europe.
• Allow reproducing original designs for repair purposes of complex products: By introducing an EU-wide ‘repair clause’ into the Design Directive, the new rules will help to open up and increase competition in the spare parts market. This is particularly important in the car repair sector, where it should become legally possible in all EU countries to reproduce identical “must match” car body parts for repair to restore its original appearance. The proposed ‘repair clause’ should have instant legal effect only for future designs while designs already granted protection should remain covered during a transitional period of ten years. 

The next steps are for this proposal to be approved by the European Parliament and Counsel and after that the related Regulation and Directive to be adopted and come into force for all EU Member States.