Breaking news – Amazon repelled an attack by Coty after an EU Court decision

photo-1522780550166-284a0288c8dfThe European court has ruled in the case C‑567/18 Coty Germany GmbH  v Amazon. The case concerns the following background:

Coty, a distributor of perfumes, holds a licence for the EU trade mark DAVIDOFF registered under No 876 874 (‘the mark at issue’), which enjoys protection for ‘perfumes, essential oils, cosmetics’.

Amazon Services Europe enables third-party sellers to place offers for sale in respect of their goods in the ‘Amazon-Marketplace’ section of the website http://www.amazon.de. In the event of sale, contracts concerning those goods are concluded between the third-party sellers and the purchasers. Those third-party sellers may also avail themselves of the ‘Fulfilment by Amazon’ scheme, under which goods are stored by Amazon group companies, including Amazon FC Graben, which operates a warehouse. Those goods are dispatched by external service providers.

On 8 May 2014 one of Coty’s test purchasers ordered on the website http://www.amazon.de a bottle of ‘Davidoff Hot Water EdT 60 ml’ perfume that was offered for sale by a third-party seller (‘the seller’) and dispatched by the Amazon group under that scheme. After Coty sent a letter of formal notice to the seller on the ground that the rights conferred by the mark at issue were not exhausted in respect of the goods consigned by the seller to Amazon FC Graben under that scheme, those goods not having been put on the market in the European Union under that trade mark by the proprietor or with its consent, the seller signed a cease-and-desist declaration, coupled with a penalty clause.

By letter of 2 June 2014, Coty requested Amazon Services Europe to return all the bottles of perfume bearing the mark at issue stocked on behalf of the seller. Amazon Services Europe sent Coty a package containing 30 bottles of perfume. After another company belonging to the Amazon group informed Coty that 11 out of the 30 bottles sent originated from another seller’s stock, Coty requested that Amazon Services Europe disclose the name and address of that other seller, as the rights conferred on 29 out of the 30 bottles by the mark at issue had not been exhausted. Amazon Services Europe replied that it was not in a position to accede to that request.

Taking the view that Amazon Services Europe’s conduct, on the one hand, and that of Amazon FC Graben, on the other, infringed its rights in the mark at issue, Coty requested, in essence, that those two companies be ordered, subject to penalties, to desist, in the course of trade, from stocking or dispatching ‘Davidoff Hot Water’ brand perfumes in Germany, or from causing them to be stocked or dispatched, if those goods were not put on the Union market with Coty’s consent. It requested, in the alternative, that the same order be made against those companies in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes and, in the further alternative, that the same order be made against them in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes which have been stored on behalf of the seller or which cannot be attributed to another seller.

The Regional Court, Germany dismissed the action brought by Coty. The appeal brought by Coty was dismissed, with the court of appeal holding, inter alia, that Amazon Services Europe had neither stocked nor dispatched the goods concerned and that Amazon FC Graben had kept those goods on behalf of the seller and other third-party sellers.

Coty brought an appeal on a point of law (Revision) before the referring court. Only Amazon Services Europe and Amazon FC Graben are respondents before that court.

The referring court states that whether that appeal is successful, in so far as Coty disputes the court of appeal’s finding that Amazon FC Graben is not liable as a perpetrator of an infringement of trade mark rights, depends on the interpretation to be given to Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001.

In particular, it emphasises that whether the appeal on a point of law is successful depends on whether those provisions are to be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stocks those goods in order to offer them or put them on the market for the purposes of those provisions, even if it is only the third party who intends to offer those goods or put them on the market.

The referring court also states that, since Coty bases one of its claims on the risk of a repeat infringement, its action is well founded only if the conduct of the Amazon group companies in question is established to be unlawful both at the material time in the main proceedings and when the decision on the appeal on a point of law is issued.

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

‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’

The Court’s decision:

Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims.

Turkish cheese sticks cannot be a 3D trademark in the EU

music-1262026_960_720The General Court of the European Union has ruled in case T‑572/19,  Muratbey Gida Sanayi ve Ticaret AŞ v EUIPO. It concerns an attempt for registration of the following EU 3D trademark for the shape of cheese sticks in class 29 – milk products:

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The EUIPO refused the registration with the argument that it is not distinctive. The Turkish applicant claimed that the shape was novel, original and unique, offered in the market for the first time by him. Because of this the company won a World Dairy Innovation Award 2018.

The Court disagreed. Novelty and originality are not criteria for assessment of the distinctive character of a sign. The award could be a factor but only if it was based on a consumer perception.

According to the Court, other producers were offering similar products too because of which the shape of this cheese is not distinctive enough to be registered as a trademark.

Source: WIPR.

Trademark owners can seek compensations even for cancelled marks

judge-1587300_960_720The European Court has ruled in case C‑622/18 AR v Cooper International Spirits LLC, St Dalfour SAS, Établissements Gabriel Boudier SA. The case concerns the following background:

The appellant in the main proceedings markets alcohol and spirits.

On 5 December 2005, he filed an application for registration of the semi-figurative trade mark SAINT GERMAIN with the National Institute of Industrial Property, France.

That mark was registered on 12 May 2006 under No 3 395 502 for goods and services in Classes 30, 32 and 33 corresponding in particular to alcoholic beverages (except beers), ciders, digestives, wines and spirits, as well as alcoholic extracts and essences.

On 8 June 2012, having learnt that Cooper International Spirits was distributing under the name ‘St-Germain’ a liqueur manufactured by St Dalfour and Établissements Gabriel Boudier, the appellant in the main proceedings brought proceedings against those three companies before the Regional Court, Paris, France) for trade mark infringement by reproduction or, in the alternative, by imitation.

In parallel proceedings, by judgment of 28 February 2013, the Regional Court, Nanterre, France revoked the appellant in the main proceedings’ trade mark SAINT GERMAIN with effect from 13 May 2011. That judgment was upheld by judgment of the Court of Appeal, Versailles, France of 11 February 2014, which has become irrevocable.

Before the Regional Court, Paris the appellant in the main proceedings maintained his claims alleging infringement for the period prior to the revocation which was not time-barred, that is to say, from 8 June 2009 to 13 May 2011.

Those claims were dismissed in their entirety by judgment of the Regional Court, Paris of 16 January 2015, on the ground that the trade mark in question had not been used since it had been filed.

That judgment was upheld by judgment of the Court of Appeal, Paris, France) of 13 September 2016.

As grounds for that judgment, the Court of Appeal, Paris found, inter alia, that the evidence relied on by the appellant in the main proceedings was not sufficient to demonstrate that the mark SAINT GERMAIN had actually been used.

The Court of Appeal, Paris concluded that the appellant in the main proceedings could not successfully argue that the trade mark’s function as a guarantee of origin had been adversely affected, or that the monopoly on use conferred by his mark had been adversely affected, or indeed that its investment function had been adversely affected, since the use of a sign identical with the trade mark by a competitor is not such, failing any use of that mark, as to impede its use substantially.

The appellant in the main proceedings brought an appeal in cassation against that judgment, on the ground that the Court of Appeal, Paris had infringed Articles L 713‑3 and L 714‑5 of the Intellectual Property Code.

In support of that appeal, he submits that all his claims alleging infringement were incorrectly dismissed on the ground that he had not demonstrated that the mark SAINT GERMAIN had actually been used, even though neither EU law nor the Intellectual Property Code provides that, during the five-year period following registration of a trade mark, the proprietor of that mark must prove that the mark has been used in order to benefit from trade mark protection. Moreover, as regards infringement, the likelihood of confusion on the part of the public must be assessed in the abstract, in the light of the subject matter of the registration, and not in relation to a specific situation on the market.

Conversely, the respondents in the main proceedings contend that a trade mark performs its essential function only if it is actually used by its proprietor to indicate the commercial origin of the goods or services designated in its registration and that, if the trade mark is not used in accordance with its essential function, the proprietor cannot complain of any adverse effect on that function or a risk of its being adversely affected.

The Court of Cassation, France states, as a preliminary point, that the appeal in cassation before it does not take issue with the fact that the Court of Appeal, Paris examined the infringement not in the light of the reproduction of the mark but of its imitation, which presupposes that there is a likelihood of confusion on the part of the public. It points out that, under national law, the court hearing the case on the merits has sole jurisdiction to assess whether there is such a likelihood of confusion and the Court of Cassation, for its part, has jurisdiction only to assess whether the judgment under appeal correctly applies the law applicable.

It observes that, with regard to infringement by imitation, the Court has held that use of a sign which is identical or similar to the trade mark which gives rise to a likelihood of confusion on the part of the public affects or is liable to affect the essential function of the mark (judgment of 12 June 2008, O2 Holdings and O2 (UK), C‑533/06, EU:C:2008:339, paragraph 59), and that, although a trade mark’s function of indicating origin is not the only function of the mark that is worthy of protection against injury by third parties (judgment of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 39), the protection conferred against infringement by reproduction, in so far as it is absolute and reserved for injury caused not only to the mark’s essential function, but also to other functions, in particular those of communication, investment or advertising, is broader than the protection provided against infringement by imitation, the application of which requires proof of a likelihood of confusion and, accordingly, the possibility that the essential function of the mark may be affected (judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraphs 58 and 59).

The Court of Cassation also stated that the Court has held that a trade mark is always supposed to fulfil its function of indicating origin, whereas it performs its other functions only in so far as its proprietor uses it to that end, in particular for the purposes of advertising or investment (judgment of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 40).

It adds that, in the light of that case-law, it would appear that, since the present case turns on whether or not there is infringement by imitation, all that needs to be examined is the alleged adverse effect on the essential function of the mark, resulting from a likelihood of confusion.

In that regard, it points out that, in the judgment of 21 December 2016, Länsförsäkringar (C‑654/15, EU:C:2016:998), the Court held that Article 15(1) and Article 51(1)(a) of Regulation No 207/2009 confer on the proprietor of the trade mark a grace period within which to begin to make genuine use of his or her mark, during which he or she may rely on the exclusive rights which the mark confers, pursuant to Article 9(1) of the regulation, in respect of all the goods and services, without having to demonstrate such use. That means that, during that period, the extent of the right conferred on the proprietor of the trade mark must be assessed by reference to the goods and services covered by the registration of the mark, not on the basis of the use which the proprietor was able to make of that mark during that period.

The Court of Cassation points out, however, that the case in the main proceedings differs from the case that gave rise to the judgment of 21 December 2016, Länsförsäkringar (C‑654/15, EU:C:2016:998), in that, in the present case, the trade mark proprietor’s rights were revoked as a result of the lack of use of that mark during the five-year period following registration of that mark.

The question then arises as to whether the proprietor of a trade mark who has never used it and whose rights in it have been revoked on expiry of the five-year period laid down in the first subparagraph of Article 10(1) of Directive 2008/95 may claim that the essential function of his or her trade mark has been affected and, consequently, seek compensation for injury as a result of the alleged use by a third party of an identical or similar sign during the five-year period following registration of the mark.

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

‘Must Article 5(1)(b) and Articles 10 and 12 of Directive [2008/95] be interpreted as meaning that a proprietor who has never [used his or her] trade mark and whose rights in it were revoked on expiry of the period of five years following publication of its registration can obtain compensation for injury caused by infringement, claiming an adverse effect on the essential function of [his or her] trade mark, caused by use by a third party, before the date on which the revocation took effect, of a sign similar to that trade mark to designate goods or services identical or similar to those for which that trade mark was registered?’

The Court’s decision:

Article 5(1)(b), the first subparagraph of Article 10(1) and the first subparagraph of Article 12(1) 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, read in conjunction with recital 6 thereof, must be interpreted as leaving Member States the option of allowing the proprietor of a trade mark whose rights in that mark have been revoked on expiry of the five-year period from its registration because he or she failed to make genuine use of the mark in the Member State concerned in connection with the goods or services for which it was registered to retain the right to claim compensation for the injury sustained as a result of the use by a third party, before the date on which the revocation took effect, of a similar sign in connection with identical or similar goods or services that is liable to be confused with his or her trade mark.

JK Rowling allows teachers from around the world to use the books for Harry Potter for free

photo-1547756536-cde3673fa2e5The well-known author JK Rowling announced her decision to allow all teachers around the world to use her books for Harry Potter for making video lessons for free.

The reason for this exception from the licensing rules for her books is the current COVID-19 pandemic situation which led to many schools being closed.

According to the announcement, the teacher can do that without a license, however, the videos must not be uploaded on YouTube or any other social media or used for commercial purposes.

Source: WIPR.

How to build and manage remotely an intellectual property database?

photo-1583508915901-b5f84c1dcde1In the time when more and more companies close their offices because of the COVID-19 emergency situation, the question how the office work to be done remotely is one that becomes vital for the entire company’s operation.

Intellectual property matters are not an exception.  The fact that you cannot work from your office it doesn’t mean that the work has not to be done and the deadlines not to be met.

When it comes to intellectual property to keep the deadlines is something must.

From one hand obtaining an intellectual property protection requires following different, and sometimes, long proceedings before the relevant official authorities.

This comes with different deadlines and a serious communication with the Patent Office and intellectual property attorneys.

What’s more, in situations of buying or selling protected works or cases of mergers and acquisitions, where intellectual property is part of, you need to keep an eye on the negotiation and transfer process for every single IP asset. 

On the other hand, the fact that you own IP rights is not the end of the story. On the contrary. Every IP asset needs to be maintained properly in order for its protection to be solid and even available. 

For example, if you have a trademark or patent application but you miss the deadline for paying the official Patent Office’s fees your application will be rejected.  This means that your business can lose valuable assets that can generate a future profit.

That’s why every owner of intellectual property rights has to integrate a system and tools that will allow management of all intellectual property assets from one place remotely using every possible device.

This will allow the deadlines to be met and the intellectual property to be protected.

But how to achieve this?

Big companies can pay for specialized software for that purpose, which can be used by the employees even from home. However, for small and mid size companies, or individual entrepreneurs or freelancers, such software can be way too expensive or even complex for integration.

If you cannot afford such a solution you can achieve a similar result by adopting some of the available online productivity tools for free. For example, you can use tools such as Asana, Notion, Wrike etc. to build your own intellectual property database.

If you are interested in this matter, you can sign up for this upcoming Udemy course, where you will learn how to build your own IP database in a very simple way, using one very well-known productivity application Asana which will cost you nothing. This will allow you to manage all IP assets an keep all deadlines remotely from home. You can even use this database to communicate with your team or IP attorneys. 

You can sign up from here. There will be free coupons for early birds.

The German Constitutional Court blocked the Unified Patent Court

pexels-photo-109629The German Federal Constitutional Court  has ruled that the legislation for introducing of the Unified Patent Court (UPC) is not constitutional.

According to the Court, in this case there is a transfer of adjudication authorities from national to international level. This requires the law to be accepted with two-thirds majority in the Bundestag, which wasn’t happened.

It is possible this decision to put a spanner in the works for the UPC as a whole. Although the German Parliament can pass the legislation again, this will take time, time which can allow other countries to express their reluctance toward the UPC concept.

Source: WIPR.