European design, technical function and a EU Court decision

flag-1198978_960_720The European Court ruled a highly anticipated decision regarding Case C‑395/16 DOCERAM GmbH v CeramTec GmbH. The case concerns the following:

DOCERAM is a company manufacturing technical ceramic components. In particular, it supplies weld centring pins to customers in the automotive, textile machinery and machinery industries. It is the proprietor of a number of registered Community designs which protect centring pins for welding in three different geometrical shapes, each of which is produced in six different types.

CeramTec also manufactures and sells centring pins in the same variants as those protected by the designs of which DOCERAM is the proprietor.

Relying on an infringement of its Community designs, DOCERAM brought an action against CeramTec before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), seeking an order for CeramTec to discontinue the infringement of its intellectual property rights. The latter brought a counterclaim for a declaration of invalidity of the contested designs, maintaining that the features of appearance of the products in question were dictated solely by their technical function.

The Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed the action brought by DOCERAM and declared the designs at issue to be invalid on the ground that they were excluded from the protection afforded by Article 8(1) of Regulation No 6/2002.

DOCERAM appealed against that judgment to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany). In particular, that court observes, first, that the designs at issue are new and have an individual character and, second, alternative designs of the centring pins concerned exist which are not protected by the Community law on designs. Therefore, that court considers that for the purposes of the application of the exclusion laid down in Article 8(1) of Regulation No 6/2002, it is necessary to establish whether the existence of those alternative designs leads to the conclusion that the features of appearance of those products are not covered by Article 8(1) of Regulation No 6/2002, or whether it is also necessary to ascertain whether the technical function was the only factor which dictated those features.

That court points out that there are differing approaches in the case-law and in legal literature on that question. One approach is that the sole criterion for the application of Article 8(1) of Regulation No 6/2002 is the existence of alternative designs which fulfil the same technical function, which demonstrates that the design at issue is not dictated solely by reason of its technical function within the meaning of that provision. The opposing view is that that provision is applicable where the various features of appearance of the product are dictated solely by the need to achieve a technical solution and that the aesthetic considerations are entirely irrelevant. In that case there is no creative effort worthy of protection as a design.

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

‘(1)  Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of [Regulation No 6/2002] which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?

(2)  If the Court answers Question 1 in the affirmative:

From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an “objective observer” required and, if so, how is such an observer to be defined?’

The Court decision:

1.      Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

2.      Article 8(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function, within the meaning of that provision, the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’.


A fight with buscuits and cushions in Milano

Eleonora Rosati published an interesting story for IP Kat regarding a lawsuit in Milano, Italy which concerns a fight with biscuits and cushions.

Barilla is the owner of several EU trademarks for Pan di Stelle,Galletti, Abbracci, Rigoli, Mooncake, Crostatina, Batticuori, Ringo, and Gocciole, all used for different types of biscuits and desserts.


Another Italian company tried to negotiate to use these marks for production of cushions. The deal never happened, nevertheless this company started production of such cushions using similar names such as Pandistelloso, Gallettoso, Rigoloso.


As a result, Barilla initiated a lawsuit in Milano for trademark infringement and won it.

According to the court, the defendant used similar marks and in that way infringed IPRs belong to Barilla. The defendant’s argument that there was no infringement due to the fact that biscuits and cushions are in different Nice classes was dismissed. The Court stated that Barilla’s trademarks have a well-known status among the consumers, because of which the defendant tried to take unfair advantages of the reputation of the trademarks.

The court ordered the defendant to pay damages for EUR 150,000, as well as covering the costs of litigation.

This case is indicative of the fact that although trademark protection is limited to the Nice classes of goods and services mentioned in the trademark application, that’s not always the case. There are additional facts that have to be taken into account before another trademark use to be initiated.


Adidas with an important victory before the General Court of the EU

The General Court of the EU ruled in Cases T-629/16 and T-85/16 Shoe Branding Europe BVBA v EUIPO.

These cases concern an attempt by Shoe Branding to register the following EU trademark for Class 25:

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Against this mark, an opposition was filed by Adidas based on earlier marks for a similar sign:


EUIPO upheld the opposition, finding that there is a likelihood of confusion based on the similarity of the signs and the reputation attached to the Adidas’ earlier marks.

Shoe Branding appealed before the Court claiming that there is no similarity and what’s more both signs had been peacefully coexisting in Germany for many years.

The Court upheld the EUIPO’s decision as correct. Apart from the fact that both marks are confusingly similar, according to the court, the applicant was trying to take unfair advantages from the proved reputation of the earlier marks. An evidence for this was an advertising slogan “TWO STRIPES ARE ENOUGH“ used in Portugal, which indirectly made a link with the Adidas’ marks.

With regard to the trademarks coexistence, the Court dismissed it, because there was no evidence for such on an EU level.


How to register European designs?


EUIPO reminds, in its last edition of Alicante news, about some important requirements for registration of EU industrial designs, non-compliance with which can lead to a detrimental effect on the design applications. They are:

1.  Representation of the design – every design has to be represented in a way that it can be perceived correctly by the Office and third parties. The representation of the views must consist of a graphic or photographic reproduction, for one and the same design, and on a neutral background and in good quality. When the representation requires including external elements visible in the views but not intended to be protected, the representation should contain a clear graphical disclaimer. The design should be represented by at least one view and the maximum number of protected views is 7 per design. Additionally 3 unprotected and not published views may be submitted.

2. Product indication of the design – the Classes of products for which the design will be registered have to be identified correctly and precisely. Applicants can use DesignClass in that regard, which can help a lot.

3. Priority & missing documents – all documents for claiming priority over a design application have to be submitted on time to the Office. Other than that, the applicant can lose its priority date. The application must concern the same design to confer to the proprietor the right to claim for priority. When filing a Community design application, the owner can request its publication to be delayed for a period of up to 30 months. The design can, therefore, be kept confidential until the applicant is ready to disclose it. The request for deferment must be made on the initial application form; later requests (even on the same date) will not be accepted.

Source: Alicante news.

Conor McGregor’s IP fights


The well-known MMA fighter Conor McGregor fights not only on the boxing ring but on the IP scene too.

The fighter has been trying to register various marks around the world for years but has met oppositions in different jurisdictions. An example for this is his attempt to register EU trademarks for Conor McGregor, The Notorious, Notorious, I Am Boxing, ChampChamp, Mystic Mac.

On the other hand, he fights against any attempt for registration of similar marks by third parties. This is the situation with the UK trademark applications, which include Conor McGregor and Notorious, filed by  Gazala Khan as an individual.

The McGregor’s wish to possess such trademarks is not strange. This is part of his merchandising strategy to license these names to be used for different products and services. This by itself could be quite a profitable approach for every famous sportsman.

The onliest problem in that regard is the fact that this requires an adequate intellectual property strategy, built in advance, which to cover all steps in order the necessary protection to be achieved successfully. One of the set requirement in that light is a trademark clearing to be done as early as possible. The other important moment is that applications for trademarks have to be filed earlier in the sportsman carrier in order bad faith applications by third parties to be prevented.

Source:  Claire Jones, Novagraaf.


Taylor Swift Lyrics Lack Originality and Creativity according to a court in the US

pexels-photo-374703The Federal District Court in Los Angeles, California ruled in a case concerning the Taylor Swift’s song Shake It Off .

This case was initiated by Sean Hall and Nathan Butler as authors of the song Playas Gon’ Play, which was played by the girl group 3LW in 2001.

According to the authors Taylor Swift’s song Shake It Off  infringes their copyrights over the phrase “Playas, they gonna play / And haters, they gonna hate”, part of their song because uses similar phrase “Cause the players gonna play, play, play, play, play and the haters gonna hate, hate, hate, hate, hate.”

Sean Hall and Nathan Butler claimed that the phrase in their song was completely original in 2001 because describes different characters: players who play and haters who hate. They held that this phrase represents 20% of the whole song.

As a reaction, Taylor Swift’s company filed a motion before the court to dismiss the case for failure to state a claim. The defendants argued that copyright does not protect the short phrases as well as ideas.

According to the court, in the case at hand, there is no copyright infringement due to the mere fact that Taylor Swift’s phrase is not original and creative, requirements necessary for invoking copyright protection.

Source: IP Watchdog.