Dispute concerning handbag designs in Europe

The European court ruled in Case T‑525/13 which concerns the following:

On 30 October 2006, Yves Saint Laurent SAS filed an application for registration of a Community design with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

The contested design, which is intended to be applied to ‘handbags’ in Class 03-01 of the Locarno Agreement,  is represented according to six views as follows:

The contested design was registered under the number 613294-0001 and published in Community Designs Bulletin No 135/2006 of 28 November 2006.

On 3 April 2009, the applicant, H&M Hennes & Mauritz BV & Co. KG, filed with OHIM an application for a declaration of invalidity in respect of the contested design, based on Articles 4 to 9 of Regulation No 6/2002 and on Article 25(1)(c) to (f) or (g) of that regulation. In its application for a declaration of invalidity, the applicant confined itself to claiming that the contested design had no individual character within the meaning of Article 6 of that regulation.

In support of its application for a declaration of invalidity, the intervener invoked, in order to substantiate the alleged lack of individual character of the contested design, the earlier design reproduced below:

By decision of 4 November 2011, the Cancellation Division rejected that application for a declaration of invalidity.

On 25 January 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Cancellation Division.

By decision of 8 July 2013 , the Third Board of Appeal of OHIM dismissed the appeal. After finding that the documents submitted by the applicant were capable of proving that the handbag which was the subject-matter of the earlier design had been made available to the public, the Board of Appeal examined the individual character of the contested design. It defined the informed user of that design as an informed woman, who was interested, as a possible user, in handbags. According to the Board of Appeal, the two designs at issue had features in common, in particular their upper contours and their handles in the form of straps attached to the body of the bags by a system of rings reinforced by rivets, but the differences as regards the shape, structure and surface finish played a decisive role in the overall impression produced by those goods. In that regard, the Board of Appeal found that the degree of freedom of the designer was high, but that, in the present case, it did not, from the point of view of the informed user, cancel out the significant differences in shape, structure and surface finish which differentiated the two bags.

In the present case, the Board of Appeal correctly found that, in the context of fashion items like handbags, the designer’s degree of freedom was high. Moreover, the applicant does not contest that assessment. However, it submits, in essence, that the Board of Appeal erred inasmuch as the ‘freedom of the designer’ test should have been an integral part of the analysis of the individual character of the contested design and that the Board of Appeal inverted the steps involved in that analysis. Accordingly, the applicant maintains that the Board of Appeal’s approach of, first, comparing the two designs at issue in order to conclude that they did not produce the same overall impression on the informed user and, second, examining the argument relating to the freedom of the designer, is incorrect. Furthermore, it takes the view that the differences between the designs at issue are not significant enough to produce a different overall impression on the informed user.

The Board of Appeal did not err in stating that the factor relating to the freedom of the designer could not on its own determine the assessment of the individual character of a design, but that it was, however, a factor which had to be taken into consideration in that assessment. Consequently, it correctly found that that factor was a factor which made it possible to moderate the assessment of the individual character of the contested design, rather than an independent factor which determined how different two designs have to be for one of them to have individual character.

Second, as regards the comparison of the overall impressions produced by the contested design and by the earlier design, the Board of Appeal stated, in paragraph 30 of the contested decision, that they differed as to three features which decisively influenced their overall visual appearance, namely the overall shape, structure and surface finish of the bag.

First of all, it pointed out that the body of the contested design had a perceptibly rectangular shape, on account of the presence of three straight lines that marked the sides and the base of the bag, which gave the impression of a relatively angular object. By contrast, the body of the earlier design had, according to the Board of Appeal, curved sides and a curved base and its silhouette was dominated by an impression of roundness. Second, the Board of Appeal took the view that the body of the contested design looks as if it is made from a single piece of leather without any visible division or seams except for on a short length at the lower corners. By contrast, the front and back of the earlier design were, according to the Board of Appeal, divided into three sections by seams, namely a curved upper section delimited by a collar and two lower sections of equal size delimited by a vertical seam. Third, the Board of Appeal stated that the surface finish of the contested design was totally smooth, apart from two faint seams at the lower corners. By contrast, the surface of the earlier design was, according to the Board of Appeal, covered with pronounced and raised decorative motifs, namely a collar edged with gatherings in the upper part of the bag, a vertical seam dividing the bag into two sections and pleats at the bottom of the bag. In respect of each of those three factors, the Board of Appeal concluded that the differences between the designs at issue were significant and therefore such as to markedly influence the overall impression of the informed user. In the case of the contested design, the Board of Appeal found that the impression produced would be that of a bag design characterised by classic lines and a formal simplicity whereas, in the case of the earlier design, the impression would be that of a more ‘worked’ bag, characterised by curves, the surface of which is adorned with ornamental motifs.

As regards the features that are common to the two designs at issue, namely their upper contour and the presence of a handle in the form of a strap or straps attached to the body by a system of rings reinforced by rivets, the Board of Appeal took the view that they did not suffice to confer on them, in the eyes of an informed user, the same overall impression. It stated in particular that the way in which those rings were used in the two bags was very different in that they were very visible and let light through in the contested design, which was not the case with regard to the earlier design, this being a detail which would be obvious to the informed user.

In that regard, it must be borne in mind that the assessment of the overall impression produced by a design on the informed user includes the manner in which the product represented by that design is used (see judgment of 21 November 2013 in El Hogar Perfecto del Siglo XXI v OHIM — Wenf International Advisers (Corkscrew), T‑337/12, ECR, EU:T:2013:601, paragraph 46 and the case-law cited). In the present case, it must be pointed out that the straps and the handle of the designs at issue manifestly lend themselves to different uses inasmuch as the contested design represents a bag to be carried solely by hand, whereas the earlier design represents a bag to be carried on the shoulder.

In that context and in the light of the foregoing considerations, it must be held that the differences between the designs at issue are significant and that the similarities between them are insignificant in the overall impression which they produce. Consequently, the Board of Appeal’s assessment must be confirmed inasmuch as it found that the contested design produced an overall impression on the informed user which was different from that produced by the earlier design.

Scotch whisky is a registered geographical indication in Africa

WIPR reports about the registration of the Scotland’s Scotch whisky as geographical indication in 17 African countries members of OAPI. By that way, the protection of Scotch whisky in Africa increased significantly which will help in the fight against fake products.

More information here.

The European court ruled in the case Nestlé SA v Cadbury

The European court ruled in Case C‑215/14 Société des Produits Nestlé SA  v  Cadbury UK Ltd. The case concerns the following: 

 

The product at issue in the main proceedings was placed on the market in the United Kingdom in 1935 by Rowntree & Co Ltd, under the name ‘Rowntree’s Chocolate Crisp’. In 1937, the name of the product was changed to ‘Kit Kat Chocolate Crisp’, and then shortened to ‘Kit Kat’. In 1988, that company, whose new trading name was Rowntree plc, was acquired by Nestlé.

For a long period, the product was sold in two layers of packaging, the inner layer being silver foil and the outer layer being printed paper with a red and white logo bearing the words ‘Kit Kat’, but the current packaging consists of a single layer bearing that same logo. The logo’s appearance has evolved over time, but has not changed greatly.

The basic shape of the product has remained almost entirely unchanged since 1935; only its size has been altered slightly. The current appearance of the product without its packaging is shown below:

It should be noted that each finger is embossed with the words ‘Kit Kat’ and with sections of the oval shape which form part of the logo.

On 8 July 2010, Nestlé filed an application for registration of the three-dimensional sign graphically represented below (‘the trade mark at issue’) as a trade mark in the United Kingdom:

The trade mark at issue therefore differs from the actual shape of the product in that it omits the embossed words ‘Kit Kat’.

1The application was made in respect of the following goods in class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended:

‘Chocolate; chocolate confectionery; chocolate products; confectionery; chocolate-based preparations; bakery goods; pastries; biscuits; biscuits having chocolate coating; chocolate coated wafer biscuits; cakes; cookies; wafers’.

The Trade Marks Registry of the United Kingdom Intellectual Property Office accepted the application and it was published for the purposes of opposition. The view was taken that, even though the trade mark at issue had no inherent distinctive character, the trade mark applicant had shown that it had acquired distinctive character following the use made of it.

On 28 January 2011, Cadbury filed a notice of opposition to the application for registration putting forward various pleas, in particular a plea alleging that registration should be refused on the basis of the provisions of the Trade Marks Act 1994 which transpose Article 3(1)(b), Article 3(1)(e)(i) and (ii) and Article 3(3) of Directive 2008/95.

By decision of 20 June 2013, the examiner of the United Kingdom Intellectual Property Office found that the trade mark at issue was devoid of inherent distinctive character and that it had not acquired such a character following the use which had been made of it.

 The examiner found that the shape in respect of which registration was sought has three features:

–   the basic rectangular slab shape;

–  the presence, position and depth of the grooves running along the length of the bar, and

–  the number of grooves, which, together with the width of the bar, determine the number of ‘fingers’.

The examiner took the view that the first of those features is a shape which results from the nature of the goods themselves and cannot, therefore, be registered, except in respect of ‘cakes’ and ‘pastries’, for which the shape of the trade mark departs significantly from norms of the sector. Since the other two features are necessary to obtain a technical result, he rejected the application for registration as to the remainder.

On 18 July 2013, Nestlé appealed against that decision to the High Court of Justice of England & Wales, Chancery Division, Intellectual Property (United Kingdom), challenging the conclusion that the trade mark at issue had not acquired distinctive character through the use made of it prior to the relevant date. Moreover, Nestlé claims that the trade mark at issue does not consist exclusively of either the shape which results from the nature of the goods themselves, or the shape which is necessary to obtain a technical result.

By a cross-appeal filed on the same day, Cadbury challenged the decision of 20 June 2013 in so far as that court found that the trade mark at issue had inherent distinctive character in respect of cakes and pastries and that it did not consist exclusively of either the shape resulting from the nature of the goods themselves or the shape necessary to obtain a technical result.

The High Court of Justice of England & Wales, Chancery Division, Intellectual Property, takes the view, first of all, that the examiner should not have made a distinction between, on the one hand, cakes and pastries and, on the other, all the other goods in class 30 of the Nice Agreement, either in relation to the proof of distinctive character of the trade mark at issue or to the applicability of Article 3(1)(e)(i) and (ii) of Directive 2008/95.

Secondly, as regards the question of whether the trade mark at issue had acquired distinctive character through the use made of it prior to the relevant date, the referring court, after reviewing the relevant case-law, seeks to ascertain whether, in order to establish that a trade mark has acquired distinctive character, it is sufficient that, at the relevant date, a significant proportion of the relevant class of persons recognise the trade mark and associate it with the trade mark applicant’s goods. The referring court takes the view that the trade mark applicant must prove that a significant proportion of the relevant class of persons regard the trade mark (as opposed to any other trade mark which may also be present) as indicating the origin of the goods.

 Finally, so far as concerns the shape resulting from the nature of the goods themselves and the shape necessary to obtain a technical result, the referring court points out that there is little case-law relating to Article 3(1)(e)(i) and (ii) of Directive 2008/95.

In those circumstances, the High Court of Justice of England & Wales, Chancery Division, Intellectual Property, decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

(1) In order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of Directive 2008/95 …, is it sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant; or must the applicant prove that a significant proportion of the relevant class of persons rely upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?

(2) Where a shape consists of three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, is registration of that shape as a trade mark precluded by Article 3(1)(e)(i) and/or (ii) of Directive 2008/95 …?

(3) Should Article 3(1)(e)(ii) of Directive 2008/95 … be interpreted as precluding registration of shapes which are necessary to obtain a technical result with regard to the manner in which the goods are manufactured as opposed to the manner in which the goods function?’

The Court decision:

1. Article 3(1)(e) 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 precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue.

2.Article 3(1)(e)(ii) of Directive 2008/95, under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured.

3. In order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3) of Directive 2008/95, regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company

New services from the patent office of Republic of Bulgaria

News from the Bulgarian Patent Office:

As of today, September 15, 2015, the Patent Office introduce additional opportunities for using of the electronic service portal  https://portal.bpo.bg/.

The most important innovation is the ability for digitally sign previously requested service requiring a qualified electronic signature. More information can be found in the document “What’s new in version 2.1 of the Portal”, as well as updated User’s Guide, available on the home page of the portal.

Electronic services have been developed jointly with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) within the framework of the Cooperation Fund.

Brief IP news

1. European producers lose 500 million euros a year because of counterfeiting of sporting goods. For more information here.

2. Licensing of patents and bankruptcy. For more information here.

3. Intellectual Property in the food industry in China. For more information here. 

New fees for registration of international trademarks in Turkey

WIPO reports about new fees for designation of Turkey in applications for international trademarks. The fees which will come into force on 03.10.2015 are as follow:

ITEMS		Amounts (in Swiss francs)
Application or Subsequent Designation	–  for one class of goods or services	178
	–  for each additional class	35
Renewal	–  independent of the number of classes	174

The UK database for patents has been added to Patentscope

WIPO reports about the news that the UK database for patent has been added to international database Patenscope. This will give access to 2,8 million patent files from UK dating from as far back as 1782. By this way Patentscope will provide information for more than 48 million patent files from 40 countirs around the world.

More information here.