Beats Electronics won a trademark case in the EU

pexels-photo-577769.jpegThe Board of Appeal of the EUIPO has ruled in a case regarding an application for the following European trademark applied for classes 9 (apparatus for recording, transmission or reproduction of sound or images), 35 (business management, business administration, market research services, export services), and 38 (telecommunication services, in particular mobile telephony, broadcasting of radio and television programmes):

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Against this application, an opposition was filed by Beats Electronics based on the following earlier European trademarks for classes 9 (audio and video equipment including audio players, video players, media players, portable media players), 38 (providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users), and 41 (nightclub services, dance club services, provision of live entertainment and recorded entertainment) of the Nice Classification. EUTM 2 was for the same goods and services, with the addition of Class 42 (providing an interactive online network website, via electronic communication networks):

Initially, the EUIPO’s Opposition Division dismissed the opposition stating that there is no possibility for consumer confusion concerning both signs despite the identical and similar goods. The claim for trademarks with reputation by Beats Electronics was dismissed as not proved.

The decision was appealed and the Board of Appeal reversed it finding that the Opposition Division erred in its conclusions.

According to the the Board, both trademarks are similar and can create confusion amongst the consumers. The arguments behind this position were that both signs have similar visual elements as well as colors. The differences are not enough to overcome similarities. What’s more the earlier marks have a reputation on the market which was proved by the owner.

Source: Nedim Malovic, IPKat.

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‘Punitive’ damages are possible in case of IP infringements according to the European court

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The European court ruled in Case C‑367/15, Stowarzyszenie ‘Oławska Telewizja Kablowa’ v Stowarzyszenie Filmowców Polskich. This case concerns the following:

SFP is an organisation collectively managing copyright which is licensed in Poland and entitled to manage and protect copyright in audiovisual works. OTK broadcasts television programmes by means of a cable network in the town of Oława (Poland).

After notice of termination was given on 30 December 1998 of a licensing agreement that set out the rules on payment between the parties to the main proceedings, OTK continued to make use of copyright works and filed an application with the Komisja Prawa Autorskiego (Copyright Commission, Poland) seeking, in essence, that the fee payable for use of the copyright managed by SFP be set. By decision of 6 March 2009, that commission set the fee at 1.6% of the net income, exclusive of value added tax, earned by OTK from its retransmission of works by cable, not including certain charges borne by it. OTK itself calculated the amount due on that basis and paid SFP the sum of PLN 34 312.69 (roughly EUR 7 736.11) in respect of the income received for the period from 2006 to 2008.

On 12 January 2009 SFP brought an action against OTK, by which it sought, on the basis, inter alia, of Article 79(1)(3)(b) of the UPAPP, an order prohibiting OTK from retransmitting the protected audiovisual works until a new licensing agreement had been entered into and requiring OTK to pay it the sum of PLN 390 337.50 (roughly EUR 88 005.17) together with statutory interest.

By judgment of 11 August 2009, the Sąd Okręgowy we Wrocławiu (Regional Court, Wrocław, Poland) ordered OTK to pay SFP the sum of PLN 160 275.69 (roughly EUR 36 135.62) together with statutory interest and, essentially, dismissed the action as to the remainder. After the appeals which both of the parties to the main proceedings brought against that judgment were dismissed, they both brought an appeal on a point of law. By judgment of 15 June 2011, the Sąd Najwyższy (Supreme Court, Poland), however, referred the case back for fresh examination to the Sąd Apelacyjny we Wrocławiu (Court of Appeal, Wrocław, Poland), which, on 19 December 2011, delivered a second judgment. This judgment was also set aside by the Sąd Najwyższy (Supreme Court) in an appeal on a point of law and the case was again referred back to the Sąd Apelacyjny we Wrocławiu (Court of Appeal, Wrocław) for fresh examination. OTK brought an appeal on a point of law against the judgment subsequently delivered by the latter court.

The Sąd Najwyższy (Supreme Court), which is now required, in the context of this most recent appeal, to examine the case for a third time, has doubts as to whether Article 79(1)(3)(b) of the UPAPP is compatible with Article 13 of Directive 2004/48. It states that under that provision of the UPAPP it is possible, at the request of a person whose economic rights of copyright have been infringed, for compensation to consist in payment of a sum of money corresponding to twice or three times the amount of the appropriate fee. That provision therefore entails a form of penalty.

Furthermore, the referring court is uncertain whether, in order for a person holding economic rights of copyright to be compensated pursuant to Directive 2004/48, he must prove the event giving rise to the loss, the loss suffered and its extent, the causal link between that event and the loss and the fact that the acts of the perpetrator of the infringement are culpable.

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

‘Is Article 13 of Directive 2004/48 to be interpreted as meaning that the rightholder whose economic rights of copyright have been infringed may seek redress for the damage which it has incurred on the basis of general principles, or, without having to prove loss and the causal relationship between the event which infringed its rights and the loss, may seek payment of a sum of money corresponding to twice the amount of the appropriate fee, or, in the event of a culpable infringement, three times the amount of the appropriate fee, whereas Article 13 of Directive 2004/48 states that it is a judicial authority which must decide on damages by taking into account the factors listed in Article 13(1)(a), and only as an alternative in certain cases may set the damages as a lump sum, taking into consideration the elements listed in Article 13(1)(b) of that directive? Is the award, made at the request of a party, of damages as a predetermined lump sum corresponding to twice or three times the amount of the appropriate fee permissible pursuant to Article 13 of the directive, regard being had to the fact that recital 26 thereof states that it is not the aim of the directive to introduce punitive damages?’

The Court’s decision:

Article 13 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 not precluding national legislation, such as that at issue in the main proceedings, under which the holder of an intellectual property right that has been infringed may demand from the person who has infringed that right either compensation for the damage that he has suffered, taking account of all the appropriate aspects of the particular case, or, without him having to prove the actual loss, payment of a sum corresponding to twice the appropriate fee which would have been due if permission had been given for the work concerned to be used.

EU trademarks for solar panels – not in every case

The General Court ruled in cases T‑578/15 and Case T‑614/15 where Azur Space Solar Power GmbH tried to register the following EU trademarks for classes Class 7: Electronic generators using solar cells и Class 9: Semiconductors, semiconductor devices, semiconductor devices for solar cells and solar modules, solar cells, solar cells made of III-V material, solar cells having a plurality of band gaps; solar cell modules, solar cell modules with an array of solar cells’:

and

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The EUIPO refused the registration of both marks based on their lack of distinctiveness, the signs could be perceived by the professional consumers  as representation of an array of solar panels.

The court upheld this decision, stressing the fact that there is no distinctive element in both marks which can help mark to be accepted as a source of origin.

Source: Marques Class 46.

Adidas attacked Barcelona’s trademark in US

WIPR reports about an interesting trade mark case from US. It concerns an opposition filed by the German sportswear company Adidas against the following application for US mark by F.C. Barcelona:

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This mark is applied for the following goods:

Class 16 – Paper; cardboard; goods made from paper, namely, boxes of paper, packing paper; goods made from cardboard, namely, boxes of cardboard, cardboard packaging; bookbinding materials; artists’ materials, namely, artists’ pens, artists’ brushes, artists’ pastels; paintbrushes; typewriters; office requisites, namely, adhesive tape dispensers, correcting fluid for type, finger-stalls, franking machines, envelope sealing machines, punches, rubber bands, staplers; printed instructional or teaching materials in the fields of sports; printing type; printed magazines, books, pamphlets, catalogs, printed prospectus, newspapers, and printed periodicals, all in the fields of sports; placards of paper or cardboard; paper labels; posters; prints; photographs; stationery; plastic bags and film for packaging; adhesives for stationery or household purposes; printing blocks

Class 25 – Shirts, tee-shirts, blouses, blousons, parkas, jackets, trousers, gloves, socks, stockings, underwear, pajamas, nightgowns, vests, cloaks, shawls, coats, scarves, jerseys, skirts, dresses, neckties, belts, suspenders, bathing suits; sportswear, namely, basketball jerseys, soccer shorts and jerseys, cloth nappies, boas for wearing around the neck, non-electric foot muffs and biretta, cloth bibs, half belts, ski gloves, skateboard gloves, riding gloves, pumps, stoles, brassieres, liveries, shirt fronts, pelisses, pelerines, slips, hosiery; caps, raincoats, anoraks; overalls; stoles; suits; chemises; footwear and headwea.

Class 28 – Games, namely, board games; toys, namely, dolls, action figures; gymnastic and sporting articles, namely, gloves for goalkeepers, hockey golf gloves, footballs, soccer balls, basketballs, basketball nets, tennis balls, nets, rackets, racket covers, racket strings, racket presses and uprights, soccer knee pads, leg pads, elbow pads and goal nets, head guards for karate; articles for hunting or fishing, namely, fishing poles, hunting blinds, hunting bows; decorations for Christmas trees; playing cards

The opposition is based on a family of earlier marks for ‘Three-stripe’ have been using by Addidas since 1952 in US.Some of them are:

According to the company the similar stripes containing in the later mark could create consumer confusion and can injure the company’s interests in the US market.

The result from this case is forthcoming and it is an exciting example for protection of figurative trademarks in practice.

Brief IP news

briefs_1131. Two loses for Gucci in trademark cases against Guess in European court. For more information here.

2. Trademark protection in US. For more information here.

3. The biggest design lawsuit ever – a mess or? For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here  

Proving genuine use of trademark in Switzerland

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Marques Class 46 reports about an interesting case regarding proof of genuine trademark use in Switzerland. Sofar Swiss AG applied for YALUAGE trademark for cosmetic products.

Against this mark an opposition was filed by Pierre Fabre based on an earlier mark ELUAGE for the same goods.

Sofar Swiss AG required proof of commercial use of the earlier mark. IPO upheld the opposition after observing the submitted evidences by Pierre Fabre.

What’s happened after that is that the Administrative court overturn this decision. The main argument for this was that all submitted evidences show transactions concerning this mark but only Pierre Fabre and its subsidiary companies in Switzerland which in turn doesn’t prove that the relevant products with the mark were reaching retail stores or end consumers in the country.

This case shows the need for careful analysis in every case of proving genuine use of trademarks because sometimes it could be a tricky business.

Lending of e-books in EU – Advocate General opinion

ebook1The Advocate General of the European Court S ZPUNAR gave an opinion in Case C‑174/15 Vereniging Openbare Bibliotheken v Stichting Leenrecht. The case concerns the following:

There is a lively debate in several Member States, including the Netherlands, concerning the lending of electronic books by libraries. Further to a report commissioned by the Netherlands Ministry of Education, Culture and Science, it was concluded that the lending of electronic books did not fall within the scope of the exclusive lending right for the purposes of the provisions transposing Directive 2006/115 into Netherlands law. Consequently, the lending of electronic books by public libraries cannot benefit from the derogation provided for in Article 6(1) of that directive, which has also been transposed into Netherlands law. A draft law on libraries, based on that premiss, has been drawn up by the government.

However, the applicant in the main proceedings, Vereniging Openbare Bibliotheken (‘VOB’), an association of which every public library in the Netherlands is a member, does not concur with that view. It is persuaded that the relevant provisions of Netherlands law must also apply to digital lending. Consequently, it has instituted proceedings before the referring court against Stichting Leenrecht, a foundation entrusted with collecting the remuneration due to authors under the public lending derogation and the defendant in the main proceedings, for a declaratory judgment holding, in substance, first, that the lending of electronic books falls within the scope of the lending right, secondly, that the making available of electronic books for an unlimited period of time constitutes a sale for the purposes of the provisions governing the distribution right and, thirdly, that the lending of electronic books by public libraries against the payment to authors of a fair remuneration does not constitute copyright infringement.

VOB states that its action concerns lending under the system which the referring court describes as ‘one copy one user’. Under that system, the electronic books at a library’s disposal may be downloaded by a user for a lending period during which those books will not be accessible to other library users. At the end of the period, the book in question will automatically become unusable for the borrower in question and may then be borrowed by other users. VOB has also stated that it wishes to limit the scope of its action to ‘novels, collections of short stories, biographies, travelogues, children’s books and youth literature’.

The interveners in the main proceedings are Stichting Lira (‘Lira’), an organisation which collectively manages rights and represents the authors of literary works and Stichting Pictoright (‘Pictoright’), an organisation which collectively manages rights and represents the creators of visual artworks, both of which support the form of order sought by VOB, and Vereniging Nederlands Uitgeversverbond (‘NUV’), a publishers’ association, which supports the contrary view.

The Rechtbank Den Haag (District Court, The Hague, Netherlands) considers that its response to VOB’s application depends upon the interpretation of provisions of EU law and has referred the following questions to the Court of Justice for a preliminary ruling:

(1)  Are Articles 1(1), 2(1)(b) and 6(1) of Directive 2006/115 to be interpreted as meaning that “lending” within the meaning of those provisions includes the making available for use of copyright-protected novels, collections of short stories, biographies, travelogues, children’s books and youth literature, other than for direct or indirect economic or commercial advantage, by a publicly accessible establishment

–   by placing a digital copy (reproduction A) on the server of the establishment and enabling a user to reproduce that copy by downloading it onto his own computer (reproduction B),

–  in such a way that the copy made by the user when downloading (reproduction B) is no longer usable after the expiry of a given period, and

–   in such a way that other users cannot download the copy (reproduction A) onto their computers during that period?

(2)  If question 1 is answered in the affirmative, does Article 6 of Directive 2006/115 and/or any other provision of EU law preclude Member States from making the application of the restriction on the lending right referred to in Article 6 of Directive 2006/115 subject to the condition that the copy of the work made available by the establishment (reproduction A) has been put into circulation by a first sale or other transfer of ownership of that copy in the European Union by the rightholder or with his consent, within the meaning of Article 4(2) of Directive 2001/29?

(3)  If question 2 is answered in the negative, does Article 6 of Directive 2006/115 impose other requirements concerning the source of the copy (reproduction A) made available by the establishment, such as a requirement that the copy has been obtained from a legal source?

(4)  If question 2 is answered in the affirmative, is Article 4(2) of Directive 2001/29 to be interpreted as meaning that the “first sale or other transfer of ownership” of material referred to in that provision includes the making available for use, remotely by downloading, for an unlimited period, of a digital copy of copyright-protected novels, collections of short stories, biographies, travelogues, children’s books and youth literature?’

The Advocate’s opinion:

(1)  Article 1(1) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property, read together with Article 2(1)(b) of that directive, is to be interpreted as meaning that the lending right enshrined in Article 1 includes the making available to the public of electronic books by libraries for a limited period of time. Member States that wish to introduce the derogation provided for in Article 6 of the same directive for the lending of electronic books must ensure that the way in which that lending is carried out is not in conflict with the normal exploitation of works and does not unreasonably prejudice the legitimate interests of authors.

(2)  Article 6(1) of Directive 2006/115 must be interpreted as not precluding Member States which have introduced the derogation provided for in that provision from requiring that electronic books which are lent under that derogation should first have been made available to the public by the rightholder or with his consent, provided that that limitation is not formulated in such a way as to restrict the scope of the derogation. That provision must be interpreted as applying solely to electronic books obtained from lawful sources.