Be careful with non-distinctive elements in case of trademark protection

One of the main requirements for the registration of trademarks is for the relevant sign to be distinctive and not descriptive of the goods or services mentioned in the application for protection.

Nevertheless, not distinctive signs can be protected if they are in combination with other, however, distinctive, elements such as text, colors, graphics, etc.

The problem with such trademarks is that they are weak when it comes to their not distinctive elements because such elements can be used by others in most cases.

One example of this issue is a dispute in Denmark between the following marks for class 5:

v

According to the Danish Court, both signs are not confusingly similar. The reason is that the words YUMMY and YUMMI have a meaning of something tasty, and pleasing in English, a language with which the Danes are familiar enough. The different letter I at the end of one of the signs cannot change this conclusion. Based on this, the Court considered these elements not distinctive for the assessment of the signs.

In regard to the other words included in the marks, GUMMI is understood as a short word for fruit gum in Danish and it is not distinctive too, while VITA means life, which creates a different conceptual meaning of the mark.

Because of this, the signs are considered dissimilar although the goods in class 5 are similar.

Source: Louise Thorning Ahle for Kluwer Trademark Blog.

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Denmark lost a dispute regarding Feta cheese produced only for export from the territory of the EU

The European Court has ruled in the case C‑159/20 the European Commission v the Kingdom of Denmark which closed the door to one of the few misunderstandings regarding the scope of geographical indication protection in the EU.

In the case at hand, Greek complained before the Commission that cheese manufacturers from Denmark use the protected geographical indication Feta by labeling their products as ‘Danish Feta’ and ‘Danish Feta cheese’. Denmark refused to prohibit such use on its territory stating that the production was only for export purposes not for sale on the territory of the EU. According to the Kingdom, this type of GI use was not prohibited by the EY Regulations.

The European Commission disagreed and initiated a lawsuit against Denmark. The Advocate General issued its opinion that reasonings are now upheld by the Court.

According to the Court’s decision:

Recital 18 of Regulation No. 11512012 states that the specific objectives of PDO and PGI protection are to ensure fair income for farmers and producers according to the qualities and characteristics of a given product or its production method and to provide clear information about products with specific characteristics related to geographic origin, thereby enabling consumers to make more informed purchasing choices.

In addition, it follows from the Court’s practice that the purpose of the PDO and PGI protection system is mainly to guarantee consumers that agricultural products bearing a registered name have certain specific characteristics due to their origin in a certain geographical area and therefore provide a guarantee of quality due to their geographical origin in order to allow agricultural operators who have made a genuine effort to improve quality to receive higher incomes in return and to prevent third parties from unfairly benefiting from the reputation, related to the quality of those products (judgments of 17 December 2020, Syndicat interprofessional de défense du Fromage Morbier, C‑490/19, EU:C:2020:1043, paragraph 35 and the case-law cited and by the analogy of 9 September 2021, Comité Interprofessionnel du Vin de Champagne, C‑783/19, EU:C:2021:713, paragraph 49).

Since the Kingdom of Denmark points out that it follows from these objectives that Regulation No 1151/2012 is aimed at introducing a system of protection of PDOs and PGIs for products placed on the internal market because the said users are those in the Union, it should be noted that this regulation clearly applies to these users and not to users in third countries. Indeed, that regulation, adopted on the basis of Article 118 TFEU, concerns the functioning of the internal market and, as that Member State points out, is aimed at the integrity of the internal market and consumer information in the Union.

It should also be noted that the objective of informing consumers and the objective of guaranteeing a fair income for producers in accordance with the qualities of their products are interrelated, since informing consumers is aimed in particular, as is clear from the case law, at this to allow agricultural operators who have made real efforts to improve quality to receive higher incomes in return.

However, as follows from recital 18 and from Article 4(a) of Regulation No 1151/2012, the objective of guaranteeing fair income to producers in accordance with the qualities of their products is itself an objective pursued by that regulation. This also applies to the purpose of ensuring the respect of intellectual property rights enshrined in Article 1, letter c) of this Regulation.

It is clear, however, that the use of the PDO ‘Feta’ to designate products produced in the territory of the Union which do not comply with the product specification of that PDO affects the two stated objectives, even if those products are intended for export to third countries.

Finally, as regards compliance with the principle of legal certainty, it should be noted that, undoubtedly, Regulation No. 1151/2012 does not explicitly state that it also applies to products produced in the Union for the purpose of export to third countries. However, in view in particular of the general and unequivocal nature of Articles 13, 36, and 37 of Regulation No 1151/2012, which do not provide for an exception to such products, and the fact that the said objectives are clearly stated in Articles 1 and 4 of that Regulation, Article 13(3) thereof appears clear and unequivocal in so far as it obliges Member States to take appropriate administrative and judicial measures to prevent or suspend the use of a PDO or a PGI to designate products produced on their territory that do not comply of the applicable product specification, including where these products are intended for export to third countries.

Based on the stated considerations, the Court decided:

By failing to prevent or stop the use by Danish milk producers of the Protected Designation of Origin (PDO) ‘Feta’ to designate cheese that does not comply with the product specification of that PDO, the Kingdom of Denmark has failed to fulfill its obligations under Article 13(3) of Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs.

(unofficial translation)

Denmark has legal troubles with Feta cheese in the EU

The Advocate General of the European Court ĆAPETA has given an opinion on Case C‑159/20 European Commission v Kingdom of Denmark.

This case concerns the issue of enforcement of geographical indication rights in Denmark related to the Greek Feta cheese.

In the present case, by bringing an action under Article 258 TFEU, the European Commission asks the Court to declare that the Kingdom of Denmark has breached its obligations under Article 13 of Regulation No 1151/2012 by failing to prevent or stop the use of the name ‘Feta’ on the cheese produced in Denmark intended for export to third countries. The Commission also claims that the Kingdom of Denmark has breached its obligations of sincere cooperation arising under Article 4(3) TEU, either alone or in conjunction with Articles 1(1) and 4 of Regulation No 1151/2012.

‘Feta’ is a type of cheese, traditionally produced from sheep’s, or sheep’s and goat’s, milk in parts of Greece. For those who want to learn more about ‘Feta’, I refer to the poetic description offered by Advocate General Ruiz-Jarabo Colomer, as I could not put it in better words myself. (4) Importantly for the case at issue, since 2002, the name ‘Feta’ is registered as a protected designation of origin (‘PDO’) under EU law. 

On the basis of Regulation No 1151/2012, registration of the name ‘Feta’ as a PDO means that it can be used only for cheese originating in the specified geographical area in Greece and complying with the product specification in Regulation No 1829/2002.

Article 13(3) of Regulation No 1151/2012 obliges the Member States to take the necessary measures to prevent or stop the unlawful use of registered PDOs on their territory. The Commission, supported by the Hellenic Republic and the Republic of Cyprus, claims that the Kingdom of Denmark has breached that obligation by not preventing or stopping the use of the name ‘Feta’ for cheese produced in Denmark and intended to be exported to third countries.

The Kingdom of Denmark does not deny that it does not prevent or stop the producers on its territory from using the name ‘Feta’ if their products are intended to be exported to third countries. It considers, however, that Regulation No 1151/2012 applies only to products sold in the EU, and does not cover exports to third countries. In its view, therefore, the use of the name ‘Feta’ for cheese produced in Denmark, but destined only for export to the markets of third countries where the name ‘Feta’ is not protected on the basis of an international agreement does not amount to an infringement of Regulation No 1151/2012. Therefore, failure to prevent or stop the use of the name ‘Feta’ for exported cheese does not breach the obligation under Article 13(3) of Regulation No 1151/2012 because such an obligation does not arise under that provision.

In essence, the main dispute between the parties to the present case is about whether the relevant EU law prevents the use of the name ‘Feta’ for products exported to third countries which are not produced in accordance with the product specification of ‘Feta’ as a registered PDO.

To be clear, the dispute is not about the competences of the EU. The Kingdom of Denmark does not claim that the EU lacks competence to legislate with a view to prohibiting the use of the name ‘Feta’ for exported products. It only claims that, under current legislation, the EU legislature did not choose to prohibit such use.

Consequently, the present case requires the Court to interpret the scope of application of Regulation No 1151/2012. The prerequisite for that is an understanding of the underlying reason and purpose of protection of geographical indications, and more precisely of PDOs, as intended by the EU legislature. This case also raises some important questions concerning the principle of sincere cooperation laid down in Article 4(3) TEU in the context of infringement actions brought against the Member States.

The Advocate General’s opinion:

 In the light of the foregoing considerations, I propose that the Court should:

1. Declare that, by failing to prevent or stop the use by Danish producers of the registered name ‘Feta’ for cheese intended for export to third countries, the Kingdom of Denmark has failed to fulfil its obligations under Article 13 of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs;

2. Dismiss the action as to the remainder;

3. Order the European Commission and the Kingdom of Denmark each to bear their own costs; and

4. Order the Hellenic Republic and the Republic of Cyprus each to bear their own costs.

Paintings and watches – a dispute from Denmark

The Court in Denmark has ruled in a case concerning a copyrightable work transformed into another work. The case at hand focus our attention on the following painting by artist Tel R:

This painting has been purchased for $90 000 by Dann Thorleifsson and Arne Solmunde Leivsgarð, founders of the watch manufacturer company Letho.

They launched a campaign where the winners can order watches, which dials are made of small painting parts.

According to the artist, this was a completely new way of using of his painting that transforms the original work. He claimed that copyright permission for such use was needed.

The Letho’s position was that in this case there was a destruction of the work which according to the Danish law does not constitute copyright infringement.

The court ruled that there was a copyright infringement because the painting was made available to the public in a changed form, which requires copyright permission.

Source: WIPR.

New fees for international trademarks for Denmark

WIPO reports about new individual fees payable for designation of Denmark in international applications for trademarks. These fees, which will come into force on 01.07.2019, are as follow:

Free use of copyrighted works for advertisement in Denmark – an important Court’s decision

Emil Jurcenoks and Peter Nørgaard reported for one interesting and at the same time an important decision of the Danish Supreme Court.

The case concerns advertising photographs made by the Danish supermarket chain Coop which contained among other tableware by the Danish designer Kasper Heie Würtz for which use, however, there wasn’t a concent by the designer nor any remunerations.

A lawsuit was been initiated. According to Coop there was no copyright infringement because the Danish legal practice allows minor use of copyrighted works in case that the works are not famous and the use is only as a background and minimal.

Würtz won the case before the first instance Maritime and Commercial High Court.

The Supreme Court upheld this decision. According to the court, Coop failed to prove that there is a legal practice which allows such copyright exceptions for applied art for advertising purposes. What’s more, the Court considers the use at hand as not minor due to the fact that all photographs contain the aforementioned tableware. An exception is possible but in very narrow cases where relevant works are not distinctive enough and are not essential elements in the reproductions.

The full article is accessible here.

Source: IPKat.