Trademark and design clearance and risk assessment

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Kate Swaine from Gowling WLG (UK) published a quite interesting article which concerns how a company should carry out a brand and design clearance that in turn could prevent future collisions with third party’s intellectual property rights.

When we talk about clearance in that case we mean more or less the following:

  • Searching in the official Patent Offices’ databases for earlier registered trademarks and industrial designs. This should be done at the stage of brand and design building which will help any problems to be avoided in time before more time and money to be invested;
  • Searching for identical or similar internet domain names that can secure the use of the relevant mark on the internet;
  • Searching whether the trademark name resembles any company name that can create possible legal collisions;
  • Searching in Google for earlier similar unregistered trademarks of designs;
  • Making a risk assessment based on the information from the different searches above. This will give a clear picture about whether the relevant marks and designs can be used without legal hurdles or whether such use can lead to costly lawsuits.

For more information here.

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Nintendo and industrial design protection in EU

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The European court has ruled in joined cases C‑24/16 and C‑25/16, Nintendo Co. Ltd v BigBen Interactive GmbH, BigBen Interactive SA. These cases concern the following:

Nintendo is a multinational company active in the production and sale of video games and video game consoles, including the Wii video games console and its accessories. It is the holder of several registered Community designs relating to Wii accessories, such as the Wii remote control, the accessory known as the ‘Nunchuck’ for the Wii remote control, which enables compatible video games to be controlled differently, the connector plug known as the ‘Wii Motion Plus’ for the remote control, and the Balance Board, an accessory that allows the player to control the game through weight changes.

BigBen France makes remote controls and other accessories compatible with the Wii video games console and sells them via its website directly to consumers located inter alia in France, Belgium and Luxembourg, as well as to its subsidiary, BigBen Germany. The latter sells the goods made by BigBen France, inter alia via its website, to consumers located in Germany and Austria.

It is apparent from the file submitted to the Court of Justice that BigBen Germany does not have its own stock of goods. Thus, it forwards the orders it receives from consumers to BigBen France. Supply of the allegedly infringing goods is therefore carried out from France. BigBen Germany and BigBen France also use images of goods corresponding to the protected designs held by Nintendo in the course of the lawful sale, including for the purposes of publicity, of certain other goods they sell.

Nintendo takes the view that BigBen Germany and BigBen France’s sale of certain goods made by BigBen France infringes its rights under the registered Community designs held by it. It also submits that those two companies cannot be recognised as having the right to use the images of the goods corresponding to those designs for their commercial activity. Consequently, it brought actions before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) against BigBen Germany and BigBen France seeking a declaration that they had infringed the rights conferred upon it by those designs.

The Landgericht held that there had been an infringement by BigBen Germany and BigBen France of Nintendo’s registered Community designs. However, it dismissed the actions in so far as they concerned the use of the images of the goods corresponding to those designs by the defendants in the main proceedings. The Landgericht therefore ordered BigBen Germany to cease using those designs throughout the European Union and also upheld, without territorial limitation, Nintendo’s supplementary claims seeking that it be sent various information, accounts and documents held by the defendants in the main proceedings, that they be ordered to pay compensation and that the destruction or recall of the goods at issue, publication of the judgment and reimbursement of the lawyers’ fees incurred by Nintendo be ordered (‘the supplementary claims’).

As regards BigBen France, the Landgericht Düsseldorf (Regional Court, Düsseldorf) held that it had international jurisdiction in respect of that company and ordered it to cease using the protected designs at issue throughout the European Union. Concerning the supplementary claims, it limited the scope of its judgment to BigBen France’s supplies of the goods at issue to BigBen Germany, but without limiting the territorial scope of its judgment. It considered the applicable law to be that of the place of infringement and took the view that in the present case that was German, Austrian and French law.

Both Nintendo and the defendants in the main proceedings brought appeals against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf).

In support of its action, BigBen France contends that the German courts lack jurisdiction to adopt orders against it that are applicable throughout the European Union and takes the view that such orders can have merely national territorial scope. For its part, Nintendo disputes the limitation of such orders solely to the goods within the supply chain between the defendants in the main proceedings. Nintendo also claims that the defendants in the main proceedings cannot be recognised as having the right to use, in the course of their economic activity and for the purposes of selling their own goods, the images of the goods corresponding to its registered Community designs, whereas the defendants in the main proceedings maintain that such use is in conformity with Regulation No 6/2002. Moreover, Nintendo takes the view that German law should be applied to its claims relating to BigBen Germany and French law to those relating to BigBen France, contrary to what the Landgericht Düsseldorf (Regional Court, Düsseldorf) held.

Nintendo therefore requests the referring court to order the defendants in the main proceedings to cease to make, import, export, use or stock for those purposes the goods at issue within the European Union and/or reproduce those goods or, as the case may be, use the images of those goods corresponding to Nintendo’s Community designs, throughout the European Union. Nintendo’s claim relating to ceasing the production of the goods that, in its view, infringe the registered Community designs held by it concerns solely BigBen France.

In addition, Nintendo requests that its supplementary claims be upheld.

In those circumstances, the referring court states, in the first place, that its international jurisdiction in respect of the claims against BigBen France stems from Article 79(1) of Regulation No 6/2002, read in conjunction with Article 6(1) of Regulation No 44/2001, on the ground that Nintendo’s claims against BigBen Germany and BigBen France are connected because there is a supply chain of the allegedly infringing goods between the two defendants in the main proceedings. That court doubts, however, in the light of the arguments set out before it both by Nintendo and BigBen France, that the scope of the judgment delivered by the Landgericht Düsseldorf (Regional Court, Düsseldorf) in respect of BigBen France, as regards Nintendo’s claims, is in conformity with the provisions of Regulation No 44/2001 and Regulation No 6/2002.

In the second place, the referring court explains that the question whether and in what circumstances a third party might lawfully use the image of a product corresponding to a Community design in order to advertise the goods which it sells and which constitute accessories to the goods corresponding to such a registered design is novel. Interpretation of the concept of ‘citations’ within the meaning of Article 20(1)(c) of Regulation No 6/2002 is therefore necessary.

In the third place, that court has doubts as to the law applicable to Nintendo’s supplementary claims concerning both the first and second defendant in the main proceedings and is uncertain in that regard, in particular, about the scope of Article 8(2) of Regulation No 864/2007.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions, which are formulated in the same terms in Cases C‑24/16 and C‑25/16, to the Court of Justice for a preliminary ruling:

‘(1) In connection with a trial to enforce claims under a Community design, can the court of a Member State whose jurisdiction with respect to a defendant is based solely on Article 79(1) of [Regulation No 6/2002] in conjunction with Article 6(1) of [Regulation No 44/2001], on the basis that this defendant, which is domiciled in another Member State, supplied the defendant domiciled in the pertinent Member State with goods that may infringe intellectual property rights, adopt measures against the first mentioned defendant that are applicable throughout the EU and extend beyond the supply relationships on which jurisdiction is based?

(2)  Is [Regulation No 6/2002], particularly Article 20(1)(c), to be interpreted as meaning that a third party may depict a Community design for commercial purposes if it intends to sell accessory items for the right holder’s goods corresponding to the Community design? If so, what criteria apply to this?

(3) For the purposes of Article 8(2) of [Regulation No 864/2007], how is the place “in which the act of infringement was committed” to be determined in cases in which the infringer:

(a) offers goods that infringe a Community design on a website and that website is also directed at Member States other than the one in which the person damaged by the infringement is domiciled, and/or;

(b) has goods that infringe a Community design shipped to a Member State other than the one in which it is domiciled?

Is Article 15(a) and (g) of the Rome II Regulation to be interpreted as meaning that the law determined in this manner is also applicable to participatory acts of other persons?’

The Court decision:

1. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, read in conjunction with Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, must be interpreted as meaning that in circumstances such as those in the main proceedings where the international jurisdiction of a Community design court seised of an action for infringement is based, with regard to one defendant, on Article 82(1) of Regulation No 6/2002 and, with regard to a second defendant established in another Member State, on that Article 6(1) read in conjunction with Article 79(1) of Regulation No 6/2002, because the second defendant makes and supplies to the first defendant the goods that the latter sells, that court may, on the applicant’s request, adopt orders in respect of the second defendant concerning measures falling under Article 89(1) and Article 88(2) of Regulation No 6/2002 also covering the second defendant’s conduct other than that relating to the abovementioned supply chain and with a scope which extends throughout the European Union.

2. Article 20(1)(c) of Regulation No 6/2002 must be interpreted as meaning that a third party which, without the consent of the holder of the rights conferred by a Community design, uses, including via its website, images of goods corresponding to such designs when lawfully offering for sale goods intended to be used as accessories to the specific goods of the holder of the rights conferred by those designs, in order to explain or demonstrate the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an act of reproduction for the purpose of making ‘citations’ within the meaning of Article 20(1)(c), such an act thus being authorised under that provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.

3. Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to noncontractual obligations (‘Rome II’) must be interpreted as meaning that the ‘country in which the act of infringement was committed’ within the meaning of that provision refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.

What to happen with EU IP rights after Brexit – the EU Commission’s proposal

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The European Commission issued a proposal what to happen with the different EU intellectual property rights after Brexit.

In brief the Commission’s proposal is as follow:

The holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law – if need be on the basis of specific domestic legislation to be introduced.
In the specific case of protected geographical indications, protected designations of origin and other protected terms in relation to agricultural products (traditional specialities guaranteed and traditional terms for wine) protected under Union law before the withdrawal date, this principle should also imply that the United Kingdom puts in place, as of the withdrawal date, the necessary domestic legislation providing for their continued protection. Such protection should be comparable to that provided by Union law.

The implementation of this principle should include, in particular,the automatic recognition of an intellectual property right in the United Kingdom on the basis of the existing intellectual property right having unitary character within the Union.

Where applicable to the relevant right, the implementation of this principle should also
include:

  • the determination of the renewal dates;
  • the respect of priority and seniority principles;
  • the adaptation of ‘genuine use’ requirements and ‘reputation’ rules to the specific situation under consideration.

The implementation of this principle should not result in financial costs for the holders of intellectual property rights having unitary character within the Union. Any related
administrative burden for such holders should be kept to a strict minimum.

Applications for Intellectual property rights having unitary character within the Union. Where an application for an intellectual property right having unitary character within the Union has been submitted before an Union body in accordance with Union law before the withdrawal date and the administrative procedure for the grant of the right concerned is still on-going on that date, the applicant should be entitled to keep the benefit of any priority date in respect of such pending application when applying after the withdrawal date for an equivalent intellectual property right in the United Kingdom.

More Information can be found here.

 

Furniture and originality in Switzerland

The Swiss Federal Supreme Court has ruled in a copyright lawsuit regarding an individual character of furniture.

The case at hand concerns a design of chairs and bar stools created by the Swiss designer Max Bill in the 50s and 60s of 20 century. These designs have been used by Horgenglarus since them producing the relevant furniture.

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After the death of Max Bill his copyrights started to be managed by the Bill Foundation which gave a license to Horgenglarus that was terminated in 2001. The manufacturer continued to use the designs which provoked a lawsuit. Horgenglarus contended that designs at point did not enjoy any copyright protection because they did not have the necessary individual character to be considered “works” in the sense of copyright law.

The commercial court upheld only the copyright protection over the frame chair considering the bar stool as lacking individual character taking into account the previous similar stools.

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The Supreme court reversed this decision stating that “the degree of individuality (originality) required for a work to have individual character depended on the degree of freedom the category of works permitted. If the degree of freedom was limited, even minor deviations from known designs could convey individual character.”

According to the court the fact that separate elements from the stool are similar to the previous one it doesn’t mean that the relevant design is lacks of originality because the assessment requires the entire design to be taken into consideration.

Based on the foregoing, the court considers that the individual elements had never been combined in the way Max Bill combined them so the work was unique at the time of creation.

More information can be found here.

Source: IP Kat.

 

Copyright over design for clothes in US

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The US Supreme Court ruled in the case STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC., which in brief concerns clarification whether clothes design is copyright protectable.

As it is well-known there is no copyright over the so-called “useful article” objects having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Examples are clothing, furniture, machinery, dinnerware, and lighting fixtures.

According to the court, even in this case copyright protection can be invoked but under some requirements:

  • the element can be perceived as a work of art separate from the useful article;
  • and the element would qualify as a protectable pictorial, graphic or sculptural work if imagined separately from the article of clothing (or other useful article).

In the particular case, the court considers that copyright over designs fixed on the clothes exist because the same designs could be transferred to another medium such as canvas in which respect it could be perceived as a separate piece of art.

More information here.