Neymar won a dispute about his name in EU

brazil-germany-1201762_960_720.jpgThe well-known Brazilian footballer Neymar has won a trademark dispute before the General Court of the European Union.

The case concerns a registered in 2012 European trademark NEYMAR in class 25  – Clothing, footwear, headgear, owned by Carlos Moreira.

The footballer filed a request for invalidation of this mark based on a claim that it is filed in bad faith.

The EUIPO invalidated the mark because of which Moreira appealed the decision.

The General Court confirmed the EUIPO conclusions that this sign has been filed in a bad faith.

According to the court, there were sufficient pieces of evidence that clearly showed the celebrity status of Neymar at the time when the application was filed. Because of his rising career, many football clubs have interest in him at that time. This generated serious media coverage.

In that regard, the Moreira’s claims that he didn’t know who Neymar was were dismissed.

Another negative point for Moreira was that at the moment when he filed an application for this trademark he did the same for another mark Iker Casillas which is the name of the former Real Madrid goalkeeper.

Source: WIPR.

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Vita as a white trademark in The EU

blueberry-1245702_960_720.jpgThe European Court has ruled in case T‑423/18 Fissler GmbH v EUIPO which concerns whether or not words describing colors can be registered as trademarks.

The background of the case is as follow:

On 27 September 2016, the applicant, Fissler GmbH, filed an application for registration of an EU a word trade mark for VITA.

The goods in respect of which registration was sought are:

– Class 7: ‘Food processors, electric; parts and accessories for the aforesaid goods’;

– Class 11: ‘Pressure cookers, electric; parts and accessories for the aforesaid goods’;

– Class 21: ‘Household or kitchen utensils and containers; cooking pot sets; pressure cookers, non-electric; parts and accessories for the aforesaid goods’.

By decision of 28 April 2017, the examiner refused registration of the mark applied for in respect of the goods concerned on the grounds that it was descriptive and devoid of any distinctive character for the purposes of Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001).

On 20 June 2017, the applicant filed a notice of appeal with EUIPO.

By decision of 28 March 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the first place, as regards the relevant public, it found that the goods concerned were aimed above all at the general public, but also in part at a specialist public, for example chefs, and that the level of attention varied from average to high. It added that, as the mark applied for was a Swedish term, it was necessary to take into account the Swedish-speaking public in the European Union.

In the second place, as regards the descriptiveness of the mark applied for, the Board of Appeal, first, pointed out that the sign vita is the definite plural form of the word ‘vit’, which means ‘white’ in Swedish. Next, it found that, for the purposes of applying Article 7(1)(c) of Regulation 2017/1001, the question whether or not white was a common colour for those goods was not determinative. It was sufficient that those goods could exist in white and that the sign could be descriptive of them. After stating that the colour white was not the most common colour for ‘electronic and non-electronic’ (that is to say, electric and non-electric) pressure cookers and other household utensils, but that it was at least a fairly usual colour for those goods, it found that that showed that an average consumer would associate the goods concerned with the colour white and therefore found that the mark applied for was descriptive. Furthermore, the Board of Appeal pointed out that some kitchen utensils and household appliances are often referred to as ‘white goods’ in English and Swedish (‘vitvaror’). On the basis of an extract from the website which could be accessed via the internet address http://www.vitvara.n.nu/vad-ar-vitvaror, it deduced that some of the goods concerned, such as electric food processors or electric pressure cookers, could collectively be described as ‘white goods’. It stated that, even if that were not possible, because it is mainly large household appliances, like washing machines and dishwashers, which are described as ‘white goods’, it clearly demonstrated that the colour white was generally associated with household utensils. Lastly, it found that the mark applied for was purely descriptive.

In the third place, as regards the lack of distinctive character of the mark applied for, the Board of Appeal found that the mark applied for would be understood by the relevant public as a simple statement of fact in the sense that the goods concerned were goods that were available in white. It concluded that that mark was purely descriptive and, consequently, had no distinctive character. It took the view that any manufacturer of food processors and cooking pot sets could manufacture its goods in white and that that mark was not therefore capable of distinguishing the applicant’s goods from those of other undertakings. Furthermore, the Board of Appeal rejected the applicant’s argument that there are other registered trade marks which consist solely of colours.

The General Court annulled the EUIPO’s decision with the following arguments:

In the present case, it must be stated that the colour white does not constitute an ‘intrinsic’ characteristic which is ‘inherent to the nature’ of the goods concerned (such as food processors, electric pressure cookers and household utensils), but a purely random and incidental aspect which only some of them may have and which does not, in any event, have any direct and immediate link with their nature. Such goods are available in a multitude of colours, among them the colour white, which is not more prevalent than the others. The Board of Appeal itself acknowledges this because the website that it mentions in paragraph 23 of the contested decision states that ‘these days, [household] utensils come in all colours’.

The mere fact that the goods concerned are more or less usually available in white, among other colours, is not disputed, but is irrelevant, since it is not ‘reasonable’ to believe that for that reason alone the colour white will actually be recognised by the relevant public as a description of an intrinsic characteristic which is inherent to the nature of those goods.

Consequently, neither of the two grounds relied upon by the Board of Appeal  is sufficient to establish that there is a sufficiently direct and specific link, within the meaning of the case-law referred to in paragraph 28 above, between the term ‘vita’ in Swedish and the goods concerned. The Board of Appeal did not show that the relevant public, when faced with the mark applied for, would immediately perceive it, without further thought, as a description of those goods or of one of the intrinsic characteristics of those goods that is inherent to their nature.

Furthermore, in so far as the Board of Appeal inferred the lack of distinctive character of the mark applied for from its being understood as a simple statement of fact in the sense that the goods concerned are available in white, it must be held that the relevant Swedish-speaking public will not perceive a description of an intrinsic characteristic of the goods concerned in the mark applied for and will not be able to associate it directly with those goods. On the contrary, the term ‘vita’ requires some interpretation on the part of Swedish and Finnish consumers. Those consumers will not understand the mark applied for as a simple statement of fact according to which those goods are available in white, but rather as an indication of their origin. That is particularly so because that mark will be affixed to goods of any colour, and not only to those which are white.

The ground for refusal relied on in the present case cannot therefore preclude the mark applied for from being regarded by the relevant public as being capable of identifying the commercial origin of the goods in question and distinguishing them from those of other undertakings.

Some answers regarding the EU Copyright reform

flag-2608475_960_720.jpgThe European Commission published answers to a variety of questions regarding the Copyright reform that has been approved recently. The questions are as follow:

1. The European Parliament voted on the new copyright rules at EU level – what are they about?
2. Why do we need to modernise the EU copyright rules?
3. Are the new copyright rules limiting users and their freedom online?
4. Will the Directive impose upload filters online?
5. Will the Copyright Directive prevent users from expressing themselves on internet in the same way as now? Will memes and GIFs be banned?
6. How will the new Copyright rules tackle the discrepancy between the remuneration of creators and that of certain online platforms (the so-called ‘value gap’)?
7. How will the new copyright rules on user-uploaded platforms benefit the users?
8. What are the services covered by the new rules on user-uploaded platforms?
9. What will be the special regime for startups and smaller enterprises?
10. What will happen to online encyclopaedias (like Wikipedia) that are based on content uploaded by users?
11. How will the new press publishers’ right work?
12. Are small and emerging press publishers going to be affected by the reform?
13. Is the new Copyright Directive creating a “hyperlink tax”?
14. With the new rules, will the use of “snippets” be forbidden?
15. How will the new Directive benefit journalism and journalists?
16. How will the Directive ensure fair remuneration for individual authors and performers?
17. How will the new copyright rules strike a fairer balance in the relationships between creators and their contractual partners?
18. What is the contract adjustment mechanism? Does it interfere with contractual freedom?
19. What is the revocation mechanism and why is it needed?
20. What are the new exceptions to copyright laid down in the Copyright Directive?
21. How will the new copyright rules benefit researchers?
22. What is the purpose of the other, general, text and data mining exception?
23. Who will benefit from the new teaching exception?
24. Will the new copyright rules enhance the preservation and availability of cultural heritage?
25. What will it change for users with regards to “public domain” content?
26. How will the new copyright rules foster the availability of EU audiovisual works on video-on-demand platforms?

You can find the answers here.

Whether Don Quijote de la Mancha relates to a PDO cheese?

pexels-photo-220112.jpegThe European Court has ruled in case C‑614/17 Fundación Consejo Regulador de la Denominación de Origen Protegida Queso Manchego v Industrial Quesera Cuquerella SL. This interesting case regards the issue of whether a geographical indication can be infringed by a graphical representation that can be related to it. In detail:

The Queso Manchego Foundation is responsible for managing and protecting the PDO ‘queso manchego’. On that basis, it brought an action against the defendants in the main proceedings before the Spanish court of first instance with jurisdiction to hear the case seeking a declaration that the labels used by IQC to identify and market the cheeses ‘Adarga de Oro’, ‘Super Rocinante’ and ‘Rocinante’, which are not covered by the PDO ‘queso manchego’, and the use of the words ‘Quesos Rocinante’ infringe the PDO ‘queso manchego’ because those labels and those words constitute an unlawful evocation of that PDO for the purpose of Article 13(1)(b) of Regulation No 510/2006.

The Spanish court of first instance dismissed that action on the ground that the signs and names used by IQC to market the cheeses which were not covered by the PDO ‘queso manchego’ were not visually or phonetically similar to the PDOs ‘queso manchego’ or ‘La Mancha’ and that the use of signs such as the name ‘Rocinante’ or the image of the literary character Don Quixote de La Mancha evoke the region of La Mancha (Spain) and not the cheese covered by the PDO ‘queso manchego’.

The Queso Manchego Foundation brought an appeal against that decision before the Audiencia Provincial de Albacete (Provincial Court, Albacete, Spain), which, by judgment of 28 October 2014, upheld the judgment at first instance. That court held that, for cheeses marketed by IQC which are not covered by the PDO ‘queso manchego’, the use of landscape and images typical of La Mancha on the labels of those cheeses leads consumers to think of the region of La Mancha but not necessarily of the cheese covered by the PDO ‘queso manchego’.

The applicant in the main proceedings brought an appeal against that judgment before the Tribunal Supremo (Supreme Court, Spain).

In its order for reference, the Tribunal Supremo (Supreme Court) sets out a number of factual considerations.

First of all, the referring court states that the word ‘manchego’ used in the PDO ‘queso manchego’ is the adjective which describes, in Spanish, the people and the products originating in the region of La Mancha. Next, it observes that the PDO ‘queso manchego’ covers cheeses made in the region of La Mancha from sheep’s milk in accordance with the traditional production, preparation and ageing requirements set out in the product specification of that PDO.

Moreover, the referring court states that Miguel de Cervantes set most of the story relating to the fictional character Don Quixote de La Mancha in the region of La Mancha. Don Quixote is also described by the referring court as having certain physical features and clothing similar to those of the character depicted on the figurative design on the label of the cheese ‘Adarga de Oro’. In that regard, the archaic word ‘adarga’ (small leather shield) is used in [Cervantes’] novel to describe the shield used by Don Quixote. In addition, the referring court notes that one of the names used by IQC for some of its cheeses is the name of the horse ridden by Don Quixote de La Mancha, namely ‘Rocinante’. The windmills which Don Quixote fights are a typical feature of the landscape of La Mancha. Landscapes featuring windmills and sheep appear on some of the labels used for the cheeses produced by IQC which are not covered by the PDO ‘queso manchego’ and in some of the illustrations on IQC’s website, which also advertises cheeses not covered by the PDO.

In those circumstances, the Tribunal Supremo (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Must the evocation of a [PDO], prohibited by Article 13(1)(b) of Regulation No 510/2006 necessarily be brought about by the use of a name visually, phonetically or conceptually similar to the [PDO] or may it be brought about by the use of figurative signs evoking the [PDO]?

(2)  When the [PDO] is of a geographical nature (Article 2(1)(a) of Regulation No 510/2006) and when the products are the same or comparable, can the use of signs evoking the region with which a [PDO] is associated constitute evocation of the [PDO] itself, within the meaning of Article 13(1)(b) of Regulation No 510/2006, which is prohibited even when the user of those signs is a producer established in the region associated with the [PDO], but whose products are not protected by [that PDO] because they do not meet the requirements set out in the product specification, apart from the geographical provenance?

(3)  Must the concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is “evocation” within the meaning of Article 13(1)(b) of Regulation No 510/2006, be understood to cover European consumers or can it cover only consumers of the Member State in which the product giving rise to evocation of the protected geographical indication is produced or with which the PDO is geographically associated and in which the product is mainly consumed?’

The Court’s decision:

1.  Article 13(1)(b) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs must be interpreted as meaning that a registered name may be evoked through the use of figurative signs.

2. Article 13(1)(b) of Regulation No 510/2006 must be interpreted as meaning that the use of figurative signs evoking the geographical area with which a designation of origin, as referred to in Article 2(1)(a) of that regulation, is associated may constitute evocation of that designation, including where such figurative signs are used by a producer established in that region, but whose products, similar or comparable to those protected by the designation of origin, are not covered by it.

3.  The concept of the average consumer who is reasonably well informed and reasonably observant and circumspect, to whose perception the national court has to refer in order to assess whether there is ‘evocation’ within the meaning of Article 13(1)(b) of Regulation No 510/2006, must be understood as covering European consumers, including consumers of the Member State in which the product giving rise to evocation of the protected name is made or with which that name is geographically associated and in which the product is mainly consumed.

Does AIRBNB break the law in France?

airbnb-2384737_960_720.jpg

The Advocate General of the European Court M. SZPUNAR  gave an opinion in the case  C‑390/18 AIRBNB Ireland v Hotelière Turenne SAS, Association pour un hébergement et un tourisme professionnel (AHTOP)Valhotel. The case concerns the following:

AIRBNB Ireland UC, a company governed by Irish law established in Dublin (Ireland), is part of the AIRBNB group and is wholly owned by AIRBNB Inc. AIRBNB Ireland administers, for all users established outside the United States, an online platform designed to connect, on the one hand, hosts (professionals and individuals) with accommodation available to rent with, on the other hand, persons seeking that type of accommodation.

Following a complaint against an unknown person, together with an application to join in the proceedings as civil party, lodged by, in particular, the Association pour un hébergement et un tourisme professionnel (AHTOP), the Prosecutor’s Office, Paris (France) on 16 March 2017 issued an initial indictment for handling of funds, for activities involving mediation and management of real property and business activities by a person not in possession of a professional licence, in accordance with the Hoguet law, and for other offences, alleged to have been committed between 11 April 2012 and 24 January 2017, and changed the status of AIRBNB Ireland to a ‘témoin assisté’ (a person who is not merely a witness, but to some extent a suspect).

AIRBNB Ireland denies acting as a real estate agent and claims that the Hoguet law is inapplicable on the ground that it is incompatible with Directive 2000/31.

It was in those circumstances that the investigating judge of the Tribunal de grande instance de Paris (Regional Court, Paris) (France), by decision of 6 June 2018, received at the Court on 13 June 2018, decided to stay proceedings and to refer the following questions to the Court:

‘(1) Do the services provided in France by the company AIRBNB Ireland via an electronic platform managed from Ireland benefit from the freedom to provide services provided for in Article 3 of [Directive 2000/31]?

(2) Are the restrictive rules relating to the exercise of the profession of real estate agent in France, laid down by [the Hoguet law], enforceable against the company AIRBNB Ireland?’

The Advocate’s opinion:

1) Article 2(a) of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’), read in conjunction with Article 1(b) of Directive (EU) 2015/1535 of the European Parliament and of the Council of 9 September 2015 laying down a procedure for the provision of information in the field of technical regulations and of rules on Information Society services, must be interpreted as meaning that a service consisting in connecting, via an electronic platform, potential guests with hosts offering short-term accommodation, in a situation where the provider of that service does not exercise control over the essential procedures of the provision of those services, constitutes an information society service within the meaning of those provisions.

2)  Article 3(4) of Directive 2000/31 must be interpreted as meaning that a Member State other than that in whose territory a provider of an information society service is established cannot, for reasons falling within the coordinated field, restrict the free movement of those services by relying, as against a provider of information society services, on its own initiative and without an examination of the substantive conditions being necessary, on requirements such as those relating to the practice of the profession of real estate agent, laid down in Law No 70-9 of 2 January 1970 regulating the conditions of the exercise of activities relating to certain transactions concerning real property and business assets.

New rules for handling appeals before the EU Court of Justice

flag-2608475_960_720.jpgPress release by the European Council:

In order to improve the functioning of the Court of Justice of the EU, which has seen a huge increase in the number of cases brought before it, the Council today adopted a new filtering mechanism for appeals by changing the Statute of the Court of Justice of the EU. In order to implement the change in practice, the Council also approved a set of amendments to the Court’s Rules of Procedure.

“The improved rules will facilitate the work of the Court of Justice of the EU by introducing a filtering mechanism for identifying appeals that merit examination, thus allowing the court to concentrate on its core business. The Court of Justice is overburdened and must prioritise. This decision will increase efficiency and enhance legal protection in the EU.”

      George Ciamba, Romanian Minister Delegate for European Affairs

The regulation agreed today will introduce a new filtering mechanism for appeals relating to decisions by certain EU agencies and offices. Appeals brought in cases which have already been considered twice, first by an independent board of appeal, then by the General Court, will not be allowed to proceed before the Court of Justice unless it is demonstrated that they raise an issue that is significant with respect to the unity, consistency or development of EU law. Statistics show that many such appeals, in fact, end up being dismissed on the grounds that they are either patently unfounded or manifestly inadmissible.

Specifically, the new rules will apply to appeal procedures emanating from one of the following EU agencies and offices:

the European Union Intellectual Property Office;
the Community Plant Variety Office;
the European Chemicals Agency; and
the European Union Aviation Safety Agency.
There has been a large increase over the past few years in the number of cases brought before the Court of Justice. The new procedure will reduce the workload of the court, allowing it to concentrate on cases that require its full attention.

The regulation adopted today is based on a proposal from the Court of Justice and has been agreed in negotiations between the Court of Justice, the Commission, the European Parliament, and the Council. The Council today also approved an accompanying set of amendments to the Rules of Procedure of the Court of Justice setting out the new system for handling appeals in detail.

For more information here.