More e-services regarding trademarks and designs in Benelux

atomium-3590412_960_720EUIPO reports about some new e-services provided by The Benelux Office for Intellectual Property (BOIP). These services regard the option for online Change of Representative and Transfer of Rights for trademarks and for designs.

The above mentioned digital services will complement already existing such for Change of Name, Change of Address, Change of Name and Address, Renewal Trade Mark, Renewal Design, Opposition, and e-Filing Trade Mark/Design.

All of this is a result of the work carried out by the EUIPO and the national Patent Offices in the EU Member States under the European Cooperation Projects (ECP1).

For more information here.

Not everyone is allowed to use Irish names and symbols to sell products – an EUIPO decision

irish-844928_1920The Grand Board of Appeal of the EUIPO has ruled in an interesting case which concerns deceptive trademarks registered in bad faith.

The case at hand regards the following European trademark registered by the Spanish company Hijos de Moisés Rodríguez González S.A for the goods in class 29 (meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats):

La Irlandesa

This trademark was attacked by the Irish Ministry for Jobs, Enterprise and the Irish Dairy Board jointly with an invalidation request.

According to both institutions, the registered trademark can lead consumers to think that the branded goods originate from Ireland which could not be the case. What’s more the mark was registered in bad faith because the owner had trade relations with the Irish Dairy Board in the past and tried to registered several similar trademarks for La Irlandesa.

Although EUIPO initially dismissed the request for invalidation, the Grand Board upheld it entirely.

The name La Irlandesa has clear meaning associating with Ireland. In addition, the color and the graphical elements have such connotations too. This can deceive the consumer to think that the products are from Ireland. According to some evidence the mark was used not only for products imported from Ireland but for other goods too.

In order bad faith to be established consideration must be taken of: (a) the origin of the contested sign and its use since its creation; (b) the commercial logic underlying the filing of the application for registration of the sign as an EUTM; and (c) the chronology of events leading up to that filing (T-257/11, COLOURBLIND).

In addition, the concept of bad faith involves a dishonest intention or other deceitful motive that departs from accepted principles of ethical behaviour or honest commercial and business practices (T-795/17, NEYMAR).

Finally, pursuant to Articles 5(4) and 6(1)(b) of the Directive 2005/29/EC (Unfair Commercial Practices Directive), commercial practices are considered ‘unfair’ and therefore dishonest if they contain false information or are in any way such as to deceive the average consumer in relation, inter alia, to the main characteristics of the product, such as its geographical or commercial origin.

Taking into account all of the above, the Grand Board concluded that there is a bad faith intention for the registration of the mark bearing the mind the trade relations between the trademark owner and the Irish Dairy Board and the possibility for consumer deception.

Source: IPKat.

EUIPO extends time limits again in the light of Covid-19

envato-4966945_1920EUIPO announced its decision to extend time limits regarding different procedures related to European trademark and design protection.

1) In accordance with Article 101(4) EUTMR and Article 58(4) CDIR, all time limits expiring between 1 May 2020 and 17 May 2020 inclusive that affect all parties in proceedings before the Office are extended until 18 May 2020.

(2) In the event parties to proceedings before the Office choose to discharge their procedural obligations before the expiry of the extended time limit, by submitting observations, documents or performing any other procedural act, the relevant time limit will be considered exhausted and the proceedings will continue without awaiting its expiration pursuant to Article 1.

The full text of the decision is available here.

Superman upheld his reputation in the EU

photo-1538051046377-5ad74dc62f95DC Comics won a dispute in the EU regarding its famous Superman trademark. The case concerns an attempt by Magic Box to register the following EU trademark in class 28 – toys and games:

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Against this mark an opposition was filed by DC Comics based on the following earlier trademark in classes 3, 9, 14, 16, 25, 21, 24, 25, 28, 30, 32 и 41:

superman

In addition, a  trademark with reputation under Article 8(5) EUTMR was claimed.

The EUIPO found both sign similar at least in one of their aspects. The Office agreed that Superman trademark was well-known in the EU, but for the goods in class 16 – comics and books and not for film making services in class 41.

According to the EUIPO, it is a common practice different characters from books to be used for merchandising products including for different toys which are very much accepted by the consumers. From that point of view, and taking into account the reputation of the earlier mark, the Office considered that the consumers could find a link between both marks which can give some unfair advantages to the applicant of the later mark.

Because of this the trademark application was rejected.

Source: IPKat.

When 3D trademarks obtain a technical result – a decision by the EU Court

photo-1575505586569-646b2ca898fcThe European Court has ruled in the case C‑237/19 Gömböc Kutató, Szolgáltató és Kereskedelmi Kft. v Szellemi Tulajdon Nemzeti Hivatala.

This dispute concerns the following:

On 5 February 2015, Gömböc Kft. applied for registration of a three-dimensional sign as a trade mark in respect of goods consisting of ‘decorative items’ in Class 14  ‘decorative crystalware and chinaware’ and ‘toys’ in Classes 21 and 28 of that agreement, respectively. The sign was represented as follows:

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The Office rejected that application on the basis of the second and third indents of Article 2(2)(b) of the Law on Trade Marks. According to the Office, the sign for which registration is sought represents a homogenous object with two symmetry planes perpendicular to one another and consisting of seven smooth sides and edges separating those sides. That object is the product of Gömböc, the applicant in the main proceedings, namely a convex monostatic object made from homogeneous material, which has a single point of stable equilibrium and a single point of unstable equilibrium, that is to say, two points of equilibrium in total, the shape of which itself ensures that the object always returns to its position of balance. The Office found that the sign for which registration is sought represents a three-dimensional object which, due to its external design and the homogeneous material used, always returns to its position of balance, and that the shape of the object serves, overall, to achieve its technical objective of always righting itself.

When assessing the registrability of the sign at issue, the Office relied, in particular, on the knowledge of the characteristics and the function of the shape of that product that the average consumer was able to obtain from the applicant in the main proceedings’ website and from the considerable publicity the product had enjoyed in the press.

In the first place, the Office found, in essence, that, as regards the ‘toys’ in Class 28 of the Nice Agreement, the three-dimensional shape of the object allowed it to function as a toy whose principal feature is that it always returns to its point of stable equilibrium. Accordingly, all the elements of the sign at issue were designed in order to obtain that technical result, that is to say, they serve a technical function. The informed and reasonable consumer will therefore perceive the sign at issue as a shape necessary to obtain the technical result sought by the object that that sign represents.

In the second place, as regards the ‘decorative items’ in Classes 14 and 21 of the Nice Agreement, the Office stated that the three-dimensional shape represented in the sign at issue embodied a striking and attractive shape, which is an essential element in the marketing of the goods in question. Consumers buy decorative items mainly for their special shape. In principle, under trade mark law, three-dimensional decorative items cannot be denied protection, but where it is the striking style of such objects which determines their formal appearance, the value of the product resides in that shape.

Since the actions brought by Gömböc Kft. against the Office’s decision were dismissed at first and second instance, that company brought an appeal seeking a review of that decision before the referring court.

That court states, first, that, as regards the registration of the three-dimensional sign in relation to goods consisting of ‘toys’ in Class 28 of the Nice Agreement, the product the graphic representation of which is reproduced in paragraph 10 above is formed exclusively of the shape necessary to obtain the technical result sought. It notes that it is not possible to ascertain that result from that graphic representation alone, but that, as a result of the sign at issue, it is possible to recognise the product of the applicant in the main proceedings, Gömböc, and that, given the publicity which that product has enjoyed, the relevant public knows that the special shape and the homogenous structure of the product mean that it will always return to a position of balance.

Since the relevant case-law of the Court of Justice, in particular the judgments of 18 September 2014, Hauck (C‑205/13, EU:C:2014:2233) and of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), has failed to remove all doubt on the matter, the referring court is uncertain how it should assess, in connection with the application of the ground for refusing to register a sign as a trade mark or declaring a registered sign invalid provided for in Article 3(1)(e)(ii) of Directive 2008/95, whether that sign consists of the shape of the product which is necessary to obtain a technical result.

The referring court is uncertain, in particular, whether such an assessment must be based only on the graphic representation in the application for registration of the sign, or if the perception of the relevant public may also be taken into consideration in that regard in a situation where the product in question has become very well known and where, even though the product represented graphically consists exclusively of the shape necessary to obtain the technical result sought, that technical result cannot be ascertained from the graphic representation of the shape of the product in the application for registration alone, but requires knowledge of additional information on the product itself. That court notes, in addition, that the three-dimensional shape depicted in the sign at issue is shown from only one angle, with the result that that shape is not fully visible.

Second, in so far as concerns the ‘decorative items’ in Classes 14 and 21 of the Nice Agreement, the referring court is uncertain whether, in the case of a sign consisting exclusively of the shape of the goods, the ground for refusal or invalidity provided for in Article 3(1)(e)(iii) of Directive 2008/95 can be applied if it is only on the basis of the relevant public’s knowledge that it can be established that the shape gives the goods substantial value. In the present case, that knowledge relates to the fact that the product depicted in the sign at issue has become the tangible symbol of a mathematical discovery which addresses questions raised in the history of science.

Third, the referring court notes that the three-dimensional shape represented by the sign at issue already enjoys the protection conferred on designs. It observes that that type of protection may be afforded to products the appearance of which, in addition to meeting other requirements, has individual character. In the case of ‘decorative items’, the particular shape created by their designer, as an aesthetic feature, gives substantial value to the product.

Accordingly, the referring court is uncertain whether, in connection with the application of the ground for refusal or invalidity provided for in Article 3(1)(e)(iii) of Directive 2008/95, where the sole function of a product is to be decorative (decorative items), the shape of that product, which already enjoys the protection conferred on designs, is automatically excluded from the protection afforded by trade mark law. Moreover, the referring court seeks clarification as to whether that ground for refusal or invalidity can be applied to a product the three-dimensional shape of which fulfils purely a decorative function, only the aesthetic appearance of the product being relevant, with the result that, as regards decorative items, three-dimensional shapes for which protection is thus requested must necessarily be refused such protection.

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

‘(1) Must Article 3(1)[(e)(ii)] of [Directive 2008/95], in the case of a sign consisting exclusively of the shape of the product, be interpreted as meaning that

(a)   it is on the basis of the graphic representation contained in the register alone that it may be determined whether the shape is necessary to obtain the technical result sought, or

(b)  may the perception of the relevant public also be taken into account?

In other words, is it permissible to take into account the fact that the relevant public is aware that the shape for which registration is sought is necessary in order to obtain the technical result sought?

(2) Must Article 3(1)[(e)(iii)] of [Directive 2008/95] be interpreted as meaning that that ground for refusal is applicable to a sign that consists exclusively of the shape of the product where it is [only] by taking into account the perception or knowledge of the buyer as regards the product that is graphically represented that it is possible to establish that the shape gives substantial value to the product?

(3) Must Article 3(1)[(e)(iii)] of [Directive 2008/95] be interpreted as meaning that that ground for refusal is applicable to a sign, consisting exclusively of the shape of a product

(a) which, by virtue of its individual character, already enjoys the protection conferred on designs, or

(b)  the aesthetic appearance of which gives the product a certain value?’

The Court’s decision:

1. Article 3(1)(e)(ii) 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 meaning that, in order to establish whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, assessment does not have to be limited to the graphic representation of that sign. Information other than that relating to the graphic representation alone, such as the perception of the relevant public, may be used in order to identify the essential characteristics of the sign at issue. However, while information which is not apparent from the graphic representation of the sign may be taken into consideration in order to establish whether those characteristics perform a technical function of the goods in question, such information must originate from objective and reliable sources and may not include the perception of the relevant public.

2. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the perception or knowledge of the relevant public as regards the product represented graphically by a sign that consists exclusively of the shape of that product may be taken into consideration in order to identify an essential characteristic of that shape. The ground for refusal set out in that provision may be applied if it is apparent from objective and reliable evidence that the consumer’s decision to purchase the product in question is to a large extent determined by that characteristic.

3. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the goods where that sign enjoys protection under the law relating to designs or where the sign consists exclusively of the shape of a decorative item.

Revealing IP addresses, YouTube and the EU approach

post-letter-2828146_960_720The Advocate General of the European Court H. SAUGMANDSGAARD ØE issued its opinion on case C‑264/19 Constantin Film Verleih GmbH v YouTube LLC.

This dispute regards the main question whether the IP address of a copyright infringer is the same as the meaning of his/her actual address.

The case background is:

Constantin Film Verleih is a film distributor established in Germany.

YouTube, which is owned by Google and established in the United States, operates the internet platform with the same name.

In Germany, Constantin Film Verleih has exclusive exploitation rights in respect of the cinematographic works Parker and Scary Movie 5.

Between the months of June 2013 and September 2014, those two works were posted online on the ‘YouTube’ platform without Constantin Film Verleih’s consent. On 29 June 2013, the cinematographic work Parker was uploaded in its full-length version and in German under the username ‘N1’. It was viewed more than 45 000 times before it was blocked on 14 August 2013. During the month of September 2013, the cinematographic work Scary Movie 5 was uploaded in its full-length version under the username ‘N2’. It was viewed more than 6 000 times before it was blocked on 29 October 2013. On 10 September 2014, another copy of the second work was uploaded under the username ‘N3’. It was viewed more than 4 700 times before it was blocked on 21 September 2014.

Constantin Film Verleih demanded that YouTube and Google provide it with a set of information for each of the users who had uploaded those works.

The referring court found that the conditions for the right to information were satisfied. Consequently, the scope of the dispute in the main proceedings is limited to the content of the information that YouTube and/or Google must provide to Constantin Film Verleih. More specifically, the dispute concerns the following information:

–        the user’s email address,

–        the user’s telephone number,

–        the IP address used by the user to upload the files at issue, together with the precise point in time at which such uploading took place, and

–        the IP address last used by the user to access his or her Google/YouTube account, together with the precise point in time at which that access took place.

Ruling at first instance, the Regional Court, Frankfurt am Main, Germany rejected Constantin Film Verleih’s request that such information be provided.

On appeal, the Higher Regional Court, Frankfurt am Main, Germany ordered YouTube and Google to provide the email addresses of the users concerned, rejecting Constantin Film Verleih’s request as to the remainder.

By its appeal on a point of law, brought before the Federal Court of Justice, Constantin Film Verleih requested that YouTube and Google be ordered to provide it with all of the abovementioned information, including users’ telephone numbers and IP addresses. By their own appeal on a point of law, YouTube and Google requested that Constantin Film Verleih’s request be rejected in its entirety, including in so far as it concerns users’ email addresses.

Taking the view that the outcome of the two appeals on a point of law depended on the interpretation of the concept of ‘addresses’ contained in Article 8(2)(a) of Directive 2004/48, the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Do the addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, mentioned in Article 8(2)(a) of Directive [2004/48] and covered, as appropriate, by the information referred to in Article 8(1) of [that] directive, also include

(a) the email addresses of service users and/or

(b) the telephone numbers of service users and/or

(c) the IP addresses used by service users to upload infringing files, together with the precise point in time at which such uploading took place?

(2)  If the answer to Question 1(c) is in the affirmative:

Does the information to be provided under Article 8(2)(a) of Directive [2004/48] also cover the IP address that a user, who has previously uploaded infringing files, last used to access his or her Google/YouTube user account, together with the precise point in time at which access took place, irrespective of whether any infringement [of intellectual property rights] was committed when that account was last accessed?’

The Advocate’s opinion:

Article 8(2)(a) 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 meaning that the concept of ‘names and addresses’ set out in that provision does not cover, in respect of a user who has uploaded files which infringe intellectual property rights, the email address, the telephone number, the IP address used to upload those files or the IP address used when the user’s account was last accessed.

Accordingly, the Member States are not obliged, under that provision, to provide for the possibility, for the competent judicial authorities, to order that that information be provided in the context of proceedings concerning an infringement of an intellectual property right

Breaking news – Amazon repelled an attack by Coty after an EU Court decision

photo-1522780550166-284a0288c8dfThe European court has ruled in the case C‑567/18 Coty Germany GmbH  v Amazon. The case concerns the following background:

Coty, a distributor of perfumes, holds a licence for the EU trade mark DAVIDOFF registered under No 876 874 (‘the mark at issue’), which enjoys protection for ‘perfumes, essential oils, cosmetics’.

Amazon Services Europe enables third-party sellers to place offers for sale in respect of their goods in the ‘Amazon-Marketplace’ section of the website http://www.amazon.de. In the event of sale, contracts concerning those goods are concluded between the third-party sellers and the purchasers. Those third-party sellers may also avail themselves of the ‘Fulfilment by Amazon’ scheme, under which goods are stored by Amazon group companies, including Amazon FC Graben, which operates a warehouse. Those goods are dispatched by external service providers.

On 8 May 2014 one of Coty’s test purchasers ordered on the website http://www.amazon.de a bottle of ‘Davidoff Hot Water EdT 60 ml’ perfume that was offered for sale by a third-party seller (‘the seller’) and dispatched by the Amazon group under that scheme. After Coty sent a letter of formal notice to the seller on the ground that the rights conferred by the mark at issue were not exhausted in respect of the goods consigned by the seller to Amazon FC Graben under that scheme, those goods not having been put on the market in the European Union under that trade mark by the proprietor or with its consent, the seller signed a cease-and-desist declaration, coupled with a penalty clause.

By letter of 2 June 2014, Coty requested Amazon Services Europe to return all the bottles of perfume bearing the mark at issue stocked on behalf of the seller. Amazon Services Europe sent Coty a package containing 30 bottles of perfume. After another company belonging to the Amazon group informed Coty that 11 out of the 30 bottles sent originated from another seller’s stock, Coty requested that Amazon Services Europe disclose the name and address of that other seller, as the rights conferred on 29 out of the 30 bottles by the mark at issue had not been exhausted. Amazon Services Europe replied that it was not in a position to accede to that request.

Taking the view that Amazon Services Europe’s conduct, on the one hand, and that of Amazon FC Graben, on the other, infringed its rights in the mark at issue, Coty requested, in essence, that those two companies be ordered, subject to penalties, to desist, in the course of trade, from stocking or dispatching ‘Davidoff Hot Water’ brand perfumes in Germany, or from causing them to be stocked or dispatched, if those goods were not put on the Union market with Coty’s consent. It requested, in the alternative, that the same order be made against those companies in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes and, in the further alternative, that the same order be made against them in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes which have been stored on behalf of the seller or which cannot be attributed to another seller.

The Regional Court, Germany dismissed the action brought by Coty. The appeal brought by Coty was dismissed, with the court of appeal holding, inter alia, that Amazon Services Europe had neither stocked nor dispatched the goods concerned and that Amazon FC Graben had kept those goods on behalf of the seller and other third-party sellers.

Coty brought an appeal on a point of law (Revision) before the referring court. Only Amazon Services Europe and Amazon FC Graben are respondents before that court.

The referring court states that whether that appeal is successful, in so far as Coty disputes the court of appeal’s finding that Amazon FC Graben is not liable as a perpetrator of an infringement of trade mark rights, depends on the interpretation to be given to Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001.

In particular, it emphasises that whether the appeal on a point of law is successful depends on whether those provisions are to be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stocks those goods in order to offer them or put them on the market for the purposes of those provisions, even if it is only the third party who intends to offer those goods or put them on the market.

The referring court also states that, since Coty bases one of its claims on the risk of a repeat infringement, its action is well founded only if the conduct of the Amazon group companies in question is established to be unlawful both at the material time in the main proceedings and when the decision on the appeal on a point of law is issued.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’

The Court’s decision:

Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims.