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.

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Tests, well-known trademarks and a European Court decision

pexels-photo-951233.jpegThe European Court has ruled in case C‑690/17 ÖKO-Test Verlag GmbH v Dr. Rudolf Liebe Nachf. GmbH & Co. KG. This case concerns the following:

ÖKO-Test Verlag is the owner of the following German and EU trademark for printed works and testing and information and consultation services.

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ÖKO-Test Verlag chooses different goods from the market and makes tests on them without consent from the relevant producers. After that, the results are published in the magazine issued by ÖKO-Test.

Sometimes these producers are invited to use the results from these tests for marketing purposes in which case they are allowed ÖKO-Test trademark on products’ packages under a license.

Dr. Liebe produces toothpaste. In 2005 this company signed a license agreement to use ÖKO-Test for its product which was subject to a test receiving a very good assessment.

In 2014, however, ÖKO-Test Verlag found that Dr. Liebe was still been using its trademark although that wasn’t allowed under the license.

Dr. Liebe disagreed and because of which a lawsuit followed.  The Oberlandesgericht Düsseldorf  raised the following questions to the European court:

‘(1) Is there an unlawful use within the meaning of Article 9 (1), second sentence, (b) of [Regulation No 207/2009] or the second sentence of Article 5 (1) (a) 95] where:

  • the individual mark is affixed to a product for which the individual mark is not registered,
  • in the course of trade, the affixing of an individual mark by a third party is perceived as a “test mark”, that is to say, the product is manufactured and marketed by a third party not under the control of the proprietor of the trademark, but the holder of the mark has tested this product for certain qualities and based on this it has indicated in the test mark a certain result such as assessment,
  • and the individual mark is registered in particular for “informing and consulting consumers on the choice of goods and services, in particular through the use of test and research results and quality assessments”?

2. If the Court of Justice answers the first question in the negative:

  • Is there an unlawful use within the meaning of Article 9 (1) (c) of [Regulation No 207/2009] and of Article 5 (2) of [Directive 2008/95] if:
  • The individual mark is only known as the test mark described in point 1, and
  • the individual mark is used by a third person as a test mark? “

The Court’s decision:

1. Article 9 (1) (a) and (b) of Council Regulation (EC) No 207/2009 and Article 5 (1) of Directive 2008/95 / EC must be interpreted as not authorizing the proprietor of an individual mark consisting of a test mark to opposes the affixing by a third party of a sign identical or similar to that mark on goods which are neither identical nor similar to the goods or services for which the mark in question is registered.

2. Article 9 (1) (c) of Regulation No 207/2009 and Article 5 (2) of Directive 2008/95 are to be interpreted as authorizing the proprietor of a mark consisting of a test mark, an individual mark with reputation to oppose the affixing by a third party of a sign identical with, or similar to, that mark to goods which are neither identical nor similar to those for which the mark in question is registered, provided that it is established that, by affixing this sign to the goods the third party takes unfair advantage of distinctive character or reputation of the same mark or damages the trademark without clear legal grounds for this. 

(Unofficial translation)

Formula E crashed in a case before the European Court of Justice

race-track-flag-2035566_960_720.jpgThe European Court has ruled in case C‑282/18 – The Green Effort Limited v Fédération internationale de l’automobile (FIA). Even though the case is simple, it clearly shows why every trademark owner has to stick to the deadlines given by the EUIPO.

The Case concerns the following:

The Green Effort acquired rights over the word mark Formula E, the application for registration of which was filed on 17 November 2010.

The goods and services in respect of which registration was sought are:

–        Class 25: ‘Clothing’;

–        Class 38: ‘Broadcasting by radio, television and satellite’;

–        Class 41: ‘Organization of sporting events’.

The EU trademark application was published on 3 December 2010 and the trade mark applied for was registered on 14 March 2011.

On 15 March 2016, Fédération internationale de l’automobile (FIA) filed an application for revocation of the contested mark for all the goods and services, pursuant to Article 51(1)(a) of Regulation No 207/2009, now Article 58(1)(a) of Regulation 2017/1001, on the ground that it had not been put to genuine use within a continuous period of five years.

On 21 March 2016, the Cancellation Division of EUIPO invited The Green Effort to submit, by 21 June 2016, proof of genuine use of the contested mark. Since that proof was submitted on 22 June 2016, in disregard of the time limit prescribed, it was not taken into account.

On 27 July 2016, The Green Effort filed an application for restitutio in integrum with the Cancellation Division of EUIPO in order have its rights to submit that proof re-established.

By decision of 8 September 2016, the Cancellation Division rejected the application and revoked the contested mark in its entirety.

On 5 October 2016, the applicant filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Second Board of Appeal of EUIPO (‘the Board of Appeal’) dismissed the appeal.

In support of its decision, the Board of Appeal considered that neither the proprietor of the contested mark nor its representative showed that they had actually taken the utmost care to observe the time limit prescribed for submitting the documents proving genuine use of the contested mark. It took the view that, while there is evidence in the file of repeated attempts to send electronic communications and fax communications from The Green Effort to EUIPO, with respect to Spanish local time all communications were received on 22 June 2016, that is to say after the time limit prescribed had expired, since the explanations provided in that regard could not be regarded as ‘exceptional’.

Therefore, the Board of Appeal upheld the decision of the Cancellation Division to reject the application for restitutio in integrum, and, with regard to the application for revocation of the contested mark, it considered that, in the absence of any proof of genuine use in the European Union during the relevant period or of any indications of proper reasons for non-use, the rights acquired by The Green Effort had to be revoked in their entirety and deemed not to have had any effect as from 15 March 2016.

The Court dismissed the appeal by The Green Effort Limited considering that the EUIPO’s position on the matter is correct. The arguments are:

As set out in Article 4(4) of that decision, without prejudice to accurately establishing the date of notification, notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox.

That interpretation meets the requirements stemming from the principle of legal certainty by preventing a decision of the Board of Appeal from being called into question indefinitely, given that, if no access to the document concerned is requested after it has been placed in the recipient’s inbox, the notification is deemed to have taken place on the fifth calendar day after being so placed.

Therefore, since it is common ground that the representative of The Green Effort requested access to the contested decision on 19 September 2017, that he downloaded it and became aware of it on that same day, the General Court did not err in law in deciding that the time limit for bringing an action against the contested decision expired on 29 November 2017, that decision having been notified on 19 September 2017. Therefore, the ground of appeal alleging that the starting point of the time limit prescribed for bringing an action was wrongly determined must be rejected as unfounded.

Irish whiskey is now protected EU Geographical indication

drink-3108436_960_720.jpgThe European Commission confirmed the Irish whiskey status as a protected European Geographical indication. The scope of protection covers different variations of this whiskey such as malt Irish whiskey, pot still Irish whiskey, grain Irish whiskey, and blended Irish whiskey.

Irish whiskey has been known since the 6th Century. In the 19 Century, its production rose significantly and in the 20 Century, it became worldwide known.

In the future, this whiskey will be produced only on the territory of Irland under strict requirements and approved methods.

This is a strategic step for the Irish Whiskey Association because it gives an opportunity for legal protection against unfair competition and infringements. What’s more, the protection of this Geographical indication will be included in future trade negotiations between The EU and third parties which by itself is crucial for the Association taking into account its global sells.

Breaking News – The EU Council approves DSM Directive

The EU Council has approved the DSM Directive. You can see how every Member State voted below:

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The next step is the transposition of this Directive into the national legislation of every EU Member State, which has to be done within 24 months.

Source: IP Kat.

Converse lost a dispute for a shoe sole in the EU

pexels-photo-1353361.jpegThe General Court of the European Union has ruled in the case T-611/17 All Star (Converse) v EUIPO – Carrefour Hypermarchés. The case concerns the following already registered figurative European trademark for classes 17, 25,35:

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Against this mark, an application for a declaration of invalidity was filed by the French company Carrefour based on Article 52(1)(a) EUTMR and Article 7(1)(b) and (e)(ii) and (iii) EUTMR.

EUIPO invalidated the trademark at hand concluding that it is not possible for consumers to perceive it as a sign for trade origin. According to the Office, the practice of using simple geometric shapes for soles are widespread, as can be seen for many examples:

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Consumers will look on them as something that will help them to walk easily, comfortably or securely but not as a sign for trade origin.

Although the Office made some mistakes when it comes to the scope of goods and services for which this invalidation is applicable (corrected after that), the General Court confirmed this decision in its entirety.

The EUIPO decision is accessible here.

Color or figurative trademarks – that’s the question

paint-2985569_960_720The European court has issued a decision on case C‑578/17 Oy Hartwall Ab v Patentti- ja rekisterihallitus, which focuses on how exactly a color trademark should be presented in a trademark application and how an acquired distinctiveness has to be proved. In detail this case concerns:

In 2012, Hartwall applied for the following color trademark in Finland, described as follows: ‘The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)’ (‘the mark at issue’):

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The goods in respect of which registration was sought are in Class 32 ‘Mineral waters’.

Following a preparatory decision of the Intellectual Property Office, Hartwall clarified that it was applying for registration of the mark at issue as a ‘colour mark’, not a figurative mark.

The Finnish Patent Office rejected the application on the ground that the trade mark applied for was devoid of distinctive character.

In that regard, the Office highlighted that the exclusive right to register certain colours cannot be granted if it is not established that the colours in respect of which protection is sought have acquired distinctive character through long-term significant use.

The decision of the Finnish Patent Office stated that the market study produced by Hartwall showed that the reputation of the mark at issue was established not with regard to the colours as such but with regard to the figurative sign the contours of which are defined and determined. Therefore, contrary to the requirement resulting from that office’s consistent practice, it found that the colour combination in respect of which protection is sought has not been established as having been used to identify the goods offered by Hartwall for a sufficient length of time and sufficiently widely to have acquired distinctive character in Finland through use, as of the date on which registration was sought.

Hartwall appealed against this decision before the Market Court in Finland but the appeal was dismissed.

According to the court, the graphic representation of the sign in respect of which protection was sought did not include a systematic arrangement associating the colours concerned in a predetermined and uniform way and, therefore, that mark did not satisfy the requirements with regard to the graphic representation.

Hartwall appealed against the decision to the Supreme Administrative Court.

The Supreme Administrative Court highlights the importance of the case, in so far as the Intellectual Property Office is of the view that, as regards colour marks, the distinctive character of a sign must be proved by evidence of long-term significant use of the sign.

It is therefore unsure as to the consequences of the classification given to a sign by the person seeking protection of that sign under trademark law.

Because of this Supreme Administrative Court decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  For the interpretation of Article 2 of Directive [2008/95] and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) thereof, is it of relevance whether the trade mark is to be registered as a figurative mark or a colour mark?

(2)  If the classification of the mark as a colour mark or figurative mark is of importance in the assessment of its distinctive character, is the mark, regardless of its representation as a drawing, to be registered as a colour mark in accordance with the trade mark application, or can it be registered only as a figurative mark?

(3) If it is possible to register, as a colour mark, a mark represented in the form of a drawing in the trade mark application, is it necessary for the registration as a colour mark of a mark which has been graphically illustrated in the trade mark application with the accuracy required by the case-law of the Court of Justice relating to colour marks (and which is not the registration as a mark of a colour in itself, abstract, without shape or contours), is it necessary to submit in addition solid evidence of use as required by the [Intellectual Property Office] or any such evidence?’

According to the European court:

In the overall analysis of distinctive character by reference to the actual situation, it is necessary to examine whether and to what extent the systematically arranged colour combination is capable of conferring inherent distinctive character on the sign in question.

Consequently, the answer to the first question is that Articles 2 and 3(1)(b) of Directive 2008/95 must be interpreted as meaning that the classification as a ‘colour mark’ or ‘figurative mark’ given to a sign by the applicant on registration is a relevant factor among others for the purpose of establishing whether that sign can constitute a trade mark within the meaning of Article 2 of the directive and, if so, whether it is distinctive within the meaning of Article 3(1)(b) of that directive, but does not release the competent trade mark authority from its obligation to carry out a global assessment of distinctive character by reference to the actual situation of the mark considered, which means that that authority cannot refuse registration of a sign as a mark on the sole ground that that sign has not acquired distinctive character through use in relation to the goods or services claimed.

In the present case, the sign protection in respect of which is sought is represented by a figurative drawing, whereas the verbal description relates to a protection concerning two colours alone, that is, blue and grey. Moreover, Hartwall has clarified that it seeks to register the mark at issue as a colour mark.

Those circumstances appear to reveal an inconsistency showing that the application for protection under trade mark law is unclear and imprecise.

Consequently, the answer to the second question is that Article 2 of Directive 2008/95 must be interpreted as precluding, in circumstances such as those in the main proceedings, the registration of a sign as a mark due to an inconsistency in the application for registration, which it is for the referring court to ascertain.