To love Y is not as to fly

heart-shape-1714807_960_720.jpgThe European Court ruled in case C‑99/18 P, FTI Touristik GmbH v Harald Prantner и Daniel Giersch, which in brief concerns an attempt by both individuals to register the following European trademark:

download.pngIts classes of goods and services are as follow:

– Class 16: “Printed matter; photographs; stationery; wrapping materials; printed publications; books; handbooks [manuals]; pamphlets; newsletters; albums; newspapers; magazines and periodicals; tickets; vouchers; coupons and travel documents; passes; tags and labels; posters; postcards; calendars; diaries; instructional material”;

–  Class 39: “Transport; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation for passengers, goods and trips by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; aircraft chartering; rental and hire of aircraft, cars and boats; taxi services; bus services; chauffeuring; coach services; train services; airport transfer services; airport parking services; aircraft parking services; escorting of travellers; travel agency services; advisory, consultancy and information services relating to all the aforesaid services; providing information regarding transportation services; providing travel information online; travel booking via computer databases or the Internet”;

–  Class 43: “Services for providing food and drink, temporary accommodation; restaurant and bar services; food and drink catering; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotels and/or restaurants; reservations in connection with running hotels.”

Against this application, an opposition was filed by FTI Touristik on the ground of the following early registered European trademark for classes 16, 39, 41, 43:

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EUIPO ruled that there is no significant similarity between the signs at hand, stating that:

“Phonetically, it found, in essence, that for the public that did not know the English term “fly”, the signs at issue bore no similarity. For consumers that did know the English word “fly”, there was a phonetic similarity provided that the mark applied for was associated with the word “fly”. However, this seemed rather unlikely since, first, there was a great difference between the letter “y” and the stylised heart in the mark applied for and, secondly, it was unusual to replace the letter “y” with a heart symbol. Conceptually, it found, that, for the public that did not know the English term “fly”, the signs at issue bore no similarity. For consumers that did know and understand the English word “fly”, there was a conceptual similarity provided that the word “fly” was identified in the mark applied for. However, this seemed unlikely for the same reasons as those set out in the context of the assessment of the phonetic similarity.”

The decision was appealed.

The European court agreed with EUIPO dismissing the appeal. Most consumers will not understand an image of the heart in the later mark as Y letter. Even in case that this is possible the additional element .de in the earlier mark is sufficient to make the necessary distinction between the signs.


Can we do a visual search for trademarks in Croatia?

dubrovnik-512798_960_720.jpgEUIPO reports about the newly available option for trademark search by visual elements for Croatia. This is possible after the Croatian Patent Office gave the necessary access for this purpose to the global trademark database TMView, which can be used for conduction such trademark search.

The other countries that allow this search are: Estonia, Bulgaria, France, Greece, Lithuania, Romania, Spain, UK, Malta, Sweden, Italy, Ireland, Slovakia, and the Czech Republic.

For more information here.

How clicking on the thumb reflect on your privacy?

like-3033202_960_720.jpgThe Advocate General of the European Court has given its opinion on case C‑40/17 Fashion ID GmbH & Co.KG v Verbraucherzentrale NRW e.V., Facebook Ireland Limited, Landesbeauftragte für Datenschutz und Informationsfreiheit Nordrhein-Westfalen.

The case concerns the following thumb case:

Fashion ID (‘the Defendant’)’ is an online retailer. It sells fashion items on its website. The Defendant embedded the ‘Like’ plug-in supplied by Facebook Ireland Limited (‘Facebook Ireland’)(4) in its website. As a result the so-called Facebook ‘Like’ button appears on the Defendant’s website.

The order for reference further explains how the (non-visible) part of the plug-in functions: when a visitor lands on the Defendant’s website on which the Facebook ‘Like’ button is placed, his browser automatically sends information concerning his IP address and browser string to Facebook Ireland. The transmission of this information occurs without it being necessary to actually click on the Facebook ‘Like’ button. It also seems to follow from the order for reference that when the Defendant’s website is visited, Facebook Ireland places different kinds of cookies (session, datr and fr cookies) on the user’s device.

Verbraucherzentrale NRW (‘the Applicant’), a consumer protection association, brought judicial proceedings against the Defendant before a Landgericht (District Court, Germany). The Applicant sought an order to force the Defendant to cease integrating the social plug-in ‘Like’ from Facebook on the grounds that the Defendant allegedly did not:

–   ‘expressly and clearly explain the purpose of the collection and use of the data transmitted in that way to users of the internet page before the provider of the plug-in begins to access the user’s IP address and browser string, and/or

–  obtain the consent of users of the internet page to access to their IP address and browser string by the plug-in provider and to the data usage, in each case prior to the access occurring, and/or

–   inform users who have given their consent within the meaning of second head of claim that this can be revoked at any time with effect for the future, and/or

–   inform that “If you are a user of a social network and do not wish that social network to collect data about you via our website and link these to your user data saved on the social network, you must log out of the social network before visiting our website”.’

The Applicant claimed that Facebook Inc. or Facebook Ireland saves the IP address and browser string and links them to a specific user (member or non-member). The Defendant’s argument in response is a lack of knowledge in this respect. Facebook Ireland argues that the IP address is converted to a generic IP address and is saved only in this form and that there is no allocation of the IP address and browser string to user accounts.

The Landgericht (District Court) ruled against the Defendant on the first three pleas. The Defendant appealed. A cross-appeal was lodged by the Applicant in respect of the fourth plea.

It is within that factual and legal context that the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to refer the following questions to the Court:

‘(1)  Do the rules in Articles 22, 23 and 24 of Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995 L 281, p. 31) preclude national legislation which, in addition to the powers of intervention conferred on the data-protection authorities and the remedies available to the data subject, grants public-service associations the power to take action against the infringer in the event of an infringement in order to safeguard the interests of consumers?

If Question 1 is answered in the negative:

(2)  In a case such as the present one, in which someone has embedded a programming code in his website which causes the user’s browser to request content from a third party and, to this end, transmits personal data to the third party, is the person embedding the content the “controller” within the meaning of Article 2(d) of [Directive 95/46] if that person is himself unable to influence this data- processing operation?

(3)  If Question 2 is answered in the negative: Is Article 2(d) of [Directive 95/46] to be interpreted as meaning that it definitively regulates liability and responsibility in such a way that it precludes civil claims against a third party who, although not a “controller”, nonetheless creates the cause for the processing operation, without influencing it?

(4) Whose “legitimate interests”, in a situation such as the present one, are the decisive ones in the balancing of interests to be undertaken pursuant to Article 7(f) of [Directive 95/46]? Is it the interests in embedding third-party content or the interests of the third party?

(5)  To whom must the consent to be declared under Articles 7(a) and 2(h) of [Directive 95/46] be made in a situation such as that in the present case?

(6)      Does the duty to inform under Article 10 of [Directive 95/46] also apply in a situation such as that in the present case to the operator of the website who has embedded the content of a third party and thus creates the cause for the processing of personal data by the third party?

The Advocate’s opinion:

–  Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data does not preclude national legislation which grants public-service associations standing to commence legal proceedings against the alleged infringer of data protection legislation in order to safeguard the interests of consumers.

–  A person that has embedded a third-party plug-in in its website, which causes the collection and transmission of the user’s personal data (that third party having provided the plug-in), shall be considered to be a controller within the meaning of Article 2(d) of Directive 95/46. However, that controller’s (joint) responsibility is limited to those operations for which it effectively co-decides on the means and purposes of the processing of the personal data.

–   For the purpose of the assessment of the possibility to process personal data under the conditions set out in Article 7(f) of Directive 95/46, the legitimate interests of both joint controllers at issue have to be taken into account and balanced against the rights of the data subjects.

–  The consent of the data subject obtained under Article 7(a) of Directive 95/46 has to be given to a website operator which has embedded the content of a third party. Article 10 of Directive 95/46 shall be interpreted as meaning that the obligation to inform under that provision also applies to that website operator. The consent of the data subject under Article 7(a) of Directive 95/46 has to be given, and information within the meaning of Article 10 of the same directive provided before the data are collected and transferred. However, the extent of those obligations shall correspond with that operator’s joint responsibility for the collection and transmission of the personal data.

The 2 millionth EU trademark application has been reached

flag-2608475_960_720.jpgEUIPO announced the 2 millionth EUTM application which was filed by the Czech company Crefoport s.r.o.

Only in 2018, there were more than 150 000 new applications for EU trademarks. All of that shows the dynamic interest toward these trademarks from around the world. What’s more, every new applicant has to be more careful when filing new EU trademarks taking into account the possible conflicts with already registered signs. One of the option to avoid this negative perspective is conduction preliminary trademark search followed by an in-depth analysis.

You can search trademarks by images in Ireland and Slovakia

office-3295561_960_720.jpgEUIPO announced the new improved capabilities of TMView trademark databases, which now give options for image search of trademarks in Ireland and Slovakia. In that way, the number of countries, that allow such access to their local databases for implementation of such searches, become 13.

The option for visual search is a relatively new one but on the other hand quite useful because it gives more ground for better assessment in the case of trademark prior searches.

For more information here.

Companies rely on IPRs are more prone to growth according to a new study

computer-767776_960_720EPO and EUIPO published a very interesting study called “High-growth firms
and intellectual property rights”.

This study tries to make a connection between the protection of intellectual property assets and the likelihood of a company’s growth.

According to the study:

SMEs that have filed at least one IPR are 21% more likely to experience a subsequent
growth period, and 10% more likely to become an HGF. The likelihood of experiencing a high growth period is 9% higher for SMEs that have filed at least one patent and 13% higher for those that have filed at least one trademark.

The likelihood of experiencing a high growth period is 17% higher for SMEs that have filed at least one European IPR. Filing a European IPR, therefore, provides a positive indicator of an SME’s readiness to scale up business to European level.

In high-tech industries, the likelihood of high growth is 110% higher for SMEs that have filed one or more European patents. Interestingly, the predictive power of European patents is particularly high in low-tech industries (+172%), where a patent filing can be a relatively rare event.

IP bundles involving trade marks systematically outperform other bundles and single IPR categories, thus suggesting that trademarks are the basic building block of effective IP bundles. This is likely due to the fact that a trademark registration is related to market entry and thus turnover growth.

The full text of the study can be found here.

Be aware if someone tries to register your brand as a .eu domain

computer-3368242_960_720.jpgThe European Intellectual Property Office (EUIPO) and the .eu and .ею domain registry manager EURid announced the launch of a new service which will help the fight against bad faith domain registrations.

Some people have taken advantage of early publication of EUTM applications and registered the EUTM as a .eu domain name in bad faith. Effectively reducing the risk of such cyber-squatting infringements requires adopting preventive actions such as raising awareness and pro-actively informing the EUTM holders.
As of 18 May, holders and applicants of a EUTM can opt-in to receive alerts as soon as a .eu domain name is registered that is identical to their EUTM (application). By receiving such alert, EUTM holders are informed much faster and may take appropriate action much sooner.

For more information here.