Trademark owners can seek compensations even for cancelled marks

judge-1587300_960_720The European Court has ruled in case C‑622/18 AR v Cooper International Spirits LLC, St Dalfour SAS, Établissements Gabriel Boudier SA. The case concerns the following background:

The appellant in the main proceedings markets alcohol and spirits.

On 5 December 2005, he filed an application for registration of the semi-figurative trade mark SAINT GERMAIN with the National Institute of Industrial Property, France.

That mark was registered on 12 May 2006 under No 3 395 502 for goods and services in Classes 30, 32 and 33 corresponding in particular to alcoholic beverages (except beers), ciders, digestives, wines and spirits, as well as alcoholic extracts and essences.

On 8 June 2012, having learnt that Cooper International Spirits was distributing under the name ‘St-Germain’ a liqueur manufactured by St Dalfour and Établissements Gabriel Boudier, the appellant in the main proceedings brought proceedings against those three companies before the Regional Court, Paris, France) for trade mark infringement by reproduction or, in the alternative, by imitation.

In parallel proceedings, by judgment of 28 February 2013, the Regional Court, Nanterre, France revoked the appellant in the main proceedings’ trade mark SAINT GERMAIN with effect from 13 May 2011. That judgment was upheld by judgment of the Court of Appeal, Versailles, France of 11 February 2014, which has become irrevocable.

Before the Regional Court, Paris the appellant in the main proceedings maintained his claims alleging infringement for the period prior to the revocation which was not time-barred, that is to say, from 8 June 2009 to 13 May 2011.

Those claims were dismissed in their entirety by judgment of the Regional Court, Paris of 16 January 2015, on the ground that the trade mark in question had not been used since it had been filed.

That judgment was upheld by judgment of the Court of Appeal, Paris, France) of 13 September 2016.

As grounds for that judgment, the Court of Appeal, Paris found, inter alia, that the evidence relied on by the appellant in the main proceedings was not sufficient to demonstrate that the mark SAINT GERMAIN had actually been used.

The Court of Appeal, Paris concluded that the appellant in the main proceedings could not successfully argue that the trade mark’s function as a guarantee of origin had been adversely affected, or that the monopoly on use conferred by his mark had been adversely affected, or indeed that its investment function had been adversely affected, since the use of a sign identical with the trade mark by a competitor is not such, failing any use of that mark, as to impede its use substantially.

The appellant in the main proceedings brought an appeal in cassation against that judgment, on the ground that the Court of Appeal, Paris had infringed Articles L 713‑3 and L 714‑5 of the Intellectual Property Code.

In support of that appeal, he submits that all his claims alleging infringement were incorrectly dismissed on the ground that he had not demonstrated that the mark SAINT GERMAIN had actually been used, even though neither EU law nor the Intellectual Property Code provides that, during the five-year period following registration of a trade mark, the proprietor of that mark must prove that the mark has been used in order to benefit from trade mark protection. Moreover, as regards infringement, the likelihood of confusion on the part of the public must be assessed in the abstract, in the light of the subject matter of the registration, and not in relation to a specific situation on the market.

Conversely, the respondents in the main proceedings contend that a trade mark performs its essential function only if it is actually used by its proprietor to indicate the commercial origin of the goods or services designated in its registration and that, if the trade mark is not used in accordance with its essential function, the proprietor cannot complain of any adverse effect on that function or a risk of its being adversely affected.

The Court of Cassation, France states, as a preliminary point, that the appeal in cassation before it does not take issue with the fact that the Court of Appeal, Paris examined the infringement not in the light of the reproduction of the mark but of its imitation, which presupposes that there is a likelihood of confusion on the part of the public. It points out that, under national law, the court hearing the case on the merits has sole jurisdiction to assess whether there is such a likelihood of confusion and the Court of Cassation, for its part, has jurisdiction only to assess whether the judgment under appeal correctly applies the law applicable.

It observes that, with regard to infringement by imitation, the Court has held that use of a sign which is identical or similar to the trade mark which gives rise to a likelihood of confusion on the part of the public affects or is liable to affect the essential function of the mark (judgment of 12 June 2008, O2 Holdings and O2 (UK), C‑533/06, EU:C:2008:339, paragraph 59), and that, although a trade mark’s function of indicating origin is not the only function of the mark that is worthy of protection against injury by third parties (judgment of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 39), the protection conferred against infringement by reproduction, in so far as it is absolute and reserved for injury caused not only to the mark’s essential function, but also to other functions, in particular those of communication, investment or advertising, is broader than the protection provided against infringement by imitation, the application of which requires proof of a likelihood of confusion and, accordingly, the possibility that the essential function of the mark may be affected (judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraphs 58 and 59).

The Court of Cassation also stated that the Court has held that a trade mark is always supposed to fulfil its function of indicating origin, whereas it performs its other functions only in so far as its proprietor uses it to that end, in particular for the purposes of advertising or investment (judgment of 22 September 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 40).

It adds that, in the light of that case-law, it would appear that, since the present case turns on whether or not there is infringement by imitation, all that needs to be examined is the alleged adverse effect on the essential function of the mark, resulting from a likelihood of confusion.

In that regard, it points out that, in the judgment of 21 December 2016, Länsförsäkringar (C‑654/15, EU:C:2016:998), the Court held that Article 15(1) and Article 51(1)(a) of Regulation No 207/2009 confer on the proprietor of the trade mark a grace period within which to begin to make genuine use of his or her mark, during which he or she may rely on the exclusive rights which the mark confers, pursuant to Article 9(1) of the regulation, in respect of all the goods and services, without having to demonstrate such use. That means that, during that period, the extent of the right conferred on the proprietor of the trade mark must be assessed by reference to the goods and services covered by the registration of the mark, not on the basis of the use which the proprietor was able to make of that mark during that period.

The Court of Cassation points out, however, that the case in the main proceedings differs from the case that gave rise to the judgment of 21 December 2016, Länsförsäkringar (C‑654/15, EU:C:2016:998), in that, in the present case, the trade mark proprietor’s rights were revoked as a result of the lack of use of that mark during the five-year period following registration of that mark.

The question then arises as to whether the proprietor of a trade mark who has never used it and whose rights in it have been revoked on expiry of the five-year period laid down in the first subparagraph of Article 10(1) of Directive 2008/95 may claim that the essential function of his or her trade mark has been affected and, consequently, seek compensation for injury as a result of the alleged use by a third party of an identical or similar sign during the five-year period following registration of the mark.

In those circumstances, the Court of Cassation decided to stay proceedings and to refer the following question to the Court:

‘Must Article 5(1)(b) and Articles 10 and 12 of Directive [2008/95] be interpreted as meaning that a proprietor who has never [used his or her] trade mark and whose rights in it were revoked on expiry of the period of five years following publication of its registration can obtain compensation for injury caused by infringement, claiming an adverse effect on the essential function of [his or her] trade mark, caused by use by a third party, before the date on which the revocation took effect, of a sign similar to that trade mark to designate goods or services identical or similar to those for which that trade mark was registered?’

The Court’s decision:

Article 5(1)(b), the first subparagraph of Article 10(1) and the first subparagraph of Article 12(1) 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, read in conjunction with recital 6 thereof, must be interpreted as leaving Member States the option of allowing the proprietor of a trade mark whose rights in that mark have been revoked on expiry of the five-year period from its registration because he or she failed to make genuine use of the mark in the Member State concerned in connection with the goods or services for which it was registered to retain the right to claim compensation for the injury sustained as a result of the use by a third party, before the date on which the revocation took effect, of a similar sign in connection with identical or similar goods or services that is liable to be confused with his or her trade mark.

Extended time limits before the EUIPO and EPO because of the COVID-19

face-mask-4890115_1920Taking into account the dissemination of COVID-19 in the EU and its declaration as a pandemic, the European Intellectual Property Office (EUIPO) took a decision to extend all tome limits regarding different trademark and design procedures. According to the announcement:

The Executive Director of the EUIPO has today (16 March) signed a decision extending all time limits expiring between 9 March 2020 and 30 April 2020, that affect all parties before the Office, to 1 May 2020. In practice, this means that time limits are extended until Monday 4 May, given that Friday 1 May is a public holiday.

Similar decision was taken by the EPO too.

 

Amazon failed to register its RING trademark in the EU

doorbell-143467_960_720Amazon lost a dispute in Case T‑270/19 v EUIPO before the General Court of the European Union.  The case concerns an attempt by the US company to register the following EU trademark:

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The mark was applied for:

Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; downloadable software and software applications permitting users to identify and communicate with persons at their door; downloadable software and software applications permitting users to monitor their home, office and other facilities; downloadable applications for monitoring a user’s home, office and other facilities, for use over the internet, mobile devices, wireless internet networks or systems and other computer and electronic communication networks; speakers; wireless local area network enabled speakers; customisable electronic speakers; computer application software for use in controlling and managing speakers, wireless local area network enabled speakers, customisable electronic speakers; luminous signs; electric signs; electronic signs; backlit signs; lighting controllers; lighting control apparatus; electric control devices for lighting fixtures; computer software for sharing videos; computer application software for sharing videos; computer application software for mobile phones and other mobile devices, namely, software for sharing videos’.

The EUIPO rejected the registration of this mark based on absolute grounds. According to the Office, the sign is completely descriptive for the mentioned goods and cannot serve as a source of trade origin.

Amazon appealed argued that the mark applied for was only suggestive or allusive, and not communication particular characteristics of the goods.

The Court dismissed the appeal stating that the mark was completely descriptive for the relevant goods and in that way not able to indicate trade origin. According to the Court  “the verbal element “ring”, which means in particular to “make a clear resonant or vibrating sound”, immediately informed the consumers, without their further thought, that the goods in question, “doorbells, motion sensors, monitoring equipment, namely video monitors and video cameras”, include a system to enable them to produce a clear resonant or vibrating sound.”

The General Court of the EU found similarity between trademarks for wine

wine-1761613_1920The General Court of the European Union has ruled in case Case T‑239/19 Vinos de Arganza v Nordbrand Nordhausen GmbH. It concerns an attempt for registration of the following combined EU trademark for class 33 – wine:

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Against this application, an opposition was filed based on an earlier German trademark BELCANTO for class 33 – Alcoholic beverages.

EUIPO upheld the opposition entirely. According to the Office, the goods for both marks were identical. From a visual point of view, both signs were similar to a low degree. Phonetically they were similar because of their end sounds. Conceptually both trademarks were neutral because they had no meaning for the German-speaking public.

The Court confirmed this decision.

What is interesting here is the fact that although the beginning of the marks has a bigger impact on such comparisons in the case at hand the different letters, in the beginning, weren’t able to overcome the entire possibility for consumer confusion between the signs.

Greta Thunberg wants to protect her names as a trademark

RS254_3-lprIt has become recently known that the famous climate activist Greta Thunberg has filed several trademarks related to her names. All of them are European trademarks for classes 35, 36, 41, 42:

GRETA THUNBERG

FRIDAYS FOR FUTURE

CJ4JX4FZVCC523YA2TMALSKFLHVRG633QEMNLFJQSIXS7QNO55KXPVLSRHROQ5RMYMY2N6ASJTCWS

According to Greta Thunberg, the reason to seek trademark protection was the fact that her names and the hashtags that she uses were subject to unauthorized, falsely and misleading use by others claiming relation with her climate movement, which wasn’t true.

The practice famous people to register their names as trademarks are not new or strange. Quite the contrary, it is understandable because the names of such people can create a kind of value and reputation that deserves to be protected.

The key moment here, however, is to what extent such registrations will be effective. As it is known, 5 years after a trademark registration, every third party can try to cancel it if the mark is not genuinely used for the goods and services mentioned in its application.

Recently the famous graffiti artist Bansky had such problems regarding his trademark.

All of this comes to show that only registration is not enough when it comes to trademark protection. A good entire strategy is necessary in order for one brand name with value and reputation to be effectively protected in the market in the long run.

BIO cannot be registered as an EU trademark

environmental-protection-683437_1280The Board of Appeal of the EUIPO has ruled in case  R1507/2019-2, which concerns an attempt for registration of the following EU trademark for classes 3 and 5:

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EUIPO refused to register the mark based on absolute grounds, Article 7(1)(b) EUTMR, descriptiveness, and lack of distinctiveness for the goods in the aforementioned classes.

The word BIO means ‘biological, organic’  and cannot serve as a source of trade origin.

The Board upheld this decision. The fact that the word BIO is displayed with colors and graphical elements is not enough to overcome the weakness of the sign because alone or in combination these additional elements are not capable to create the necessary distinctiveness.

Source: Alicante news.

MIM is similar to MUMM according to the General Court of the EU

gavel-3577254_1920The General Court of the European Union has ruled in T‑589/18 Vins el Cep, SL v EUIPO. The case concerns an attempt for registration of the following EU trademark in class 33 –  Alcoholic beverages (except beer).

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Against this mark, an opposition was filed based on earlier marks MM, MUMM and the following combined mark, all for class 33:

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The EUIPO upheld the opposition concluding that there is a risk for consumer confusion between the signs. The dominant element in the later mark was MIM, which was similar to MM and MUMM at the beginning and end of the words.

Visually and phonetically the marks at hand were similar too. Conceptually, there was no similarity because the word MUMM meant ‘courage’ in German.

The word part NATURA in the mark applied for, had secondary importance so it wasn’t able to make the difference.

Taking into account the identical goods in class 33, the Office accepted that there is a risk for consumer confusion.

The decision was upheld by the General court.