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.

 

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:

Untitled

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.

The European Patent Office is ready to issue Unitary EU patents

european-union-1328255_1280The European Patent Office expressed its readiness to issue the so-called  Unitary EU patents.

The Unitary Patent is a patent granted by the EPO for which unitary effect can be registered with the EPO for the territory of the participating EU Member States.  This patent is crucial for competitiveness, growth, and innovation in Europe.

For the time being, the Unitary Patent is not officially in action because of a lawsuit before the German Supreme Court, which has to decide whether this patent protection is in line with the German constitution.

Another uncertainty is what will happen with the UK after Brexit. The problem arises from the fact that the British government is against any possibilities where the European Court can have jurisdiction over the UK even in the case of the Unitary Patent.

For more information here.

An important decision by the European Court regarding e-books resales

pexels-photo-1329571The European Court has ruled recently in the case C‑263/18 Nederlands Uitgeversverbond, Groep Algemene Uitgevers v Tom Kabinet Internet BV. This case concerns the following:

NUV and GAU, associations whose purpose it is to defend the interests of Netherlands publishers, were mandated by several publishers to ensure that the copyright granted to them by copyright holders by means of exclusive licences is protected and observed.

Tom Kabinet Holding is the sole shareholder of Tom Kabinet Uitgeverij, a publisher of books, e-books and databases, and also of Tom Kabinet. Tom Kabinet operates a website on which, on 24 June 2014, it launched an online service consisting in a virtual market for ‘second-hand’ e-books.

On 1 July 2014, NUV and GAU brought an action under the Law on copyright against Tom Kabinet, Tom Kabinet Holding and Tom Kabinet Uitgeverij before the urgent applications judge at theDistrict Court, Amsterdam, Netherlands in respect of that online service. The District Court, Amsterdam dismissed their application on the ground that, according to that court, there was no prima facie breach of copyright.

NUV and GAU appealed against that decision before the Court of Appeal, Amsterdam, Netherlands, which, by judgment of 20 January 2015, upheld the decision but prohibited Tom Kabinet from offering an online service that allowed the sale of unlawfully downloaded e-books. No appeal on a point of law was lodged against that judgment.

From 8 June 2015 onwards, Tom Kabinet modified the services offered up to that point and replaced them with the ‘Tom Leesclub’ (Tom reading club, ‘the reading club’), within which Tom Kabinet is an e-book trader. In return for payment of a sum of money, the reading club offers its members ‘second-hand’ e-books which have been either purchased by Tom Kabinet or donated to Tom Kabinet free of charge by members of the club. In the latter case, those members must provide the download link in respect of the book in question and declare that they have not kept a copy of the book. Tom Kabinet then uploads the e-book from the retailer’s website and places its own digital watermark on it, which serves as confirmation that it is a legally acquired copy.

Initially, e-books available through the reading club could be purchased for a fixed price of EUR 1.75 per e-book. Once payment had been made, the member could download the e-book from Tom Kabinet’s website and subsequently resell it to Tom Kabinet. Membership of the reading club was subject to payment by members of a monthly subscription of EUR 3.99. Any e-book provided free of charge by a member resulted in that member being entitled to a discount of EUR 0.99 on the following month’s subscription.

Since 18 November 2015, payment of a monthly subscription has ceased to be a requirement of membership of the reading club. On the one hand, the price of every e-book is now set at EUR 2. On the other hand, the members of the reading club also need ‘credits’ in order to be able to acquire an e-book through the reading club; credits can be obtained by providing the club with an e-book, either for consideration or free of charge. Such credits can also be purchased when making an order.

NUV and GAU applied to the District Court, The Hague, Netherlands for an injunction prohibiting Tom Kabinet on pain of a periodic penalty payment, from infringing the copyright of NUV’s and GAU’s affiliates by the making available or the reproduction of e-books. In particular, in their view Tom Kabinet is, in the context of the reading club, making an unauthorised communication of e-books to the public.

In an interim judgment of 12 July 2017, the referring court found that the e-books at issue were to be classified as works, within the meaning of Directive 2001/29, and that Tom Kabinet’s offer, in circumstances such as those at issue in the main proceedings, did not constitute a communication to the public of those works, within the meaning of Article 3(1) of that directive.

The referring court observes, however, that the answers to the questions as to whether the making available remotely by the downloading, for payment, of an e-book for use for an unlimited period may constitute an act of distribution for the purposes of Article 4(1) of Directive 2001/29, and as to whether the right of distribution may thus be exhausted, within the meaning of Article 4(2) of that directive, are unclear. It also wonders whether the copyright holder may, in the event of a resale, object, on the basis of Article 2 of that directive, to the acts of reproduction necessary for the lawful transmission between subsequent purchasers of the copy for which the distribution right is, if such be the case, exhausted. Nor is the answer to be given to that question apparent from the case-law of the Court of Justice, according to the referring court.

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

‘(1)  Is Article 4(1) of [Directive 2001/29] to be interpreted as meaning that “any form of distribution to the public by sale or otherwise of the original of their works or copies thereof” as referred to therein includes the making available remotely by downloading, for use for an unlimited period, of e-books (being digital copies of books protected by copyright) at a price by means of which the copyright holder receives remuneration equivalent to the economic value of the work belonging to him?

(2) If question 1 is to be answered in the affirmative, is the distribution right with regard to the original or copies of a work as referred to in Article 4(2) of [Directive 2001/29] exhausted in the European Union, when the first sale or other transfer of that material, which includes the making available remotely by downloading, for use for an unlimited period, of e-books (being digital copies of books protected by copyright) at a price by means of which the copyright holder receives remuneration equivalent to the economic value of the work belonging to him, takes place in the European Union through the rightholder or with his consent?

(3) Is Article 2 of [Directive 2001/29] to be interpreted as meaning that a transfer between successive acquirers of a lawfully acquired copy in respect of which the distribution right has been exhausted constitutes consent to the acts of reproduction referred to therein, in so far as those acts of reproduction are necessary for the lawful use of that copy and, if so, which conditions apply?

(4) Is Article 5 of [Directive 2001/29] to be interpreted as meaning that the copyright holder may no longer oppose the acts of reproduction necessary for a transfer between successive acquirers of the lawfully acquired copy in respect of which the distribution right has been exhausted and, if so, which conditions apply?’

The Court’s decision:

The supply to the public by downloading, for permanent use, of an e-book is covered by the concept of ‘communication to the public’ and, more specifically, by that of ‘making available to the public of [authors’] works in such a way that members of the public may access them from a place and at a time individually chosen by them’, within the meaning of Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society.

Performers explicit consent – an EU Court decision

ballerina-1873265_1920.jpgThe European Court has ruled in case C‑484/18 Société de perception et de distribution des droits des artistes-interprètes de la musique et de la danse (Spedidam), PG, GF

v Institut national de l’audiovisuel. The dispute concerns the following:

The INA is a publicly owned industrial and commercial body of the French State which is responsible for conserving and promoting the national audiovisual heritage. In that capacity, it keeps, inter alia, the audiovisual archives of audiovisual producers, namely national broadcasting companies, and helps with the exploitation of those archives.

PG and GF are the successors in title of ZV, a musician who died in 1985.

During 2009, PG and GF became aware that INA was marketing, in its online shop, without their authorisation, video recordings and phonograms reproducing ZV’s performances during the years 1959 to 1978. It is apparent from the file before the Court that those video recordings and phonograms had been produced and then broadcast by national broadcasting companies.

On 28 December 2009, PG and GF, on the basis of Article L. 212-3 of the Intellectual Property Code, brought an action against the INA in order to obtain compensation for the alleged infringement of the performer’s rights which they hold.

By judgment of 24 January 2013, the Regional Court, Paris, France upheld that action. That court considered, in particular, that the application of Article 49 as amended did not exempt the INA from the requirement to obtain the performer’s prior authorisation for the use of the fixation of his performances. Thus, the sole purpose of the collective agreements provided for in the latter provision is to determine the remuneration due for new exploitations, provided that an initial exploitation has been authorised by the performers concerned. In the present case, proof of such authorisation has not been adduced by the INA. By judgment of 11 June 2014, the Court of Appeal, Paris, France, before which the INA brought its appeal, essentially upheld the judgment given at first instance.

By judgment of 14 October 2015, the Court of Cassation, France set aside in part the judgment of the Court of Appeal, Paris. The Court of Cassation found that that Court of Appeal had erred in holding that the application of the derogating rules at issue was subject to proof that the performer had authorised the initial exploitation of his performance, thus adding to the law a condition that it did not impose.

17      By judgment of 10 March 2017, the Court of Appeal, Versailles, France, before which the case was brought back, dismissed PG’s and GF’s claims. That court considered, in essence, that Article 49 as amended establishes, for the sole benefit of the INA, a simple presumption of the performer’s prior consent, which can be challenged, and thus does not call into question the performer’s exclusive right. The agreements with the trade union organisations referred to in that article do not confer on them the right to ‘authorise and prohibit’, which is vested in the performer, but have the sole purpose of fixing the performer’s remuneration.

18      PG, GF and Spedidam, which had intervened voluntarily before the Court of Appeal, Versailles, brought an appeal against the latter’s judgment before the referring court. The referring court indicates that it has doubts as to the compatibility of the legal rules set out in Article 49 as amended with Articles 2, 3 and 5 of Directive 2001/29.

19      In those circumstances, the Court of Cassation decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Must Article 2(b), Article 3(2)(a) and Article 5 of Directive [2001/29] be interpreted as not precluding national rules, such as those laid down in Article 49 [as amended] [of the Law on freedom of communication], from establishing, for the benefit of the [INA], the beneficiary of the exploitation rights of national broadcasting companies in the audiovisual archives, derogating provisions under which the terms on which performers’ works can be exploited and the remuneration for that exploitation are governed by agreements concluded between the performers themselves or the employee organisations representing performers and that institute, which must specify, inter alia, the scale of remuneration and the arrangements for payment of that remuneration?’

The Court’s decision:

Article 2(b) and Article 3(2)(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as not precluding national legislation which establishes, as regards the exploitation of audiovisual archives by a body set up for that purpose, a rebuttable presumption that the performer has authorised the fixation and exploitation of his performances, where that performer is involved in the recording of an audiovisual work so that it may be broadcast.

Video games, the right of exhaustion and France

pexels-photo-275033.jpegJulien GOMIS (Nomos) reports about an interesting case from France where the Paris court has ruled that the right of exhaustion set out in Directive 2001/29/EC is applicable to the case of downloadable video games.

As it is known, according to Directive 2001/29/EC:

Distribution right

1. Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.

2. The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent.

The grounds for this decision were that every subscriber of the relevant website has an account through which he pays for and downloads the video game on its own computer. After this act, he can use it without time limitations.

This decision is surprising at least because as a general rule of thumb the right of exhaustion concerns material copies of a work. Of course, there is some development in the interpretation of this rule. However, recently the Advocate General of the CJEU, Maciej Szupunara has stated that the download should be considered as a communication to the public and not as a distribution. Thus, within the meaning of European legislation, digital resale should not be affected by the rule of exhaustion of the distribution right.