Paintings, reproductions, authorship, and an EU Court decision

The European Court has ruled in the case C‑628/21 TB v Castorama Polska sp. z o.o., „Knor“ sp. z o.o. The case concerns painting, their reproductions, and proof of authorship among others. It has the following background:

TB is a natural person who, in her online shops, markets decorative articles. As part of her business, she sells reproductions of images A, B and C, which she makes mechanically by herself. Each of those images has simple graphics, consisting of a limited number of colours, geometric figures and short sentences. In that regard, images A, B and C contain, respectively, the following sentences: ‘Mój dom moje zasady’ (‘My house, my rules’); ‘Nie ma ludzi idealnych a jednak jestem’ (‘Perfect people don’t exist, and yet here I am’) and ‘W naszym domu rano słychać tupot małych stopek. Zawsze pachnie pysznym ciastem. Mamy dużo obowiązków, mnóstwo zabawy i miłości’ (‘In our house, the patter of tiny feet can be heard in the morning. It always smells like delicious cake. We have lots of chores, lots of fun and lots of love’). TB claims to be the creator of those images, which, in her view, are ‘works’ for the purposes of the legislation on copyright.

Reproductions of those images are marketed by Castorama Polska and Knor (‘the reproductions at issue in the main proceedings’). Exact copies of images A and B are sold in the online shop and in the bricks-and-mortar shops of Castorama Polska and are provided by Knor. Castorama Polska also sells images provided by Knor, with text identical to that in image C, but displaying certain differences from that image in terms of graphics and font. Neither the reproductions at issue in the main proceedings nor the images themselves, which are the subject of the reproductions, indicate the author or the origin of the product concerned. Furthermore, TB did not consent to those reproductions or to the sale of those reproductions by Castorama Polska and Knor.

On 13 October 2020, TB gave notice to Castorama Polska to cease and desist its infringements of the economic and moral copyright in respect of the ‘works’ created by her.

On 15 December 2020, TB brought an action before the referring court, on the basis of Article 479113 of the Code of Civil Procedure, seeking an order requiring Castorama Polska and Knor to provide information about the reproductions at issue in the main proceedings, in particular with regard to the distribution networks and the quantity of goods received or ordered by them, and a complete list of their suppliers, the date on which those goods were placed on sale in Castorama Polska’s bricks-and-mortar shops and online shop, and the quantity and the proceeds of the sale of those goods, broken down into physical sales and online sales.

TB stated that she held an economic and moral copyright in the images that are the subject of the reproductions at issue in the main proceedings and that that information was necessary for the purpose of bringing an action for infringement of that copyright and, in the alternative, an action for damages for unfair competition.

Castorama Polska contends before the referring court that that request for information should be refused and, in the alternative, that the scope of the judicial decision to be given should be as narrow as possible, arguing that that decision should be strictly limited to ‘works’, for the purposes of the legislation on copyright, and disputing the very possibility that the images that are the subject of the reproductions at issue in the main proceedings might be classified as ‘works’, for the purposes of that legislation. It also seeks protection of business secrets and argues that TB has not proved that she held the economic copyright in those reproductions. In Castorama Polska’s submission, the intellectual works to which TB’s request refers are not original, since TB has failed to prove that the ‘novelty’ condition is satisfied. Granting her request would thus amount to affording copyright protection to ‘ideas’ and ‘concepts’, because the images that are the subject of those reproductions belong to the current fashion for ‘simplified motivational artworks’ with ‘trite sentences’. Castorama Polska maintains, moreover, that all the graphic elements of those images are trite and repetitive and that they do not in any way show originality, as far as concerns their composition, colours and the font used, with regard to other images available on the market.

It is apparent from the request for a preliminary ruling that the evidence adduced by TB consists only, first, of printouts of pages from her website displaying articles for sale in her online shops and of invoices drawn up from 2014 onwards and, secondly, of printouts of pages from Castorama Polska’s website and of invoices relating to the sale of images in the latter’s online shops.

For the purposes of examining TB’s application in the main proceedings, the referring court is uncertain as to the interpretation to be given to Article 8(1) of Directive 2004/48, in particular whether, in proceedings requesting information initiated on the basis of that provision, the fact that the person concerned is the holder of the intellectual property rights relied on in support of his or her application must be fully established by that person, or whether it is sufficient for that person merely to ‘lend credence’ to it.

In those circumstances, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Should Article 8(1) read in conjunction with Article 4(1) of Directive [2004/48] be understood to refer to a measure to protect intellectual property rights only when the rightholder’s intellectual property right has been confirmed in these or other proceedings?

If Question 1 is answered in the negative:

(2) Should Article 8(1) …, read in conjunction with Article 4(1) of Directive [2004/48] be interpreted as meaning that it is sufficient to lend credence to the fact that that measure refers to an existing intellectual property right, and not to prove that circumstance, especially in a case where a request for information about the origin and distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights?’

The Court decision:

Article 8(1) 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, in proceedings concerning an infringement of an intellectual property right under that provision, the applicant must, for the purpose of a request for information under Article 8, provide any reasonably available evidence enabling the court seised of that request to satisfy itself with a sufficient degree of certainty that the applicant is the rightholder, by submitting evidence appropriate to the nature of that right and any special applicable formalities.

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Google Adwords, meta tags and trademark infringements – an EU Court decision

The European Court has ruled in the case C‑104/22 Lännen MCE Oy v Berky GmbH, Senwatec GmbH & Co. KG. This dispute focuses our attention on the issue which jurisdiction is relevant in the case of online infringement of EU trademarks and where the lawsuits should be initiated. The background of the case is as follows:

Lännen, a company established in Finland, manufactures, inter alia, amphibious dredgers which it markets under the EU trade mark WATERMASTER, registered on 12 July 2004 under number 003185758.

On 28 January 2020, that company brought an infringement action before the (Market Court, Finland against Berky and Senwatec, two companies established in Germany and belonging to the same group of undertakings.

Lännen complains that Senwatec committed an act of infringement in Finland, by using paid referencing, in an internet search engine operating under the national top-level domain for that Member State; accordingly, if the term ‘Watermaster’ was searched for, an advertisement for Senwatec’s products was displayed on that search engine’s website. Thus, in August 2016, when the term ‘Watermaster’ was searched for in Finland on the website http://www.google.fi the first result displayed was a Google Adwords advertisement for Senwatec’s products, separated from the other search results by a line and containing the word ‘Ad’.

The national court notes that neither the advertising link obtained by that search nor the associated text contained any elements specifically referring to Finland or the geographical area where the products were to be supplied. However, the referring court states that Senwatec’s website to which that advertising link led contained, inter alia, a text in English indicating that Senwatec’s products are used worldwide and a world map on which the countries in which Senwatec claimed to be active were highlighted in darker colours. Finland did not form part of those countries.

Lännen complains that Berky infringed its trade mark by using, in the period from 2005 to 2019, the natural referencing of images, freely accessible on the photo-sharing website Flickr.com, of Berky’s machines, by means of a meta tag containing the keyword ‘Watermaster’, which was intended to enable internet search engines to identify those images better. Thus, a search in Finland on http://www.google.fi using the term ‘Watermaster’ produced a link to a page showing images of Berky machines.

The referring court points out that the link displayed as a search result was not an advertising link, but an ‘organic’ search result. The captions for the images on the Flickr.com service included the names of the machines in English and, in addition, their model numbers. Berky’s logo also appeared in connection with the images. Each image was accompanied by several meta tags consisting in keywords in English and other languages, in particular the term ‘Watermaster’.

According to Lännen, Berky and Senwatec carried out marketing activities on the internet that were directed at the territory of Finland and were visible to consumers or traders in that Member State. It submits that Senwatec’s and Berky’s products are sold throughout the world. In Lännen’s view, the advertising at issue, which is in English, is addressed to an international public, and is aimed at every country in which it is visible.

In their defence, Berky and Senwatec challenge the jurisdiction of the referring court, on the ground that the alleged acts of infringements were not committed in Finland.

They maintain that their marketing activities were not targeted at Finland, a Member State where they do not offer their products for sale and on whose market they are not present. Neither the search result on http://www.google.fi nor the use of a meta tag using the keyword ‘Watermaster’ would establish that their activities targeted Finland. Thus, in order to establish the jurisdiction of the referring court, the decisive factor is not whether the allegedly illegal content is visible online in Finland, but rather whether that content has a relevant connecting factor with that Member State.

The referring court states that the parties disagree as to whether the map depicted on Senwatec’s website shows that the area of supply of Senwatec’s products is limited to a geographical area from which Finland appears to be excluded. According to Senwatec, the map is evidence that Finland is not part of the market area for the company’s products whereas, according to Lännen, the market for Senwatec’s products is global and extends beyond the areas covered by that map.

The referring court considers, in the context of ascertaining the jurisdiction of a court seised on the basis of the place where the act of infringement was committed, that it is appropriate, in order to determine the territories of the Member States in which the consumers or traders, to whom advertising posted on a website is directed, are situated, to take account, in particular, of the geographical areas where the products concerned are to be supplied.

That court nevertheless considers that other factors might prove relevant for the purposes of such a verification, as is apparent from the Opinion of Advocate General Szpunar in AMS Neve and Others (C‑172/18, EU:C:2019:276), without it being clear what those other factors might be, since the Court has not ruled on that point.

The referring court is uncertain, in particular, whether, in order to determine whether it has jurisdiction under Article 125(5) of Regulation 2017/1001, account may be taken of the Member State under whose national top-level domain the search engine website providing access to the advertisements constituting the alleged acts of infringement is operated.

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

‘Company A is established in Member State X, where it has its registered office, and has used on a website a sign identical to an [EU] trade mark belonging to Company B, in advertising or as a keyword.

(1)  In the situation described above, may it be concluded that the advertising is directed at consumers or traders in Member State Y, where Company B has its registered office, and does an [EU] trade mark court in Member State Y have jurisdiction to hear an action for infringement of an [EU] trade mark under Article 125(5) of [Regulation 2017/1001] where, in the advertising published electronically or on an advertiser’s website connected to that advertising via a link, the geographical area where the goods are to be supplied is not specified, at least not expressly, or no individual Member State is expressly excluded from that area? May the nature of the goods to which the advertising relates and the fact that the market for Company A’s products is allegedly global and thus covers the entire territory of the European Union, including Member State Y, be taken into account in that respect?

(2) May it be concluded that the above advertising is directed at consumers or traders in Member State Y if it appears on a search engine website operated under the national top-level domain of Member State Y?

(3)  If Question 1 or 2 is answered in the affirmative, what other factors, if any, should be taken into account in determining whether the advertisement is directed at consumers or traders in Member State Y?’

The Court’s decision:

Article 125(5) 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 the proprietor of an EU trade mark who considers that he or she has been prejudiced by the use, without his or her consent, by a third party, of a sign identical with that mark in online advertisements and offers for sale in respect of goods identical with, or similar to, those for which that mark is registered, may bring an infringement action against that third party before an EU trade mark court of the Member State in which consumers and traders targeted by those advertisements or offers for sale are located, notwithstanding the fact that the third party does not expressly and unambiguously list that Member State among the territories to which a supply of the goods in question might be made, if that third party has made use of that sign by means of paid referencing on a search engine website which uses a national top-level domain name of that Member State. By contrast, that is not the case simply because the third party concerned has used the natural referencing of images of its goods on an online photo-sharing service under a generic top-level domain, having recourse to meta tags using the trade mark concerned as a keyword.

Broadcasting  background music on planes can be a copyright issue according to the EU Court

The European Court has ruled in joined cases C‑775/21 и C‑826/21, Blue Air Aviation SA v UCMR — ADA Asociaţia pentru Drepturi de Autor a Compozitorilor.

These disputes concern whether broadcasting music in planes and trains can constitute communication to the public from a copyright point of view. The cases have the following background:

Case C‑775/21

The UCMR – ADA is a collective management organisation which handles music copyright.

On 2 March 2018, that body brought an action before the Regional Court, Bucharest, Romania against the air transport company Blue Air, seeking payment of remuneration still due and of penalties for the communication to the public of musical works on board aircraft operated by Blue Air, for which Blue Air had not obtained a licence.

Before that court, Blue Air submitted that it operates 28 aircraft and that, although it has the software necessary for the broadcasting of musical works in 22 of those 28 aircraft, it communicated to the public, after obtaining the required licence, only one musical work as background music, in 14 of those aircraft.

Following those clarifications, the UCMR – ADA expanded its requests for payment, taking the view that the existence of sound systems in approximately 22 aircraft justified the conclusion that protected works had been communicated to the public in all of the aircraft of Blue Air’s fleet.

By judgment of 8 April 2019, the UCMR – ADA’s action was upheld. In essence, the Regional Court, Bucharest held, on the basis of the judgments of 7 December 2006, SGAE (C‑306/05, EU:C:2006:764), and of 15 March 2012, Phonographic Performance (Ireland) (C‑162/10, EU:C:2012:141), that the fact that Blue Air equipped the means of transport operated by it with devices enabling the communication to the public of musical works as background music gave rise to a rebuttable presumption that those works were used; this required it to be held that any aircraft equipped with a sound system uses that device for the communication of the musical work in question to the public, without any further proof being necessary in that regard.

Blue Air appealed against that decision to the Court of Appeal, Bucharest, Romania, which is the referring court, submitting, inter alia, that it had not communicated background music on board the aircraft it operates for which no licence had been obtained, and that the mere existence of physical facilities did not amount to a communication to the public of musical works. It added that, through the broadcasting of background music, it was not pursuing any profit motive. Lastly, it stated that the existence of sound systems in aircraft is dictated by safety reasons, in order to enable communication between members of the air crew and communication between that crew and the passengers.

The referring court states that the question whether, given the absence of a profit-making objective, the communication of a musical work as background music constitutes a communication to the public within the meaning of Article 3 of Directive 2001/29, is not without uncertainty. Furthermore, if that question is answered in the affirmative, the referring court raises the question of the standard of proof required in that regard. It notes that, in accordance with the case-law of certain national courts, where an establishment carrying out a particular economic activity is cited in the methodology referred to in paragraph 23 of the present judgment, there is a rebuttable presumption that works protected by copyright are communicated to the public in that place. Such a presumption would be justified, in particular, by the fact that it is impossible for collective management organisations handling copyright systematically to monitor all the places where acts of use of works of intellectual creation could take place.

In those circumstances the Court of Appeal, Bucharest 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) of Directive 2001/29/EC … be interpreted as meaning that the broadcasting, inside a commercial aircraft occupied by passengers, of a musical work or a fragment of a musical work on take-off, on landing or at any time during a flight, via the aircraft’s public address system, constitutes a communication to the public within the meaning of that provision, particularly (but not exclusively) in the light of the criterion relating to the profit-making objective of the communication?

If the answer to the first question is in the affirmative:

(2) Does the existence on board the aircraft of an address system required by air traffic safety legislation constitute a sufficient basis for making a rebuttable presumption as to the communication to the public of musical works on board that aircraft?

If the answer to that question is in the negative:

(3) Does the presence on board the aircraft of an address system required by air traffic safety legislation and of software which enables the communication of phonograms (containing protected musical works) via that system constitute a sufficient basis for making a rebuttable presumption as to the communication to the public of musical works on board that aircraft?’

Case C‑826/21

The UPFR is a collective management organisation handling the related rights of phonogram producers.

On 2 December 2013, that body brought an action against the CFR, a rail transport company, seeking payment of remuneration still due and of penalties for the communication to the public of musical works on board passenger carriages operated by the CFR. It maintained, in that context, that the applicable railway legislation required some of the trains operated by the CFR to be equipped with sound systems and argued that the presence of such systems amounted to communication to the public of works within the meaning of Article 3(1) of Directive 2001/29.

That action was dismissed by the Regional Court, Bucharest, which held that while the mere installation of a sound system which makes public access to sound recordings technically possible constitutes a communication to the public of musical works, it had not been proved that the trains in service had been equipped with such a system.

The UPFR brought an appeal against that decision before the Curtea de Apel Bucureşti (Court of Appeal, Bucharest), which is the referring court.

The referring court notes that, in national case-law, it is the majority view, inter alia on the basis of the judgment of 7 December 2006, SGAE (C‑306/05, EU:C:2006:764), that the presence of sound systems in a train carriage amounts to a communication to the public of musical works. However, the referring court is uncertain in that regard.

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

‘(1) Does a rail carrier which uses train carriages in which sound systems intended for the communication of information to passengers are installed thereby make a communication to the public within the meaning of Article 3 of Directive 2001/29/EC …?

(2) Does Article 3 of Directive 2001/29/EC … preclude national legislation which establishes a rebuttable presumption of communication to the public on the basis of the existence of sound systems, where those sound systems are required by other provisions of law governing the carrier’s activity?’

The Court’s decision:

  1. 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

must be interpreted as meaning that the broadcasting, in a means of passenger transport, of a musical work as background music constitutes a communication to the public within the meaning of that provision.

  1. Article 3(1) of Directive 2001/29 and Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property

must be interpreted as meaning that the installation, on board a means of transport, of sound equipment, and, where appropriate, of software enabling the broadcasting of background music, does not constitute a communication to the public within the meaning of those provisions.

  1. Article 8(2) of Directive 2006/115

must be interpreted as precluding national legislation, as interpreted by the national courts, which establishes a rebuttable presumption that musical works are communicated to the public because of the presence of sound systems in means of transport.

GDPR and online education – a decision by the European Court

The European Court has ruled in the case C‑34/21 Hauptpersonalrat der Lehrerinnen und Lehrer beim Hessischen Kultusministerium срещу Minister des Hessischen Kultusministeriums, which concerns private data management and authorization. The case has the following background:

As is apparent from the file submitted to the Court, by two measures adopted in 2020, the Minister for Education and Culture of the Land Hessen established the legal and organisational framework for school education during the COVID-19 pandemic. That framework made it possible, inter alia, for pupils who could not be present in a classroom to attend classes live by videoconference. In order to safeguard pupils’ rights in relation to the protection of personal data, it was established that connection to the videoconference service would be authorised only with the consent of the pupils themselves or, for those pupils who were minors, of their parents. However, no provision was made for the consent of the teachers concerned to their participation in that service.

The Principal Staff Committee for Teachers at the Ministry of Education and Culture of the Land Hessen brought an action before the Administrative Court, Wiesbaden, Germany, complaining that the live streaming of classes by videoconference was not made conditional on the consent of the teachers concerned.

The Minister for Education and Culture of the Land Hessen, for his part, contended that the processing of personal data inherent in the live streaming of classes by videoconference was covered by the first sentence of Paragraph 23(1) of the HDSIG, so that it could be conducted without the consent of the teachers concerned being sought.

The Administrative Court, Wiesbaden states in that regard that, in accordance with the intention of the legislature of the Land Hessen, Paragraph 23 of the HDSIG and Paragraph 86 of the HBG fall within the category of ‘more specific rules’ for which Member States may make provision, in accordance with Article 88(1) of the GDPR, to ensure the protection of the rights and freedoms in respect of the processing of employees’ personal data in the employment context. However, that court has doubts as to whether the first sentence of Paragraph 23(1) of the HDSIG and Paragraph 86(4) of the HBG are compatible with the requirements laid down in Article 88(2) of the GDPR.

In the first place, the first sentence of Paragraph 23(1) of the HDSIG and Paragraph 86(4) of the HBG rely on ‘necessity’ as the legal basis for the processing of employees’ data. However, the insertion of the principle of ‘necessity’ into that law does not constitute a rule specifying the requirements contained in Article 88(2) of the GDPR, since the processing of data necessary in the context of an employment relationship is already governed by point (b) of the first subparagraph of Article 6(1) of the GDPR.

In addition, the first sentence of Paragraph 23(1) of the HDSIG applies, beyond the actual contractual relationship, to any processing of employees’ data. It follows from point (f) of the first subparagraph of Article 6(1) of the GDPR that, in the case of personal data processing going beyond processing that is strictly necessary under the employment contract, the fundamental rights and freedoms of the data subject, in the present case the employees and civil servants, must be balanced with the legitimate interest pursued by the controller, in the present case the employer. In so far as the first sentence of Paragraph 23(1) of the HDSIG does not provide for such a balancing exercise, that provision cannot be regarded as a specific sectoral norm after the entry into force of the GDPR.In the second place, the Administrative Court, Wiesbaden considers that the mere reference in Paragraph 23(5) of the HDSIG to the fact that the controller must, inter alia, comply with the principles set out in Article 5 of the GDPR does not meet the requirements of Article 88(2) of that regulation. The latter provision requires suitable and specific legislative provisions to be adopted in order to protect the data subjects’ human dignity, legitimate interests and fundamental rights, with particular regard to the transparency of processing, the transfer of personal data within a group of undertakings, or a group of enterprises engaged in a joint economic activity, and monitoring systems at the work place, and is not merely a rule which must additionally be complied with by those who apply a national provision. Those who apply the provision are not the addressees of Article 88(2) of the GDPR.

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

‘(1) Is Article 88(1) of [the GDPR] to be interpreted as meaning that, in order to be a more specific rule for ensuring the protection of the rights and freedoms in respect of the processing of employees’ personal data in the employment context within the meaning of Article 88(1) of [the GDPR], a provision must meet the requirements imposed on such rules by Article 88(2) of [the GDPR]?

(2) If a national rule clearly does not meet the requirements under Article 88(2) of [the GDPR], can it nevertheless remain applicable?’

The Court’s decision:

  1. Article 88 of Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation)

must be interpreted as meaning that national legislation cannot constitute a ‘more specific rule’, within the meaning of paragraph 1 of that article, where it does not satisfy the conditions laid down in paragraph 2 of that article.

  1. Article 88(1) and (2) of Regulation 2016/679

must be interpreted as meaning that the application of national provisions adopted to ensure the protection of employees’ rights and freedoms in respect of the processing of their personal data in the employment context must be disregarded where those provisions do not comply with the conditions and limits laid down in Article 88(1) and (2), unless those provisions constitute a legal basis referred to in Article 6(3) of that regulation, which complies with the requirements laid down by that regulation.

Louis Vuitton failed to prove the distinctiveness of its figurative mark in the EU

The General Court of the European Union has ruled in the case T‑275/21 Louis Vuitton Malletier v Norbert Wisniewski, which focuses our attention on the proof of secondary distinctiveness.

The dispute concerns the following international figurative mark with a designation of the EU for class 18 – ‘Boxes of leather or imitation leather, trunks, suitcases, traveling sets (leatherware), traveling bags, luggage, garment bags for travel, hat boxes of leather, vanity cases (not fitted), toiletry bags (empty), backpacks, satchels, handbags, beach bags, shopping bags, shoulder-strap bags, carrier bags, shoulder bags, waist bags, purses, attaché cases, briefcases (leatherware), school bags, document holders, clutch bags, wallets, change purses, key cases, card cases (wallets), umbrellas, sunshades:

Against this mark, an application for invalidity was filed based on the assumption of a lack of inherent distinctiveness.

The EUIPO confirmed the invalidation but in the appeal, the decision was remitted to the Fifth Board of Appeal because of some errors. The Board confirmed the invalidation again and this decision was appealed once again.

Now the General Court upheld the EUIPO position finding the lack of distinctiveness of the mark. When it comes to the evidence for acquired distinctive character through use in the EU, submitted by Louis Vuitton, the Court considered them sufficient for some parts of the EU but not for the entire Union. There was not enough evidence for the mark’s awareness in Bulgaria, Estonia, Lithuania, Latvia, Slovakia, and Slovenia, together with Malta

That was a problem for Louis Vuitton because in order to rely on an acquired distinctiveness in the EU the trademark owner has to prove it for the territory of the entire EU, all Member States.

Louis Vuitton claimed that because their mark is popular in many EU countries, including neighboring to the above-mentioned, consumers in all countries are aware of the mark and its reputation. The Court dismissed this approach.

First, the applicant submits that the analysis, in the contested decision, of distinctive character acquired through use of the contested mark is detached from reality, since it ignores the fact that, throughout the European Union, consumers engage in homogeneous behaviour as regards luxury brands, particularly because they travel and use the internet regularly. However, that argument is too general in nature. Given that the burden of proof of the acquisition of distinctive character through use lies with the proprietor of the mark, it is for the proprietor to adduce specific and substantiated evidence for that purpose (see paragraph 20 above).

Secondly, the applicant claims, in essence, that the distinctive character acquired through use of the contested mark in the Member States concerned is corroborated by the geographical and cultural proximity of Latvia and Lithuania to Poland and Sweden, on the one hand, and of Bulgaria, Slovakia and Slovenia to Romania, on the other hand, it being noted that, according to the applicant, the mark had acquired a distinctive character with consumers in Poland, Sweden and Romania.

However, that argument is not at all substantiated. The applicant has not adduced any evidence to show that, due to their geographical and cultural proximity, the relevant Latvian and Lithuanian public had sufficient knowledge of the goods or services on the Polish and Swedish markets, or that the relevant Bulgarian, Slovenian or Slovakian public had such knowledge of the Romanian market, within the meaning of the case-law cited in paragraph 27 above. Nor has the applicant demonstrated, or even alleged, that it had grouped those Member States in the same distribution network or that it had treated them, particularly from the marketing strategy perspective, as if they constituted one and the same market.

Thirdly, nor may the applicant’s argument that the distinctive character acquired through use of the contested mark in Bulgaria, Slovakia and Slovenia is corroborated by the fact that those Member States are ‘in a strategic area for the circulation of counterfeit products in Eastern Europe’ be upheld due to its being too general in nature.

When Google’s reputation matters – an EU Court decision

The General Court of the European Union has ruled in Case T‑ 569/21, Zoubier Harbaoui v Google LLC.

This dispute focuses our attention on a trademark application for GOOGLE CAR, filed by Mr Zoubier Harbaoui for class 12:

‘Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances;
Water vehicles; Cable transport apparatus and installations; Air cushion vehicles; Cars for cable transport installations; Drones; Cable transport installations; Conveying installations [ski lifts]; Conveying installations (Aerial -) for the transportation of people; Cargo carriers for vehicles; Ski lifts; Aerial conveyors; Chairlifts; Vehicles’.

Against this trademark, an opposition was filed by Google Inc. based on an earlier EU trademark Google in classes 9, 35, 38, and 42. In addition, a reputation was claimed under Article 8(5) of Regulation (EU) 2017/1001.

The EUIPO confirmed the opposition finding both signs confusingly similar against the backdrop of the proven reputation of Google’s mark in the EU. The decision was appealed.

The General Court upheld the EUIPO decision. The Court found that the earlier mark’s reputation was well-established in the EU.

That difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary.

Nowadays it is widespread practice for different information technologies to be implemented in vehicles (one small example is Google Auto available in many cars). The target consumers of information technologies and vehicles are one and the same.

The Court found both signs similar. The Car word in the mark applied for is descriptive because of which first element Google has greater importance for the comparison.

Google’s mark has a strong reputation amongst consumers and if it is used by someone else for transport vehicles it is possible for consumers to relate these vehicles to Google as a company.

As correctly noted by EUIPO, the public, when purchasing a vehicle or conveyance sold under the mark applied for, will clearly
recognise the term ‘google’ and assume that the vehicles and conveyances incorporate Google technologies and tools, or that they have been developed by Google or in cooperation with Google.

Regarding the applicant’s argument that the mark WAYMO owned by the intervener and covering ‘cars’ in Class 12 would prevent him from taking unfair advantage of the earlier mark, it must first be stated that that assertion is in no way supported. Second, the mere existence of an additional mark owned by the proprietor of the earlier mark cannot have the effect of reducing or
even eliminating the risk of free-riding to the detriment of the earlier mark, where the relevant public will establish a link between the marks at issue.

Given the similarities between the marks at issue and the link which the relevant public will establish between those marks, the mark applied for carries a risk of benefiting from the attractiveness of the earlier mark, which is part of many aspects of the daily life of consumers.

Aldi won a dispute over alcoholic beverages and its trademark in the EU

The General Court of the European Union has ruled in the case T‑429/21 Aldi Einkauf SE & Co. OHG v Cantina sociale Tollo SCA.

In 2018, Cantina successfully registered an EU trademark for ALDIANO in class 33 – alcoholic beverages (excluding beers).

An invalidation proceeding followed, initiated by the German retail chain Aldi based on two earlier marks for ALDI in classes 33 and 35.

Because these earlier marks had been registered for more than 5 years, as a counter-attack, Cantina requested proof of genuine use.

EUIPO considered the invalidation request only based on one of the earlier marks, that was registered for class 35. The Office concluded that the mark’s use was dully proved by Aldi taking into account that the store sells not only foods but alcoholic beverages too. In addition, the Office found both signs similar enough.

An appeal followed where the Board of Appeal annulled the earlier decision finding the proof of use as insufficient. The earlier Aldi’s mark for class 35 covered only the general term retailing in all product areas, and there was no sufficient evidence that the mark was used for alcoholic beverages t in particular.

It must be noted that, while it is true that the Court of Justice has held that, for the purposes of registration of a trade mark covering services provided in connection with retail trade, it is not necessary to specify in detail the service or services for which that registration is sought, the applicant must, however, be required to specify the goods or types of goods to which those services relate (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte, C‑418/02, EU:C:2005:425, paragraphs 49 and 50).

However, first, the Court has stated that the line of authority derived from that judgment concerned only applications for registration as trademarks and did not concern the protection of trademarks registered at the date of that judgment’s delivery. Since, in the present case, the earlier mark, relied on by the applicant in support of its application for a declaration of invalidity, was registered before the date of delivery of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), it was not, in any event, concerned by the obligation arising from that judgment.

Secondly, it cannot be inferred from the considerations of that judgment that, when a trademark covering retail services, registered after that judgment’s delivery – which is the case with the earlier registration – is relied on in support of a ground for invalidity referred to in Article 60(1)(a) of Regulation 2017/1001, that ground may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier mark may relate.

Lastly, it must be further stated that proof of genuine use of the earlier mark and of the earlier registration is one of the ways to determine the precise goods covered by the retail services for which those goods were registered.

The Board of Appeal therefore erred in finding that it was for the very broad specification of retail trade in all product areas that the applicant had to prove genuine use of the earlier mark. That error affects the contested decision and constitutes a sufficient basis for annulling it as regards the earlier mark for the services in Class 35.