Tests, well-known trademarks and a European Court decision

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

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

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

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

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

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

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

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

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

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

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

The Court’s decision:

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

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

(Unofficial translation)
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Huawei escaped a ban for selling its phones in Germany

technology-3033809_960_720The Chinese tech company Huawei will continue to sell its smartphones in Germany after reaching an agreement with the patent poll MPEG LA.

The dispute at hand concerns video coding technology used in computers and phones, for which there are patents included in the MPEG LA portfolio.

In 2018, the Court in Düsseldorf ruled in favor of MPEG LA ordering all  Huawei’s smartphones which are sold in Germany to be recalled and destroyed.

To prevent such results, Huawei signed a license agreement with MPEG LA that will allow the company to use the above-mentioned patents as well as to continue their selling in Germany.

Source: WIPR.

BMW won a lawsuit regarding its Mini Cooper brand

red-84593_960_720BMW won a lawsuit in Germany against the Chinese company Ninebot which offer electric scooters.

The case concerns an advertisement spot for the Ninebot’s scooter which includes among other a Mini Cooper car producing by BMW.

According to the German company, this was unfair trade practice because, first of all, Ninebot had no permission to include the Mini Cooper brand in the spot, and secondly, by doing that the company took unfair advantages from the longstanding Mini Cooper’s reputation on the market.

The court went along with BMW, accepting that the Mini Cooper brand was exposed clearly and in a non-descriptive manner in the advertisement.

Source: WIPR.

Breaking news – Images, schools, copyright and a hot European court decision

photo-1489486501123-5c1af10d0be6The European court has issued an important decision in case C‑161/17 Land Nordrhein-Westfalen срещу Dirk Renckhoff, which concerns the following:

Mr Renckhoff, the applicant who brought the proceedings before the Landgericht Hamburg (Hamburg Regional Court, Germany), is a photographer. Stadt Waltrop (City of Waltrop, Germany) which was originally the defendant at first instance, but which is no longer a party to the dispute in the main proceedings, has responsibility for the Gesamtschule Waltrop (Waltrop secondary school, ‘the school’). The Land of Nord Rhine-Westphalia, also a defendant at first instance, has responsibility for the educational supervision of the school and is the employer of the teaching staff working there.

From 25 March 2009, it was possible to access on the school website a presentation written by one of the school’s pupils as part of a language workshop it organised which included, by way of illustration, a photograph taken by Mr Renckhoff (‘the photographer’) that that pupil had downloaded from an online travel portal (‘the online travel portal’). The photograph was posted on the online travel portal without any restrictive measures preventing it from being downloaded. Below the photograph the pupil included a reference to that online portal.

Mr Renckhoff claims that he gave a right of use exclusively to the operators of the online travel portal and that the posting of the photograph on the school website infringes his copyright. He requested the court with jurisdiction at first instance to prohibit the Land of North Rhine-Westphalia, on pain of a financial penalty, from reproducing/having reproduced and/or making available/having made available to the public the photo and, in the alternative, from allowing school students to reproduce the photo for purposes of posting it on the internet. He also claimed payment of damages from the Land of North Rhine-Westphalia of EUR 400.

Since Mr Renckhoff’s action was upheld in part, the Land of North Rhine- Westphalia was ordered to remove the photograph from the school website and to pay EUR 300 plus interest.

Both parties appealed against that judgment before the Oberlandesgericht Hamburg (Higher Regional Court, Hamburg, Germany), which held, inter alia, that the photograph was protected by copyright and that posting it on the school website was an infringement of the reproduction right and the right to make available to the public held by Mr Renckhoff. That court found that the fact that the photograph was already accessible to the public without restriction on the internet before the acts at issue was irrelevant, since the reproduction of the photograph on the server and the making available to the public on the school website which followed led to a ‘disconnection’ with the initial publication on the online travel portal.

Hearing an appeal on point of law, the referring court considers that the outcome of that appeal depends on the interpretation of Article 3(1) of Directive 2001/29. In particular, that court has doubts as to whether the requirement, laid down in the case-law, according to which the communication to the public concerned must have been made to a ‘new’ public has been satisfied.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay proceedings and refer the following question to the Court for a preliminary ruling:

‘Does the inclusion of a work — which is freely accessible to all internet users on a third-party website with the consent of the copyright holder — on a person’s own publicly accessible website constitute a making available of that work to the public within the meaning of Article 3(1) of [Directive 2001/29] if the work is first copied onto a server and is uploaded from there to that person’s own website?’

The Court’s decision:

The concept of ‘communication to the public’, 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, must be interpreted as meaning that it covers the posting on one website of a photograph previously posted, without any restriction preventing it from being downloaded and with the consent of the copyright holder, on another website.

Conclusions: This decision gives clarification on whether if you use a publicly available work from one website to another, this will constitute a copyright infringement. According to the court obviously, this is the case.

Image: Javier Quesada on Unsplash.

Audiobooks, parents, and copyright infringements

audiobook-3106985_960_720The Advocate General of the European Court M. SZPUNAR gave its opinion in case C‑149/17 Bastei Lübbe GmbH & Co. KG versus Michael Strotzer. The case concerns the following:

(not an official translation, by google translate)

As a producer of phonograms, Bastei Lübbe AG, a company incorporated under German law, is the holder of copyright and related rights in the audiobook.

Mr Michael Strotzer is the owner of an internet connection through which, on 8 May 2010, this audio recording was shared for downloading with an unlimited number of users on a peer-to-peer file sharing platform. An expert determines with precision that the IP address belongs to Mr Strotzer.

By letter of 28 October 2010, Bastei Lübbe invited Mr Strotzer to suspend the infringement of copyright. As the latter did not comply with that invitation, Bastei Lübbe brought an action before the Amtsgericht München (Munich Regional Court, Munich) for pecuniary damages against Mr Strotzer as the owner of the IP address in question.

Mr Strotzer, however, denies himself having infringed the copyright and maintains that his Internet connection is sufficiently protected. He further claims that his parents had access to the link in question but who, to the best of his knowledge, did not have the audiobook on their computer, did not know about it and did not use the online software file sharing. At the time of the infringement in question, the computer was disconnected.

The Amtsgericht München (District Court, Munich) dismissed the action for damages brought by Bastei Lübbe on the ground that Mr Strotzer could not be accepted as the perpetrator of the alleged copyright infringement because he indicated that his parents have committed this infringement. Bastei Lübbe appealed to the Landgericht München I (District Court, Munich I, Germany) – the referring court in the present case.

The referring court is inclined to accept that Mr Strotzer is liable as the perpetrator of the alleged infringement of copyright, as it does not follow from his explanations that at the time the infringement was committed the internet connection was used by a third party, which is very likely to be the perpetrator. However, the referring court faces difficulties with regard to the Bundesgerichtshof (Federal Supreme Court) (Germany) case-law, in which it considers that the conviction of the defendant might contradict it.

It is true that, according to the case-law of the Bundesgerichtshof (Federal Supreme Court), as interpreted by the referring court, the applicant is required to set out facts from a legal and factual point of view and has the burden of proving the infringement of copyright. Furthermore, the Bundesgerichtshof takes the view that there is a factual presumption that such an infringement was committed by the internet link holder since no other person was able to use that internet connection at the time of the infringement. However, if the internet connection is not sufficiently protected or deliberately provided for use by other persons at the time of the breach, there is no such factual presumption that the breach has been committed by the link holder.

In such cases, the Bundesgerichtshof (Federal Supreme Court) case-law nevertheless entrusts the holder of the internet connection with a secondary obligation to state the facts in law and in fact. The latter fulfills this secondary obligation when he points out that other persons whose identity may be revealing have separate access to his Internet connection and may therefore have allegedly infringed copyright. However, if a family member had access to the internet connection in question, its holder is not obliged to provide further details on the timing and use of this link in view of the protection of marriage and the family guaranteed by Article 7 of the Charter of Fundamental Rights of the European Union (hereinafter referred to as “the Charter”) and the relevant provisions of German constitutional law.

In those circumstances, the Landgericht München I (District Court, Munich I) decided to stop the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Must Article 8 (1) and (2) in conjunction with Article 3 (1) of Directive 2001/29 be interpreted as meaning that penalties for infringements of the right to make a work available to the public continue to be’ dissuasive “and excluding liability for damage caused by an Internet connection owner through which Fileharing (” file sharing “) has been infringed if the Internet connection owner identifies at least one member of the family, which he had with him access to that Internet connection without, however, communicating more detailed details of the timing and use of the Internet by that member of the family by means of relevant studies?

2. Must Article 3 (2) of Directive 2004/48 be interpreted as meaning that measures for the enforcement of intellectual property rights continue to be ‘effective’ and where the liability for harm caused by an internet connection , which infringes copyright through Filesharing (“File Sharing”) if the Internet connection owner indicated at least one member of the family who, along with him, had access to that Internet connection but did not announced y by means of relevant studies, made more detailed details on the timing and use of the Internet by this family member? “

The Advocate General’s opinion:

‘Article 8 (2) of Directive 2001/29 / EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society and Article 13 (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 not requiring in the domestic law of the Member States the introduction of a presumption of liability of the internet owner for infringements of the copyrights made through this connection. However, if domestic law provides for such a presumption in order to ensure the protection of those rights, that presumption must be applied consistently in order to ensure the effectiveness of the protection. The right to respect for family life recognized in Article 7 of the Charter of Fundamental Rights of the European Union cannot be interpreted in such a way as to deprive copyright holders of any real possibility of protecting their intellectual property rights enshrined in Article 17 (2) of the Charter of Fundamental Rights. “

снимка: sik-life / 95 images, Pixabay

Whisky and a German-Scottish dispute over geographical indications

drink-428319_960_720.jpgThe European court ruled in case C‑44/17 Scotch Whisky Association v Michael Klotz, which concerns the following:

The Scotch Whisky Association is an organisation constituted under Scottish law. Its objectives include protecting the trade in Scottish whisky both in Scotland and abroad.

Mr Klotz markets, via a website, a whisky under the designation ‘Glen Buchenbach’, which is produced by the Waldhorn distillery in Berglen, located in the Buchenbach valley in Swabia (Germany).

The label on the whisky bottles in question includes, in addition to a stylised depiction of a hunting horn (Waldhorn in German), the following information: ‘Waldhornbrennerei’ (Waldhorn distillery), ‘Glen Buchenbach’, ‘Swabian Single Malt Whisky’, ‘500 ml’, ‘40% vol’, ‘Deutsches Erzeugnis’ (German product), ‘Hergestellt in den Berglen’ (produced in the Berglen).

The Scotch Whisky Association brought an action before the Landgericht Hamburg (Regional Court, Hamburg, Germany) seeking an order that Mr Klotz, inter alia, cease to market that whisky, which is not Scotch whisky, under the designation ‘Glen Buchenbach’, on the ground that use of that designation infringes, in particular, Article 16(a) to (c) of Regulation No 110/2008, which protects the geographical indications registered in Annex III to that regulation, which include ‘Scotch Whisky’.

According to the Scotch Whisky Association, those provisions ensure that a geographical indication registered for a spirit drink is protected not only against the use of such an indication but also against any reference that suggests the geographical origin of that indication. It argues that because the designation ‘Glen’ is very widely used in Scotland instead of the word ‘valley’ and, in particular, as an element of the trade mark in the names of Scottish whiskies, it evokes in the relevant public an association with Scotland and Scotch Whisky despite the fact that other information is included on the label, which specifies that the product at issue is of German origin. Mr Klotz contends that the action should be dismissed.

The Landgericht Hamburg (Regional Court, Hamburg) states that whether the claim is to succeed depends on the interpretation to be given to Article 16(a) to (c) of Regulation No 110/2008. It has therefore decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of [Regulation No 110/2008] require that the registered geographical indication be used in identical or phonetically and/or visually similar form, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(2) Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of [Regulation No 110/2008] require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?

If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?

(3) When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of [Regulation No 110/2008], does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’

The Court decision:

1.  Article 16(a) of Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89 must be interpreted as meaning that, for the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. Accordingly, it is not sufficient that that element is liable to evoke in the relevant public some kind of association with the indication concerned or the geographical area relating thereto.

2. Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, the referring court is required to determine whether, when the average European consumer who is reasonably well informed and reasonably observant and circumspect is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected. In making that determination, the referring court, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the protected geographical indication and (ii) any partial incorporation of that indication in that designation, must take account of the conceptual proximity, if any, between the designation and the indication.

Article 16(b) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, account is not to be taken either of the context surrounding the disputed element, or, in particular, of the fact that that element is accompanied by an indication of the true origin of the product concerned.

3. Article 16(c) of Regulation No 110/2008 must be interpreted as meaning that, for the purpose of establishing that there is a ‘false or misleading indication’, as prohibited by that provision, account is not be taken of the context in which the disputed element is used.

Image: jarmoluk / 1443 images, Pixabay.

“BLACK FRIDAY” cannot be a trademark in Germany

Screen-Shot-2015-11-26-at-12.32.55-PMMarques Class 46 reports about an interesting case in Germany which concerns a “BLACK FRIDAY” trademark registered by a Hing Kong company. Being the owner of this mark, the company aggressively started to enforce its rights sending cease-and-disease letters to many trade companies and retailers in the country.

This, in turn, created a serious disturbance among these companies, which had been using “BLACK FRIDAY” for promotion purposes for years.

Because of this, they initiated a cancellation proceeding before the Patent Office, claiming that “BLACK FRIDAY” is widely used and non-distinctive term.

The Patent Office concurred with them, based its conclusion on the various pieces of evidence which clearly show that “BLACK FRIDAY” had been used in Germany before the application date of the mark in promotions and advertisements. The term is perceived by German consumers as an exclusive offer for discount sales.