Is it possible to use a photo from the internet for your fashion collection?

photo-1558277646-319ce84484bdThe Milan Court has ruled in the case 2539/2020, which concerns not authorized use of a photo for commercial purposes.

In the case at hand, the Italian fashion house Antonio Marras used the following photo, downloaded from the internet, for its Fall/Winter 2014-15 fashion collection:

Screenshot 2020-05-19 at 17.05.01

A lawsuit followed in which the photographer claimed copyright infringement. In Italy, there are two main ways for the protection of photos. The first is the classic one based on the copyright law where, however, the work has to be original, created as a result of the author’s intellectual efforts. The second protection refers to ordinary, simple photos of the real-world without creative efforts in place.

According to the fashion house, there was no copyright infringement because the photo was quite simple and not original, produced without any creative efforts.

The court disagreed. Grounded its position on the European Court decision in the case Painer, C-145/10, the Italian court came to a conclusion the photo was original indeed. The arguments for this were the fact that the author chose carefully the time and the subject to take this photo. What’s more, he used technique and an angle which to invoke specific emotions in the viewers.

The court added that another backing argument for the originality of the picture was the fact that it had been registered in the US Copyright Office, which is possible only if the work is original.

Source: IPKat.

Piaggio lost a dispute in the EU over scooter design

vespa-roller-motor-scooter-cult-159192.jpegThe General Court of the European Union has ruled in the case T‑219/18 Piaggio v EUIPO. The dispute concerns the following registered European design for scooters by a Chinese company in 2010:

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The Italian company Piaggio an invalidity procedure in 2014 claiming that this design is very similar to that implemented in its own scooters which are famous amongst the consumers for many years. In addition, some registered designs and trademarks were been invoked too.

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The EUIPO dismissed the application for invalidity concluding that the overall impression created by the later design and that of the earlier one is different.

The decision was appealed.

The General Court upheld the EUIPO’s position on the matter.  According to the court:

First of all, it should be noted, that the applicant has no reason to claim that the fact that process designs have several common elements and, in general, a very similar form, leads to the conclusion that the contested design creates the general impression for “Déjà vu” when compared to earlier industrial designs.

In fact, as the Board of Appeal correctly observed, that while in the contested industrial design, the angular lines were predominant, in the earlier industrial design the lines were rather rounded. The process designs give the opposite impression to the informed consumer, who is given particular vigilance and sensitivity, in particular to the design and aesthetic qualities of the products concerned.

It follows from all of the foregoing that the Board of Appeal did not err in its assessment that the contested and earlier designs gave different general impressions to the informed consumer, concluding that the contested designs were original in the meaning of Article 6 of Regulation No 6/2002 as compared to the earlier one.

As regards the opposing marks, the court considers that:

It follows from all the foregoing that, because, on the one hand, the earlier mark’s overall visual impression is different from that of the contested industrial design and, on the other, the importance that aesthetic qualities have for the choice, the average consumer, who is highly attentive, will not assume that the disputed industrial design uses the earlier mark despite the identity of the products concerned.

(unofficial translation)

Ferrero defended successfully its Tic Tac container again

8000500166697_PHOTOSITE_20191002_055423_0.jpgOne of the biggest foodstuff producers in the world Ferrero successfully defended its 3D trademarks for the famous Tic Tac container.

The case at hand concerns a Czech producer which sells identical products using very similar container but with different brand BLIKI.

According to this producer, Ferroro’s container cannot function as a trademark because it has a technical function and adds substantial value. In addition, the BLIKI brand makes a difference.

The court in Turin disagreed. In regard to the brands, this was irrelevant for the case because the earlier mark was only 3D.

The court considered that the Ferrero’s mark has no technical function. Apart from this, there was no evidence that consumers buy Tic Tac because of the substantial value given by the container.

This case is a good example of the significant role that trademark protection has in every company IP strategy. While design protection can last up to 25 years, trademarks can exist forever in they are maintained properly.

Balsamico and an Italian-German legal conflict

food-3360720_960_720.jpgThe Advocate General of the European Court G. HOGAN has issued his opinion in case C‑432/18 Consorzio Tutela Aceto Balsamico di Modena v BALEMA GmbH. The case concerns the following:

BALEMA GmbH produces vinegar-based products and markets them in the Baden region (Germany). For at least 25 years, it has been selling products under the designations ‘Balsamico’ and ‘Deutscher Balsamico’. The labels on its products bear the legend ‘Theo der Essigbrauer, Holzfassreifung, Deutscher Balsamico traditionell, naturtrüb aus badischen Weinen’ [Theo the vinegar brewer, matured in wooden barrels, German balsamic vinegar, traditional, naturally cloudy, made from Baden wine] or ‘1. Deutsches Essig-Brauhaus, Premium, 1868, Balsamico, Rezeptur No 3’ [first German vinegar brewery, premium, 1868, balsamic, recipe No 3].

It is agreed that BALEMA’s products designated as ‘Balsamico’ are not covered by the registration ‘Aceto Balsamico di Modena (PGI)’ pursuant to Article 1 of and Annex I to Regulation No 583/2009 because they do not fulfill the product specifications contained in Annex II of that regulation.

Consorzio Tutela Aceto Balsamico di Modena (‘the Consorzio’) is a consortium of producers of the products designated by the name ‘Aceto Balsamico di Modena’. It considers that BALEMA’s use of the designation ‘Balsamico’ infringes the protected geographical indication ‘Aceto Balsamico di Modena’. The Consorzio thus served a warning notice on BALEMA. BALEMA, in turn, brought an action in the German courts against the Consorzio seeking a negative declaration to the effect that there had been no trade mark infringement. That action was unsuccessful.

In the appeal on the merits, BALEMA sought a declaration that it is not obliged to refrain from using the designation ‘Balsamico’ for vinegar-based products produced in Germany. The appeal on the merits was upheld as the court considered that the use of the name ‘Balsamico’ in respect of vinegar did not infringe Article 13(1)(b) of Regulation No 1151/2012. According to that court, the protection for the name ‘Aceto Balsamico di Modena’ granted by Regulation No 583/2009 was conferred only on the entire name and not on the non-geographical components of the term as a whole, even if used jointly.

The case was appealed to the referring court.

The referring court considers that the appeal on a point of law will succeed if the names ‘Balsamico’ and ‘Deutscher Balsamico’ used by BALEMA infringe Article 13(1)(a) or (b) of Regulation No 1151/2012. According to that court such a finding would require that the protection of the entire name ‘Aceto Balsamico di Modena’ granted by Article 1 of Regulation No 583/2009 also covers the use of the individual non-geographical components of the term as a whole (‘Aceto’, ‘Balsamico’, ‘Aceto Balsamico’).

The Federal Court of Justice notes that it is clear from the second subparagraph of Article 13(1) of Regulation No 1151/2012 and the case-law of the Court that, pursuant to Article 13(1)(a) or (b) of that regulation, a protected geographical indication that consists of several terms can be protected against not only the use of the entire indication, but also against the use of individual terms of that indication. The second subparagraph of Article 13(1) of Regulation No 1151/2012 governs the specific case in which a protected geographical indication contains within it the name of a product which is considered to be generic. That provision stipulates that the use of that generic name is not to be considered to be contrary to Article 13(1)(a) or (b) of that regulation. The Federal Court of Justice also refers to the fact that the Commission regulation registering the name may restrict the scope of the protection of a protected geographical indication that consists of several terms so that it does not cover the use of individual terms of that indication. In that regard, the fact that an applicant may state that it does not seek protection for all elements of a name shows that the protection granted by its registration can be restricted.

The Federal Court of Justice considers that recitals 3, 5 and 10 of Regulation No 583/2009 militate in favor of a restriction of the scope of protection to the name ‘Aceto Balsamico di Modena’ as a whole, to the exclusion of individual non-geographical components. It also considers that, contrary to the view taken in the appeal on a point of law, the assumption that protection is granted to the name ‘Aceto Balsamico di Modena’ as a whole did not give rise to an inconsistency with the registration of the protected designations of origin ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’. Contrary to Regulation No 583/2009, the references to a restricted scope of protection in Regulation No 813/2000, which may be attributable to the fact that there was no opposition by Member States pursuant to Article 7 of Council Regulation (EEC) No 2081/92 (now Articles 51 and 52 of Regulation No 1151/2012) in the preceding registration procedure, does not preclude a restriction of the protective effect of the name ‘Aceto Balsamico di Modena’ as a whole.

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

‘Does the protection of the entire name “Aceto Balsamico di Modena” extend to the use of the individual non-geographical components of the term as a whole (“Aceto”, “Balsamico”, “Aceto Balsamico”)?’

The Advocate’s position is:

The protection of the entire name ‘Aceto Balsamico di Modena’ under Commission Regulation (EC) No 583/2009 of 3 July 2009 does not extend to the use of the individual common words or non-geographical components, namely, ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.

Trademark exhaustion and cosmetics in Milan

pexels-photo-208052.jpegThe Court of Milan ruled in a case regarding trademark infringement and the principle of trademark exhaustion.

The Italian cosmetic producer Landoll S.r.L accused a retailer of infringement of its registered trademarks NASHI and NASHI ARGAN because the retailer wasn’t authorized to sell the products bearing these marks.

The defending argument of the retailer was that it had been selling these products lawfully because of the concept of trademark exhaustion in the EU according to which:

1. An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent.
2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

The Court of Milan, however, disagreed with that argument applying the Coty judgment of the European Court, stating that there was a trademark infringement because in the case at hand Landoll S.r.L had developed a legitimate selective distribution system of authorised dealers in order to ensure maximum consumer satisfaction as a result of the products use. In that way, the cosmetic company tried to safeguard its trademarks value among the consumers.

Source:K&L Gates – Arthur Artinian, Jennifer P.M. Marsh, Francesco Carloni and Gabriela R. Da Costa, Lexology.

Image: kinkate , Pexels.

Brief IP news

briefs_1131. DesignEuropa Awards 2018 – apply or nominate by May 15. For more information here.

2. The Protection of Fashion Shows in Italy: An Uncharted Stage. For more information here.

3. All rights reserved – advantages of copyright registration. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here

 

A fight with biscuits and cushions in Milano

Eleonora Rosati published an interesting story for IP Kat regarding a lawsuit in Milano, Italy which concerns a fight with biscuits and cushions.

Barilla is the owner of several EU trademarks for Pan di Stelle,Galletti, Abbracci, Rigoli, Mooncake, Crostatina, Batticuori, Ringo, and Gocciole, all used for different types of biscuits and desserts.

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Another Italian company tried to negotiate to use these marks for production of cushions. The deal never happened, nevertheless this company started production of such cushions using similar names such as Pandistelloso, Gallettoso, Rigoloso.

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As a result, Barilla initiated a lawsuit in Milano for trademark infringement and won it.

According to the court, the defendant used similar marks and in that way infringed IPRs belong to Barilla. The defendant’s argument that there was no infringement due to the fact that biscuits and cushions are in different Nice classes was dismissed. The Court stated that Barilla’s trademarks have a well-known status among the consumers, because of which the defendant tried to take unfair advantages of the reputation of the trademarks.

The court ordered the defendant to pay damages for EUR 150,000, as well as covering the costs of litigation.

This case is indicative of the fact that although trademark protection is limited to the Nice classes of goods and services mentioned in the trademark application, that’s not always the case. There are additional facts that have to be taken into account before another trademark use to be initiated.