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.

More e-services regarding trademarks and designs in Benelux

atomium-3590412_960_720EUIPO reports about some new e-services provided by The Benelux Office for Intellectual Property (BOIP). These services regard the option for online Change of Representative and Transfer of Rights for trademarks and for designs.

The above mentioned digital services will complement already existing such for Change of Name, Change of Address, Change of Name and Address, Renewal Trade Mark, Renewal Design, Opposition, and e-Filing Trade Mark/Design.

All of this is a result of the work carried out by the EUIPO and the national Patent Offices in the EU Member States under the European Cooperation Projects (ECP1).

For more information here.

Russia allows registration of geographical indications

matryoshka-970943_960_720Russia will allow registration of geographical indications after 27.07.2020. Until now this was possible only for the so-called appellations-of-origin which protection, however, has more requirements.

Now another type of geographical indications will be allowed for registration in the country with fewer requirements for protection.

For example, while in the case of appellations-of-origin all row-materials and production have to be done in the relevant geographical area, with the geographical indication it is enough at least one of the production phases to be in the geographical place.

For more information here.

Source: CMS Russia for Lexology.

When food content is important for design protection?

food-2490641_960_720The General Court of the European Union has ruled in case Case T‑352/19, Gamma-A SIA v Zivju pārstrādes uzņēmumu serviss SIA.

It concerns the following European design registered for class Class 9-3: ‘Packaging for foodstuffs’:

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The packaging represents a container with a transparent lid.

Against this design an application for invalidity was filed based on lack of novelty and individual character. The reason for this was the following earlier design for similar packaging:

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Initially the EUIPO dismissed the invalidity request stating that the food contained in the container is part of the deigns protection which makes both design dissimilar.

The Board of Appeal, however annulled this decision considering both design identical.

The General Court upheld this position. The fact that the contents of the packaging in which it is intended to be incorporated are visible does not extend the
protection conferred on the contested design to those contents. The presence of visible foodstuffs inside the products merely provides a better illustration of the purpose of the design, namely as packaging for foodstuffs, as well as one of their components, specifically the transparent lid. The comparison of the overall impressions produced
by the designs must relate solely to the elements actually protected . The protection
conferred by the contested design relates to its appearance in that it is intended to be incorporated into packaging for foodstuffs having certain components with specific characteristics, namely a metal container that has a transparent lid with a
translucent tab. The foodstuffs inside the container must not, therefore, be taken into consideration for the purpose of assessing the ‘overall impression’.

Based on this the registered design was invalidated successfully.

Source: Alicante News

Hermes won a dispute in Japan over its trademark for bags “Kelly”

bag-2888972_960_720The French fashion house HERMES INTERNATIONAL won an opposition against a trademark application in Japan for D.KELLY”  in class 18 – bags and pouches.

Against this application Hermes invoked its earlier trademark for “KELLY” in class 18 too. In addition a trademark with reputation was claimed.

According to the French company there was a clear similarity between both signs which could create confusion among the consumer in the country. The dominant element in the later mark was “KELLY” whereas the “D” letter had no significant implication for the understanding of the mark.

Hermes submitted evidence for the reputation of its mark which had been in use since 1956. The brand was inspired by the Princess Grace Kelly of Monaco. The annual turnover from sales in Japan under this trademark was about 43 million dollars. Apart from this there were many advertising campaigns.

The Patent Office upheld the opposition concluding there both sign are confusingly similar which was supported by the high level of reputation of the earlier mark in Japan.

Source: Masaki MIKAMI.

EUIPO extends time limits again in the light of Covid-19

envato-4966945_1920EUIPO announced its decision to extend time limits regarding different procedures related to European trademark and design protection.

1) In accordance with Article 101(4) EUTMR and Article 58(4) CDIR, all time limits expiring between 1 May 2020 and 17 May 2020 inclusive that affect all parties in proceedings before the Office are extended until 18 May 2020.

(2) In the event parties to proceedings before the Office choose to discharge their procedural obligations before the expiry of the extended time limit, by submitting observations, documents or performing any other procedural act, the relevant time limit will be considered exhausted and the proceedings will continue without awaiting its expiration pursuant to Article 1.

The full text of the decision is available here.

Superman upheld his reputation in the EU

photo-1538051046377-5ad74dc62f95DC Comics won a dispute in the EU regarding its famous Superman trademark. The case concerns an attempt by Magic Box to register the following EU trademark in class 28 – toys and games:

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Against this mark an opposition was filed by DC Comics based on the following earlier trademark in classes 3, 9, 14, 16, 25, 21, 24, 25, 28, 30, 32 и 41:

superman

In addition, a  trademark with reputation under Article 8(5) EUTMR was claimed.

The EUIPO found both sign similar at least in one of their aspects. The Office agreed that Superman trademark was well-known in the EU, but for the goods in class 16 – comics and books and not for film making services in class 41.

According to the EUIPO, it is a common practice different characters from books to be used for merchandising products including for different toys which are very much accepted by the consumers. From that point of view, and taking into account the reputation of the earlier mark, the Office considered that the consumers could find a link between both marks which can give some unfair advantages to the applicant of the later mark.

Because of this the trademark application was rejected.

Source: IPKat.