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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What was the result of the dispute between Furla and Furna in Japan?

Masaki Mikami reports about another interesting trademark dispute in Japan which concerns an application for the following trademark in class 25 – clothes and related goods:

Against this application, an opposition was filed by the Italian fashion company FURLA S.P.A. on the ground of an earlier mark for FURLA in class 25.

The company claimed that the difference between L and N was not enough to overcome the similarity and the possible consumer confusion, especially in light of the established reputation of the Furla brand amongst Japanese consumers and the identity of the goods.

The Japan Patent Office, however, disagreed finding both marks as not similar. Visually the difference between the L and N letters and the stylization of the later mark was enough to overcome confusion. Phonetically these two letters created different impressions. Conceptually the mark applied for had no meaning while the earlier one was related to Furla’s brand and its founder Aldo Furlanetto.

While accepting Furla’s reputation as proven, the Office dismissed the opposition based on the lack of similarity between the signs.

Strangely enough but the word FURNA has meaning in some languages such as Bulgarian for example, where it means oven 🙂

Burberry failed to register its famous pattern as an EU trademark for digital goods

Theoretically, patterns can be registered as trademarks which is really important for some industries such as fashion. However, not every pattern meets the trademark law requirement for distinctive character and this can be a huge challenge for every applicant.

Is this the same for the so-called digital goods and services that have become popular in recent years?

Absolutely yes, what’s more, it could be even more challenging because the Patent Offices’ practice is still not so developed for these new digital goods.

One case in that regard is an attempt by Burberry Limited to register as an EU trademark its famous pattern for different digital goods and services in classes 9, 35, and 41:

The EUIPO partially refused this trademark based on absolute grounds – lack of distinctiveness. According to the Office:

In the present case, the figurative mark applied for shows a combination of elements that form a check pattern design. The horizontal and vertical lines of red, white and black colour are placed in a base of beige colour. The Office notes that case-law,
which was developed in relation to three-dimensional trade marks consisting of the appearance of the product itself, also applies where the contested mark is a figurative mark consisting of the two-dimensional representation of that product. In such a case, the mark likewise does not consist of a sign unrelated to the appearance of the products it covers (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 24 and case-law cited). In general, a mark consisting of a decorative pattern that is simple and commonplace is considered devoid of any element that could attract the consumers’ attention, and insufficient to indicate the source or origin of goods or services.

Having regard to the goods in question, which include downloadable and virtual versions of real life clothing, footwear and decoration related goods, the Office notes that the figurative mark is presented in the form of a pattern intended either to be
placed on part of the goods or to cover the whole of their surface area and thus corresponds to the outward appearance of the goods. Therefore, the assessment of the distinctive character of the contested mark shall be based on the principles applicable to three-dimensional marks (21/04/2015, T-359/12, Device of a checked pattern (maroon & beige), EU:T:2015:215, § 28-31 and the case-law cited). The Office states that a combination of elements forming a check pattern is obvious and typical for the goods and not essentially different from other check patterns commonly found in the trade. The Office notes that the consumer’s perceptions for real-world goods can be applied to equivalent virtual goods as a key aspect of virtual goods is to emulate core concepts of real-world goods.

The Office showed examples of products using a similar pattern and from that point of view, the conclusion was that consumers will not perceive the pattern as a source of trade origin.

The mark was allowed only for the following:

• Class 9 Downloadable interactive characters, avatars and skins; Video games and downloadable video game software.
• Class 41 Providing online information about digital games; Providing online video games; Provision of online information in the field of computer games entertainment; Entertainment services, namely, providing online electronic games, providing a website with non-downloadable computer games and video games.

This decision was upheld by the Board of Appeal. Interestingly, the applicant already owns the same pattern as an EU trademark but for physical goods. That shows some inconsistency in the practice regarding distinctiveness in the case of digital and physical goods but on the other hand, shows the necessity of proving secondary distinctive character for the digital world too.

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.

2. 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.

3. 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.

2. 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.

Super Simon won a multimedia trademark dispute in the EU

Registration of multimedia trademarks can be a challenge taking into account that they are relatively new forms of marks as well as the lack of sufficient practice in this area.

One interesting case, reported by Anna Maria Stein for IPKat focuses our attention on the following multimedia EU trademark application in the form of 22 sec. video for the Super Simon charter, filed by the Dutch company Chiever B.V., covering goods and services from classes 16, 33, and 41:

The EUIPO refused registration based on art. 7 (1)(b) of the EUTMR- lack of distinctiveness. According to the Office:

The mark applied for would be perceived, by the average consumer in the EU, as a gripping animation or drawing video, but not as a sign of origin which will distinguish the undertaking covered by the mark applied for from other undertakings.

The complexity of the representation of the individual elements (which are not summarised at the end of the story, as usual in TV spots, and show a clear commercial origin), plus the fact that the public is accustomed to a different ‘format’ TV spot, means that the relevant consumer in the trademark will not see more than a joy narrative. In other words, the remembrance of the story cannot replace the need for a link to an indication of origin.

The decision was appealed and the Board of Appeal overturned it entirely. According to the Board, it is sufficient for only one of the elements in the multimedia mark to be distinctive in order for the mark to be accepted as a whole. In the case, at hand, the main superhero character is distinctive per se.

With the evolution of technology, it cannot be excluded that multimedia brands are also effectively placed on goods. Moreover, digital packaging is already a reality.

First of all, it is not necessary for the trademark to provide precise information on the identity of the manufacturer of the product or of the service provider. It is sufficient that the trademark enables the relevant public to distinguish the goods or services designated by it from those having a different commercial origin (21/01/2011, T 310/08, executive edition, EU:T:2011:16, § 22) and to conclude that all the goods or services which it designates have been manufactured, marketed or supplied under the control of the proprietor of that mark, to whom responsibility for quality can be attributed (10/10/2008, T 387/06, Representation of a pallet, not published, § 27).

Thus, by requiring that the multimedia mark applied must make clear who the producer or supplier is, the examiner has imposed a requirement that is not in line with the case law.

It is not intended that a trademark should refer to goods and services. That is exactly what a trademark should not do. From the moment a trademark refers directly and exclusively to certain goods and services, the network becomes descriptive or non-distinctive.