Aldi lost a trademark dispute before the General Court of the EU

The General Court of the European Union has ruled in case  T-527/20 Aldi v EUIPO.

Registration of European trademarks can be challenging sometimes. This is due not only because trademark protection in the EU has two levels – national and community but because there are linguistic and cultural differences between the Member States.

One example about such situation is an attempt by Aldi to register the following EU figurative trademark in classes 29 and 30:

The EUIPO refused to register this sign on absolute grounds – descriptiveness, Art. 7(1)(c) of Regulation (EU) 2017/1001.

The practice for protection of EU trademarks states that when one sign is descriptive for consumers even from one part of the Union, the sign will be refused.

In the case at hand, CUCINA means kitchen for the Italian speaking people. The fact that the same mark is registered and well-known in Germany cannot overcome this conclusion.

According to Aldi, the word is not descriptive because it indicates only the place where food dished are prepared. What’s more the mark consists of combination with graphics which is enough to create the necessary distinctiveness.

The EUIPO disagreed. The graphic representation was not distinctive too because the image looks like a cooking pot. A combination between two not distinctive or descriptive elements cannot turn the sign to be distinctive as a whole.

The decision was upheld by the General Court.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

One photographer, one video and copyright problems regarding embedded content from Instagram

The well-known photographer Paul Nicklen won a copyright lawsuit in the US.

The case at hand concerns a dramatic video clip of starving polar bears created by the photographer and uploaded on Facebook and Instagram in 2017.

Without any permission from Paul Nicklen or National Geographic, Sinclair Broadcasting Group embedded this video through a link from Instagram. What’s more they take a screenshot from the video for its cover image.

A lawsuit followed. According to the Sinclair Broadcasting Group there was no infringement because they didn’t used or displayed the video on they website. They just used an embedded link from Instagram, that is to say the video was stored on another server.

According to the law in the US, most precisely the so-called “server rule” online displays or performances of copyrighted content accomplished through “in-line” or “framing” hyperlinks do not trigger the exclusive rights of public display or performance unless the linker also possesses a copy of the underlying work.

The court in New York disagreed with these arguments. The court stressed that the law is technology-neutral and is “concerned not with how a work is shown, but that a work is shown.”

The main problem from that point of view was the fact that although the video was embedded, the screenshot was taken separately and uploaded on the Sinclair Broadcasting Group website, which allowed their visitors to see one part of the video without playing it based on the link to Instagram. This constitutes a copyright infringement because displaying even a part of one work can be done based on permission from the copyright holders.

Other social media such as YouTube and Vimeo have already included an option where creators can choose whether or not their uploaded content to be embedded. For the time being, Facebook and Instagram haven’t done that which can trigger new lawsuits for copyright infringements in the future.

Source: PetaPixel.

Geographical indications can cover not only names but product appearance too – an EU Court decision

The European Court has ruled in case C‑490/19 Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS. This case focuses on the issue to what extent protection of geographical indications covers their names as well as the product appearance too. The case has the following bachground:

In accordance with the decree of 22 December 2000, Société Fromagère du Livradois, which had produced Morbier cheese since 1979, was authorised to use the name ‘Morbier’, without the AOC indication, until 11 July 2007. After that date, it substituted for that name the name ‘Montboissié du Haut Livradois’. Moreover, on 5 October 2001, Société Fromagère du Livradois filed an application in the United States for the US trade mark ‘Morbier du Haut Livradois’, which it renewed in 2008 for 10 years, and, on 5 November 2004, it filed an application for the French trade mark ‘Montboissier’.

On 22 August 2013, accusing Société Fromagère du Livradois of infringing the protected designation and committing acts of unfair and parasitic competition by producing and marketing a cheese that has the visual appearance of the product covered by the PDO ‘Morbier’, in order to create confusion with that product and to benefit from the renown of the image associated with it, without having to comply with the specification of the designation of origin, the Syndicat brought proceedings before the Regional Court, Paris, France requesting that Société Fromagère du Livradois be ordered to cease any direct or indirect commercial use of the name of the PDO ‘Morbier’ for products not covered by that name, any misuse, imitation or evocation of the PDO ‘Morbier’, any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product by any means liable to convey a false impression as to the origin of the product, any other practice liable to mislead the consumer as to the true origin of the product and, in particular, any use of a black line separating two parts of the cheese, and to compensate it for the damage suffered.

Those applications were dismissed by judgment of 14 April 2016, which was upheld by the Court of Appeal, Paris, France by judgment of 16 June 2017. The Court of Appeal, Paris held that the marketing of a cheese which has one or more features contained in the specification for Morbier cheese, and which therefore resembles that cheese, did not constitute misconduct.

In that judgment, after stating that PDO legislation aims to protect not the appearance or features of a product as described in its specification, but its name, and therefore does not prohibit a product being made using the same techniques as those set out in the standards applicable to the geographical indication, and after taking the view that, in the absence of an exclusive right, reproducing the appearance of a product falls within the scope of the freedom of trade and industry, the Court of Appeal, Paris held that the features relied on by the Syndicat, in particular the blue horizontal line, relate to a historical tradition, an ancestral technique present in other cheeses, which were implemented by Société Fromagère du Livradois even before the PDO ‘Morbier’ was obtained, and which are not built on the investments made by the Syndicat or its members. That court held that, although the right to use vegetable carbon is conferred only on cheese with the PDO ‘Morbier’, in order to comply with United States legislation, Société Fromagère du Livradois had to replace it with grape polyphenol, and therefore the two cheeses cannot be likened as a result of that feature. Noting that Société Fromagère du Livradois had claimed other differences between the Montboissié and the Morbier cheeses relating, inter alia, to the use of pasteurised milk in the former and raw milk in the latter, the court concluded that the two cheeses were distinct and that the Syndicat was seeking to extend the protection of the PDO ‘Morbier’ for commercial interests, which was unlawful and contrary to the principle of free competition.

The Syndicat appealed on a point of law against the judgment of the Court of Appeal, Paris before the referring court, the Court of Cassation, France. In support of its appeal, it submits, first, that a designation of origin is protected against any practice liable to mislead the consumer as to the true origin of the product and that in holding, however, that only the use of the name of the PDO is prohibited, the Court of Appeal, Paris infringed Article 13 of Regulation No 510/2006 and the same article of Regulation No 1151/2012. The Syndicat submits, next, that by merely stating, first, that the features that it relied on related to a historical tradition and were not dependent on the investments made by the Syndicat and its members and, secondly, that the ‘Montboissié’ cheese marketed since 2007 by Société Fromagère du Livradois was different from ‘Morbier’ cheese, without investigating, as requested, whether Société Fromagère du Livradois’ practices, in particular copying the ‘cinder line’ feature of Morbier cheese, were liable to mislead the consumer as to the true origin of the product, the court of appeal’s decision had no legal basis in the light of that legislation.

For its part, the Société Fromagère du Livradois maintains that the PDO protects products from a defined region, which alone can claim the protected designation, but does not prohibit other producers from producing and marketing similar products, provided they do not give the impression that they are covered by the designation in question. It is to be inferred from national law that any use of the sign constituting the PDO to designate similar products which are not entitled to that designation, either because they do not come from the defined area or because they come from it without having the required properties, is prohibited, but that it is not prohibited to market similar products, provided that such marketing is not accompanied by any practice liable to cause confusion, in particular by the misuse or the evocation of that PDO. It also argues that a ‘practice liable to mislead the consumer as to the true origin of the product’, within the meaning of Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012, must necessarily focus on the ‘origin’ of the product. It must therefore be a practice which causes the consumer to think that the product he or she is encountering is the PDO product in question. It considers that that ‘practice’ cannot result merely from the appearance of the product in itself, without any indication on its packaging referring to the protected origin.

The referring court states that the appeal before it raises the novel question of whether Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012 must be interpreted as prohibiting only the use by a third party of the registered name or whether it must be interpreted as also prohibiting any presentation of the product which is liable to mislead the consumer as to its true origin, even if the registered name has not been used by the third party. Noting in particular that the Court has never ruled on that question, it considers that there is doubt as to the interpretation of the expression ‘other practice’ in those articles, which constitutes a particular form of infringement of a protected designation if it is liable to mislead the consumer as to the true origin of the product.

The question therefore arises, according to the referring court, as to whether the reproduction of physical characteristics of a product protected by a PDO may constitute a practice that is liable to mislead the consumer as to the true origin of the product, as prohibited by Article 13(1) of the regulations cited above. That question amounts to determining whether the presentation of a product that is protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, is capable of constituting an infringement of that designation, despite the fact that the name has not been reproduced.

In those circumstances, the Court of Cassation decided to stay proceedings and to refer the following question to the Court:

‘Must Article 13(1) of Regulation No 510/2006 … and Article 13(1) of Regulation No 1151/2012 … be interpreted as prohibiting solely the use by a third party of the registered name, or must they be interpreted as prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, which is liable to mislead the consumer as to the true origin of the product, even if the registered name is not used?’

The Court’s decision:

Article 13(1) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and Article 13(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs must be interpreted as meaning that they do not prohibit solely the use by a third party of a registered name.

Article 13(1)(d) of Regulation No 510/2006 and Article 13(1)(d) of Regulation No 1151/2012 must be interpreted as prohibiting the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name. It is necessary to assess whether such reproduction may mislead the European consumer, who is normally informed and reasonably observant and circumspect, taking into account all relevant factors in the case.

The taste of food is not copyrightable according to the EU Court

The European Court has ruled in the case C‑310/17 Levola Hengelo BV v Smilde Foods BV. This case concerns the issue whether the taste of food is copyrightable under the EU law. The case has the following background:

‘Heksenkaas’ or ‘Heks’nkaas’(‘Heksenkaas’) is a spreadable dip containing cream cheese and fresh herbs, which was created by a Dutch retailer of vegetables and fresh produce in 2007. By an agreement concluded in 2011 and in return for remuneration linked to the turnover to be achieved by sales of Heksenkaas, its creator transferred his intellectual property rights over that product to Levola.

A patent for the method of manufacturing Heksenkaas was granted on 10 July 2012.

Since January 2014 Smilde has been manufacturing a product called ‘Witte Wievenkaas’ for a supermarket chain in the Netherlands.

Levola took the view that the production and sale of ‘Witte Wievenkaas’ infringed its copyright in the ‘taste’ of Heksenkaas and brought proceedings against Smilde before the Gelderland District Court, Netherlands.

After stating that, from its point of view, copyright in a taste refers to the ‘overall impression on the sense of taste caused by the consumption of a food product, including the sensation in the mouth perceived through the sense of touch’, Levola asked the Rechtbank Gelderland (Gelderland District Court) to rule (i) that the taste of Heksenkaas is its manufacturer’s own intellectual creation and is therefore eligible for copyright protection as a work, within the meaning of Article 1 of the Copyright Law, and (ii) that the taste of the product manufactured by Smilde is a reproduction of that work. It also asked that court to issue a cease and desist order against Smilde in relation to all infringements of its copyright and, in particular, in relation to the production, purchase, sale, supply or other trade in the product known as ‘Witte Wievenkaas’.

By judgment of 10 June 2015, the Gelderland District Court held that it was not necessary to rule on whether the taste of Heksenkaas was protectable under copyright law, given that Levola’s claims had, in any event, to be rejected since it had not indicated which elements, or combination of elements, of the taste of Heksenkaas gave it its unique, original character and personal stamp.

Levola appealed against that judgment before the referring court.

The latter considers that the key issue in the case before it is whether the taste of a food product may be eligible for copyright protection. It adds that the parties to the main proceedings have adopted diametrically opposed positions on this issue.

According to Levola, the taste of a food product may be classified as a work of literature, science or art that is eligible for copyright protection. Levola relies by analogy, inter alia, on the judgment of 16 June 2006 of the Supreme Court of the Netherlands, Lancôme (NL:HR:2006:AU8940), in which that court accepted in principle the possibility of recognising copyright in the scent of a perfume.

Conversely, Smilde submits that the protection of tastes is not consistent with the copyright system, as the latter is intended purely for visual and auditory creations. Moreover, the instability of a food product and the subjective nature of the taste experience preclude the taste of a food product qualifying for copyright protection as a work. Smilde further submits that the exclusive rights of the author of a work of intellectual property and the restrictions to which those rights are subject are, in practical terms, inapplicable in the case of tastes.

The referring court notes that the Court of Cassation, France has categorically rejected the possibility of granting copyright protection to a scent, in particular in its judgment of 10 December 2013 (FR:CCASS:2013:CO01205). There is therefore divergence in the case-law of the national supreme courts of the European Union when it comes to the question –– which is similar to that raised in the case in the main proceedings –– as to whether a scent may be protected by copyright.

In those circumstances, the Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  (a)  Does EU law preclude the taste of a food product — as the author’s own intellectual creation — being granted copyright protection? In particular:

(b)  Is copyright protection precluded by the fact that the expression “literary and artistic works” in Article 2(1) of the Berne Convention, which is binding on all the Member States of the European Union, includes “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”, but that the examples cited in that provision relate only to creations which can be perceived by sight and/or by hearing?

(c) Does the (possible) instability of a food product and/or the subjective nature of the taste experience preclude the taste of a food product being eligible for copyright protection?

(d) Does the system of exclusive rights and limitations, as governed by Articles 2 to 5 of Directive [2001/29], preclude the copyright protection of the taste of a food product?

(2)  If the answer to question 1(a) is in the negative:

(a)  What are the requirements for the copyright protection of the taste of a food product?

(b)  Is the copyright protection of a taste based solely on the taste as such or (also) on the recipe of the food product?

(c)   What evidence should a party who, in infringement proceedings, claims to have created a copyright-protected taste of a food product, put forward? Is it sufficient for that party to present the food product involved in the proceedings to the court so that the court, by tasting and smelling, can form its own opinion as to whether the taste of the food product meets the requirements for copyright protection? Or should the applicant (also) provide a description of the creative choices involved in the taste composition and/or the recipe on the basis of which the taste can be considered to be the author’s own intellectual creation?

(d) How should the court in infringement proceedings determine whether the taste of the defendant’s food product corresponds to such an extent with the taste of the applicant’s food product that it constitutes an infringement of copyright? Is a determining factor here that the overall impressions of the two tastes are the same?’

The Court’s decision:

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 precluding (i) the taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

France introduces a new weapon against online piracy

France has introduced new bill targeting online piracy. France’s National Assembly has approved a law based on which holders of copyright and related rights will be able to ask courts for the so-called dynamic injunctions. The purpose of these injunctions is to block all websites and servers that broadcast illegal content.

What’s more, such injunctions will be valid for a year saving copyright owners time and money to keep them in place. In addition, these injunctions will block “mirror” websites that are created for broadcasting of illegal content in an attempt to shirk an already issued injunction.

This new bill is welcomed by all right holders, especially those related to broadcasting of sport events where piracy is a significant problem.

Even before this new law right holders were able to rely on injunctions but the procedure was slower and not completely on par with the dynamic nature of the online broadcasting.

Source: WIPR.

MILLENNIALFALCON crashed after a US trademark dispute

Lucasfilm Entertainment Company won a trademark opposition in the US against an application for “MILLENNIALFALCON” in class 41: “entertainment services in nature of live musical performance by musical bands, production services of sound and music recordings”.

This trademark was applied for by Ilan Moskowitz who used it for his musical performances including parody against corporate culture and in particular one related to Disney.

Lucasfilm invoked an earlier trademark for MILLENNIUM FALCON in class 28: “Toy vehicles”. In addition they claimed that their mark had been used for many other activities and products such as entertainment services, theater productions, television programs, motion picture films, comic books, books, toys, dolls, sporting goods, bags, personal-care products, linens, towels, apparel, food, online games, computer games, video games, music, and mobile applications.

They provided the USPTO with the necessary evidence for sales, licensing agreements, advertisements etc.

As it is well-know MILLENNIUM FALCON is the name of a space ship from the Star Wars series, which have become tremendously popular for the last almost 40 years.

Ilan Moskowitz claimed that both signs were not similar. Firstly because of the three letters IAL in the first word which were different and create different meaning. Secondly because the goods and services were completely different.

The USPTO disagreed. Although the earlier mark is registered only for toys, it has been used for many different products and services for a long period of time (in the US trademark protection arises based on real market use). Additionally the phrase MILLENNIUM FALCON is very well known by all consumers.

The three different letters couldn’t overcome the similarities between both signs including from conceptual point of view.

Bearing in mind all of that, the USPTO considered that there is a possibility of consumer confusion between both trademarks. It was decided that the parody defense claim is not allowed because the marks did not have any difference in the eyes of the possible consumer and did not carry the necessary conditions for the parody claim to be valid.

Source: Ankara Patent Bureau – Cansu ÇATMA BİLEN and Önder Erol Ünsal for Lexology.

Louis Vuitton won an important lawsuit in the EU regarding one of its well-known trademarks

The General Court of the European Union has ruled out in the case T‑105/19, Louis Vuitton Malletier v Norbert Wisniewski.

It is an interesting case which concerns the following registered by Louis Vuitton figurative European trademark 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 by the Polish company Norbert Wisniewski based on absolute grounds – lack of distinctiveness.

The EUIPO concluded that the mark represents a checkerboard pattern in beige-black, which is an everyday pattern widely used by many.

Louis Vuitton appealed claiming that EUIPO erred in its conclusions not paying attention to important evidence.

The Court confirmed that the above mentioned pattern has low distinctive character.

However, the Court agreed that the EUIPO made some mistakes when assessing the pieces of evidence regarding the acquired distinctiveness related to the mark.

As it is well-known, evidence for acquired distinctive character over a trademark has to cover the territory of the entire EU.

Louis Vuitton separated its evidence into three groups, and the third group concerned countries where the company had no physical stores and official presents.

The EUIPO concluded that this is not sufficient and dismissed the claim for acquired distinctiveness.

The Court overturned this position stating that there is no need for submitting evidence for every single country if there are such that covers the whole territory of the EU.

Louis Vuitton had many internet and social media advertising campaigns that target all EU Member States. The fact that there were no stores in some countries doesn’t mean that consumers there are not aware about the brand or cannot buy it through internet for example.

What’s more, Louis Vuitton participated in different exhibitions, and in addition, there were many cases of seized counterfeit goods with the above trademark including in the countries from the third group, which comes to show that the consumers there have some information about the brand.

This decision is really important because gives some light on the issue with proving distinctive character which can be sometimes quite a challenge in the EU with its 27 Member States.