The Spanish Supreme Court rules on cases targeting football matches, LaLiga, and IP rights

The Spanish Supreme Court has recently ruled on two lawsuits that concern the broadcasting of sports events and the relation to intellectual property rights.

In the first case, the Spanish Football Federation LaLiga sued two media Atresmedia S.A. and Mediaset S.A. for using images and video clips from football matches without permission in light of the fact that the rights for broadcasting of these matches were granted to another company.

According to the Supreme Court, every media has the right to record images and broadcast short news reports including football matches and this is not against the exclusive broadcasting rights for the same events because it is of public interest.

In the second case, The Supreme Court has ruled that broadcasting football matches in bars or restaurants without paying the corresponding fee to LaLiga is not an intellectual property crime. The reason is that football matches do not fit into the definition of copyrightable work, that is to say, they are not literary, artistic, or scientific works. The Court did not consider matches as a performance of creative works. Because of this, every possible infringement of football match broadcasting should be regarded as a market and consumer crime under Spanish legislation.

Source: EUIPO.

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The Supreme Court of Spain confirmed that bullfighting is not copyrightable

Eleonora Rosati published an interesting article for IPKat that discusses the opportunity for copyright protection over bullfighting.

The dispute concerns an attempt by the well-known Spanish matador Miguel Ángel Perera Díaz to register with the Spanish Copyright Office a bullfighting video with description as a copyright work. The Office refused to do that because bullfighting wasn’t able to be copyright subject matter.

The decision was appealed and the Court upheld it. According to the Court bullfighting as well as other sport events are not copyrightable because they require following some strict rules. This in turn leaves no room for creative freedom for the purposes of copyright. The position reflects the European Court practice too (FAPL).

The decision was appealed again this time before the Supreme Court in Spain.

The Supreme Court admitted that there was a room for some level of artistry when matadors performing on the arena. Relying on the EU Court’s decision in Cofemel, the Court considered that copyright arises when there is a work and it is original one.

When it comes to work the Court cited the  Levola Hengelo case: for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

Originality on the other hand reflects the author personality as an expression of his free and creative choices.

According to the Supreme Court bullfighting can fulfil the originality requirement because matadors implement some creative decisions when they are performing. However, bullfighting cannot be a work. The reason for this is that it cannot be expressed in such a way in order to be identifiable with sufficient precision and objectivity.

This is the argument why bullfighting cannot be regard as a choreographic work too. Each bullfight is unique by its nature and cannot be reproduced one to one.

From that perspective the Supreme Court considered bullfighting as not copyrightable.

Source: IPKat.

“El Clasico” between Barcelona and Real Madrid can be a trademark in Japan

La Liga, the Spanish Football Federation, won a trademark dispute in Japan regarding its attempt to register the following trademark for Class 41 – sporting activities, production of sports events, sports information services, and other services:

The Japan Patent Office refused to register this sign based on absolute grounds – a lack of distinctive character.

As it is well-know, “El Clasico” is one of the most famous football matches in the world, between FC Real Madrid and FC Barcelona. Its history dates back to 1930s and through the years this match has become recognizable among football fens all around the world.

Based on this, the Patent Office considered that consumers will connect the sign with this particular match and from that point of view they can mistake its nature when used on service unrelated to the football match between these two teams.

In the appeal, however, the Board of Appeal overturned this decision, stating that the sign is distinctive enough and capable to be a trademark. According to the Board the consumers in Japan would not relate the sign directly with this match for the relevant services, at least because it is written in Spanish.

What’s more the Board didn’t find any facts that “El Clasico” was commonly used to represent a specific nature or quality in connection with the services for which the mark was applied for.

Source: Masaki MIKAMI, Marks IP Law Firm.

Lionel Messi is so famous that he doesn’t need to prove it – a decision by the European Court

The European Court has issued its decision in the case – 449/18 P EUIPO v Messi Cuccittini and C-474/18 P J.M.-E.V. e hijos v Messi Cuccittini.

This dispute concerns an attempt by one of the most famous footballer in the world for all time Lionel Messi to register the following European trademark in 2011 for clothes and shoes:

Against this application an opposition was filed by a Spanish company based on early registered trademark for MASSI for the same goods.

The EUIPO upheld the opposition finding both signs similar. From phonetic and visual point of view they are very similar due to the one letter difference.

From conceptual side, the fact that the word Messi refers the the well-known footballer Lionel Messi was not enough to overcome the similarity because only part of the consumers are interested in the football as a sport.

The decision was appealed. The General Court of the EU annulled it entirely.

According to the Court, both marks are not similar and the reason for this conclusion is that MESSI is a word that consumers will automatically refer to the particular footballer. This will make the necessary difference due to which a confusing between the signs is not possible.

The EUIPO retorted that the footballer didn’t claim any reputation in the initial proceeding and there were no evidence submitted in that regard. That’s why the Office didn’t take into account this fact, the official procedure requires reputation to be proved.

The Court clarified that some publicly well-known facts have to be considered by the Office without they to be proved. In the case at hand the footballer reputation is such a fact.

Although this decision is logical it arises some question.

It is a fact that Leonel Messi is very famous as a whole. But is is a fact that brands such as CoCa Cola, Nike, Apple are so famous as well.

From that perspective is this decision means that such brands don’t have to prove their reputation in disputes before the EUIPO any more.

And what about the McDonald’s case from the last year when the company lost its EU trademark for Big Mac due to insufficient evidence for acquired reputation provided in the procedure. The fact is that most of the people regard Big Mac as a product by McDonald’s.

It will be interesting to what extent this decision by the European Court will reflect the future practice of the EUIPO and all national Patent Offices in the EU.

Source: IPKat.

The targeted consumers are a key element in cases of trademark infringement in the EU

An interesting case for a trademark infringement from the UK. The local company for audio equipment AMS Neve initiated a lawsuit against the Spanish rival Heritage Audio for trademark infringement and passing-off.

The case concerns similar imitating products under the brand 1073 offered by the Spanish company not directly in the UK but through a website, social media and online advertisements accessible in the UK.

According to Heritage Audio there was no infringement because there were no sales in the UK. What’s more, due to that fact the UK Court had no jurisdiction to intervene.

The Intellectual Property Enterprise Court decided to ask the European Court about the issue with online sales and the jurisdiction that is applicable in such scenarios.

According to the EU Court, when it comes to online sales the most essential element is not where sales happened or where the infringer is located but the consumers that are targeted.

In the case at hand, the UK consumers were targeted by the Spanish company through websites and social media which means that the UK Court have the right to decide whether or not there is a trademark infringement.

This case is important especially in the light of the internet business development in the recent decades.

When you want to sale products in the EU as a whole you need to be sure that the trademark you want to use are not already protected by someone else. If this is the case, the fact that you don’t have direct sales in one Member State is irrelevant if your online business model target in some ways the consumers in that particular country.

Source:Nina Goodyear – Taylor Wessing for Lexology.

Arguments in case of trademark oppositions – Advocate General’s position

pexels-photo-613508The Advocate General of the European Court М. BOBEK has issued an opinion in the case C‑702/18P  Primart Marek Łukasiewicz v EUIPO. The case concerns the following:

On 27 January 2015,  „Primart” filed an application for registration of an EU trademark with EUIPO for the following figurative sign:

The goods in respect of which registration was sought are in Class 30: ‘Sugars, natural sweeteners, sweet coatings and fillings, bee products; coffee, teas, cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; processed grains, starches, and goods made thereof, baking preparations and yeasts; crackers’.

On 29 April 2015, Bolton Cile España, SA, filed a notice of opposition to the registration of the mark applied for in respect of all the goods referred to in the previous point. The opposition was based in particular on the Spanish trademark PRIMA, registered on 22 September 1973 under number 2 578 815 and renewed on 9 April 2013, designating goods in Class 30 and corresponding to the following description: ‘Sauces and condiments; coffee; tea; cocoa; sugar; rice; tapioca; sago, artificial coffee; flour and preparations made from cereals; bread; biscuits; cakes; pastry and confectionery; edible ices; honey; treacle; yeast, baking-powder, salt; mustard; pepper; vinegar; ice’. The ground relied upon in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

On 2 September 2016, the Opposition Division dismissed the opposition in its entirety. However, following an appeal filed by Bolton Cile España, by decision of 22 June 2017, the Fourth Board of Appeal of EUIPO annulled the Opposition Division’s decision, upheld the opposition, refused the trademark application and ordered Primart to bear the costs incurred in the course of the opposition and appeal proceedings.

The Board of Appeal held, as regards the earlier Spanish mark, that the relevant territory for analysing the likelihood of confusion was Spain and that the relevant public was the public at large in that Member State. Having compared the signs, the Board of Appeal concluded that there was a likelihood of confusion on the part of the relevant public. In that context, it observed that the word ‘prima’ means ‘female cousin’ or ‘bonus payment’ for the relevant Spanish consumer. By contrast, the mark applied for lacked any meaning. The Board of Appeal also stated that the earlier national mark’s level of intrinsic distinctive character was average. In its view, the Spanish consumer would not understand the word ‘prima’ as a word denoting the excellence of something, as is the case in other languages of the European Union (such as German or Dutch).

On 24 August 2017, Primart brought an action for annulment against the contested decision before the General Court. In its application, Primart alleged an infringement of Article 8(1)(b) of Regulation No 207/2009.

On 12 September 2018, the General Court dismissed the action, upholding the Board of Appeal’s findings with respect to the existence of a likelihood of confusion between the two signs. In that context, the General Court considered Primart’s arguments concerning the allegedly weak distinctive character of the earlier mark to be inadmissible, in accordance with Article 76(1) of Regulation No 207/2009, in so far as they had not been put forward before the Board of Appeal.

In its appeal before the Court of Justice, lodged on 9 November 2018, Primart asks the Court to set aside the judgment under appeal, annul the contested decision of the Fourth Board of Appeal of EUIPO, order EUIPO and Bolton Cile España to pay the costs of the proceedings before the Board of Appeal and the General Court, and order EUIPO to pay the costs of the proceedings before the Court of Justice.

The Advocate’s opinion:

In my view, Article 76(1) of Regulation No 207/2009 cannot be read as obliging the Board of Appeal to refrain from examining matters of law or fact that, despite not having been specifically raised by one of the parties, are inextricably linked to those raised by the parties.

For example, once a given matter has been put before it, the Board of Appeal cannot be expected to turn a blind eye to provisions of Regulation No 207/2009 that, although not referred to by the parties, are applicable to the situation. Similarly, the legal reasoning that the Board of Appeal ought to follow to rule on a given question raised by the parties might require it to go through various steps. The fact that the parties might not have discussed one or more of those steps does not mean that the Board of Appeal cannot touch upon them.

Against that background, the EU Courts have made clear that there are a number of issues that, despite not having been the subject of the parties’ submissions in the context of an opposition procedure, should nonetheless be addressed by EUIPO and, as a consequence, maybe raised, even for the first time, before the General Court.

That may be the case, inter alia, in relation to questions concerning the distinctiveness of an earlier trademark by reference to which it is alleged that the mark applied for gives rise to a likelihood of confusion.

That finding does not result in an infringement of Article 188 of the Rules of Procedure of the General Court, as argued by Bolton Cile España. The arguments submitted by Primart relating to the intrinsic distinctive character of the earlier mark pertained to an issue that had been addressed by the Board of Appeal and could therefore properly be put before the General Court. In the contested decision, the Board of Appeal found the distinctive character of the earlier mark to be average, taking account of the meaning of the word ‘prima’ and the manner in which that word would be understood by the relevant public (paragraphs 22 and 27 of the contested decision).

In conclusion, Primart’s ground of appeal, relying on a breach of Article 76(1) of Regulation No 207/2009, is well-founded.

La Liga was fined with 250 000 Euro for breaching GDPR

pexels-photo-2101030The organizer of the Spanish top football division La Liga was fined with $250 000 because of breach of the EU’s General Data Protection Regulation (GDPR) rules.

The reason for that sanction was the La Liga practice potentially to use its mobile app to spy whether bars and restaurants show football matches without paying license fees.  According to the information, this could be done through phones microphones.

The Spanish Data Protection Agency considered this as breaching of the GDPR.

According to La Liga, this decision was wrong and unfair because the Agency failed to understand the mobile app technology and how it works.

Source: TBO.