Argentina and Moldova join TMview

1EUIPO reports about the accession of Argentina and Moldova to the TM View database for trademarks. In that way the participating offices become 62 giving access to approximately 48 million trademarks around the world.

More information here.

Advertisements

Subsidiary, parent company and an EU Court decision

111The European Court issued a decision to what extent a subsidiary company can be responsible for action taken by its parent company. The case C‑617/15 Hummel Holding A/S  v Nike Inc.,  Nike Retail BV concerns the following:

Hummel Holding is an undertaking with its seat in Denmark which manufactures sports goods, sports and leisure clothing and sports and leisure footwear. It is the proprietor of the international figurative trade mark registered under No 943057 with effect in the European Union for goods in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Clothing, footwear, headgear’.

Nike, which has its seat in the United States, is the ultimate holding company of the Nike Group, which sells sports goods across the world. Nike Retail, which has its seat in the Netherlands, also belongs to that group. Nike Retail operates the website on which Nike goods are advertised and offered for sale, in Germany in particular. In addition to online sales on that website, Nike goods are sold in Germany through independent dealers supplied by Nike Retail. Wholesale or retail sales in Germany are not directly conducted by the companies in the Nike Group.

Nike Deutschland GmbH, which has its seat in Frankfurt am Main (Germany) and is not a party to the main proceedings, is, according to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), a subsidiary of Nike Retail. Nike Deutschland does not have its own website and does not sell goods to end consumers or intermediaries. However, it negotiates contracts between intermediaries and Nike Retail, and supports Nike Retail in connection with advertising and the performance of contracts. Nike Deutschland also provides aftersales service for end consumers.

Hummel Holding claims that some Nike products, in particular, basketball shorts, infringe the trade mark referred to in paragraph 13 above and that most of the infringements took place in Germany. It brought an action against Nike and Nike Retail before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), which ruled that it had jurisdiction on the ground that Nike Deutschland was an establishment of Nike, but dismissed the action on the merits. Hummel Holding appealed to the referring court against that decision.

Hummel Holding seeks an order that the defendants cease from importing, exporting and advertising those goods, offering them for sale, placing them on the market and allowing them to be placed on the market, in the European Union (in the alternative, in the Federal Republic of Germany) as regards Nike and in the Federal Republic of Germany as regards Nike Retail.

Nike and Nike Retail object that the German courts lack international jurisdiction.

The referring court considers that the international jurisdiction of the German courts to hear the action in respect of the European Union as a whole, brought against the companies in the Nike group, can be based only on Article 97(1) of Regulation No 207/2009. It states, however, that the scope of the concept of ‘establishment’ within the meaning of that provision, with regard to distinct first and second-tier subsidiaries, is disputed and has not been clarified by the Court.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Under which circumstances is a legally distinct second-tier subsidiary, with its seat in an EU Member State, of an undertaking that itself has no seat in the European Union to be considered as an “establishment” of that undertaking within the meaning of Article 97(1) of [Regulation No 207/2009]?’

The Court’s decision:

Article 97(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that a legally distinct second-tier subsidiary, with its seat in a Member State, of a parent body that has no seat in the European Union is an ‘establishment’, within the meaning of that provision, of that parent body if the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which commercial activity is pursued, and has the appearance of permanency to the outside world, such as an extension of the parent body.

A Black Friday trademark case in Germany

addtext_com_MDQ0MzQxMzUyMQOliver Löffel published an interesting article for Lexology which concerns a case for a Black Friday trademark registered in Germany by a Hong Kong company that licensed this mark to a Vienne based company.

In a nutshell, the later company started to threaten every other company that tries to use this expression in advertisement campaign related to the well-known US day for bargain-sales.

It is no surprise that in this case many cancellation actions were been initiated against the mark on absolute grounds – lack of distinctiveness and a term which have become customary in the current language or in the bona fide and established practices of the trade. The reason for this is the fact that this mark was registered in 2013 whereas the use of the expression in Germany started back to 2006 when Apple use Balck Friday for its promotional campaign.

More information here.

New electronic trademark registration service in Qatar

doha-2366127_960_720The Ministry of Economy and Commerce of Qatar announced the launching of its new electronic trademark registration service. Its main purpose is to improve the conditions for making business in the country adopting the best international practices in the field of intellectual property and in that way facilitating all entrepreneurs which operate in Qatar.

More information here.

Trademark enforcement in Benelux

1200px-Flag_of_Benelux.svg

LYDIAN published an interesting article for Lexology which discuss how you can enforce rights over a trademark in Benelux. The article covers the following:

  • Which courts are empowered to hear trademark disputes?
  • What actions can be taken against trademark infringement and what are the key features and requirements of each?
  • Who can file a trademark infringement action?
  • What is the usual timeframe for infringement actions?
  • What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
  • What remedies are available to owners of infringed marks? Are punitive damages allowed?
  • What customs enforcement measures are available to halt the import or export of infringing goods?
  • What defenses are available to infringers?

More information here.

Google is not a generic term in the US

addtext_com_MDQ1MTAyNzU0NQ

ARS Technica UK reports an interesting story from the US where the Supreme Court refused to review a petition which asserts that the term “google” is too generic and therefore cannot be a trademark anymore.

According to that petition, the word Google has been widely used as a term for searching on internet. Due to that fact, this trademark is no more eligible to serve as a trade source.

The Federal court ruled in that case last year considering that although Google is used as e term describing the process of searching on internet, it is still a valid trademark because Google offers other products too and the word is connected with different goods and services. What’s more, we have a generic term when the name has become an “exclusive descriptor” that makes it difficult for competitors to compete unless they use that name, which is not the case with Google.

More information here.

Infringement of EU trademarks and counterclaims – a decision by the European court

european_court_justiceweb-thumb-large

The European Court has ruled in case C‑425/16 Hansruedi Raimund v Michaela Aigner. The case concerns the following:

Mr Raimund is the proprietor of EU word mark Baucherlwärmer under which he has, since approximately the year 2000, marketed a herbal base to be added to alcohol. Ms Aigner too sells a herbal mixture for adding to high-proof alcohol, which she also calls Baucherlwärmer.

Mr Raimund brought an action for infringement of the EU trade mark of which he is proprietor before the Handelsgericht Wien (Commercial Court, Vienna, Austria), so that Ms Aigner would be prohibited from using the sign ‘Baucherlwärmer’ for goods and services in the classes covered by that mark. Ms Aigner, who is the defendant in the main proceedings and claimed, in particular, that Mr Raimund had obtained that mark improperly and in bad faith, brought a counterclaim for a declaration of invalidity of that mark before the same court.

The Handelsgericht Wien (Commercial Court, Vienna) decided to stay the proceedings in respect of that counterclaim until a final ruling on the action for infringement, which is the subject matter of the main proceedings. The order staying the counterclaim was set aside, however, and the counterclaim therefore remains pending at first instance. The action for infringement was dismissed by the Handelsgericht Wien (Commercial Court, Vienna) on the ground that Mr Raimund had filed the EU trade mark application in bad faith.

The Oberlandesgericht Wien (Higher Regional Court, Vienna, Austria) having upheld the first-instance judgment on appeal, Mr Raimund lodged an appeal on a point of law with the Oberster Gerichtshof (Supreme Court, Austria).

The referring court considers that the applicant in the main proceedings did indeed obtain the EU trade mark at issue in the main proceedings in bad faith and that the trade mark should therefore be declared invalid, in accordance with Article 52(1)(b) of Regulation No 207/2009. However, it is uncertain, and the question was raised by Mr Raimund in his appeal, as to whether the two lower courts were entitled to rule on the question of bad faith in the infringement proceedings, when there was no final decision on the counterclaim for a declaration of invalidity of the mark.

In view of the fact that the defendant in the main proceedings is relying on an absolute ground for invalidity within the meaning of Article 52(1)(b) of Regulation No 207/2009, which, as Article 99(1) of that regulation provides, may be properly invoked in an action for infringement only if the defendant brings a counterclaim based on such a ground, the Oberster Gerichtshof (Supreme Court) asks whether it is sufficient that a counterclaim has been brought, alleging that trade mark rights have been obtained in bad faith, in order for the court to be able to dismiss an action for infringement before that counterclaim has been determined (first option); or whether the action for infringement may be dismissed on that ground only if the trade mark concerned is, at the very least simultaneously, declared invalid on the basis of the counterclaim (second option); or indeed whether a claim, in the context of the infringement action, that trade mark rights have been obtained in bad faith can succeed only if the trade mark has first been definitively declared invalid on the basis of the counterclaim (third option).

The referring court states that, in the present case, the success or failure of the action for infringement depends solely on the plea of invalidity. It proposes that the Court of Justice apply the second option, in so far as it follows from Article 99(1) of Regulation No 207/2009 that an action for infringement may be dismissed on account of the existence of a ground for invalidity only if, at least simultaneously, the counterclaim brought on the same ground is upheld. It considers that the mere bringing of such a counterclaim should not be sufficient but that, on the other hand, it should not be necessary to wait for the decision on the counterclaim to become final. It states that the question whether there is any obligation to wait for the decision on the counterclaim to be made final, the possible joinder of infringement proceedings and a counterclaim, and the structure of the appeal proceedings should be determined solely under national procedural law.

The referring court also states that the option which it recommends the Court of Justice apply ensures that the plea of invalidity or relating to revocation inter partes, put forward in the context of infringement proceedings, can succeed only if the trade mark is declared invalid or revoked for the same reason in the context of the counterclaim, with effect erga omnes. In particular, the applicant in the main proceedings in the action for infringement would, if unsuccessful at first instance, have to challenge both the decision on the infringement action and the decision on the counterclaim in order to succeed on appeal. Were he to appeal only the decision on the infringement action, his appeal would be destined to fail because the decision on the counterclaim, which is res judicata, would a priori preclude the infringement action being successful.

However, the Oberster Gerichtshof (Supreme Court) acknowledges that the literal meaning or the purpose of Article 99 of Regulation No 207/2009 might also be interpreted otherwise than as it suggests.

n those circumstances, the Oberster Gerichtshof (Supreme Court) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘1. May an action for infringement of an EU trade mark (Article 96(a) of Regulation No 207/2009) be dismissed on the ground of an objection that the trade mark application was filed in bad faith (Article 52(1)(b) of Regulation No 207/2009) if, despite the defendant having brought a well-founded counterclaim for a declaration of invalidity of the EU trade mark (Article 99(1) of Regulation No 207/2009), the court has not yet ruled on that counterclaim?

2. If the answer is in the negative: may the court dismiss an action for infringement on the ground of an objection that the trade mark application was filed in bad faith, if the court at least simultaneously upholds the counterclaim for a declaration of invalidity, or must the court delay the decision on the action for infringement in any event until the decision on the counterclaim is res judicata?’

The Court decision:

1. Article 99(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark must be interpreted as meaning that an action for infringement brought before an EU trade mark court in accordance with Article 96(a) of that regulation may not be dismissed on the basis of an absolute ground for invalidity, such as that provided for in Article 52(1)(b) of that regulation, without that court having upheld the counterclaim for a declaration of invalidity brought by the defendant in that infringement action, pursuant to Article 100(1) of the regulation, and based on the same ground for invalidity.

2. The provisions of Regulation No 207/2009 must be interpreted as not precluding an EU trade mark court from being able to dismiss an action for infringement within the meaning of Article 96(a) of that regulation on the basis of an absolute ground for invalidity, such as that provided for in Article 52(1)(b) of that regulation, even though the decision on the counterclaim for a declaration of invalidity, brought pursuant to Article 100(1) of the regulation, and based on the same ground for invalidity, has not become final.