Watches can be copyrightable in Sweden

pexels-photo-280253Hans Eriksson and Petter Larsson (Westerberg & Partners Advokatbyrå Ab) published quite an interesting article for Lexology that concerns a lawsuit for copyright infringement in Sweden.

Back in 2016, a local retailer started to import watches with a minimalistic design that resembled such produced and offered by the well-known Sweden watch manufacturer Daniel Wellington.

A copyright lawsuit followed. The defendant position of the retailer was that the watch design at hand wasn’t original taking into account prior art which clearly showed a variety of other watches on the market that shared similar design characteristics.

Based on this, the first instance court dismissed the copyright infringement claim.

The decision was appealed. The Patent and Market Court of Appeal came to the conclusion that there was a copyright infringement. The reason was that the authors of Daniel Wellington’s watch had made small design choices to create the watch which was sufficient for the watch originality.

Moreover, the court addressed the defendant’s mosaic of prior art components by stating that the fact that a product consists of previously known elements does not rule out copyright protection if it displays originality when considered in its entirety.

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Bacardi won a case in Turkey for a trademark that has been never used there

pexels-photo-1571849Mutlu Köse published an interesting article for Marques Class 46 which discusses the court practice in Turkey regarding cases of non-use of trademarks.

The dispute at hand concerns a lawsuit initiated by Bacardi against a local beverage producer for a trademark infringement of BREEZER mark owned by the company.

The Turkey company uses similar sign FREEZER and look-alike packaging.

As a response, KIRBIYIK FREEZER started revocation proceeding against Bacardi’s BREEZER mark for lack of genuine use in the country for a period of 5 years as it is stipulated by the law.

Bacardi had never used its trademark but the reason for this was the fact that the Turkish regulations do not allow the sale of cocktail beverages containing distilled alcohols.

According to the Court, however, this represented a valid reason for non-use of the registered mark (the onliest option for overcoming such revocation apart from actual use) and dismissed the Turkish company request. At the same time, the court accepted the claims for trademark infringement and unfair competition against KIRBIYIK FREEZER.

The Black and white trademark color dominance in Sweden is over

sunnana-harbour-2914389_960_720.jpgHans Eriksson published an intriguing article for IPKat discussing the issue on color assessment of trademarks in Sweden.

Until that moment, the Swedish practice in that regard was to accept that trademarks in black and white covers all color combinations for the purpose of trademark assessment in case of disputes.

Not any more. The Swedish Patent Office and the Swedish court change that position implementing the European court decision in case C-252/12 Specsavers, according to which the registration of a trademark in black and white cannot be granted a scope of protection that automatically covers all possible color combinations.

Sweden alongside Denmark and Norway was one of the few countries in the EU which has continuously used this broader approach in color assessment of trademarks.

This change of the local practice will reflect on all future applicant who has to bear in mind that when they build their trademarks strategies for the territory of Sweden.

The full article can be found here.

Lacoste lost a crocodile case in Nederland

The Hague District Court ruled in a lawsuit between Lacoste and Hema, which concerns a children’s underwear with a crocodile motif.

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According to Lacoste, Hema infringed the rights over their registered trademarks, which above all is well-known amongst the consumers.

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The Court, however, disagreed with Lacoste stating that there was no infringement in the case at hand because the use of a repetitive crocodile pattern was perceived as a decoration, not as a source of origin. The practice of using animal depictions for children’s clothing is widespread.

Lacoste claimed that confusion could be created due to the fact that their trademarks have had a reputation on the market for many years. In addition, a survey was been provided, in which many respondents stated that they connect crocodile depictions with the Lacoste’s trademark.

The Court dismissed this evidence because the questions in the survey were leading, making respondents think about trademarks. On top of that, the relevant public wasn’t defined correctly.

According to Lacoste, some of the clothes contained only one depiction of crocodile which made even easier for the consumers to make a connection with their trademark.

The Court disagreed for this too, concluding that this cloth had been selling in a package with others and only in the Hema’s stores so the relevant consumers would not be confused neither be able to connect it with the Lacoste’s trademarks.

Source: AKD NV – Bram Woltering, Lexology.

China introduced a new IP Court

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China introduced a new intellectual property court on 01.01.2019. The main aim of this new court, which is a part of the Supreme People’s Court, is to bring more quality and efficiency regarding all sorts of intellectual property desputes in the country and in that way to send a positive signal to all local and foreign market players.

The new court will be responsible for:

  • Civil law cases after the first instance
    That includes: Invention patent, utility model patent, layout designs for integrated circuits, technical inventions, computer software, new plant varieties
  • Administrative cases at first instance concerning more technical issues, including designs and monopoly disputes
  • Protest cases after first instance appeal cases which have entered into force after first instance independently of the civil cases or administrative cases mentioned above.

For more information here.

Source: Dr. Meyer-Dulheuer & Partners LLP.

Image: David Besh/Pexels

Ordering trademark damages in Argentina – new moments

argentina-162229_960_720.pngCarlos Castrillo published an interesting article for Marques Class 46 regarding the practice for awarding damages for trademark infringements in Argentina.

In order such damages to be given, the law in the country requires:

  • The existence of an infringement.
  • Made with fraud or fault.
  • Causing proved loss or damage.

Damage cannot be inferred; it has to be proved. The local court’s practice has refused such damages until now.  This gave relative peace of trademark infringers in the country because they only risk a cease-and-desist order together with the payment of professional fees.

In a new lawsuit between Adidas and Juan Carlos Chilemi SRL, however, the Court of Appeal ordered damages in the amount of 55 000 dollars despite the fact that Adidas failed to prove any loses.

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The court based its decision on an exception in the Civil Procedure Code which gives the authorizes to grant damages if the damages are proven to have occurred but are difficult to determine.

The full article can be found here.

Breaking news – Youtube is liable for copyright infringement in Austria

organic-1280537_960_720.jpgThe Commercial Court of Vienna has issued a decision according to which YouTube is liable for copyright infringement of works uploaded by its users in Austria.

The case concerns allegations by the Austrian broadcaster Puls4 that its content was been uploaded without permission on Youtube.

The defensive position of Youtube was that the company operates in compliance with the requirement of the E-Commerce Directive according to which:

Article 14: Where an information society service is provided that consists of the storage of information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

This option is possible only in the case of a “host provider”. The Vienna Court, however, based its decision on the European Court’s practice, which determines that there is no “host provider” when:

“. . . the service provider, instead of confining itself to providing that service neutrally by a merely technical and automatic processing of the data provided by its customers, plays an active role of such a kind as to give it knowledge of, or control over, those data.” (ECJ in L’Oreal ./.eBay)

The Court concluded that Youtube is not only a service provider but manage the uploaded data, promote it, measure the user’s activity etc. So in light of this, the company is not a neutral mediator.

It’s highly likely that this decision will be appealed but nevertheless, it shows the current more restrictive approach among different European courts toward the internet providers.

Source: Morrison & Foerster LLP – John F. Delaney, Christiane Stuetzle and Christoph Wagner, for Lexology.

Image: freephotocc, Pyxaby.