Proving ownership of intellectual property rights in case of infringements in the EU

The Advocate General of the European Union A. RANTOS has issued an opinion in the case C-628/21 TB, Castorama Polska Sp. z o.o., „Knor“ Sp. z o.o.

This dispute concerns when and to what extent IP ownership has to be proved in the process of collecting information for IP infringements on the territory of the EU. The case has the following background:

TB is a natural person who, through her online shops, markets decorative articles. In the context of her economic activity, she sells reproductions, produced mechanically by the applicant herself, with simple graphics, consisting of a limited number of colours and geometric figures and short sentences. In that regard, images A, B and C (‘the reproductions at issue’) contain, respectively, the following sentences: ‘Mój dom moje zasady’ (‘In my house, I make the rules’); ‘Nie ma ludzi idealnych a jednak jestem’ (‘Perfect persons do not exist, and yet I am one’) and ‘W naszym domu rano słychać tupot małych stopek. Zawsze pachnie pysznym ciastem. Mamy dużo obowiązków, mnóstwo zabawy i miłości’ (‘In our house, the sound of tiny feet can be heard. There is always the aroma of delicious cake. We have many obligations, much pleasure and much love’). TB claims to be the creator of the images which she reproduces, which in her contention are works for the purposes of the legislation on copyright.

Exact copies of images A and B, supplied by ‘Knor’ Sp. z o.o. (‘Knor’), are sold without TB’s consent in the ‘bricks and mortar’ shops and online shop of Castorama Polska Sp. z o.o. (‘Castorama’). Neither TB’s reproductions of those images nor the reproductions offered by Castorama indicate the author or the origin of those images. Castorama also sells reproductions, supplied by Knor, with identical wording to that of image C, but with certain differences in terms of their graphics and fonts. On 13 October 2020, TB gave notice to Castorama to cease and desist its infringements of the economic and moral copyright in the works created by her which that company was selling without her consent.

On 15 December 2020, TB brought an action before the Regional Court, Warsaw, the referring court, under Article 479113 of the Code of Civil Procedure. In the course of those proceedings, she requested Castorama and Knor to provide her with information, concerning the reproductions at issue, on the distribution networks and the quantity of goods received and ordered, a complete list of suppliers, the date on which the goods were placed on sale in Castorama’s ‘bricks and mortar’ shops and online shop, the quantity involved and the price derived from the sale of the goods, broken down into physical sales and online sales. TB relied on her economic and moral copyright in the reproductions at issue and stated that the information requested was necessary for the purpose of bringing an action for infringement of her copyright and, in the alternative, an action for damages for unfair competition.

Castorama contended that that request for information should be refused and, in the alternative, that the scope of the judicial decision should be as narrow as possible, strictly limited to works classified as such for the purposes of the legislation on copyright, and disputed the very possibility that the reproductions at issue might be classified as ‘works’. It also relied on the protection of business secrets and claimed that TB had not proved that she held the economic copyright in those reproductions. In Castorama’s contention, the intellectual works to which TB’s request refers are not original and TB has not proved that the ‘novelty’ condition was satisfied. Granting her request would amount to affording copyright protection to ideas and concepts, because the reproductions at issue belong to the current fashion for ‘simplified motivational artworks’ with trite sentences. Castorama maintained, moreover, that all the graphic elements of the reproductions at issue are trite and repetitive and are not distinguished in any original manner, as far as concerns composition, colours or the fonts used, from the other images available on the market.

In answer to those arguments, TB did not adduce any evidence to prove the existence of an intellectual property right in the reproductions at issue and calling for special knowledge (with a view to an expert report) in the field of graphics and design. The evidence which she produced in her application of 15 December 2020 consisted of printouts of pages of articles on sale in her online shops and of sales invoices from 2014, and also of printouts of pages from Castorama’s websites and sales invoices of images in the latter’s online shops.

When examining TB’s request, the referring court was uncertain about the interpretation to be given to Article 8(1) of Directive 2004/48, in particular as regards the question whether it is necessary to adduce proof of the legal nature of the asset to which the request for information relates, or merely to lend credence to it, in view of the fact that Articles 6 and 7 of that directive use different formulations and that Article 4 of that directive refers to the ‘holders of intellectual property rights’. The referring court’s doubts also related to the possibility that a different standard of proof might be applied as regards the status of the reproductions at issue, namely whether or not they are works, and consequently on TB’s standing to bring proceedings.

The referring court observes that Article 479113 of the Code of Civil Procedure constitutes the transposition of Article 8 of Directive 2004/48 and that Article 47989 of that code, which defines the scope of intellectual property cases, refers, in paragraph 2(1), to cases relating to ‘the prevention and combating of unfair competition’. Referring to recital 13 of that directive, (5) the referring court emphasises that, for the purposes of the present case, although the Polish case-law has not yet given an unequivocal answer to that question, that court accepts the interpretation according to which national law extended, for domestic purposes, the application of that directive to acts involving unfair competition which consist in producing exact copies of goods, even if those goods are not the subject of exclusive rights such a those of the copyright holder. In the light of those factors, as regards the part of the request relating to images A and B, no problem of interpretation of EU law arises, since TB has proved that Castorama has sold reproductions consisting of exact copies of those images.

On the other hand, in order to adjudicate on the request relating to image C, it is necessary to interpret EU law, since the reproduction sold by Castorama is not an exact copy of that image, in that the text has been reproduced and its position on the page has been retained, but with the use of other graphic elements and other fonts. According to the Polish case-law, which coincides with the Court’s, (6) it is for the court dealing with the matter to examine the creative characteristics of a work. In that regard, according to the referring court, where the facts of the case are complex and the judge’s experience is insufficient, it is necessary to have recourse to an expert’s opinion, while the burden of proof and responsibility for requesting an expert report are generally borne by the applicant.

Polish legal commentators have expressed two contradictory viewpoints on the interpretation of Article 479113 of the Code of Civil Procedure and have considered either that the applicant must adduce proof that she is the holder of the intellectual property right in question or that she is not required to prove the infringement of the protected right, but is required merely to lend credence to such an infringement, since the request for information may also be addressed to a third party.

The referring court states that in its view Article 8(1) of Directive 2004/48, read in conjunction with Article 4 of that directive, must be interpreted as meaning that it refers to a measure to protect intellectual property rights only when the ownership of the intellectual property right is proved and that credence being lent to the fact that that measure relates to an existing intellectual property right is not sufficient, since it is necessary to adduce proof of that circumstance, in particular where the request for information on the origin and the distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights.

In those circumstances, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw) 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 Advocate’s opinion:

In the light of the foregoing considerations, I propose that the Court of Justice should answer the questions for a preliminary ruling referred by the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) as follows:

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 the context of an action relating to an infringement of an intellectual property right, the applicant must lend credence, by submitting sufficient evidence, to the fact that he or she is the holder of the intellectual property right in question, in particular where the request for information precedes the assertion of claims for compensation on account of the infringement of the intellectual property right. The national court must also assess the merits of that request and take due account of all the objective circumstances of the case, including the conduct of the parties, in order to ascertain, in particular, that the applicant has not abused that request.

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Patents, inventors, jurisdictions, and a European Union Court decision

The European Court has ruled in the patent case C‑399/21 IRnova AB v FLIR Systems AB. This dispute has the following background:

IRnova and FLIR Systems, active in the infrared technology sector, are companies with their registered office in Sweden. They had a business relationship in the past.

On 13 December 2019, IRnova brought an action before the Patent and Market Court seeking, inter alia, a declaration that it had a better right to the inventions covered by international patent applications, subsequently supplemented by European, United States and Chinese patent applications deposited by FLIR in 2015 and 2016, and by United States patents granted to FLIR on the basis of those latter applications.

In support of that action, IRnova had stated, in essence, that those inventions had been made by one of its employees, meaning that that employee had to be regarded as their inventor or, at the very least, as their co-inventor. IRnova therefore argued that, as the inventor’s employer and thus successor in title, it had to be regarded as the owner of the said inventions. However, FLIR, without having acquired those inventions or otherwise being entitled to do so, deposited the applications mentioned in the preceding paragraph in its own name.

The Patent and Market Court declared that it had jurisdiction to hear Irnova’s action relating to the inventions covered by the European patent applications. On the other hand, it declared that it did not have jurisdiction to hear the action relating to its alleged right to the inventions covered by the Chinese and United States patent applications deposited by FLIR and by the United States patents granted to FLIR, on the ground, in essence, that the action concerning the determination of the inventor of those latter inventions is linked to the registration and validity of the patents. In view of that link, the dispute at issue falls within the scope of Article 24(4) of the Brussels Ia Regulation, such that the Swedish courts do not have jurisdiction to hear it.

It is against that decision as to lack of jurisdiction that IRnova brought an appeal before the referring court, the Svea Court of Appeal, Stockholm, Sweden.

According to that court, the dispute before it falls within the scope of the Brussels Ia Regulation, since it seeks a declaration of the existence of a legitimate right to an invention and is therefore civil and commercial in nature. However, that court is uncertain as to whether the Swedish courts have jurisdiction to hear a dispute seeking to establish the existence of the right to an invention arising from the alleged status of inventor or co-inventor. In its view, Article 24(4) of that regulation provides, ‘in proceedings concerned with the registration or validity of … patents’, for exclusive jurisdiction of the courts of the Member State in which the registration has been applied for or has taken place. That exclusive jurisdiction is justified by the fact, first, that those courts are best placed to hear cases in which a dispute concerns the validity of a patent or the existence of its deposit or registration and, second, that the grant of patents necessitates the involvement of the national administrative authorities, which indicates that the grant of a patent falls within the exercise of national sovereignty. However, while it is clear from the case-law of the Court that proceedings concerning exclusively the question of who is the holder of a patent right does not fall within that exclusive jurisdiction, that case-law does not provide any direct guidance as to the applicability of that Article 24(4) in this case.

In the present case, according to the referring court, the dispute before it can be considered to be linked to the registration or validity of the patent within the meaning of that provision. In order to identify the proprietor of the right to the inventions covered by the patent applications or by the patents at issue, it is necessary, according to that court, to determine the inventor of those inventions. Such an assessment would involve an interpretation of the patent claims and an analysis of the respective contribution of the various alleged inventors to the said inventions. Thus, the determination of the proprietor of the right to an invention could give rise to an assessment, in the light of substantive patent law, aimed at establishing which contribution to the development work resulted in the novelty or inventive step, and raise questions as to the scope of the protection conferred by the patent law of the country of registration. Furthermore, the fact that the patent applicant is not entitled to file a patent application constitutes a ground for invalidity.

In those circumstances, the Svea Court of Appeal, Stockholm decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

‘Is an action seeking a declaration of better entitlement to an invention, based on a claim of inventorship or co-inventorship according to national patent applications and patents registered in a non-Member State, covered by exclusive jurisdiction for the purposes of Article 24(4) of [the Brussels Ia Regulation]?’

The Court’s decision:

Article 24(4) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters,

must be interpreted as:

not applying to proceedings aimed at determining, in the context of an action based on alleged inventor or co-inventor status, whether a person is the proprietor of the right to inventions covered by patent applications deposited and by patents granted in third countries.

Procter & Gamble won an important lawsuit in the EU regarding the HUGO BOSS trademark

The European Court has ruled in the case C‑355/21 Perfumesco.pl sp. z o.o. sp.k. v Procter & Gamble International Operations SA. The case focuses our attention on the issue of original products illegally sold in the EU without the trademark owner’s (in this case the exclusive licensee’s) permission. The case has the following background:

Procter & Gamble is a producer of perfumery products. Under a licensing agreement granted by HUGO BOSS Trade Mark Management GmbH Co. KG (‘HUGO BOSS TMM’), it alone was authorised to use the EU word mark HUGO BOSS (‘the HUGO BOSS mark’) and to initiate and pursue, in its own name, actions relating to the infringement of the rights over that mark. The mark was registered in respect of the following goods in Class 3:

‘Fragrant sprays; perfumes, deodorants for personal use; soaps; articles for body and beauty-care’.

In order for customers to be able to test the goods bearing the HUGO BOSS mark, HUGO BOSS TMM makes available free of charge to sellers and authorised distributors, samples of products or ‘testers’, solely for the purpose of presenting and promoting cosmetics, in bottles identical to those used for their sale under the HUGO BOSS mark. Their external packaging is a uniform bright colour with clear information stating that the samples are not intended for sale, for example, by one of the following indications: ‘not for sale’ (not intended for sale), ‘demonstration’ or ‘tester’. The samples are not placed on the market in the European Economic Area (EEA) either by HUGO BOSS TMM or with its consent.

Since January 2012, Perfumesco.pl has been operating a wholesale perfumery business through an online shop. It regularly sends price lists to sellers of online cosmetics, offering for sale, in particular, samples of perfumery products bearing the HUGO BOSS mark and marked ‘Tester’, stating that the samples do not differ in terms of scent from the normal product. The referring court states that Perfumesco.pl does not remove or cover bar codes that appear on the external packaging of goods bearing that mark, and that, relying on its contractual partners as to the lawful origin of the goods it buys, it does not verify the origin of those goods nor check whether those bar codes have been removed.

On 28 July 2016, pursuant to a protective order, a court bailiff seized in Poland perfumes, eau de toilette and scented water in packaging bearing the HUGO BOSS mark, namely, testers not intended for sale, products designated by codes indicating, according to Procter & Gamble’s statement, that the manufacturer intended them to be placed on the market outside the EEA and products in respect of which the bar codes affixed to the packaging had been removed or obscured.

Procter & Gamble brought an action before the Regional Court, Warsaw, Poland, which, by judgment of 26 June 2017, ordered, inter alia, Perfumesco.pl to destroy perfumes, eau de toilette and scented water whose packaging bore the HUGO BOSS mark, in particular testers, which had not been placed on the market in the EEA by HUGO BOSS TMM or with its consent.

By judgment of 20 September 2018, the Court of Appeal, Warsaw, Poland dismissed the appeal brought by Perfumesco.pl. That court stated, inter alia, that, in accordance with Article 102(2) of Regulation No 207/2009, the EU trade mark court may take the measures provided for by the applicable law which it deemed to be appropriate in the circumstances of the case and that that provision permitted the application of Article 286 of the Intellectual Property Law. It found that the Regional Court, Warsaw had applied that article without erring.

First, it considered that, on its wording, Article 286 of the Intellectual Property Law applied only if the products had been manufactured or marked illegally and that that was not the case in the dispute before it. Procter & Gamble did not dispute that the perfumes seized were original products, but argued that HUGO BOSS TMM had not consented to their being placed on the market in the EEA and that Perfumesco.pl had not proved the existence of such consent.

Next, that court found that Article 286 should be interpreted in accordance with Article 10(1) of Directive 2004/48, which it transposes into Polish law, and that all goods infringing intellectual property rights had to be considered to be illegally manufactured within the meaning of Article 286.

Lastly, it noted that the perfumes seized bore masking stickers, preventing identification of the geographical region for which they were intended, and that masking codes had been affixed in place of the removed safety codes. It stated that, even if there was no evidence that the removal of those codes was the act of Perfumesco.pl., the latter should have known, as a perfumery professional, that the goods were placed on the market despite their doubtful origin. It also pointed out that testers had been offered for sale by Perfumesco.pl., which should have been fully aware that HUGO BOSS TMM had not consented to their being placed on the market in the EEA.

Perfumesco.pl. brought an appeal on a point of law before the referring court, the Supreme Court, Poland, alleging, inter alia, infringement of Article 286 of the Intellectual Property Law. In that regard, it submits that Procter & Gamble contends a lack of consent on the part of the proprietor of the HUGO BOSS mark to the placing on the market in the EEA of the goods seized, without denying that those goods are original products.

That court observes that the lower courts hearing the case in the main proceedings drew attention to the wording of Article 10(1) of Directive 2004/48 and interpreted Article 286 of the Intellectual Property Law in a manner consistent with EU law. It notes that, according to those courts, Article 10(1) of Directive 2004/48 concerns goods which are found to infringe an intellectual property right and that, therefore, the destruction of goods may be ordered, even where they have not been illegally ‘manufactured or marked’ under national law.

The referring court notes, on the one hand, that several arguments also accepted in the legal literature support a literal interpretation of Article 286 of the Intellectual Property Law, in particular the fact that the amendment of that article in 2007 resulted from the implementation of Directive 2004/48. On the other hand, taking account of the obligation to interpret national law in conformity with EU law, the interpretation of Article 286 should be based on the interpretation of Article 10(1) of that directive.

In those circumstances the Supreme Court decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Must Article 10 of Directive [2004/48] be interpreted as precluding the interpretation of a provision of national law to the effect that a protective measure in the form of destruction of goods relates only to goods illegally manufactured or illegally marked, and cannot be applied to goods illegally placed on the market in the [EEA] which cannot be found to have been illegally manufactured or illegally marked?’

The Court’s decision:

Article 10(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:

precluding the interpretation of a provision of national law according to which a protective measure in the form of the destruction of goods may not be applied to goods which have been manufactured and to which an EU trade mark has been affixed, with the consent of the proprietor of that mark, but which were placed on the market in the European Economic Area without his or her consent.

Can a trademark be invalidated even if the claim for the lawsuit is withdrawn? – an EU Court decision

The European Court has ruled in an important case C‑256/21 KP v TV, Gemeinde Bodman-Ludwigshafen, which concerns the issue of to what extent one trademark can be invalidated if the main claim for the lawsuit is withdrawn. The dispute has the following background:

KP is the proprietor of the EU word mark Apfelzügle (‘the contested mark’), registered on 19 October 2017 for services in Classes 35, 41, and 43. It is common ground that the term ‘Apfelzügle’ denotes a vehicle designed for the harvesting of apples, consisting of several trailers pulled by a tractor.

On 26 September 2018, TV, which operates a fruit farm, and the Municipality of Bodman-Ludwigshafen published promotional information on an activity involving the harvesting and tasting of apples as part of a ride on the Apfelzügle.

KP brought an action for infringement of the contested mark before the Regional Court, Munich, Germany, seeking an order prohibiting TV and the Municipality of Bodman-Ludwigshafen from using the term ‘Apfelzügle’ for the services covered by that mark. Before that court, TV and the Municipality of Bodman-Ludwigshafen filed counterclaims for a declaration of invalidity of the contested mark, pursuant to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c) and (d) thereof.

At the hearing before the Regional Court, Munich, KP withdrew his action for infringement.

TV and the Municipality of Bodman-Ludwigshafen having pursued their counterclaims in spite of that withdrawal, the Landgericht München (Regional Court, Munich), by a judgment of 10 March 2020, held that those claims were admissible, declared the contested mark invalid in respect of the services in Class 41 and rejected the claims in question as to the remainder.

The Municipality of Bodman-Ludwigshafen appealed against that judgment before the Higher Regional Court, Munich, Germany – the referring court – seeking a declaration of invalidity of the contested mark also as regards the services in Classes 35 and 43.

In its decision, the referring court states that it must first assess the admissibility of the counterclaims brought by the defendants in the light of the withdrawal by KP, noting that it is not bound on that point by the decision of the court of first instance.

In that regard, relying on the spirit and purpose of the counterclaim provided for by Regulation 2017/1001, the referring court expresses doubts as to whether an EU trademark court may rule on such a counterclaim if there has been a withdrawal of the action for infringement in response to which the counterclaim was brought.

Specifically, the referring court notes that the registration of an EU trademark is an act of a body of the European Union and that national courts do not have jurisdiction to annul such acts, save in the case of an exception expressly provided for, such as that of the filing of a counterclaim, which is, moreover, confirmed in Article 128(7) of Regulation 2017/1001. In the view of the referring court, EUIPO has ‘jurisdiction in principle’ in the matter, which is conferred on it ‘as a matter of priority’. That follows, inter alia, from Article 63(1) of Regulation 2017/1001.

The referring court observes that, according to the predominant view in German legal literature, a case such as the present one comes not within the scope of Regulation 2017/1001 but rather, pursuant to Article 129(3) of that regulation, within the scope of the rules governing German civil procedure and, specifically, of Paragraph 261(3)(2) of the ZPO, according to which the jurisdiction of the EU trade mark court established as a result of the filing of a counterclaim is independent of the outcome of the action for infringement and cannot therefore cease to exist in the event that that action is withdrawn.

However, in the view of the referring court, the need to give the defendant an opportunity to defend himself or herself no longer exists where, as a result of a withdrawal, there is no longer any need for the EU trademark court to rule on the action for infringement. That interpretation is, moreover, supported by the judgment of 19 October 2017, Raimund (C‑425/16, EU:C:2017:776). Thus, national procedural law should apply only for as long as an action provided for under EU law is pending. Furthermore, such an interpretation would not place an undue and disproportionate burden on the counterclaimant, since he or she will still be able to bring proceedings before EUIPO under Article 63 of Regulation 2017/1001.

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

‘Must Article 124(d) and Article 128 of Regulation 2017/1001 be interpreted as meaning that the EU trademark court has jurisdiction to rule on the invalidity of an EU trademark asserted by a counterclaim within the meaning of Article 128 of Regulation 2017/1001 even after the action for infringement based on that EU trade mark for the purposes of Article 124(a) [of that regulation] has been validly withdrawn?’

The Court’s decision:

Article 124(a) and (d) and Article 128 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark,

must be interpreted as meaning that an EU trademark court hearing an action for infringement based on an EU trade mark the validity of which is challenged by means of a counterclaim for a declaration of invalidity still has jurisdiction to rule on the validity of that mark, in spite of the withdrawal of the main action.

Breaking news – the Unified Patent Court opens its doors

The UPC Preparatory team announced that the Unified Patent Court will open its doors on 01.04.2023. From that date, the Court will start to receive new cases.

As it is well-known the Unified Patent Court will supplement and strengthen the existing centralized European patent granting system. The idea behind the implementation of this new cross-EU court is to save money and time for patent owners when they try to enforce their rights in the EU. So far this was a challenge because patent enforcement has happened only on a national level in every single EU Member State. With the new supranational court, the EU tries to become more competitive for innovation owners and investors from around the world.

Is the bicycle’s design saddle visible when used or not – a key question for design protection in the EU

The Advocate General of the European Court M. SZPUNAR has issued his opinion in the case C‑472/21 Monz Handelsgesellschaft International mbH & Co. KG срещу Büchel GmbH & Co. Fahrzeugtechnik KG.

This case focuses our attention on the question of to what extent a design incorporated into a complex product should be visible in order to be suitable for industrial design protection. The case has the following background:

Monz Handelsgesellschaft International mbH & Co. KG (‘Monz’) is the holder of design No 40 2011 004 383-0001, registered at the German Patent and Trade Mark Office, DPMA since 3 November 2011 for the products ‘saddles for bicycles or motorbikes’. The design is registered with the following single representation showing the underside of a saddle:

On 27 July 2016, Büchel GmbH & Co. Fahrzeugtechnik KG (‘Büchel’) lodged an application with the DPMA for a declaration of invalidity of the contested design, claiming that it did not meet the necessary conditions for protection as to novelty and individual character. It asserted that the design was excluded from protection under Paragraph 4 of the DesignG on the ground that, as a component part of a complex product such as a ‘bicycle’ or a ‘motorcycle’, it was not visible during normal use.

By decision of 10 August 2018, the DPMA rejected the application for a declaration of invalidity, holding that there were no grounds to exclude the contested design from protection under Paragraph 4 of the DesignG. In its view, although it was true that the design applied for in relation to ‘saddles for bicycles [or] motorbikes’ was a ‘component part of a complex product’, that component nevertheless remained visible during normal use of that complex product. The DPMA considered that normal use also covered ‘the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work’, especially since Paragraph 1(4) of the DesignG contains ‘an exhaustive list of non-normal uses for the purposes of Paragraph 4 of the DesignG, designed as an exception and, as such, to be interpreted strictly’. The DPMA held that it followed from that provision that ‘any use by the end user which is not maintenance, servicing or repair work … therefore constitutes normal use’.

Following an objection lodged by Büchel against that decision, the Federal Patent Court, Germany declared the contested design invalid, by decision of 27 February 2020, on the ground that it did not satisfy the requirements of novelty and individual character. According to the Bundespatentgericht, under Paragraph 4 of the DesignG, only components which remain ‘visible, as component parts of the complex product, after they have been mounted/incorporated in it’ are automatically eligible for design protection. Conversely, a perspective which arises only because or when the component part of a complex product is detached cannot establish visibility such as to preclude exclusion from protection under Paragraph 4 of the DesignG. The Bundespatentgericht considered only riding a bicycle and getting on and off a bicycle as normal use for the purposes of Paragraph 1(4) of the DesignG. In its view, during such uses, the underside of the saddle is not visible either to the end-user or to another person. Monz has brought an appeal against that decision before the referring court.

In those circumstances, the Federal Court of Justice, Germany decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1. Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of [Directive 98/71] if it is objectively possible to recognize the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?

2. If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:

(a) When assessing the “normal use” of a complex product by the end-user within the meaning of Article 3(3) and (4) of [Directive 98/71], is it the use intended by the manufacturer of the component part or complex product that is relevant, or the customary use of the complex product by the end user?

(b) What are the criteria for assessing whether the use of a complex product by the end user constitutes a “normal use” within the meaning of Article 3(3) and (4) of [Directive 98/71]?’

The Advocate General’s opinion:

1. Article 3(3) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as meaning that

  • in order for a design applied to or incorporated in a product which constitutes a part of a complex product to enjoy protection under that directive, the component in question must be visible in the situation of normal use of that complex product.

2.  Article 3(4) of Directive 98/71 must be interpreted as meaning that

  • the words ‘normal use’ refer to all situations which may reasonably arise during use of a complex product by the end user.

If this is confirmed by the Court it will mean that designs incorporated into complex products will have broader scope for interpretation of what exactly is a visible use.

CAT won a tiger trademark dispute in the EU

The General Court of the European Union has ruled in the case T‑251/21, Tigercat International Inc. v Caterpillar Inc., that has the following background:

 On 26 August 2013, Tigercat International Inc. filed an application for registration of an EU trademark for Tigercat in class 7: specialised power-operated forestry equipment, namely, purpose built four wheel drive-to-tree and track type log bunchers, log loading machines, skidders and other forestry industry equipment, namely, bunching saws, bunching shears and components parts thereof.

Against this application, an opposition was filed from Caterpillar Inc. based on an earlier word mark CAT and the following combined mark, both in classes 7 and 12, including for forestry machines:

The EUIPO upheld the opposition in its entirety finding both signs similar enough. The decision was appealed.

The General Court found similarities and identities between the goods of the marks. When it comes to the signs themselves, the Court concluded that the relevant public can recognize two separate words in the later mark – Tiger and Cat because both have their own distinctive meaning.

According to the Court:

In the present case, the mere fact that the element ‘tiger’ has been placed at the beginning of the mark applied for is not sufficient to confer on it a dominant character. There is nothing to indicate that the average consumer of the relevant public will attach more importance to the element ‘tiger’ at the beginning of the mark applied for. That aspect is counterbalanced by the fact that the mark applied for is composed only of two relatively short words, which, although they are directly juxtaposed, each has a clear meaning for the relevant public. Thus, contrary to what the applicant submits, the element ‘cat’, which has a specific meaning distinct from the element ‘tiger’, does not have merely a laudatory connotation intended to highlight the element ‘tiger’.

In the present case, the Board of Appeal noted that the signs at issue had the element ‘cat’ in common, whereas they differed in the presence of the first element of the mark applied for, namely the word element ‘tiger’, and in the figurative elements of the earlier mark. It concluded from that that they had an average degree of visual similarity.

That assessment is irreproachable. Although the applicant takes the view that the signs at issue are visually different because of their different length and the presence of capital letters and figurative elements in the earlier mark, the fact remains that they coincide in the element ‘cat’, which constitutes the only word element of the earlier mark and has a distinctive character. The fact that the earlier mark is wholly included in the mark applied for is liable to create both a strong visual and phonetic similarity between the marks at issue, even where the relevant public has a high level of attention. The presence of the element ‘tiger’ – which is not dominant – at the beginning of the mark applied for does not lead to the conclusion that the signs at issue are dissimilar.

In the present case, it should be noted that the signs at issue differ in that the mark applied for contains, as an element placed at the beginning of that mark, the two syllables ‘ti’ and ‘ger’, whereas the earlier mark only contains the common element ‘cat’. Nonetheless, the fact remains that that common element could be pronounced when the goods at issue are purchased, thus justifying the Board of Appeal’s finding that the signs at issue are phonetically similar at least to an average degree.

Since the mark applied for, which is composed of the elements ‘tiger’ and ‘cat’, also refers to the concept of a ‘cat’, it should be concluded that the Board of Appeal was correct to conclude that the signs at issue were conceptually highly similar.

Against this backdrop, the Court dismissed the appeal and upheld the EUIPO’s decision.