Lewis Hamilton lost a dispute for his name in the EU

Lewis Hamilton, the seven-time Formula One champion, lost a trademark dispute for his name in the EU.

The case concerns a EU trademark application for HAMILTON filed in 2014 by the Swiss watchmaker Hamilton International in classes 9 and 14.

The company that manages Lewis Hamilton’s intellectual property rights 44IP filed an application for a declaration of invalidity against all the goods of the EUTM on the grounds laid down in Article 59(1)(b) EUTMR, bad faith, and Article 59(1)(a) EUTMR in conjunction with Article 7(1)(f) EUTMR, registration of the contested mark contrary to public policy.

According to the 44IP, the reason why Hamilton International filed this EU trademark was to secure broader scope of goods because their identical earlier mark was attacked for non-use in a past dispute between both parties.

The EUIPO dismissed this claim. According the the practice of the European Court: ‘the lack of clarity and precision of the terms used to designate the goods or services covered by the registration of a national trademark or a European Union trademark cannot be considered a ground for invalidity of the national trademark or European Union trade mark concerned’.

The Court moreover held that ‘in accordance with its usual meaning in everyday language, the concept of “bad faith” presupposes the presence of a dishonest state of mind or intention, regard must be had, for the purposes of interpreting that concept, to the specific context of trade mark law, which is that of the course of trade. Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark. (…)


Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark’

In the case at hand, Hamilton International proved that they had been using their trademark for many years since 1892, way before the well-known sportsman were born.

In addition, the EUIPO considered that the earlier marks for LEWIS HAMILTON were not a reason the later mark to be stopped because Hamilton is a widespread name in the English speaking countries.

Source: ESPN.com

Phonograms and equitable compensation – an EU Court decision

The European Court has ruled in case  C‑147/19 Atresmedia Corporación de Medios de Comunicación S.A. v Asociación de Gestión de Derechos Intelectuales (AGEDI), Artistas Intérpretes o Ejecutantes, Sociedad de Gestión de España (AIE).

On 29 July 2010, AGEDI and AIE brought an action before the Commercial Court, Madrid, Spain against Atresmedia seeking payment of compensation in respect of acts of communication to the public of phonograms published for commercial purposes, or reproductions of those phonograms, carried out between 1 June 2003 and 31 December 2009 via the television channels operated by Atresmedia, and for the unauthorised reproduction of phonograms in connection with those acts of communication to the public.

Since that action was declared unfounded by the Commercial Court, Madrid, AGEDI and AIE brought an appeal against that court’s judgment before the Provincial Court, Madrid, Spain, which set aside that judgment and upheld their application in its entirety.

Atresmedia brought an appeal on a point of law before the referring court against the judgment of the Provincial Court, Madrid.

The referring court notes that the appeal relates exclusively to whether the communication to the public of audiovisual works carried out by Atresmedia via its television channels gives rise to the right to the single equitable remuneration provided for in Spanish law in Article 108(4) and Article 116(2) of the LPI, which correspond, in EU law, to Article 8(2) of Directive 92/100 and to Article 8(2) of Directive 2006/115. In particular, that court states that it falls to it to determine whether, from the moment when a phonogram published for commercial purposes, or a reproduction of that phonogram, has been incorporated or ‘synchronised’ in an audiovisual recording containing the fixation of an audiovisual work, the performers and phonogram producers concerned may demand that single equitable remuneration.

The referring court adds that since AGEDI and AIE claim compensation from Atresmedia in respect of the communication to the public of audiovisual works carried out between 1 June 2003 and 31 December 2009, both Directive 92/100 and Directive 2006/115 are applicable rationae temporis to the main proceedings.

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

‘(1)  Does the concept of the “reproduction of a phonogram published for commercial purposes” referred to in Article 8(2) of Directives 92/100 and 2006/115 include the reproduction of a phonogram published for commercial purposes in an audiovisual recording containing the fixation of an audiovisual work?

(2) In the event that the answer to the previous question is in the affirmative, is a television broadcasting organisation which, for any type of communication to the public, uses an audiovisual recording containing the fixation of a cinematographic or audiovisual work in which a phonogram published for commercial purposes has been reproduced, under an obligation to pay the single equitable remuneration provided for in Article 8(2) of the aforementioned directives?’

The Court’s decision:

Article 8(2) of Council Directive 92/100/EEC of 19 November 1992 on rental right and lending right and on certain rights related to copyright in the field of intellectual property and Article 8(2) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property must be interpreted as meaning that the single equitable remuneration referred to in those provisions must not be paid by the user where he or she makes a communication to the public of an audiovisual recording containing the fixation of an audiovisual work in which a phonogram or a reproduction of that phonogram has been incorporated.

Sports cars are not just cars when it comes to trademarks – an EU Court’s decision

The General Court of the European Union has recently ruled in Case T‑677/19, Polfarmex S.A v EUIPO.

This case concerns an EU trademark SYRENA registered in 2011 for the following goods:

  • Class 9: ‘Computer and video game programs and software, none of the aforesaid goods relating to the aeronautical field, and in particular helicopters and rotorcrafts’;
  • Class 12: ‘Motor vehicles for locomotion by land and parts therefor (included in Class 12)’;
  • Class 28: ‘Games and playthings, model vehicles; scale model vehicles made of all materials, in particular paper model vehicles and die-cast model vehicles or plastic model vehicles’.

In 2016, Polfarmex filed an application for revocation of this mark based on lack of a genuine use for a period of 5 years.

The EUIPO revoked the mark for all goods with an exception of class 12 – cars.

Although there weren’t many invoices for sales of cars under this mark, the Office concluded that this is normal because the mark had been used only for sport cars. The market and demand of these cars is limited compare with the traditional vehicles. Due to this fact, advertisement and preparation related to the mark was deemed as sufficient. The decision was appealed.

According to the Court:

As is apparent from the case-law, it is common knowledge that the market for high-end sports cars with technical specifications that are not intended for normal, everyday road use and the price of which exceeds that of most private use cars is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles. The Court held that, in such circumstances, the provision of accounting documents setting out sales figures or invoices is not necessary for the purposes of establishing genuine use of the mark in question. Further, the Court noted that publications demonstrated that the mark in question was the subject matter of public discussion in anticipation of a revival of production and sale of a car model bearing the mark in question.

 It follows that, having regard to the specific features of the relevant market, duly taken into account by the Board of Appeal when it relied on the case-law cited in paragraph 70 above, the evidence produced by the intervener shows the existence of various preparatory tasks and advertising efforts in relation to the SYRENA Meluzyna R model. Moreover, it shows, as contended by EUIPO, not only that the car was about to be marketed, but also that it was available to order.

To the question to what extent sport cars can cover the whole cattegory of vehichles, however, the General Court disagreed with the EUIPO.

According to the Court:

Contrary to EUIPO’s claim, racing cars are capable of constituting a coherent subcategory, for, unlike cars, their purpose is not the same as that of vehicles intended to carry a driver and passengers. Those cars, as acknowledged by the Board of Appeal in paragraph 61 of the contested decision, are not intended to be driven on public roads and such use is even prohibited on account of the absence of type approval. Their purpose is therefore different from that of other cars.

It follows that, to the extent that genuine use of the mark has been established in relation to racing cars alone, which constitute an independent subcategory within the meaning of the case-law cited in paragraph 116 above, the Board of Appeal was wrong to find that genuine use had been shown in respect of cars in Class 12. On that basis, the second complaint of the third plea and the fourth plea must be upheld and the contested decision must be annulled to the extent that it upheld the registration of the contested mark in respect of ‘cars’ in Class 12, with the exception of ‘racing cars’, in respect of which registration must be upheld.

Glaxo Group lost a colorful dispute in the EU

The General Court of the European Union has ruled in case T‑ 187/19, Glaxo Group Ltd v EUIPO.

It concerns an attempt by Glaxo to register the following European color trademark for inhalers and pharmaceutical preparations for the treatment of asthma and/or chronic obstructive pulmonary disease in Classes 5 and 10:

The EUIPO refused the application based on absolute grounds – lack of a distinctive character. In the appeal the Board of Appeal upheld this decision.

The BoA found that, in view of the goods, the choice of colours referred to the main active ingredients, the use for which the medicinal product is intended and its characteristics. It also found that the relevant public had a specific interest in having colours kept available for competitors in the market of pharmaceuticals, since patients are inclined to take a generic pharmaceutical product more regularly, and even more so if the presentation of the medicinal product is similar to that of the original product. The Boarded concluded that the sign was not distinctive at all.

The General Court of the EU dismissed the followed new appeal. According to the Court registration of single color is possible in very limited cases and under specific circumstances., otherwise such a color cannot be perceived as a source of trade origin.

The evidence submitted by Glaxo for an acquired secondary distinctiveness was not enough to overcome this conclusion.

For example, it wasn’t clear whether the provided opinion surveys in only 10 Member States were representative or not. The Court considers small samples (100-200 people) as not reliable.

Apart from this, the interviewees, whether healthcare professionals or patients, were shown only one image representing a shade of the colour purple. They were therefore not asked to choose from several images or even shades which one could spontaneously be associated with a particular undertaking.

The originals of the colour samples annexed to the surveys carried out in certain Member States include a shade of purple different
to that of the other samples, or even represent a certain type of inhaler and not a colour.

The Court regarded the sales data and advertisement materials only as secondary evidence which may support, where relevant, direct evidence of distinctive character acquired through use, such as that provided by the surveys.

Source: Alicante News.

Ferrari won an important lawsuit in the EU for its TESTAROSSA trademark and for the entire industry of old luxury cars

The European Court has ruled in joined cases C‑720/18 и C‑721/18 Ferrari SpA v DU.

These cases are important especially for manufacturers of luxury vehicles because they shed a light on the issue of old famous trademarks that are not completely used from the companies anymore.

The cases background is as follow:

Ferrari is the proprietor of the trade mark TESTAROSSA.

That mark was registered with the World Intellectual Property Organisation on 22 July 1987 as international trade mark 515 107 in respect of the following goods in Class 12 : ‘Vehicles; apparatus for locomotion by land, air or water, in particular motor cars and parts thereof.’

The same mark was also registered with the German Patent and Trade Mark Office on 7 May 1990 as mark No 11158448 for the following goods in Class 12: ‘Land vehicles, aircraft and water vehicles and parts thereof; motors and engines for land vehicles; car components, i.e. tow bars, luggage racks, ski racks, mudguards, snow chains, air deflectors, head restraints, seat belts, child safety seats.’

Since the Regional Court, Düsseldorf, Germany ordered the cancellation, on grounds of revocation, of the two Ferrari marks referred to in paragraphs 14 and 15 of this judgment (together ‘the marks at issue’) on the ground that, during a continuous period of five years, Ferrari had not made genuine use of those marks in Germany and in Switzerland, in respect of the goods for which they are registered, Ferrari appealed against the decisions of that court before the Higher Regional Court, Düsseldorf, Germany.

The referring court states that Ferrari sold a sports car model under the designation ‘Testarossa’ between 1984 and 1991 and sold the follow-up models 512 TR and F512 M until 1996. According to the referring court, in 2014, Ferrari produced a one-off piece with the model designation ‘Ferrari F12 TRS’. It is apparent from the order for reference that, during the period relevant to the assessment of the use of the marks at issue, Ferrari used those trade marks to identify replacement and accessory parts of very high-priced luxury sports cars previously sold under those trade marks.

Taking the view that the use of a mark does not always have to be extensive in order to be genuine, and also taking into account the fact that Ferrari used the marks at issue in respect of high-priced sports cars which are typically only produced in small numbers, the referring court does not share the view expressed by the court of first instance that the extent of use demonstrated by Ferrari is not sufficient to establish genuine use of those marks.

However, according to the referring court, it is doubtful whether account may be taken of such particular features in the case of the marks at issue, since those marks were registered not in respect of high-priced luxury sports cars, but generally in respect of motor cars and parts thereof. The referring court takes the view that, if account is taken of whether the marks at issue have been put to genuine use in the mass market for motor cars and parts thereof, it would be necessary to find at the outset that no such use has been made of them.

The referring court adds that Ferrari claims to have resold, after inspection, used vehicles bearing the marks at issue. The court of first instance did not regard that as renewed use of the marks at issue since, following the first release onto the market of the goods bearing those marks, the rights which Ferrari derived from them had been exhausted and it was not in a position to prohibit the resale of those goods.

Since the concept of ‘right-maintaining use of a mark’ cannot go further than that of right-infringing use of a mark, acts of use which the proprietor of that mark cannot prohibit third parties from performing, cannot, according to the court of first instance, constitute right-maintaining use of that mark. For its part, Ferrari claimed that the sale of used vehicles bearing the marks at issue thereby comprised a renewed commitment in respect of the vehicle concerned and therefore constituted a renewed right-maintaining use of the marks at issue.

The referring court adds that, in the main proceedings, Ferrari claimed that it provided replacement and accessory parts in respect of the vehicles bearing the marks at issue and offered maintenance services for those vehicles. In that regard, the referring court states that the court of first instance found that, between 2011 and 2016, turnover of approximately EUR 17 000 was achieved with the replacement parts actually sold by Ferrari in respect of the vehicles bearing the marks at issue, which was not sufficient to constitute right-maintaining use of the marks at issue. It is true that there are only 7 000 vehicles worldwide bearing the marks at issue. However, that fact alone does not explain the small quantities of replacement parts sold under the marks at issue.

While being aware of the case-law arising from the judgment of 11 March 2003, Ansul (C–40/01, EU:C:2003:145), the referring court observes, first, that it follows from the ‘Guidelines for examination of European Union trade marks’ (Part C, Section 6, No 2.8) of the European Union Intellectual Property Office (EUIPO) that the application of that case-law should remain exceptional. 

Second, the referring court takes the view that there is a particular feature in the main proceedings, since the marks at issue also claim protection in respect of parts of motor cars, so that the application of the case-law arising from the judgment of 11 March 2003, Ansul (C–40/01, EU:C:2003:145) would mean that the marks at issue which have been used in respect of parts of motor cars are also used in respect of the motor cars, even if those motor cars have not been sold under those marks for more than 25 years. Furthermore, the question arises of whether genuine use of a mark can result from the fact that its proprietor still holds replacement parts and offers services in respect of the goods previously sold under that mark, but does not use that trade mark to designate those parts or services.

In relation to the territorial extent of the use required by Article 12(1) of Directive 2008/95, the referring court notes that that provision requires use ‘in the Member State concerned’. Relying on the judgment of 12 December 2013, Rivella International v OHIM (C–445/12 P, EU:C:2013:826, paragraphs 49 and 50), it notes that the Court has held that the use of a trade mark in Switzerland does not prove genuine use of the trade mark in Germany. However, the case-law of the Federal Court of Justice, Germany assumes that the Convention of 1892 is still in force and is to be applied by the German courts, having regard to Article 351 TFEU. Such an application could, nevertheless, give rise to difficulties, in the case of a German trade mark which, although it cannot be cancelled under German law, cannot be relied on in opposition proceedings to preclude the registration of a trade mark of the European Union either.

Lastly, the referring court observes that, in the main proceedings, the question also arises as to which party must bear the burden of proving genuine use of a trade mark. In accordance with German case-law, the general principles of civil procedure are to be applied, which means that, also in the case of an application for revocation for non-use of a registered mark, it is the party bringing the action which bears the burden of proving the facts on which that application is based, even if these facts are negative facts, such as the lack of use of a mark.

In order to take into account the fact that the precise circumstances of the use of a mark are often beyond the knowledge of the applicant for revocation, German case-law imposes on the proprietor of the trade mark concerned a secondary burden to explain in a substantiated and comprehensive manner how it has used it. Once the proprietor of the trade mark has discharged that burden of explanation, it is for the applicant for the cancellation of that mark to disprove those explanations.

The application of those principles to the main proceedings would mean that a ruling could be given on those proceedings without an evidentiary hearing, since Ferrari has sufficiently explained in a substantiated manner the acts of use which it performed and has also offered proof, although DU confines himself to contesting Ferrari’s submission without offering any proof of his own. He would therefore have to be regarded as not having discharged the burden of proof. If, on the other hand, that burden of proof was to lie with Ferrari, as the proprietor of the marks at issue, the proof offered by it would have to be examined.

In those circumstances, the Higher Regional Court, Düsseldorf decided to stay the proceedings and to refer the following questions, which are identical in both cases, to the Court of Justice for a preliminary ruling:

‘(1) When assessing the question of whether use is genuine in terms of nature and extent within the meaning of Article 12(1) of [Directive 2008/95] in the case of a trade mark which is registered in respect of a broad category of goods, in this case land vehicles, in particular motor cars and parts thereof, but is actually only used in respect of a particular market segment, in this case high-priced luxury sports cars and parts thereof, is account to be taken of the market for the registered category of goods overall or may account be taken of the particular segment? If the use in respect of the particular market segment is sufficient, is the trade mark to be maintained in relation to that market segment in cancellation proceedings due to revocation?

(2) Does the sale of used goods which have already been released onto the market by the trade mark proprietor in the European Economic Area constitute use of the trade mark by the trade mark proprietor within the meaning of Article 12(1) of [Directive 2008/95]?

(3) Is a trade mark which is registered not only in respect of a product, but also in respect of parts of that product also used in a right-maintaining manner in respect of the product if that product is no longer sold, but there are still sales of trademarked accessory and replacement parts for the trademarked product sold in the past?

(4) When assessing whether there is genuine use, is consideration also to be given to whether the trade mark proprietor offers services which do not use the trade mark but are intended for the goods already sold?

(5) When examining the use of the trade mark in the Member State concerned (in this case Germany) within the meaning of Article 12(1) of [Directive 2008/95], pursuant to Article 5 of the [Convention of 1892], are uses of the trade mark in Switzerland also to be taken into consideration?

(6)  Is it compatible with [Directive 2008/95] to require the trade mark proprietor against which action is being taken due to revocation of the trade mark to comprehensively explain the use of the trade mark, but to impose the risk of evidence not being furnished on the cancellation applicant?’

The Court’s decision:

1.  Article 12(1) and Article 13 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to ‘genuine use’ within the meaning of Article 12(1), in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered.

2.   Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark.

3.  Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark.

4.  The first paragraph of Article 351 TFEU must be interpreted as allowing a court of a Member State to apply a convention concluded between a Member State of the European Union and a non-member State before 1 January 1958 or, for States acceding to the European Union, before the date of their accession, such as the Convention between Switzerland and Germany concerning the Reciprocal Protection of Patents, Designs and Trademarks, signed in Berlin on 13 April 1892, as amended, which provides that the use of a trade mark registered in that Member State in the territory of the non-member State must be taken into consideration in order to determine whether that mark has been put to ‘genuine use’ within the meaning of Article 12(1) of Directive 2008/95, until such time as one of the steps referred to in the second paragraph of Article 351 TFEU makes it possible to eliminate any incompatibilities between the TFEU and that convention.

5. Article 12(1) of Directive 2008/95 must be interpreted as meaning that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of that provision, rests on the proprietor of that mark.

How weak is a trademark with a low distinctive element?

The General Court of the European Union has ruled in case T–602/19  Eugène Perma Franc v SPI Investments Group.

This case shows the risks when you want your trademark to include common, low distinctive words.

In the case at hand, Eugène Perma Franc applied for the following European trademark for Class 3 – Cosmetics and hair lotions:

Against this application an opposition was filed by SPI Investments Group based on an earlier trademark for the same class:

The EUIPO ruled that both signs are similar to average degree for identical goods and upheld the opposition.

In the appeal, the Board of appeal confirmed this decision stating that although NATURA has a weak distinctiveness, from visual and phonetic point of view the signs are similar for identical goods.

The decision was appealed again.

The General Court, however, disagreed with the EUIPO’s position.

According to the Court, the first part of the signs NATURA, which constitutes 60% of the marks, is a low distinctive element that is used by many companies in relation with cosmetics. Taking into account this, the end of the words “_NOVE” и “_LIUM” being completely different, create an independent impression which overcome the possibility for confusion even in the case of identical goods.

According to the court: “it is clear from the decision-making practice of the Boards of Appeal of EUIPO and the case-law of the Court that, although a company is free to choose a trade mark with a low degree of distinctiveness and use it on the market, it must accept, however in doing so, that competitors are equally entitled to use trademarks with similar or identical descriptive components”.

Migraine and trademarks – an EU Court decision

The European Court has ruled in two cases related to an attempt by Teva Pharmaceutical Industries to register the following European trademarks:

– Moins de migraine pour vivre mieux ( in French – Less migraine to live better)

– Weniger Migräne. Mehr vom Leben ( in German – Less migraines. More from life)

Both marks are applied for in classes:

– 16 Printed materials relating to the treatment of migraines.

– 44 Providing information relating to the treatment of migraines.

The EUIPO refused to register these slogans as trademarks based on absolute grounds – lack of distinctive character. According to the Office these slogans cannot indicate source of trade origin because they have clear and direct messages related to the goods and services in their applications.

Teva appealed before the European Court arguing that both sign are distinctive for these specific goods and services and adding the fact that the company already have registration for a similar slogan but in English – LESS MIGRAINE, MORE MOMENTS.

The EU Court upheld the EUIPO decision as correct. Although it is typical slogans to convey a message to consumers, they can be trademarks only in case they have the necessary level of distinctiveness.

In the case at hand, both slogans have a clear messages that suggests an alleviation of the migraine pain.

In contrast, the English slogan has more blurred and unusual nature which requires additional considerations by the consumers. That’s why it can serve as a trademark sign because it doesn’t provide a direct and clear meaning related to the goods and services.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB за Lexology.