Irish whiskey is now protected EU Geographical indication

drink-3108436_960_720.jpgThe European Commission confirmed the Irish whiskey status as a protected European Geographical indication. The scope of protection covers different variations of this whiskey such as malt Irish whiskey, pot still Irish whiskey, grain Irish whiskey, and blended Irish whiskey.

Irish whiskey has been known since the 6th Century. In the 19 Century, its production rose significantly and in the 20 Century, it became worldwide known.

In the future, this whiskey will be produced only on the territory of Irland under strict requirements and approved methods.

This is a strategic step for the Irish Whiskey Association because it gives an opportunity for legal protection against unfair competition and infringements. What’s more, the protection of this Geographical indication will be included in future trade negotiations between The EU and third parties which by itself is crucial for the Association taking into account its global sells.

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Breaking News – The EU Council approves DSM Directive

The EU Council has approved the DSM Directive. You can see how every Member State voted below:

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The next step is the transposition of this Directive into the national legislation of every EU Member State, which has to be done within 24 months.

Source: IP Kat.

Converse lost a dispute for a shoe sole in the EU

pexels-photo-1353361.jpegThe General Court of the European Union has ruled in the case T-611/17 All Star (Converse) v EUIPO – Carrefour Hypermarchés. The case concerns the following already registered figurative European trademark for classes 17, 25,35:

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Against this mark, an application for a declaration of invalidity was filed by the French company Carrefour based on Article 52(1)(a) EUTMR and Article 7(1)(b) and (e)(ii) and (iii) EUTMR.

EUIPO invalidated the trademark at hand concluding that it is not possible for consumers to perceive it as a sign for trade origin. According to the Office, the practice of using simple geometric shapes for soles are widespread, as can be seen for many examples:

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Consumers will look on them as something that will help them to walk easily, comfortably or securely but not as a sign for trade origin.

Although the Office made some mistakes when it comes to the scope of goods and services for which this invalidation is applicable (corrected after that), the General Court confirmed this decision in its entirety.

The EUIPO decision is accessible here.

Color or figurative trademarks – that’s the question

paint-2985569_960_720The European court has issued a decision on case C‑578/17 Oy Hartwall Ab v Patentti- ja rekisterihallitus, which focuses on how exactly a color trademark should be presented in a trademark application and how an acquired distinctiveness has to be proved. In detail this case concerns:

In 2012, Hartwall applied for the following color trademark in Finland, described as follows: ‘The colours of the sign are blue (PMS 2748, PMS CYAN) and grey (PMS 877)’ (‘the mark at issue’):

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The goods in respect of which registration was sought are in Class 32 ‘Mineral waters’.

Following a preparatory decision of the Intellectual Property Office, Hartwall clarified that it was applying for registration of the mark at issue as a ‘colour mark’, not a figurative mark.

The Finnish Patent Office rejected the application on the ground that the trade mark applied for was devoid of distinctive character.

In that regard, the Office highlighted that the exclusive right to register certain colours cannot be granted if it is not established that the colours in respect of which protection is sought have acquired distinctive character through long-term significant use.

The decision of the Finnish Patent Office stated that the market study produced by Hartwall showed that the reputation of the mark at issue was established not with regard to the colours as such but with regard to the figurative sign the contours of which are defined and determined. Therefore, contrary to the requirement resulting from that office’s consistent practice, it found that the colour combination in respect of which protection is sought has not been established as having been used to identify the goods offered by Hartwall for a sufficient length of time and sufficiently widely to have acquired distinctive character in Finland through use, as of the date on which registration was sought.

Hartwall appealed against this decision before the Market Court in Finland but the appeal was dismissed.

According to the court, the graphic representation of the sign in respect of which protection was sought did not include a systematic arrangement associating the colours concerned in a predetermined and uniform way and, therefore, that mark did not satisfy the requirements with regard to the graphic representation.

Hartwall appealed against the decision to the Supreme Administrative Court.

The Supreme Administrative Court highlights the importance of the case, in so far as the Intellectual Property Office is of the view that, as regards colour marks, the distinctive character of a sign must be proved by evidence of long-term significant use of the sign.

It is therefore unsure as to the consequences of the classification given to a sign by the person seeking protection of that sign under trademark law.

Because of this Supreme Administrative Court decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  For the interpretation of Article 2 of Directive [2008/95] and the condition relating to the distinctive character of a trade mark within the meaning of Article 3(1)(b) thereof, is it of relevance whether the trade mark is to be registered as a figurative mark or a colour mark?

(2)  If the classification of the mark as a colour mark or figurative mark is of importance in the assessment of its distinctive character, is the mark, regardless of its representation as a drawing, to be registered as a colour mark in accordance with the trade mark application, or can it be registered only as a figurative mark?

(3) If it is possible to register, as a colour mark, a mark represented in the form of a drawing in the trade mark application, is it necessary for the registration as a colour mark of a mark which has been graphically illustrated in the trade mark application with the accuracy required by the case-law of the Court of Justice relating to colour marks (and which is not the registration as a mark of a colour in itself, abstract, without shape or contours), is it necessary to submit in addition solid evidence of use as required by the [Intellectual Property Office] or any such evidence?’

According to the European court:

In the overall analysis of distinctive character by reference to the actual situation, it is necessary to examine whether and to what extent the systematically arranged colour combination is capable of conferring inherent distinctive character on the sign in question.

Consequently, the answer to the first question is that Articles 2 and 3(1)(b) of Directive 2008/95 must be interpreted as meaning that the classification as a ‘colour mark’ or ‘figurative mark’ given to a sign by the applicant on registration is a relevant factor among others for the purpose of establishing whether that sign can constitute a trade mark within the meaning of Article 2 of the directive and, if so, whether it is distinctive within the meaning of Article 3(1)(b) of that directive, but does not release the competent trade mark authority from its obligation to carry out a global assessment of distinctive character by reference to the actual situation of the mark considered, which means that that authority cannot refuse registration of a sign as a mark on the sole ground that that sign has not acquired distinctive character through use in relation to the goods or services claimed.

In the present case, the sign protection in respect of which is sought is represented by a figurative drawing, whereas the verbal description relates to a protection concerning two colours alone, that is, blue and grey. Moreover, Hartwall has clarified that it seeks to register the mark at issue as a colour mark.

Those circumstances appear to reveal an inconsistency showing that the application for protection under trade mark law is unclear and imprecise.

Consequently, the answer to the second question is that Article 2 of Directive 2008/95 must be interpreted as precluding, in circumstances such as those in the main proceedings, the registration of a sign as a mark due to an inconsistency in the application for registration, which it is for the referring court to ascertain.

Breaking news – EU Parliament gave its approval to the EU copyright reform

2048393.jpgToday, 26.03.2018, the European Parliament approved the controversial copyright reform with 348 votes in favor, 274 against. This brings the reform one step closer to its final adoption in the EU. What will follow is formal approval by the European ministers. In a nutshell this reform concerns:

  • Social media platforms will have to keep even a closer eye on every possible copyright violation;
  • Web content providers will have to sign license agreements with right holders;
  • News providers will have to negotiate and get a license from publishers in order to use their news and articles;
  • Non-profit organizations, including websites such as Wikipedia, are not bound to these rules;
  • Startup companies with annual turnover up to 10 million dollars are excluded too.

More information can be found here.

Source: DW.

 

 

Furnishing fabric can be a trademark – a decision by the EU Court

sofa-2155865_960_720.jpgThe European Court has issued a decision in case C‑21/18 Textilis Ltd, Ozgur Keskin v Svenskt Tenn AB, which concerns the following:

Svenskt Tenn markets and sells furniture and furnishing fabrics and other decorative accessories.

During the 1930s, Svenskt Tenn started to work with the architect, Joseph Frank, who designed various patterns for furnishing fabrics for it, including a pattern called MANHATTAN, which it markets and sells and in respect of which Svenskt Tenn claims to be the holder of rights under copyright law.

On 4 January 2012, Svenskt Tenn filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO). That figurative mark, designated MANHATTAN, was registered under number 010540268.

The goods and services for which that mark has been registered are in Classes 11, 16, 20, 21, 24, 27 and 35 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, and correspond to inter alia, lampshades (Class 11), table cloths, table napkins of paper; coasters of paper; wrapping paper; writing or drawing books (Class 16), furniture (Class 20), household or kitchen utensils and containers; brushes; glassware, porcelain and earthenware not included in other classes (Class 21), textiles and textile goods, not included in other classes; bed and table covers (Class 24), carpets; wall hangings (non-textile); wallpaper (Class 27), retail services connected with the sale of furniture, cushions, mirrors, wallpaper, carpets, lamps, textile fabrics, textile products, fancy goods, household and kitchen utensils and containers, tableware, glassware, porcelain, earthenware, candlesticks, paper napkins, bags, jewellery, books and magazines (Class 35).

The figurative mark MANHATTAN is represented as follows:

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Textilis is a company incorporated under English law, owned by Mr Keskin, whose online trading activity began in 2013. The company has marketed fabrics and goods for interior decoration bearing patterns similar to those of the figurative mark MANHATTAN.

Svenskt Tenn brought an action for infringement of the trade mark MANHATTAN of which it is the proprietor and an action for infringement of its copyright against Textilis and Mr Keskin before the Stockholms tingsrätt (District Court, Stockholm, Sweden). It also applied for an order that Textilis and Mr Keskin, on pain of a penalty, be prohibited, first, from marketing or distributing in any other way to the Swedish public certain designated objects and, second, from using that mark in Sweden for fabrics, cushions and furniture.

In response to those actions, Textilis and Mr Keskin brought before that court a counter-claim for a declaration that the trade mark MANHATTAN is invalid, in that, first, it lacks distinctive character and, second, having regard to the way in which it is used, it is made up of a shape which gives substantial value to the goods, within the meaning of Article 7(1)(e)(iii) of Regulation No 207/2009.

The Stockholms tingsrätt (District Court, Stockholm) dismissed the counterclaim, inter alia on the grounds that, first, under Article 4 of Regulation No 207/2009, all signs capable of being represented graphically, in particular drawings may be EU trade marks, provided that they have a distinctive character and, second, the mark MANHATTAN is not a shape within the meaning of Article 7(1)(e)(iii) of that regulation.

The Stockholms tingsrätt (District Court, Stockholm) ruled that Textilis and Mr Keskin had infringed the trade mark MANHATTAN and, moreover, had infringed the copyright of which Svenskt Tenn was also the proprietor.

Textilis and Mr Keskin appealed against that judgment before the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm), seeking, inter alia, a declaration, on the basis of Article 7(1)(e)(iii) of Regulation No 207/2009, that the trade mark MANHATTAN is invalid.

In support of their appeal, they argue that a sign consisting of the pattern on a fabric cannot be registered as a trade mark without subverting the principle of the limitation in time of copyright protection. They are of the view that this is why Article 7(1)(e)(iii) of Regulation No 207/2009 precludes the registration as a trade mark of signs which consist exclusively of a shape which gives substantial value to the goods.

Conversely, Svenskt Tenn contends that signs consisting of the shape of patterns may be registered as EU trade marks, such as the figurative mark MANHATTAN.

The Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm) seeks to ascertain whether a figurative mark such as MANHATTAN, which consists of the two-dimensional representation of two-dimensional goods, such as fabric, can be regarded as a shape within the meaning of that provision. It underlines in this respect that it is clear from Article 7(1)(e)(iii) of Regulation No 207/2009 that the ground for invalidity provided for in that provision applies to three-dimensional and two-dimensional marks representing three-dimensional shapes, such as, for example, the representation of a sculpture or a vase, as held by the EFTA Court, in paragraphs 110 to 115 of its judgment of 6 April 2017, Norwegian Board of Appeal for Industrial Property Rights — appeal from the municipality of Oslo (E-05/16), or, as the Court of Justice held in the judgment of 18 June 2002, Philips (C‑299/99, EU:C:2002:377).

It is unsure, however, whether such a ground of invalidity may apply to two-dimensional marks that represent two-dimensional goods, such as, for example, a pattern on a fabric or the reproduction of a painting. In that regard, it observes that it would be paradoxical not to accept such a ground for refusal of registration for such cases, in so far as there is no justification for a difference in treatment between sculpture, which is three-dimensional, and painting, which is two-dimensional.

It states that, unlike the mark at issue in the case which gave rise to the judgment of 12 June 2018, Louboutin and Christian Louboutin (C‑163/16, EU:C:2018:423), which consisted of a colour applied to the sole of a shoe, the figurative mark MANHATTAN at issue in the case pending before it is a work protected by copyright.

It queries whether the amendment of Article 7(1)(e)(iii) of Regulation No 207/2009 by Regulation No 2015/2424, under which registration is refused not only for signs which consist exclusively of ‘the shape’, but also ‘another characteristic of the goods’, which gives substantial value to it, is capable of altering the assessment to be made by virtue of that ground for invalidity. In that regard, it wishes to know whether, in the case before it, Regulation No 207/2009 or Regulation No 207/2009, as amended, taking account of the fact that the date of registration of the mark MANHATTAN, like that of the application for a declaration of invalidity and that of the judgment at first instance under appeal, is prior to 23 March 2016, the date of entry into force of Regulation 2015/2424.

 It states that, in any event and whatever the applicable version of Article 7(1)(e)(iii), if it is accepted that that provision applies to two-dimensional marks representing two-dimensional goods, the question arises as to the criteria for determining whether a sign such as that at issue in the main proceedings, may be regarded as consisting ‘exclusively of the shape which gives substantial value to the goods’ where the registration of that sign as a trade mark relates to a number of classes of goods and that the mark is designed in such a manner that it can cover the whole or substantial parts of the goods or be used as a logo.

In that regard, it points out the difficulty in assessing such a ground of invalidity, since the applicant for the trade mark is required only to indicate the goods for which it intends to use the mark and not to specify the practical conditions of use of the sign for which it seeks protection.

Thus, as the case may be, a mark may be affixed to the goods as a whole, like, for example, a furnishing fabric, paper or a tray, so that it becomes a key feature of the goods themselves and, in many of those cases, there is identity between the trade mark and the goods, or it may occupy a minor position on the goods, in particular where the mark is used as a logo.

In the light of those facts, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm) decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling:

‘1.  Is Article 4 of [Regulation 2015/2424] to be interpreted as meaning that Article 7(1)(e)(iii), in its new wording, is applicable to a court’s assessment of invalidity (under Article 52(1)(a) of the Trade Marks Regulation) that is made after the entry into force of the amendment, namely after 23 March 2016, even if the action concerns a declaration of invalidity where the action was brought before that date and therefore concerns a trademark registered before that date?

2. Is Article 7(1)(e)(iii) of [Regulation No 207/2009], in the version applicable, to be interpreted as meaning that its scope covers a sign which consists of the two-dimensional representation of a two-dimensional product, for example fabric decorated with the sign in question?

3.  If the answer to question 2 is in the affirmative, according to what principles is the wording ‘signs which consist exclusively of the shape (or another characteristic) which gives substantial value to the goods’ in Article 7(1)(e)(iii) of [Regulation No 207/2009, as amended,] to be interpreted, in a situation where the registration covers a wide range of classes of goods and goods and the sign may be affixed in different ways to the goods? Is the assessment to be made in accordance with more objective/general criteria, for example with the starting point of how the mark appears and how it is possible to affix it to different goods, that is to say without regard to the manner in which the trade mark proprietor may de facto have affixed or may intend to affix the sign to various goods?

The Court’s decision:

1. Article 7(1)(e)(iii) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trademark, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015, must be interpreted as meaning that it is not applicable to marks registered before the entry into force of Regulation No 207/2009, as amended by Regulation 2015/2424.

2. Article 7(1)(e)(iii) of Regulation No 207/2009 must be interpreted as meaning that a sign such as that at issue in the main proceedings, consisting of two-dimensional decorative motifs, which are affixed to goods, such as fabric or paper, does not ‘consist exclusively of the shape’, within the meaning of that provision.

How online stores to communicate with their customers – the Amazon case?

ecommerce-3021581_960_720The Advocate General of the European Court G. PITRUZZELLA has given an opinion on case  C‑649/17 Bundesverband der Verbraucherzentralen und Verbraucherverbände, Verbraucherzentrale Bundesverband e. V. v Amazon EU Sàrl., which concerns the following:

The Bundesverband alleges that Amazon, an online sales platform, has failed to fulfil, in a clear and comprehensible manner, its obligations regarding the provision of information to consumers and has thereby infringed the German legislation implementing Directive 2011/83.

In particular, the applicant in the main proceedings submits that Amazon does not, prior to the conclusion of (online) distance sales, inform customers of a fax number; it also requires customers to answer a series of questions, including questions concerning their identity, before displaying the telephone number of its general helpline.

The applicant in the main proceedings alleges that Amazon is thus infringing the statutory consumer protection rules in force in Germany which, in implementation of Directive 2011/83, require traders to indicate, in a clear and comprehensible manner, their geographical address and telephone number and, where appropriate, their fax number and email address, so as to enable consumers to contact them quickly and efficiently.

Amazon does offer an automated call-back facility and an online chat service, but these are not, according to the applicant in the main proceedings, sufficient to discharge its legal obligations.

Having brought proceedings before the Landgericht Köln (Regional Court, Cologne, Germany), which rejected its application on 13 October 2015, the Bundesverband brought an appeal before the Oberlandesgericht Köln (Higher Regional Court, Cologne, Germany).

By judgment of 8 July 2016, that court dismissed the appeal and upheld the judgment at first instance.

Finally, the Bundesverband brought an appeal on a point of law before the Bundesgerichtshof (Federal Court of Justice).

The Bundesgerichtshof (Federal Court of Justice), being in doubt as to the consistency with EU law of legislation such as the German legislation at issue, which requires traders to give a telephone number in every case, rather than only where available, made the reference for a preliminary ruling to the Court of Justice.

The Bundesgerichtshof (Federal Court of Justice) decided to ask the Court about the proper interpretation of the expression ‘where available’, used in Article 6(1)(c), whether the list of means of communication set out in that provision is exhaustive or not, and about the scope of the obligation of transparency incumbent on traders.

It was in that context that the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  May the Member States enact a provision which — like the provision in point 2 of the first sentence of Article 246a(1)(1) of the EGBGB — obliges traders when entering into distance contracts to give consumers their telephone number prior to acceptance of the contract not only where they have one available but in every case?

(2)  Does the expression “gegebenenfalls” (meaning “where available”) used in [the German language-version of] Article 6(1)(c) of Directive [2011/83] mean that traders must, if they decide to enter into distance contracts, provide information solely about the means of communication that are already actually available within their business, and that they are therefore not required to set up a new telephone or fax connection or email account?

(3)  If the second question is answered in the affirmative:

Does the expression “gegebenenfalls” (meaning “where available”) used in [the German language-version of] Article 6(1)(c) of Directive [2011/83] refer solely to the means of communication that are already available in the business and are actually used by the trader for communication with consumers when entering into distance contracts, or does it also refer to means of communication that are available in the business but have hitherto been used by the trader exclusively for other purposes, such as to communicate with other traders or authorities?

(4)  Is the list of means of communication (telephone, fax and email) set out in Article 6(1)(c) of Directive [2011/83] exhaustive, or may traders also use other means of communication not mentioned in that list, such as online chat services or call-back facilities, provided that they ensure rapid contact and efficient communication?

(5) Is it relevant to fulfilment of the obligation of transparency under Article 6(1) of Directive [2011/83] — in accordance with which traders must inform consumers in a clear and comprehensible manner of the means of communication referred to in Article 6(1)(c) of the directive — that that information is supplied quickly and efficiently?’

The Advocate’s position:

(1) Given its function of full harmonisation and in light of its literal, systematic and teleological interpretation, Directive 2011/83/EU of the European Parliament and of the Council of 25 October 2011 on consumer rights, amending Council Directive 93/13/EEC and Directive 1999/44/EC of the European Parliament and of the Council and repealing Council Directive 85/577/EEC and Directive 97/7/EC of the European Parliament and of the Council, precludes national legislation which obliges traders, when entering into distance contracts, to give consumers their telephone number prior to acceptance of the contract not only where they have such a number but in all cases.

(2) The expression ‘gegebenenfalls’ used in the German-language version of Article 6(1)(c) of Directive 2011/83 must be interpreted, literally, systematically and teleologically, as not imposing on traders any obligation, if they decide to enter into distance contracts, to set up a new telephone or fax connection or email account.

(3) The expression ‘gegebenenfalls’ used in the German-language version of Article 6(1)(c) of Directive 2011/83 must be interpreted, literally, systematically and teleologically, in the sense that only those means of communication which a trader has decided to employ in dealings with consumers when concluding distance contracts are ‘available’ within the undertaking.

(4) The list of means of communication set out in Article 6(1)(c) of Directive 2011/83 (i.e. telephone, fax and email) is not exhaustive and traders may also use other means of communication not mentioned in that list, such as online chat services or call-back facilities, provided that, whatever means of communication are employed, they actually offer consumers a choice of what means to use and ensure rapid contact and efficient communication, and provided that the information regarding those means of communication is provided in a clear and comprehensible manner.

(5)  Fulfilment of the obligation of transparency under Article 6(1) of Directive 2011/83 requires that consumers should be able to access the information regarding the means of communication which traders make available to them in a simple, efficient and relatively rapid manner.