CJEU confirmed that private copying compensations include cloud storage too

The European Court has ruled recently in the Case C‑433/20 Austro-Mechana Gesellschaft zur Wahrnehmung mechanisch-musikalischer Urheberrechte Gesellschaft mbH v Strato AG.

This case has the following background:

Austro-Mechana is a copyright collecting society which, acting in its own name but in a fiduciary capacity in the interest and on behalf of the rightholders, exercises, inter alia, the statutory rights to the remuneration that is due under Paragraph 42b(1) of the Law on Copyright, in the version applicable to the dispute in the main proceedings.

Austro-Mechana applied to the Commercial Court, Vienna, Austria for an order to allow it to invoice for, and take payment of remuneration in respect of, ‘storage media of any kind’, on the ground that Strato provides its business and private customers with a service known as ‘HiDrive’, by which it makes cloud computing storage space available to them.

Strato contested the application on the ground that no remuneration was due in respect of cloud computing services. That company stated that it had already paid the required copyright fee in Germany, the Member State in which its servers are hosted, that fee having been incorporated in the price of the servers by their manufacturer or importer. It added that users in Austria had also already paid a levy for the making of private copies (‘the private copying levy’) on the terminal equipment necessary to upload content to the cloud.

By judgment of 25 February 2020, the Commercial Court, Vienna dismissed Austro-Mechana’s application, holding that Strato does not make storage media available to its customers, but provides them with an online storage service.

Austro-Mechana appealed against that judgment to the Higher Regional Court, Vienna, Austria, which observes, referring to the judgment of 29 November 2017, VCAST (C‑265/16, EU:C:2017:913), that it is not entirely clear whether the storage of content in the context of cloud computing comes within the scope of Article 5(2)(b) of Directive 2001/29.

In those circumstances, the Higher Regional Court, Vienna decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is the expression “on any medium” in Article 5(2)(b) of Directive [2001/29] to be interpreted as meaning that it also includes servers owned by third parties which make available to natural persons (customers) for private use (and for ends that are neither directly nor indirectly commercial) storage space on those servers which those customers use for reproduction by storage (“cloud computing”)?

(2) If so: is the provision cited in Question 1 to be interpreted as meaning that it is applicable to national legislation under which the author is entitled to equitable remuneration (remuneration for exploitation of the right of reproduction on storage media), in the case:

–   where a work (which has been broadcast, made available to the public or recorded on a storage medium produced for commercial purposes) is by its nature likely to be reproduced for personal or private use by being stored “on a storage medium of any kind which is suitable for such reproduction and, in the course of a commercial activity, is placed on the market in national territory”,

–    and where the storage method used in that context is that described in Question 1?’

The Court’s decision:

1.  Article 5(2)(b) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the expression ‘reproductions on any medium’, referred to in that provision, covers the saving, for private purposes, of copies of works protected by copyright on a server in which storage space is made available to a user by the provider of a cloud computing service.

2.  Article 5(2)(b) of Directive 2001/29 must be interpreted as not precluding national legislation that has transposed the exception referred to in that provision and that does not make the providers of storage services in the context of cloud computing subject to the payment of fair compensation in respect of the unauthorised saving of copies of copyright-protected works by natural persons, who are users of those services, for private use and for ends that are neither directly nor indirectly commercial, in so far as that legislation provides for the payment of fair compensation to the rightholders.

When lipstick packaging can be a trademark in the EU?

The General Court of the European Union has ruled in case T‑488/20 Guerlain срещу EUIPO.

This case concerns the following applied for EU three-dimensional trademark for “lipsticks”:

The EUIPO refused to register this sign based on absolute grounds – the mark did not depart sufficiently from the norms and customs of the sector.

The Board of Appeal confirmed this decision.

In the appeal, however, the General Court disagreed with the EUIPO and annulled the decision entirely. According to the Court, the 3D trademark is distinctive enough in order to be a sign of trade origin.

The General Court finds that the shape in question is uncommon for a lipstick and differs from any other shape existing on the market. It observes, first of all, that that that shape is reminiscent of that of a boat hull or a baby carriage. Such a shape differs significantly from the images taken into consideration by the Board of Appeal, most of which represented cylindrical and parallelepiped lipsticks.

Next, the presence of the small oval embossed shape is unusual and contributes to the uncommon appearance of the mark applied for. Lastly, the fact that the lipstick represented by that mark cannot be placed upright reinforces the uncommon visual aspect of its shape.

Consequently, the General Court finds that the relevant public will be surprised by this easily memorable shape and will perceive it as departing significantly from the norm and customs of the lipstick sector and capable of indicating the origin of the goods concerned. Accordingly, the mark applied for has a distinctive character, which permits it to be registered.

Aldi lost a trademark dispute before the General Court of the EU

The General Court of the European Union has ruled in case  T-527/20 Aldi v EUIPO.

Registration of European trademarks can be challenging sometimes. This is due not only because trademark protection in the EU has two levels – national and community but because there are linguistic and cultural differences between the Member States.

One example about such situation is an attempt by Aldi to register the following EU figurative trademark in classes 29 and 30:

The EUIPO refused to register this sign on absolute grounds – descriptiveness, Art. 7(1)(c) of Regulation (EU) 2017/1001.

The practice for protection of EU trademarks states that when one sign is descriptive for consumers even from one part of the Union, the sign will be refused.

In the case at hand, CUCINA means kitchen for the Italian speaking people. The fact that the same mark is registered and well-known in Germany cannot overcome this conclusion.

According to Aldi, the word is not descriptive because it indicates only the place where food dished are prepared. What’s more the mark consists of combination with graphics which is enough to create the necessary distinctiveness.

The EUIPO disagreed. The graphic representation was not distinctive too because the image looks like a cooking pot. A combination between two not distinctive or descriptive elements cannot turn the sign to be distinctive as a whole.

The decision was upheld by the General Court.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Chanel lost a dispute against Huawei in the EU

The General Court of the European Union has ruled in case  T-44/20 Chanel v Huawei Technologies which targets an issue with figurative trademarks.

The case concerns the following European trademark application in class 9 filed by Huawei:

Against this mark an opposition was filed by Chanel based on the following earlier French trademark in class 9:

In addition, the company claimed a trademark with reputation for the following another French trademark registered for dissimilar goods:

The EUIPO dismissed the opposition founding both signs as not confusingly similar. The fact that they share two connected elements in circle is not enough in order confusion to be established. What’s more both mark are completely dissimilar from conceptual point of view.

The decision was appealed. According to Chanel these marks were similar at least to low degree as they are applied for and to an average to high degree when the Huawei trademark was rotated by 90 degrees.

The Court disagreed reminding that a trademark comparison has to take into account the way signs are applied for not the way how they will be used after that. The Court considered both marks as not similar. They have connected elements but in different arrangements – one in horizontal and another in vertical. In addition, conceptually they are different. The later mark can be perceived as the letter H while the earlier marks can be viewed as letters C.

Whether the new Super League will register successfully a trademark in the EU?

The news for the launch of the Super League was one of the biggest in the European football last week. It spurred a great debate and a lot of reactions most of which not so positive. Many football federations, including UEFA and FIFA as well as many football fans expressed their concerns about the new league formed by 12 of the biggest clubs in Europe: Arsenal, Chelsea, Liverpool, Man City, Manchester United, Tottenham, Real Madrid, Barcelona, Atletico Madrid, Juventus, Inter Milan and AC Milan.

Apart from the pure football aspects of the story, it is interesting to be noticed that there is now an application for the following European trademark in classes 3, 4, 5, 6, 8, 9, 10, 11, 12, 14, 15, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 41, 42, 43, 45:

The applicant is still not indicated but this representation of the mark is equal to what the founders of the new league have already announced.

A quick search in TMView database for Europe shows a lot of early registered trademarks for some of the above mentioned classes. For example:

International trademarks:

  • SUPER LEAGUE – № 1350297, Дата на заявката: 01/12/2016, Класове: 28, 41 
  • SUPER LEAGUE – № 1514680, Дата на заявката: 01/11/2019, Класове: 09, 18, 25, 28, 35, 38, 41

 Italian trademarks:

  • SUPER LEAGUE – № 2002901066715, Дата на заявката: 26/11/2002, Класове: 25 SUPERLEAGUE – № 2018000036641, Дата на заявката: 19/11/2018, Класове: 25, 28, 35, 41

 European trademarks:

  • SUPER LEAGUE – № 016389777, Дата на заявката: 21/02/2017, Класове: 9, 25, 28, 41
  • European Super League – № 017985567, Дата на заявката: 14/11/2018, Класове: 25, 41

Spanish trademarks:

  • European Super League – № M4091266, Дата на заявката: 29/10/2020, Класове: 41

It will be interesting whether the new trademark application will receive a successful registration or there will be oppositions against it from the owners of the earlier rights.

Another interesting issue could be to what extent Super League is a distinctive sign for some of the goods and services, in particular for organization of sport events.

When a letter combination can create trademark problems – an EU Court decision

The European Court has ruled in case T‑860/19, Alkemie Group sp. z o.o срещу Mann & Schröder GmbH.

This dispute concerns a European trademark application for the following classes:

  • Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;
  • Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;
  • Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing preparations, shampoos, cosmetic products for therapeutic use, food supplements, hygiene products, clothing, bedding [linen], toys, children’s furniture; advertising and marketing; services relating to the presentation of goods; organization of participation in fairs and exhibitions ”.

Against this application an opposition was filed by Mann & Schröder GmbH based on early registered trademark for ALKMENE in the following classes:

  • Class 3: “Cosmetics, cosmetic preparations for skin care, creams for cosmetic use, cosmetic milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos”;
  • Class 5: ‘Cosmetic products with therapeutic action: curative balms, curative creams, curative essential oils, curative ointments, curative balms, curative tonics, curative lotions for skin care, curative aerosols, curative hair lotions, curative powders for babies, oils medicinal for infants, healing creams for children, impregnated medicinal wipes for hygiene; hygiene products for medical purposes, antibacterial healing preparations for washing the skin, medicinal skin lotions; healing gels for hygiene of the oral cavity and fluids for rinsing the mouth, medicinal preparations for skin treatment; food accessories; hygienic products’;
  • Class 35: ‘Retail services, wholesale services, internet sales and mail order services for the following goods: cosmetics, cosmetic preparations for skin care, cosmetic creams, toilet milks, essential oils, lotions, balms, liquids, gels, washing products, shampoos ”.

The EUIPO upheld the opposition finding both sign as confusingly similar for the consumers in the EU. The decision was appealed.

According the the applicant both marks were not similar because their first part ALK had been widely used in many other registered trademarks, which in turn meant that this letter combination was not distinctive.

The Court disagreed. The fact that other trademarks cover the same letters combination doesn’t mean that it is not distinctive. Such an assumption has to be proved by particular evidence that to show low distinctive character of the combination in relation the the particular goods and services. This didn’t happen in the case at hand.

The Court pointed out that when word mark is compared with combined one, the word part has a dominant position in most of the cases.

From that perspective, the Court considered that there is a similarity between both marks. This was due to their identical beginnings as well as to their identical length and similarity from visual and phonetic point of view.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB.

Geographical indications can cover not only names but product appearance too – an EU Court decision

The European Court has ruled in case C‑490/19 Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS. This case focuses on the issue to what extent protection of geographical indications covers their names as well as the product appearance too. The case has the following bachground:

In accordance with the decree of 22 December 2000, Société Fromagère du Livradois, which had produced Morbier cheese since 1979, was authorised to use the name ‘Morbier’, without the AOC indication, until 11 July 2007. After that date, it substituted for that name the name ‘Montboissié du Haut Livradois’. Moreover, on 5 October 2001, Société Fromagère du Livradois filed an application in the United States for the US trade mark ‘Morbier du Haut Livradois’, which it renewed in 2008 for 10 years, and, on 5 November 2004, it filed an application for the French trade mark ‘Montboissier’.

On 22 August 2013, accusing Société Fromagère du Livradois of infringing the protected designation and committing acts of unfair and parasitic competition by producing and marketing a cheese that has the visual appearance of the product covered by the PDO ‘Morbier’, in order to create confusion with that product and to benefit from the renown of the image associated with it, without having to comply with the specification of the designation of origin, the Syndicat brought proceedings before the Regional Court, Paris, France requesting that Société Fromagère du Livradois be ordered to cease any direct or indirect commercial use of the name of the PDO ‘Morbier’ for products not covered by that name, any misuse, imitation or evocation of the PDO ‘Morbier’, any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product by any means liable to convey a false impression as to the origin of the product, any other practice liable to mislead the consumer as to the true origin of the product and, in particular, any use of a black line separating two parts of the cheese, and to compensate it for the damage suffered.

Those applications were dismissed by judgment of 14 April 2016, which was upheld by the Court of Appeal, Paris, France by judgment of 16 June 2017. The Court of Appeal, Paris held that the marketing of a cheese which has one or more features contained in the specification for Morbier cheese, and which therefore resembles that cheese, did not constitute misconduct.

In that judgment, after stating that PDO legislation aims to protect not the appearance or features of a product as described in its specification, but its name, and therefore does not prohibit a product being made using the same techniques as those set out in the standards applicable to the geographical indication, and after taking the view that, in the absence of an exclusive right, reproducing the appearance of a product falls within the scope of the freedom of trade and industry, the Court of Appeal, Paris held that the features relied on by the Syndicat, in particular the blue horizontal line, relate to a historical tradition, an ancestral technique present in other cheeses, which were implemented by Société Fromagère du Livradois even before the PDO ‘Morbier’ was obtained, and which are not built on the investments made by the Syndicat or its members. That court held that, although the right to use vegetable carbon is conferred only on cheese with the PDO ‘Morbier’, in order to comply with United States legislation, Société Fromagère du Livradois had to replace it with grape polyphenol, and therefore the two cheeses cannot be likened as a result of that feature. Noting that Société Fromagère du Livradois had claimed other differences between the Montboissié and the Morbier cheeses relating, inter alia, to the use of pasteurised milk in the former and raw milk in the latter, the court concluded that the two cheeses were distinct and that the Syndicat was seeking to extend the protection of the PDO ‘Morbier’ for commercial interests, which was unlawful and contrary to the principle of free competition.

The Syndicat appealed on a point of law against the judgment of the Court of Appeal, Paris before the referring court, the Court of Cassation, France. In support of its appeal, it submits, first, that a designation of origin is protected against any practice liable to mislead the consumer as to the true origin of the product and that in holding, however, that only the use of the name of the PDO is prohibited, the Court of Appeal, Paris infringed Article 13 of Regulation No 510/2006 and the same article of Regulation No 1151/2012. The Syndicat submits, next, that by merely stating, first, that the features that it relied on related to a historical tradition and were not dependent on the investments made by the Syndicat and its members and, secondly, that the ‘Montboissié’ cheese marketed since 2007 by Société Fromagère du Livradois was different from ‘Morbier’ cheese, without investigating, as requested, whether Société Fromagère du Livradois’ practices, in particular copying the ‘cinder line’ feature of Morbier cheese, were liable to mislead the consumer as to the true origin of the product, the court of appeal’s decision had no legal basis in the light of that legislation.

For its part, the Société Fromagère du Livradois maintains that the PDO protects products from a defined region, which alone can claim the protected designation, but does not prohibit other producers from producing and marketing similar products, provided they do not give the impression that they are covered by the designation in question. It is to be inferred from national law that any use of the sign constituting the PDO to designate similar products which are not entitled to that designation, either because they do not come from the defined area or because they come from it without having the required properties, is prohibited, but that it is not prohibited to market similar products, provided that such marketing is not accompanied by any practice liable to cause confusion, in particular by the misuse or the evocation of that PDO. It also argues that a ‘practice liable to mislead the consumer as to the true origin of the product’, within the meaning of Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012, must necessarily focus on the ‘origin’ of the product. It must therefore be a practice which causes the consumer to think that the product he or she is encountering is the PDO product in question. It considers that that ‘practice’ cannot result merely from the appearance of the product in itself, without any indication on its packaging referring to the protected origin.

The referring court states that the appeal before it raises the novel question of whether Article 13(1)(d) of Regulation No 510/2006 and the same article of Regulation No 1151/2012 must be interpreted as prohibiting only the use by a third party of the registered name or whether it must be interpreted as also prohibiting any presentation of the product which is liable to mislead the consumer as to its true origin, even if the registered name has not been used by the third party. Noting in particular that the Court has never ruled on that question, it considers that there is doubt as to the interpretation of the expression ‘other practice’ in those articles, which constitutes a particular form of infringement of a protected designation if it is liable to mislead the consumer as to the true origin of the product.

The question therefore arises, according to the referring court, as to whether the reproduction of physical characteristics of a product protected by a PDO may constitute a practice that is liable to mislead the consumer as to the true origin of the product, as prohibited by Article 13(1) of the regulations cited above. That question amounts to determining whether the presentation of a product that is protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, is capable of constituting an infringement of that designation, despite the fact that the name has not been reproduced.

In those circumstances, the Court of Cassation decided to stay proceedings and to refer the following question to the Court:

‘Must Article 13(1) of Regulation No 510/2006 … and Article 13(1) of Regulation No 1151/2012 … be interpreted as prohibiting solely the use by a third party of the registered name, or must they be interpreted as prohibiting the presentation of a product protected by a designation of origin, in particular the reproduction of the shape or the appearance which are characteristic of it, which is liable to mislead the consumer as to the true origin of the product, even if the registered name is not used?’

The Court’s decision:

Article 13(1) of Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and Article 13(1) of Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs must be interpreted as meaning that they do not prohibit solely the use by a third party of a registered name.

Article 13(1)(d) of Regulation No 510/2006 and Article 13(1)(d) of Regulation No 1151/2012 must be interpreted as prohibiting the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name. It is necessary to assess whether such reproduction may mislead the European consumer, who is normally informed and reasonably observant and circumspect, taking into account all relevant factors in the case.