A dispute over geographical indications can threaten the trade deal between the EU and Australia

bigstock-Australia-flag-with-european-u-133799099.jpgAs it is well-known the EU is negotiating with Australia for a $100 billion trade deal similar to those signed with Canada and Japan.

In that regard, the EU’s Agriculture Commissioner Phil Hogan expressed his concerns about the deal after the last meeting between the parties in Canberra.

As in all other deals, the EU expects all of its geographical indications to cover the other party’s territory after the deal, which aim to protect the European producers of traditional products.

The problem in the case of Australia, however, is that many local manufacturers have been using European geographical indications, such as Prosecco and Feta for free for decades. The EU insists that to be discontinued. On the other side, the Australian government tries to support its producers in an attempt to avoid eventual economic disturbance for them.

In most of the cases, such disputes end with a grace period after which the relevant producers have to seize the use of the protected geographical indications or in some cases at least to add the name of the country in front for a distinction.

Source: The Sydney Morning Herald.

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The UK Wagamama won a trademark despite

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The UK restaurant chain for Japanese cuisine Wagamama won a trademark dispute against an application for a new trademark Wakayama applied for prepared meals, instant meals” and other food products “all consisting principally of noodles.

According to the restaurant chain, this trademark was confusingly similar to their one, what’s more, it could take advantage from Wagamama reputation on the market.

According to the applicant, there was no conflict between both signs because their trademark covers different letters.

The UK IPO has issued a decision stating that the later mark can create a consumer confusion due to the high level of visual and aural similarities in the presence of identical and similar goods. The different letters in the applied for trademark cannot overcome this negative outcome.

Source: WIPR.

The taste of food is not subject to copyright protection according to the EU Court

pexels-photo-1435184The European Court issued a decision on the case C‑310/17 Levola Hengelo BV vSmilde Foods BV which in brief concerns the question whether the taste of foods can be protected by copyrights.

The background is as follow:

‘Heksenkaas’ or ‘Heks’nkaas’(‘Heksenkaas’) is a spreadable dip containing cream cheese and fresh herbs, which was created by a Dutch retailer of vegetables and fresh produce in 2007. By an agreement concluded in 2011 and in return for remuneration linked to the turnover to be achieved by sales of Heksenkaas, its creator transferred his intellectual property rights over that product to Levola.

A patent for the method of manufacturing Heksenkaas was granted on 10 July 2012.

Since January 2014 Smilde has been manufacturing a product called ‘Witte Wievenkaas’ for a supermarket chain in the Netherlands.

Levola took the view that the production and sale of ‘Witte Wievenkaas’ infringed its copyright in the ‘taste’ of Heksenkaas and brought proceedings against Smilde before the Rechtbank Gelderland (Gelderland District Court, Netherlands).

After stating that, from its point of view, copyright in a taste refers to the ‘overall impression on the sense of taste caused by the consumption of a food product, including the sensation in the mouth perceived through the sense of touch’, Levola asked the Rechtbank Gelderland (Gelderland District Court) to rule (i) that the taste of Heksenkaas is its manufacturer’s own intellectual creation and is therefore eligible for copyright protection as a work, within the meaning of Article 1 of the Copyright Law, and (ii) that the taste of the product manufactured by Smilde is a reproduction of that work. It also asked that court to issue a cease and desist order against Smilde in relation to all infringements of its copyright and, in particular, in relation to the production, purchase, sale, supply or other trade in the product known as ‘Witte Wievenkaas’.

By judgment of 10 June 2015, the Rechtbank Gelderland (Gelderland District Court) held that it was not necessary to rule on whether the taste of Heksenkaas was protectable under copyright law, given that Levola’s claims had, in any event, to be rejected since it had not indicated which elements, or combination of elements, of the taste of Heksenkaas gave it its unique, original character and personal stamp.

Levola appealed against that judgment before the referring court.

The latter considers that the key issue in the case before it is whether the taste of a food product may be eligible for copyright protection. It adds that the parties to the main proceedings have adopted diametrically opposed positions on this issue.

According to Levola, the taste of a food product may be classified as a work of literature, science or art that is eligible for copyright protection. Levola relies by analogy, inter alia, on the judgment of 16 June 2006 of the Hoge Raad der Nederlanden (Supreme Court of the Netherlands), Lancôme (NL:HR:2006:AU8940), in which that court accepted in principle the possibility of recognising copyright in the scent of a perfume.

Conversely, Smilde submits that the protection of tastes is not consistent with the copyright system, as the latter is intended purely for visual and auditory creations. Moreover, the instability of a food product and the subjective nature of the taste experience preclude the taste of a food product qualifying for copyright protection as a work. Smilde further submits that the exclusive rights of the author of a work of intellectual property and the restrictions to which those rights are subject are, in practical terms, inapplicable in the case of tastes.

The referring court notes that the Cour de cassation (Court of Cassation, France) has categorically rejected the possibility of granting copyright protection to a scent, in particular in its judgment of 10 December 2013 (FR:CCASS:2013:CO01205). There is therefore divergence in the case-law of the national supreme courts of the European Union when it comes to the question –– which is similar to that raised in the case in the main proceedings –– as to whether a scent may be protected by copyright.

In those circumstances, the Gerechtshof Arnhem-Leeuwarden (Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  (a) Does EU law preclude the taste of a food product — as the author’s own intellectual creation — being granted copyright protection? In particular:

(b) Is copyright protection precluded by the fact that the expression “literary and artistic works” in Article 2(1) of the Berne Convention, which is binding on all the Member States of the European Union, includes “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”, but that the examples cited in that provision relate only to creations which can be perceived by sight and/or by hearing?

(c) Does the (possible) instability of a food product and/or the subjective nature of the taste experience preclude the taste of a food product being eligible for copyright protection?

(d) Does the system of exclusive rights and limitations, as governed by Articles 2 to 5 of Directive [2001/29], preclude the copyright protection of the taste of a food product?

(2) If the answer to question 1(a) is in the negative:

(a) What are the requirements for the copyright protection of the taste of a food product?

(b) Is the copyright protection of a taste based solely on the taste as such or (also) on the recipe of the food product?

(c) What evidence should a party who, in infringement proceedings, claims to have created a copyright-protected taste of a food product, put forward? Is it sufficient for that party to present the food product involved in the proceedings to the court so that the court, by tasting and smelling, can form its own opinion as to whether the taste of the food product meets the requirements for copyright protection? Or should the applicant (also) provide a description of the creative choices involved in the taste composition and/or the recipe on the basis of which the taste can be considered to be the author’s own intellectual creation?

(d) How should the court in infringement proceedings determine whether the taste of the defendant’s food product corresponds to such an extent with the taste of the applicant’s food product that it constitutes an infringement of copyright? Is a determining factor here that the overall impressions of the two tastes are the same?’

The Court’s decision:

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 precluding (i) the taste of a food product from being protected by copyright under that directive and (ii) national legislation from being interpreted in such a way that it grants copyright protection to such a taste.

The Advocate General’s opinion on KitKat case

The Advocate General of the European Court issued an opinion regarding the following joined cases C‑84/17 P, C‑85/17 P и C‑95/17 P,  Nestlé  v  Mondelez. These cases concern the following:

On 21 March 2002, Nestlé applied to EUIPO for registration of a three-dimensional mark for its ‘Kit Kat 4 fingers’ product, which consists of four trapezoidal bars aligned on a rectangular base:

Registration was sought in respect of goods in Class 30 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. EUIPO raised an objection with regard to some of the goods in respect of which registration had been sought, namely: ‘chocolate, chocolate products, confectionery, candy’. Following that objection, the abovementioned sign was registered as an EU trade mark on 28 July 2006 in respect of goods in Class 30 corresponding to the following description: ‘Sweets; bakery products; pastries; biscuits; cakes; waffles’ (‘the trade mark at issue’).

On 23 March 2007, Cadbury Schweppes plc (subsequently Cadbury Holdings Ltd, now Mondelez) filed an application with EUIPO for a declaration of invalidity in respect of the registration on the basis, in particular, of Article 7(1)(b) of Regulation No 207/2009. On 11 January 2011, the Cancellation Division of EUIPO upheld that application and declared the trade mark at issue invalid.

On appeal by Nestlé, the Second Board of Appeal of EUIPO, by the decision at issue, annulled the decision of the Cancellation Division. The Second Board of Appeal considered, in particular, that although the trade mark at issue was, indeed, devoid of any inherent distinctive character in relation to the goods for which it had been registered, Nestlé had shown, in accordance with Article 7(3) of Regulation No 207/2009, that that trade mark, through the use which had been made of it, had acquired such a character in relation to those goods.

By application lodged at the General Court Registry on 19 February 2013, Mondelez brought an action seeking the annulment of the decision at issue. In support of its action, it raised three pleas in law. The General Court examined only the first plea in law, alleging infringement of Article 52(2) of Regulation No 207/2009, read in conjunction with Article 7(3) thereof, and divided into four parts.

In paragraphs 21 to 44 of the judgment under appeal, the General Court analysed and upheld the second part of Mondelez’s first plea in law. As can be seen from paragraphs 41 to 44 of the judgment under appeal, the General Court took the view that the Second Board of Appeal was wrong to consider that Nestlé had established use of the trade mark at issue in respect of bakery products, pastries, cakes and waffles. Consequently, the General Court analysed the other parts of Mondelez’s first plea in law only with regard to sweets and biscuits.

In paragraphs 45 to 64 of the judgment under appeal, the General Court analysed and rejected the first part of Mondelez’s first plea in law, concerning the lack of use of the trade mark at issue in the form in which it was registered.

In paragraphs 65 to 111 of the judgment under appeal, the General Court examined and rejected the third part of Mondelez’s first plea in law, concerning the lack of use of the trade mark at issue as an indicator of origin and the insufficient evidence provided in that respect. In this regard, on the one hand, in paragraph 94 of the judgment under appeal, the General Court noted that the evidence of genuine use of the trade mark at issue, submitted by Nestlé before EUIPO, constituted relevant evidence which, when assessed globally, was capable of establishing that, in the eyes of the relevant public, that trade mark was perceived as an indication of the commercial origin of the goods in question. On the other hand, in paragraph 107 of that judgment, the General Court indicated that the Second Board of Appeal ‘carried out an examination of whether the … trade mark [at issue] had acquired distinctive character by virtue of that mark and specifically substantiated its conclusions regarding that acquisition so far as Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland, Sweden and the United Kingdom are concerned’.

Finally, in paragraphs 112 to 178 of the judgment under appeal, the General Court analysed the fourth part of Mondelez’s first plea in law. In paragraphs 142 and 143 of that judgment, it stated that the Second Board of Appeal had erred, in concluding, in essence, that, for the purposes of proving distinctive character acquired through use of a mark throughout the European Union, it was sufficient to show that a substantial proportion of the relevant public in the European Union, merging all the Member States and regions, perceived a mark as an indication of the commercial origin of the goods designated by that mark and that it was not necessary to prove the distinctive character of a mark acquired through its use in all the Member States concerned.

Nevertheless, as can be seen from paragraphs 144 and 145 of the judgment under appeal, the General Court took the view that it was possible that, despite having erred in setting out the assessment criterion for the purposes of proving the distinctive character of a mark acquired through its use throughout the European Union, the Second Board of Appeal had applied that criterion correctly when examining the evidence submitted by Nestlé. The General Court therefore considered that it was necessary to examine the Second Board of Appeal’s assessment of that evidence.

Following an examination of the evidence relating to Denmark, Germany, Spain, France, Italy, the Netherlands, Austria, Finland and Sweden, as well as the United Kingdom, the General Court concluded, in paragraphs 146, 148, 151, 153, 155, 158, 159, 164 and 167 respectively, that the Second Board of Appeal was correct to consider that it had been established that the trade mark at issue had acquired a distinctive character through use in all of those Member States.

However, in paragraph 173 of the judgment under appeal, the General Court noted that the Second Board of Appeal had not explicitly answered the question of whether it had been established that the trade mark at issue had acquired distinctive character in Belgium, Ireland, Greece and Portugal, nor had it included those Member States among those in which it took the view that such acquisition had been proven.

In paragraph 176 of that judgment, the General Court considered that the Second Board of Appeal had erred in concluding that the trade mark at issue had acquired distinctive character through use in the European Union, given that such acquisition had been proven for only a part, indeed a substantial part, of the territory of the European Union.

In paragraphs 177 to 179 of the judgment under appeal, the General Court held that the fourth part of Mondelez’s first plea in law must be upheld and that the decision at issue must be annulled in its entirety, since the Second Board of Appeal could not validly conclude its examination of the distinctive character of the trade mark at issue acquired through its use without coming to a conclusion regarding the perception of that mark by the relevant public in, inter alia, Belgium, Ireland, Greece and Portugal and without analysing the evidence adduced in respect of those Member States.

The Advocate’s opinion:

For the purposes of that extrapolation, although account must not be taken of the territories of the Member States as such, (23) the existence of the single market within the European Union does not imply the non-existence of national or regional markets. It is common for economic operators like Nestlé, when distributing their goods or services, to group together certain national markets for a number of reasons, such as their geographical proximity, the existence of historical links between them, or even a common language, customs or practices. In that sense, against that background and depending on the goods at issue, the evidence provided for certain national markets could, on the basis of what Mondelez called ‘market comparability’ at the hearing, be sufficient to cover other markets omitted from the evidence or for which quantitatively sufficient evidence has not been provided. For example, it might be that, for certain goods or services and on account of the comparability of the markets in question, the evidence provided for the Spanish market is also sufficient for the Portuguese market, or the evidence provided for the United Kingdom market is sufficient for the Irish market, and so on.

To provide quantitatively and geographically sufficient evidence of the acquisition of a distinctive character through use throughout the European Union, account must be taken, for each product or service, of this diversity within the European Union. In that sense, a trade mark cannot be an EU trade mark with a unitary character if the relevant public in part of the European Union does not perceive it as an indication of the commercial origin of the goods or services which it covers.

In this regard, it should be added that the regions or parts of the European Union in which the acquisition of distinctive character must be shown are not predetermined, but must be established, whenever an application for registration is filed, for the goods and services covered by the trade mark in question.

Contrary to what EUIPO argues, this does not mean that the absence of evidence in relation to Luxembourg alone would be sufficient to exclude the acquisition of distinctive character, when evidence has been provided for the other Member States. If, for the goods or services covered by the trade mark in question, Luxembourg is part of the same market as Belgium, France or Germany, and sufficient evidence has been provided for one such country which is part of the same market as Luxembourg, it would not be necessary to provide specific evidence for Luxembourg. That, in my opinion, is the meaning to be given to Article 7(2) and (3) of Regulation No 207/2009 and to paragraphs 60 to 63 of the judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM (C‑98/11 P, EU:C:2012:307).

Even though the General Court was, in principle, required to examine that question, Nestlé confirmed at the hearing that it had not included in the case file evidence seeking to establish that, with regard to the product covered by the trade mark at issue, the evidence provided for the Danish, German, Spanish, French, Italian, Netherlands, Austrian, Finnish, Swedish and United Kingdom markets also applied to the Belgian, Irish, Greek, Luxembourg and Portuguese markets or could act as a basis for extrapolating the acquisition, by the trade mark at issue, of distinctive character through use in those countries. In that sense, Nestlé had not established, in respect of the product concerned, the comparability of the Belgian, Irish, Greek, Luxembourg and Portuguese markets with some of the other national markets for which it had provided sufficient evidence.

In the absence of such evidence, the General Court had no option but to annul the decision of the Second Board of Appeal of EUIPO, which it did.

In view of the foregoing considerations, I propose that the Court dismiss the appeals brought by Nestlé and EUIPO.

Brief IP news

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2. Summer School on Intellectual Property in Bonn. For more information here.

3. EPO reports growing demand; Europe’s attractiveness as leading tech market confirmed. For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here

“BON GOÛT” can be a valid trademark in Japan

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Masaki MIKAMI  published an interesting article regarding the registrability of  “BON GOÛT” as a trademark in Japan.

This mark was filed for the following goods and services in Class 30 buns and bread, confectioneries, hamburgers, pizza, hot dogs, spices, noodles, pasta, coffee, tea, and Class 43 restaurant service, rental of cooking apparatus and microwave ovens.

Initially, the Patent Office refused this application based on absolute grounds, lack of distinctiveness for the specified goods and services due to the fact that “BON GOÛT” means good taste in French.

However, the Board of Appeal overruled this decision, stating that this sign can be a valid trademark because it has no meaning that can be understood by the relevant consumers in Japan who are not familiar with the French language as a whole.

A US non-profit organisation attacks Jamie Oliver for trademark infringement

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The US non-profit organisation Gluten Intolerance Group (GIG) has initiated a lawsuit against the world well-known chef Jamie Oliver.

GIG possesses a certification trademark GF which certifies that the relevant food products are gluten free. It is required the products to pass strict certification program.

In the case at hand, GIG claims that Jamie Oliver has used the sign GF for some of his recipes without to prove that the products have passed any certification process.

According to the organisation, this constitutes a trademark infringement which can create a confusion among the consumers that the products have been previously certified so as to use the sign GF.

Source: WIPR.