Using a trademark as a decorative element is not the best option for its protection in the EU

The General Court of the European Union has ruled in the case T‑323/21 Castel Frères v Shanghai Panati Co., which reminds us how essential is one registered mark to be used correctly in order for its protection to be viable.

The case has the following background:

On 29 May 2018, Shanghai Panati Co filed an application with EUIPO for revocation of the EU trademark that had been registered further to an application filed on 17 March 2008 for the following figurative sign:

The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were inter alia in Class 33 of the Nice Agreement: ‘Still wines’.

The ground relied on in support of the application for revocation was the lack of genuine use of the contested mark within a continuous period of five years.

Evidence was submitted by Castel Frères that the mark was used for wine labels in the following way:

On 3 April 2020, the Cancellation Division rejected the application for revocation.

On 24 April 2020, Shanghai Panati Co. filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

By the contested decision, the Board of Appeal upheld the appeal and revoked the contested mark. The Board of Appeal found, in essence, that the differences between the contested mark and the mark as used were such as to alter the distinctive character of the contested mark.

The Court upheld this decision.

According to the Court, it must be borne in mind that the contested mark in its registered form is a figurative mark consisting of three characters from the Chinese alphabet. As the Board of Appeal correctly notes the relevant public will not be able to verbalise or to memorise those Chinese characters, which will rather be perceived as meaningless, abstract signs or as decorative elements referring to China or to Asia. It is appropriate, therefore, to find that, with regard to the goods at issue, the Chinese characters forming the contested mark have a lower-than-average degree of distinctive character.

In that regard, it must be emphasised that on the product packaging or in the advertisements, the contested mark, which appears in a very small size, is almost systematically accompanied by the word elements ‘dragon de chine’ and by the representation of a dragon, which appear together and are very close to one another. Moreover, in so far as the contested mark is composed of three characters from the Chinese alphabet, in a very small size, the added elements are always clearly visible and dominate the overall impression.

The Board of Appeal was therefore right to find that the contested mark as used, that is to say, in an ancillary position and in a much smaller size than the distinctive and dominant word elements ‘dragon de chine’ and the representation of a dragon, would be perceived by the relevant public as a decorative element and not as an indication of origin of the goods.

That finding cannot be called into question by the argument that, in essence, it is common in the wine sector for two or more trademarks to be used jointly and autonomously on labels, with or without the name of the manufacturer’s company, as is the case here with the mark Dragon de Chine. It must be stated that the word elements ‘dragon de chine’ are always clearly visible in that they occupy a dominant position in the overall impression created by the mark as used. In any event, even if it were established that those elements are a trademark, the fact remains that that is not capable of weakening the alteration by those terms of the distinctive character of the contested mark, since the relevant public no longer perceives those three characters from the Chinese alphabet as an indication of the origin of the goods in question, in accordance with the case-law.

Having regard to the above examination of the distinctive and dominant character of the added elements, based on the intrinsic qualities of each of those elements and on the relative position of the various elements, it must be held that the variations in use demonstrated alter the distinctive character of the contested mark as registered, as the Board of Appeal rightly found.

This decision comes to remind us that one trademark should always be used as an indication of trade origin and not as a complimentary or decorative element. In a similar case, Apple lost a dispute regarding its trademark Think Differently because of the way the mark was used on the package of the product.

Advertisement

MONET DESIGN cannot be a trademark in Japan because of Claude Monet

Trademarks for names of famous historical persons can be really challenging for protection.

This was the case of a trademark application for the following sign in Japan for classes 16, 20, 25, 27, 35, 41, 42, and 45:

Against this application, an opposition was filed by the French organization ACADEMIE DES BEAUX-ARTS, owner of an international trademark for “CLAUDE MONET”.

The gound was article 4(1)(vii) of the Trademark Law in Japan which prohibits registration of signs likely to cause damage to the social and public interest and disrupt the order of fair competition. This covers the registration of names of popular or historical persons if some requirements are met.

According to the Japan Patent Office consumers in the country will recognize the word MONET in the mark applied for as one related to the famous French painter Claude Monet. ACADEMIE DES BEAUX-ARTS manages actively the property and paintings of Claude Monet which represents a cultural heritage for entire France.

From that perspective, the opposition was upheld.

Source:  Masaki Mikami – Marks IP Law Firm.

France introduces a new weapon against online piracy

France has introduced new bill targeting online piracy. France’s National Assembly has approved a law based on which holders of copyright and related rights will be able to ask courts for the so-called dynamic injunctions. The purpose of these injunctions is to block all websites and servers that broadcast illegal content.

What’s more, such injunctions will be valid for a year saving copyright owners time and money to keep them in place. In addition, these injunctions will block “mirror” websites that are created for broadcasting of illegal content in an attempt to shirk an already issued injunction.

This new bill is welcomed by all right holders, especially those related to broadcasting of sport events where piracy is a significant problem.

Even before this new law right holders were able to rely on injunctions but the procedure was slower and not completely on par with the dynamic nature of the online broadcasting.

Source: WIPR.

A Jeff Bezos’ nonprofit organization lost a trademark dispute in the EU

The Jeff Bezos’ nonprofit organization “The Bezos Family Foundation” lost a trademark dispute in the EU.

The case concerns an EU trademark application ‘Vroom’ filed by the foundation in 2017 for – computer software, specifically “a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education.

Against this application an opposition was filed by the France’s national state-owned railway company SNCF Mobilités based on an earlier French trademark for ‘Pop & Vroom’ for software.

The EUIPO upheld the opposition finding both signs and their goods similar enough to create a confusion in the consumer mind.

The decision was appealed. The foundation claimed that both marks were not similar. The reason for this was that the leading element of the earlier mark is POP which attracts consumer’s attention because as a general rule of thumb the first part of a trademark is more important from that point of view. In addition, the goods in the marks target different audiences. While in the case of the foundation’s mark the software focuses on children education, in the case of earlier mark the focus is on a software for transport services.

The General Court of the European Union dismissed the appeal. According to the Court the signs are visually and phonetically similar to average degree. The fact that the first part of the earlier sign is different is not enough to overcome the similarity because for trademark assessment is important the entire impression produced by the sign.

The Court considers that when a trademark owner register its mark for one a general good, in this case software, the owner has the right to use it for different types of software. In this way, the stated difference in consumers targeting is not sufficient argument.

Source: WIPR.

HENNESSY lost a trademark opposition in Japan

SOCIETE JAS HENNESSY ET COMPAGNIE  lost an opposition against trademark application for INESSY in classes 30 and 33 in Japan.

According to HENNESSY the mark applied for was too similar to a family of earlier registered trademarks HENNESSY in Japan. The argument for this was the fact that both signs used one and the same suffix NESSY. No other registered trademark in the country use the this suffix for the goods in class 33.

The company stressed the well-know character of its mark, in the field of Cognac production, which has been gained throughout the years around the world including in Japan.

The Japan Patent Office, however, disagreed dismissing the opposition in its entirety.

According to the Office, both sign were different from visual point of view because they start with different prefix – I and HEN.

From phonetic side, the marks were dissimilar too because they entire sounding was different thanks the the different prefix.

Both trademarks have no specific meaning for the consumers in the country.

Taking into account all of that, the Patent Office concluded that there is no risk for consumer confusion between the marks.

Source: Masaki MIKAMI (Marks IP)

Performers explicit consent – an EU Court decision

The European Court has ruled in case C‑484/18 Société de perception et de distribution des droits des artistes-interprètes de la musique et de la danse (Spedidam), PG, GF

v Institut national de l’audiovisuel. The dispute concerns the following:

The INA is a publicly owned industrial and commercial body of the French State which is responsible for conserving and promoting the national audiovisual heritage. In that capacity, it keeps, inter alia, the audiovisual archives of audiovisual producers, namely national broadcasting companies, and helps with the exploitation of those archives.

PG and GF are the successors in title of ZV, a musician who died in 1985.

During 2009, PG and GF became aware that INA was marketing, in its online shop, without their authorisation, video recordings and phonograms reproducing ZV’s performances during the years 1959 to 1978. It is apparent from the file before the Court that those video recordings and phonograms had been produced and then broadcast by national broadcasting companies.

On 28 December 2009, PG and GF, on the basis of Article L. 212-3 of the Intellectual Property Code, brought an action against the INA in order to obtain compensation for the alleged infringement of the performer’s rights which they hold.

By judgment of 24 January 2013, the Regional Court, Paris, France upheld that action. That court considered, in particular, that the application of Article 49 as amended did not exempt the INA from the requirement to obtain the performer’s prior authorisation for the use of the fixation of his performances. Thus, the sole purpose of the collective agreements provided for in the latter provision is to determine the remuneration due for new exploitations, provided that an initial exploitation has been authorised by the performers concerned. In the present case, proof of such authorisation has not been adduced by the INA. By judgment of 11 June 2014, the Court of Appeal, Paris, France, before which the INA brought its appeal, essentially upheld the judgment given at first instance.

By judgment of 14 October 2015, the Court of Cassation, France set aside in part the judgment of the Court of Appeal, Paris. The Court of Cassation found that that Court of Appeal had erred in holding that the application of the derogating rules at issue was subject to proof that the performer had authorised the initial exploitation of his performance, thus adding to the law a condition that it did not impose.

17      By judgment of 10 March 2017, the Court of Appeal, Versailles, France, before which the case was brought back, dismissed PG’s and GF’s claims. That court considered, in essence, that Article 49 as amended establishes, for the sole benefit of the INA, a simple presumption of the performer’s prior consent, which can be challenged, and thus does not call into question the performer’s exclusive right. The agreements with the trade union organisations referred to in that article do not confer on them the right to ‘authorise and prohibit’, which is vested in the performer, but have the sole purpose of fixing the performer’s remuneration.

18      PG, GF and Spedidam, which had intervened voluntarily before the Court of Appeal, Versailles, brought an appeal against the latter’s judgment before the referring court. The referring court indicates that it has doubts as to the compatibility of the legal rules set out in Article 49 as amended with Articles 2, 3 and 5 of Directive 2001/29.

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

‘Must Article 2(b), Article 3(2)(a) and Article 5 of Directive [2001/29] be interpreted as not precluding national rules, such as those laid down in Article 49 [as amended] [of the Law on freedom of communication], from establishing, for the benefit of the [INA], the beneficiary of the exploitation rights of national broadcasting companies in the audiovisual archives, derogating provisions under which the terms on which performers’ works can be exploited and the remuneration for that exploitation are governed by agreements concluded between the performers themselves or the employee organisations representing performers and that institute, which must specify, inter alia, the scale of remuneration and the arrangements for payment of that remuneration?’

The Court’s decision:

Article 2(b) and Article 3(2)(a) 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 not precluding national legislation which establishes, as regards the exploitation of audiovisual archives by a body set up for that purpose, a rebuttable presumption that the performer has authorised the fixation and exploitation of his performances, where that performer is involved in the recording of an audiovisual work so that it may be broadcast.

Video games, the right of exhaustion and France

Julien GOMIS (Nomos) reports about an interesting case from France where the Paris court has ruled that the right of exhaustion set out in Directive 2001/29/EC is applicable to the case of downloadable video games.

As it is known, according to Directive 2001/29/EC:

Distribution right

1. Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.

2. The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent.

The grounds for this decision were that every subscriber of the relevant website has an account through which he pays for and downloads the video game on its own computer. After this act, he can use it without time limitations.

This decision is surprising at least because as a general rule of thumb the right of exhaustion concerns material copies of a work. Of course, there is some development in the interpretation of this rule. However, recently the Advocate General of the CJEU, Maciej Szupunara has stated that the download should be considered as a communication to the public and not as a distribution. Thus, within the meaning of European legislation, digital resale should not be affected by the rule of exhaustion of the distribution right.