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

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

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

The cases background is as follow:

Ferrari is the proprietor of the trade mark TESTAROSSA.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The Court’s decision:

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

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

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

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

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

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MALLE means Mallorca for Germans?

EUIPO has issued recently a decision on a case which has to check to what extent MALLE can mean the Spanish Balearic island of Mallorca.

The case concerns a registered European trademark MALLE for classes  9, 35, 38 and 41 that regard goods and services such as CDs, TV shows, parties, music production and so on.

After receiving registration, the trademark owner started to send cease and desist letters to anyone who dare to use the name in relation to the above classes.

The problem is that MALLE  is a everyday word that means Mallorca for German consumers.

Because of that an invalidation proceeding was initiated against the mark.

The EUIPO invalidated this trademark based on absolute grounds – marks which consist exclusively of signs or indications that may serve, in trade, to designate geographical origin are not possible to be registered.

According to the Office, there is sufficient evidence in the form of many press articles for decades, which show clearly that German speaking consumers understand MALLE  as reference to Mallorca.

The fact that this conclusion concerns only one country in the EU is enough in order for the trademark to be invalidated.

There is a similar proceedings in Germany against national trademark MALLE .

Source: Yvonne Draheim – Hogan Lovells for Lexology

The German Constitutional Court blocked the Unified Patent Court

The German Federal Constitutional Court  has ruled that the legislation for introducing of the Unified Patent Court (UPC) is not constitutional.

According to the Court, in this case there is a transfer of adjudication authorities from national to international level. This requires the law to be accepted with two-thirds majority in the Bundestag, which wasn’t happened.

It is possible this decision to put a spanner in the works for the UPC as a whole. Although the German Parliament can pass the legislation again, this will take time, time which can allow other countries to express their reluctance toward the UPC concept.

Source: WIPR.

 

The General Court of the EU found similarity between trademarks for wine

The General Court of the European Union has ruled in case Case T‑239/19 Vinos de Arganza v Nordbrand Nordhausen GmbH. It concerns an attempt for registration of the following combined EU trademark for class 33 – wine:

Against this application, an opposition was filed based on an earlier German trademark BELCANTO for class 33 – Alcoholic beverages.

EUIPO upheld the opposition entirely. According to the Office, the goods for both marks were identical. From a visual point of view, both signs were similar to a low degree. Phonetically they were similar because of their end sounds. Conceptually both trademarks were neutral because they had no meaning for the German-speaking public.

The Court confirmed this decision.

What is interesting here is the fact that although the beginning of the marks has a bigger impact on such comparisons in the case at hand the different letters, in the beginning, weren’t able to overcome the entire possibility for consumer confusion between the signs.

The European Patent Office is ready to issue Unitary EU patents

The European Patent Office expressed its readiness to issue the so-called  Unitary EU patents.

The Unitary Patent is a patent granted by the EPO for which unitary effect can be registered with the EPO for the territory of the participating EU Member States.  This patent is crucial for competitiveness, growth, and innovation in Europe.

For the time being, the Unitary Patent is not officially in action because of a lawsuit before the German Supreme Court, which has to decide whether this patent protection is in line with the German constitution.

Another uncertainty is what will happen with the UK after Brexit. The problem arises from the fact that the British government is against any possibilities where the European Court can have jurisdiction over the UK even in the case of the Unitary Patent.

For more information here.

Google prevailed in a dispute against press publishers in the EU

The European court has rules in the case C‑299/17 VG Media Gesellschaft zur Verwertung der Urheber- und Leistungsschutzrechte von Medienunternehmen mbH v Google LLC.

The case concerns the following:

VG Media is a collective management organisation, authorised in Germany, that defends copyright and rights related to copyright of television channels and private radio stations, as well as rights to digital editorial content. Against this background, VG Media concludes with rights holders the ‘administration agreement for television, radio and publishers’, in which those rights holders grant it, for exclusive administration, their current rights as well as those accruing to them during the term of the agreement, in respect of the newspapers or magazines produced by them.

Google operates several internet search engines including, in particular, the search engine of the same name, together with an automated news site (‘Google News’). On the ‘Google’ search engine, after the search term has been entered and the search function has been initiated, a short text or text excerpt (‘the Snippet’) appears with a thumbnail image that is intended to enable users to gauge the relevance of the displayed website in the light of the information they are looking for. As regards the news site ‘Google News’, it displays news from a limited number of news sources in a format akin to that of a magazine. The information on that site is collected by computers by means of an algorithm using a large number of sources of information. On that site, ‘the Snippet’ appears in the form of a short summary of the article from the website concerned, often containing the introductory sentences of that article.

In addition, Google publishes, by means of its online services, third-party advertisements on its own websites and on third party websites for a fee.

VG Media brought an action for damages against Google before the referring court in which it disputes, in essence, the use by Google, since 1 August 2013, of text excerpts, images and animated images produced by its members, without paying a fee in return for displaying search results and news summaries.

The referring court seeks to ascertain whether Paragraphs 87f and 87g of the UrhG are applicable to the dispute in the main proceedings. That court seeks guidance on whether those provisions, arising from the amendment, with effect from 1 August 2013, to the UrhG, should have been notified to the Commission during their drafting stage as foreseen in the first subparagraph of Article 8(1) of Directive 98/34. In that connection, the referring court relies on the case-law of the Court according to which the provisions adopted in breach of the duty of notification under that provision are inapplicable and are, therefore, unenforceable against individuals.

In those circumstances, the Landgericht Berlin (Regional Court, Berlin, Germany) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does a national rule which prohibits only commercial operators of search engines and commercial service providers which edit content, but not other users, including commercial users, from making press products or parts thereof (excluding individual words and very short text excerpts) available to the public constitute, under Article 1(2) and (5) of [Directive 98/34], a rule which is not specifically aimed at the services defined in [Article 1(2)],

and, if that is not the case,

(2)  does a national rule which prohibits only commercial operators of search engines and commercial service providers which edit content, but not other users, including commercial users, from making press products or parts thereof (excluding individual words and very short text excerpts) available to the public constitute a technical regulation within the meaning of Article 1(11) of [Directive 98/34], namely a compulsory rule on the provision of a service?’

The Court’s decision:

Article 1(11) of Directive 98/34/EC of the European Parliament and of the Council of 22 June 1998 laying down a procedure for the provision of information in the field of technical standards and regulations and of rules on Information Society services (as amended by Directive 98/48/EC of the European Parliament and of the Council of 20 July 1998), must be interpreted as meaning that a provision of national law, such as that at issue in the main proceedings, which prohibits only commercial operators of search engines and commercial service providers that similarly publish content from making newspapers or magazines or parts thereof (excluding individual words and very short text excerpts) available to the public, constitutes a ‘technical regulation’ within the meaning of that provision, the draft of which is subject to prior notification to the Commission pursuant to the first subparagraph of Article 8(1) of Directive 98/34, as amended by Directive 98/48.

Balsamico and an Italian-German legal conflict

The Advocate General of the European Court G. HOGAN has issued his opinion in case C‑432/18 Consorzio Tutela Aceto Balsamico di Modena v BALEMA GmbH. The case concerns the following:

BALEMA GmbH produces vinegar-based products and markets them in the Baden region (Germany). For at least 25 years, it has been selling products under the designations ‘Balsamico’ and ‘Deutscher Balsamico’. The labels on its products bear the legend ‘Theo der Essigbrauer, Holzfassreifung, Deutscher Balsamico traditionell, naturtrüb aus badischen Weinen’ [Theo the vinegar brewer, matured in wooden barrels, German balsamic vinegar, traditional, naturally cloudy, made from Baden wine] or ‘1. Deutsches Essig-Brauhaus, Premium, 1868, Balsamico, Rezeptur No 3’ [first German vinegar brewery, premium, 1868, balsamic, recipe No 3].

It is agreed that BALEMA’s products designated as ‘Balsamico’ are not covered by the registration ‘Aceto Balsamico di Modena (PGI)’ pursuant to Article 1 of and Annex I to Regulation No 583/2009 because they do not fulfill the product specifications contained in Annex II of that regulation.

Consorzio Tutela Aceto Balsamico di Modena (‘the Consorzio’) is a consortium of producers of the products designated by the name ‘Aceto Balsamico di Modena’. It considers that BALEMA’s use of the designation ‘Balsamico’ infringes the protected geographical indication ‘Aceto Balsamico di Modena’. The Consorzio thus served a warning notice on BALEMA. BALEMA, in turn, brought an action in the German courts against the Consorzio seeking a negative declaration to the effect that there had been no trade mark infringement. That action was unsuccessful.

In the appeal on the merits, BALEMA sought a declaration that it is not obliged to refrain from using the designation ‘Balsamico’ for vinegar-based products produced in Germany. The appeal on the merits was upheld as the court considered that the use of the name ‘Balsamico’ in respect of vinegar did not infringe Article 13(1)(b) of Regulation No 1151/2012. According to that court, the protection for the name ‘Aceto Balsamico di Modena’ granted by Regulation No 583/2009 was conferred only on the entire name and not on the non-geographical components of the term as a whole, even if used jointly.

The case was appealed to the referring court.

The referring court considers that the appeal on a point of law will succeed if the names ‘Balsamico’ and ‘Deutscher Balsamico’ used by BALEMA infringe Article 13(1)(a) or (b) of Regulation No 1151/2012. According to that court such a finding would require that the protection of the entire name ‘Aceto Balsamico di Modena’ granted by Article 1 of Regulation No 583/2009 also covers the use of the individual non-geographical components of the term as a whole (‘Aceto’, ‘Balsamico’, ‘Aceto Balsamico’).

The Federal Court of Justice notes that it is clear from the second subparagraph of Article 13(1) of Regulation No 1151/2012 and the case-law of the Court that, pursuant to Article 13(1)(a) or (b) of that regulation, a protected geographical indication that consists of several terms can be protected against not only the use of the entire indication, but also against the use of individual terms of that indication. The second subparagraph of Article 13(1) of Regulation No 1151/2012 governs the specific case in which a protected geographical indication contains within it the name of a product which is considered to be generic. That provision stipulates that the use of that generic name is not to be considered to be contrary to Article 13(1)(a) or (b) of that regulation. The Federal Court of Justice also refers to the fact that the Commission regulation registering the name may restrict the scope of the protection of a protected geographical indication that consists of several terms so that it does not cover the use of individual terms of that indication. In that regard, the fact that an applicant may state that it does not seek protection for all elements of a name shows that the protection granted by its registration can be restricted.

The Federal Court of Justice considers that recitals 3, 5 and 10 of Regulation No 583/2009 militate in favor of a restriction of the scope of protection to the name ‘Aceto Balsamico di Modena’ as a whole, to the exclusion of individual non-geographical components. It also considers that, contrary to the view taken in the appeal on a point of law, the assumption that protection is granted to the name ‘Aceto Balsamico di Modena’ as a whole did not give rise to an inconsistency with the registration of the protected designations of origin ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’. Contrary to Regulation No 583/2009, the references to a restricted scope of protection in Regulation No 813/2000, which may be attributable to the fact that there was no opposition by Member States pursuant to Article 7 of Council Regulation (EEC) No 2081/92 (now Articles 51 and 52 of Regulation No 1151/2012) in the preceding registration procedure, does not preclude a restriction of the protective effect of the name ‘Aceto Balsamico di Modena’ as a whole.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does the protection of the entire name “Aceto Balsamico di Modena” extend to the use of the individual non-geographical components of the term as a whole (“Aceto”, “Balsamico”, “Aceto Balsamico”)?’

The Advocate’s position is:

The protection of the entire name ‘Aceto Balsamico di Modena’ under Commission Regulation (EC) No 583/2009 of 3 July 2009 does not extend to the use of the individual common words or non-geographical components, namely, ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.