Can bicycle functional shapes be protected with copyright?

pexels-photo-686230The Advocate General of the European Court Campos Sánchez-Bordona has given his opinion in Case C‑833/18 SI, Brompton Bicycle Ltd. v Chedech / Get2Get. This case concerns the following:

In 1975, Mr SI created a design for a folding bicycle, which he named Brompton.

The following year, Mr SI founded Brompton Ltd. for the purpose of marketing his folding bicycle in collaboration with a larger undertaking which would deal with manufacturing and distributing the bicycle. Mr SI did not find any undertakings that were interested and therefore he continued to work alone.

In 1981, Mr SI received his first order for 30 Brompton bicycles, which he manufactured with an appearance that was slightly different from the original.

After that, Mr SI expanded his company’s activities to increase awareness of his folding bicycle design which, since 1987, has been marketed in the following form:

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Brompton Ltd. was the holder of a patent for its bicycle’s folding mechanism (the main feature of which is that it has three positions: unfolded, stand-by and folded); that patent later fell into the public domain. (7)

Mr SI also asserts that he holds the economic rights arising from the copyright in the appearance of the Brompton bicycle.

The Korean company Get2Get, which specialises in the production of sports equipment, produces and markets a bicycle which also folds into three different positions (Chedech) and is similar in appearance to the Brompton bicycle:

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Brompton Ltd. and Mr SI took the view that Get2Get had infringed their copyright in the Brompton bicycle and, therefore, they brought an action against that company before the referring court, from which they sought, in essence: (a) a ruling that Chedech bicycles, irrespective of the distinctive signs affixed to those bicycles, infringe Brompton Ltd.’s copyright and Mr SI’s non-pecuniary rights in the Brompton bicycle, and (b) an order to cease the activities which breach their copyright and to withdraw the product from the market. (8)

Get2Get submitted that the appearance of its bicycle was dictated by the technical solution sought and that it deliberately adopted the folding technique (previously covered by Brompton Ltd.’s patent, which subsequently expired) because that was the most functional method. Get2Get maintains that that technical constraint dictates the appearance of the Chedech bicycle.

Brompton Ltd. and Mr SI countered that there are other bicycles on the market which fold into three positions and are different in appearance from their own, from which it follows that they have copyright over their bicycle. The appearance of the bicycle demonstrates the existence of creative choices on their part and, therefore, originality.

In those circumstances, the referring court has referred the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Must EU law, in particular 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, which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?

(2)  In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:

–   The existence of other possible shapes which allow the same technical result to be achieved?

–   The effectiveness of the shape in achieving that result?

–   The intention of the alleged infringer to achieve that result?

–    The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The Advocate’s opinion:

‘(1) Articles 2 to 5 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 do not provide for copyright protection of creations of products with an industrial application whose shape is exclusively dictated by their technical function.

(2) In order to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, the competent court must take into account all the relevant objective factors in each case, including the existence of an earlier patent or design right in the same product, the effectiveness of the shape in achieving the technical result and the intention to achieve that result.

(3) Where the technical function is the only factor which determines the appearance of the product, the fact that other alternative shapes exist is not relevant. On the other hand, the fact that the shape chosen incorporates important non-functional elements which were freely chosen by its creator may be relevant.’

Why searching for registered trademarks is crucial for every business nowadays?

laptop-3087585_1920As it is well-known in order to be distinguished and successful every business needs a good brand name. However, the brand-building process is not the only thing that has to be bear in mind when you launch a new mark in the market.

One crucial moment is whether your new brand name can infringe someone else’s already registered trademarks.

This is a situation when your brand name is identical or similar to a registered mark for identical or similar goods and services.

The logical question here is to what extent such a conflict can arise. The brief answer is that this is highly possible especially in the current global market where there are millions of registered signs all over the world.

If such a scenario happens the consequences could be quite negative. The first aftermath is the fact that when you applied for registration of your brand name it can face opposition by the owners of early registered similar signs.

Another, even a more daunting result could be a lawsuit for infringement of an already registered trademark.

In all cases, this could mean ceasing the trademark use and choosing a new brand name that will require new investments, etc.

In light of this one, unfortunately sometimes underestimated moment, is a preliminary trademark clearance search which to show whether you can use your mark or not.

You can do such a search for free using the official Patent Offices’ trademark databases.

However, to use them correctly you need to know some detail for trademark protection and how these database work.

In that regard, e new Udemy course has been published recently, which explains how you can conduct a trademark search on your own. You can assess the course from here, which by the way is on promotion with a 93% discount.

Coming your way

Bad faith, goods and services and an important trademark decision by the EU Court

flag-2608475_1920The European Court has ruled in the highly anticipated Case C‑371/18, Sky plc, Sky SkyKick. It concerns bad faith and when such a thing can happen when it comes to the scope of the selected goods and services. The case regards the following:

Sky and Others are the proprietors of four Community figurative and wordmarks and one national United Kingdom word mark which include the word ‘Sky’. Those trade marks were registered in respect of a large number of goods and services in a number of classes of the Nice Classification, in particular Classes 9 and 38.

Sky and Others brought an action for infringement of the trade marks at issue in the main proceedings against the SkyKick companies before the referring court, the High Court of Justice (England & Wales), Chancery Division (United Kingdom). For the purposes of their action for infringement, Sky and Others rely on the registration of the trade marks at issue in the main proceedings in respect of goods in Class 9 within the meaning of the Nice Classification, namely computer software, computer software supplied from the Internet, computer software and telecommunications apparatus to enable connection to databases and the Internet, and data storage, and services in Class 38 within the meaning of that classification, namely telecommunications services, electronic mail services, Internet portal services, and computer services for accessing and retrieving information, messages, text, sound, images and data via a computer or computer network. The referring court emphasises that not every trade mark at issue in the main proceedings is registered in respect of those goods and services.

The referring court also states that Sky and Others made extensive use of the trade marks at issue in the main proceedings in relation to a range of goods and services relating to their core business areas of television broadcasting, telephony and broadband provision. It is not in dispute that those trade marks are a household name in the United Kingdom and Ireland in those areas. However, Sky and Others do not offer email migration or cloud backup goods or services, nor is there is any evidence that they plan to do so in the immediate future. The three main products offered by the SkyKick companies are based on Software as a Service (SaaS) and concern Cloud Migration, Cloud Backup and Cloud Management.

In the context of those proceedings, the SkyKick companies filed a counterclaim for a declaration that the trade marks at issue in the main proceedings are invalid. In support of that counterclaim, they contend that those trade marks were registered in respect of goods or services that are not specified with sufficient clarity and precision. The SkyKick companies rely in that regard on the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361).

In that context, the referring court questions, in the first place, whether such a ground for invalidity may be asserted against a registered trade mark. In that regard, it recalls that the Court held, in that judgment, that an applicant for a trade mark must designate with sufficient clarity and precision the goods and services in respect of which protection for the trade mark is sought in order to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark. If the applicant fails to do so, the national office or the European Union Intellectual Property Office (EUIPO) should refuse to allow the application to proceed to registration without the specification being amended to make it sufficiently clear and precise.

The referring court considers that it does not, however, follow from the case-law arising from that judgment that the trade mark concerned may be declared invalid after registration on the ground that the specification lacks clarity or precision.

It states that, in the case of an EU trade mark, Article 128(1) of Regulation 2017/1001 provides that a counterclaim for a declaration of invalidity ‘may only be based on the grounds for … invalidity mentioned in this Regulation’. In the present case, the SkyKick companies rely on the ground provided for in Article 59(1)(a) of that regulation, read in the light of Article 4 and Article 7(1)(a) of the regulation, which do not require that the specification of goods and services in an EU trade mark application be clear and precise. The position is the same in relation to a national trade mark.

In the second place, if such a ground may be asserted, the referring court is uncertain whether the specifications of the goods and services may be objected to in respect of all of the trade marks at issue in the main proceedings. It states that the SkyKick companies contend that, in the case in the main proceedings, the identification of the goods and services covered by those trade marks lacks clarity and precision, except for ‘telecommunications services’ and ‘electronic mail services’ in Class 38. The SkyKick companies and Sky and Others disagree as to whether the specifications ‘computer software’, ‘computer software supplied from the Internet’ and ‘computer software and telecoms apparatus to enable connection to databases and the Internet’ are clear and precise.

In that regard, the referring court considers that registration of a trade mark for ‘computer software’ is too broad and, therefore, contrary to the public interest because it confers on the proprietor a monopoly of immense breadth which cannot be justified by a commercial interest. However, in the referring court’s view, it does not necessarily follow that the term ‘computer software’ is lacking in clarity and precision. Nonetheless, it is uncertain to what extent the indications in the European Trade Mark and Design Network (ETMDN) Common Communication on the Common Practice on the General Indications of the Nice Class Headings, of 28 October 2015, in relation to ‘machines’ in Class 7 within the meaning of the Nice Classification, could not equally apply to ‘computer software’.

In the third place, the referring court is uncertain whether the validity of the trade marks at issue in the main proceedings may be affected by the trade mark applicant’s bad faith at the time of filing the application for protection.

Before that court, the SkyKick companies contend that the trade marks at issue in the main proceedings were registered in bad faith because Sky and Others did not intend to use them in relation to all of the goods and services covered by the registration of those trade marks. The trade marks should, therefore, all be cancelled or, at the very least, cancelled in part as regards the goods and services for which Sky and Others had no intention to use those marks.

In the referring court’s view, to register trade marks without requiring actual use of them would facilitate the registration process and enable brand owners to obtain protection of their trade marks more easily in advance of a commercial launch. However, the result of facilitating registration or allowing it to be obtained too broadly would be mounting barriers to market entry for third parties and an erosion of the public domain. Accordingly, the possibility of registering a trade mark without the intention to use it in relation to all or some of the specified goods and services would enable abuse, which would be harmful, if there were indeed no possibility of challenging an abusive registration by relying on the bad faith of the proprietor of the trade mark concerned. The referring court notes that, in their case-law, the United Kingdom courts and tribunals have focused more closely on the requirement of intention to use the trade mark concerned for the goods and services specified in the application for registration, because of the existence of Section 32(3) of the Trade Marks Act 1994 in that Member State’s law.

The referring court is uncertain whether that provision is compatible with EU law. Assuming that it is compatible with EU law, the referring court is also uncertain as to the scope of the condition relating to the intention to use the trade mark for the goods and services for which it was registered.

In those circumstances the High Court of Justice (England & Wales), Chancery Division decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark?

(2) If the answer to question (1) is yes, is a term such as “computer software” too general and covers goods which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark?

(3) Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services?

(4)  If the answer to question (3) is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services?

(5)  Is section 32(3) of the UK Trade Marks Act 1994 compatible with [Directive 2015/2436] and its predecessors?’

The Court’s decision:

1. Articles 7 and 51 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, as amended by Council Regulation (EC) No 1891/2006 of 18 December 2006, and Article 3 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision.

2. Article 51(1)(b) of Regulation No 40/94, as amended by Regulation No 1891/2006, and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, within the meaning of those provisions, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark. When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services.

3. First Directive 89/104 must be interpreted as not precluding a provision of national law under which an applicant for registration of a trade mark must state that the trade mark is being used in relation to the goods and services in relation to which it is sought to register the trade mark, or that he or she has a bona fide intention that it should be so used, in so far as the infringement of such an obligation does not constitute, in itself, a ground for invalidity of a trade mark already registered.

Tiffany won a dispute against a British citizen with the same name

zurich-1207287_1920The UK based owner of a small business Tiffany Parmar applied for a UK trademark “Cotswold Lashes by Tiffany” in 2018. The scope of the application covers the following classes: 3 (cosmetics), 41 (education and beauty school services) and 44 (hygienic and beauty care services).

Against this application, the US company Tiffany&Co filed an opposition based on a family of early registered trademarks Tiffany for classes 3, 14 and 41. In addition, a trademark with reputation was claimed due to the fact that Tiffany&Co has been operating in the UK since 1868 making sales for millions of dollars every year.

The UKIPO upheld the opposition with the argument that there is a serious risk for consumer confusion between the signs. The claimed reputation was not taken into consideration, however, because according to the Office, it was stated for goods that are dissimilar with those in the later mark.

The case at hand shows clearly that it is not always possible for individuals to register their personal names as a trademark if they collide with an already established and well-known trademark.

LEGO lost a trademark dispute in Japan

despaired-2261021_1920The world well-known toy manufacturer LEGO lost a trademark dispute against the following trademark application filed in Japan for class 28 – cat toys:

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Against this application, LEGO invoked its Lego trademark for class 28 and claimed an acquired reputation amongst Japanese consumers.

The Japan Patent Office agreed that LEGO is a well-known trademark in the country for many years a conclusion supported even by the fact that half of the schools in Japan used Lego toys for educational purposes.

Nevertheless, the Office dismissed the opposition stating that both signs are not confusingly similar. The Lego’s argument that CATTY is descriptive terms as the first part of the later mark, was rejected.

According to the Office, the other reason for lack of confusion was the fact that the goods target different manufacturers, consumer audience and distribution channels.

Source: Masaki MIKAMI.

The European Patent Office is ready to issue Unitary EU patents

european-union-1328255_1280The 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.