Photo by ALEXANDRE LALLEMAND on Unsplash
WIPO reports about new individual fees for the designation of the EU in applications for international trademarks as well as for renewal of such. The new fees will come into force on 12.10.2023 and are as follows:
Trademark disputes can be complex, especially when they span across multiple jurisdictions. In the European Union (EU), resolving such disputes involves a lot of efforts and time. A recent EU Court decision sheds light on cases involving multiple defendants domiciled in different EU member states.
The case C‑832/21 is between Beverage City & Lifestyle GmbH, MJ, Beverage City Polska Sp. z o.o., FE and Advance Magazine Publishers Inc, has the following background:
Advance Magazine Publishers, established in New York (United States), being the publisher of the popular magazine Vogue, is the proprietor of a number of EU trademarks containing the word element ‘Vogue’, which it claims are trademarks with a reputation.
Beverage City Polska is a company incorporated under Polish law and established in Kraków (Poland). It manufactures, advertises, and distributes an energy drink under the name ‘Diamant Vogue’. Its managing director, FE, is also domiciled in Kraków.
Beverage City & Lifestyle is a company incorporated under German law and established in Schorfheide in Brandenburg (Germany). Its managing director, MJ, is domiciled in Niederkassel in North Rhine-Westphalia (Germany). That company was connected with Beverage City Polska through an exclusive distribution agreement for Germany under which it sourced the energy drink referred to in the preceding paragraph from Beverage City Polska. Despite the similarity in name, the two companies do not belong to the same group.
Taking the view that it had been the victim of acts of infringement of its trademarks, Advance Magazine Publishers brought an action against those companies and their respective managing directors before the EU trademark court with jurisdiction for North Rhine-Westphalia, namely the Regional Court, Düsseldorf, Germany, for injunctive relief throughout the European Union and for information, the disclosure of accounts and a declaration of liability for damages. Those supplementary claims were later limited to acts in Germany.
The Regional Court, Düsseldor) upheld the action brought by Advance Magazine Publishers, basing its international jurisdiction in so far as concerns Beverage City Polska and FE on Article 8(1) of Regulation No 1215/2012. It found that the principles established by the Court of Justice in its judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), were applicable to the case in the main proceedings.
Beverage City Polska and FE brought an appeal against the decision of the Regional Court, Düsseldorf before the Higher Regional Court, Düsseldorf, Germany.
They argue that the German courts do not have international jurisdiction to hear and determine the action brought against them, stating that they had operated and delivered goods to their customers exclusively in Poland. In addition, the judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), is not, it is argued, transposable to their situation, since there is no relevant connection between them, on the one hand, and Beverage City & Lifestyle and MJ, on the other.
The referring court considers that the international jurisdiction of the German courts to hear and determine the action against Beverage City Polska and FE is subject to the condition that, in accordance with Article 8(1) of Regulation No 1215/2012, that claim is so closely connected with that brought against MJ, described as the ‘anchor defendant’, that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.
In the present case, in contrast to the case which gave rise to the judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), the supply relationship between Beverage City Polska and Beverage City & Lifestyle does not concern the anchor defendant against whom proceedings were brought only in his capacity as representative of the latter company. Furthermore, those two companies do not belong to the same group of companies and operate autonomously and independently of each other.
The referring court is uncertain, however, whether the existence of an exclusive distribution agreement between Beverage City Polska and Beverage City & Lifestyle is sufficient to satisfy the condition laid down in Article 8(1) of Regulation No 1215/2012, it being noted that the case in the main proceedings concerns the same trademarks and the same goods.
In those circumstances, the Higher Regional Court, Düsseldorf decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:
‘Are claims “so closely connected” that it is expedient to hear and determine them together to prevent irreconcilable judgments, within the meaning of Article 8(1) of [Regulation No 1215/2012], where, in infringement proceedings for infringement of an EU trade mark, the connection consists in the fact that the defendant domiciled in a Member State (here, [the Republic of] Poland) supplied the goods which infringe an EU trade mark to a defendant domiciled in another Member State (here, [the Federal Republic of] Germany) whose legal representative, against whom infringement proceedings have also been brought, is the anchor defendant, if the parties are connected to each other only through the mere supply relationship beyond which there is no legal or factual connection?’
The court decision:
Article 8(1) of Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters must be interpreted as meaning that:
a number of defendants, domiciled in different Member States, may be sued in the courts for the place where one of them is domiciled before which, in the context of an infringement action, claims have been brought against all of those defendants by the proprietor of an EU trade mark where they are each accused of having committed a materially identical infringement of that trade mark and they are connected by an exclusive distribution agreement.
The Board of Appeal of the EUIPO upheld the examiner’s decision for refusal of the following figurative mark, representing an emoticon, on absolute grounds – lack of distinctive character:
The mark is filed for various services in classes 36 and 37 such as financial, real estate, and construction-related services.
According to the Office, this emoticon represents an informal sign that means “I love you”, used to express feelings in typed communication. Because of this, consumers would not perceive it as a source of trade origin but rather as an advertising message or pure decorative element, neither of which can represent a trademark.
In the context of the services in question, the sign can express satisfaction with the services due to which it lacks any distinctive character.
Source: Alicante news.
The European Court has ruled in the case C‑654/21 – LP v KM, which concerns defining the scope of a [counter]claim for a declaration of invalidity of an EU trademark. The background is as follows:
LM is the proprietor of the EU word mark Multiselect (‘the contested mark’), registered on 5 June 2018 in respect of goods and services in Classes 9, 41, and 42. Those goods and services include inter alia, vocational guidance (education or training advice), education information, installation of computer software, maintenance of computer software, publication of texts and providing online electronic publications.
Since 2009, KP has offered as part of his business activities a guide for prospective police officers, in both printed and digital format, which aims to prepare them for the psychological tests covered by the contested mark, which constitute one of the stages of that recruitment procedure. KP promotes his guide on various websites.
On 26 February 2020, LM brought an action for infringement of the contested mark before the Regional Court, Warsaw, Poland, the referring court, seeking an order requiring KP to cease marking the goods and services he is marketing with the contested mark and to cease placing that mark on all materials connected with the marketing of those goods and services.
In the course of those proceedings, on 30 July 2020, KP filed a counterclaim for a declaration of invalidity of the contested mark in respect of some of the goods and services for which it had been registered, pursuant to Article 59(1) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) to (d) and Article 7(2) of that regulation.
By judgment of 7 October 2021, the referring court dismissed the action for infringement in its entirety.
As regards the counterclaim, the referring court has doubts as to the scope of the examination which it must carry out where, as in the case in the main proceedings, the subject matter of a counterclaim goes beyond a ‘defence’ put forward in response to the action for infringement.
In the present case, while the claims in the main action concerned only the services and goods marketed by KP, the scope of the counterclaim is substantially broader, since KP claims that the contested mark should be declared invalid in so far as it covers not only the goods and services concerned in the main action, but also other goods and services.
Thus, the referring court raises the question whether all claims for a declaration of invalidity of the contested mark, irrespective of their actual connection with the infringement proceedings, fall within the concept of ‘counterclaim for … a declaration of invalidity’ within the meaning of Article 124(d) and Article 128(1) of Regulation 2017/1001, or whether that concept must be interpreted as covering only those claims which have an ‘actual connection’ with the infringement proceedings, namely those which fall within ‘the scope of the infringement proceedings’.
According to the referring court, to accept that a counterclaim may have no ‘actual connection’ with the infringement proceedings would result in the risk that the main proceedings would be ‘dominated’ by the counterclaim and that the counterclaim would lose its character as a defence to the claims set out in the main action. It favours interpreting the concept of ‘counterclaim’ as meaning that it can refer only to claims having an actual connection with the action for infringement, a connection which is ‘determined not by the content of the [contested] trademark right; nor is it determined by the scope of the defendant’s activities, but rather by the content of the claims set out in the [action for infringement]’.
In the view of the referring court, such an interpretation is supported, first, by the principle of procedural autonomy of the Member States and Article 129(3) of Regulation 2017/1001 and, secondly, by the rules governing the jurisdiction of EUIPO and that of the EU trade mark courts, from which it is apparent that the jurisdiction of those courts constitutes an exception in relation to the invalidity of an EU trade mark.
Lastly, the referring court explains that, on the date on which the action for infringement at issue in the main proceedings was brought, Polish law did not provide for the possibility for defendants in infringement proceedings brought by proprietors of trademarks registered in Poland to file a counterclaim for a declaration of invalidity, since Article 479122 of the Code of Civil Procedure, inserted by the Law of 13 February 2020, had not yet entered into force on that date. It therefore has doubts as to whether, for the purposes of the case in the main proceedings, those provisions may be regarded as ‘rules of procedure governing the same type of action relating to a national trademark’ within the meaning of Article 129(3) of Regulation 2017/1001.
In those circumstances, the Regional Court, Warsaw decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1) Must Article 124(d) of Regulation [2017/1001], read in conjunction with Article 128(1) thereof, be interpreted as meaning that the term “counterclaim for … a declaration of invalidity” contained in those provisions may mean a [counter]claim for a declaration of invalidity only to the extent that that counterclaim is connected with the claimant’s EU trade mark infringement claim, thus allowing a national court not to hear a counterclaim for a declaration of invalidity the scope of which is broader than that connected with the claimant’s infringement claim?
(2) Must Article 129(3) of Regulation [2017/1001] be interpreted as meaning that the provision in question, which concerns “the rules of procedure governing the same type of action relating to a national trademark”, refers to the national rules of procedure which would be applicable to specific proceedings concerning infringement of an EU trade mark (and to proceedings resulting from a statement of counterclaim seeking a declaration of invalidity), or does it refer generally to the national rules of procedure present in the legal order of a Member State, this being relevant in cases where, on account of the date on which the specific proceedings concerning infringement of an EU trade mark were initiated, the rules of procedure governing a counterclaim for a declaration of invalidity of a trade mark relating to national trade marks were not present in the legal order of a given Member State?’
The Court decision is:
Article 124(d) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark, read in conjunction with Article 128(1) thereof,
must be interpreted as meaning that a counterclaim for a declaration of invalidity of an EU trademark may relate to all the rights which the proprietor of that mark derives from its registration and that the subject matter of that counterclaim is not restricted by the scope of the dispute as defined by the action for infringement.
What should be the level of similarity between two marks in order for the earlier to prevail in an opposition proceeding?
According to the Swiss Federal Administrative Court, even an indirect likelihood of similarity, under specific circumstances, could be sufficient for successful opposition.
The case concerns a trademark application for the word mark RED DRAGON filed in Switzerland by Reign Beverage Company for energy drinks and other non-alcoholic drinks.
Against this application, an opposition was filed by Red Bull based on the earlier famous mark RED BULL for registered and used for the same goods.
The Patent Office found the opposition well-grounded and successful which was confirmed by the Court too.
According to the Court, there is an indirect likelihood of confusion between the signs. Both marks consist of two words that are perfectly understood by consumers in the country. The first word is RED while the second is related to a wild, strong, and mythological animal.
The Court considered the RED BULL mark as famous even without explicit evidence. Due to the similar structure of the words in both signs including from a conceptual point of view, the Court found a mental association between the mark applied for and the well-known RED BULL in consumers’ minds. This could make consumers believe that there were economic connections between both owners, that is to say, that the latter mark was part of the family of the earlier marks or was approved or licensed by Red Bull company.
This conclusion is supported additionally by the low degree of consumer attention for purchasing energy and non-alcoholic drinks from one side, and the high level of reputation of the earlier mark.
Source: Walder Wyss Ltd – Sylvia Anthamatten and Katharina C. Röhl for Lexology.
WIPO reports about new individual fees for the designation of the United Kingdom in applications for international trademarks. The new fees will come into force on 12.07.2023 and are as follow:
The General Court of the European Union has ruled in the case T-735/21 – Aprile and Commerciale Italiana v EUIPO, DC Comics, which concerns a dispute for a trademark.
DC Comics, the owner of one of the most famous superhero characters such as Batman and Superman, successfully registered the following EU trademark in 1998:
In 2019, the Italian company Commerciale Italiana filed an application for a declaration of invalidity (for goods related to clothing and carnival items) of this mark based on absolute grounds – lack of distinctive character and descriptiveness.
The EUIPO and the Board of Appeal dismissed the invalidity because of which the case went to the General Court.
The Court upheld the EUIPO position on the case. When it comes to the lack of distinctiveness, the Court considered that such a claim cannot be grounded only based on the fact that Batman’s logo is associated with the well-known superhero and his appearance. On the contrary, the Court stated that consumers clearly associate this logo with its owner DC Comics, which fulfills the primary function of every mark i.e. to identify a particular commercial origin.
Regarding the claimed descriptiveness, the Court concluded that it was not sufficiently established by Commerciale Italiana. The fact that the superhero Batman wears this bat logo on his famous costume does not mean any descriptiveness for goods such as clothes and carnival items.
INTELLECTUAL PROPERTY PLANET 