Brief IP news

1. Online content sharing – pay to play? For more information here.  

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Source: Intellectual Property Center at the UNWE. More information can be found here.

Breaking news: storage of goods by individuals can constitute a trademark use in the EU

The European Court has ruled in the case C‑772/18 which concerns the following background:

 On 4 April 2011 B, a natural person resident in Finland, received from China a consignment of 150 ball bearings weighing in total 710 kg, used as spare parts in transmission mechanisms, generators and engines and in the construction of bridges and tramways. On those bearings there was affixed a sign corresponding to the international word mark INA, of which A is the proprietor, covering, inter alia, goods classed as ‘bearings’.

Once customs clearance was completed in B’s name, on 12 April 2011 B withdrew the consignment from the customs warehouse at the airport of Helsinki-Vantaa (Finland), where it was stored, and took it to his home.

A few weeks later, the bearings were delivered to a third party in order to be exported to Russia.

B received as remuneration for those services a carton of cigarettes and a bottle of brandy.

In criminal proceedings for trade mark infringement brought against B before the Court of first instance of Helsinki, Finland, to which proceedings A was joined with respect to his civil interest, that court acquitted B on the ground that it could not be proved that he had deliberately committed an offence. That court however ordered B not to continue or repeat such conduct and ordered him to pay compensation and damages to A for the harm suffered by the latter.

B challenged those orders before the Court of Appeal of Helsinki, Finland.

That court, referring to the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), held that (i) B’s activity was, to a certain extent, equivalent to an activity of storage and onward transport of goods, and it had not been B’s objective to obtain any economic benefit from that activity, and (ii) the remuneration received on that occasion was not based on the economic exploitation of the goods in the course of a business but constituted only consideration for the storage of goods on behalf of a third party.

In the light of the foregoing, the Court of Appeal of Helsinki held that B had not used in the course of trade a sign similar to the registered trade mark at issue in the main proceedings and, consequently, held that the claim for compensation and damages made by A was unfounded.

A brought an appeal against that judgment before the Supreme Court, Finland.

The Supreme Court submits that it is not clearly apparent from the Court’s case-law whether the extent of the economic benefit obtained by a private person by reason of an alleged infringement of a trade mark is a relevant factor in order to determine whether or not there is use of a trade mark in the course of trade.

Further, while it is plain that Article 5 of Directive 2008/95 applies where a person uses a trade mark in the course of his or her own economic activity, there may be some doubt on that point where that person uses it for the benefit of a third party.

The Supreme Court submits that, in the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497), it was held that the proprietor of a tax and customs warehouse who does no more than store on behalf of a third party goods bearing a sign identical or similar to a trade mark does not use that sign. The referring court is uncertain whether such case-law can be transposed by analogy to a case, such as that in the main proceedings, where an individual, in exchange for a bottle of cognac and a carton of cigarettes, has imported goods on behalf of a third party and has retained and stored them, prior to their being uplifted for onward shipment to a non-Member State.

The referring court is uncertain, last, whether the fact that an individual makes known his or her address to a dealer in goods, and takes delivery of them, although he or she did not request that those goods be sent to him or her and he or she took no other active role, can be considered to constitute the importing of goods, within the meaning of Article 5(3)(c) of Directive 2008/95.

In that regard, the referring court notes that, in the judgment of 18 October 2005, Class International (C‑405/03, EU:C:2005:616), the Court held that a prerequisite of goods being put on the market is that those goods have been released for free circulation within the meaning of Article 29 TFEU, which means that the customs duties and charges having equivalent effect that are due have been collected in that Member State. The referring court submits that there is uncertainty as to whether importing can be considered to occur where the person concerned does no more than take delivery of goods sent to his or her address, although he or she did not request that those goods be sent and there is no other active participation by that person in the shipment of those goods into the country.

In the light of all the foregoing, the Supreme Court decided to stay the proceedings and to refer to the Court the following questions for a preliminary ruling:

‘(1)  Is the amount of the benefit received from an alleged infringement of a trade mark by a private individual relevant when assessing whether his conduct is the use of a trade mark in the course of trade within the meaning of Article 5(1) of [Directive 2008/95]or purely private use? If a private individual uses a trade mark, does use in the course of trade require the satisfaction of criteria other than the requirement of economic benefit obtained from the transaction in question concerning the trade mark?

(2)  If the economic benefit must have a certain degree of significance, and a person, on the basis of the triviality of the economic benefit received by him and the non-fulfilment of other possible criteria of use in the course of trade, may not be regarded as having used a trade mark in the course of his own trade, is the condition of use in the course of trade within the meaning of Article 5(1) of [Directive 2008/95] satisfied if a private individual uses a trade mark on behalf of another person as part of that other person’s trade, where he is not, however, an employee in the service of that other person?

(3)  Does a person keeping goods use a trade mark in relation to goods within the meaning of Article 5(1) and (3)(b) of [Directive 2008/95] if the goods on which the trade mark is affixed, sent to a Member State and released into free circulation there, are taken delivery of and retained on behalf of a company that deals in goods by a person who does not carry on a business of importing and storing goods and who does not have a licence to operate a customs warehouse or tax warehouse?

(4)   May a person be regarded as importing goods on which a trade mark is affixed within the meaning of Article 5(3)(c) of [Directive 2008/95] if the goods were not imported at the person’s request, but the person provided his address to a dealer and the goods released into free circulation in the Member State were taken delivery of by that person on behalf of the dealer, and that person retained them for some weeks and delivered them for shipment to a third country outside the European Union for the purpose of resale there?’

The Court’s decision:

Article 5(1) 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, read in conjunction with Article 5(3)(b) and (c) of that directive, must be interpreted as meaning that a person who does not engage in trade as an occupation, who takes delivery of, releases for free circulation in a Member State and retains goods that are manifestly not intended for private use, where those goods were sent to his or her address from a third country and where a trade mark, without the consent of the proprietor of that trade mark, is affixed to those goods, must be regarded as using that trade mark in the course of trade, within the meaning of Article 5(1) of that directive.

Whether INCREDIBLE BURGER is similar to IMPOSSIBLE BURGER – Nestle faced some problems in the EU

The Court in Hague, Nederland, has issued a provisional pan-EU ban against a meat burger made of plant produced by Nestle, which uses the name INCREDIBLE BURGER.

The reason for this was a registered EU trademark for IMPOSSIBLE BURGER owned by the US startup company Impossible Burger that offers food products imitating meat.

Against this mark Nestle initiated a cancellation procedure before the EUIPO based on descriptiveness and lack of distinctiveness for the relevant products.

Meanwhile, the US company responded with a lawsuit in Nederland.

The Court came to a conclusion that the Nestle’s INCREDIBLE BURGER is similar enough to still registered EU trademark IMPOSSIBLE BURGER from a phonetic, visual and partly to a conceptual point of view.

The another thing that led the Court to consider a possible immigration of the IMPOSSIBLE BURGER mark was the fact that both companies were in licence negotiations which, however, failed. In the process of these negotiations Nestle acquired some confidential and sensitive information from the US startup regarding the mark and the product.

Nestle considers to change its product name to Sensational Burger in an attempt to distinguish it from INCREDIBLE BURGER.


“BOND GIRL” cannot be owned by others even written in Japanese

The Japanese Patent Office has ruled in a dispute regarding a registered trademark for “BOND GIRL” written in a Japanese katakana character, for class 41 – arranging, conducting, and organization of seminars.

Against this mark an application for invalidation was filed by Danjaq, LLC as a holder of copyrights over characters from the well-known movies for James Bond.

According to Danjaq, LLC, the registered mark takes advantages of the popular character from the James Bond movies “BOND GIRL”.

The Patent Office invalidated the marks agreeing that the consumers in the country have been aware with this character since 1962. Apart from this “BOND GIRL” was used in many advertising and merchandising campaigns for which licenses were been given from the holder of the copyright.

What is interesting here is that the basis for the invalidation wasn’t confusion regarding the source of origin but a likelihood the mark to cause damage to public order or morality from registration.

Source: Masaki Mikami

How to prove a digital existence of a file or work?

WIPO announced its new service called WIPO PROOF. It  produces tamper-proof evidence regarding the existence of a digital file at a specific time.

The service doesn’t prove authorship or anything else then the fact that the relevant work or file exists at a particular moment.

This could be useful in different intellectual property disputes where a priority date has to be proved.

WIPO acts as a time-stamping authority by issuing a token (a unique digital fingerprint of a digital file in any format and size) which is generated and stored on WIPO servers in Switzerland. The service doesn’t use block-chain technology for the time being.

The following categories of intellectual property and other files and data can use WIPO PROOF: 

  • Trade secrets
  • Creative works
  • Creative designs 
  • Industrial designs
  • Software code  
  • Research
  • Data
  • Digitally signed document
  • Other

WIPO PROOF tokens do not expire but they are kept on WIPO’s servers for 5 years. This period can be renewed for another 5 years by paying a fee. 

The initial cost of one token which is equal to one file is 20 Swiss francs. A bundle of 10 tokens will cost 190 Swiss francs, whereas 100 tokens will cost 1800 Swiss francs.

You can find more information here.

Source: WIPO and IPKat.

New problems for the Coachella festival and its EU trademark

photo-1505224628533-c4fc42c389e0One of the biggest and most popular festivals in the world Coachella Valley Music and Arts Festival (‘Coachella’) was postponed for October this year.

However, this wasn’t the only problem for the company organizer of the festival  AEG Presents Ltd.

Recently, the European Office for intellectual property – trademarks and design (EUIPO) has revoked one of the AEG Presents’ European trademarks: ‘Coachella’ registered in classes 9, 16, 25, 35, and 41.

The reason was a request by a Spanish company that applied for an EU trademark ‘Coachella’ for wines. AEG Presents filed an opposition against this mark and the Spanish company initiated revocation procedure based on lack of genuine use on the EU territory.

AEG Presents submitted evidence for its trademark well-known status amongst the consumer in the EU and the sales of tickets.

However, the EUIPO revoked the ‘Coachella’ for all classes except the following services in class 41: Organisation, production and conducting of performing arts entertainments and festivals, such services provided on-line from a computer database or the Internet; performance of music, such services provided on-line from a computer database or the Internet; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet.

This case serves as a good example of the complexity of proving a trademark genuine use in one territory when the products and services associated with the mark are offered mainly on another territory.

Source: Marks & Clerk – Jack Kenny for Lexology.

Is it possible to use a photo from the internet for your fashion collection?

photo-1558277646-319ce84484bdThe Milan Court has ruled in the case 2539/2020, which concerns not authorized use of a photo for commercial purposes.

In the case at hand, the Italian fashion house Antonio Marras used the following photo, downloaded from the internet, for its Fall/Winter 2014-15 fashion collection:

Screenshot 2020-05-19 at 17.05.01

A lawsuit followed in which the photographer claimed copyright infringement. In Italy, there are two main ways for the protection of photos. The first is the classic one based on the copyright law where, however, the work has to be original, created as a result of the author’s intellectual efforts. The second protection refers to ordinary, simple photos of the real-world without creative efforts in place.

According to the fashion house, there was no copyright infringement because the photo was quite simple and not original, produced without any creative efforts.

The court disagreed. Grounded its position on the European Court decision in the case Painer, C-145/10, the Italian court came to a conclusion the photo was original indeed. The arguments for this were the fact that the author chose carefully the time and the subject to take this photo. What’s more, he used technique and an angle which to invoke specific emotions in the viewers.

The court added that another backing argument for the originality of the picture was the fact that it had been registered in the US Copyright Office, which is possible only if the work is original.

Source: IPKat.