Where a trademark lawsuit has to be initiated in case of online sales in the EU?

buy-3692440_960_720.jpgThe European Court has ruled in case C‑172/18 AMS Netve Ltd, Barnett Waddingham Trustees, Mark Crabtree v Heritage Audio SL, Pedro Rodríguez Arribas. This case concerns the territory where a trademark lawsuit has to be initiated in case of online sales. In details:

AMS Neve is a company established in the United Kingdom which manufactures and sells audio equipment. BW Trustees, also established in the United Kingdom, is the trustee of the AMS Neve executive pension scheme. Mr Crabtree is a director of AMS Neve.

Heritage Audio is a company established in Spain which sells and supplies audio equipment. Mr Rodríguez Arribas, who is domiciled in Spain, is the sole director of Heritage Audio.

On 15 October 2015 AMS Neve, BW Trustees and Mr Crabtree brought an action against Heritage Audio and Mr Rodríguez Arribas before the Intellectual Property and Enterprise Court (United Kingdom) claiming infringement of an EU trade mark of which BW Trustees and Mr Crabtree are the proprietors and for the use of which AMS Neve is exclusively licensed.

Their action concerns, in addition, the alleged infringement of two marks registered in the United Kingdom of which BW Trustees and Mr Crabtree are also the proprietors.

The EU trade mark relied on consists of the figure 1073 and was registered for goods within Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended. The description of the goods covered is in part as follows: ‘sound studio recording, mixing and processing equipment’.

The defendants in the main proceedings are alleged to have offered for sale to consumers in the United Kingdom imitations of goods of AMS Neve bearing a sign that is identical or similar to that EU trade mark and to the national trade marks or referring to that sign, and to have advertised those products.

The applicants in the main proceedings have submitted documents in support of their action, including the contents of the Heritage Audio website and the latter’s Facebook and Twitter accounts, an invoice issued by Heritage Audio to an individual residing in the United Kingdom and correspondence between Heritage Audio and a person established in the United Kingdom concerning possible deliveries of audio equipment.

The applicants in the main proceedings have in particular submitted screenshots from that website on which they claim appeared offers to sell audio equipment bearing a sign identical or similar to that EU trade mark. They have stressed that the offers for sale are worded in English and that a section headed ‘where to buy’ lists distributors established in various countries, including the United Kingdom. Further, they claim that it is apparent from the general sale conditions that Heritage Audio accepts orders from any EU Member State.

The defendants in the main proceedings pleaded that the court before which the action was brought had no jurisdiction.

While the defendants do not deny that Heritage Audio products might have been purchased, in the United Kingdom, through other companies, they assert that they have not, themselves, either advertised in the United Kingdom or made any sales in that Member State. They further assert that they have never appointed a distributor for the United Kingdom. Last, they contend that the content displayed on the Heritage Audio website and on the platforms to which the applicants in the main proceedings refer was, by the time of the period covered by the infringement action, obsolete and ought not therefore to be taken into account.

By judgment of 18 October 2016, the Intellectual Property and Enterprise Court held that it had no jurisdiction to hear the infringement action in so far as that action is based on the EU trade mark at issue.

That court states that the applicants in the main proceedings submitted evidence capable of proving that the Heritage Audio website was directed to, inter alia, the United Kingdom. That court considers, further, that the facts of the dispute before it enable it to find that Mr Rodríguez Arribas is jointly liable for the acts of Heritage Audio and that the courts of the United Kingdom have jurisdiction to hear the case in so far as that dispute concerns the protection of national intellectual property rights.

The Intellectual Property and Enterprise Court considers, on the other hand, that that dispute, in so far as it concerns infringement of the EU trade mark, is subject, in accordance with Article 97(1) of Regulation No 207/2009, to the jurisdiction of the courts of the Member State in whose territory the defendant is domiciled, in this case the Kingdom of Spain. The Intellectual Property and Enterprise Court adds that the jurisdiction of the Spanish courts also stems from Article 97(5) of that regulation, under which infringement actions may also be brought before the courts of the Member State in whose territory the act of infringement has been committed.

As regards the latter provision, the Intellectual Property and Enterprise Court considers that the court which has territorial jurisdiction to hear an action brought by the proprietor of a mark against a third party that has used signs identical or similar to that mark in advertising and offers for sale on a website or on social media platforms is the court with jurisdiction over the place where the third party decided to place that advertising or to offer for sale products on that site or on those platforms and took steps to give effect to that decision.

The applicants in the main proceedings brought an appeal against that judgment before the Court of Appeal (England & Wales) (Civil Division).

The referring court considers that the court of first instance, while referring in its judgment to certain judgments of the Court, such as those of 19 April 2012, Wintersteiger (C‑523/10, EU:C:2012:220), and of 5 June 2014, Coty Germany (C‑360/12, EU:C:2014:1318), misinterpreted those judgments and the case-law of the Court in general.

The referring court is of the opinion that such an interpretation would lead, in essence, to a finding that ‘the Member State in which the act of infringement has been committed’, within the meaning of Article 97(5) of Regulation No 207/2009, is the Member State in which the defendant set up its website and its social media accounts. According to the referring court, it follows, however, from the wording, purpose and context of that provision that the territory of the Member State subject to that provision is that in which the consumers or traders to whom the advertising and offers for sale are directed are resident.

The referring court adds that the Bundesgerichtshof (Federal Court of Justice, Germany), in its ‘Parfummarken’ judgment of 9 November 2017 (I ZR 164/16), held that the interpretation of the wording ‘law of the country in which the act of infringement was committed’, in Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II) (OJ 2007 L 199, p. 40), adopted in the judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), can be transposed to Article 97(5) of Regulation No 207/2009. However, the referring court has some doubts with regard to that finding of the Bundesgerichtshof.

In those circumstances, the Court of Appeal (England & Wales) (Civil Division) decided to stay proceedings and to refer to the Court the following question for a preliminary ruling, adding in its decision that that question concerns the interpretation of Article 97(5) of Regulation No 207/2009:

‘In circumstances where an undertaking is established and domiciled in Member State A and has taken steps in that territory to advertise and offer for sale goods under a sign identical to an EU trade mark on a website targeted at traders and consumers in Member State B:

(i)  does an EU trade mark court in Member State B have jurisdiction to hear a claim for infringement of the EU trade mark in respect of the advertisement and offer for sale of the goods in that territory?

(ii)  if not, which other criteria are to be taken into account by that EU trade mark court in determining whether it has jurisdiction to hear that claim?

(iii)  in so far as the answer to (ii) requires that EU trade mark court to identify whether the undertaking has taken active steps in Member State B, which criteria are to be taken into account in determining whether the undertaking has taken such active steps?’

The Court’s decision:

Article 97(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as meaning that the proprietor of a European Union trade mark who considers that his rights have been infringed by the use without his consent, by a third party, of a sign identical to that mark in advertising and offers for sale displayed electronically in relation to products that are identical or similar to the goods for which that mark is registered, may bring an infringement action against that third party before a European Union trade mark court of the Member State within which the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding that that third party took decisions and steps in another Member State to bring about that electronic display.

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Bacardi won a case in Turkey for a trademark that has been never used there

pexels-photo-1571849Mutlu Köse published an interesting article for Marques Class 46 which discusses the court practice in Turkey regarding cases of non-use of trademarks.

The dispute at hand concerns a lawsuit initiated by Bacardi against a local beverage producer for a trademark infringement of BREEZER mark owned by the company.

The Turkey company uses similar sign FREEZER and look-alike packaging.

As a response, KIRBIYIK FREEZER started revocation proceeding against Bacardi’s BREEZER mark for lack of genuine use in the country for a period of 5 years as it is stipulated by the law.

Bacardi had never used its trademark but the reason for this was the fact that the Turkish regulations do not allow the sale of cocktail beverages containing distilled alcohols.

According to the Court, however, this represented a valid reason for non-use of the registered mark (the onliest option for overcoming such revocation apart from actual use) and dismissed the Turkish company request. At the same time, the court accepted the claims for trademark infringement and unfair competition against KIRBIYIK FREEZER.

Lacoste lost a crocodile case in Nederland

The Hague District Court ruled in a lawsuit between Lacoste and Hema, which concerns a children’s underwear with a crocodile motif.

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According to Lacoste, Hema infringed the rights over their registered trademarks, which above all is well-known amongst the consumers.

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The Court, however, disagreed with Lacoste stating that there was no infringement in the case at hand because the use of a repetitive crocodile pattern was perceived as a decoration, not as a source of origin. The practice of using animal depictions for children’s clothing is widespread.

Lacoste claimed that confusion could be created due to the fact that their trademarks have had a reputation on the market for many years. In addition, a survey was been provided, in which many respondents stated that they connect crocodile depictions with the Lacoste’s trademark.

The Court dismissed this evidence because the questions in the survey were leading, making respondents think about trademarks. On top of that, the relevant public wasn’t defined correctly.

According to Lacoste, some of the clothes contained only one depiction of crocodile which made even easier for the consumers to make a connection with their trademark.

The Court disagreed for this too, concluding that this cloth had been selling in a package with others and only in the Hema’s stores so the relevant consumers would not be confused neither be able to connect it with the Lacoste’s trademarks.

Source: AKD NV – Bram Woltering, Lexology.

Apple lost a lawsuit against Pear in the EU

fruit-2637058_960_720.jpgApple Inc. lost an interesting lawsuit before the General Court of the European Union regarding its famous trademark logo. The case at hand concerns an attempt by the Chinese company Pear Technologies Ltd to register the following European trademark:

download.pngFor classes of goods and services:

 Class 9: ‘Personal computers; laptop computers; handset and tablet mobile digital electronic devices for the sending and receiving of telephone calls and/or any digital data and for use as a handheld computer; apparatus for recording, transmission or reproduction of sound or images; videophones, video-tablets, pre-recorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, computer hardware, software and firmware, namely operating system programs, application development computer software programs for personal and handheld computers or handheld mobile digital electronic devices; computer, handheld and mobile handset device peripherals products; parts, fittings and accessories for all the aforesaid goods’;

Class 35: ‘Providing consultancy on digital marketing; providing CRM solution and business solution design services’;

Class 42: ‘Maintenance and updating of computer software; providing information concerning computer software via the internet and other computer and electronic communication networks; computer network services; providing consultancy on networking, webpage design; providing server hosting services; providing domain management services; provision of software applications for handheld, tablets, personal computer and laptop computer devices and data centre management; technical consultancy; all aforesaid services also as business to business and all aforesaid services also as business to consumer or consumers’.

Against this application an opposition was filed by Apple on the ground of its following earlier figurative trademark:

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For classes of goods and services:

Class 9: ‘… Computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; … digital music and/or video players; MP3 and other digital format audio players; … handheld and mobile digital electronic devices for the sending and receiving of telephone calls; … computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; … computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server …’;

Class 35: ‘… Retail store and online store services in the field of entertainment featuring music, video, … musical works, pre-recorded audio and audio-visual works and related merchandise, and music related electronic products, via the Internet and other computer, electronic and communications networks …’;

Class 42: ‘… Application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program, audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs …’

Initially, the EUIPO upheld the opposition, the main argument for which was the proved reputation of Apple’s trademark among the consumers in the EU.

In the appeal, however, The General Court annulled this decision stating that EUIPO erred in its assessment. The reasons for this conclusion were that even though Apple’s sign has a reputation, which broadens its protection scope, this can be an argument only in a case that both trademarks are phonetically, visually and conceptually similar.  In the case at hand, this is not true.

  In that regard, it should be noted, first, that it is admittedly true that each of the conflicting marks may be described as using the image of a fruit. However, as all the parties to this action also argue, the mere fact that there is a generic term which includes the terms used to describe the semantic content of the marks at issue is not a relevant factor in the context of the conceptual comparison. In the same vein, it should be borne in mind that the examination of the similarity takes into consideration the conflicting marks as they have been registered or as they have been applied for. Accordingly, it should be observed that the conflicting marks evoke the concept of ‘fruit’ only in an indirect manner. It follows from the considerations set out in paragraphs 62 and 63 above that the conflicting marks will not be perceived as depicting two unidentifiable fruits, but rather as (i) an apple with a bite taken out of it, possessing a leaf, and (ii) a pear with a stem. In those circumstances, it is inconceivable that the relevant public displaying a high level of attention will use the term ‘fruit’ instead of ‘pear’ or ‘apple’ when referring to the conflicting marks.

  Next, it should be borne in mind that, according to the case-law cited in paragraphs 22 and 61 above, the comparison of the conflicting marks must be based on the overall impression given by them, by reference to the intrinsic qualities of those marks, and, moreover, conceptual similarity arises from the fact that both marks use images with a similar semantic content. These considerations counter the taking into account of factors such as those mentioned in paragraph 32 of the contested decision, which are not based on the perception of the semantic content of the images used by the conflicting marks, as they have been registered or as they have been applied for, but which are distant from the actual depiction of them. The protection which is granted to an earlier figurative mark does not apply, in the absence of commonalities with the depiction of the mark cited in opposition, to the general category of phenomena that it depicts. The Board of Appeal was therefore wrong to take the view that the marks at issue could be regarded as being conceptually similar on the sole ground that the fruits which they depicted shared several characteristics in real life.

Case T‑215/17, Pear Technologies Ltd v European Union Intellectual Property Office (EUIPO)

BMW won a lawsuit regarding its Mini Cooper brand

red-84593_960_720BMW won a lawsuit in Germany against the Chinese company Ninebot which offer electric scooters.

The case concerns an advertisement spot for the Ninebot’s scooter which includes among other a Mini Cooper car producing by BMW.

According to the German company, this was unfair trade practice because, first of all, Ninebot had no permission to include the Mini Cooper brand in the spot, and secondly, by doing that the company took unfair advantages from the longstanding Mini Cooper’s reputation on the market.

The court went along with BMW, accepting that the Mini Cooper brand was exposed clearly and in a non-descriptive manner in the advertisement.

Source: WIPR.

Can H2O+ be a trademark in The EU?

drop-of-water-545377_960_720The General Court of the European Union has issued a decision on case T‑824/17 H2O Plus LLC v EUIPO, which concerns an EU application filed by the US company H2O Plus for the following trademark:

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for the following goods:

Class 3: ‘Non-medicated skin care preparations; cosmetic preparations for skin care; cosmetic preparations for body care; skin care products, namely non-medicated skin serum, beauty serums, non-medicated anti-aging serum, cosmetic creams, face and body creams, eye creams, anti-wrinkle creams, anti-aging creams, night creams, age spot reducing creams; sunscreen creams, nail cream, face and body lotions, skin lotions, body lotions with SPF, gels for cosmetic purposes, beauty gels and shower and bath gel; eye lotions; eye gels; facial masks; facial washes; facial creams; facial cleansers; facial moisturisers; skin moisturisers; skin masks; cosmetic masks; beauty masks; gel eye masks; toning lotion for the face, body and hands; anti-aging toner; skin toners; soap; anti-aging cleanser; skin cleansers, wipes impregnated with a skin cleanser; skin cleansing gels; skin care preparations, namely skin peels; cosmetic preparations, namely, firming creams, firming lotions, facial moisturiser with SPF, face powder, non-medicated exfoliating preparations for use on the face, skin, body, hands and feet; lip cream; lip balm; non-medicated lip care preparations; lip balm with SPF; make-up remover; cloths or tissues impregnated with a skin cleanser; cosmetic body scrubs for the face, skin, body, hands and feet; beauty creams for body care; body and beauty care cosmetics; body wash; skin care preparations, namely, body balm, skin and body topical lotions, creams and oils for cosmetic use; body butter, body oil, hair care preparations, hair shampoos and conditioners; hand cream; non-medicated foot cream and foot scrubs; lipstick; after-shave balms; shaving soaps; shaving preparations, pre-shave creams, pre-shave oils; non-medicated bath salts, non-medicated bath preparations; skin refreshers; antiperspirants; personal deodorants; deodorants for body care; cosmetic pads; pre-moistened cosmetic towelettes; body masks; body washes; cosmetic preparations for eye care; lip glosses; nail care preparations; non-medicated acne treatment lotions; non-medicated acne treatment preparations;’

Class 5: ‘Medicated sunscreen, namely, lotions containing sunscreen; acne treatment preparations, namely, cleansing pads, lotions, creams, and cleansers’.

The EUIPO refused to register this mark based on the absolute grounds – descriptiveness and lack of distinctiveness with regard to above-mentioned goods. Consumers will perceive the sign as an indication of the ingredients and chemical formula of the products and not as a source of origin. The presence of + sign can be deemed as a quality indication.

The decision was appealed. According to the company, the combination between letters, numbers and signs can represent a distinctive trademark.

The court dismissed the appeal upholding the EUIPO position. Although not all of the products, consist predominantly of water, still these products contain water so the trademark applied for is descriptive. The + sign is not enough to overcome this.

IBM and Groupon reached a multi-million dollar deal

hammer-802298_960_720The online platform Groupon and IBM have reached a patent deal. The case concerns a lawsuit initiated by IBM against Groupon for infringing the US patents 5,796,967; 5,961,601; 7,072,849; и7,631,346 related to online advertising and ways of allowing web users to connect to an internet provider.

After long negotiations and an ask by IBM for doubling the damages to 165 million dollars, both companies have reached an agreement to cease the lawsuit for which Groupon will pay 57 million dollars.

This case is just another good example of the role and potential that intellectual property has for generating additional revenue for its owners.

In the case at hand IBM will monetarize its patents giving longstanding licenses to Groupon against which the company will allow its employees to use some of the services offered by Groupon with cross-licenses.

Although intellectual property disputes can be quite tough sometimes, if they are used and managed skillfully they can lead to a win-win situation for both parties at the end of the day.

Source: WIPR.