Amazon won a trademark dispute for BEVERLY HILLS POLO CLUB in the UK

Amazon won an interesting lawsuit in the UK. Lifestyle Equities accused Amazon of infringement of a trademark BEVERLY HILLS POLO CLUB owned by the company.

The reason for this accusation was the fact that products sold on amazon.com and their prices were been visible for consumers in the UK and EU as a whole.

As it is well-known, a trademark owner has the right to prohibit parallel import and sales of products labeled with a trademark in another country. The logic behind this is that the trademark owner has the right to determine its distribution and price policy for every country where its trademark is registered.

In the case at hand, products with the trademark BEVERLY HILLS POLO CLUB were sold through amazon.com in four main ways:

• Amazon Exports-Retail – customers purchased products from amazon.com and they are delivered to the UK/EU;

• FBA Export – third parties sell via amazon.com while Amazon manages everything related to the logistics and shipping;

• MFN Export – third parties sell via amazon.com but Amazon does not handle the logistics;

• Amazon Global Store – consumers on amazon.co.uk can access listings for products on amazon.com.

According to the Court there is no trademark infringement by Amazon.

In two of the options – FBA Export and MFN Export sales are done by the relevant sellers not Amazon itself.

In the rest of the options Amazon is not liable too. The reason for this is that Lifestyle Equities required from Amazon in 2018 to restrict any sales from amazon.com under the same brand in the UK and the EU. Amazon took the necessary technical measures and restricted the sales with some minor exceptions which the Court considered negligible.

The Court concluded that Amazon had no intention for such sales through amazon.com in Europe although the their price were visible for consumers in the EU.

In addition, the Court pointed out the Amazon’s Terms and Conditions according to which in case of purchasing through amazon.com the consumer is the ‘importer of record’ and gained title to the products in the US.

Source: RPC – Samuel Coppard and Matt Davies for Lexology.

Advertisement

The targeted consumers are a key element in cases of trademark infringement in the EU

An interesting case for a trademark infringement from the UK. The local company for audio equipment AMS Neve initiated a lawsuit against the Spanish rival Heritage Audio for trademark infringement and passing-off.

The case concerns similar imitating products under the brand 1073 offered by the Spanish company not directly in the UK but through a website, social media and online advertisements accessible in the UK.

According to Heritage Audio there was no infringement because there were no sales in the UK. What’s more, due to that fact the UK Court had no jurisdiction to intervene.

The Intellectual Property Enterprise Court decided to ask the European Court about the issue with online sales and the jurisdiction that is applicable in such scenarios.

According to the EU Court, when it comes to online sales the most essential element is not where sales happened or where the infringer is located but the consumers that are targeted.

In the case at hand, the UK consumers were targeted by the Spanish company through websites and social media which means that the UK Court have the right to decide whether or not there is a trademark infringement.

This case is important especially in the light of the internet business development in the recent decades.

When you want to sale products in the EU as a whole you need to be sure that the trademark you want to use are not already protected by someone else. If this is the case, the fact that you don’t have direct sales in one Member State is irrelevant if your online business model target in some ways the consumers in that particular country.

Source:Nina Goodyear – Taylor Wessing for Lexology.

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

The 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.

“BLACK FRIDAY” cannot be a trademark in Germany

Marques Class 46 reports about an interesting case in Germany which concerns a “BLACK FRIDAY” trademark registered by a Hing Kong company. Being the owner of this mark, the company aggressively started to enforce its rights sending cease-and-disease letters to many trade companies and retailers in the country.

This, in turn, created a serious disturbance among these companies, which had been using “BLACK FRIDAY” for promotion purposes for years.

Because of this, they initiated a cancellation proceeding before the Patent Office, claiming that “BLACK FRIDAY” is widely used and non-distinctive term.

The Patent Office concurred with them, based its conclusion on the various pieces of evidence which clearly show that “BLACK FRIDAY” had been used in Germany before the application date of the mark in promotions and advertisements. The term is perceived by German consumers as an exclusive offer for discount sales.

Design, replica spare parts, wheel rims and an EU Court decision

The European Court ruled out in joined cases C‑397/16 and C‑435/16, Acacia Srl v Audi AG. These cases concern the following:

Case C‑397/16

Audi is the holder of a number of Community designs of alloy car wheel rims.

Acacia manufactures, under the brand WSP Italy, alloy car wheel rims that are sold on its own website, which is available in several languages. According to the referring court, some of those wheel rims are identical to Audi’s alloy wheel rims. The wheel rims manufactured by Acacia are stamped with the indication ‘NOT OEM’, which means not made by the original equipment manufacturer. The commercial and technical documents accompanying those products, the sales invoices and Acacia’s internet site indicate that the wheel rims at issue are sold exclusively as replacement parts for the purpose of making repairs.

Audi brought an action before the Tribunale di Milano (District Court, Milan, Italy) seeking, in essence, a declaration that Acacia’s manufacture and sale of the wheel rims at issue constitutes an infringement of its Community designs. That court upheld that action.

Acacia brought an appeal against that court’s judgment before the Corte d’appello di Milano (Court of Appeal, Milan, Italy). That court, after noting inter alia the existence of conflicting rulings from Italian courts and courts of other Member States concerning the application of the ‘repair’ clause, held that there were serious doubts as to the interpretation of Article 110(1) of Regulation No 6/2002.

In those circumstances, the Corte d’appello di Milano (Court of Appeal, Milan) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Do [i] the principles of the free movement of goods and of the freedom to provide services within the internal market, [ii] the principle of the effectiveness of EU competition law and of the liberalisation of the internal market, [iii] the principles of effet utile and of the uniform application within the European Union of EU law and [iv] the provisions of secondary EU law, such as Directive 98/71, and in particular Article 14 thereof, Article 1 of [Commission Regulation (EU) No 461/2010 of 27 May 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concerted practices in the motor vehicle sector (OJ 2010 L 129, p. 52)] and Regulation [No 124 of the Economic Commission for Europe of the United Nations (UN/ECE) — uniform provisions concerning the approval of wheels for passenger cars and their trailers (OJ 2006 L 375, p. 604, and corrigendum OJ 2007 L 70, p. 413)], preclude an interpretation of Article 110 of Regulation No 6/2002, which contains the repair clause, that excludes replica wheels aesthetically identical to original equipment wheels and approved on the basis of UNECE Regulation No 124 from the definition of a ‘component part of a complex product’ (that complex product being a motor vehicle) for the purpose of the repair of that complex product and the restoration of its original appearance?

(2) In the event that the first question is answered in the negative, do the rules on exclusive industrial rights in respect of registered designs, regard being had to the balancing of the interests referred to in the first question, preclude the application of the repair clause to replica complementary products that may be selected freely by the customer, on the basis that the repair clause is to be interpreted restrictively and may be relied upon only with respect to spare parts that come in one particular form only, that is to say, component parts the form of which has been determined in practically immutable fashion with respect to the external appearance of the complex product, to the exclusion of component parts that may be regarded as interchangeable and that may be applied freely, in accordance with the customer wishes?

(3)  In the event that the second question is answered in the negative, what steps must a manufacturer of replica wheels take in order to ensure the free movement of products the intended use of which is the repair of a complex product and the restoration of its original appearance?’

Case C‑435/16

Porsche is the holder of a number of Community designs of alloy car wheel rims.

The wheel rims manufactured by Acacia, referred to in paragraph 12 of the present judgment, are sold, in Germany, on its internet site, which is directed at end consumers and is accessible in German. According to the referring court, some of those wheel rims are identical to Porsche’s alloy wheel rims. That court observes that, according to Acacia, the rims it manufactures and which are intended for Porsche vehicles can be used only with Porsche vehicles. Porsche submits to that court that the rims in question are also offered in colours and sizes which do not correspond to the original products.

Porsche brought an action before the Landgericht Stuttgart (Regional Court, Stuttgart, Germany) seeking, in essence, a declaration that Acacia’s manufacture and sale of the wheel rims at issue constitutes an infringement of its Community designs. That court upheld that action.

As the appeal brought by Acacia and Mr D’Amato was dismissed, they brought an appeal on a point of law (Revision) before the referring court. That court notes that the outcome of the appeal on a point of law depends on whether Acacia may rely on the ‘repair’ clause in Article 110(1) of Regulation No 6/2002. However, the interpretation of that provision raises several difficulties.

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

‘(1)  Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited to fixed shape parts, namely those parts whose shape is in principle immutably determined by the appearance of the product as a whole and cannot therefore be freely selected by the customer, such as rims for motor vehicles?

(2)  If Question 1 is answered in the negative: Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited only to the supply of products of an identical design, which thus correspond also in colour and size to the original products?

(3)  If Question 1 is answered in the negative: Does the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 apply in favour of the supplier of a product that fundamentally infringes the design at issue only if this supplier objectively ensures that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole?

(4)  If Question 3 is answered in the affirmative: Which measures must the supplier of a product that fundamentally infringes the design at issue take in order to objectively ensure that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole? Is it enough:

(a)  that the supplier includes a note in the sales brochure to the effect that any sale takes place exclusively for repair purposes so as to restore the original appearance of the product as a whole; or

(b)  is it necessary that the supplier make delivery conditional on the customer (traders and consumers) declaring in writing that the product supplied is to be used for repair purposes only?’

By decision of the President of the Court of 25 April 2017, Cases C‑397/16 and C‑435/16 were joined for the purposes of the oral part of the procedure and the judgment.

The Court decision is:

1. Article 110(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that the ‘repair’ clause in it does not make the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product.

2. Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that the ‘repair’ clause in it makes the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the replacement part must have an identical visual appearance to that of the part which was originally incorporated into the complex product when it was placed on the market.

3. Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision.