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.


How a trademark can become a generic term and what is the danger in that regard?

door-green-closed-lock.jpgThe US-based company Safe Skies successfully revoked a European trademark ‘TSA lock’  registered by Travel Sentry for classes:

Class 6:      Metal locks (for luggage).

Class 18:    Bags; backpacks, canvas backpacks, athletics bags, carry-on bags, gym bags, travel bags, beach bags, briefcases, purses, suitcases, trunks, luggage, straps for luggage, waist packs, and wallets.

Class 20:    Non-metal locks (for luggage).

The ground for this revocation was Article 58(1)(b) and (c) EUTMR:

The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

  • (b) if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered;
  • (c) if, in consequence of the use made of the trademark by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

According to Safe Skies, this trademark hadn’t been used as a trademark sign but only as a product name. In the case at hand, TSA lock’ was in use for special type of lock for luggage which allows Border Agencies to open it using a universal master key.

EUIPO revoked the trademark dismissing the owner’s arguments that nobody in the EU understands TSA as an abbreviation for Transportation Security Administration.

According to the Office, this is irrelevant because the consumers of this product named it as TSA lock not perceiving it as a trademark sign.

The submitted pieces of evidence weren’t enough to overcome this conclusion.

This case, although rare, is very essential when it comes to trademark protection because it shows clearly what is the danger when one trademark is used as a product name which sometimes is very tempting from marketing point of view.

Source: WIPR.

Why ‘Botanical Origin’ cannot be a European trademark?

water-lily-1857350_960_720The EUIPO Board of Appeal has rules in case R 881/2019-5, which concerns an attempt for registration of a word European trademark for ‘Botanical Origin’ in class 3:

All purpose cleaning preparations for household, commercial, industrial and institutional use; cleaning preparations for toilets, bath tubs, sinks and floors; cleaning preparations for kitchen and bathroom surfaces; disposable wipes impregnated with cleaning compounds for use in bathrooms and kitchens; polishing preparations for kitchen and glassware; oven cleaning preparations; stove-top cleaning preparations; cleaning preparations for vitroceramic and kitchen surfaces; glass and metal cleaning preparations; window cleaning preparations; bleaching preparations and other substances for laundry use, whether in solid, fluid or gel form; laundry preparations; carpet cleaning preparations; decalcifying and descaling preparations for household purposes; fabric softeners; laundry detergents and additives; stain removing preparations; scent boosters; prewash and stain loosening preparations; starch; laundry blue; bleaching preparations and other substances for use in dishwashing; cleaning, polishing, scouring and abrasive preparations; dishwasher cleaners, fresheners and deodorizers; rinsing agents; preparations for cleaning and de-clogging dishwashers; decalcifying and descaling agents for household purposes; dish detergents; all the above-mentioned products with or without disinfecting components; soaps; detergents; rust removers and grease removers; drain and sink unblocking preparations; preparations for prevention of limescale, rust or grease

EUIPO refused to register this sign based on absolute grounds art. 7(1)(b) EUTMR, lack of distinctiveness. The decision was appealed.

The Board of Appeal upheld the initial EUIPO position. The arguments for this is that the expression Botanical Origin would be perceived by the relevant public as information that the goods come from a botanical source and/or contain ingredients that have a plant-based origin.

The applicant argued that the sign is distinctive at least for some of the goods where there is no such connotation.

This was dismissed too. According to the Board, the phrase would be “perceived by the relevant public as only providing promotional information on the nature, purpose, performance and subject matter of the goods and services concerned and not as indicating their [commercial] origin”.

Source: WIPR.

Honda won a trademark dispute in the UK

photo-1505326841080-510ac2d537c9.jpgHonda won an opposition in the UK against an application for a trademark ‘Vtecdirect’ in class 37 for the “the fitting and installation of Vehicle parts; the maintenance, repair, and servicing of vehicles”.

Against this mark, the Japanese company invoked its earlier mark for ‘VTEC’ in class 12.

According to the Patent Office, there is a similarity between both signs that can create consumer confusion. Both trademarks are visually similar due to the VTEC part which has a leading position. Although DIRECT word creates some conceptual difference it is not enough to overcome the similarity especially taking into account the fact that this word is not so distinctive.

The applicant’s argument that there was no confusion because both companies have different business models and in fact, its services enhance Honda’s sales were been dismissed. The trademark role is to indicate trade origin not to promote someone else’s brand.

Source: WIPR.

Uber won another trademark dispute in the UK

pexels-photo-417005Uber won an opposition in the UK against a trademark application ‘ChefUber’ applied for in class 35 – recruitment services in the catering trade.

Against this application, Uber invoked several of its earlier UBER trademarks for the same class including the UberEats trademark used for food delivery. According to the company its marks are similar to the later one in a greate scale.

The Applicant argued that there is no similarity due to the fact that the first part of its mark is Chef, which makes the sign to stand alone.

The Patent Office came to the conclusion that the services between the trademarks at hand are similar or identical.

When it comes to the sign, the Office considered them confusingly similar. The fact that there is a Chef in front of Uber in the later mark is not enough to overcome this possibility because this word is not distinctive and it is even descriptive for the listed services.

What’s more, the Office considered that the later sign tries to take advantage of the Uber reputation as a brand on the market.

Source: WIPR.

Supermac revoked another McDonald’s trademark in the EU

pexels-photo-2083959.jpegThe Irish company Supermac succeeded for the second time to revoke a McDonald’s trademark. This time the attack was initiated against a European trademark “MC” with a priority date back to 2011, registered for the following goods and services:

29 – Foods prepared from meat, pork, fish and poultry products, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles.

30 – Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar; desserts.

32 – Non-alcoholic beverages, syrups and other preparations for making beverages.

43 – Restaurant services.

The reason for this revocation was Article 58(1)(a) of the EUTMR, lack of genuine use for a period of 5 consecutive years.

McDonald’s submitted various pieces of evidence such as affidavits from heads of various McDonald’s European legal departments, menus, printouts, extracts from Annual Reports and surveys.

Unfortunately, some of them were outside the prescribed period of five years and some were even undated.

In light of this, EUIPO upheld the revocation request for most of the goods and services. The arguments were that there was no solid evidence for genuine use. What’s more, the trademark “MC” had never been used alone but only in combination with other words such as ‘McDonald’s’, ‘BIG MAC’, ‘McRIB’, ‘McMUFFIN’, ‘McTOAST’, ‘McFISH’, ‘McWRAP’, ‘McNUGGETS’, ‘McCHICKEN’ and ‘McFLURRY’.

According to EUIPO signs such as ‘McDonald’s’ and ‘BIG MAC’ were not variations of the main trademark “MC”. Others of the trademark such as McMUFFIN’, ‘McFISH’,  ‘McNUGGETS’, ‘McCHICKEN’ were OK because the additional words were completely descriptive.

Taking into account all of this EUIPO revoked the “MC” trademark with exceptions of:

Class 29: Chicken nuggets.
Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish
sandwiches, chicken sandwiches.

The full text of the decision can be found here.

Red Bull lost a colorful lawsuit in the EU

paint-2985569_960_720.jpgThe European Court has ruled in case C‑124/18 P Red Bull GmbH v EUIPO. The case which concerns color trademarks has the following background:

Red Bull filed an application for registration in respect of the combination of two colours per se reproduced below:

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By a communication dated 30 June 2003, the appellant submitted additional documents to prove the distinctive character acquired through use of that mark. On 11 October 2004 the appellant submitted a description of the mark that was worded as follows:

‘Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%–50%.’

The goods in respect of which registration was sought are in Class 32 ‘Energy drinks’.

The trade mark was registered on 25 July 2005 under number 002534774, with an indication that it had acquired distinctive character through use and the description referred to in paragraph 10 above.

On 20 September 2013 Optimum Mark filed an application with EUIPO for a declaration that the trade mark was invalid.

In support of its application, Optimum Mark contended, first, that the trade mark did not meet the requirements of Article 7(1)(a) of Regulation No 207/2009 since its graphic representation did not systematically arrange the colours by associating them in a predetermined and uniform way and, secondly, that the description of the trade mark, according to which the ratio of the two colours of which the mark was composed was ‘approximately 50%–50%’, allowed for numerous combinations, with the result that consumers would not be able to make further purchases with certainty.

As regards Case T‑102/15, on 1 October 2010 the appellant filed a second application for registration of an EU trade mark with EUIPO relating to a combination of colours per se, as reproduced in paragraph 9 above, in respect of the same goods as those referred to in paragraph 11 above.

On 22 December 2010 the examiner issued a notice that the formal requirements had not been met and consequently requested that the appellant specify ‘in which proportion the two colours will be applied (for example, in equal proportion) and how they will appear’.

On 10 February 2011 the appellant indicated to the examiner that ‘in compliance with [the examiner’s] notification dated 22 December 2010, [the appellant] herewith informed [EUIPO] that the two colours will be applied in equal proportion and juxtaposed to each other’.

On 8 March 2011 the second trade mark was registered on the basis of distinctive character acquired through use, with the colours being given as ‘blue (Pantone 2747C), silver (Pantone 877C)’ and the following description: ‘The two colours will be applied in equal proportion and juxtaposed to each other’.

On 27 September 2011 Optimum Mark filed an application with EUIPO for a declaration that that mark was invalid, contending, first, that it did not meet the requirements of Article 7(1)(a) of Regulation No 207/2009 and, secondly, that, on account of the fact that the term ‘juxtaposed’ might have several meanings, the description of the trade mark did not indicate the type of arrangement in which the two colours would be applied to the goods and was therefore not self-contained, clear and precise.

By two decisions of 9 October 2013, the Cancellation Division of EUIPO declared the two marks in question (‘the marks at issue’) invalid, inter alia on the ground that they were not sufficiently precise. The Cancellation Division relied on the fact that they allowed numerous different combinations which would not permit the consumer to perceive and recall a particular combination, thereby enabling him to make further purchases with certainty.

Red Bull filed notices of appeal against those two decisions before the Board of Appeal of EUIPO.

By two decisions of 2 December 2014 (‘the decisions at issue’), the First Board of Appeal of EUIPO dismissed both appeals, considering, in essence, that the graphic representation of the marks at issue, evaluated in conjunction with the accompanying description, did not satisfy the requirements of precision and durability laid down in the judgment of 24 June 2004, Heidelberger Bauchemie, (C‑49/02, EU:C:2004:384), according to which marks consisting of a combination of colours must be systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way. According to the First Board of Appeal of EUIPO, the marks at issue allowed for the arrangement of the two colours in numerous different combinations, producing a very different overall impression.

The European court upheld the EUIPO decisions regarding both of the marks. The main problem is their descriptions which don’t give a precise idea of how exactly they are used as trade indications for the relevant goods. This can create different combinations of their real representations in the consumer mind which is against the trademark theory.

In a nutshell, when it comes to color trademarks it is really important what descriptions these mark will have because the descriptions themselves will define the real borders and forms of the signs. This, in turn, is necessary in order for the signs to be perceived as a source of origin.