Back in 2018, The IPKat reported that the Swedish Supreme Court had asked the Court of Justice of the European Union (CJEU) to clarify the scope of the right of communication to the public in Article 3(1) of Directive 2001/29 (InfoSoc Directive) and Article 8(2) of the Directive 2006/115 (Rental and Lending Rights Directive). In brief, the question before the CJEU is whether a car leasing company – by leasing cars equipped with radio receivers – can be considered a ‘user’ that performs a communication to the public.

In 2018, Swedish collective management organisation STIM and the Swedish Artists’ and Musicians’ Interest Organisation, SAMI, brought separate proceedings against two companies that operate in the automobile leasing/renting industry. Both cases ensued from missed payment of yearly licensing fees to STIM and SAMI since 2014.

Eventually, the matter reached the Swedish Supreme Court, which stated that, according to CJEU case law, it is apparent that a communication to the public may take place – in the manner envisaged by Article 3(1) of the InfoSoc Directive – when transmissions are made by means of technical equipment to a nearby public (e.g. in a hotel, café, rehabilitation centre, or a spa). Furthermore, the CJEU has held that hotel operators carry out a “communication to the public” in light of Article 8(2) of the Rental Rights Directive, when hotel rooms are equipped with phonograms available in digital or physical form and which can be played or intercepted (Phonographic Performance Ireland, C-162/10). Nonetheless, the CJEU also came to the contrary conclusion regarding transmission of phonograms in a dentist’s waiting room (Società Consortile Fonografici, C-135/10). The Supreme Court was unsure how to treat the providers of rental cars. Thus, it asked the CJEU to answer the following questions:

1) Does the hiring out of cars which are equipped as standard with radio receivers mean that the person who hires the cars out is a user who makes a communication to the public within the meaning of Article 3(1) of Directive 2001/29 and within the meaning of Article 8(2) of Directive 2006/115?

2) What is the significance, if any, of the volume of the car hire activities and the duration of the hires?

Last week Advocate General (AG) Szpunar delivered his Opinion (not yet available in English). The AG noted that, when assessing whether a communication to the public has taken place, the crucial role of the indispensable user must be considered (Stichting Brein, C‑527/15, paragraph 31). In particular, the user’s actions must concern the content of the communication, not the act of communication as such. The central factor to consider would thus be the direct relationship between the user’s actions and the protected works that have been communicated. This requirement is inherent to the very concept of ‘a communication to the public’, since the communication must relate to the protected works.

In this regard, the role of car rental companies is that of merely providing cars, equipped with radio receivers, that have been pre-installed by the respective car manufacturers. According to the AG, it is obvious that car rental companies do not directly intervene when works are being communicated through radio receivers. These companies merely provide their customers with cars, equipped with radio receivers, that have been pre-installed by the respective car manufacturer.

The only communication to the public that takes place, is the communication that has been made possible by the radio broadcasting companies. By enabling protected works to be transferred via radio, the customers of STIM and SAMI already took into account all users that have a radio receiver installed in cars, no matter how the cars are used. A communication to the public can only be found on basis of further actions taken by the user, which goes beyond the mere provision of the equipment for communicating the works in question (see recital 27 of the InfoSoc Directive).

Car rental companies can therefore not be considered to perform a communication to the public within the meaning of Article 3(1) of the InfoSoc Directive and Article 8(2) of the Rental and Lending Rights Directive.

Having considered that car rental companies do not perform a communication, AG Szpunar also considered that the answer to the second question can only be in the negative.

Let’s see what the CJEU will decide in a few months but, if it follows its AG, then the resulting decision might entail a significant rethinking of the scope of the right of communication to the public. 

The applications were published on 20 December 2019, after it was announced that the couple would separate from the organization (The Royal Foundation), to which they participated together with Prince William and Duchess Kate Middleton, in order to form their own charitable venture, that is … Sussex Royal. The foundation will likely start operating this year. Also the launch of a Sussex Royal newspaper appears to be on the cards.

In an interesting decision issued earlier this month, the General Court (GC) confirmed that a sign that comprises of and depicts cannabis and weed leaves is contrary to public policy. The decision is relevant from many perspectives, including that of the growing cannabis industry and CBD-related products. The decision confirms the general principle that signs are not registrable if they might be perceived as encouraging the purchase of illegal goods or trivialising their consumption.

In December 2016, Ms Santa Conte (the Applicant) filed for an application for registration as an EU trade mark (EUTM) of the following figurative sign:

The application was for certain goods and services in Classes 30 (baked goods, confectionery, chocolate and desserts, salts, seasonings, flavourings and condiments, ice creams, frozen yoghurts and sorbets, and savoury pastries), 32 (soft drinks, beer and brewery products, preparations for making beverages), and 43 (services for providing food and drink) of the Nice Classification.

In September 2017, the EUIPO examiner rejected the application, having considered that it was devoid of any distinctive character in light of Article 7(1)(b) – (c) and 7(2) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)).

The Applicant appealed. The EUIPO Second Board of Appeal dismissed the appeal based on Article 7(1)(f) EUTMR. It considered that, by choosing the word ‘cannabis’ and the symbol of the leaf, the applicant, had drawn attention to the concept of ‘cannabis’ as a drug, The applicant could have used different terms (eg, ‘hemp’) in association with goods that, whilst derived from the plant cannabis, would be devoid of THC. Furthermore, there was no need to refer to Amsterdam, a city known for its tolerance towards the use of certain drugs.

The Applicant appealed once again, this time to the GC, submitting that the Board had unduly disregarded its obligation to examine the facts of its own motion as per Article 95 of the EUTMR.

The GC confirmed the Board’s decision by holding that:

The Applicant submitted that the Board had been wrong to consider that the sign refers to ‘the symbol of a marijuana leaf’ and that that symbol refers to the psychotropic substance. The reason is that marijuana is not a species of plant, but a psychoactive substance obtained, not from cannabis leaves, but from the dried inflorescences of female cannabis flowers.

The GC upheld the Board’s assessment because the stylised depiction of a cannabis leaf is the media symbol for marijuana and the shape of the ten cannabis leaves depicted in the mark is also customarily used as a media symbol for marijuana.

The GC accepted that the expression ‘marijuana leaf’ is inaccurate, but that that expression in reality refers to a psychotropic substance extracted from the dried inflorescences of female cannabis flowers. This finding did not however mean that the Board had failed to comply with its obligation to examine the facts of its motion, since the contested decision must be read it its entirety, giving precedence to the fact that the depiction of a cannabis leaf is the media symbol for marijuana.

The Board had considered that the city of Amsterdam had many points of sale for the narcotic derived from cannabis because the sale of cannabis is tolerated in the Netherlands under certain conditions. The Applicant attempted to argue that this element was merely used to refer to the origin of the cannabis that was used by the Applicant and to the style and atmosphere of the city Amsterdam from which inspiration of her goods and services was derived.

The GC did not accept this argument, since the Applicant had not disputed that Amsterdam is known for its coffee-shops which are authorised to sell marijuana and space cakes. According to settled case law, a sign must be refused registration if at least one of its possible meanings characterises the existence of an absolute ground for refusal (see for example, T‑428/17, Alpine Welten Die Bergführer v EUIPO).

As regards the inclusion of the word ‘STORE’, the Applicant had submitted that this element, together with word 'AMSTERDAM', did express a requirement for logical and idiomatic continuity, and the need to give the sign at issue the most international scope possible, English being the main language of global trade.

The GC noted instead that this meant that the public could expect the goods and services sold under that sign to correspond to those which would be available in a shop selling narcotic substances. This is because the inclusion of the word ‘store’, which normally means ‘shop’, taken together with the word ‘cannabis’ (being the dominant element in the sign applied for), would be perceived by the relevant English-speaking public as meaning ‘cannabis shop in Amsterdam’ and by the relevant non-English-speaking public as ‘cannabis in Amsterdam’, which, in both cases, coupled with the image of the cannabis leaves is a clear and unequivocal reference to the narcotic substance which is sold there. That public could therefore expect the goods and services sold by the applicant to correspond to those which would be sold in such a shop.

The GC therefore concluded that given the combination of the elements “cannabis”, “store” and “Amsterdam” taken together with the three rows of stylised green leaves, draws the attention of consumers, who do not necessarily have accurate scientific or technical knowledge regarding cannabis as a narcotic substance which is illegal in many EU countries.

The GC acknowledged that cannabis is not an illegal substance if its THC level is below a certain threshold. However, it also emphasised that, even though the legalisation of cannabis for therapeutic and recreational purposes is under discussion across the EU, the consumption and use of cannabis containing THC above a stated threshold remains illegal in most EU Member States. There is therefore a public health objective in tackling the narcotic substance derived from cannabis and combatting the harmful effects of that substance. Accordingly, rules on the use of that substance are a matter of public policy. Since the relevant public would perceive the sign as an indication that the food and drink products sold under it contain narcotic substances that are illegal in many EU Member States, the mark at issue was found to be contrary to public policy.

Can simple things become difficult? In a recent decision, the Fourth Board of appeal reaffirmed a basic truth: if your sign has the same concept of another, then there is conceptual identity between these two.

Having recognized that there are indeed differences between the signs, in this case the Board affirmed that such differences constituted minor elements of secondary importance which the average customer would not be likely to identify or remember. 

Earlier this Fall, the Swedish Patents and Market Court of Appeal asked the Court of Justice of the European Union (CJEU) to clarify the concept of “public” within the meaning of Article 3 and 4 of InfoSoc Directive [see here].

The background to this reference concerns two parties that operate their own respective websites. In separate proceedings, one of the parties (MA) submitted to the concerned court a copy of a text page containing a photograph that was taken from the other party’s (JJ) website. In turn, JJ claimed copyright infringement and damages from MA for making such photograph available (in Sweden court documents are public).

At first instance, the Patent and Market Court (PMD) established that copyright subsisted in the photograph and, by submitting it to the court, it meant that anyone could view that work under the domestic law provisions that relate to public access to information. Therefore, the PMD took the view that MA had communicated the work within the meaning of the Swedish Act on Copyright in Literary and Artistic Works (SCA). Ultimately, however, the action was dismissed since JJ had not suffered any loss. The decision was subsequently appealed to the PMÖD, which had to determine whether it was a copyright infringement to submit the work in question to a court.

In this sense, the PMÖD has to establish whether a court can be considered a “public” within the meaning of Articles 3(1) and 4(1) of the InfoSoc Directive. The court decided to stay the proceedings and refer the question to the CJEU.

As of today, the case has officially been given a case number (C-637/19), and the questions have been published on the website of the UK Intellectual Property Office, always a very useful resource on the latest CJEU referrals. They read as follows:

Does the term ‘public’ in Articles 3(1) and 4(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society have a uniform meaning?

If question 1 is answered in the affirmative, is a court to be regarded as falling within the scope of the term ‘public’ within the meaning of those provisions?

If question 1 is answered in the negative:

a) In the event of communication of a protected work to a court, can that court fall within the scope of the term ‘public’?

b) In the event of distribution of a protected work to a court, can that court fall within the scope of the term ‘public’?

Does the fact that national legislation lays down a general principle of access to public documents in accordance with which any person who makes a request can access procedural documents transmitted to a court, except where they contain confidential information, affect the assessment of whether transmission to a court of a protected work amounts to a ‘communication to the public’ or a ‘distribution to the public’?

If you are interested in commenting on this case, you can do so by 30 October 2019 by emailing policy@ipo.gov.uk and referencing the case number in the subject heading.

In an intriguing decision delivered earlier this month, the General Court addressed, among other things, the question of the level of attention of the public of games and computer games. It concluded that, even if (most of) the relevant public displays a high level of attention, this does not exclude that, in view of the development of the market, games and computer games are also intended for consumers who have a level of attention that is ‘average at best’. The likelihood of confusion is therefore to be assessed having regard to the public which displays the lowest level of attention.

In September 2014, Kalypso Media Group filed (the Applicant) sought to register the word mark ’DUNGEONS’ as an EU trade mark (EUTM). The application was for certain goods in Classes 9 (computer game software), 28 (games for amusement arcades and electronic games and coin-operated games, playing cards, toy figurines) and 41 (provision of online computer games and electronic publication services; games on the internet) of the Nice Classification.

In February 2015, Wizards of the Coast LLC (the Opponent) filed a notice of opposition on the basis of its two earlier registered EUTM ‘Dungeons & Dragons’. One of the two earlier registered EUTMs had been registered since November 2009 for certain goods and services in Classes 9 (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments), 28 (toys, games and playthings, gaming machines including slot machines) and 41 (education, entertainment, sporting and cultural activities) of the Nice Classification.

In light of Article 8(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)), the Opposition Division held that there was a likelihood of confusion in respect of all goods and services covered by the earlier marks. The applicant appealed the decision to the Fourth Board of Appeal of EUIPO in April 2018.

In assessing the likelihood of confusion, the Board considered that, since the earlier mark was an EUTM, the relevant territory for assessing the likelihood of confusion was that of the EU and all its Member States. Furthermore, the Board endorsed the findings of the Opposition Division regarding the identical and/or similar nature of the goods and services covered by the signs at issue. Following a comparison of the two marks, it also found that, visually and phonetically, the degree of similarity between them was ‘above average’.

The signs at issue were similar to ‘an average degree’ from a conceptual point of view. The inherent distinctiveness of the earlier mark was considered to be average as well. The Board therefore concluded that that there was a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR for all the goods and services covered by the trade mark applied for, at least for the English-speaking part of the relevant public.

The applicant appealed the Board’s decision arguing – among other things – that the Board had been wrong to consider the level of attention of the relevant public as ‘average at best’. In particular, the relevant public would have a high level of attention in relation to games and computer games. On that market, there are hundreds of games and computer games that are available simultaneously, for which also prices are high. The decision to buy those products is therefore based on the prior gathering of useful information. This would suggest that purchasing habits in relation to games and computer games differ from purchasing habits in relation to actual everyday items.

The General Court noted that, when assessing the likelihood of confusion, the public with the lowest level of attention must be taken into account.

Considering that the games and computer games covered by the trade marks in question are intended for both a specialised public and the general public, account must be taken of the normally informed and reasonably attentive and prudent public in the EU displaying an average level of attention. In this regard certain factors must be taken into account:

Because the specific arrangements for marketing the goods or services in question may vary over time, these cannot be taken into account for the purposes of a prospective analysis of the likelihood of confusion. Instead, the assessment must be performed in light of the wording of the list of goods or services for which registration is sought, as it appears on the application.