Nexus: antonella gentile

CJEU rules on genuine use of collective trade marks

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The Court of Justice of the European Union (CJEU) has ruled that the indication of the affiliation with a local waste collection may influence consumers’ purchasing decision and consequently contribute to maintain or create a share in the market for the goods or services protected by the mark.

Earlier this week, in its judgment in C‑143/19 P, the CJEU annulled the General Court (GC) and the European Union Intellectual Property Office (EUIPO) decisions regarding the revocation of the collective mark “Representation of a circle with two arrows”. This judgement dealt, in particular, with the issue of the genuine use of collective trade marks and the assessment of the use of such mark on the market.

Collective trade marks were introduced into the EU trade mark system with the aim of enabling consumers and traders to recognise packaging which is included in the dual system and goods with such packaging, and to distinguish them from other packaging and good.

Der Grüne Punkt's trade mark

Background

On 12 June 1996, Der Grüne Punkt — Duales System Deutschland GmbH (Der Grüne Punkt) filed an application for registration of an EU collective trade mark with the EUIPO. The application was granted.

As from 2 November 2012 the Cancellation Division of EUIPO revoked the mark for certain goods as it had not been put to genuine use for the goods for which it had been registered. The Fifth Board of Appeal of EUIPO dismissed the Der Grüne Punkt’s appeal against this decision, observing that from the consumer’s point of view the contested mark had not been used to show the origin of the goods at issue.

In the appeal proceedings before the GC, this court held that the applicant has not demonstrated, for the relevant period, genuine use.

However, the CJEU annulled the GC’s decision as it committed an error in the application of the notion of genuine use and the criteria to assess such a use.

The CJEU decision

The applicant invoked infringement of Article 15(1) of Regulation No 207/2009 together with Article 66 (now articles 18(1) and 74 of Regulation (EU) 2017/1001) claiming the use of the mark not only for the packaging of goods but also for the packaged goods at issue. According to Der Grüne Punkt, the contested mark indicates certain intangible characteristics of the goods at issue, namely the undertaking’s conduct.

The CJEU, after recalling the case-law concerning both the function of collective trade marks and genuine use, stated that there is ‘genuine use’ of a collective mark where the mark is used in accordance with its essential function, which is to distinguish the goods or services of the members of the association from others which have another origin in order to create or preserve an outlet for the goods or services. [57]

According to case law proving that the use of the mark create or preserve an outlet for the goods or services that bear the sign entails the use of the mark on the market for the goods or services protected by that mark. Such exam must be conducted considering all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark. (Ansul, C‑40/01)

The CJEU pointed out that the GC did not perform the examination to establish the use of the mark on the market. In fact, the GC considered that the consumer understands that the packaging and not the product itself is part of a sound waste management system but it did not analyse if this indication is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark. [68]

Some of the economic sector concerned covers everyday consumer goods, such as food, drinks that generate packaging waste on a daily basis. It cannot be excluded that the indication of the affiliation with a local waste collection may influence consumers’ purchasing decision and consequently contribute to maintain or create a share in the market for the goods or services protected by the mark. [70]

Comment

The decision recognises the importance of the use of the mark as the indication of the affiliation to a sound waste management system for the consumer. Such an indication, influencing the consumer’s purchasing decision, contributes to maintaining or creating a share in the market for the good or services protected by the mark. This allows demonstrating the genuine use of the mark.

Could such a decision, which is in any case limited to the proof of the genuine use, be seen as a sort of embryonic step to the further development of the functions of trade mark? Could trade mark law acquire a specific and stronger role in the framework of environmental sustainability?

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Book Review: Internet intermediaries and trade mark rights

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As underlined by Prof Graeme B Dinwoodie in his Foreword, while the interplay between internet intermediaries and copyright has received specific attention from scholars, the interplay between internet intermediaries and trade marks has so far received less attention. Internet Intermediaries and Trade Mark Rights by Althaf Marsoof aims to fills this gap in scholarly literature.

In his Acknowledgments, Marsoof writes:

One afternoon in March 2010, Professor Lionel Bently, addressing a small group of LLM students at the University of Cambridge, announced the ruling of the Court of Justice of the European Union (CJEU) in Google v Louis Vuitton (...) and posited that it will shape the landscape of intermediary liability in the European Union. I was one of the students to whom this prophetic remark was made. Not surprisingly, the CJEU’s ruling was followed in subsequent cases, including the ruling in L’Oréal v Ebay (...). According to the CJEU, intermediaries, such as Google do not commit trade mark infringements because they make no use of trade marks in their “commercial communication”. Just one week before, however, we had discussed Rescuecom v Google (...), a case where the United Stated Court of Appeals for the Second Circuit come to the opposite conclusion on the exact same facts. According to the US court, there was a possibility that Google could be found liable for trade mark infringements and Google did indeed make use of the trade marks in question “in commerce”.

These diverging judicial decisions drove Marsoof's attention to the subject of internet intermediaries and trade marks.

The resulting monograph consists of 9 chapters:

The first chapter, The internet, intermediaries and trade mark infringements, defines “internet intermediaries” and the issue of shifting the liability from individual infringers to intermediaries to then explain the reasons for a trade mark perspective.

In the second chapter, Liability under trade mark law, Marsoof analyses the “use” requirement necessary to recognise as an infringement the unauthorised use of a trade mark by a third party. He recalls how keyword advertising works and the case law regarding this practice, and also the “commercial communication” requirement.

In the third chapter, Accessory liability, the author observes that common law has became an attractive choice in exploring means by which internet intermediaries could be held liable for infringement of trade mark rights. He analyses the accessory liability regime in common law, the criminal accessory liability and accessory liability in tort. Finally, after declaring that it is for the courts to decide whether liability for providing assistance must be recognised as a general means of allocating accessorial liability for civil wrongs, Marsoof predicts how English courts could deal with these issues in the future.

In the fourth chapter, Approaches elsewhere – Across the English Channel and the Atlantic, the author recalls key EU directives and discusses relevant decisions in selected EU Member States, including eg France, Germany and Belgium, as well as in the U.S.

In the fifth chapter, A proposal for law reforms, Marsoof considers the nature and scope of a a reform of the Trade Marks Act 1994 to broaden the notion of infringement so to encompass internet intermediaries sufficiently involved in infringing activities.

In the sixth chapter, Notice and takedown, Marsoof underlines the problem with the abuse of notice and takedown by rights holders. He analyses how notice and takedown works in practice to propose legal reforms aimed at ensuring a healthy balance between the enforcement of trade mark rights and the protection of competing interests.

In the seventh chapter, Notice and takedown and its impact on legitimate third-party uses of trade marks, the author identifies four categories of notices of infringement; clear-cut cases, context specific cases, trade mark bullying an frivolous assertions and he discusses the interplay between third-party use and free speech rights.

In the eight chapter, Injunction against intermediaries –legal basis, Marsoof analyses the legal basis for injunctions against intermediaries in the copyright and in the trade mark context. In relation to the latter, he considers in detail the actual knowledge requirement and the requirement that the ISP’s services must have been used by third parties to commit infringements.

In the final chapter, Injunction against intermediaries – practical considerations, the author considers the extent to which injunctive relief complies with the principles of natural justice, envisages safeguard against abuse and tackles circumvention and collateral damage. He also takes into consideration the costs involved in implementing the technical measures derived by an injunction.

This book would definitely appeal to anyone having an interest in trade mark law and the role that internet intermediaries could and should play in the enforcement process.

Hardcover ISBN 978-0-8153-8246-1 £115.00

E-book ISBN 978-1-3512-0851-2 £33.29

Available on Routledge Taylor and Francis Group

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AG Kokott provides insights on distinctive character of geographical collective trade marks and their interplay with GIs

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Earlier this month, Advocate General (AG) Kokott handed down her Opinion in T-766/18 P, providing some indications regarding the distinctive character of collective and geographical collective trade marks and their interplay with geographical indications (GIs).

Background

On 17 July 2014, the Commission received the official application for the registration of the names ‘Χαλλουμι’ (Halloumi)/‘Hellim’ as a Protected Designation of Origin (PDO) under the Quality Regulation (EU) No 1151/2012. The procedure for establishing a PDO has not yet been concluded. Cyprus and other bodies, such as the Foundation for the protection of the Traditional Cheese of Cyprus named Halloumi (hereinafter, the Foundation), not having yet obtained the PDO have tried to prevent the use of the designation Halloumi registering it as a trade mark.

In the context of the opposition against the registration of the colour figurative mark BBQLOUMI, the European Union Intellectual Property office (EUIPO) and the General Court (GC) have held that the HALLOUMI trademark has a low distinctive character. Hence the opposition was rejected both before the EUIPO and the GC.

The trade mark opposed

Analysis

In the appeal procedure before the Court of Justice of the European Union (CJEU), AG Kokott recalled that, according to the Trade Mark Regulation, it is possible to register both collective trade marks and, as an exception to article 7(1)(c), geographical collective trade marks. In particular the first and second paragraph of article 66 of the Regulation state:

1. A Community collective mark shall be a Community trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law, may apply for Community collective marks.
2. In derogation from Article 7(1)(c), signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute Community collective marks within the meaning of paragraph 1. A collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided he uses them in accordance with honest practices in industrial or commercial matters; in particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.

Collective mark

AG Kokott recalled the essential function of a collective mark, that is to guarantee the collective commercial origin of goods and services. Because of the function of trade marks, the registration of a collective mark, just like the registration of other marks, presupposes its distinctive character. At the same time, the simple fact that a collective mark has been registered does not allow to presume that a collective mark enjoys particular distinctive character.

Geographical collective mark

According to the AG, it is more difficult to answer to the question whether the distinctive character of geographical marks should also be assessed according to general criteria.

She recalled the DARJEELING case (C‑673/15 P to C‑676/15 P (DARJEELING being the name of a city and a district in India and a well-known black tea which is grown there) as the most important judgment concerning geographical collective marks so far. Even if the AG considered that the Foundation’s claim regarding the geographical collective mark would be inadmissible, she analysesd the substance of Article 66(2) of the Regulation:

The AG described the provision as being a “foreign body” in trade mark law because the regulation intends to keep descriptive terms free. Morevoer recalled that the consumer considers descriptive terms as a description of the characteristics of the products and not as the indication of its origin while geographical indication may be perceived as indication of geographic origin or a descriptions related to a particular place.

The AG underlined that geographical collective marks exclusively guarantee a particular geographical origin of the goods or services concerned and they cannot be considered as having increased distinctive character as a matter of course. Otherwise, the distinctive character would remain notional as the public would still not perceive the geographical indication as an indication of the collective commercial origin of the product.

Geographical collective trade marks, PDOs and protected GIs

According to the AG, the HALLOUMI mark gives rise to the identification of the goods or services concerned at most to a low degree. This consideration is not affected by the risk of limiting the effectiveness of Article 66(2) of the Regulation and the protection of geographical collective marks as the proprietors of a geographical collective mark still enjoy minimum protection. The AG also noted that the proprietor can influence the perception of the mark if they use it in such a way that it acquires distinctive character.

The protection given to this kind of trade marks does not need to be more extensive as the rules governing protected designations of origin and protected geographical indications can provide sufficient protection outside the scope of trade mark law. Under Article 12(1) of Regulation No 1151/2012 PDOs and protected GIs may be used by any operator marketing a product conforming to the corresponding specification without the need of being member of an association.

Comment

The Opinion defines the function of geographical collective trade marks and the assessment of their distinctive character. At the same time, in light of the presence of legislation regarding PDOs and protected GIs, it limits the scope of protection of these trade marks somehow trying to avoid the use of the trade marks system to cope for the lack of a protected designation of origin. Let's now see what the CJEU thinks.

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Event report: Tertulia on EUIPO Boards of Appeal Case Law

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Earlier this week, this GuestKat was fortunate enough to attend the Tertulia on EUIPO Boards of Appeal Case Law at the EUIPO Liaison Office in Brussels.

After an introduction by Mr Théophile Margellos, President of the Boards of Appeal, the Tertulia started with a presentation by Mr Gordon Humphreys, Chairperson of the 5th Board of Appeal, concerning Trade marks and human rights. This was followed by a presentation by Mr Sven Stürmann on recent EUIPO Boards of Appeal Case Law on non-traditional marks and refiling of trade marks.

Freedom of speech and trade marks

Rue de la loi, Brussels

Humphreys kicked off his presentation stressing the importance (and also the difficulties in the assessment) of the balance between different fundamental rights and freedoms. He recalled the two provisions which allow to refuse registration of a trade mark or a design on grounds of it being contrary to public policy or accepted principles of morality (respectively, Articles 7(1)(f) EUTMR and 9 CDR). He presented two cases where the Board of Appeal and the General Court confirmed refusal of registration of a sign as a trade mark on grounds that it was considered contrary to public policy: BIN LADIN (R-176/2004-2) and LA MAFIA SE SIENTA A LA MESA (T-1/17) (the latter sign meaning: the mafia takes a sit at the table) [here].

These two cases had a different outcome than, eg, Dick and Fanny case (R-111/2002-4). In the latter, it was decided

Speaking about cases such as Reva (R-558/2006-2; in Finnish: a word referring to female genitalia), Humphreys noted that the European Union has 23 official languages and this means that what can be considered a brilliant commercial idea in one place could turn out to be offensive or vulgar in a certain language. All this said, discussing cases such as

Stürmann started his presentation by showing the public some of the motion (signs which involve movement) and multimedia signs (signs which involve movement and sounds) that have been applied for registration as trade marks. He asked our opinion about the possible outcomes of the application.

Some sort of three-step assessment was developed in the context of discussion with the audience in order to prove the use of multimedia trade marks as such: 1) the use of the trade mark; 2) the use as a trade mark; 3) the perception of the sign by the public as a trade mark.

Turning to refiling, the discussion focused on the Monopoly case (R-1849/2017-2) [here]. In this context, the importance of the hearing - where the economic strategy behind the refiling would be discussed - was stressed. The presenter noted how recent changes to the procedural rules of the General Court and the Court of Justice of the European Union (CJEU) regarding, inter alia, appeals of the decisions of the EUIPO could lead to an increase of the number of hearings before the Boards of Appeals. The issue of bad faith and possible abuse of the trade mark system was also discussed, in light of Advocate General Tanchev' Opinion in Skykick (C-371/18) [here] and the CJEU decision in Koton (C-104/18 P) [here about the Opinion of Advocate General Kokott in this case].

To conclude, the event was a remarkable afternoon of discussions about EU trade mark law and practice. After this, one can only keenly await for the IP case law conference in Alicante on the 21-22 May 2020.

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CJEU says that all practically significant and demonstrated uses must be taken into account in examining distinctiveness

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To what extent must the unusual use of a sign be considered by the competent authority in the examination of the distinctive character of such sign?

This is the question the Court of Justice of the European Union (CJEU) had to answer in case C-541/18.

Background

AS applied to the Deutsches Patent- und Markenamt (DPMA) to register a sign comprising an hashtag # and the phrase darferdas? as a trade mark for goods in class 25 (“Clothing, in particular tee-shirts; footwear; headgear”).

The DPMA rejected the application as it found the sign devoid of any distinctive character.

AS appealed this decision to the Bundespatentgericht, which held that the sign at issue represented a sequence of characters and words with the hashtag indicating - placed on the front of a tee-shirt - that the public was invited to discuss the question “can he do that?” (Darf er das?).

AS appealed the decision to the Bundesgerichthof.

The Bundesgerichthof reasoned as follow:

to be considered as having a distinctive character, not all the possible uses of the sign have to be as a trade mark;
it is sufficient for a use to be plausible;
there must be practically significant possibilities of using the sign applied for in the case of the goods and services in respect of which protection is claimed in a way easily understood by the public as a trade mark.

Moreover, the Bundesgerichthof recalled the Deichmann case C-307/11 P, according to which Article 7(1)(b) of Council Regulation (EC) n. 40/94 of 20 December 1993 on the Community trade mark could not be interpreted as requiring the - at the time - Office for the Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) to extend its examination, based on the facts, of distinctive character to uses of the mark applied for other than that recognized as the most likely.

Having elaborated the above the Bundesgerichthof decided to refer the following question:

Does a sign have distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use of the sign?

Analysis

The CJEU reasoned that sign comprising a hashtag cannot a priori be considered as lacking distinctive character. In fact, the analysis of the distinctive character must be conducted by the competent authorities within the meaning of article 3 of Directive 2008/95, considering the goods and services, the relevant public, and all the relevant facts and circumstances in concreto.

The CJEU, however, noted that the applicant for a trade mark is not required to indicate or even to know precisely, when applying for registration, the use he will make of the mark applied for, if registered.

This is because:

the holder of a trade mark has a period of 5 years for beginning the actual use consistent with the essential function of a trade mark;

and

the sign might have not been used before registration.

The competent authorities might consequently evaluate the way the mark will probably be shown to the average consumer only with regard to the customs of the economic sector concerned.

The uses which are not practically significant must be considered irrelevant except when the applicant has provided concrete evidence which makes a use, normally unusual in that sector, more likely.

In the specific case, with regard to the clothing sector, the CJEU recognized that it is usual to place a mark on both the exterior of the goods and the labels sewn on the inside of them. The competent authorities will, then, have to take account of both these uses.

Considering Deichmann, first, the CJEU recalled that identical provisions in the directive to approximate the laws of the Member States relating to trade marks and in the regulation on the European Union trade mark must be interpreted in the same way; second, the CJEU stated that the Deichmann's approach remains relevant only in those cases where it appears that solely one type of use is practically significant in the economic sector concerned.

Consequently the CJEU stated that:

Article 3(1)(b) of Directive 2008/95/EC must be interpreted as meaning that in examining the distinctive character of a sign in respect of which registration as a trade mark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. The latter correspond, in the absence of other indications, to the types of use which, in the light of the customs in the economic sector concerned, can be practically significant.

Comment

This decision, in that it indicates that the competent authorities must take into account all the likely types of us of the mark applied for, is quite straightforward. The outcome is probably what the majority of readers would have expected.

However, the CJEU stressed that all the likely types of use are the types of use which can be practically significant, in the absence of other indications. These other indications are the uses which the competent authorities would have to considered as irrelevant except when the applicant has provided concrete evidence which makes the use more likely.

Potential trade mark owners might want to pay attention to this point!

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Nexus

CJEU rules on genuine use of collective trade marks

Book Review: Internet intermediaries and trade mark rights

AG Kokott provides insights on distinctive character of geographical collective trade marks and their interplay with GIs

Event report: Tertulia on EUIPO Boards of Appeal Case Law

CJEU says that all practically significant and demonstrated uses must be taken into account in examining distinctiveness

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