Posts tagged " trademark "

Judgment of the CJEU: Tommy Hilfiger

29 July 2016

The operator of a physical marketplace may be forced to put an end to trademark infringements committed by market-traders.

The company Delta Center is the tenant of the marketplace ‘Pražská tržnice’ (Prague market halls). It sublets to market-traders the various sales areas in that marketplace.

Manufacturers and distributers of branded products discovered that counterfeits of their goods were regularly in Prague market halls. On that basis, they asked the Czech courts to order Delta Center to stop renting sales areas in those halls to people who committed such infringements. The intellectual property directive1 allows trademark holders to bring an action against intermediaries whose services are used by a third party to infringe their trademarks.

The trademark holders consider that, like the operators of online marketplaces covered by the judgment in L’Oréal,2 the operator of a physical marketplace may, pursuant to the directive, be forced in law to bring trade mark infringements committed by market-traders to an end and to take measures in order to prevent new infringements.

The Nejvyšší soud (Supreme Court, Czech Republic), before which the case is now pending, asks the Court whether it is actually possible to order the operator of a physical marketplace to put an end to trademark related infringements committed by market-traders and to take measures seeking to prevent new infringements.

In today’s judgment, the Court finds that an operator which provides a service to third parties relating to the letting or subletting of pitches in a marketplace, and which thus offers the possibility to those third parties of selling counterfeit products in that marketplace, must be classified as an ‘intermediary’ within the meaning of the directive. The Court states that whether the provision of a sales point is within an online marketplace or a physical marketplace is irrelevant because the scope of the directive is not limited to electronic commerce.

Consequently, the operator of a physical marketplace may itself also be forced to put an end to the trade mark infringements by market-traders and to take measures to prevent new infringements.

Similarly, the Court states that the conditions for an injunction issued by a judicial authority against an intermediary who provides a service of letting sales points in market halls are identical to those applicable to injunctions addressed to intermediaries in an online marketplace.

Thus, not only must those injunctions be effective and dissuasive, but they must also be equitable and proportionate. They must not therefore be excessively expensive and must not create barriers to legitimate trade. Nor can the intermediary be required to exercise general and permanent oversight over its customers. By contrast, the intermediary may be forced to take measures which contribute to avoiding new infringements of the same nature by the same market-trader. In addition, the injunctions must ensure a fair balance between the protection of intellectual property and the absence of obstacles to legitimate trade.

Source: Court of Justice of the European Union Press Release, No 72/16, 7 July 2016

Judgment of the GC: Future Enterprises v. McDonald’s

29 July 2016

According to the General Court, the repute of McDonald’s trade marks makes it possible to prevent the registration, for foods or beverages, of trade marks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage

In 2008, the company Future Enterprises, of Singapore, applied for registration of the EU trade mark MACCOFFEE for foodstuffs and beverages, which was granted in 2010 by EUIPO (European Union Intellectual Property Office, formerly OHIM). The American company McDonald’s then applied to have the trade mark declared invalid on the basis of its earlier EU trade mark McDONALD’S as well as 12 other trade marks which it held for fast food restaurant services and which included the word elements ‘Mc’ or ‘Mac’ as prefixes1. In 2013, EUIPO granted McDonald’s application, in view of the reputation of the McDONALD’S trade mark for restaurant services and the link that the public could establish between the contested trade marks (and Future Enterprises could thereby take unfair advantage of the repute of the McDONALD’S trade mark). Future Enterprises requests the General Court to set aside the decision of EUIPO.

By today’s judgment, the General Court dismisses the action brought by Future Enterprises and thus confirms the decision of EUIPO.

The General Court notes, at the outset, that the trade mark MACCOFFEE and the McDonald’s protected trade marks have a certain degree of phonetic and conceptual similarity, resulting from their respective initial part, namely the ‘mac’ and ‘mc’ elements.

Moreover, the General Court validates the assessments of EUIPO according to which, because of the combination of the element ‘mac’ with the name of a drink in the MACCOFFEE trade mark, in particular, the relevant public can associate that trade mark with the McDonald’s ‘Mc’ family of trade marks and mentally establish a link between the trade marks at issue. The element ‘mac’ in MACCOFFEE is perceived as identical or equivalent to the initial element ‘mc’ of the McDonald’s trade marks. Furthermore, the structure of the MACCOFFEE trade mark is very similar to that of the Mc family of trade marks, which combines the prefix ‘Mc’ with the name of a foodstuff.

In addition, the General Court considers that, despite the difference of the goods and services covered by the trade marks at issue (namely the foodstuffs and beverages for MACCOFFEE and the fast food restaurant services for McDonald’s), there is nevertheless a certain similarity owing to the close links existing between them: thus, the foodstuffs covered by MACCOFFEE may be used and offered in the context of the fast food restaurant services provided by McDonald’s. Some of the foodstuffs designated by MACCOFFEE, such as ice cream, muffins, filled sandwiches and toasted sandwiches, are not simple ingredients serving as the basis for dishes served in fast-food restaurants, but correspond to the goods offered, as such, on the menu of those establishments.

Furthermore, the foodstuffs and restaurant services at issue are directed at the same consumers.

Lastly, the General Court confirms EUIPO’s analysis that the use of MACCOFFEE without due cause takes unfair advantage of the repute of McDonald’s trade marks. Indeed, it is highly probable that MACCOFFEE rides on the coat-tails of McDonald’s in order to benefit from its power of attraction, its reputation and its prestige, and exploits, without paying any financial compensation, the marketing effort made by McDonald’s in order to create and maintain its image. Thus, upon seeing the MACCOFFEE trade mark affixed to goods closely linked to those of McDonald’s, the relevant public could mentally establish a link between the trade marks at issue and could transfer the image of the McDonald’s trade marks to the goods covered by MACCOFFEE.

Source: Court of Justice of the European Union Press Release No 70/16, 5 July 2016.

The EU trade mark representing the shape of a Rubik’s Cube should be declared invalid?

25 May 2016
Advocate General Szpunar considers that the EU trade mark representing the shape of a Rubik’s Cube must be declared invalid.
At the request of Seven Towns, a UK company which manages, in particular, intellectual-property rights relating to the ‘Rubik’s Cube’, the European Union Intellectual Property Office (EUIPO) registered, in 1999, the shape of that cube as a three-dimensional Community trade mark in respect of ‘three-dimensional puzzles’.
In 2006, Simba Toys, a German toy-manufacturing company, applied to EUIPO to have the three-dimensional mark cancelled, in particular on the ground that it involves a technical solution consisting of a rotating capability, whereas such a solution may be protected only by patent and not as a trade mark. As EUIPO dismissed that application, Simba Toys brought an action before the General Court in which it sought annulment of EUIPO’s decision.
By judgment of 25 November 2014,1 the General Court dismissed the action brought by Simba Toys. In particular, it held that the graphic representation of the shape of a Rubik’s Cube did not involve any technical function such as to preclude it from being protected as a trade mark, and that it could therefore be registered as an EU trade mark. Simba Toys has appealed against that judgment to the Court of Justice.
In today’s Opinion, Advocate General Maciej Szpunar proposes that the Court of Justice should set aside the judgment of the General Court and annul the decision of EUIPO.
The Advocate General stresses in particular that, in accordance with the EU trade mark regulation,2 shapes with essential characteristics which are inherent in the generic function or functions of the goods concerned must be denied registration. Reserving such characteristics to a single economic operator would, he points out, make it difficult for competing undertakings to give their goods a shape which would be suited for the use for which those goods are intended.
The Advocate General then goes on to address the ground of appeal based on the provision in that regulation which states that signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result cannot be registered.3 He points out that a sign consisting of the shape of a product that, without the inclusion of significant non-functional elements, merely performs a technical function cannot be registered as a trade mark, since such a registration would unduly impair the opportunity for competitors to place on the market goods the shapes of which incorporate the same technical solution.
The Advocate General notes that, when analysing the functional elements of a given shape, the competent authority is not required to restrict itself to information arising from the graphic representation but must, where necessary, also take account of other essential information.
In the view of the Advocate General, the General Court, while it identified the essential characteristics of the sign, failed to assess those characteristics in the light of the technical function inherent in the product concerned. Although the General Court, in the judgment under appeal, emphasised that it is necessary to assess whether the characteristics of the shape ‘perform the technical function of the goods concerned’, none of the further grounds of that judgment defines what technical function the goods concerned perform or analyses the relationship between that function and the characteristics of the shape represented. That assumption leads to the paradoxical conclusion that the graphic representations of the contested mark do not make it possible to determine whether the shape in question involves any technical function or, if so, what that technical function might be.
The Advocate General finds that, in order to carry out a proper analysis of the functional features of the shape, the General Court ought first to have taken account of the function of the product concerned, namely the three-dimensional puzzle, that is to say, a brain-teaser consisting of a logical arrangement of movable elements. The General Court, in his view, also erred in concluding that the analysis of the shape concerned from the point of view of its functional features ought to be based solely on an examination of the graphic representation in respect of which registration had been applied for.
In the Advocate General’s view, the line of reasoning according to which the scope of protection resulting from registration of a mark covers every type of puzzle with a similar shape, regardless of the principles by which it functions, and thus, in regard to the shape at issue in the present case, may potentially cover every three-dimensional puzzle the elements of which make up the shape of a ‘3x3x3’ cube, is contrary to the public interest because it makes it possible for the proprietor to extend its monopoly to the characteristics of goods which perform not only the function of the shape in question but also other, similar functions.
Source: Court of Justice of the European Union PRESS RELEASE No 52/16 Luxembourg, 25 May 2016

CJEU rules on using the trademark “Mercedes-Benz” in online ads

29 March 2016

Former authorised Daimler dealers are not responsible for advertisements which, despite their efforts to have them removed, continue to associate their name with the trade mark ‘Mercedes-Benz’ on the internet.

Furthermore, Daimler cannot require those dealers to take steps to remove such advertisements from the internet where they have not been ordered.

Együd Garage is a Hungarian company specialised in the sale and repair of Mercedes cars. For over five years, it was a party to a contract for the supply of after-sales services with Daimler, the German manufacturer of Mercedes cars and proprietor of the international trade mark ‘Mercedes-Benz’ which is also protected in Hungary. Under that contract Együd Garage was entitled to use that trade mark and to describe itself as an ‘authorised Mercedes-Benz dealer’ in its own advertisements.

Following the termination of that contract, Együd Garage tried to remove any online advertisement that might lead the public to assume that it was still in a contractual relationship with Daimler. Despite the steps taken, advertisements indicating such an association continued to be distributed online and identified by search engines.

Daimler then brought an action before the Fővárosi Törvényszék (Budapest Municipal Court, Hungary) seeking an order that Együd Garage remove the advertisements at issue from the internet and refrain from further infringement of the rights connected with its trade mark. That court asks the Court of Justice whether the Trade Marks Directive1 allows Daimler to require a former contractual partner to take extensive measures to prevent it from causing harm to its trade mark.

By today’s judgment, the Court finds that the publication on a website of an advertisement referring to a trade mark constitutes a use of that trade mark by an advertiser who has ordered it. However, the appearance of the trade mark on the site in question no longer constitutes a use by the advertiser where he has expressly requested the operator of the site, from whom he had ordered the advertisement, to remove it and the operator has disregarded that request. Thus, the omissions of such an operator cannot be attributed to an advertiser who specifically seeks to prevent unauthorised use of the trade mark in question.

By the same logic, the advertiser cannot be held liable for the acts and omissions of operators of other websites who, without his consent, have put the advertisement on their own site.

In so far as Együd Garage is in just such a situation, Daimler is not entitled to require, by means of legal action, that publication of the advertisement online be terminated.

However, the Court states that the proprietor of the mark may, first, claim reimbursement from the advertiser for any financial benefit that he may obtain from advertisements still online and, secondly, bring proceedings against operators of websites that infringe the rights connected with its trade mark.

Judgment in Case C-179/15 Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft, 3 March 2016

Source: Court of Justice of the European Union PRESS RELEASE No 23/16 Luxembourg, 3 March 2016

CJEU decision in Adidas case

29 March 2016

Adidas may oppose the registration, as a Community mark, of parallel stripes placed on the side of sports shoes.

In 2009, Shoe Branding Europe, a Belgian company, filed an application for registration of the mark reproduced below on the left with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for shoes. Sports company adidas opposed registration of that mark, relying among other things on one of the marks reproduced below on the right:              

After OHIM dismissed the opposition, adidas instituted proceedings before the General Court seeking annulment of OHIM’s decision. By judgment of 21 May 2015,1 the General Court upheld the action brought by adidas, taking the view that OHIM had been incorrect in finding that the marks were visually dissimilar when the overall impression produced by the marks was, to a certain extent, similar given that there were elements clearly common to the two marks (parallel sloping stripes, equidistant, of the same width, contrasting with the base colour of the shoe, placed on the outside of the shoe). Not satisfied with the General Court’s judgment, Shoe Branding Europe lodged an appeal before the Court of Justice.

In its order of 17 February 2016,2 the Court of Justice upholds the General Court’s judgment.

The Court notes, among other things, that the General Court did not contradict itself in finding that OHIM had not provided a proper statement of reasons for its findings on the similarity of the signs at issue, since the minor differences existing between them (i.e., the different length of the stripes resulting from the difference in angle) would not influence the overall impression produced by them on account of the presence of wide sloping stripes on the side of the shoe.

The Court further holds that since the General Court held that the differences between two and three stripes and in the length of the stripes were not sufficient to affect the similarities arising from the configuration of the signs at issue, it did conduct an overall assessment and, therefore, did not err in law.

Order of the Court of 17 February 2016 in Case C-396/15 P Shoe Branding Europe BVBA v adidas AG, 24 February 2016.

Source: Court of Justice of the European Union PRESS RELEASE No 17/16 Luxembourg, 24 February 2016

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