Month: January 2016

The General Court of the EU admits the registration of a trademark which evokes a shape

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On September 13 and 15, 2011, the Perfetti Van Melle Spa filed two applications at Office for Harmonisation in the Internal Market (OHIM) for the registration of the word signs “Daisy” and “Margaritas” as community trademarks for confectionary products.

The OHIM and its Board of Appeal rejected both the applications on the basis that the signs didn’t have distinctive character compared to the products since (i) they were attributable to a name of a very common flower, and (ii) confectionary products in the form of a flower were already present on the market.

By a decision of December 16, 2015, in the joined cases T-381/13 and T-382/13 (full text here), the General Court of the EU affirmed the validity of the registration of “Daisy” and “Margaritas” trademarks and, as a consequence, annulled the decisions of the OHIM Board of Appeal.

The EU Court held that the signs “Daisy” and “Margaritas” do not meet the condition for refusal under article 7, (1), c), of the Community Trademark Regulation 2009/207/EC, because neither the term “Daisy” nor “Margaritas” have a sufficiently direct relationship between the mark and the goods. In fact, the meaning of such signs does not necessarily indicate confectionary products, while the fact that consumers may often intend such trademarks as a shape of confectionary products is not relevant.

In particular, the Court argued that both the mentioned words have some other meanings that consumers may keep in mind besides the form of a flower, for example the term “Daisy” refers to a female name or a cartoon character, whereas the term “Margaritas” refers to a female name or a popular cocktail.

Furthermore, the Court pointed out that the Board of Appeal failed to provide evidences of the fact that the shape of a daisy flower is widely used in the confectionery sector. Therefore, the circumstance that consumers have occasionally seen sweets in a form of flower and precisely in a daisy form is not sufficiently decisive to conclude that consumers, facing the terms “Daisy” and “Margaritas”, immediately recall such confectionary products.

In the light of the above, the Court held that the signs “Daisy” and “Margaritas”, used for confectionary products, have a minimum of distinctiveness. Thus, there was no reason for refusal of registration under article 7, (1), b), of the Community Trademark Regulation 2009/207/EC.

In sum, the Court recognized in principle, a ‘sufficient minimum’ of distinctiveness is recognised – allowing the registration – when there is no univocal identification between the verbal sign and a certain kind of a product. However, the doubt arises that if said minimum of distinctiveness concerns the shape of a product, the registration as a trademark involves an exclusiveness of potentially unlimited duration on the shape itself. Now, wouldn’t this risk preempting and bypassing the – more limited – protection by registration as a design (Directive 98/71), thus eventually produce an undue anti-competitive result?

General Court of EU (EGC), Perfetti Van Melle Spa v. Office for Harmonisation in the Internal Market, 16 December 2015, Cases T-381/13 and T-382/13.

Matteo Aiosa

The Court of Turin ruled that shape of Ruinart champagne bottle has not distinctive character and rejected lookalike claims

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The Court of Turin issued an interesting decision about the possibility to protect the shape of the bottle of the renowned Ruinart champagne (see the Italian text of the interim decision in the 2014 here, confirmed by the appeal in 2015, here). The action was brought by the French company MHCS, producer of Ruinart, against a south-Italian wine maker, Farnese Vini S.r.l. MHCS claimed that two bottles of Farnese spumante, Cuvée Cococciola and Gran Cuvée Rosè:

cuvee

recall all distinctive elements of Ruinart bottle (capsule, neckband, label, and particularly the shape), thus (i) infringing 3 community (3D and figurative) trademarks owned by MHCS:

New Picture (2)

and (ii) constituting an act of unfair competition (an confusing lookalike).

The Court first considered the single elements covered by MHCS trademarks (limited to: label, capsule, neckband, coat of arms on the main label and on the neckband, color, and Ruinart name). In relation to the capsule and the neckband, the Court found that, also in light of their necessary nature, the different features adopted by Farnese (colors, words, boards, etc.) sufficiently differentiate the two elements. In relation to the labels, the unique similarity is the oval/elliptic shape (although not perfectly overlapping). The Court considered the label’s form strictly connected to the shape of the bottle (for practical need of adhesion of the label to the bottle and for aesthetic reasons) which is oval as well, and therefore not protectable per se.

As to the shape of Ruinart bottle (not protected by MHCS community trademarks), the Court held it cannot be protected as a de facto trademark. Indeed, the Court considered the shape of the Ruinart bottle quite common and lacking of distinctive character (which occurs only when the shape is original and unusual within the market). Farnese demonstrated that its bottle is in fact a commonly available model named “Abram”, similar to the typical champagne bottle (in Italian, the so called Champagnotta prestige cuvée).

Finally, the Court excluded that Farnese bottles could be considered as a confusing look alike of the Ruinart’s ones. According to the Court of Turin’s case law, slavish imitation requires 3 conditions. Indeed, the shape of the product (or at least the combination of its single elements) must (i) be original (i.e. elaborated with respect of common shapes); (ii) not be technically necessitated; and (iii) show distinctive character (i.e. the ability to characterize the goods as originating from that particular company). Conversely, each element of Ruinart bottles claimed by MHCS (including the shape) is necessitated or common, nor their combination is distinctive.

On the contrary, the Court held that the real distinctive features of Ruinart bottles are (i) Ruinart name, (ii) the coat of arms, (iii) the label colors, and (iv) the chromatic combination between label and writings: all elements not reproduced by Farnese bottles. Moreover, the average consumer of Ruinart wines should be a careful one, thus further reducing any risk of confusion.

This decision follows the leading Italian case law on unfair competition, which is mainly focused on a “risk of confusion” analysis. However, it is worth noting that in recent years a different case law has followed a look-alike analysis beyond confusion (see Court of Milan 20 March 2014 and Court of Bari 20 October 2011). In this regard, the use of very similar elements of a packaging/aspect of a product, even without an actual risk of confusion, may be considered as an attempt to recall the most renowned product and the successful image/aura of the competitor’s brand, thus taking advantage of its commercial strategy. This analysis is based on a concept similar to the “link” required by the CJEU between the mark with a reputation and the similar sign (Adidas, C-408/01). However, even if said Milan and Bari Courts’ approach had been followed, the decisum would not have probably changed, since the similar elements and their combination were in fact considered as common and not distinctive.

Francesco Banterle

Court of Turin, 24 October 2014 and 17 April 2015, MHSC v. Farnese Vini S.r.l. et al.

Right to be forgotten: the first Italian decision after Google Spain

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By its judgment of 3 December 2015 (full text here), the Court of Rome issued the first decision of an Italian court dealing with the so called “right to be forgotten” after the ECJ leading case of 13 May 2014, C- 131/12, Google Spain SL, Google Inc. v Agencia Española de Protección de Datos, Costeja Mario González.

The applicant, a lawyer, sued Google, asking the de-listing of 14 links resulting from a list of results displayed following a search made on the basis of his name, on the assumption of the existence of a right to be forgotten. He argued that the links were referring to a court case dating back to the years 2012/2013 and dealing with an alleged fraud in which he was involved (but never condemned) with some representatives of the clergy and other subjects linked to the criminal organization known as “Banda della Magliana”. As a consequence, the lawyer called for the monetary compensation due to the illegal treatment of its personal data.

The Court of Rome dismissed the plaintiff’s request on the assumption that the disclosed personal data were both recent and of public interest.

The Court based its decision on the principles recently recognized by the Court of Justice in Google Spain (and already accepted by Italian previous case law, cfr. Cass. Civ. Sec. III, 05-04-2012, n. 5525).

In this case the ECJ ruled that the data subject may, in the light of his fundamental rights under Articles 7 and 8 of the EU Charter of Fundamental Rights (and in application of Article 12(b) and subparagraph (a) of the first paragraph of Article 14 of Directive 95/46/EC), request that the personal data in question no longer be made available to the general public by its inclusion in such a list of results. However, inasmuch as the removal of links from the list of results could, depending on the information at issue, have effects upon the legitimate interest of internet users potentially interested in having access to that information, “a fair balance should be sought in particular between that interest and the data subject’s fundamental rights under Articles 7 and 8 of the Charter” (par. 81).

Whilst “it should be held that those rights override, as a rule, not only the economic interest of the operator of the search engine but also the interest of the general public in finding that information upon a search relating to the data subject’s name”, the Court also recognised the existence of an exception to this general rule when “for particular reasons, such as the role played by the data subject in public life […], the interference with [the] fundamental rights [of the data subject] is justified by the preponderant interest of the general public in having, on account of [the] inclusion [of the information] in the list of results, access to the information in question” (par. 97).

The Article 29 Data Protection Working Party (hereinafter only “WP”) in its Guidelines on the implementation of the ECJ Judgement on Google Spain, adopted on 26 November 2014 for the purpose of establishing a list of common criteria to be used by European data protection authorities to evaluate whether data protection law has been complied with, stated that “no single criterion is, in itself, determinative”.

However among these criteria there are both whether the data are temporally relevant and not  excessive (i.e. closely related to the data’s age) and whether the data subject play a role in public life (s.c. public figures criterion).

With reference to the second criterion, even if it is not possible to establish with certainty the type of role in public life an individual must have to justify public access to information about them via a search result, the WP pointed out that “by way of illustration, politicians, senior public officials, business-people and members of the (regulated) professions can usually be considered to fulfil a role in public life”.

Under this test, the Court of Rome rejected the plaintiff’s request on the assumption that the treated personal data were both recent and of public interest and denied that the data subject had a right that the information relating to him should, at this point in time, no longer be linked to his name.

The decision can be welcomed to the extent it shows the benefits of the process of EU harmonization realized by means of the interpretative ruling of the ECJ and of the WP on the right to prevent indexing of personal data published on third parties’ web pages.

The judgement, in any case, works in the direction to limit the scope of application of the right to consign personal data to oblivion, since it affirms that the “public figure role” can be recognized not only to politicians and public officials but also to the large class of “business-people”, belonging to regulated professional orders.

Jacopo Ciani

Court of Rome, 3 December 2015, No. 23771, Dott.ssa Damiana Colla