Month: March 2016

Max Mara gets patent protection for jeans’ pockets which fit better to wearers’ body shapes.

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By judgment no. 472 of 14 January 2016, the IP Court of Milan (Judges Mr Marangoni, Mrs Dal Moro and Mrs Giani) ruled that jeans produced by Germani Group and distributed by Il Passatempo infringed Max Mara’s italian patent on “a pocket for clothing” that can “enhance and shape the forms of the wearers, with particular reference to the gluteus area”.

The Court dismissed the defendants’ exception of patent invalidity, based on the alleged lack of inventive step. A three-dimensional pocket that well adapts to the body constitutes an appropriate technical solution for a very clear technical problem: the reduction of the jeans unpleasant aesthetic effect of flattening and the increase in comfort. “This technical solution involves an inventive step, since for a person in the art it was not evident from the state of the art.”

The Court recognized that the patent infringement amounted also to unfair competition for contrast with professional ethics principles under art. 2598 no. 3) Italian Civil Code.

With reference to the distributor, the Court excluded its exemption from liability because unaware of the infringing nature of the saled product. Since intellectual property rights are subject to a system of publicity, the Court argued that market operators are presumed to be aware of their existence. As a consequence, the sale of i
nfringing goods amounts to infringement unless the distributor gives evidence that he was unaware, without his fault, of the infringement. That was not the case, since the distributor continued in marketing the infringing product even after the date of notification of the summons.

As regards the assessment of damages, the Court ordered the defendants to return the profits derived from the sale of the infringing products pursuant to art. 125 Italian Code of Industrial Property. This remedy was granted notwithstanding that Max Mara had not provided any evidence of the alleged damages and loss of profits. Even if the infringement does not give rise to damages, in any case it cannot enrich its authors, which will have to return their profits.

The decision seems to set the inventive step’s threshold required to get patent protection at a particularly low level. The related risk is that the same owner could claim different protections in relation to the same products. Indeed, in connection with the same jeans, design or even trademark protection could be successfully invoked as well.

Court of Milan, 14 January 2016, n. 472, Max Mara v. Germani Group et al. 

 

Jacopo Ciani

CJUE confirms that Adidas may oppose the registration, as a Community mark, of parallel stripes placed on the side of sports shoes: the degree of attention of the average consumers in purchasing “sport shoes” (second episode)

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On 17 February 2016 the Court of Justice of the European Union (Case C-396/15, full text here), confirmed a decision of the General Court (commented on this blog) upholding Adidas’ opposition against Shoe Branding’s Community trademark (“CTM”) application for two stripes positioned on a shoe.

Adidas

The General Court found that “the difference in length of the stripes arising from their difference in inclination are minor differences between the marks at issue that will not be noticed by the consumer with an average degree of attention and will not influence the overall impression those marks produce on account of the presence of wide sloping stripes on the outside of the shoe”.

The CJUE’s order confirmed the General Court’s finding that the trademark applied for was similar to Adidas’ 3-stripes mark on footwear, and that there was both a likelihood of confusion and dilution under Articles 8(1)(b) and 8(5) of the CTM Regulation.

The Court states 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 the overall assessment requested by the law and, therefore, did not err in law.

Unfortunately, the Court dismissed the ground of appeal relating to the General Court’s observation that the degree of attention of the average consumer of sports clothing is low, as the appellant did not indicate which paragraphs of the judgement under appeal it disagreed with or in any other manner substantiate its argument.

As noted in our previous comment, while the Board of Appeal stated that the average consumer is accustomed to seeing geometric designs on shoes and pays attention to the details of “sport shoes”, the General Court judged that since “sport shoes” are everyday consumer goods, the relevant public is made of the average consumer with an average degree of attention.

We were wondering how to reconcile what the General Court stated in his decision with the principles stated in decisions which have admitted that, with respect to famous trademarks, the public knows almost every detail and, therefore, can more easily recognize ad distinguish imitations, so that the risk of confusion between the signs is more difficult to occur (see Claude Ruiz-Picasso and Others, T-185/02, 22 June 2004, confirmed by C-361/04, 12 January 2006).

Even if the case demonstrates that position marks and other non-traditional trademarks can be very effective tools for famous brand owners to use against those who copy their trade dress in the EU, we reiterate our doubts regarding the degree of attention of the average consumer when purchasing “sport shoes” or, better perhaps, “sneaker” (normally bought by boys or girls very detail-oriented).

Finally, it must be noted that according to this case-law the extent of the exclusive right granted to Adidas by a position mark is very strong. Too much ?

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

Gianluca De Cristofaro

CJEU delivers its judgement in the Liffers case: there is no bar in the Enforcement Directive on claiming compensation for both moral and material damage

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By its 17 March 2016 decision (here), the CJEU cleared the doubts raised by the Spanish Tribunal Supremo as to an IP holder’s right to be compensated, in accordance with Article 13(1) of the Enforcement Directive (Directive 2004/48), for both material damage on the basis of the hypothetical royalty criteria laid down by subparagraph 2, heading (a), of said article, and moral damage under heading (b) of the same subparagraph 2.

The Tribunal Supremo’s doubts arose from the wording of Article 13(1), whose subparagraphs 1 and 2 read as follows (emphasis and numbers added):

“[1] Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement.

[2] When the judicial authorities set the damages:

(a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement;

or

(b) as an alternative to (a), they may, in appropriate cases, set the damages as a lump sum on the basis of elements such as at least the amount of royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right in question”.

Indeed, the expressions “or” and “as an alternative to (a)” contained in subparagraph 2 of Article 13(1) may well be read as dividing the criteria for setting damages provided by headings (a) and (b), in such a way that the two cannot be invoked together by IP holders (nor merged by the judicial authorities). The CJEU did not stop at a literal interpretation of Article 13(1), though, but looked at the article “in light of the objectives” pursued, in its view, by the Enforcement Directive.

From this perspective, the Court said that subparagraph 1 of Article 13(1) was aimed at ensuring full compensation for the “actual prejudice suffered” by right-holders, which means compensation for both material and moral prejudice (see paragraph 25 of the ECJ decision).

As the “hypothetical royalty” criterion provided by heading (b) of Article 13(1), subparagraph 2, does not take into account moral prejudice, each time an IP holder suffered moral prejudice in addition to material prejudice, application of this criterion alone would prevent full compensation being awarded. This outcome is inconsistent with the goal and the very rationale of said provision.

On these grounds the Court of Justice, upholding the opinion of Advocate General Whatelet (here), answered the preliminary questions raised by the Tribunal Supremo by stating that Article 13(1) must be interpreted as permitting a party injured by an IP infringement, who claims compensation for his material damage as calculated on the basis of the “hypothetical royalty”, to also claim compensation for the moral prejudice he/she has suffered.

It may be noted that, from a strictly Italian standpoint, the CJEU decision does not really add anything new, as the national provisions into which Article 13(1) of the Enforcement Directive has been transposed do not contain any reference to an alternative between compensation for moral prejudice and for material prejudice. Article 158(3) of Italian Copyright Law expressly states that moral damages can be recovered in addition to material damages calculated on the basis of the “hypothetical royalty” criterion. And, albeit less explicitly, but nevertheless clearly, Article 125 of the Italian IP Code, concerning IP rights other than copyright, does the same.

Riccardo Perotti

CJEU, 17 March 2016, C-99/15, Liffers

The Coca-Cola contour bottle without fluting cannot be a valid three-dimensional trademark according to the EU General Court

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On 29 December 2011 The Coca-Cola Company filed an application at OHIM for registration of a Community trademark of the following three-dimensional sign consisting of the shape of a bottle (on the left), a variation of the popular Coca-Cola contour bottle with fluting (on the right):
bottle 1.pngbottle 2.jpg

On January 2013 the examiner dismissed the application having found that the mark applied for was devoid of distinctive character (under Article 7 (a)(b) of regulation No 207/2009) and had not acquired said character through use (under Article 7(3)). The applicant filed a notice of appeal with OHIM against the examiner’s decision, which was however dismissed by the OHIM Board of Appeal.

Against the decision of the Board of Appeal The Coca-Cola Company brought action before the EU General Court, which on 24 February 2016 (in case T-411/14, full text here) entirely dismissed the appeal and, as a consequence, confirmed the previous ruling of OHIM Board Appeal.

With two pleas Coca-Cola claimed: (a) that the mark it applied for has a distinctive character, being a natural evolution of the shape of the bottle “contour” with fluting which is popular and distinctive worldwide; and (b) that in any event mark it applied for has acquired distinctive character throughout the use in the market in combination with the contour bottle with fluting.

 Taking into account the first plea, the General Court recalled that the distinctive character must be assessed by reference to (i) the goods or services in respect of which registration has been applied for, and (ii) the perception of them by the relevant public.

More specifically, it emphasized, when those criteria are applied account must be taken of the perception of the average consumer  in relation to a three-dimensional mark consisting of the appearance of the goods themselves: in this respect average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any word or graphic element, and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark.

Then, the Court examined the mark applied for, founding that either the lower, the middle and the top section of the bottle (i) do not enable the average consumer to infer the commercial origin of the goods concerned and (ii) do not display any particular features which stand out from what is available on the market.

Therefore, considering the mark applied for as a whole, the Court held that it is devoid of distinctive character for being a mere variant of the shape and packaging of the goods concerned, which will not enable the average consumer to distinguish the goods of Coca-Cola from those of other undertakings.

In considering the second plea, the Court underlined that for the mark to have acquired distinctiveness through use, Coca-Cola has the burden to demonstrate that at least a significant proportion of the relevant public throughout the European Union, by virtue of that mark, identifies the goods or services concerned as originating from Coca-Cola.

In evaluating that, the Court examined all the items of evidence already provided by Coca-Cola to the OHIM Board of Appeal, founding that none of them, considered both in isolation and as a whole, was sufficient to establish that the mark applied for has acquired distinctive through use.

In particular, the surveys submitted by the applicant covered only a part of the European Union (only 10 of 27 Member States) and the other secondary evidences such as investments, sales figures, advertising and articles did not, due to their imprecisions and inconsistencies, compensate for that deficiency: For example, the sales figures proved that Coca-Cola has sold large beverages throughout the EU, but the data provided referred to the ‘contour bottle’ without specifying whether that means the mark applied for or the contour bottle with fluting, consequently it does not enable a conclusion to be drawn regarding the relevant public’s perception of the three-dimensional sign applied for.

Furthermore, the Court pointed out that in general a three dimensional mark may acquire distinctive character through use, even if it is used in conjunction with a word mark or a figurative mark, when the relevant class of persons actually perceive the goods or services, designated exclusively by the mark applied for, as originating from a given undertaking (as stated in case C-353/03, Nestlè SA v. Mars UK Ltd). However, in the case in point the Court noted that the mark which Coca-Cola applied for was not clearly distinguishable from the mark it was alleged to be a part of, due to the fact that it was not obvious from the evidence provided by the applicant and particularly from the advertising material, whether the bottle that is shown in them is a representation of the contour bottle with fluting, or a representation of the mark applied for.

In view of the above, the General Court found that the mark Coca-Cola applied for has not even acquired distinctive character.

We can only agree with the whole outcome: to grant a trade mark in these circumstances would have given a perpetual monopoly to Coca-Cola in the shape of a bottle that is very commonplace on the market. The General Court set forth its arguments in a commendable way without being affected by the global popularity of Coca-Cola and its famous iconic bottle contour with fluting.

It remains to be seen whether, within two months of notification of the decision, Coca-Cola appeal the decision of the General Court to the Court of Justice of the European Union.

It may be not a coincidence and neither a déjà vu, but in the 1986 the House of Lord (Coca-Cola Co.’s Application [1986] 2 All ER 274) denied the Coca-Cola Company trademark protection for shape and design of the Coke bottle, assuming that it was “another attempt to expand on the boundaries of intellectual property and to convert a protective law into a source of monopoly”.

Matteo Aiosa

General Court of EU (Eight Chamber), The Coca-Cola Company v. Office for Harmonisation in the Internal Market, 24 February 2016, case T-411/14

CJEU on liability for trademark infringement in online advertising

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Daimler, a motor vehicle manufacturer and owner of the well-known trademark “Mercedes-Benz” brought an action before Budapest Municipal Court against Együd Garage, a former authorized dealer, seeking, first, a declaration that Együd Garage infringed the trademark Mercedes-Benz by the online advertisements and, secondly, an order to Együd Garage to remove the advertisements at issue, refrain from further infringements and publish a corrigendum in the national and regional press.

In fact, after the termination of the contract that entitled Együd Garage to use the trademark Mercedes-Benz for describing itself as ‘felhatalmazott Mercedes Benz szerviz’ (‘authorised Mercedes-Benz dealer’) in its own advertisements, Daimler discovered on Internet a number of advertisements still naming Együd Garage as an authorised Mercedes-Benz dealer.

Együd Garage’s defence was that, apart from the advertisement that appeared on one website, it did not place any other advertisements on the internet and that those at issue appeared or still appear contrary to its intention, without it having any influence on their content, publication or removal.

Furthermore, the former dealer wrote to the operators of several other websites requesting the removal of online advertisements which had been published without its consent.

In those circumstances, the Budapest Municipal Court decided to refer to the Court of Justice of the European Union for a preliminary ruling.

‘Must Article 5(1)(b) of [Directive 89/104] be interpreted as meaning that the trade mark proprietor is entitled to prevent a third party named in an advertisement on the internet, even though the advertisement was not placed on the internet by the person featuring in it or on his behalf, or it is possible to access that advertisement on the internet despite the fact that the person named in it took all reasonable steps to have it removed, but did not succeed in doing so.

On 3 March 2016 the Court of Justice of the European Union (Case C-179/15, full text here), stated that the publication on a website of an advertisement referring to a trade mark constitutes a use of that trademark by an advertiser who has ordered it. However, the appearance of the trademark 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. It is apparently the first time that the CJEU focuses on the assessment of the tort on subjective behaviour.

The ruling addresses the notion of “trademark use” in online advertising.

According to the CJUE “using” a trade mark in the meaning of Article 5(1) of the Directive 2008/95/EC “involves active behaviour and direct or indirect control of the act constituting the use. However, that is not the case if that act is carried out by an independent operator without the consent of the advertiser, or even against his express will”.

Accordingly, where that online advertising provider fails to comply with the advertiser’s request to remove the advertisement at issue or the reference to the mark contained therein, the publication of that reference on the referencing website can no longer be regarded as a use of the mark by the advertiser. Thus, the latter 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.

However, the CJEU states that the proprietor of the trademark 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.

Gianluca De Cristofaro

CJEU C-179/15, Daimler AG v. Együd Garage Gépjárműjavító és Értékesítő Kft.