Category: ECJ

Hands off my database!

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What is wrong with a content aggregator harvesting content from third parties’ database and using it to provide its own service? This is – in a nutshell – the question that, on 14 January 2021, Advocate General Szpunar tried to answer with his opinion on Case C-762/19 (full text available here).

The case brought to the attention of the CJEU concerns the scope of the sui generis right established by Article 7 of Directive 96/9/EC, following the request for a preliminary ruling issued by the Regional Court in Riga, Latvia. The dispute was established between two Latvian companies active in the internet job-advertising market: SIA CV-Online Latvia (hereinafter, “CV-Online”) and SIA Melons (hereinafter, “Melons”).

CV-Online is an internet job-advertising company that operates through a website where employers post job offers upon payment of a fee. Once submitted, the offers are collected and organized in a database, which uses microdata meta tags (a sort of key words for search engines) in order to simplify searches and indexation. Melons, on the other hand, is a specialized search engine that accesses existing job advertising websites and gathers all relevant job posts for specific users searches. In doing so, Melons includes hyperlinks to the original ads on the website of first publication and also integrates the same meta tags used, so as to be able to take advantage of better positioning results on generalist search engines.

A.G. Szpunar suggests that the violation of the sui generis rights pertaining CV-Online is apparent, as the copying and indexing of databases fall within the definition of extraction and reutilization under Article 7(1) of Directive 96/9/EC. However, the question underlined by the A.G. is: how far can the right-holder go in preventing such extraction and re-utilization?

In order for a right-holder to lawfully exercise such rights, two elements should be met: one deriving from the protection afforded by the sui generis right, the other stemming from certain specific aspects of competition.

The first condition is due to the economic connotation of the sui generis right accorded by Article 7(1) of Directive 96/9/EC. Indeed, the protection afforded by the sui generis right may be granted only to those databases which can be proved to have required a substantial investment and only if the extraction or reutilization activities negatively affect such investment.

The second condition stems from the rationale of the sui generis right, that is closer to unfair competition, rather than to intellectual property rights. Indeed, its scope is not only to ensure the recovery of the investments made by the database creators, but it is also to protect them from commercial parasitism.

That said, A.G. Szpunar stresses the importance to consider that both the conduct of third parties (like Melons) as well as the very exercise of the sui generis right could amount to an unfair competition practice. Indeed, there could be a risk that database makers, rather than intending to prevent the creation of parasitical third parties products, may aim at establishing a dominant position in a relevant market.

Consequently, A.G. Szpunar suggests that the referring court should verify whether (i) the extraction or reutilization of the database has indeed taken place; (ii) it is proved that the database required a substantial investment; and (iii) such extraction or reutilization integrates a threat to the possibilities of recovering such investment. Should all the above conditions be met, the national court should also verify whether the exercise of these rights could result in an abuse of a dominant position under EU or national laws.

Giovanni Rindi

Advocate General Szpunar, opinion of 14 January 2021, Case C-762/19, SIA ‘CV-Online Latvia’ v SIA ‘Melons’

Pattern trademark do not consist exclusively of a shape whenever they are not indissociable from the product

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On March 14, 2019, the CJEU ruled on two preliminary questions submitted by the Court of Appeal of Stockholm in the case Textilis – Keskin v Svenskt Tenn (C-21/18).

josef-frank_textile-manhattan-315-linenSvenskt Tenn, as trademark and copyright holder over a renowned design pattern of a furnishing fabric, filed a lawsuit against Textilis, a UK company that sells textiles in the UK, arguing infringement of its rights and asking for an injunction prohibiting such sales.

 

Textilis in turn filed a counterclaim arguing for the invalidation of the EUTM on the grounds of lack of distinctiveness (Article 7(1)(b) EUTMR) and since it would consisted of a shape which gives substantial value to the goods (Article 7(1)(e)(iii) EUTMR).

On March 22, 2016 the Stockholm District Court found that Textilis was guilty of trade mark and copyright infringement. The court noted that Textilis had not provided any evidence that the trade mark in question lacked distinctiveness. In relation to Article 7(1)(e)(iii), the court dismissed the claim simply based on the fact that the contested trade mark does not consist of “a shape” within the meaning of Article 7(1)(e)(iii) of EUTMR.

Textilis then appealed that decision before the Court of Appeal, Patents and Market division, in Stockholm.

The Swedish Court of Appeal focused on the interpretation of Article 7(1)(e)(iii) of Reg. 207/2009. In particular, the CJEU was asked to rule on the meaning of the wording “consist exclusively of the shape” (used both in the original text of the EUTMR provision and in the new Regulation No 2015/2424 (“EUTMR as amended”) which entered into force on March 23, 2016) and whether its scope encompasses a sign consisting of the two-dimensional representation of a two-dimensional product, such as the fabric decorated with the sign in question.

The CJEU observed that, since the EUTMR does not provide any definition of the term “shape”, its meaning must be established with reference to its usual meaning in everyday language, while also considering the context in which it occurs and the purposes of the rules to which it belongs.

The CJEU affirmed that “it cannot be held that a sign consisting of two-dimensional decorative motifs is indissociable from the shape of the goods where that sign is affixed to goods, such as fabric or paper, the form of which differs from those decorative motifs”.

The CJEU recalled its previous Louboutin decision (Case C‑163/16), where it established that the application of a particular color to a specific location of a product does not mean that the sign in question consists of a “shape” within the meaning of Article 3(1)(e)(iii) of Directive 2008/95. This is because what the applicants intended to protect through the trademark registration in Louboutin was not the form of the product or part of the product on which it may be affixed, but only the positioning of that color in that exact location.

The Court also added that the fact that the drawings covered by the Trademark enjoy copyright protection does not affect this finding in any way.

Therefore, the CJEU concluded that the exclusion from registration established in Article 7(1)(e)(iii) of EUTMR is not applicable to the sign at issue in the main proceedings on the grounds that “a sign such as that at issue in the main proceedings, consisting of two-dimensional decorative motifs, which are affixed to goods, such as fabric or paper, does not ‘consist exclusively of the shape’, within the meaning of that provision”.

Judgment of the Court (Fifth Chamber) of 14 March 2019, Textilis Ltd and Ozgur Keskin v Svenskt Tenn Aktiebolag, Case C-21/18

Jacopo Ciani

The taste of a food product is not eligible for copyright protection

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On November 13 2018, the Court of Justice of the European Union (CJEU) has handed down its judgment in the case Levola Hengelo BV v. Smile Foods BV(C-310/17, ECLI:EU:C:2018:899) answering to a request for a preliminary ruling referred by the Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands, concerning whether copyright could vest in the taste of a spreadable cream cheese called ‘Heksenkaas’ and produce since 2007.

The request for preliminary ruling was made in a proceedings concerning an alleged infringement of intellectual property rights relating to the taste of such a product by Smilde, a company manufacturing a taste-alike product called ‘Witte Wievenkaas’.

Until this judgement, there was wide divergence in the case-law of the national courts of the European Union Member States when it comes to the question as to whether a scent may be protected by copyright.

While countries as Italy and the Netherlands accepted in principle the possibility of recognising copyright in the scent of a perfume (see. judgment of 16 June 2006, Lancôme, NL:HR:2006:AU8940), other countries such as France or Great Britain has rejected such possibility (Cour de Cassation, judgment of 10 December 2013,FR:CCASS:2013:CO01205).

This is the first time that the CJEU rules on the copyright of the taste of a food product.

Until now, the Court has taken a position only in respect of smells’ registration as trademarks in Europe. The CJEU held in Sieckmann v Deutsches Patent- und Markenamt(Case C-273/00, 12 December 2002) that “smells” are capable of performing the function of a trademark, but they are not capable of registration, since they cannot be represented in a trademark register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner.

In the present case, the CJEU ruled that a company should not have the right to copyright the flavour of a food product on very similar grounds.

Following the AG Melchior Wathelet’ s Opinion, the Court stated that the flavour of food can not be regarded as a “work” under Directive 2001/29.

For there to be a ‘work’ as per Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

“That is because, first, the authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter so protected. The same is true for individuals, in particular economic operators, who must be able to identify, clearly and precisely, what is the subject matter of protection which third parties, especially competitors, enjoy”.

“Secondly, the need to ensure that there is no element of subjectivity –– given that it is detrimental to legal certainty –– in the process of identifying the protected subject matter means that the latter must be capable of being expressed in a precise and objective manner” (decision, para. 41).

“Unlike, for example, a literary, pictorial, cinematographic or musical work, which is a precise and objective form of expression, the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable since they depend, inter alia, on factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed” (decision para. 42).

Moreover, “it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind” (decision para. 43).

It must therefore be concluded that the taste of a food product cannot be pinned down with precision and objectivity and, consequently, “cannot be classified as a ‘work’ within the meaning of Directive 2001/29” (decision para. 44).

This case is particularly interesting as the CJEU attempt for the first time to harmonise the meaning of “works” at EU level, giving to it “an autonomous and uniform interpretation throughout the European Union”.

This should limit the ability for national courts to assess autonomously the protectability of non-conventional categories of work (such as the smell of perfume) and contribute to favour a uniform application of EU law.

While the author shares the CJEU’s concerns about granting copyright protection to smells which cannot be identified precisely, doubt remains about whether copyright protection should be granted to them, when the available technology should make it possible such objective identification in the next future.

Likewise in the Sickmann case, it seems that the CJEU would have preferred to provide a non-definitive response to the issue.

CJEU, 13 November 2018, Levola Hengelo BV v. Smile Foods BV, C-310/17, ECLI:EU:C:2018:899

Jacopo Ciani

The relevance of profit for the qualification of an act of communication to the public according to the Italian Court of Frosinone

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The decision of the Court of Frosinone, published on February 2017 (available here), relies on a criminal investigation carried out by the Italian Tax Police earlier in 2014 against several websites that shared protected contents without the authorization of the right holders. Among these websites, there was also filmakerz.org.

The users of filmakerz.org were allowed to access without right holders’ consent a large number of movies and TV series through hyperlinks posted on the website. However, before being able to check the list of links that redirected to other websites, users were forced to see advertising banners.

The Italian Tax Police initially requested the Review Court of Rome, competent to rule on precautionary measures, to grant the preventive seizure of the website to exclude any further access to the infringing material. Other than expected, the Court rejected the request considering that the information insofar collected by the Tax Police was insufficient to prove the capacity of the advertising banners to produce profit in favor of the website’s holder, considering the profit purpose crucial to grant any precautionary measure against filmakerz.org.

Following further investigations, the Tax Police found out that after the first instance request, the websites filmakerz.org and the affiliated websites filmakerz.me and filmkerz.biz, automatically redirected to the website cineteka.org. According to the Tax Police, it was highly reasonable that all the domains were managed by the same person (filmakerz.org‘s holder), who set the redirection to bypass any possible block applied against filmakerz.org and the other affiliated websites.

The evidence presented before the Prefecture of Frosinone in the administrative proceedings was instead considered sufficient by the Judge to issue a fine of Euros 546,528.69 according to Article 171-ter, para. 2, letter a-bis of the Italian Copyright Act (which punishes everyone who “In violation of art. 16 of the Copyright Act, for profit, communicates to the public a copyright-protected work or part of it, by entering it into a system of telematic networks, by means of connections of any kind”).

The infringer appealed the administrative sanction before the Court of Frosinone which overruled the Prefecture’s decision. According to the Court the Italian Copyright Act requires the unauthorized communication to the public to be performed for profit, namely the intention to gain a consistent economic advantage or patrimonial increase from the infringer’s illegal conduct. It follows that the hyperlinker cannot be sanctioned for the sole act of linking to unauthorized protected material, but it is necessary that this leads to a considerable economic benefit.

In the case at stake, the evidence collected was deemed not sufficient to prove that the creator of filmakerz.org, filmakerz.me, filmkerz.biz and cineteka.org was obtaining any significant profit from his/her activity.

The Court of Frosinone has been one of the first in Italy to deal with the linking issue after the CJEU recent cases (particularly Svensson, GS Media and more recently the Pirate Bay case).

The meaning of “profit” – and the possibility to detect the existence of such purpose – assumes in the case at stake a prominent relevance. The same factor has been considered also in the CJEU case law, leading to different conclusions.

In the GS Media case (available here), the CJEU did not clarify what should be intended as “lucrative purpose”, though the Court specified that the presence of the profit intention is relevant to determine whether the conduct of the hyperlinker amounts to an “act of communication to the public”. In fact, in case hyperlinking is made for profit it must be assumed that it has been made following previous controls, from which the hyperlinker should have verified that the work in question is not unlawfully published on the site to which those hyperlinks refer. Even though no lucrative purpose is detected, hyperlinking can still be considered an “act of communication to the public” if the hyperlinker is aware – or should have been reasonably aware – of the fact that said work had been published on the Internet without authorization. In the GS Media case the CJEU asserted that a profit purpose existed. But the absence of lucrative purpose would not have directly led to the exclusion of the hyperlinker’s liability: it would have just implied the need for further evidence (based on the awareness criterion).

In the Pirate Bay case (available here) the EU Court stated: “there can be no dispute that the making available and management of an online sharing platform, such as that at issue in the main proceedings, is carried out with the purpose of obtaining profit therefrom, it being clear from the observations submitted to the Court that that platform generates considerable advertising revenues”. In this case, the presence of the profit intention is strictly connected to the fact that the hyperlinker was obtaining “considerable advertising revenues” from its activity, in a way which highly resembles the case held before the Court of Frosinone. Indirect income, such as the one obtained from the advertising banners, might be qualified as source of profit in the way intended by the CJEU in the Pirate Bay case. Moving from this decision, the Court of Frosinone might have qualified the profit incoming from the advertising banners, placed on the websites under investigation, as sufficient to consider fulfilled the requirement prescribed by Article 171-ter of the Italian Copyright Act.

The other way around, the Italian Court seems to have considered that the investigation did not provided enough evidence to prove that the infringer gained an economic benefit from his/her conduct. Without clarifying if, in the Court’s view, this circumstance relied on the impossibility to qualify the advertising banners as a source of profit or, conversely, on the inability to prove that the economic advantage gained was “considerable” (that is the term used by the Court). Such consideration would require assessing when the economic benefit can be deemed “considerable” within the scope of the Italian Copyright Law, in contrast with Article 171-ter which refers only to the profit intention itself regardless any quantification.

The above considerations remain however unanswered since the decision does not share any in depth reasoning about the grounds on which the Court ruled, probably without taking into consideration to the CJEU caselaw.

Miriam Loro Piana

Court of Frosinone, docket No. 1766/2015, 7 February 2017, Unknown vs Prefecture of Frosinone (Judge Gemma Carlomusto)

 

The Kit Kat case: the famous chocolate bar doesn’t deserve to be protected as a trademark

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On 20 January 2016 the England and Wales High Court (Chancery Division) issued its final decision on the Kit Kat case (the text is available here) dismissing the appeal filed by Société des Produits Nestlé SA (Nestlé) against the decision by which the Trademark Office rejected the trademark application for registration of the famous four stripes chocolate bar.

Preliminarily, it must be emphasized that the trademark application rejected by the Office concerned the three-dimensional sign corresponding to the shape of Nestlé’s four-finger KIT KAT product without the KIT KAT logo normally embossed onto each of the fingers of the product. This circumstance was decisive for both the decision of the English Court and that of the EU Court of Justice to which the former had applied for a preliminary ruling.

  kitkat

The dispute started in 2011 when Cadbury UK Ltd (Cadbury) filed a notice of opposition against Nestlé’s trademark application for infringement of

  • Article 3.1 lett. b) and lett. e), sub i) and ii) of Directive 2008/95/EU, according to which a trademark which is devoid of any distinctive character or which consists exclusively of the shape which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result shall not be registered or, if registered, shall be liable to be declared invalid, and
  • Article 3.3 of Directive 2008/95/EU, which provides that the registration shall not be refused or the trademark shall not be declared invalid if following the use which has been made of the trademark, it has acquired (before or after the date of application for registration or after the date of registration) a distinctive character (the so called “secondary meaning“).

In 2014 the England and Wales High Court (Chancery Division) addressed the CJEU for a clarification, in order to determine the appeals filed both by Nestlé and Cadbury against the Trade Marks Registry of the United Kingdom Intellectual Property Office’s decision issued in 2013. In its  decision, the Office had held that the Nestlé’s trademark was devoid of inherent distinctive character and had not acquired a distinctive character in relation to all goods covered by the application except for “cakes” and “pastries” and that the trademark consisted exclusively of the shape which was necessary to obtain a technical result.

 The CJEU’s decision

The Court of Justice’s decision was delivered on 16 September 2015 (available here) and has undergone many critics probably because it has determined the rejection by the English Court of the registration of the famous chocolate bar.

The decision, on one hand, is convincing where it states that the proof of the use of a shape trademark can be given also through the proof of the use as part of another trademark or in conjunction with such a mark (Nestlé’s trademark application for registration concerned, as said,  the shape of the bar without the KIT KAT logo). On the other hand, by affirming that the occurrence of  “secondary meaning” can be ascertained only by proving that the relevant class of persons (that is the “average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect”, and not also the trader) perceive the goods or services designated exclusively by the trademark applied for, as opposed to any other mark which might also be present, as originating from a particular company, the Court has given a very restrictive interpretation of the function of the trademark, since it seemingly excludes that the association of the shape with the trademark owned by the company is enough to assess the acquisition of the distinctive character.

The Court was requested of a preliminary ruling also about the obstacles under Article 3.1 lett. e) of Directive 2008/95/EU. On this point, it confirmed its previous case law according to which the grounds for refusal of registration set out by the provision operate independently of one another and it is sufficient that one of them is fully applicable to the shape at issue for precluding registration as a trademark of a sign consisting exclusively of the shape of goods (even in a case such the KIT KAT one), where that shape contains three essential features, one of which results from the nature of the goods themselves (the basic rectangular slab shape of the Nestlé’s chocolate bar) and two are necessary to obtain a technical result (the presence of the grooves running along the length of the bar, which, together with the width of the bar, determine the number of ‘fingers’).

 The English Court’s decision

However, in its final decision the English Court not only ignored the issue concerning the necessity to obtain a technical result but didn’t consider the case law, also recalled by the Court of Justice, according to which a sign which is refused registration under Article 3.1 lett. e) of Directive 2008/95/EU can never acquire a distinctive character (that is a “secondary meaning”) for the purposes of Article 3.3 (see C-299/99 Philips case, point 57 and 75; C-53/01 Linde case, point 44, C-371/06 Benetton case point 23-28 and C-48/09 Lego case point 47). Thus, the Court dismissed the appeal exclusively on the basis of the lack of proof of the consumer’s perception of the goods as originating from Nestlé.

Both decisions evidence, once again, how difficult is to validly register shape trademarks – especially shape trademarks concerning amorphous products like those in the food industry (however, the Court of Justice confirmed that the criteria for assessing the distinctive character of three-dimensional trademarks consisting of the shape of the product itself are not different from those applicable to all other categories of trademarks).

                                                                                                             Sara Caselli

England and Wales High Court (Chancery Division), 20 January 2016, Société Des Produits Nestlé SA v. Cadbury Uk Ltd

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

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.

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

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