Category: EUCJ

A Puzzling Decision: Freedom on Toy Blocks’ Production Market vs. LEGO’s Protection

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We already referred to a case concerning Lego, and, in particular, concerning Lego mini-figures and their possibility to be registered as shape marks (see here).

Now, after filing an application for registration of a Community Design with the European Union Intellectual Property Office (EUIPO) to be applied in Class 21.01 of the Locarno Agreement of 8 October 1968 with the following description: “Building blocks from a toy building set”, Lego A/S (“Lego”) got a big surprise by Delta Sport Handelskontor GmbH (“Delta”) which decided to “raise its concerns”.

Specifically, on December 8, 2016, Delta decided to challenge the validity of Lego’s application on the basis of the fact that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product and, for that reason, were excluded from protection; the claims were mostly grounded on Article 25(1)(b) of Regulation No 6/2002, along with Articles 4 to 9 of that same Regulation.

In the first instance, on October 30, 2017, EUIPO’s Cancellation Division rejected the invalidity claim while, in appeal, the ruling was overturned and the design was invalidated (by decision of the Board of Appeal – April 10, 2019) (texts of both decisions are available here under section “Decisions”).

At this point, Lego decided to bring the case in front of EU’s General Court claiming (i) the annulment of the contested decision and (ii) the upholding of the decision of the Cancellation Division.

The EU’s General Court, on March 24, 2021, annulled the appeal decision, specifying, inter alia, what follows (full text available here):

  • The Board of Appeal failed to assess whether the design met the requirements of the exception provided for in Article 8(3) of Regulation No 6/2002 for which “the mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection”. Since it failed to do so, it erred in law.
  • In order to assess whether a design product should be invalidated, all the features and/or elements of the same should be dictated by technical function, but if at least one of the features is not imposed exclusively by technical functions, the design cannot be declared invalid. In that regard, the General Court notes that the fact that the LEGO brick has a smooth surface of the upper face of the product is not present among the characteristics identified by the Board of Appeal, even though it is a feature of the appearance of the brick itself; and that
  • with reference to the above, the burden of proof should rely on the applicant of the invalidation query and then be ascertained by EUIPO.

Maria Di Gravio and Francesca Di Lazzaro

General Court (Second Chamber), 24 March 2021, LEGO A/S vs EUIPO, Case T‑515/19

HAPPY EASTER EVERYONE FROM IPlens

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

Cloud Service Providers and the active role in communicating online digital contents

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Introduction

Cloud Service Providers (CSPs) are relatively new intermediaries acting as “service providers” within the meaning of the Directive 2000/31/EC (i.e. any natural or legal person providing an information society service). They are commonly intended as the suppliers of the virtualized technical infrastructures where digital contents can be stored, distributed or communicated to the public and where computing resources can be shared between a number of clients. Thus, CSPs are usually not involved into responsibilities for illicit activities conducted through their means, since their role is considered merely passive in providing the technical infrastructure used by the clients.

It is worth noting that in some recent EU case law (see CJEU, C-265/16, V-CAST case) and in the process of approval of the a new EU Copyright Directive in the Digital Single Market (see the draft text approved last September by the European Parliament here and our comments here and here) are emerging signs of evolutions in the categorization of the CSPs, with a distinction between “active” CSPs and “passive” CSPs. This process seems not different from what has already happened in the context of the categorization of hosting service providers, where an higher level of responsibility is requested to those providers which play an “active” role (see our previous posts here, here and here).

Definition of Cloud Service Providers

Since there is no legal definition of CSPs available at EU level, the notion of CSP has to be reconstructed in different sources of law, at national and international level (see here). In the Italian legal system AgID – Agenzia per l’Italia Digitale introduced (see here) a legal definition of Cloud as “a set of remote technical resources utilized as virtual resources for memorization and elaboration in the context of a service”. According to this definition, the main features of the Cloud are that: (a) it entails a set of technical  resources that are remotely available (this means essentially via online connection); (b) the resources are considered as virtual resources (this means only for their overall processing capacity and not as the sum of single hardware and software); (c) the resources are used for offering specific services (this means that there is a clear distinction between the services offered and the equipment used for providing such services).

There are some differences between this definition and other definitions available at international level. According to the NIST, the US National Institute of Standards and Technologies, “Cloud computing is a model for enabling ubiquitous, convenient, on-demand network access to a shared pool of configurable computing resources (e.g., networks, servers, storage, applications, and services) that can be rapidly provisioned and released with minimal management effort or service provider interaction.” According to the EU Communication on the European Cloud Initiative dated 19th April 2016– COM (2016) 178, “the Cloud can be understood as the combination of three interdependent elements: the data infrastructures which store and manage data; the high-bandwidth networks which transport data; and the ever more powerful computers which can be used to process the data.”

The NIST definition is more oriented to describe functional aspects of Cloud and the advantages in terms of accessibility and modularity of Cloud services, while the EU Commission definition focuses on structural and network aspects of Cloud. The AgID definition sounds pretty generic and does not mention some peculiar features of Cloud, such as the share of resources, the access on demand, the minimal management effort, the connection with high-bandwidth networks; the absence of such features entails that a wider variety of services can be considered Cloud services under the AgID Rules, even if they do not necessarily have some peculiar features of Cloud services.

The V-Cast case and the distinction between “active” and “passive” Cloud Service Providers

In the recent EU case law between V-Cast and RTI, the CJEU has ruled on a video-recording service of TV broadcasts through Cloud storage. The main result of this judgment of the Court is that V-Cast video-recording service has been found illicit in light of the Infosoc Directive. More in detail, the Court ruled that the Infosoc Directive, in particular Article 5(2)(b) thereof, must be interpreted as precluding national legislation which permits a commercial undertaking to provide private individuals with a Cloud service for the remote recording of private copies of works protected by copyright, by means of a computer system, by actively involving itself in the recording, without the rightholder’s consent. An interesting aspect of this decision seems to be the distinction drawn by the Court between “active” and “passive” Cloud Service Providers. Indeed, by describing the conditions under which the active CSP can be found liable, the Court seems implicitly enucleating also the conditions under which the passive CSP cannot be considered liable.

V-Cast is a company incorporated in the UK which makes available to its customers via the Internet a video-recording system, in storage space within the Cloud, for terrestrial programmes of the Italian broadcaster RTI, among others. The user selects a programme on the V-Cast website, which includes all the programming from the television channels covered by the V-Cast service. The user can specify either a certain programme or a time slot. The system operated by V-Cast then picks up the television signal using its own antennas and records the time slot for the selected programme in the Cloud data storage space indicated by the user. The storage space in the Cloud is purchased by the user from another provider.

More in detail, according to the CJEU under Article 5(2)(b) of the Directive 2001/29/CE, Member States may provide for exceptions or limitations to the reproduction right in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial. Moreover, Article 5(5) of this Directive states that the exceptions and limitations provided for, inter alia, in Article 5(2) of the Directive will only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject matter and do not unreasonably prejudice the legitimate interests of the rightsholder.

The Court has clarified that, in order to apply the exception for private copying, it is not necessary that the technical means used for reproduction purposes are directly available to the private users but they can be provided also by third party operators. The core element to figure out the correct legal interpretation is the type of activity offered by V-Cast to its users. In the Court’s opinion, such activity cannot be considered as a mere supply of Cloud storage, also because the storage itself is not provided by V-Cast but by another provided on behalf of V-Cast. V-Cast was offering a more comprehensive service, inclusive of the (unauthorized) access to the RTI broadcasts over DTT, their reproduction and conversion into another format for distribution over the Internet and their storage, on user’s request, in a Cloud storage service for subsequent access by users.

The service offered by V-Cast does not amount only to a violation of the reproduction right, since no private copying exception is applicable to such service, but can also be considered illicit according to Article 3 of the Directive 2001/29/CE, which prohibits any unauthorized communication to the public, including the making available of a protected work or subject matter, given that, as is apparent from recital 23 of the Directive, the right of communication of works to the public should be understood in a broad sense covering any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting.

Even if the Court’s judgment is very specific and tailor-made for the V-Cast service, it is also interesting to understand what can be arguable reading this judgment a contrario. The mere provision of Cloud storage services of audio-visual contents, with reproductions made on individual requests of end-users, could be considered, at certain conditions, covered by the private copying exception since: (i) it is not a necessary requisite the fact that the users possess the reproduction means or equipment, given that such reproduction can be made also via means or equipment made available by third-party operators (§ 35 of the judgment); (ii) the provider which merely organizes the reproduction on behalf of the users could be considered within the limits of the private copying exception, where the provider does not play an active role and does not interfere with other exclusive rights, such as the communication to the public (§ 37-38 of the judgment).

The proposal of amendments to the EU Copyright Directive: the role of passive CSPs

The distinction between active and passive CSPs is part of the discussions around the proposal of a new Copyright Directive in the Digital Single Market, at least according to the Amendments to such Directive adopted by the European Parliament on 12 September 2018. With the Amendment 143 for introducing a new Recital 37 a, the European Parliament has proposed to introduce the definition of an Online Content Sharing Service Provider, which should encompass those Providers the main purposes of which is to store and give access to the public or to stream significant amounts of copyright protected content uploaded / made available by its users, and that optimise content, and promote for profit making purposes, including amongst others displaying, tagging, curating, sequencing, the uploaded works or other subject-matter, irrespective of the means used therefor, and therefore act in an active way.

The definition of Online Content Sharing Service Provider is relevant also because such Providers should not benefit from the liability exemption provided for in Article 14 of Directive 2000/31/EC (i.e. the safe harbour provision for hosting providers). What is relevant for excluding certain providers from the safe harbour regime is the fact that certain providers play an active role, in different ways (but mainly with an intervention aimed at creating added value in the supply of user generated contents), since the safe harbour regime was originally thought for mere technical service providers (in Recital 32 of the E-Commerce Directive is made clear that the role of the ISP which can enjoy limitations to liability “… is of a mere technical, automatic and passive nature, which implies that the information society service provider has neither knowledge of nor control over the information which is transmitted or stored”).

In its proposal of amendments, the European Parliament has expressly mentioned that also “Providers of cloud services for individual use which do not provide direct access to the public … should not be considered online content sharing service providers within the meaning of this Directive”. This provision, if approved, should be for the benefit of mere Cloud storage services, such as Dropbox o iCloud, where the request of reproduction is made by the private users and also the access to the stored contents is limited to the users with an account associated to those stored contents. This approach seems not far from the conclusions of the CJEU in the V-Cast case, at least considering what are the features of an active CSP in the opinion of the Court, and is the clear sign of the emerging distinction from a legal standpoint between active and passive Cloud Service Providers.

Gianluca Campus

CJEU – Judgment of the Court (Third Chamber) of 29 November 2017; VCAST Limited v RTI SpA; ECLI:EU:C:2017:913

Amendments adopted by the European Parliament on 12 September 2018 on the proposal for a directive of the European Parliament and of the Council on copyright in the Digital Single Market (COM(2016)0593 – C8-0383/2016 – 2016/0280(COD))

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

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 CJEU sheds light on the way to calculate the term of SPCs

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Article 13 (1) of Regulation EC No. 469/2009 (concerning the supplementary protection certificate for medicinal products, “SPC”) provides that SPCs are calculated on the basis of “the date of first authorisation to place the product one the market in the Community”. Existing SPC regulation is however ambiguous on this point and EU member states have adopted divergent practices.

By decision of 2 October 2014 the Oberlandesgericht Wien has referred questions to CJEU on a preliminary ruling regarding the calculation of SPCs term under Article 13 (1) of Regulation EC No. 469/2009.

The referral concerned two queries: a) whether the date of an MA (Market Authorization) has to be determined according to Community law or that of the member state where the SPC application is filed; b) whether (under Community law) “the date of the first authorisation” – as per Article 13(1) of the Regulation – is the date the MA actually issued or the date the applicant is notified.

The CJEU issued its Decision on 6 October 2015 in the case C-471/14, Seattle Genetics Inc. v Österreichisches Patentamt (full text here).

Confirming both the conclusions and the arguments submitted by the Advocate General Niilo Jääskinen in his Opinion as of September 10, 2015, the Court clarified: a) that, since Article 13(1) of aforesaid Regulation contains no express reference to the laws of the member states, it is necessary to adopt an independent and uniform interpretation that will be valid throughout the EU; b) that the date of the first authorisation is a matter of Community law, not of the legislation of the member state where the marketing authorisation has effect. The Court declared that the EU legislator chose to use the Regulation as the legal instrument to create a standard SPCs system.

In evaluating the second question, the CJEU further pointed out that SPCs were created to ensure sufficient protection to encourage pharmaceutical research, in light of the fact the period of exclusivity granted by patents concerning pharmaceutical products is insufficient to cover the R&D investment necessary.

In this context, the right to market a new drug arises on the date the patent holder becomes aware that the MA has been issued.

The Court therefore answered the second question by confirming that it is the date of notification of the MA that is to be considered the “date of the first authorisation”, this is the date to be taken into account in calculating the term of SPC.

As a result of this ruling, SPCs holders will benefit from a longer term of protection – by up to some weeks. Furthermore, a number of SPCs will likely need to have their duration recalculated.

 Matteo Aiosa

Court of Justice, Eighth Chamber, 6 October 2015, C-471/14, Seattle Genetics Inc. v Österreichisches Patentamt.