The EU General Court dismissed an action to invalidate a Registered Community Design held by Nike for electronic wristbands.

In 2012, Nike registered successfully a Community Design for an electronic wristband. One year later, Mr. Murphy filed for a declaration of invalidity of Nike’s design on the basis of a prior registered design for “Flexible LCD watch bands”.

murplhy design.jpgwristband.jpg

Mr. Murphy argued that Nike design infringed Article 6(1)(b) of the Community Designs Regulation, submitting that it lacked individual character as the overall impression on the informed user did not differ from that produced by Murphy’s prior design.

Neither the Invalidity Division of the EU Intellectual Property Office (EUIPO) nor the EUIPO Board of Appeal agreed with Mr. Murphy.

The case came before the EU General Court upon Mr. Murphy’s appeal of the Board of Appeal decision.

The General Court rejected Murphy’s application for a declaration of invalidity of the Nike design on the following grounds (here).

Firstly, it considered that, in order for a wristband to be able to fulfil its function properly, its designers would be limited by several constraints, as the need to be relatively small, thin, light, ergonomic in order to fit the wrist and to contain measuring instruments. These technical constraints led to conclude that the degree of freedom of the designer was high rather than very high, as argued by Mr. Murphy.

The degree of freedom must be taken into consideration in assessing individual character pursuant to Article 6(2) of the Designs Regulation, because the more the freedom of the designer in developing a design is restricted, the more likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. (see judgment of 10 September 2015, Handbags, T‑525/13, EU:T:2015:617, paragraph 29 and the case-law cited).

In any case, even taking account of a high degree of freedom afforded to the designer of electronic wristbands, the Court reiterated the position from earlier case law that the overall impression produced by the Nike design on the informed user was clearly different to that produced by Murphy’s design.

Indeed there were a number of differences between the two designs, namely that (i) the Nike design was larger and thicker than Murphy’s design, (ii) Nike’s design featured a large oval button on the surface of the wristband which was not present in Murphy’s design, (iii) the internal components of the Nike design were visible, giving it a more technical aspect than Murphy’s design, which appeared as opaque and elegant, and (iv) the Nike design had less ornamentation than Murphy’s design, on which the image of a diver and a line running along the wristband were clearly visible.

On the contrary, the clasps’ similarity in both designs alone was not sufficient to make them similar as a whole. Indeed, the overall impression must be determined in light of the manner in which the product is used and when using an electronic wristband, the informed user attaches more importance to the part displaying the data than to the clasp.

The General Court disregarded Murphy’s argument, based on UK case law, that his prior design enjoyed a higher degree of protection because it was a significant advance over the prior art in existence at the time of its registration in 2005. The Court has pointed out that it was not bound to consider decisions of national courts, even where the latter are based on provisions analogous to those of that regulation (see judgment of 29 October 2015, Éditions Quo Vadis v OHIM — Gómez Hernández (‘QUO VADIS’), T‑517/13, not published, EU:T:2015:816, paragraph 46 and the case-law cited). In addition, the new and unusual character of Murphy’s design did not prevent the informed user from perceiving the differences in subsequent designs (see, to that effect, judgment of 21 May 2015, Senz Technologies v OHIM — Impliva (Umbrellas), T‑22/13 and T‑23/13, EU:T:2015:310, paragraph 95).

Appeal has already been brought before the European Court of Justice (ECJ) (C-538/17 P). It does not seem unreasonable to predict the confirmation of the here mentioned decision. Indeed, the General Court seems to have applied the long standing principles formulated by the ECJ in relation to the assessment of the individual character and its judgment appears to be a matter of fact, that hardly may be challenged by the higher court.

Jacopo Ciani

General Court (Fifth Chamber), 4 July 2017, Thomas Murphy v European Union Intellectual Property Office, Case T-90/16

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

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

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

“Position” Trade Marks: the General Court of the EU on the Likelihood of Confusion. The “Adidas’ Three Stripes” Case

On May 21st, 2015 the General Court of the EU laid down some key issues on the assessment of the likelihood of confusion between “position marks”, meaning those figurative marks that are registered with the indication of the specific position where the mark is displayed on a certain good (full text here).

Case T-145/14, Adidas AG v. OHIM, concerned the application for registration, by Belgian Shoe Branding Europe BVBA, of a “position mark” for adidas“footwear”, consisting in two parallel lines placed on the side of a shoe, similar to the famous Adidas’ “three stripes”, though differing in number and inclination. Adidas AG filed a notice of opposition, based on its earlier rights.

Both the Opposition Division and the Board of Appeal of the OHIM rejected Adidas’ opposition.

However, the General Court annulled the decision of the Board of Appeal, ruling that: 1) the marks at issue have more common elements than differences; 2) the average consumer of that kind of products does not demonstrate a high degree of attention, normally perceiving a mark as a whole and not proceeding to analyse its various details, so that the overall impression produced by the two marks is that of similarity; 3) a mark bearing similar characteristics to those of a highly distinctive mark with a strong reputation may mislead the public into believing that the goods come from the same undertaking.

One of the key issues of the commented case is defining the degree of attention of the average consumer when he prepares and makes his choice between different products. In fact, while on one hand 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”, on the other hand 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. The Board of Appeal was probably right, because consumers, when purchasing “sport shoes”, usually seek good quality, solid and technical shoes, with specific features and produced by a trusted mark, hence applying a medium / high degree of attention.

It must also be pointed out that, despite what the General Court stated in this decision, previous EU decisions have admitted that the more famous a mark is, the more likely the average public will notice even the smaller differences; because it knows the trade mark in almost every detail and, therefore, can more easily recognize and distinguish imitations, so that the risk of confusion/connection between the signs is more difficult to occur (see Claude Ruiz-Picasso and Others v. OHIM, T-185/02, 22 June 2004, confirmed by C-361/04, 12 January 2006; on the renowned mark see also Court of Bologna, 20 October 2011, in GADI, 2013, n. 5954, p. 264 ss.).

Eleonora Sbarbaro

General Court of the EU (EGC), Adidas AG v. Office for Harmonisation in the Internal Market, 21 May 2015, Case T-145/14

EU General Court rules Lego mini-figures should continue to be protected as shape marks

By a decisionlegoman of June 16, 2015, T-395/14 (full text here), the General Court of the EU (GC) knocked down a challenge by Best Lock Ltd, a British brand of plastic building bricks that are compatible with and competitor of the Danish firm Lego, arguing that the community 3D trade mark (TM) reproducing the shape of Lego’s famous figurines, registered in 2000, was invalid pursuant to Article 7(1)(e)(i) and (ii) of Regulation No 207/2009 (Reg.) because the shape of the little men was determined by the nature of the goods themselves and consists exclusively of a shape necessary to obtain a technical result, namely, the possibility of joining them to other interlocking building blocks for play purposes. The GC said that the contested TM does not consist “exclusively” of a functional shape. The “exclusivity” condition, according to ECJ’s previous case law (Lego Juris v OHIM, 14 September 2010, C-48/09 P, par. 51), is fulfilled only when all the shape’s essential characteristics perform a technical function. In the present case, however, the ability to join to other building blocks can not be considered the key elements of the Lego figures. Holes on the feet and backs of the legs “do not, per se, enable it to be known whether those components have any technical function” (par. 33), but rather are necessary in order “to confer human traits on the figure in question” (par. 35). Their function is therefore aesthetic and fully distinctive.

The GC decision is just the last episode of a judicial saga between the two companies started with a patent challenge in Germany in 2004 (BGH, 2 december 2004, I ZR 30/02), where Lego bricks were denied patent protection. After that, in a further case in 2010 (Lego Juris v OHIM, cited), the Canadian competitor Mega Bloks prevented Lego from registering its building brick also as a trademark. In case of defeat also in the present judgement, the Danish toy giant would be devoided of any IP protection for its creations. The GC, however, desregarded the ECJ’s previous findings on Lego bricks and concluded that the contested trade mark had nothing in common with the mark at issue in those proceedings, except for the fact that it was produced by the same company (para. 37). The Courts gives no other reasons for differentiating the two cases. Curiously, therefore, Lego will be able to sue only competitors producing and selling replicas of the little figures and not of the building bricks. Why is not completely clear, but rather confirms how the EU Courts findings in this complex area are always strongly facts based and a more thorough norms’ exegesis would be surely welcomed.

                                                                                                                                                                                                                                                                    Jacopo Ciani

General Court of the European Union (Third Chamber), 16 June 2015, T-395/14, Best-Lock (Europe) Ltd v. OHIM

The Principality of Monaco fails to register its own name as a community trademark

By its judgment of 15 January 2015, T‑197/13 (full text in French here) the General Court of the European Union rejected the opposition against the decision of the OHIM Fourth Board of Appeal of 29 January 2013 (Case R 113/2012 4), refusing the international registration (designating the EC) of the word mark MONACO, for lack of distinctive character. The decision confirms the previous ruling in Windsurfing Chiemsee (C-108/97) and Cloppenburg (T‑379/03): there is a general interest in keeping geographical names free from any exclusive appropriation as trademarks, provided that they have the ability to reveal products or services’ qualities and other characteristics and to influence consumer preferences by associating them with a geographical place which can elicit positive feelings. On this basis, Article 7(1)(b) and (c) Reg. No. 207/2009 on the Community trade mark should preclude the registration of geographical names which designate geographical locations, already famous or known for the category of goods or services in question, and which, therefore, have a meaningful connection with them. In these circumstances, the word ‘Monaco’ was supposed to designate, in the eyes of the public, the geographical origin of the category of services at issue and must remain available to other undertakings’ free and non-exclusive use. Another step forwards the recognition and safeguarding of a public domain’s space in trademark law.

Jacopo Ciani

 General Court (Grand Chamber), 15 January 2015, T‑197/13, Marques de l’État de Monaco (MEM) v. OHIM