The Commercial Court No. 5 of Barcelona, specializing in patent law, delivered a Judgement on January 19, 2021 (in Spanish) connected to proceedings 1231/2019 (Judgement), involving German company Vorwerk & Co. Interholding GmbH (Vorwerk), manufacturer of the kitchen machine known as Thermomix, against the Spanish subsidiary of Lidl supermarkets (Lidl), distributor of the kitchen machine known as Monsieur Cuisine Connect (MCC) under Silvercrest brand.
The case relates to the infringement of European Patent EP 1269 898, validated in Spain through Spanish Patent ES 201589. Lidl, which commercialized its kitchen robot MCC in Spain from June 2018 would have infringed the “Thermomix patent“, owned by Vorwerk. As a result, Vorwerk launched the relevant proceedings for patent infringement against Lidl, who counterclaimed patent invalidity as a defence, arguing that ES 201589 patent: (i) extended the protection conferred pursuant 123(3) European Patent Convention (EPC); (ii) lacked novelty pursuant Art. 54 EPC; and it was not susceptible of industrial application pursuant Art. 57 EPC – also, the relevant Spanish Patent Law provisions were invoked.
Albeit the decision involved many other aspects, the debate focused on the food weighing function protected under patent EP 1269 898. This function, having an independent circuit from the circuit that controls the movement of the mixing bowl, allows Thermomix weighing the food while the machine works, therefore having two different circuits for mixing and weighing.
The Court dismissed the invalidity counterclaim filed by Lidl and found there was an direct infringement of European Patent EP 1269898, validated in Spain as Spanish Patent ES 201589.
In the Judgement Lidl was ordered to, inter alia: (i) cease any import, storage, commercialization -even through its distributors-, or advertising of the kitchen machine MCC; and (ii) pay damages, to be calculated in the enforcement phase of the Judgement, once the decision becomes final.
However, the enforcement of the Judgement – including the withdrawal of allegedly infringing products- will have to wait, since Lidl recently filed an appeal to the above mentioned decision. Now, the Court of Appeals of Barcelona shall decide on the merits of a case that, without a doubt, may have a paramount impact on the ability to commercialize the MCC, not only within the Spanish territory, but in other member States of the European Patent Office where EP 1269898 patent was validated.
Commercial Court N. 5 of Barcelona, January 19, 2021 – Proceedings 1231/2019 (Vorwerk & Co. Interholding GmbH v. Lidl Supermercados S.A)
“This article was automatically written by Tencent Dreamwriter robot”
Nanshan’s Court got certainly worldwide noticed for a pivotal decision, namely “Shenzhen Tencent Computer System Co., Ltd. (“Tencent”) vs Shanghai Yingxu Technology Co., Ltd. (“Yingxu Technology”)” (full text available here).
With this judgement, the Chinese Court ruled in favor of recognizing protection to AI-generated content under Copyright Law.
In August 2018, Tencent published an article on the Shangai stock exchange index on its website, which terminated with the following statement: “This article was automatically written by Tencent Dreamwriter robot”;
The article was written with the support of the software Dreamwriter;
Tencent claimed that Dreamwriter computer software was a data set and algorithm-based intelligent writing assistance system, independently developed by Tencent Technology (Beijing) Co., Ltd (an affiliate of Tencent), then licensed to Tencent (see claimhere);
Yingxun Technology published the same article on the Shangai stock exchange index on its website;
Tencent claimed, inter alia, copyright infringement since, according to its point of view, the article on Shangai stock exchange was protectable under copyright law and the rights were attributable to it;
The Chinese Court (specifically, the Court of Nanshan) ruled in favor of recognizing protection to an article written with the support of an AI under Chinese Copyright Law, sustaining – in brief – that the article (a) could be included within the scope of protection being a literary work and that (b) “creative choices” were made by the team who selected the data to be included in the AI which then was involved in the making of the work.
The decision here addressed represents a pivotal decision with reference to AI-generated content protection.
Notwithstanding the above, please note that of course the discussion on protectability and ownership of AI-generated content is still open at a worldwide level.
Francesca Di Lazzaro and Maria Di Gravio
Court of Nanshan (District of Shenzhen) 24 December 2019 – Case No. (2019) Yue 0305 Min Chu No. 14010, Shenzen Tencent Computer System Co., Ltd. vs Shanghai Yingxu Technology Co., Ltd.
Affectionate readers of this blog will already be familiar with the Italian rules on the reproduction of cultural heritage as well as with two 2017 Court decisions that dealt with unauthorized reproductions of, respectively, the Teatro Massimo of Palermo and the David by Michelangelo (see here) (for an earlier dispute over a controversial picture of the David “bearing arms”, see here).
Among the many Italian public entities having the right to authorise the reproduction of their cultural heritage assets, those having rights on the David by Michelangelo in particular seem to be the most aware of their prerogatives, as in early 2019 the Court of Florence was called to rule on yet another case involving this Renaissance masterpiece (the full decision is available here).
The facts of the case are rather simple: Brioni, a prestigious Italian menswear couture brand, launched an advertising campaign (consisting of a video and some pictures) centred on a full-scale marble replica of the David by Michelangelo wearing a tailor made suit from Brioni’s couturiers.
The replica had been manufactured by an Italian sculpture workshop in 2002 and then used for a couple of other projects before being lent for free to Brioni for their campaign in 2018.
The Italian Ministry of Cultural Heritage and Activities started urgency proceedings before the Court of Florence against both Brioni and the workshop asking, inter alia, for an interim injunction against the use of the David’s image for profit purposes.
Upon commencement of the proceedings, the advertising campaign was immediately withdrawn, and the sculpture workshop undertook not to further use the replica for future events without the Ministry authorization.
The Court to Florence therefore rejected the petition for interim relief on grounds of lack of urgency. That said, in a meaningful obiter dictum, the Court briefly touched upon some of the substantive issues that were at stake.
According to the Court, among these issues were in particular (i) “the exact scope of the concept of “reproduction” [and] of its object pursuant to Articles 106-108 of the Code of Cultural Heritage”; and (ii) whether the contested use of the David constituted a “creative re-elaboration” pursuant to Art. 4 of the Italian Copyright Law – rather than a reproduction. The Court of Florence did not provide an answer to those questions; but the very fact that the Court felt the need to mention them, made it clear that the answer would have been far from obvious.
The first of these issues appears to be of capital importance and is arguably linked to the second one.
The scarce case-law that dealt with cases of reproduction of Italian cultural heritage seems to have taken it for granted that the notion of reproduction pursuant to Art. 107 of the Code of Cultural Heritage could be borrowed from copyright law.
This was in fact confirmed in 2013 by the Court of Cassation, which in a case involving the sale of replicas of the fossilized skull of a Neanderthal (the Altamura Man – see picture below), ruled that, in principle, “it is indeed possible to refer to the provision of copyright law that defines the concept of reproduction”, i.e. Art. 13 of the Italian Copyright Law according to which “the exclusive right of reproduction concerns the multiplication of copies of the work in all or in part, either direct or indirect, temporary or permanent, by any means or in any form, such as copying by hand, printing, lithography, engraving, photography, phonography, cinematography, and any other process of reproduction” (Italian Court of Cassation, decision no. 9757/2013).
Eventually, however, the Court of Cassation concluded that no reproduction had taken place in that case, because the replica had been created without reproducing the actual shape of the skull (which was for the most part embedded in a cave and therefore not even visible), but with “an hypothetical reconstruction, based on a series of scientific findings and reconstructive hypotheses, of what could be the entire cranial structure”. According to the Court of Cassation, this resulted in “a new work which, as such, is the subject of autonomous protection under copyright law”.
It seems possible to read the Court of Cassation decision as follows: where a given cultural heritage asset is not literally copied but independently recreated in the context of a new creative work, this does not constitute a reproduction pursuant to the Code of Cultural Heritage.
Indeed, it has been noted that “the copies obtained by a specific (moulded) impression of the original piece are reproductions, and the ones obtained by a free sculpting or shaping operation (creation) represent different actions. In the latter case, the work is certainly closer to an independent artistic action than to a copying act. Digital models share the same difference: any digital 3D model may be the result of the reproduction of an existing object (through laser scanners or the process of photogrammetry), or the result of a modelling (creation from scratch) operation (see here).
In this perspective, in the 2019 Court of Florence case, Brioni had defended itself by claiming that the advertising campaign did not reproduce the original David by Michelangelo, “but rather a different asset, created by a sculpture workshop, in combination with a tailor’s work”.
Plainly transposing copyright law notions into cultural heritage law could have spiralling consequences. Especially if one considers that the Code of Cultural Heritage also provides for criminal penalties against “anyone who, in order to profit from it, […] reproduces a work of painting, sculpture or graphics, or an object of antiquity or of historical or archaeological interest” (Art. 178).
Should Matt Groening be jailed for up to 4 years? (Matt Groening being the creator of the animated TV series “The Simpsons” where the following image comes from).
Probably not. In fact, in regard of this criminal provision, the Court of Cassation has been more categorical: “reproduction shall mean copying the work in such a way that the copy can be confused with the original” (Court of Cassation, decision no. 29/1996).
Mr. Groening can breathe a sigh of relief, this time (criminally speaking, at least).
Another related issue, which to our knowledge has not been expressly tackled by case-law yet, is whether the Code of Cultural Heritage provides for an exclusive negative right, allowing rightsholders to prevent any third party from reproducing its subject matter (again, just like copyright law) or merely for a right to a compensation in case a reproduction takes place (as maintained by POJAGHI, Beni culturali e diritto d’autore, Dir. aut., 1/2014, 153).
Policy considerations could suggest the latter. In the vast majority of cases, cultural heritage assets are part of the public domain (at least in a copyright perspective). Why leave it to the unquestionable discretion of various public entities to authorise their reproductions? Shouldn’t rightsholders at least prove some kind or reputational damage to stop the unauthorised use of a given reproduction?
It has also been argued that, the Code of Cultural Heritage being a text of public law, the only possible consequences in case of a violation of its provisions would be administrative sanctions – not injunctions or other remedies typical of intellectual property law (see here).
In the past, the Court of Florence seems to have – perhaps too hastily – borrowed from the copyright/IP regime of remedies. Specifically, it did not hesitate to issue a (pan-European) interim injunction against the unauthorised photographic reproduction of the David by Michelangelo in the promotional materials of a travel agency. This was done on the grounds that “the indiscriminate use of the image of cultural assets is liable to diminish their attractiveness” (which is particularly counterintuitive, considering that the travel agency was using the materials to promote guided visits to the actual David). Furthermore, it also issued additional – and rather afflicting – orders of withdrawal of all the promotional materials from the market, destruction of those materials, destruction of all instruments used to produce or market those materials, publication of the decision on several national newspapers and magazines, as well as online, and – for every single order – very high penalties in case of non-compliance (see the 2017 decision mentioned at the beginning of this post).
The Court of Milan, on the other hand, has proven to be more cautious. In a 2015 case involving the unauthorized photographic reproduction in e-books of a number of drawings from the Fondo Peterzano (which is part of the Italian cultural heritage), it ruled that “in the absence of any appreciable prejudice deriving from the publication of the reproductions, […] the request for an injunction from further commercialisation must be rejected” (see here).
All in all, the interpretation of the Italian rules on the reproduction of cultural heritage is not 100% clear yet, but the increasing awareness of the subject by public entities will most likely lead to other disputes in the near future, which could shed more light on this topic.
Emanuele Fava – Nicoletta Serao
Court of Florence, 2 January 2019, MIBAC vs. Brioni S.p.a., case Docket No. 15147/2018
Some important reforms have recently concerned our Code of Industrial Property.
First, the Italian legislator has implemented Trademark Directive 2015/2436/EU (previous comments on this blog about this Directive here and here) adopting Legislative Decree No. 15 of February 20, 2019 (text here; some comments here and here).
The Legislative Decree at issue came into force on March 23, 2019 and introduced in our Code of Industrial Property some important amendments, among which:
Abolishment of the “graphic” representation requirement of signs registrable as trademark. It can be now registered as trademark any sign which is distinctive and capable of being represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the relevant proprietor. As a result, this provision has expanded the scope of the signs eligible to be registered as trademark, such as signs composed both of images and sounds.
The Italian PTO has technically adjusted its online filing platform with a view to allowing users to file applications for signs represented also in not graphic manners by means of .mp3 and .mp4 files, as explained in Circular of the Ministry of Economic Development No. 605 of March 29, 2019 (here).
Extension of shape marks’ absolute grounds of refusal to signs consisting of “another characteristic of the goods”. Given the abolishment of the “graphic” representation requirement, this provision aims at preventing that the registration of unconventional marks may confer on the relevant proprietor exclusive rights on characteristics of the goods with a technical function, substantial value or resulting from the nature of the goods, such as a colour or a sound.
Additional grounds for opposition: (i) earlier reputed mark; (ii) earlier well-known mark under Article 6-bis of Paris Convention for the Protection of Industrial Property; (iii) earlier designation of origin or geographical indication or earlier application for designation of origin or geographical indication.
The implementing Legislative Decree does not provide any transitional provision on the applicability of these new grounds of opposition. In particular, it is not clear whether or not the ground of reputation applies to oppositions proceedings against trademark applications filed/published before the entry into force of the Decree at issue.
Although there would be room to maintain that an opposition may be grounded on reputation irrespective of the date of filing/publication of the contested application in light of the fact that the relevant younger mark could be considered invalid on the basis of the same ground, the issue remains questionable. What is certain is that this law uncertainty is detrimental to trademark rights enforcement.
Introduction of administrative invalidity/revocation actions before the Italian PTO. These actions are not immediately available. We shall wait for the relevant Ministry of Economic Development implementing regulation for they to come into force (as known, Member States have until January 14, 2023 to implement the actions at issue in their national laws).
Introduction of certification marks. Any natural or legal person, including institutions, authorities and bodies having law requirements to guarantee the origin, nature or quality of certain products or services may apply for the registration of a sign as certification mark provided that it does not carry out any business involving the supply of products or services of the kind certified.
Unlikely the EU certification mark, the national certification mark may consist in signs or indications which may serve, in trade, to designate the geographical origin of the goods or services certified. The Italian PTO may refuse registration to such mark where it may cause situations of unjustified privilege or prejudice the development of similar initiatives whatsoever in the same area. The certification mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such geographical signs or indications, provided that third party uses them in accordance with honest practices in industrial or commercial matters.
The implementing Legislative Decree has provided for a transitional period of one year as from its entry into force for the conversion of the collective marks filed/registered under the previous law into collective or certification marks governed by the new law subject to their revocation.
Second, the Italian legislator has adopted Legislative Decree No. 34/2019, the so called “Decreto Crescita”, converted into law, with amendments, by Law No. 100 of June 28, 2019 (text here), including, among others, amendments to our Code of Industrial Property (some comments here and here).
The “Decreto Crescita” has introduced a new category of mark under Article 11 ter of our Code: the “historic mark of national interest”. This is a sign that has been registered/used as mark for at least fifty years in relation to products/services of a national undertaking of excellence which has been historically linked with the national territory. Any proprietor or licensor of this kind of mark may apply for its recordal in the newly established special register of “historic mark of national interest”. This recordal entitles these subjects to use the new public logo “historic mark of national interest” in their marketing and promotional activities.
The identification of this new kind of mark seems to be not easy in the practice. Proving continuous use of a mark for at least fifty years is certainly too burdensome for a proprietor or licensor; moreover, the legal requirements of “excellence” of the relevant undertaking and its historic link with our country seems to imply a discretional rather than a legal assessment.
The legislator has also introduced some economic measures related to this new mark.
The proprietor or licensor of a mark recorded in the above-mentioned new register or that anyway meets the legal requirements provided by Article 11 ter that intends to close its Italian production site for (i) cessation of its activity or (ii) delocalization of the same outside the national territory, both implying a collective redundancy, shall inform of this the Ministry of Economic Development as well as of, among others, the possible actions to find new buyers and the chances for employees to launch a takeover bid or to recover the assets anyway. As a result, the Ministry shall initiate formal proceedings aimed at determining appropriate public interventions into the venture capital of the relevant undertakings through the newly established economic “Fund for the safeguard of historic mark of national interest”.
These new economic measures – that in the wording of the law are meant to safeguard the “historic mark of national interest” as well as the employment levels and the continuation of business in Italy – do actually introduce a new procedure of management of business crisis involving public institutions and funds, which arises some concerns under EU competition law and the free movement of goods and capitals principles. Moreover, the fact that any subject that meets the (uncertain) legal requirements provided by Article 11 ter irrespective of the recordal of its mark in the register of “historic mark of national interest” is subject to this procedure is particularly worrisome: it seems to leave room for ex-officio economic public interventions clearly not in line with our constitutional law.
Finally, it is worth mentioning also the new provisions that prohibit the registration of signs linked with the police as well as of words, pictures or signs detrimental to the image or reputation of Italy. It seems that these new provisions follow a demagogic political purpose rather than a reasoned trademark legislative policy. As a matter of fact, their application in the practice seems to be rather limited, since our Code of Industrial Property already prohibits the registration of signs that have a public interest or that are contrary to law, public policy or accepted principle of morality without mentioning any national interest.
The latest step of this package of reforms is the Italian Minister of Economic Development’s Decree of January 10, 2020 (text here), which has established the modalities for recording the “historic mark of national interest” in the new special register and has instituted the following official logo (press release here; a comment here).
In conclusion, the recent Italian trademark reforms seem to follow two different directions: the harmonization of our Code of Industrial Property with EU trademark law on one side and an approach that uses the mark as a tool for the political purpose of promoting a generic national interest on the other side.
| Italian Minister of Economic Development’s Decree of January 10, 2020 | Legislative Decree No. 34/2019 (“Decreto Crescita”), converted into law, with amendments, by Law No. 100 of June 28, 2019 | Circular of the Ministry of Economic Development No. 605 of March 29, 2019 | Italian Legislative Decree No. 15 of February 20, 2019 |
Svenskt 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 applicabletothe 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
This past January, the revocation of McDonald’s “BIG MAC” word EU trade mark for non-use was widely reported, both among IP aficionados (here, here, here and here) and in the media (here, here and here). The EUIPO decision (Cancellation No 14 788 C) can be read here.
A few days later, McDonald’s arch-rival Burger King temporarily renamed the sandwiches on the menu of its Swedish operation “Not Big Mac’s” (see the article on The Guardian, here). The opportunity for a poignant joke was evidently too juicy to be missed (it would appear that the video of Burger King’s Swedish stunt is not available on YouTube any longer, but you can still see it here).
Unsurprisingly, McDonald’s has recently filed an appeal against the EUIPO Cancellation Division’s decision (see here).
Waiting to see what the Boards of Appeal will eventually decide, the “BIG MAC” decision offers an interesting chance to discuss the role of evidence and of “well-known facts” in the assessment of (non-)use and reputation of trade marks in the EU.
The EUIPO decision
McDonald’s filed the “BIG MAC” word EU trade mark (No. 62638) for goods and services in classes 29, 30 and 42, which included “meat sandwiches“.
Supermac’s, an Irish burger chain, brought an application under Article 58(1)(a) of the EUTMR, requesting the revocation of “BIG MAC” in its entirety, arguing that the mark was not put to genuine use during a continuous period of five years in the EU. The application for revocation followed McDonald’s own opposition against an EU trade mark application for “SUPERMAC’S”.
In reply, McDonald’s provided the following evidence of genuine use:
3 affidavits signed by McDonald’s representatives claiming significant sales of “Big Mac” sandwiches in EU Member States;
brochures and printouts of advertising posters, packaging and menus showing “Big Mac” sandwiches;
printouts from McDonald’s official websites for many (18) EU Member States, depicting, among others, “Big Mac” sandwiches; and
a printout from the English version of Wikipedia, providing information, nutritional values and history on the “Big Mac” sandwich.
Supermac’s argued that the evidence of use submitted by McDonald’s did not prove that the “BIG MAC” mark was put to genuine use “for anything other than sandwiches“, thus allowing that use for sandwiches would be proved.
However, the Cancellation Division found that the evidence submitted was insufficient to establish genuine use of the trade mark for all products and services. In particular, the Cancellation Division noted that:
ex parte affidavits, although explicitly allowed as means of evidence before the EUIPO, are “generally given less weight than independent evidence“;
practically all evidence submitted originated from the EUTM proprietor itself;
the mere presence of a trade mark on a website is, of itself, insufficient to prove genuine use “unless it shows also the place, time and extent of use or unless this information is otherwise provided“;
in this regard, the EUTM proprietor could have provided records of internet traffic, hits, or online orders; however, the printouts submitted carried “no information of a single order being placed“;
Wikipedia entries cannot be considered a reliable source of information, as they can be amended by users and may be relevant only if supported by other pieces of evidence; and
a declaration by the applicant itself concluding that the evidence submitted was sufficient to prove use of the trade mark in relation to some of the goods (i.e. sandwiches) could not have any effect on the Office’s findings.
On these grounds, the Cancellation Division revoked the “BIG MAC” trade mark in its entirety (including burgers).
A bitter pill (or “bite” as Italians would say) for the trade mark proprietor?
Following the publication of the decision, many comments highlighted how, although ostensibly strict, the Cancellation Division provided helpful guidance to trade mark proprietors on the kind of evidence that would be needed to show genuine use (here, here, here and here).
In the context of opposition or cancellation proceedings, it is quite common to rely, among others, on affidavits and printouts from company websites and online sources (such as Wikipedia) as evidence of use and reputation. However, the “Big Mac” decision suggests that this may be not enough.
It is most likely that McDonald’s will now try to submit additional evidence before the Board of Appeal, along the lines suggested in the cancellation decision. According to Art. 27 of the EUTMDR, this could be allowed since: “the Board of Appeal may accept facts or evidence submitted for the first time before it” provided that “they are, on the face of it, likely to be relevant for the outcome of the case; and […] they are merely supplementing relevant facts and evidence which had already been submitted in due time“.
In any case, leaving aside the inherent limits of the evidence submitted by the trade mark proprietor, the outcome of the “BIG MAC” decision seems somewhat counter-intuitive.
After all, Big Mac is one of (if not “the”) signature sandwiches of the largest restaurant chain in the world, and it has been sold continuously for the past fifty years (WARNING: these are Wikipedia facts!). Big Mac is such a globally wide-spread product that, in the late 80’s, The Economist developed the “Big Mac index” using the different local prices of the sandwich to measure buying power and currency misalignments across the world. The “Big Mac index” has been used and updated for more than 30 years (for more Burgernomics, see here).
One may thus wonder: how can such a “famous” trade mark be legitimately revoked because of insufficient evidence of genuine use, at least in relation to some of the goods and services (notably: hamburger sandwiches!)?
Perhaps, the doctrine of “well-known facts” (in Italian, the so-called “fatti notori“) could (or should) have played a bigger role in the reasoning of the Cancellation Division. In fact, the CJEU case law on trade marks suggests that well-known facts can be taken into account when assessing elements such as reputation, likelihood of confusion and distinctiveness.
For instance, in the Picasso/Picaro case, the General Court argued that “the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources. […] Article 74(1) of Regulation No 40/94 cannot have the purpose of compelling the opposition division or Board of Appeal consciously to adopt a decision on the basis of factual hypotheses which are manifestly incomplete or contrary to reality. Nor is it intended to require the parties to opposition proceedings to put forward before OHIM every well-known fact which might possibly be relevant to the decision to be adopted” (T-185/02, 22 June 2004, Claude Ruiz-Picasso and Others/OHIM; see also T-623/11, 9 April 2014, Pico Food GmbH/Bogumił Sobieraj, § 19).
Along the same lines, the General Court more recently allowed that “where the Board of Appeal finds that the mark applied for is not intrinsically distinctive, it may base its analysis on well-known facts, namely facts resulting from the generally acquired practical experience of marketing products of wide consumption, which facts are likely to be known to any person” (T-618/14, 29 June 2015, Grupo Bimbo, SAB de CV/OHIM, free translation from Spanish).
In Italy, this principle is enshrined in Art. 115(2) of the Code of Civil Procedure, which provides that “the judge may, without the need for proof, base its decision on facts which are part of the common knowledge“.
And, when considering the distinctiveness of Apple’s device trademark in the context of opposition proceedings, the same Italian Patent and Trademark Office (“IPTO”) argued that “although on the basis of the evidence on file it is not possible to assess the percentage of the relevant public which purchases the products and services distinguished by the […] trade mark […] the [reputation of the] trade mark consisting in the representation of an apple bitten on the right side belongs to the category of well-known facts” (IPTO decision 193/2016 of 20 May 2016, in the opposition No. 1083/2013, BITTEN APPLE WITH LEAF/BITTEN PEAR WITH LEAF, §§33-34, here; see also IPTO decision 340/2017 of 21 September 2017, in the opposition No. 959/2014, AppleFace, §§ 30-31, here).
A similar stance was taken also in relation to the “DECATHLON PLAY MORE PAY LESS” trade mark, whose reputation was held to be “in the public domain, so it does not need a specific burden of proof on behalf of the opponent” (IPTO decision 40/2015 of 10 February 2015, DECATHLON PLAY MORE PAY LESS/DECATHLON ITALY; on the IPTO practice on well-known facts, please refer also to the comments on the SPRINT portal by Prof. Stefano Sandri: here, here and here, all in Italian).
Of course, this is not to suggest that the burden of proof of genuine use should be lifted entirely when the trade mark at stake is so-to-say “famous”. However, in the assessment of the evidence on trade mark aspects such as genuine use or reputation, administrative bodies and courts should take into account the facts that “are likely to be known by anyone or which may be learnt from generally accessible sources“. Amongst these – it could be argued – one may count the continuous use of the “BIG MAC” word trade mark in relation to (at least) sandwiches in the EU. And this especially in a case where the applicant of the revocation action itself acknowledged that the trade mark was genuinely used in relation to these goods.
Finally, on the relevance of written statements and affidavits before the EUIPO, we note that Art. 97(1)(f) of the EUTMR, provides that “in any proceedings before the Office, the means of giving or obtaining evidence shall include […] statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up“. This provision implies that the admissibility, the formal requirements and the probative value of written statements and affidavits are tied to the law of the country where they were drawn up. To take into account the different approaches, a study on the regimes on written statements in several EU Member States was commissioned by the EUIPO and can be found here.
EUIPO Cancellation Division, Cancellation No. 14 788 C, Supermac’s (Holdings) Ltd vs. McDonald’s International Property Company, Ltd., 11 January 2019
Peppa Pig is a children’s animated TV series that traces the adventures of Peppa, her family and friends. Peppa is actually an animal – a pig that possesses all the human traits and so do all the animals in the series – they speak, read, go to school, drive and do all we humans do. As of 2012 Entertainment One UK Ltd and Astley Baker Davies Ltd, the entities behind Peppa Pig, hold the following registered EU figurative trade mark for, among others, “clothing, footwear, headgear” in Class 25 of the Nice Agreement:
In 2013, Mr Xianhao Pan residing in Rome (Italy) succeeded in registering the following EU figurative mark for “clothing, footwear, headgear” in Class 25 of the Nice Agreement:
A few years later, in 2015, Entertainment One UK Ltd and Astley Baker Davies Ltd initiated an invalidity action against Mr Xianhao Pan based on Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
Peppa Pigs’ creators argued that considering the complete identity of the goods, the two signs are confusingly similar to the extent that the TOBBIA trade mark had to be cancelled.
Judgment of the General Court of the EU (T-777/17)
On 21 March 2019, the General Court of the EU ruled that likelihood of confusion between the two marks exists and therefore the First Board of Appeal was correct in upholding the appeal and invalidating the TOBBIA trade mark (here).
Setting aside some preliminary procedural issues the meat of the General Court judgment was the comparison of the two signs. As usual, this had to be done taking into account the visual, phonetic and conceptual similarities between the two and evaluating the overall impression that the signs produce.
The Applicant before the Court, in this case Mr Xianhao Pan, insisted that there were no similarities between the two signs emphasising the fact that the animal in the TOBBIA mark is indeed a tapir as opposed to a pig – the animal depicted in the PEPPA PIG mark.
The Court admitted that the signs at issue differ in certain figurative elements: the colour range; the fact that the TOBBIA mark animal was in trousers, while the PEPPA PIG mark animal wore a dress; the PEPPA PIG mark had a tail and its arms were positioned in a different way as compared to the TOBBIA mark animal. Yet, the Court insisted that these differences were not capable of outweighing the similarities. Considering that the relevant public is the general one, which does not proceed to analyse all the various details of the marks but perceives them as a whole, the First Board correctly assessed that the marks were visually similar. The Board held that both signs depicted an anthropomorphic animal, namely a pig. The depiction of the head and snout were nearly identical, as well as the shape of the head and further elements on the face of the animals. The differences between the two were appreciated, but nevertheless the visual similarities were more.
The discussion on phonetic comparison followed the classical lines and confirmed some degree of correlation.
As far as the conceptual analysis is concerned, the Court was clear that that the general European public would perceive the two animals as a pig and thus conceptual similarity was also present.
All in all, the identity of the goods coupled with the similarity of the signs led to a ruling in favour of PEPPA PIG and a finding of likelihood of confusion.
An interesting discussion was brought at this stage by the Applicant in relation to the type of the animal in its TOBBIA mark. It was argued that the general public would be capable of recognising the animal in the TOBBIA trade mark as a tapir, which would have allegedly sufficed in drawing the line between the two signs. Well, the Court was certainly not convinced as it stated that the assessment of the similarity between the marks would in no way be affected “whether the public identifies the graphic elements of the two marks as two pigs or two tapirs.”
One may wonder on what ground would one even think about bringing the outlandish argument that the animal represents a tapir, which is an animal particularly well known to the public. Well, seems like the Applicant (or at least, its legal representatives), resident in Rome (Italy) is a fan of the Italian TV program “Striscia la notizia”, which in line with its satirical tone, awards public figures with a price in the form of a small statute for errors, omissions to keep promises or basic embarrassing situations. Not surprisingly, this statute takes the form of a tapir and looks like this:
As entertaining as this tale of pigs and tapirs may be, the General Court was neither impressed nor convinced. It correctly pointed out the irrelevance of such argument as the relevant public at stake was the general European public (and not only the Italian one) taking into consideration the fact that the TOBBIA trade mark was a European one.
The case does not entail any ground-breaking analysis, nor particularly peculiar application of rarely raised grounds such as bad faith or intricate fiduciary relationship conundrums. Instead, it is a classic likelihood of confusion discussion comparing goods (which in the present case were even identical) and signs.
That said and regardless of how much weight one would give to the shared elements between the two signs (the presence of an anthropomorphic animals with identically shaped heads), one must admit that the two signs in fact bear rather minor similarities. The legal team of the PEPPA PIG trade mark would have been wise to raise further grounds of invalidity, namely to invoke Article 53(1)(a) in conjunction with Article 8(5) EUTMR, which provides famous marks such as PEPPA PIG with an extra layer of protection. In these cases lesser degree of signs’ similarity is required as compared to the classical likelihood of confusion situations under Article 8(1)(b) EUTMR. This would have guaranteed the ultimate success for the Peppa Pig creators provided that the relevant section of the public makes a mere connection between the marks, i.e. it establishes a link between them. This is a well-established principle following long-standing judgments of the CJEU in the Adidas (C-408/01), as well as the Intel cases (C-252/07).
Nevertheless, both the First Board of EUIPO and the General Court are to be complimented for having employed a very adequate level of common sense and rightly held that the TOBBIA mark shall be invalid in light of the PEPPA PIG mark. The analysis avoids crude formalistic application of dry legal principles, which may have risked resulting in a loss for PEPPA PIG as it is certainly questionable whether the similarity between the signs meets the standard required by Article 8(1)(b) EUTMR. Besides, the TOBBIA mark indeed resembles a poor copy of PEPPA PIG, which is further supported by the fact that the Applicant seems to be a trade mark squatter of children’s brands. A quick search on the EUIPO database reveals that the Applicant has unsuccessfully tried to register the following marks, which regardless of how far detached from childhood one is do certainly ring a bell:
(filing number 009282161, opposed by, among others, Disney Enterprises Inc.)
(filing number 009482175, opposed by Viacom International Inc.)
(filing number 010776177, opposed by, among others, Turner Entertainment Co.)
General Court (Eighth Chamber), 21 march 2019, Xianhao Pan v European Union Intellectual Property Office (EUIPO), Case T-777/17
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
On December 2017, the German Supreme Court (Bundersgerichtshof, hereinafter “BGH”) released the motivations on which it grounded its decision of 21 September 2017 (available here) on the classification of “linking” as an act of communication to the public.
In the German proceedings, the defendant was the owner of a website incorporating a search engine function which completely relied on Google’s search engine. It resulted that four images, made available in a password-protected section on plaintiff’s websites only to paying users, were made illicitly accessible on the free internet and appeared also as results of the researches launched on defendant’s website.
Following a cease and desist letter, the defendant complied with plaintiff’s request to prevent users from visualizing the previews of the images under discussion, hindering the connection between the search criterion and those pictures. Later on, however, the plaintiff discovered that other copyright protected images were made available on the very same search engine tool and decided to sue the website’s owner.
In its decision, the German Supreme Court affirmed that an “act of public communication” occurs when a protected work is reproduced using a technical procedure that differs from the one used so far or – otherwise – is reproduced for a new audience. In the present case, even if the images were shared by the same technical procedure (the internet), the defendant’s search process referred to an audience different from the one intended by the plaintiff, as the search was carried out by an indeterminate number of internet users, whereas the images were made available by the plaintiff only to paying users, in a password-protected section of the website.
Given the above, in order to determine the defendant’s liability for such communication to the public, the German Supreme Court followed the reasoning of the CJEU in the Svenssson case and GS Media cases (respectively, C‑466/12 and C-160/15) and tried to determine if the defendant made available the images for profit and if it could have been aware of the fact that the copyright’s owner did not gave his consent to the sharing of the pictures.
The conclusions of the German Court can be summarized as follows:
the Judges did not share the arguments on which the CJEU based the decisions above quoted, deeming that in those cases too broad relevance had been given to the financial gain element in order to assess whether the infringement occurred. According to the BGH, to connect the existence of a scope of profit with the knowledge that hyperlinks have been published without copyright holder’s permission amounts to a misleading presumption.
the results of a search engine are collected by the tool through the application of an algorithm that select the content in an automatized manner. Therefore, other than in the cases analyzed by the CJEU, the search engine provider does not have manual and/or direct control on the results displayed.
according to the Court, the provider of a search engine cannot reasonably be expected to ascertain whether the images of works or photographs found by the search programs have been lawfully posted on the internet before reproducing those images. Linking a photograph provided on a third-party website to another website by means of an electronic link does not constitute a copyright exploitation of public access as only the operator of the external website, who uploaded the photo to the internet – and not the search engine tool provider – can decide whether it remains accessible to the public.
A duty of the search provider to investigate the legality of the publication of the images found by search engines before their display is contrary to the task and mode of operation of the search engines themselves.
The Court concluded asserting that there is no doubt, on the basis of the assessment criteria established by the CJEU, that a public reproduction by the provider of a search engine tool, of works protected by copyright within the meaning of Article 3 (1) of InfoSoc Directive, exists only if the copyright holder has not permitted the publication of the works on the open internet and it is clear that the provider of the search function was aware of this or could reasonably have been. Moreover, as hinted, other than in the quoted CJEU decisions, the BGH does not automatically connect the awareness (or the reasonable awareness) of the illicit communication to the presence of a financial gain.
The decision of the BGH not only provides with a broader interpretation of the application of the CJEU case law but constitutes also a milestone in the already ‘historical’ contrast between copyright owners and search engine providers on who should bear the duty (and the costs) of monitoring the internet preventing the exploitation of copyright protected material. It can be inferred that the German Judges shared the opinion also expressed by the Courts of other EU Countries confirming that it is up to the copyright holder to perform such controls and inform the search engine provider accordingly; on its side, the latter should promptly comply with the requests to eliminate the contents illicitly made available.
Miriam Loro Piana
Bundesgerichtshof (German Supreme Court), decision of 21 September 2017, I ZR 11/16
Algorithms are often used for managing complex administrative proceedings where multiple data and parameters have to be analysed to produce a result. Since algorithms can be protected under copyright laws as software (including their source code), it is questionable whether copyright protection might limit the right to access of interested parties in administrative proceedings. In two recent cases (here and here), the Italian Administrative Court of Lazio (TAR Lazio) has clarified the nature of the electronic administrative document and the scope of the right to access pursuant to Law n. 241/1990with regard to the source code of an algorithm compiled by a software house on request by the Public Administration. The cases at stake have been promoted by a number of Italian trade unions against the Ministry of University and Education (“MUIR”) with the purposes of gaining access to the source code of the algorithm used by MUIR to manage the territorial relocation of school professors under mobility procedures.
Upon first request, the MUIR refused access to the source code of the algorithm developed by a software house on MUIR’s request on basis of the following arguments: (i)the source code itself cannot be considered part of the electronic administrative document and, consequently, does not imply the right to access of interested parties in administrative proceedings, and (ii)the source code enjoys the copyright protection as software and the access to the source code would prejudice the intellectual property rights of the software house. More in detail, MUIR has held that the disclosure of a document describing the way of functioning of the algorithm could be considered sufficient protection for the trade unions and that the Legislative Decree n. 97/2016 (Art. 6) on the civic right to access (for preventing corruption and enhancing transparency in the public sector) expressly excludes access to the acts of the Public Administration when the access could prejudice the economic interest of private parties, thus included their intellectual property rights.
In the Administrative Court’s opinion, the MUIR must allow access to the source code of the algorithm since it can be considered part of the administrative proceeding subject to the right to access of interested parties. MUIR has requested the software house to compile the algorithm with the specific purpose of managing in electronic form the public procedure of territorial relocation of school professors under mobility, according to public rules and collective employment agreements. From a structural point of view, the outputs of the algorithm: (i) are the results of the combination/elaboration of data collected in various endoprocedural acts and (ii) make application of the public rules on territorial mobility.
Taking into consideration the ratio of the right to access in administrative procedures, also the source code of the algorithm enjoys the nature of electronic administrative document and such nature implies that right to access should be allowed also with regards to algorithm. Reasoning to the contrary will lead to the unacceptable consequense that the right to access could be automatically excluded by decision of the Public Administration to manage the administrative proceeding by electronic means. TAR Lazio further clarified the notion of electronic administrative document which, in the Court’s opinion, should not include only those administrative documents formed via electronic means (for the purpose of documentation) but should also include those administrative documents where the elaboration of contents and data (for the purpose of issuing an output) are taken into account.
Also the copyright protection of software (which encompasses also the source code) has not been considered by the Court as an argument for excluding the right to access to the algorithm. First of all, TAR Lazio acknowledges that software can be protected under copyright laws not only as an informatic language but also as a creative work resulting from the use of a certain informatic language. In the case at stake, the algorithm is a software created for a specific purpose of the Public Administration and, in the absence of any indication to the contrary in the agreement between the PA and software house, can be assumed that the software house has transferred to the PA all the economic rights in the algorithm. In the Court’s opinion, the nature of creative work of the algorithm should not interfere with the right to access in the administrative proceedings of interested parties, since the right to access does not prejudice the right to exploitation of intellectual properties (any reproduction made by the interested parties is functional to the exercise of rights to control the administrative proceeding only and not to the commercial exploitation of the algorithm).
In addition, TAR LAZIO considered that is not relevant for excluding the right to access to the source code of the algorithm the fact that: (i) the source code is a pure informatic language unreadable by the public officers and written by a private company (i.e. the software house on behalf of the PA) and (ii) the source code is compiled for the mere application of public rules and collective labour agreements, which are accessible themselves even without direct access to the source code. The Court ruled in favour of the right to access to the source code also on the basis that what impact the giuridical position of private individuals are the outputs of the algorithm.
These interesting administrative rulings offer a clear and deep reconstruction of the notion of electronic administrative document (expanding such notion to include also algorithms) but should be subject to further analysis with regards to the asserted strike of balance between the right to access and the protection under copyright laws of the source code, exspecially taking into consideration possible future cases where the PA should make use of algorithms: (a) not specifically developed for a single administrative proceeding (under the assumption of a complete transfer of intellectual property rights) and/or (b) based on more sophisticated technologies licensed to the PA under a proprietary scheme.
TAR Lazio, case No. 3742/2017, 21 March 2017, CISL, UIL, SNALS Vs MUIR (President of the Court: Hon. R. Savoia; Judge-Rapporteur Hon. M.C. Quiligotti)
TAR Lazio, case No. 3769/2017, 22 March 2017, Gilda Vs MUIR (President of the Court: Hon. R. Savoia; Judge-Rapporteur Hon. M.C. Quiligotti)