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FRUTARIA decision: General Court considers proof of use where trademark was assigned during relevant period

On 13 October 2021the General Court issued its judgment in Schneider v European Union Intellectual Property Office (EUIPO) (Case T-12/20), recalling relevant aspects of the proof of use of a trademark subject to a revocation action. This includes findings concerning the validity of the evidence provided by a former proprietor when the trademark has been subject to an assignment, use as a trademark, distinctiveness and use for a sub-category of goods.

Background

On 22 May 2007 Frutaria SAT 9413 filed an application for registration of the figurative trademark FRUTARIA with the EUIPO in connection with goods and services in Classes 29, 31, 35 and 39. Registration of this trademark was granted on 27 April 2010 under EU trademark No 5922885. This trademark was subject to an assignment and was transferred on 14 April 2016 to Frutaria Comercial de Frutas y Hortalizas SL.

On 17 May 2017 Markus Schneider filed an application for revocation of the EU trademark FRUTARIA. Accordingly, the trademark holder was obliged to prove use of the trademark in connection with all the relevant goods and services for the period between 19 May 2012 and 18 May 2017 – the first part of the relevant period was thus prior to the assignment, while the second part was after.

The trademark holder submitted to the EUIPO several items of evidence for the purpose of establishing use of the contested trademark. The Cancellation Division partially upheld the application for revocation, but rejected it in respect of certain goods and services in Classes 29, 31 and 35.

Schneider appealed the decision. In a decision dated 8 October 2019, the First Board of Appeal partially upheld the appeal, maintaining the registration of the trademark for certain goods and services in Classes 29, 31 and 35.

Schneider appealed to the General Court, relying on a single plea in law alleging:

  • lack of use of the contested trademark by the proprietor;
  • lack of use as a trademark for the goods and services concerned;
  • failure to use the mark in its registered form; and
  • insufficient use of the mark for the goods and services at issue.

The General Court considered that the assessment of the First Board of Appeal was right and dismissed the action in its entirety.

Decision

The General Court recalled that the transfer of a trademark cannot lead to its new proprietor being deprived of the opportunity to adduce proof of genuine use in the course of the relevant period during which it was not the proprietor of the mark: although Article 15(2) of Regulation 207/2009 states that use of a trademark by a third party with the proprietor’s consent amounts to use by its proprietor, in this case, use of the trademar was made directly by the company which owned the trademark at the time in question.

As regards genuine use of a trademark where the trademark is used in accordance with its essential function, the court emphasised that the fact that a word element is used as a company’s trade name does not preclude its use as a trademark to designate goods or services. Moreover, it considered that the supporting evidence submitted to the EUIPO (images of the boxes generally used for transporting fresh fruit and vegetables) can be used as additional elements for confirming genuine use of the trademark.

The court dismissed Schneider’s comments on the failure to use the trademark as it was registered: while there were notable differences between the trademark as registered and the trademark as used during the relevant period, those differences were not capable of significantly altering the distinctiveness of the mark. This conclusion was based on the finding that the element ‘frutaria’ was still the dominant and most distinctive element of the signs (as depicted below), and that the amendments were to be considered ancillary, as they would be perceived merely as a modernisation of the sign.

Lastly, the court found that the fact that the proof of use filed with the EUIPO was furnished only for the sale of products to a single customer did not make it possible a priori to rule out its genuineness. Accordingly, it accepted that the one-off sale of dried plums to a single customer was sufficient to establish genuine use for the category of “dried fruits” in Class 29.

Comment

This judgment sheds light on the consideration that must be given to the proof of use that a trademark holder can submit in a revocation action when the trademark has been assigned during the relevant period established by Articles 15(1) and 51(1) of Regulation 207/2009. It also provides valuable guidance on the court’s criteria as to the requirement of use of a trademark as registered, notwithstanding the modernisation and alteration of non-essential elements, and on the suitability of small sales for establishing genuine use in connection with certain categories of goods.

This article first appeared on WTR Daily, part of World Trademark Review, in October, 2021. For further information, please go to www.worldtrademarkreview.com

Author: Sara Navarro Joven

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Royal Decree-Law No. 24/2021, a legislation to open up opportunities for digital content

On 2 November the Spanish Government approved Royal Decree-Law No. 24/2021, transposing, among others, Directive 2019/790 on copyright in the Digital Single Market (CDSM Directive).

The purpose behind this legislation is to open up opportunities for digital content to compete in a digital single market.

The following, among others, are some of the most notable changes:

  • The exception or limitation for illustration for teaching and scientific research has been expanded. In this regard, Article 68 recognizes that the requisite authorization from right holders shall not be necessary for use of their works for teaching purposes through digital means, provided that such use is made by the teaching staff of a formal educational establishment, by the staff of universities and research bodies, in a secure electronic environment (for example, a virtual classroom) and accompanied by an indication of the source, including the author’s name, where possible. Moreover, these acts shall be deemed to occur in the territory of Spain, even if the recipients are not in Spain.
  • Another of the most important changes is the obligation on the part of online content-sharing service providers to adopt appropriate measures to ensure protection for works. They shall be liable for unauthorized acts of communication to the public, unless they show:
  • that they have made best efforts to obtain an authorization and ensure the unavailability of the works.
  • that they have acted expeditiously, upon receipt of notice from the right holders, to remove the works or other subject matter, and prevent future uploads.
  • The right to fair and proportionate remuneration is recognized for authors and performers in relation to agreements for exploitation of their works, to redress the imbalances that exist. To this end, an obligation of transparency is established for the parties to whom authorizations have been granted or exploitation rights have been transferred, who must provide up to date information once a year on the exploitation of the work and the revenue generated and the remuneration due.
 

 

Other important amendments of the Intellectual Property Act introduced by the Royal Decree-Law include:

  • With regard to cases where, following conclusion of an agreement for transfer of rights, the remuneration initially agreed is disproportionately low compared to the total revenue derived from the work, an amendment is introduced to Article 47 of the Intellectual Property Act in relation to unfair remuneration, whereby the agreement may be revised.
  • A right of revocation is introduced in Article 48bis, whereby the author is granted the right to revoke the authorization or transfer of rights, or terminate the exclusivity of the contract, if the work is not being exploited.
  • The new wording of Article 58, which stipulates that by means of a publishing agreement, in which the author transfers the right of reproduction and distribution to the publisher, the publisher acquires the right to a share of the fair compensation provided for in Article 25.
  • The amendment of Article 32.2, eliminating the so-called “Canon AEDE” (mandatory and non-waivable collective management levy). This levy affected content search engines and aggregators, which had to pay the levy in favour of Spanish newspaper publishers. The new provision does not establish any formal arrangement regarding management of this right and right holders may negotiate authorizations individually or through a collective rights management organization.
  • Finally, through the inclusion of a new Article 129bis, press publishers and news agencies are afforded an exclusive right of reproduction and making available to the public with respect to the online use of their press publications by information society service providers.

Authors: Mabel Klimt, Javier Fernández-Lasquetty, Claudia Fernández y Clara Collado

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Copyright Infringement in Works of Applied Art in China

Infracción de derechos de autor en obras de arte aplicado en China

(Supreme Court Guideline Case No. 157)

On June 30, 2021, the Supreme Court of the People’s Republic of China issued the 28th batch of guidance cases, among which, No. 157 related to the protection of works of applied art.

Highlights of the judgment

For a work of applied art to be protected under the Copyright Law, it must be original, have a certain artistic value, and the latter must be clearly distinguishable from its practical meaning. Furthermore, the Copyright Act protects the “artistic” rather than the “practical” aspects of a work of functional art.

Background

In 2009, Crosplus Home Furnishings (Shanghai) Co., Ltd. (hereinafter referred to as “Crosplus”) designed a traditional Chinese-style wardrobe called “Tang Yun Wardrobe”. Between September and October 2011, it was displayed on a third-party website, and on December 10, 2013, Crosplus registered the three-dimensional pattern of the Tang Yun Wardrobe through the China Copyright Protection Centre.

armario tang yun

 

In 2013, Crosplus discovered that Mengyang Furniture Sales Center (hereinafter referred to as “Mengyang”), a distributor of Beijing Zhongrong Hengsheng Wood Co., Ltd. (hereinafter “Hengsheng”), was selling a cabinet manufactured by Hengsheng that was substantially similar in appearance to the “Tang Yun”. Crosplus then sued the Mengyang sales centre and Hengsheng for copyright infringement of its work of applied art, the “Tang Yun Wardrobe”.

The court opposed the plaintiff’s claims, and the decision was overturned in the court of appeal.

Conclusion

The second instance court analysed the case in two steps:

  1. Was the “Tang Yun Wardrobe” a work protected by the Copyright Act?

Article 2 of the Implementing Regulations of the Copyright Law of the People’s Republic of China provides that “The term “works” as referred to in the Copyright Law means intellectual creations with originality in the literary, artistic or scientific domain, insofar as they can be reproduced in a tangible form”.

Article 4(8) of the Implementing Regulation stipulates that ““works of fine arts” means two- or three-dimensional works of the plastic arts created in lines, colors or other media which impart aesthetic effect, such as paintings, works of calligraphy and sculptures”.

Therefore, any intellectual creation with originality that can be reproduced in a tangible form is protected by the Copyright Act as a “work”.

Although China’s Copyright Law does not cover “works of applied art” explicitly, in practice they are often protected as works of art. For an industrial product to be considered a “work of applied art”, it must, in addition to meeting the common requirements of a general work (independent realisation and creative expression), have an aesthetic effect. Furthermore, the scope of protection of the Copyright Act is limited to the author’s expression and does not protect technical utility. Therefore, the protection of a work of applied art by the Copyright Act also requires that its artistic and its functional character are clearly differentiated.

In this case, the plaintiff’s wardrobe fulfilled both  the aesthetics and utility requirements. On the one hand, the claimant’s creative work is reflected in the choice of materials, the patterns and the specific positions of the fittings. The colour of the furniture panels is not the wood grain itself, but mimics the colour and elements of traditional Chinese furniture redesigned with abstract techniques, and the front cabinet doors, drawer handles and drawer pulls use handmade pure brass hardware, among other features.

On the other hand, the artistic nature of the wardrobe can be clearly differentiated from its practicality, as the modification of the artistic elements would not affect the practical function of the wardrobe, which is the storage and display of clothes.

Based on the above, it was confirmed that the plaintiff’s wardrobe could be considered an artistic work which can be protected by the Copyright Act.

  1. Does the manufacture and sale of a product substantially similar in appearance to a registered work of applied art infringe the latter’s copyright?

To determine whether a product infringes the copyright of a protected work, the court must ascertain and decide whether the product is “substantially similar” to the protected work and whether the infringer had “access” to it.

As noted above, the Copyright Act protects only the artistic character of works of applied art, so the comparison between the infringing product and the protected work must be limited to the “artistic aspect”.

Following the comparison, the court found that the creative elements of the two works were substantially similar, inter alia, because of the general L-shape of the cabinet, the similar arrangement of the doors, the decorative fittings, the pattern of the panels and the general shape.

Since the defendant did not provide evidence to show when the design of the infringing products was completed, nor did he provide information about the designers -coupled with the fact that the defendant and the plaintiff were competitors in the same industrial field-, the court found that there was reason to believe that the defendant had “access” to the plaintiff’s works.

Based on this analysis, the court ultimately ruled that the defendant’s products infringed the copyright of the plaintiff’s protected work.

Author: Dan Liu

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The United Arab Emirates joins the Madrid Protocol

The United Arab Emirates has signed the document of accession to the Madrid Protocol which will enter into force on December 28, 2021. With the accession of the UAE, there are 125 countries belonging to the Madrid System and 3 of them are members of the Gulf Cooperation Council (the other members being Oman and Bahrain).

 

This Persian Gulf country is one of the richest countries in the world and one of the top 5 in terms of highest per capita income. The wealth is mainly concentrated in the two largest emirates, Dubai (the most cosmopolitan) and Abu Dhabi (the most conservative and the country’s capital), and it is based mainly on the exploitation of oil and natural gas, although in recent times tourism, finance, real estate and construction have also become very important. It plays a key and strategic role in the Middle East and global diplomacy, and it is one of the main gateways to Asia.

Its stability and wealth make it attractive for foreign investment and international trade, particularly for the luxury market.

One of the obstacles posed by the national route for the protection of trademarks in the UAE is the high cost of local legal services and official fees, which are extremely high in some cases. The price of the fee for international applications in the United Arab Emirates is still unknown and it is almost certain that the country has opted to levy an individual fee, but the country’s accession to the international registration system will surely entail an economic benefit for trademarks owners with regard to the protection of their rights.

Author: Cristina Arroyo

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To what extent can the director of a work edit his or her creation without infringing the related rights of artists?

On 25 August 2021, the Court of Justice of the Andean Community (hereinafter, “CJAC”) issued its findings on the right of the director of a cinematographic work to edit, cut or delete previously recorded scenes and analysed how that right can conflict with the related rights of performers.

The Court refers, firstly, to the basis for protection of a cinematographic work under copyright, citing Articles 3 and 4 of Decision 351 of the Common Rules on Copyright and Related Rights(hereinafter, “Decision 351”) which establish that an audiovisual work shall be protected under copyright provided that it is original, which entails that the work bears “the personal stamp, individual character or unique character of the author or authors”.

To understand the above, it is important to distinguish between the author of a cinematographic work and the artist participating in the work. The former is the natural person who achieves the intellectual creation, while the latter is the person who acts, sings, reads, delivers, interprets or otherwise performs a work. In this regard, the creator of the work, who in the case of audiovisual works is the director, holds the moral rights and copyright in the work, while the artist is the person who brings a character to life in a unique and singular manner in accordance with a script. It is in view of this singular nature of the artist’s interpretation that Chapter X of Decision 351 grants related rights to artists, including the right to “object to any distortion or mutilation of their performance or any other act prejudicial thereto that could be detrimental to their prestige”.

rodaje, camara, actores

 

This last right granted to artists should not be confused with the economic right of transformation held by the author in relation to the work. What is granted to artists is the right, in certain cases, to “demand protection of their moral right of integrity, when the distortion, mutilation or any other act prejudicial to their performance could be detrimental to their prestige or reputation“.

For their part, directors, as authors of a cinematographic work, have the right to edit the work, including the option of cutting or deleting previously recorded scenes, and to authorise its transformation. Therefore, the rights held by directors can conflict, on certain occasions, with the related rights of artists.

With regard to the above, the question is to what extent the director can edit the work he or she has created without infringing the related rights of artists. The Court states that the author of the audiovisual work, that is, the director, may edit and even delete the performance of an artist, for example, by deleting a scene, with no limitation other than that said deletion must not be for the purpose of intentionally causing harm to the performer’s prestige or reputation.

Moreover, when analysing the infringement of artists’ rights through the deletion of scenes featuring their performances, the Court makes a distinction between the different types of actors (leading actors, supporting actors, etc.) with regard to the protection of their performances. Thus, the actor’s level of protection will be higher or lower depending on his or her participation in the audiovisual work, and the protection of a leading actor will be greater than that of a supporting actor and, in the case of extras or background actors, since they are not artists or performers, they will not have any protection in cases where the scenes in which they appear are deleted.

We may conclude from the above that the director of an audiovisual work is not infringing the related rights of an artist and, therefore, the artist may not object to the deletion of scenes in which he or she appears, provided that the deletion is not being carried out with the intention of causing detriment to the artist’s prestige or reputation. In order to be able to object, the artist or performer must be in a position to prove that the deletion was carried out by the director with the intention of causing detriment.

Author: Claudia Pérez Moneu

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