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Actress and singer Miley Cyrus is entitled to use name as a trademark

Miley Cyrus

On 16 June 2021 the General Court issued its decision in Smiley Miley Inc v European Union Intellectual Property Office (EUIPO) (Case T‑368/20).

Background

In 2014 Smiley Miley Inc – a company of world-famous artist Miley Cyrus – filed an application with the EUIPO for the registration of MILEY CYRUS as an EU trademark for goods and services in Classes 9, 16, 28 and 41.

Cyrus Trademarks Ltd opposed the application on the ground that it was confusing similar with the earlier EU trademark depicted below for goods in Classes 9 and 20:

CYRUS

In 2018 the EUIPO accepted the opposition in part on the ground that there was a likelihood of confusion between the mark applied for and the earlier mark in respect of most of the goods and services covered by the mark MILEY CYRUS.

That same year, the EUIPO dismissed an appeal filed by Smiley Miley, finding that the signs at issue were visually and phonetically similar to an average degree and that the conceptual comparison was neutral. Smiley Miley lodged an appeal with the General Court.

Decision

Having conducted an in-depth analysis of the case, the General Court annulled the EUIPO’s decision, thus granting the EU trademark MILEY CYRUS.

The General Court focused its decision on two main issues.

First, the court addressed the alleged error made by EUIPO when finding that the element ‘Miley’ (first name) in the mark applied for would be perceived as a less dominant element in comparison with the element ‘Cyrus’ (surname).

The court held that, although there is case law indicating that surnames have, as a general rule, a more distinctive character than first names, it is necessary, however,

to take account of factors specific to the case and, in particular, of the fact that the surname concerned is unusual […], which is likely to have an effect on that distinctive character […] and to take account of whether the person who requests that his or her first name and surname, taken together, be registered as a trademark is well known […].

Bearing in mind that (i) neither ‘Miley’ nor ‘Cyrus’ is a common first name or surname; (ii) the mark applied for refers to the first name and surname of a world-famous artist; and (iii) the artist is known by that first name and that surname taken together, the court stated that those two elements were equally distinctive.

Second, the court held that the EUIPO committed an error when comparing the signs conceptually and considering that the name of the reputed artist Miley Cyrus had no conceptual meaning.

The court underlined that:

a conceptual comparison remains possible where the first name or the surname in question has become the symbol of a concept, due to, for example, the celebrity of the person carrying that first name or surname […].

The well-known character of the American singer and actress meant that it was highly unlikely that consumers would not associate the mark MILEY CYRUS with the name of the artist.

Consequently, the court concluded that, although the marks were similar, the conceptual differences between them were such as to counteract the visual and phonetic similarities.

Comment

The judgment confirms, on the one hand, that names and surnames may have a conceptual meaning and, on the other, the possibility of ‘neutralising’ any visual and phonetic similarities where it is established that the relevant public assigns to one of the signs a clear and specific meaning that can be grasped immediately.

Considering that the courts have followed this same line over the past few years, the decision does not represent a turning point in case law. Nevertheless, it reinforces the protection enjoyed by celebrities through the registration of trademarks, bearing in mind their reputation and worldwide recognition as a result of appearances in the media.

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

Author: Soledad Bernal

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Freedom of information vs the right to honour: The Fariña case

At the beginning of the year the Spanish Supreme Court issued a ruling in the Fariña case. Fariña is a well-known book in Spain that tells the story of Galician drug trafficking and was withdrawn from sale for a period of time as a precautionary measure due to a lawsuit filed for libel and slander.

libro abierto, notas, bolígrafo

 

The book mentions, on several occasions, Mr. Bernabe’s involvement in drug trafficking, which, in the plaintiff’s opinion, violated his right to honor.

To understand the case that concerns us, it is important to bear in mind that Mr. Bernabe has twice been tried for crimes related to drug trafficking and in both cases he was found not guilty with respect to the offences of which he was accused.

The principal issue under debate in this case is the conflict between two fundamental rights: freedom of information and the right to honour.

The Court that what is required of a professional transmitting information are reasonable efforts to verify the facts to avoid undermining the right of everyone to receive truthful information, and the information is to be considered truthful if it is based on objective and reliable sources that are readily identified and verifiable, so that the conclusions reached by the party furnishing the information based on the verified data from those sources are conclusions that the average reader or viewer would also have reached based on the same data.

The Court dismissed the complaint against the book’s author.

This is summary of the case published at Kluwer IP Law Copyright Cases

Author: Inés de Casas

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Legal protection of Databases

base de datos, iconos, azul

Judgment of the Court of Justice (Fifth Chamber), case C-762/19

The Court of Justice of the European Union (hereinafter, the “CJEU”) has issued a ruling in case C-762/19 concerning the prohibition on any third party to “extract” or “re-utilize”, without the maker’s permission, all or a substantial part of the contents of a database.

base de datos, iconos, azul

 

The issue raised in the proceedings concerns the compatibility of the operation of a specialized search engine with the sui generis right contained in Directive 96/9, a matter that the Regional Court of Riga (Latvia) referred to the CJEU for a preliminary ruling in two questions which sought to determine, firstly, whether the display, in the list of results generated by a specialized search engine, of a hyperlink that redirects the user of that search engine to a website, provided by a third party, where the contents of a database of job advertisements can be consulted, falls within the definition of “re-utilization” set out in Article 7(2)(b) of Directive 96/9 and, secondly, whether the information from the meta tags of that website displayed by the search engine is to be interpreted as falling within the definition of “extraction” set out in Article 7(2)(a) of said Directive.

In order to answer these questions, we must first define the scope and purpose of the protection of the sui generis right. The purpose of the sui generis right is to ensure the protection of a substantial investment in the obtaining, verification or presentation of the contents of a database, granting the maker of the database the possibility of preventing the unauthorized extraction or re-utilization of all or a substantial part of the contents, so that the person who has taken the initiative and assumed the risk of making a substantial investment receives a return on his or her investment.

It is also important to note that pursuant to Article 7 of Directive 96/9, the protection of a database by the sui generis right is justified only if there has been quantitatively or qualitatively a substantial investment in the obtaining, verification or presentation of the contents of the database.

With regard to the criteria for concluding that an act by a user constitutes an “extraction” or “re-utilization” within the meaning of Directive 96/9, “extraction” is defined as “the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means and in any form”. As for “re-utilization”, it covers “any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission”. Both concepts must be interpreted as referring to any act of appropriating and making available to the public, without the consent of the maker of the database, the results of his or her investment, thus depriving him or her of revenue which should have enabled him or her to redeem the cost of that investment.

The search engine at issue in the proceedings makes it possible to simultaneously explore, by means other than that provided for by the maker of the database concerned, the entire content of several databases, including the plaintiff’s, by making that content available to its own users. By providing the possibility of searching several databases simultaneously, that specialized search engine gives users access, on its own website, to job advertisements contained in those third-party databases. Thus, users are provided with access to the entirety of the content of third-party databases by a means other than that provided for by the makers of those databases.

In the light of the above considerations, the answer to the questions referred for a preliminary ruling is that Article 7(1) and (2) of Directive 96/9 must be interpreted as meaning that an Internet search engine specializing in searching the contents of databases, which copies or indexes all or a substantial part of a database freely accessible on the Internet and then allows its users to search that database on its own website according to criteria relevant to its content, is “extracting” or “re-utilizing” that content within the meaning of that provision, which may be prohibited by the maker of such a database where those acts adversely affect its investment in the obtaining, verification or presentation of that content, namely, that they constitute a risk to the possibility of redeeming that investment through the normal operation of the database in question.

Author: Claudia Pérez Moneu

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Success for Andreas Stihl as General Court finds that colour combination mark is valid

A recent judgment (Case T‑193/18, 24 March 2021) by the General Court has revealed the importance of precise descriptions in applications for the registration of trademarks consisting of a combination of colours.

Background

On 19 December 2008 Andreas Stihl AG & Co KG filed an application to register a colour sign (shown below) as an EU trademark (EUTM) for “chainsaws” in Class 7. The sign was a combination of colours per se, identified as “orange (RAL 2010)” and “grey (RAL 7035)”, and was accompanied by the following description: “The colour orange is applied to the top of the housing of the chainsaw and the colour grey is applied to the bottom of the housing of the chainsaw”.

 

On 24 June 2015 Giro Travel Company SRL filed an application for a declaration of invalidity of the trademark, essentially arguing that the mark was not capable of distinguishing the goods at issue as it did not satisfy the Sieckmann criteria(Case C-273/00) – that is, the representation of the two colours was not clear, precise, self-contained, durable and objective. Giro Travel argued that the colour combination of orange (RAL 2010) and grey (RAL 7035) was commonly used in the field of forest tools, so consumers were not likely to perceive it as a badge of origin.

The application for a declaration of invalidity was rejected in the first instance by the Cancellation Division of the EUIPO, but following an appeal by Giro Travel, the Second Board of Appeal annulled the Cancellation Division’s decision and declared the colour trademark at issue to be invalid. The Board of Appeal found that a sign composed of a combination of orange and grey per se was not capable of distinguishing the trademark owner’s “chainsaws” from those of other undertakings.

Andreas Stihl appealed to the General Court. The court upheld the appeal and annulled the decision of the Second Board of Appeal.

Appeal to the General Court

Andreas Stihl relied on a single plea in law, alleging infringement of Article 4, read in conjunction with Article 7(1)(a), of Regulation 40/94, as it considered that the graphic representation of the colour mark at issue was suficiently clear and precise. Further, it contended that the representation contained a systematic arrangement in which the colours were used in a predetermined and uniform manner, with the particular shades of colour identified using a colour code, and with the inclusion of a very specific description, in compliance with the requirements set out by the Court in Heidelberger Bauchemie (Case C-49/02).

The EUIPO reiterated its position and contended that it was unclear whether, in Heidelberger Bauchemie, the court considered that the representation of two colours in equal proportions and placed side-by-side was tantamount to claiming colours “in every conceivable form”, or whether such a representation was unclear only if the description rendered it imprecise.

Additionally, the EUIPO argued that the combination of colours of which the EUTM at issue was composed could be reproduced on products of different shapes, and that the description allowed for different combinations and did not add any clarification capable of suficiently defining the systematic arrangement of the colours applied for, to the exclusion of any other arrangement.

Decision

The General Court found that, although the two colours defined by means of two identification codes did not, as such, have contours giving them a particular shape, the description included in the trademark application specified that the trademark takes the form of a part of a chainsaw housing, further specifying that the upper part of the housing would be orange, while its lower part would be grey.

For the court, this description placed a greater limit on the shape which the chainsaw housing could take, limiting the variations in design that consumers could perceive, and the colours did not take “all conceivable shapes” in such a way as to imply that the mark lacked the precision and uniformity required by Article 4 of Regulation 40/94.

The court considered that the EUTM at issue must be regarded as having a systematic arrangement which associates the orange and grey colours concerned in a predetermined and uniform way. It was thus considered that the EUTM was capable of acting as a badge of origin for the relevant specialist public, and was also capable of enabling the competent authorities and economic operators to know the scope of protection afforded to the proprietor of that trademark.

Comment

This judgment of the General Court reveals that the description forming part of a trademark application for a sign consisting of a colour combination is of paramount importance when assessing whether it is capable of acting as a badge of origin. Further, the ruling is also interesting in that it provides clear guidance on how colour combination marks interact with goods which are not all designed to be identical in shape and whose external appearance may consist of variations in design, as long as the description identifies the parts to which each colour shade is to be applied. For future applicants for such marks, the important point to take away from this decision is that the more specific the description, the better.

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

Author: Sara Navarro

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Did you get the transfer?

Spanish courts spend a lot of their time “transferring” things from A to B. So, when the defendant in a patent case files a validity counterclaim, the court must “transfer” it to the claimant. This transfer is of crucial importance because it sets off the two-month deadline for answering the counterclaim. So, what actually happens? Historically the officers of the court took the copy of the counterclaim which the defendant’s scribes had provided and physically gave it to the claimant’s procurator, that most Spanish of legal professionals. However, this was somewhat cumbersome, so at some point it occurred to somebody that maybe the defendant’s procurator could just give it to the claimant’s procurator. All very practical, but an immediate affront to the principle that it is the court which must drive and control the process. The solution is simple. In due course the court issues a piece of paper making an albeit symbolic “transfer”, thereby kicking off the deadline.

contactar, envío, email, teléfono, tablet

 

So far so good. However, things grew complicated when the revised Patent Act, which came into force in 2017, allowed the patent owner to file an application to limit the patent in response to the counterclaim. Although this had always been possible under Article 138.3 EPC, Spanish courts had grappled with the unforeseen procedural consequences. Article 120 of the new Act changed all that by firstly specifying that the limitation application had to be filed with the answer to the counterclaim, and secondly establishing a two-month time limit to respond. As usual the court was required to “transfer” the application to the counterclaimant, whose time limit to respond was however to start upon “receipt” of the application. This led to a flurry of academic articles which argued that the starting point for this new time limit would not be the court “transfer” itself but, long before that, when the electronic exchange had actually taken place between the procurators.

In a recent decision, Barcelona Commercial Court No. 5 has ruled for the first time on this conundrum. The tried and trusted transfer option wins the day: “Any of the other proposed interpretations would mean leaving the kick-off for the computation of the procedural deadline up to one of the parties, who would be driving the process, thereby depriving the first paragraph of the provision of any meaning. Taken to the absurd, if the beginning of computation of the time limit were to be from the moment of receipt of the application – one assumes, between procurators, between the parties themselves – why is a transfer by the court provided for?”. For Article 120.5 “in no way authorizes relegating that both the process and time control be driven by the court“.

Author: Colm Ahern

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