Tag Archives: EU trademarks

Assessment of MWC Barcelona 2019

The Commercial Court of Barcelona and the European Union Trade Mark Courts of Alicante have published their report summarising the application of the duty service and fast-action protocol for the Mobile World Congress held last week in Barcelona (MWC 2019). The information provided in this report will be no surprise for those, such as ELZABURU, having experienced first-hand the procedural peripeteia at this Congress.

  1. The courts have handled and resolved 50 matters in total, representing a 42% increase when compared to those dealt with in 2018.
  1. 38 protective letters were submitted to avoid adopting preliminary injuctions inaudita altera parte, 36 of these in Barcelona with regard to patents and 2 in Alicante in relation to European Union trade marks and designs. They were all processed and resolved within 24 hours.
  1. In order to verify the presence of goods suspect of patent infringement during the trade fair, the court attended 5 petitions for verification of facts procedures, these being processed and granted within a period of 48 hours. 2 of these petitions were notified and carried out by means of seizing samples at the actual inauguration of the Congress.
  1. On the subject of preliminary injunctions inaudita altera parte, the court of Barcelona attended 5 petitions filed and granted within a period of 48 hours before the start of the Congress. The measures were performed while the Congress was underway, with onsite seizure of samples. Curiously, in one of the cases the interested party was able to file a brief of opposition within two days, with the court accepting the opposition and immediately lifting the measures.
  1. ELZABURU followed the MWC 2019 there and then, being involved in 6 legal proceedings, preparing the defence strategy for another 2 cases that took different courses, while attending the Congress onsite to face any incident that could have occurred.

In addition, the actions of the courts of Barcelona and Alicante were exemplary when assessed regarding the judicial response and the efficiency of the mechanisms established in the Protocol. All remaining is to think of MWC 2020!

Author: Enrique Armijo

Visit our website: http://www.elzaburu.es/en

 

The court hotline has been set up for MOBILE WORLD CONGRESS 2019 in Barcelona

The Mercantile Courts of Barcelona have now disclosed the Duty Service and Fast-Action Protocol adopted on 13 December for MOBILE WORLD CONGRESS 2019. This is the fifth year running the Courts of Barcelona provide coverage for this important international forum, enabling the adoption of preliminary injunctions and the handling of preventive briefs under the most urgent conditions. The Protocol brings several important developments with it this year.

For the first time, the Protocol is agreed jointly by the Mercantile Court of Barcelona and the European Union Trade Mark Court in Alicante. In this way, the Protocol will not only be effective regarding patent infringements, but also for cases of infringement of European Union Trade Marks and Designs. Any preliminary injunction adopted by the Court of Alicante within this context may be enforced by the Courts of Barcelona while the Congress is being held.

The Protocol will be in force throughout February, in particular during the days the event is held (25-28 February). The commitment of the courts is to process and decide on the petitions for urgent preliminary injunctions within a period of 2 days (without a hearing for the defendant) or of 10 days (with a previous hearing being held) in terms of whether a preventive brief was previously filed.

Furthermore, the Protocol also proposes a guideline is followed to evaluate the risk factor that justifies measures are taken without a hearing for the defendant. For such purpose, both the previous behaviour of the complainant and the reaction speed to any knowledge on an eventual infringement will be decisive. The Protocol places emphasis on the fact that “it will be important to have submitted a petition for urgent preliminary injunctions sufficiently in advance for this, in good faith, not to reasonably prevent a hearing for the defendant, whenever the owner of the allegedly infringed right knew about the possible infringement beforehand and was able to file his petition in good time”.

These provisions of the Protocol encourage companies participating in MWC to weigh out and put in place as soon as possible their defensive or preventive strategies to guarantee their position. It should be borne in mind that 35 actions were carried out by judges in Barcelona regarding MWC 2018, 7 of these consisting of preliminary injunctions without a hearing for the defendants that were aimed at removing products on exhibition in the stands.

Author: Enrique Armijo

Visit our website: http://www.elzaburu.es/en

New CJEU judgment on the distinctive character of the Kit Kat shape

The long-running conflict between Nestlé and Cadbury (now Mondelez) with regard to registration of the Kit Kat shape mark as characteristic for chocolates is still bringing us interesting rulings by the courts on the question of the acquisition of distinctive character by trade marks through use.

   

Recapitulating, first came the refusal of the trade mark in the United Kingdom, which resulted in a referral for a preliminary ruling, addressed by the Court of Justice of the European Union in its judgment of 16 September 2015 (Case C-215/14). Counter to what many had expected, that decision did not move the British High Court of Justice to find in favour of registering Nestlé’s trade mark. Quite the opposite, in his judgment of 20 January 2016 Mr. Justice Arnold’s interpretation was that the CJEU had held that the association between the image of the confection and the Kit Kat chocolate bar by a large majority of people surveyed did not suffice to consider that the shape had acquired distinctiveness as a trade mark. In his opinion, it would have been necessary to show that consumers perceived the product as having a given undertaking as its business origin on the basis of the sign in question alone, without considering any other marks that may also be present. As a result, the refusal of the British trade mark was ultimately upheld.

On the other hand, Nestlé had succeeded in registering the shape of the Kit Kat chocolate bar as a three-dimensional European Union trade mark in 2006. The following year Cadbury filed a request asking the EUIPO to invalidate the registration on grounds that the sign was devoid of distinctive character. The EUIPO’s Board of Appeal held that even though the sign was initially devoid of distinctiveness, Nestlé had proven that it had acquired distinctive character through use. That decision was set aside by the General Court by its judgment of 15 December 2016 on grounds that the findings of the Board of Appeal did not address the acquisition of distinctiveness by the mark in part of the European Union (specifically, in Belgium, Ireland, Greece, and Portugal).

In essence, the issue in dispute was the geographical extent of the evidence of acquisition of distinctive character through use. While Nestlé and the EUIPO maintained that it sufficed to show that the mark had acquired distinctiveness in a significant portion of the European Union, the General Court ruled that this had to be shown in the entire territory of the EU, not just in a substantial part or in the greater part of that territory.

On appeal, by its judgment of 25 July 2018 (Joined Cases C-84/17 P, C-85/17 P, and C-95/17 P), the Court of Justice upheld the General Court’s decision. The CJEU found that Article 7.3 European Union Trade Mark Regulation requires proving distinctiveness in the European Union to have been acquired wherever the sign was not distinctive ab initioWhere this is the case throughout the European Union, the proof needs to encompass the territory of the EU as a whole; evidence dealing with a substantial part of the EU does not suffice.

The Court has clarified, though, that the evidence does not have to consist of separate evidence for each individual EU Member State but that evidence may instead be produced globally for various Member States combined. However, the evidence, whether individual or global, must cover the entire territory of the European Union. In consequence, the Board of Appeal’s decision was vitiated by an error in law in failing to adjudicate on the acquisition of distinctive character by Nestlé’s trade mark in Belgium, Ireland, Greece, and Portugal.

The Court of Justice has set a very high bar for evidence. It should be noted that both the EUIPO and the General Court had deemed Nestlé to have proven acquisition of distinctive character in 10 EU Member States, including the largest ones (Germany, Spain, France, Italy, and the United Kingdom). It would thus seem that owners who, in the event of a challenge, wish to rely on the acquisition of distinctive character through use to defend the validity of their European Union trade marks had best be prepared to embark on a laborious and costly process of compiling evidence.

Author: Carlos Morán 

Visit our website: http://www.elzaburu.es/en

Messi scores against Massi

In 2011, the FC Barcelona player Lionel Messi filed European Union trademark application No. 010181154, with the following design, at the EUIPO to cover goods in classes 9, 25 and 28:

That same year, the owner of the earlier European Union trademarks Nos. 3436007 and 414086 MASSI (word), registered in classes 25, 9 and 28 respectively, filed opposition against said application, arguing that there was a likelihood of confusion and/or association (Article 8.1 EUTMR) between the trademark filed by Leo Messi and the earlier MASSI marks.

Having considered the parties’ arguments, in 2013 the EUIPO issued its decision, accepting in full the opposition filed by the owner of the MASSI marks and thus refusing Leo Messi’s application, on the basis that there was a likelihood of confusion between the marks in dispute.

In 2014, the Argentinian superstar lodged an appeal against the refusal, but the EUIPO dismissed the appeal, finding that there was a likelihood of confusion, given that the dominant elements of the marks, that is, MESSI and MASSI, are practically identical both visually and phonetically.

Thus, Leo Messi decided to contest the decision and in September 2014 he lodged an appeal with the General Court of the European Union on grounds that the marks MESSI and MASSI were perfectly able to coexist on the Register, as the EUIPO had not taken into account the importance of the conceptual aspects when analyzing the matter.

Having conducted an in-depth analysis of the case, the General Court issued a judgment on 26 April 2018 accepting Leo Messi’s appeal and annulling the EUIPO’s refusal decisions and thus granting the European Union trademark MESSI.

The arguments put forward by the General Court in its judgment are the following:

  1. First of all, the General Court states that the signs making up the marks in conflict have an average degree of visual similarity, given that the dominant element of the MESSI mark is extremely similar to the word element of the MASSI mark.
  2. However, the Court holds that the EUIPO committed an error when comparing the signs on the conceptual front and considering that the Argentinian footballer’s reputation only concerns football enthusiasts and sports fans in general.
  3. The General Court also underlined that the well-known nature of Leo Messi’s surname means that it is highly unlikely that consumers will not associate the MESSI mark with the player’s surname, since the goods covered by the marks in dispute are sporting articles and clothing.
  4. The General Court therefore concludes that although the marks MESSI and MASSI are very similar, the conceptual differences between them are such as to counteract the visual and phonetic similarities. Moreover, the Court states that a significant part of the relevant public will associate the term “Messi” with the surname of the famous footballer and, consequently, will perceive the term “Massi” as conceptually different.

As usual, the analysis carried out and the arguments put forward by the General Court for this decision are, in our opinion, well-founded and correct, given that the wide recognition and reputation of the FC Barcelona player worldwide among the average consumer of sports-related goods make it hard to believe that any confusion and/or association could arise between the goods offered under the MASSI marks and those offered under the surname making up the MESSI mark.

Furthermore, this decision only reinforces the protection enjoyed by celebrities in the course of trade through the registration of trademarks, bearing in mind their reputation and wide recognition as a result of appearances in the media (press, TV, radio, Internet, etc.).

In any case, it should be noted that the judgment may yet be subject to appeal before the Court of Justice of the European Union (CJEU). We shall see whether the opponent gives up and Leo Messi wins the match or whether the owner of the MASSI marks lodges an appeal, providing for an exciting end to the match.

We will keep an eye on the scoreline.

  Author: Manuel Mínguez Visit our website: http://www.elzaburu.es/en  

The European Commission presents its Draft Withdrawal Agreement on the withdrawal of the United Kingdom – Brexit

In a bid for complete transparency, this past 28 February 2018 the Commission, in phase 2 of the negotiating process, made public its Draft Withdrawal Agreement for the countries of the European Union, setting out its proposals for solutions to the inevitable consequences Brexit will bring. Title IV of the Draft deals with Intellectual Property rights, including not just trade marks but also designs, plant variety rights, geographical indications, and designations of origin.

The Commission’s proposal is that the owners of rights registered in the European Union before the end of the transition period should automatically own those same rights in the United Kingdom without having to apply for registration in Britain, without being subject to examination by the British Authorities, and without having to pay for protection of their rights.

In its turn, in a letter sent to the British Government last December 2017, British Intellectual Property practitioners asked the Government to ensure continuity of the protection conferred by the European-wide intellectual property system, in which the United Kingdom has been an active participant, since it is regarded as one of the linchpins for being able to carry on normal business operations.

The position and interests of British practitioners thus appears to converge with the Commission’s proposal in respect of intellectual property rights. The position taken by the British Government remains to be seen.

One of the main stumbling blocks that has arisen in this phase of the negotiations between the Commission and the British Government to draw up a common text for the Withdrawal Agreement is setting a date for the end of the transition period. In its draft released in February, the Commission proposed a final date of 31 December 2020, that is, 21 months after the date set for Brexit, which is 29 March 2019. The British Government considers two years to be a suitable time period but does not want to commit to a hard date and proposes remaining in the single market and Customs Union as long as necessary.

The issue of the end of the transition period is to be discussed at the next meeting of European leaders, scheduled to take place in Brussels at the end of March. Judging from recent statements made by certain authorities, the position of the Government of Spain on this issue is the same as the Commission’s. It sees little point for either the European Union or the United Kingdom in keeping the UK in a system that it would have to continue funding even though it would not be able to take part in decision-making, since it would no longer be present in the institutions of the European Union.

The Member States have displayed unity and consensus during this process of withdrawal by the United Kingdom from the European Union, and they have taken a positive, constructive stance in seeking solutions that do not punish the United Kingdom but instead lay the groundwork for future relations with the UK when the transition period has ended and it ceases to be an EU Member State.

Still, the possibility that the negotiations may fail cannot be ruled out. In this respect, at the same time as it has been drawing up a draft text as a basis for agreement, the Commission has also taken this into account and warned the various economic operators of the possible repercussions that would ensue from a failure to reach agreement.

Spanish companies should therefore be aware that there is a risk that their trade mark rights could cease to have effect in the United Kingdom on 29 March 2019, and for this reason, at least for those companies interested in the British market, it could make sense for them to register their brands as national marks in the United Kingdom, even though their marks have already been registered with EUIPO as EU marks.

We should therefore keep an eye on developments in the negotiations between the Commission and the British Government. The Commission has done its homework and has published its draft Withdrawal Agreement. The ball is now in the British Government’s court.

 

Author: Catherine Bonzom

Visit our website: http://www.elzaburu.es/en

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