April 26, 2018 is a remarkable date: first it’s World IP Day celebrating IP around the world. Second, and this is unique, the British IP Minister Sam Gyimah MP announced that the UK ratified the Unified Patent Court Agreement (UPC Agreement). By doing so the UK agreed to be bound to both the UPC agreement and the UPC’s Protocol on Privileges and Immunities (PPI). The UPC will be a court common to the contracting member states within the EU having exclusive competence in respect of European Patents and European Patents with unitary effect.
The Court of Justice of the European Union (CJEU) recently confirmed that the “no-aesthetic-consideration” test is the preferable approach when deciding whether a design is “solely dictated by its technical function”. As a result, if aesthetic considerations are completely irrelevant the design should not be registered. However, this does not mean that the legislation requires a design to have an aesthetical merit in order to be registered as a Community Design.
Last month, the CJEU published their long-waited decision on the request for a preliminary ruling raised by the Oberlandegericht Düsseldorf (the “German Court”) back in 2016.
The CJEU has provided some clarity on the interpretation of Article 8(1) of the Community Design Regulation (CDR) and how to determine if a product’s features are “solely dictated by its technical function”. The CJEU took the chance to stress, once again, that the determination “must be interpreted in a uniform manner in all Member States”, which strongly reiterates the EU’s objective for cohesive legal application.
EasyGroup Ltd has suffered a blow in a High Court case against W3 Ltd, with the judge finding that its word mark, EASY, was invalid.
EasyGroup found itself facing a claim from W3 Ltd for groundless threats, in relation to letters of complaint it sent regarding the branding of one of W3’s businesses, EasyRoommate. As a counterclaim, EasyGroup alleged that W3’s use of the registered word mark and logo EASYROOMMATE, infringed its community registered trade mark, EASY, with W3 in turn stating that such a mark should be invalidated for being too descriptive under Article 7(1)(c) of the EU Trade Mark Regulation.
Looking back at 2017, statistics give us a better understanding of the big picture and help us interpreting the market to guess in which direction the economy is going to go.
On 14 July 2017, the EU General Court issued a ruling in case T-223/16 between Massive Bionics SL and Apple Inc. and the EUIPO concerning the registration. In the end, the General Court also found that the Board of Appeal had rightly found that the marks are similar. The matter was based on the following trademark:
On 9 April 2013, Massive Bionics SL submitted an application for the registration of the trademark in classes 35, 42 and 44, against which registration Apple Inc. filed an opposition based on:
the word mark “iCloud” and the following word-figurative and figurative marks:
– the international word mark “iCloud”, designated in Cyprus in classes 9, 35, 38, 42 and 45
– the following EU figurative trademarks registered in classes 9, 35, 38, 41 and 42:
The Opposition Division of the EUIPO dismissed the opposition in its entirety, and Apple Inc. appealed. The Board of Appeal amended the decision of the Opposition Division of the EUIPO within the scope of all services from class 35 and certain services from class 42.
On 29 November 2017, the Court of Justice of the EU (CJEU) released its judgment in response to a reference from an Italian court relating to cloud recording and computing services provided by VCAST Limited (VCAST). The services enabled VCAST’s customers to select live broadcasts of television programmes that VCAST then remotely, through its own systems, recorded and made available in a cloud data storage space. The Italian court asked whether VCAST could provide this service without the permission from the owner of the copyright over the programme, with a specific query as to the application of the private copying exception provided in Article 5(2)(b) of the Information Society Directive (2001/29/EC) (InfoSoc Directive).
On 20 March 2013, the company Mediaexpert S.A. submitted the following word-figurative EU trademark to the EUIPO:
for the following services in classes 35, 39 and 41:
- 35: Business management; business administration;
- 39: Transport; packaging and storing of goods;
- 41: Education; providing training; sports;
and the trademark was registered on 5 March 2014 under number 11674132 for all the services submitted.
On 22 May 2014, the company Mediaexpert sp. z o.o. applied for invalidation of the mark, citing an earlier protection right to a domestic, word-figurative trademark registered on 26 February 2010 under number R.226812 in the form:
for goods and services from classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42.
Together with the motion for invalidation, the applicant attached a printout from the Polish Patent Office database and a list of goods and services in the Polish language, without a translation into English, which was the language of the proceeding for invalidation.
Fast forward to a ruling of 20 July 2017, the court dismissed the complaint by the applicant, that there had been a breach of the principle of the protection of justified expectations, and ordered the applicant to pay the costs of the proceedings.
On 12 January 2015, the company LG Electronics Inc. submitted the mark “QD” to the EUIPO. The application was made for: “television receivers; mobile phone; smartphones; tablet computers; computers; sound recording devices; image recording devices; sound transmission devices; image transmission devices; sound playback devices; image reproduction devices; software; software for interactive television; communications software; computer software” belonging to class 9 of the Nice Classification.
In a decision of 19 August 2015, the application for registration of the mark was dismissed in relation to all goods, on the basis of Article 7 par. 1b) and c) of Regulation No. 207/2009 due to the absence of any distinctiveness of the sign and given that the mark consists solely of a descriptive element in relation to the goods for which it was submitted.
LG Electronics Inc. disagreed with that decision and lodged an appeal with the EUIPO on 9 October 2015. Subsequently, in a decision of 24 May 2016, the Board of Appeal of the EUIPO dismissed the appeal, ruling that the word mark “QD” is descriptive for the goods the submission referred to.
The Düsseldorf first instance district court decided that the trademark of Ferrari has to be cancelled (Decision as of 2 August 2017 – Case no. 2a O 166/16 – juris). However, the decision in not yet final.
On 4 August 2009, the company Interton sp. z o.o. (“Interton”) applied for the word-figurative trademark “A ADORATION” – goods from class 3 (cosmetics, including eye shadow, lash mascara, lipstick, fluids, makeup foundation, nail polish). The Polish Patent Office granted a protection to the mark (R-235773). Fast forward to 21 June 2017 (and after a number of oppositions and disagreements), the Supreme Administrative Court provided a ruling dismissing the PPO’s decision.