TUESDAY, 17 OCTOBER 2017
General Court: "Moravia Consulting v EUIPO"
General Court: no discretion to admit "national law" evidence submitted for first time at the BoA stage
The General Court had to decide on and denied the admissibility of evidence of national law which was submitted for the first time and the BoA stage (here: in support of an Article 8(4) EUTM Regulation opposition), Moravia Consulting v EUIPO (T-316-318/16) all of 12 October 2017.
The oppositions in the underlying case were based on the alleged existence of earlier national Czech rights (Article 8(4)(b) EUTM Regulation). The question at the centre of the case was whether evidence submitted in support of the opponent's basis of opposition under Article 8(4)(b) EUTM Regulation was admissible given it was first submitted by the opponent at the BoA appeal stage (rather than before the EUIPO opposition division).
The EUIPO's BoA had held that the opponent had failed to – timely -- submit evidence concerning the earlier rights before the opposition division. Information about local law which the applicant had submitted for the first time at the BoA was neither additional, nor supplementary and thus inadmissible. Further, the EUIPO BoA held that it did not have discretion to accept evidence 'out of time'. The opponent argued that its evidence should have been taken into consideration under the principle iura novit curia. It argued that it was not necessary to file details of the specific provisions of national (here: Czech law), which were accessible to the public. Further, in view of the opponent the EUIPO was obliged to clarify matters by indicating what specific information was lacking in the opposition papers so that the opponent could duly correct this.
General Court decision
The General Court agreed with the EUIPO BoA that the opponent had failed to provide evidence intended to prove the existence, validity and scope of the protection of the earlier national trade marks during the opposition proceedings.
With regard to the application of Article 8(4)(b) EUTM Regulation, the national rules relied upon and national judicial decisions were relevant. On that basis, the court explained, the opponent had to establish that the opposition marks fell within the scope of national law relied upon.
Rule 50(1) of Regulation No 2868/95 in combination with Article 76(2) of Regulation No 207/2009, which relate to the assessment of the facts by EUIPO of its own motion, provide as a general rule (and unless otherwise specified), that the submission of facts and evidence by the parties remains possible after the time limits under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are invoked or produced out of time. However, and this is the crucial part, the court stressed that this discretion only related to whether or not it was necessary to accept evidence that was submitted out of time. Notably, the discretion did not relate to the assessment of the nature of that evidence.
Further, the court stressed that the CJEU had previously held that Article 76(2) of Regulation No 207/2009 should be interpreted in the same way in relation to proof of the existence, validity and scope of protection of a trade mark, but cannot be interpreted as meaning that it extended the discretion of the EUIPO's Boards of Appeal to new evidence (citing EUIPO v Grau Ferrer, C-597/14 P, paragraph 27). References to the provisions of national law submitted by the opponent for the first time when setting out its statement of grounds before the EUIPO's Board of Appeal were neither additional, nor or supplementary evidence to the evidence already submitted at the EUIPO's opposition division. The General Court concluded that the EUIPOs BoA had therefore correctly refused to accept this evidence at the appeal stage. It was therefore the opponent who had to provide EUIPO with particulars establishing the content of the national law rather than the EUIPO having to demand these.
Notable are the court's comments in paragraph 42 (author's edits in square brackets):
"Rule 19(2)(d) of Regulation No 2868/95 (now Article 7(2)(d) of Commission Delegated Regulation (EU) 2017/1430 …) places on the opponent the burden of providing EUIPO not only with particulars showing that it satisfies the necessary conditions, in accordance with the national law that it is seeking to have applied, in order to be able to have the registration of an EU trade mark prohibited by reason of an earlier right, but also with particulars establishing the content of that law [citing Edwin v OHIM, C-263/09 P]. It is true that the Board of Appeal and the EU judicature must, of their own motion, obtain information about the national law where such information is necessary to assess whether the ground for refusal of registration in question applies, which entails them taking into consideration, in addition to the facts which have been expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources [citing OHIM v National Lottery Commission, C-530/12 P, ?????, T-96/13]. However, that obligation only applies in circumstances where EUIPO or the EU judicature already have before them information relating to national law, either in the form of claims as to its content, or in the form of evidence submitted and whose probative value has been claimed [citing in analogy ?????, T-96/13].
Comment: an interesting case on the perennial question of "out of time" evidence and a clarification of the scope of discretion afforded to the EUIPO's Board of Appeal - which is limited to additional and supplementary evidence but does not extend to (the assessment of) the nature of the evidence.
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MONDAY, 16 OCTOBER 2017
Meet the Judges in London - last chance to register! Plus more events announced
There are still a few places left at this week's annual Question the Trade Mark Judges event at UCL in London, and a new judge has just been added. The event takes place this Wednesday evening (18th October) and the panel now comprises:
This event always provides both information and entertainment, and the judges are open to answering almost anything thrown at them. Don't miss this opportunity to get your questions answered: reserve your place online here.
Meet more judges
Finally, save the following dates for two more events before the end of this year:
Full details for both these events will be available on the MARQUES events page soon.
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FRIDAY, 13 OCTOBER 2017
CJEU in Cactus: no retroactive application of IP Translator and Praktiker cases
The CJEU has confirmed that the IP Translator and Praktiker cases are not retroactively applicable; Case reference: EUIPO v Cactus, (C-501/15 P) of 11 October 2017
The case concerns an opposition against an EUTM application for a word/device mark 'cactus of peace' and 'cactus de la paz' based on earlier EUTM for word 'cactus' and a word/device EUTM for 'Cactus '. The EUIPO and its BoA upheld the opposition under Article 8(1) EUTM Regulation due to a likelihood of confusion. The GC saw things slightly differently and annulled the EUIPO's decisions as regards certain retail services in Class 35.
The case discusses two issues: (1) do the CJEU's IP Translator and Praktiker cases apply retroactively?; (2) whether use of the earlier trade mark's only figurative element - here: the stylised cactus - amounted to genuine use under Article 15(1) EUTM Regulation.
No retroactive application of IP Translator and Praktiker
The CJEU confirmed the GC decision and agreed with the GC that the CJEU's precedents in IP Translator (C-307/10) and Praktiker (C-418/02) do not apply retroactively.
With regard to IP Translator: inter alia citing Brandconcern (C-577/14 P), the CJEU held that it only applied to the specifications of EUTM applications but not trade marks that were already registered on the date of the judgment. Applying this to the case at hand, the court clarified that IP Translator did not apply to the marks used as the basis of the opposition.
With regard to Praktiker: the CJEU held that Praktiker only applied to EUTM applications covering "retail services" in Class 35 but did not affect the scope of the protection of trade marks that were already registered at the date of the judgement. Applying this to the case at hand, the court clarified that the GC had been correct when it decided that the opposition trade marks which designated the entire class headings in their specifications covered all goods and services included in that respective class, this also applied and included Class 35. Consequently, the CJEU found opponent did not have to further specify the type of products covered by the retail services covered by the opposition mark in Class 35.
Genuine use in a differing form
The second question decided was whether use of the earlier trade mark's only figurative element - the stylised cactus without the word element 'Cactus' - equated to a use "in a form that differs in elements which do not alter the distinctive character of that mark in the form in which it is registered" under Articles 15(1)(a) and 42(2) EUTM Regulation?
Initially, the CJEU confirmed that the determination of the criteria to be employed for the global assessment of equivalence of signs from the perspective of their distinctiveness is a question of law falls within the CJEU's jurisdiction.
Citing Specsavers (C-252/12), the CJEU reiterated that the condition of genuine use in the sense Article 15(1) (a) EUTM Regulation is satisfied even where only the figurative element of a composite mark is used, as long as the distinctive character of that mark, as registered, is not altered. Articles 15(1)(a) EUTM Regulation did not impose strict conformity between the form in which the trade mark is used and the form in which the mark was registered. Its purpose being "to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned."
This CJEU decision is a helpful and important clarification/reiteration of the 'historical' scope of application of the IP Translator case following on from Brandconcern. In Brandconcern the CJEU had, inter alia, referred to the transitional provision in Article 28(8) EUTM Regulation and held that IP Translator only applied to trade mark applications but was not applicable to the EUTMs that had already been registered before the decision had been handed down.
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THURSDAY, 12 OCTOBER 2017
German Federal Patent Court: CAPRI SUN 3D mark
A recent German Federal Patent Court (Bundespatentgericht) decision on an invalidity application against a three dimensional trade mark for a drink carton covering class 32 goods (non alcoholic beverages, fruit juices and fruit nectars) focussed on the perennial trade mark issue of "technical effect".
Case reference: 26 W (pat) 63/14 of 28 June 2017 (Capri Sun); Link here.
The case concerns third party invalidity proceedings against the 3D trade mark which had been brought at the German DPMA (Patent and trademark office) on the grounds that the mark had been registered contrary to Article 3 (2) No 2 and Article 1 German Trademark Act. Article 3 (2) No. 2 states as follows: "signs consisting exclusively of a shape which is necessary to obtain a technical result ?shall not be amenable to protection as a trade mark".
The invalidity applicant, inter alia, argued that all characteristics, which determined the overall impression of the trade mark were necessary to obtain a technical effect or were determined by the nature of the goods itself: the trade mark was the most practical shape for a upright pouch produced from flexible, metallic coated foil. Some of the characteristics of the mark had previously been protected by patents, which had since lapsed.
The DPMA agreed and found the mark to be invalid due to a lack of individualising non-technical features.
Federal Patent Court decision
On appeal the Federal Patent Court held that the shape of the mark had been technically determined and thus fell foul of Article 3 (2) No 2 and Article 1 German Trademark Act.
Referring to the CJEU decision in Henkel (C-218/01) the court explained that the exclusion of technically determined shapes from trade mark protection does not only apply to goods as such, but also the shape of packaging where the goods do not have a shape themselves (here due to their fluid consistency) and require packaging to be sold.
Rationale of excluding technical shapes from trade mark protection
The Federal Patent Court reiterated that the rationale underpinning the exclusion of technical shapes from registered trade mark protection was to prevent businesses from using trade mark law to obtain exclusive and unlimited rights for technical solutions which should either be protected by patent or design rights and thus be limited or be free from protection (citing Lego, C-48/09, and Philips/Remington, C-299/99). A shape may be technically determined, even if a similar technical effect can be reached by applying alternative shapes. However, a shape should not be excluded from trade mark protection if it contained an important non-functional element, such as decorative element, which is relevant for the shape (citing Yoshida, C-421/15). The expression 'essential characteristics' should be understood as referring to the most relevant characteristics of the trade mark. The characteristics should be determined on a case by case basis. In the case at hand the essential characteristics of the 3D mark could be established by means of a visual examination of the trade mark based on the perception of the relevant public (here: the average consumer and the retail drinks trade) to which the court considered it belonged itself.
"Six essential characteristics"
The court identified six essential characteristics of the packaging shape, which in view of the court all had a technical effect:
1. an upright standing pouch (= makes it possible to place the pouch on sale shelves),
2. with flat edges on the sides and at the top side (= allows for secure closing),
3. with an oval unfolded bottom (= provides stability),
4. with a round "lump", downward slightly tapering (=effect of the filling liquid into the pouch),
5. with tapering edges when seen from the side (=inevitable effect once pouch has been filled),
6. made from flexible, non transparent material (=by definition a pouch consists of flexible material, which includes further technical advantages (absorb pressure and shocks, storage space can be saved, reduce waste, etc.)
The straight sides of the shape however were not an essential characteristic of the mark since they did not depart from the packaging shapes that had been established for decades, e.g. to save space in storage, transport and presentation. Use of such straight lines also allowed to save material and made the production process inexpensive. Referring to the CJEU's decision in KitKat the Federal Patent Court stressed that even if the method of production were not determinative in the context of assessing the technical effect, straight lines were the most obvious shape for the side of a drinking pouch and a common and long established shape for the packaging of drinks which did not depart from the norm. Further, the DPMA had erred in determining that the 'quadrangular shape' was an essential characteristic of the trade mark as it was one of the most simple and widespread geometric shapes for drinking packaging.
No binding effect of decison by Commercial Court of Brussels
Finally, the Federal Patent Court referred to a the decision by the Commercial Court of Brussels of 23 December 2015. In this decision (concerning infringement proceedings and a counterclaim for revocation of the Benelux part of the identical IR trade mark) where the Brussels Court had decided that the straight sides amounted to important, non functional characteristics since there were many pouches on the market without straight sides. The Federal Patent Court disagreed stating that this finding did not comply with the relevant precedents by the CJEU and the German Federal Court of Justice according to which it was not important whether or not an identical technical effect could be achieved by applying alternative shapes.
The decision is another reminder of the complexities of determining the "technical effect" of a trade mark.
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WEDNESDAY, 11 OCTOBER 2017
MARQUES statement on election of Antonio Campinos as EPO President
Chair of the MARQUES Council, Gregor Versondert, has welcomed the election of António Campinos (right) as President of the European Patent Office, saying:
MARQUES congratulates Mr Campinos on his election and wishes him well in his new role at the EPO. Given our observer status at EUIPO, MARQUES has worked closely with Mr Campinos and his team over the past seven years and we will continue to work with him during the rest of his term until 30th June 2018.
Mr Campinos and the EUIPO staff have achieved remarkable results during his leadership, making the Office a fully effective EU agency as well as building and developing a strong network among European and international partners. These partners include national IP offices, the EPO, enforcement authorities, WIPO and the TM5/ID5. This has resulted in greater cooperation to achieve harmonisation of IP systems at national, regional and international levels.
MARQUES looks forward to the appointment of a successor to Mr Campinos as EUIPO Executive Director and is ready to provide any support required in that process. MARQUES hopes to see the same commitment to users' involvement and users' needs as Mr Campinos has shown during his term at EUIPO.
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WEDNESDAY, 11 OCTOBER 2017
New WIPO publication: The work of the Hague Conference on private international law in relation to the enforcement of intellectual property rights
An new WIPO publication titled "The work of the Hague Conference (HCCH) on private international law in relation to the enforcement of intellectual property rights" discusses global and cross-border Intellectual Property rights enforcement.
From the abstract:
A worthwhile read for those interested or concerned with IP enforcement.
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TUESDAY, 10 OCTOBER 2017
CJEU: No application of Article 22(4) Brussels Regulation when determining trade mark ownership
The CJEU decides that Article 22(4) Regulation No 44/2001 ("Brussels Regulation") does not apply to proceedings to determine whether a person was correctly registered as the proprietor of a trade mark.
Case reference: Hanssen Beleggingen BV vs Tanja Prast-Knipping (C-341/16) of 5 October 2017.
Article 22(4) Regulation No 44/2001 ("Brussels Regulation") provides that "The following courts shall have exclusive jurisdiction, regardless of domicile: … in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of a Community instrument or an international convention deemed to have taken place."
The underlying question was whether a person, who was domiciled in Germany, and had been registered as the owner of a Benelux mark (after that mark had been transferred to them by universal succession after the original owner passed away) was entitled to the trade mark.
The Düsseldorf court asked: "Does the notion of proceedings which are 'concerned with the registration or validity of … trade marks', within the meaning of Article 22(4) [Brussels Regulation], also cover a claim, brought against the formal proprietor of a Benelux trade mark registered in the Benelux trade mark register [but which is domiciled in Germany], which seeks an order requiring that defendant to make a declaration to [the Benelux IPO] that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?"
The CJEU held Article 22(4) Brussels Regulation did not allow for such an interpretation. The judges based this on the following considerations:
Article 22(4) Brussels Regulation reflects the same system as Article 16(4) of the Brussels Convention and was "drafted in almost identical terms" so that it was necessary to ensure continuity in the interpretation of these provisions (citing Solvay (C 616/10)). Further, the "concept of proceedings ‘concerned with the registration or validity of [intellectual property rights]’, referred to in those provisions, is an ‘independent concept’ intended to have uniform application in all contracting States"; referring to Duijnstee, (288/82, sic) and GAT (C 4/03).
The CJEU explained that these provisions "must not be given a wider interpretation than is required by their objective", which is "to ensure that jurisdiction for proceedings concerned with the registration or validity of intellectual property rights rests with courts closely linked in fact and law to the register". Indeed, these "courts are best placed to adjudicate on cases where the validity of the right, or even the existence of the deposit or registration, is in dispute".
The CJEU concluded that this interpretation should also be applied in the case at hand since the "question of the individual estate to which an intellectual property right belongs is not, generally, closely linked in fact and law to the place where that right has been registered." In other words, the case to be decided by the referring Düsseldorf court did not concern the validity or registration of a trade mark but only whether the person registered as its owner was indeed the correct owner.
Important decision on jurisdiction; since jurisdiction must be assessed of the court’s own motion, the referring court, the Higher Regional Court of Düsseldorf, Germany, understandably wished the matter to be clarified.
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