zaterdag 30 mei 2015

Cobain alive in Bavaria commercial, publicity rights in the Netherlands


Cobain alive in Bavaria commercial, publicity rights in the Netherlands

Being in love with Nirvana since 1991 I watched the documentary "Montage of Heck" (Brett Morgan 2015) on the life of Kurt Cobain immediately when it was screened in Amsterdam. 


The documentary starts with Cobain as a baby and ends wit his suicide in 1994. In between it paints an impressive intimate picture of Cobain this accompanied with Nirvana's music makes for an intense gripping watch. Rotten tomatoes credit the documentary with an eight out of ten rating . Some home videos of Cobain and Courtney Love are woven into the documentary. Cobain and Love being young parents with their newborn child, Cobain and Love quarreling etc. It kind of struck me to have such an intimate peek into Cobains family life. Not much is said about the impact of Cobains suicide on the people left behind. But watching Cobains mother, Love & Novoselic it obviously has been huge.

Last year a Bavaria commercial aired on Dutch television with Cobain drinking beer on an island together with other popstart that have died (Lennon, Elvis, etc.). At that moment I just found it bad taste and did not think much about it. Now watching "Montage of heck" I just realised how bad taste it actually was. Please judge for yourself.



The question is whether Cobains family could have banned the commercial. In the Netherlands portrait rights (in the US also known as "publicity" and/or "personality" rights) are dealt with in the Dutch Copyright Act, article 21.


Article 21
If a portrait is made without having been commissioned by or on behalf of the persons portrayed, the copyright owner shall not be allowed to communicate it to the public, in so far as the person portrayed or, after his death, his relatives have a reasonable interest in opposing its communication to the public. 

Please note that in Dutch case law (Katja Schuurman vs. Yellow Bear) it has been decided that the person portrayed (and his relatives) may also act against "look a likes". 

There is in my opinion no doubt that the relatives of Cobain would have had a reasonable interest in opposing to the use of Cobains portrait in the Bavaria commercial. 

According to Dutch law a reason to oppose can be that the person portrayed could have asked compensation for the use of its portrait (which Cobain certainly have could given his popularity). Another valid reason for opposing would -according to Dutch law- be that the person portrayed has been made a fool of. Each of the aforementioned reasons alone would already be enough to have the commercial banned. 

Article 21 of the Dutch Copyright Act may be invoked by anyone (so not only by Dutch people). However, a Dutch Court will need to have jurisdiction, which it would have had in  case of the Bavaria commercial as this commercial was aired in the Netherlands.




 

 

 

 

woensdag 27 mei 2015

Adidas A.G. vs OHIM and Shoe Branding Europe BVBA Decision General Court 21 May 2015 Case T‑145/14, three stripes and third time lucky


Adidas A.G. vs OHIM and Shoe Branding Europe BVBA Decision General Court 21 May 2015 Case T‑145/14, three stripes and third time lucky



Adidas lost their case against the OHIM with regards the registration of a two stripe trademark for shoes by Shoe Branding Europe BVBA two times, but now –finally- triumphed at the General Court. 

The decisions of the Opposition Division  (2012) and the Board of Appeal (2013) to reject the Adidas opposition were –in my opinion- unexpected given the fact that the European Court of Justice in its judgment of 10 April 2008 in adidas and adidas Benelux, C‑102/07, (ECR, EU:C:2008:217) in paragraphs 34 en 35 took the view that:

34      In that respect, it should be pointed out that the public’s perception that a sign is a decoration cannot constitute a restriction on the protection conferred by Article 5(1)(b) of the Directive when, despite its decorative nature, that sign is so similar to the registered trade mark that the relevant public is likely to perceive that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings.
35      In the present case, it must therefore be determined whether the average consumer, when he sees sports or leisure garments featuring stripe motifs in the same places and with the same characteristics as the stripes logo registered by adidas, except for the fact that they consist of two rather than three stripes, may be mistaken as to the origin of those goods, believing that they are marketed by adidas AG, adidas Benelux BV or an undertaking linked economically to those undertakings.

The General Court takes the view that Shoe Branding Europe BVBA infringes Article 8(1)(b) and Article 8 (5) of Regulation No 207/2009. Personally I am so familiar with the Adidas brand that I immediately recognize the difference between Adidas (three stripes) and no Adidas. Therefore, I don’t think that there exist a link whatsoever between a brand with two or four stripes and Adidas. The General Court holds a different view. Important in the reasoning of the General Court is that –according to the General Court- the consumers of sport shoes do not demonstrate a high degree of attention buying sport shoes. Given the already existing case law the decision of the General Court is understandable. 

However, the question remains whether the decision does justice to reality as – as far as I know- any six year old kid in Europe can tell the difference between an Adidas shoe and a non Adidas shoe.

The General Court takes the view that:

32      It must be stated that the Board of Appeal’s finding that those differences will not pass unnoticed by the consumer who pays attention to the details of sports shoes is, as the applicant claims, at odds with the fact that the consumer of those products does not demonstrate a high degree of attention.
33      In that regard, it should be recalled that, since sports shoes are everyday consumer goods, the relevant public is made of the average consumer, who is reasonably well informed and reasonably observant and circumspect, whose degree of attention must be regarded as average when purchasing them. It should also be recalled that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment in OHIM v Shaker, cited in paragraph 20 above, EU:C:2007:333, paragraph 35).
34      It must be observed that the presence of stripes on the outside of the shoe will be easily and immediately noticed by the average consumer as an element of similarity between the signs at issue. However, the differences in positioning and inclination are noticeable only if the consumer undertakes a closer inspection.
35      A certain visual similarity between the signs at issue, therefore, stems from the position of the stripes on the outside of the shoes, which cannot be called into question by the differences in positioning and inclination.
36      With regard, in the second place, to the configuration of the stripes, it should be stated that, in the part of the contested decision relating to the inherent distinctiveness of the earlier marks, the Board of Appeal took the view that, since the stripes were banal decorative elements, ‘only the particular configuration and position of the stripes [could] be seen as an indication of origin’. However, it then considered that, for the comparison of the signs at issue, only the position and number of the stripes were highly relevant.
37      The Board of Appeal did not explain why the other elements of the stripe configuration, such as their shape (curved or straight), their size (length and width) and their colour, did not constitute elements relevant to the comparison of the signs at issue.
38      The Board of Appeal did find that the signs at issue shared straight stripes contrasting with the background. Nevertheless, it was wrong not to consider those characteristics to be relevant to the comparison of the signs at issue and to rely solely on the differences in the number and position of the stripes on the shoe to conclude that the signs were dissimilar overall.
39      As the applicant observes, the signs at issue consist of parallel stripes, equidistant and of the same width, which contrast with the background. Those characteristics of the stripes of the marks at issue are not elements that could be excluded from an assessment of those marks as a whole. Thus, with regard to their configuration, the signs at issue show similarities which should have been taken into account by the Board of Appeal in its global assessment of visual similarity.
40      As regards, in the third place, the number of stripes, the Board of Appeal attributed too much importance to whether there were two or three stripes on the outside of the shoe. That difference between two or three stripes cannot be regarded as important for the average consumer with an average level of attention.
41      Thus, the difference between two and three stripes placed on a shoe is not sufficient to affect the similarities arising from the configuration of the signs at issue and from their position on the outside of the shoe.
42      In that regard, it should be noted that the Court of Justice took the view, in the judgment in adidas and adidas Benelux, cited in paragraph 28 above (EU:C:2008:217, paragraph 35), that it had to be assessed whether the average consumer, when he sees sports or leisure garments featuring stripe motifs in the same places and with the same characteristics as the stripes logo registered by adidas, except for the fact that they consist of two rather than three stripes, may be mistaken as to the origin of those goods, believing that they are marketed by adidas AG, adidas Benelux BV or an undertaking linked economically to those undertakings.
43      In the light of the foregoing, taking into account the elements clearly common to the marks at issue — parallel sloping stripes, equidistant, of the same width, contrasting with the base colour of the shoe, placed on the outside of the shoe — it must be considered that the overall impression produced by those marks is, to a certain extent, similar and that the Board of Appeal was wrong to conclude that the marks at issue were visually dissimilar.
44      The arguments advanced by OHIM and the intervener in support of the Board of Appeal’s conclusion cannot succeed. First, the elements on which they rely, seeking to demonstrate that the marks at issue differ on account of the different colour and length of the stripes, are not relevant in so far as they are not mentioned by the Board of Appeal in the contested decision. Those new elements cannot supplement the reasoning of the contested decision and have no influence on the assessment of its validity. Second, with regard to the argument concerning the difference in length of the stripes arising from their difference in inclination, it should be pointed out that that minor difference between the marks at issue will not be noticed by the consumer with an average degree of attention and will not influence the overall impression those marks produce on account of the presence of wide sloping stripes on the outside of the shoe.
45      Last, it should be noted that it is precisely because of the lack of any similarity between the signs at issue that the Board of Appeal found that there was no likelihood of confusion.
46      The overall assessment of the likelihood of confusion entails certain interdependence between the factors taken into account and, in particular, the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
47      In addition, it should be noted that the Board of Appeal considered the earlier marks to enjoy a high reputation in the sports shoes and clothing sector and that that reputation extended to a three-stripe figurative device. It took the view that, where those three stripes were applied to sports shoes, that element consisted of three parallel stripes of the same size and width contrasting with the base colour of the shoe and positioned on the footwear upper in the area between the laces and the sole.
48      In that regard, it should be recalled that, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either per se or because of their recognition on the market, enjoy broader protection than marks with less distinctive character. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether there exists a likelihood of confusion (judgments of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraphs 32 and 33 and the case-law cited, and of 28 October 2010 in Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, EU:T:2010:458, paragraph 67).
49      Therefore, the errors the Board of Appeal made in its assessment of the similarity of the signs at issue are liable to have consequences on the validity of its assessment of the likelihood of confusion.
50      Consequently, the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be upheld, without it being necessary to examine the assessment undertaken by the Board of Appeal of the similarity between the mark applied for and the other earlier marks relied on in support of the opposition, or the merits of the other complaints raised by the applicant in the context of the present plea.
51      Furthermore, in this case, it is also on the basis of lack of any similarity between the signs at issue that the Board of Appeal considered one of the conditions referred to in Article 8(5) of Regulation No 207/2009, that relating to the identity or similarity of the signs at issue, not to have been met, and rejected the opposition in so far as it was based on that provision.
52      It should be recalled that the Court of Justice has consistently held that the degree of similarity required under Article 8(1)(b) of Regulation No 207/2009, on the one hand, and Article 8(5) of that regulation, on the other, is different. Whereas the implementation of the protection provided for under the first of those provisions is conditional upon a finding of such a degree of similarity between the marks at issue that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by the latter provision. Accordingly, the types of injury referred to in Article 8(5) of Regulation No 207/2009 may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (judgments of 24 March 2011 in Ferrero v OHIM, C‑552/09 P, ECR, EU:C:2011:177, paragraph 53 and the case-law cited, and of 20 November 2014 in Intra-Presse v OHIM, C‑581/13 P and C‑582/13 P, EU:C:2014:2387, paragraph 72).
53      It follows that the Board of Appeal’s erroneous assessment regarding the similarity of the signs at issue influenced all the more its analysis of the ground based on Article 8(5) of Regulation No 207/2009, on which the opposition was also based.
54      Accordingly, the second plea, alleging infringement of Article 8(5) of Regulation No 207/2009, must also be upheld and, consequently, the contested decision must be annulled, without it being necessary to rule on the third plea.

 Background to the dispute
As stated in the decision:
1        On 1 July 2009, the intervener, Shoe Branding Europe BVBA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The mark for which registration was sought, identified by the intervener as an ‘other’ mark, is depicted below:

3        In the application for registration, the mark is described as follows:
‘The trade mark is a position mark. The mark consists of two parallel lines positioned on the outside surface of the upper part of a shoe. The parallel lines run from the sole edge of a shoe and slope backwards to the middle of the instep of a shoe. The dotted line marks the position of the trade mark and does not form part of the mark.’
4        The goods for which registration was sought are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the description ‘Footwear’.
5        The Community trade mark application was published in Community Trade Marks Bulletin No 107/2010 of 14 June 2010.
6        On 13 September 2010, the applicant, adidas AG, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods referred to in the application for registration.
7        The opposition was based, inter alia, on the following earlier rights:
–        the Community figurative mark, filed on 3 November 2003 and registered on 26 January 2006 under number 3517646, for ‘footwear’ in Class 25, with the following description: ‘The mark consists of three parallel equally spaced stripes applied to footwear, the stripes positioned on the footwear upper in the area between the laces and the sole’. That mark is reproduced below:

–        the German figurative mark, filed on 22 August 1975, registered on 18 May 1976 under number 944624 and duly renewed, for ‘sports and casual footwear’ in Class 25, reproduced below:

–        the German figurative mark, filed on 22 August 1975, registered on 18 May 1976 under number 944623 and duly renewed, for ‘sports and casual footwear’ in Class 25, reproduced below:

–        the German ‘other type of mark’, filed on 20 August 1999, registered on 14 December 1999 under number 39950559 and duly renewed, for ‘footwear, including sports and casual footwear’ in Class 25, with the following description: ‘The mark consists of three stripes contrasting with the base colour of the footwear. The shape of the shoe serves only for representing how the mark is applied, it does not as such form part of the mark’. That mark is reproduced below:

–        the German figurative mark, filed on 8 March 1972, registered on 6 September 1972 under number 897134 and duly renewed, for ‘sports footwear’ in Class 25, reproduced below:

–        the figurative mark subject to international registration number 391692, applied for on 6 September 1972, with effect in Austria, Bulgaria, the Benelux, Czech Republic, Germany, France, Hungary, Italy, Portugal, Romania, Slovenia and Slovakia for ‘Sports footwear, sports clothing (including knitted fabrics)’ in Class 25, reproduced below:

–        the non-registered mark/sign composed of ‘three parallel equidistant stripes applied to pieces of clothing or footwear’, used in the course of trade in Germany for ‘footwear, clothing’, reproduced below:

8        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009.
9        By decision of 22 May 2012, the Opposition Division rejected the opposition.
10      On 2 July 2012, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11      By decision of 28 November 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. First, the Board of Appeal rejected the opposition based on Article 8(1)(b) of Regulation No 207/2009. It took the view that the differences in the number of stripes and their respective positions on the shoe were sufficient to find that the signs at issue were, overall, dissimilar. It concluded that, even taking into account the reputation of some of the earlier marks, those differences were sufficient to preclude any likelihood of confusion in the mind of the reasonably well-informed and reasonably observant and circumspect public, even for identical goods and independently of the fact that the earlier signs, taking their extensive use into consideration, could be considered to have, at least, a normal degree of distinctiveness. Second, the Board of Appeal rejected the opposition filed pursuant to Article 8(5) of Regulation No 207/2009, on the ground that the relevant section of the public was unlikely to establish a link between the marks at issue, considering that their differences in the number of stripes and their positioning were determinant, whatever the reputation of the earlier marks may have been. Third, the Board of Appeal rejected the opposition filed pursuant to Article 8(4) of Regulation No 207/2009. It took the view that the applicant had failed to substantiate its ownership of a German non-registered mark consisting of three horizontal parallel equidistant stripes applied to ‘footwear’, the applicant’s right to the non-registered mark being limited to pieces of sports clothing, that there was no likelihood of confusion and that, in the light of the differences between the signs, the consumer, upon seeing the mark applied for being used on footwear, would not think of that earlier mark, despite its reputation for sports clothing.


Law
14      In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation No 207/2009, second, infringement of Article 8(5) of Regulation No 207/2009 and, third, infringement of Article 8(4) of Regulation No 207/2009.
15      In support of its first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant argues that the Board of Appeal made several errors of assessment concerning, first, the nature of earlier German figurative mark number 897134 and that of international mark number 391692, second, the distinctiveness of the earlier marks, third, the scope of protection of the earlier marks and, fourth, the similarity of the marks at issue. It maintains that the Board of Appeal therefore made an error in assessing the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009.
16      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and because of the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, according to Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ refer to trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
17      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
18      In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26).
19      It also follows from the case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and of 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 41).
20      The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
21      In the present case, the comparison made by the Board of Appeal between the mark applied for and the earlier marks representing a shoe (earlier Community trade mark number 3517646 and earlier German trade marks numbers 944624, 944623 and 39950559; ‘the earlier marks’) must be examined.
22      The applicant does not dispute the Board of Appeal’s finding that the relevant public is the average consumer in the EU or Germany, reasonably well-informed and reasonably observant and circumspect, or the finding that ‘footwear’ covered by the mark applied for and the goods covered by the earlier marks are identical.
23      As regards the marks at issue, it should be noted that the mark applied for is a position mark consisting of two parallel stripes positioned on the side of the shoe, which run from the edge of the sole and slope backwards to the middle of the instep of the shoe. The earlier marks are figurative marks made up of three parallel stripes of the same width positioned on the footwear upper in the area between the laces and the sole.
24      The Board of Appeal took the view that, since the marks at issue were purely figurative and abstract in their appearance, a phonetic comparison could not be made. It considered that, conceptually, neither of the marks at issue had a discernible meaning.
25      The applicant merely disputes the Board of Appeal’s assessment concerning the visual similarity of the signs at issue.
26      In that regard, it should be observed that the Board of Appeal took the view that the only similarities between the mark applied for and the earlier marks laid in the fact that they shared straight stripes contrasting with the base colour of the shoe and placed on the side of the shoe. It considered that the position and number of the stripes were highly relevant considering that stripes were very banal elements applied on shoes and clothing and that the differences mainly laid in the number of stripes and their positioning. In that regard, it explained that, in the mark applied for, the stripes sloped slightly from the front of the shoe to the back and were positioned in the area of the instep of the shoe, whereas, in the earlier marks, the three stripes sloped slightly from the back of the shoe to the front and were positioned in the area between the footwear’s laces and sole. In the Board of Appeal’s view, those differences would not pass unnoticed especially because consumers are accustomed to seeing sports shoes with different geometric designs and because they pay attention to the details of sports shoes they try on before buying. It concluded that the differences resulting from the number of stripes and their respective position on the shoe were sufficient to conclude that the signs were dissimilar overall.
27      The applicant claims that the Board of Appeal wrongly found that the mark applied for and the earlier marks were visually dissimilar. It maintains, inter alia, that the Board of Appeal focused on slight differences between the marks and overlooked the fact that the earlier marks share many common features with the mark applied for, namely, that the signs consist of parallel stripes, contrasting with the base colour of the shoe, all with the same width and spacing, that the stripes are positioned on the side of the shoe, that they are angled and run from the sole to the upper of the shoe. The only dissimilarity lies in the number of stripes: two for the mark applied for and three for the earlier marks. The marks at issue therefore have more common elements than differences.
28      First of all, it should be pointed out that the public’s perception that a sign is a decoration cannot constitute a restriction of the protection conferred by Article 8(1)(b) of Regulation No 207/2009 when, despite its decorative nature, that sign is so similar to the registered trade mark that the relevant public is likely to believe that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings (see, by analogy, judgment of 10 April 2008 in adidas and adidas Benelux, C‑102/07, ECR, EU:C:2008:217, paragraph 34).
29      It should be recalled that, in the present case, the Board of Appeal considered that the number of stripes on the shoe and their position were highly relevant to the comparison of the signs at issue and, taking the view that those elements were different in this case, it concluded that the signs at issue were dissimilar overall.
30      With regard, in the first place, to the position of the stripes on the shoes, the Board of Appeal first found, correctly, that the fact that the marks at issue both had stripes placed on the side of the shoe constituted an element of similarity. However, the Board of Appeal subsequently took account of their more precise position on the outside of the shoe, noting that, in the mark applied for, the stripes were positioned in the instep area of the shoe and that, in the earlier marks, they were positioned in the area between the laces and the sole of the shoe. It also stated that the stripes sloped in an opposite direction to those of the mark at issue.
31      In the Board of Appeal’s view, those differences in the stripes’ positioning and inclination on the shoes will not pass unnoticed, because consumers are accustomed to seeing geometric designs on shoes and pay attention to the details of those products.

dinsdag 26 mei 2015

Storm umbrella is a valid Community Design and has individual character Impliva Senz 21 May 2015 Joined Cases T-22/13 and T-23/13

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Judgment of the General Court 21 May 2015 in Joined Cases T-22/13 and T-23/13 Senz Technologies B.V. vs. OHIM and Impliva B.V. (intervener)

The battle between Senz Technologies B.V. (Senz) and Impliva B.V. (Impliva) with regards a “storm” umbrella has a long history going back to 2006. This Judgment is interesting as the Community Designs of Senz concerning a storm umbrella were declared invalid in 2010 by the Invalidity Decision (no individual character) which decisions were appealed by Senz, which appeals were dismissed by the Third Board of Appeal of OHIM in 2012 (no distinctive character).  However, Senz has more succes with the General Court. The General Court decided that the storm umbrella has in fact an individual character. In short:

102    It follows from all the foregoing that the Board of Appeal erred in concluding that the contested designs do not have individual character. The applicant’s second plea is therefore admissible. The action must therefore be upheld and the contested decision annulled.

The decision is also interesting as the General Court made clear that it doesn’t matter that an earlier design (relied on by Impliva as “prior art”) never has been incorporated into a product. In short:

36      As to the argument that the umbrella covered by the earlier patent has never been produced — a point not contested, moreover, either by OHIM or the intervener — it is clear that Article 7(1) of Regulation No 6/2002 does not impose any requirement that the earlier design relied on by the opposing party must have been used for the manufacture or marketing of a product.
37      However, the fact that a design has never been incorporated into a product is significant only where the applicant has established that the circles specialised in the sector concerned do not generally consult patent registers or that the circles specialised in the sector concerned do not generally attach any weight to patents, in particular American patents. In such scenarios, the argument that there are no umbrellas covered by the earlier patent on the market may make faintly plausible the fact that the earlier patent may have been known to the circles specialised in the sector concerned through other forms of information. In the present case, the fact that the umbrella designated by the earlier patent has never been produced shows that the earlier patent could not have been known to the circles specialised in the sector concerned through advertising, marketing activities or catalogues. However, that fact does not establish that the circles specialised in the sector concerned could not have reasonably gained that knowledge otherwise, such as through an online search in the American patent register.


From the judgment: On 25 August 2006, the applicant, Senz Technologies BV, filed two applications for registration of a Community design with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).
The Community design at issue in Case T‑22/13 was registered under number 000579032-0001 and published in Community Trade Marks Bulletin No 118/2006 of 17 October 2006, the indication of which mentions ‘umbrellas’, and which is reproduced below:

The Community design at issue in Case T‑23/13 was registered under number 000579032-0002 and published in Community Trade Marks Bulletin No 118/2006 of 17 October 2006, the indication of which mentions ‘umbrellas’, and which is reproduced below:


On 16 July 2009, the intervener, Impliva BV, lodged an application for a declaration of invalidity pursuant to Article 52 of Regulation No 6/2002 in respect of each of those designs (‘the contested designs’). Each of those applications for a declaration of invalidity was based on Article 25(1)(b) of Regulation No 6/2002 alleging that the contested designs do not comply with the requirements laid down in Articles 4 to 9 of that regulation.
The intervener contended in particular that the umbrellas covered by the contested designs did not have individual character, because they make the same overall impression on the informed user as a certain number of umbrellas with an identical or similar shape which have been the subject of patents or designs registered and made available to the public prior to the registration of the contested designs. The earlier rights relied on included American patent No 5505221 (‘the earlier patent’), registered on 9 April 1996 and represented as follows: 





On 18 October 2010 the Invalidity Division upheld the intervener’s applications for a declaration of invalidity. It found that the earlier patent had been made available to the public within the meaning of Article 7(1) of Regulation No 6/2002 following its publication on the website of the United States Patent and Trademark Office (USPTO), which site is freely accessible free of charge in all Member States of the European Union. While considering the freedom of the designer in the creation of the contested designs to be limited, the Invalidity Division was of the opinion that, despite the fact that the contested designs were new within the meaning of Article 5(1) of Regulation No 6/2002, they were devoid of individual character within the meaning of Article 6(1) of that regulation. Also according to the Invalidity Division, the overall impression that each of the contested designs and the earlier patent had on the informed user was essentially the same as a result of the straight handles and especially the asymmetrical shape of the canopies which were each supported by eight ribs symmetrically arranged around the tip of the handle. By contrast, the exact spacing and shape of the ribs (straight or curved) was of only minor importance for the informed user, who, furthermore, was not familiar with designs of asymmetrical umbrellas.
On 14 December 2010 the applicant brought an appeal against each of the decisions adopted by the Invalidity Division.
 By decisions dated 26 September 2012 (‘the contested decisions’), the Third Board of Appeal of OHIM dismissed the appeals on the ground that the contested designs did not have distinctive character.
The Board of Appeal considered that the earlier patent could reasonably be known to the circles specialised in the sector concerned within the European Union. First, the site of the USPTO register is accessible free of charge. Secondly, designs are known in the United States as ‘design patents’. Thirdly, it would be unwise on the part of those circles not to check whether prior art already exists in the American register, which is one of the most important registers of intellectual property rights in the world. Finally, the fact that the United States is the most important trading partner of the European Union makes it unlikely that the circles specialised in the sector concerned do not consult the USPTO register.
The Board of Appeal also held that the informed user knows the different designs and the normal characteristics of umbrellas and has a relatively high level of attention.
The freedom of the designer is limited as regards the design of an umbrella. There is, however, some degree of freedom as regards the overall shape and size of an umbrella and a considerable degree of freedom as regards the wide range of possibilities of decorating the canopy of an umbrella with patterns and colours.
As regards the overall impression produced by each of the contested designs, the Board of Appeal held that it was determined principally by the under and lateral sides of the umbrella designs, because while using the umbrella the user will be beneath it and will not see the umbrella from above. Despite his relatively high level of attention, the informed user pays attention to the basic structure and not the details, which moreover do not alter the fact that all the umbrellas covered by the earlier patent and the contested designs produce essentially the same overall impression, in particular because of their unusual appearance, which is elongated, asymmetric and ‘beak-like’, and of the fact that the distribution of the ribs, the proportions of the canopies and the spacing are similar. Finally, the fact that some of the depictions of the contested designs show a black or brown canopy, whereas the earlier patent is a simple diagram, is not a significant difference.
Important considerations:

35      As to the applicant’s argument that the excessive searches to be undertaken would be beyond the financial means of designers and small enterprises, suffice it to note that the applicant has not adduced any factual evidence or argument which is not simply an allegation to the effect that in the present case the circles specialised in the sector concerned are made up only of individual designers and small enterprises which, moreover, as a rule do not have the means to undertake searches to check for the existence of prior art outside the European Union. The applicant in effect merely states that the circles specialised in the sector concerned operating in the European Union do not consist of ‘large companies’. However, the applicant goes on to state that there are ‘a few larger (mainly German, Austrian and Dutch) companies and a lot of small companies or individuals’ and that it is highly unlikely that the latter will browse in the American patent register. Even if that observation were held to be correct, in putting forth that argument the applicant recognises that the ‘few larger companies’ which, in the light of the point made in paragraph 30 above, must be regarded as forming part of the circles specialised in the sector concerned, probably do carry out such searches. Nor has the applicant provided any specific information about the companies operating in the European umbrellas sector. Accordingly, the applicant has once again failed to substantiate its allegations using arguments which are not simply allegations.
36      As to the argument that the umbrella covered by the earlier patent has never been produced — a point not contested, moreover, either by OHIM or the intervener — it is clear that Article 7(1) of Regulation No 6/2002 does not impose any requirement that the earlier design relied on by the opposing party must have been used for the manufacture or marketing of a product.
37      However, the fact that a design has never been incorporated into a product is significant only where the applicant has established that the circles specialised in the sector concerned do not generally consult patent registers or that the circles specialised in the sector concerned do not generally attach any weight to patents, in particular American patents. In such scenarios, the argument that there are no umbrellas covered by the earlier patent on the market may make faintly plausible the fact that the earlier patent may have been known to the circles specialised in the sector concerned through other forms of information. In the present case, the fact that the umbrella designated by the earlier patent has never been produced shows that the earlier patent could not have been known to the circles specialised in the sector concerned through advertising, marketing activities or catalogues. However, that fact does not establish that the circles specialised in the sector concerned could not have reasonably gained that knowledge otherwise, such as through an online search in the American patent register.
38      Lastly, as to the argument put forward by the applicant to the effect that the United States are not the European Union’s principal trading partner in the field of umbrellas, it must be observed that the question whether or not that is the case is not per se decisive for ruling on the question whether the earlier patent could not reasonably be known to the specialised circles. Even if the United States are not the European Union’s principal trading partner in the field of umbrellas, it still seems reasonable that a search might be undertaken in the American patent register, since the United States carries at least a certain commercial importance for the circles specialised in that sector operating in the European Union. As the applicant has failed to adduce evidence showing that that market plays only a very minor role in the normal course of business for the circles specialised in the sector concerned, its argument is irrelevant for the outcome of the present dispute.
39      In the light of all the foregoing, the conclusion is therefore that the applicant has failed to establish sufficiently that the circumstances of the present case prevented the circles specialised in the sector concerned from learning of the publication of the earlier patent on the USPTO website and thereby learn of the patent. Accordingly, the Board of Appeal did not err in finding that the earlier patent had been made available within the meaning of Article 7(1) of Regulation No 6/2002. The first plea in law relied on by the applicant must therefore be rejected in its entirety.
 Court observes, first, that the Board of Appeal, in paragraph 29 of each of the contested decisions, found only that ‘[d]ifferences between the umbrellas … also depend on aerodynamic considerations rather than pure aesthetic design’. Nor did it examine to what extent the features of the appearance of the contested designs were ‘solely’ dictated by their function.
101    The Court also observes that Regulation No 6/2002 does not provide for a limitation of protection for designs and those of their features which (also) fulfil a technical function. It is only when one or more features of a product’s appearance are dictated solely by its technical function that that regulation provides that such a feature must not be taken into account for the purposes of such an assessment of individual character. The Board of Appeal therefore erred in attaching only limited importance to the features which also resulted from the wind-resistance function of the umbrellas covered by the contested designs for the purpose of assessing the individual character of those designs.
102    It follows from all the foregoing that the Board of Appeal erred in concluding that the contested designs do not have individual character. The applicant’s second plea is therefore admissible. The action must therefore be upheld and the contested decision annulled.

zondag 17 mei 2015

Advertising for fake/counterfeit Barcelona and Wassily chairs is infringement of distribution copyright in the EU, Dimensione Direct Sales srl and Michele Labianca v Knoll International SpA, C-516/13.

The EU Copyright distribution right also entails advertising fake copyright protected works and its originals

Since the judgment of the Court of the EU in Peek & Cloppenburg (C‑456/06, EU:C:2008:232, paragraphs 33, 36 and 41) - which concerned the option of using reproductions of a protected work, that the concept of distribution to the public of the original of a work or a copy thereof, for the purpose of Article 4(1) of Directive 2001/29, entails a transfer of the ownership of that object- the question was whether the sole advertising of fake, copyright infringing products in the territory of the EU Member State in which the (original) work is protected to consumers located in that territory are invited to acquire ownership of the original or a copy of that work falls under the distribution right of the copyright ownwer as set out in Article 4 (1) of Directive 2001/29/EC.

That question has now been answered in Dimensione Direct Sales srl and Michele Labianca v Knoll International SpA, C-516/13. : the right of distribution to the public of a copyright protected work also entails the right to forbid advertising of fake copyright protected works (even in case the work advertised is not copyrigh protected in the country where the actual purchase of the product takes place. The complete text of the judgment can be found here


This case is an absolute victory for copyright owners.

Contents of the ECJ EU Case Direct Sales srl and Michele Labianca v Knoll International SpA, C-516/13 in short: Reference for a preliminary ruling — Copyright — Directive 2001/29/EC — Article 4(1) — Distribution right – Concept of ‘distribution to the public’ — Offer for sale and advertising by a trader of a Member State on its website, by direct mail and in the press in another Member State — Reproductions of protected furniture for sale without the consent of the holder of the exclusive distribution right — Offer or advertising not leading to the purchase of the original or copies of a protected work.

 History of the case
 In 2005 and 2006, Dimensione advertised furniture similar to the protected designs on its website, which is available in German, and in various German daily newspapers and magazines and in an advertising brochure, stating as follows: 

‘Buy your furniture from Italy, but pay nothing until collection or delivery by a forwarding agent authorised to take payment (service arranged on request).’ 

Since it believed that the items of furniture offered for sale by Dimensione were imitations or counterfeit versions of the protected designs, Knoll brought an action against Dimensione and Mr Labianca before the Landgericht Hamburg (Regional Court, Hamburg) seeking an order prohibiting them from offering that furniture for sale in Germany. In support of its action, Knoll submitted that those items of furniture are protected under copyright law as works of applied art. In its view, by advertising copies of the protected designs in Germany, Dimensione infringed its rights and those of its parent company under Paragraph 17(1) of the Law on copyright and related rights of 9 September 1965, as amended. 


The Landgericht Hamburg granted Knoll’s application. The Hanseatisches Oberlandesgericht Hamburg (Higher Regional Court, Hamburg), ruling on the appeal brought by Dimensione and by Mr Labianca, upheld the judgment given at first instance. Dimensione and Mr Labianca then brought an appeal on a point of law (‘Revision’) before the Bundesgerichtshof (the referring court).


  Questions asked by the German Court (referring court) to the European Court of Justice:


‘1.      Does the distribution right under Article 4(1) of Directive 2001/29 include the right to offer the original or copies of the work to the public for sale?
If the first question is to be answered in the affirmative:
2.      Does the right to offer the original or copies of the work to the public for sale include not only contractual offers, but also advertising measures?
3.      Is the distribution right infringed even if no purchase of the original or copies of the work takes place on the basis of the offer?’



Legal context
 International law
3        On 20 December 1996 the World Intellectual Property Organisation (WIPO) adopted in Geneva the WIPO Copyright Treaty (‘CT’), which was approved on behalf of the Community by Council Decision 2000/278/EC of 16 March 2000 (OJ 2000 L 89, p. 6). 

4        Article 6 of the CT, headed ‘Right of distribution’, provides, in paragraph 1:
‘Authors of literary and artistic works shall enjoy the exclusive right of authorising the making available to the public of the original and copies of their works through sale or other transfer of ownership.’
 EU law

5        Recitals 9 to 11 and 28 in the preamble to Directive 2001/29 state:
‘(9)      Any harmonisation of copyright and related rights must take as a basis a high level of protection, since such rights are crucial to intellectual creation. …
(10)      If authors or performers are to continue their creative and artistic work, they have to receive an appropriate reward for the use of their work. …
(11)      A rigorous, effective system for the protection of copyright and related rights is one of the main ways of ensuring that European cultural creativity and production receive the necessary resources and of safeguarding the independence and dignity of artistic creators and performers.
...
(28)      Copyright protection under this Directive includes the exclusive right to control distribution of the work incorporated in a tangible article. The first sale in the [European Union] of the original of a work or copies thereof by the rightholder or with his consent exhausts the right to control resale of that object in the [European Union]. …’

6        Article 4 of that directive, entitled ‘Distribution right’, provides:
‘1. Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.
2. The distribution right shall not be exhausted within the [European Union] in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the [European Union] of that object is made by the rightholder or with his consent.’
 German law

7        In accordance with Paragraph 15(1)(2) of the Law on copyright and related rights (Gesetz über Urheberrecht und verwandte Schutzrechte — Urheberrechtsgesetz) of 9 September 1965 (BGBl. 1965 I, p. 1273), the author is to have the exclusive right to exploit his work in material form. That right is to include in particular the right of distribution.

8        Paragraph 17(1) of that Law, as amended, provides:
‘The right of distribution is the right to offer to the public or to put into circulation the original or copies of the work.
...’

Conclusion
31      There may be an infringement of the exclusive distribution right, under Article 4(1) of Directive 2001/29, where a trader, who does not hold the copyright, sells protected works or copies thereof and addresses an advertisement, through its website, by direct mail or in the press, to consumers located in the territory of the Member State in which those works are protected in order to invite them to purchase it. 

32      It follows from that conclusion that it is irrelevant, for a finding of an infringement of the distribution right, that such advertising is not followed by the transfer of ownership of the protected work or a copy thereof to the purchaser.

33      Indeed, although it is true that the Court has held, in its judgment in Peek & Cloppenburg (C‑456/06, EU:C:2008:232, paragraphs 33, 36 and 41), which concerned the option of using reproductions of a protected work, that the concept of distribution to the public of the original of a work or a copy thereof, for the purpose of Article 4(1) of Directive 2001/29, entails a transfer of the ownership of that object, the fact remains that an infringement of the distribution right can be observed where consumers located in the territory of the Member State in which that work is protected are invited, by targeted advertising, to acquire ownership of the original or a copy of that work.

34      That interpretation is consistent with the objectives of that directive set out in recitals 9 to 11, which state that the harmonisation of copyright must take as a basis a high level of protection, that authors have to receive an appropriate reward for the use of their work and that the system for the protection of copyright must be rigorous and effective (see judgment in Peek & Cloppenburg, C‑456/06, EU:C:2008:232, paragraph 37).

35      In the light of the foregoing considerations, the answer to the questions referred is that Article 4(1) of Directive 2001/29 must be interpreted as meaning that it allows a holder of an exclusive right to distribute a protected work to prevent an offer for sale or a targeted advertisement of the original or a copy of that work, even if it is not established that that advertisement gave rise to the purchase of the protected work by an EU buyer, in so far as that that advertisement invites consumers of the Member State in which that work is protected by copyright to purchase it.