Over the first half year, we have covered a number of high profile cases heard before the General Court (GC) and the European Court of Justice (CJEU). Here’s a quick roundup of the cases with a takeaway summary for each:
Preliminary ruling on designs which are solely dictated by technical functions
“The court considered the appearance of a product to be the decisive factor for a design, despite the fact that it is not essential to have an aesthetic aspect for design protection.”
Read the post here
C-163/16 – Louboutin “red sole” case
“In summary, other properties of the sign – such as the colour – may have an important impact on trade marks in that the trade mark no longer “exclusively” consists of the shape, and hence does not fall foul of Article 3(1)(e) of Directive 2008/95/C.”
We first covered the Advocate General’s second opinion here and followed up with an update on the CJEU judgement here.
CJEU confirms that unitary evidence can show acquired distinctiveness throughout the whole of the European Union
“The CJEU judgment clearly upholds the principle of extrapolation of evidence and is good news for trade mark owners. It is now clear that EUTM owners trying to show acquired distinctiveness are not expected, as a matter of a box ticking exercise, to assume a disproportionate and entirely artificial exercise of evidence collection for each and every Member State.”
Read the post here
A second market for “used” e-books – CJEU will decide
“Incidentally, this is not the first time that e-books have occupied the CJEU. On 10 November 2016, the European Court of Justice ruled on the rental of e-books (C-174/15). The court stated that the rules for the lending of e-books are the same as for the lending of physical copies – provided the lending conditions are comparable to those of physical books.”
Read the post here
Don’t judge substantiation by its cover: CJEU clarifies benchmark for EUTM oppositions
This new rule clarifies that the opponent has to submit some evidence as to the content of the particular provision. It is not entirely clear what “publications of the relevant provisions” means… The Court’s decision is a helpful guidance as there will still be a high number of cases from the past to which the reformed law will not be applicable. For the older cases it is sufficient to make a clear reference to the national provisions as well as to explain the application and scope of them in the individual case.
Read the post here
We will keep the feed going on GC and CJEU cases so watch this space!
We are running a series of webinars to help you stay up to date with Intellectual Property news and developments in the Asia Pacific region. So far we have held webinars on the areas listed below. If you were unable to attend live, the recorded version of these webinars can be accessed at the sign-up links:
- Parallel imports: Good, bad or ugly? – Recording
- Trademark litigation in Asia: strategies that can pave your way to success – Recording
- Creatively combatting counterfeiting and piracy with robust strategies – Recording
- Protecting your identity in the cyberworld – Recording
- Trademarks – Everything you always wanted to know about but were afraid to ask – Recording
Watch this space for upcoming topics.
For further information on IP topics in Asia, please visit our free LimeGreen IP know-how platform
Join us on 16 or 21 August for the fourth in our LimeGreen Live webinar series in conjunction with the Hogan Lovells Consumer Industry Sector Group.
This webinar will explore the IP opportunities and risks for businesses operating in, or looking to enter the wearable technology market. Our presenters will discuss the lifecycle of a wearable technology product, from building or acquiring an IP portfolio, branding considerations and new types of legal risks relating to SEPs, to commercializing your technology through the use of data.
Our transatlantic team, including lawyers from London, San Francisco and Northern Virginia, will cover the patent, trademarks and transactional considerations in each session.
Click here to register for this webinar or contact Joshua Prietzel for more information.
Session 1: 16 August 2018
- 09.00 PDT
- 12.00 EDT
- 17.00 BST
- 18.00 CEST
Session 2: 21 August 2018
- 09.00 BST
- 10.00 CEST
- 16.00 China Standard Time
- 17.00 JST
Background: Wearable technology is quickly becoming integrated into everyday life. The applications are limitless, from smart watches and glasses, to wearable healthcare devices, there are very few corners of society it won’t reach. At the convergence of fashion and technology, IP is at the heart of these devices, and success in this rapidly developing market is reliant on an effective strategy to protect its fundamental assets.
LimeGreen Live – Our LimeGreen Live series of webinars provide further insight into some of the topics covered in our Global Intellectual Property Outlook 2018. Please register your interest in further LimeGreen Live webinars here.
Nobody likes to think about crisis management, and more often than not, businesses aren’t prepared to respond effectively when a disaster strikes. A poorly managed crisis can have a huge impact on your brand’s reputation, so planning for one is crucial. A tried and tested methodology will put you in the best position to approach the situation strategically and enable you to coordinate an ordered response that protects your brand. The rise of social media means that getting in front of the story is more important than ever.
In Episode Four of our Total Brand Care series, Mark Irion (Head of Strategic Communications, Washington, D.C.), talks to James Nurton about the importance of creating a response strategy that engages legal, communications and operational departments, and the five basic principles that you should follow when facing a brand crisis to minimize damage to your brand.
Watch the interview here
You can find out more about our Total Brand Care offering on our website.
Our international tax, corporate and intellectual property partners will hold seminars in Hong Kong (3 Sept.), Shanghai (4 Sept.) and Beijing (5 Sept.), with lively discussion on the monetization of your intellectual property (IP) in the context of M&A transactions.
While IP makes up a high percentage of Enterprise Value (if not the majority in some industries!), it is often not given the appropriate level of consideration in an M&A transaction. The issues of economic vs. legal ownership, effectiveness of provisions in licenses and assignments to protect brand equity, importance of IP due diligence in acquisitions, valuation of IP assets in relation to transfer pricing rules, etc., only gets a fraction of attention while it can significantly impact business strategies.
During this seminar, our speakers from the U.S., Germany, China and Hong Kong will take you through the most pressing issues and current topics surrounding IP strategy and planning in the context of M&A transactions including:
- Journey from west to east: IP transaction case study
- Impact of GDPR on IP and IP transactions in Asia – key considerations when drafting agreements
- What you don’t know about trade secrets may hurt you
- Transfer pricing for IP and other intangible assets – optimizing your transaction structuring and benefitting from tax and innovation incentives
We look forward to seeing you there. Please access venues, speakers, schedules and registration information at the links below.
Hong Kong, 3 September: Click here
Shanghai, 4 September: Click here
Beijing, 5 September: Click here
This is, in essence, the fundamental question that has been submitted to the CJEU in the case C-310/17 (Levola Hengelo v. Smile Foods). The opinion of Advocate General Wathelet (read it here, no English version yet) released on 25 July 2018 is that the taste of food (in this case of cheese) is not protectable as a copyright work. Whilst the Advocate General’s conclusions are not surprising his reasoning raises questions about the meaning of a “work” under EU copyright law in general. It also remains to be seen whether the CJEU will follow the Advocate General’s opinion.
The Heks’nkaas is a cream cheese spread with fresh cream and herbs. Levola, the maker of the cheese, claims that Smilde, through its Witte Wievenkaas, has copied the taste of the Heks’nkaas and thereby infringed its copyright. The complaint was first filed before the Gelderland tribunal (Netherlands), which dismissed the case due to lack of originality and personal character of the taste (read the ruling in Dutch here). An appeal was made before the Gerechtshof Arnhem-Leeuwarden, which in turn requested a preliminary ruling of the CJEU on the following questions:
- Can the taste of a food product, as the intellectual creation of its author, be granted copyright protection?
- What can be understood as a literary and artistic work under Article 2(1) of the Bern Convention? Do the enumerated examples de facto limit the scope of the provision to works that can be seen and heard?
- Do the potential instability of a food product and the subjective character of a taste preclude a food product from being protected by copyright?
- Is the system of exclusive rights and restrictions provided by the Articles 2 to 5 of the InfoSoc Directive 2001/29 applicable to the taste of a food product?
The AG’s opinion Continue Reading
Ever since the European Court of Justice (CJEU) in its highly regarded UsedSoft ruling declared the resale of “used” software admissible (dated 3 July 2012, C-128/11), the discussion has persistently centered around the question whether the idea of the so-called exhaustion, upon which UsedSoft is essentially based, could or should be extended to other digital content – such as e-books. The principle of exhaustion states that the resale of works or copies thereof within the European Economic Area (EEA) is permitted without the consent of the rights holder, provided that the work or a copy was first placed on the market within the EEA with the consent of the rights holder. However, in copyright law, this principle is basically linked to the distribution of physical objects and not to the downloading of data packages. As a result, the physical book has been treated differently from its electronic counterpart until today. The CJEU must now clarify in a current preliminary proceeding whether this will continue to be the case in the future (C-263/18 – Tom Kabinet).
The average reader will not be aware of the legal differences between purchasing a physical book and downloading an e-book. However, a physical book and an e-book are treated differently under EU copyright law. The reason for the unequal legal treatment lies in one of the fundamental principles of European copyright law, the principle of exhaustion regulated in Article 4(2) of the InfoSoc Directive 2001/29. According to the principle, the rights to a work or its copies “exhaust” as soon as the first distribution in the EEA has taken place by the right holder or with his consent. The principle of exhaustion ties is linked to right of distribution as laid down in Article 4(1) of the InfoSoc Directive. This right is primarily concerned with the distribution of physical works and not with making digital content publicly available via the Internet.
In recent years, various courts have already dealt with the subject matter and – consequently in light of the existing legal situation – have denied the applicability of the principle of exhaustion to e-books (see our German blog post). Only in case of computer programs have, the courts have taken adifferent approach. This is because they are subject to the special provision of Article 4(2) of the Software Directive (which does not apply to other copyright works).
In a recent case, the Dutch bank in The Hague must now decide whether the online marketplace Tom Kabinet, which specializes in the resale of used e-books, is liable for copyright infringement by authors and publishers. Once again, the principle of exhaustion is at the center of the dispute. The Court recently suspended the proceedings and referred a number of questions to the CJEU.
The questions submitted Continue Reading
“The UK Intellectual Property Office is wary, designers are worried, and the EU is embracing the tech.”
In this Intellectual Property Magazine July/August article, Stella Wong examines the awkward relationship between 3D printing and IP. Issues discussed include:
- Opportunities in the consumer and life sciences industries (such as customised toys, or better tolerated medicines)
- Infringement challenges – 3D printers can be seen as sophisticated copying machines that facilitate the manufacture of counterfeit and IP infringing goods
- Existing laws v 3D printing
Access the full article here
For more information, visit our 3D Printing topic center
Anti-competitive behaviour can impact a brand in many ways. Restricting competition will lead to significant financial penalties, which will affect the brand-owner very directly. But beyond the financial risks, many things associated with competition law violations are viewed by consumers as something extremely negative, which impacts on the reputation of the brand, as well as having longer term effects on its value. It can take a long time to restore your brand’s reputation and rebuild consumer trust.
In Episode Three of our Total Brand Care series, Christopher Thomas (Partner, Brussels) talks to James Nurton about the evolving world of competition law in the digital age, and the new challenges that big data and automation bring to brand owners.
Watch the full clip here.
You can find out more about our Total Brand Care offering on our website.
In the context of the KitKat shape mark saga, in Société des produits Nestlé SA v Mondelez UK Holdings & Services Ltd and another (Joined Cases C-84/17 P, C-85/17 P and C-95/17 P), the CJEU provided significant guidance on the evidence required to prove acquired distinctiveness throughout the EU.
The Court confirmed that where a mark is devoid of inherent distinctive character throughout the EU, it is not sufficient to prove that the mark has acquired distinctive character through use in a significant part of the EU. In view of the unitary character of the EUTM, the CJEU, predictably, confirmed that the trade mark owner must show that the mark at issue has acquired distinctiveness throughout the entire EU.
However, the decision makes clear that this does not mean (as some commentators have predicted) that the trade mark owner must adduce separate evidence for each and every Member State. The CJEU sided entirely with the Opinion of Advocate General Wathelet, and confirmed that the unitary evidence provided can be relevant with regard to several Member States, or even to the whole of the European Union.
The CJEU confirms that the same evidence, for example, can be relied on for several Member States in circumstances where the trade mark owner has grouped several Member States together in the same distribution network and has treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second.
The CJEU judgment clearly upholds the principle of extrapolation of evidence and is good news for trade mark owners. It is now clear that EUTM owners trying to show acquired distinctiveness are not expected, as a matter of a box ticking exercise, to assume a disproportionate and entirely artificial exercise of evidence collection for each and every Member State. Where, due to market proximity or other reasons, the same evidence can indicate acquired distinctiveness in a number of Member States, there is nothing to preclude the relevant authority from taking such evidence into account. Instead market realities must be considered when judging the evidence as a whole.
However, when relying on such unitary evidence for showing acquired distinctiveness in several Member States (or even the entire EU), trade mark owners are well advised to explain clearly why this evidence is capable of establishing such acquisition throughout the relevant Member States.