For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 1 September 2015

Even regulations have a heart -- Italian court on moral rights in legal texts

Giovanni Casucci
From fellow IPKat contributor Alberto Bellan comes a moving story about EVERYTHING that matters, ie copyright, love, and Italy (of course).

Here's what Alberto writes:

"Law students are usually told that one of the major differences between common law copyright and continental diritto d'autore [why not? Let’s use the Italian phrase] lies on a different threshold of originality. Under this approach, UK copyright would protect almost anything that comes out from a human's brow with a bit of sweat. By contrast, the French-derived systems would require a higher degree of creativity and would allow only true artistic works embedding the author's personality to get protection under their diritto d'autore regimes. While the Court of Justice of the European Union has been fully gradually harmonising those positions, an avant-garde decision of the Court of Venice has just acknowledged moral rights in a pretty-far-from-what-is-normally-considered-art text, ie an anti-counterfeiting regulation.

The claimant in that case was Mr Giovanni Casucci, a very-well known Italian IP lawyer and teacher leading the Bardhele Pagenberg practice in Italy. In 2003 Mr Casucci created an anti-counterfeiting service to be used during fairs as a quick and almost-free-of-charge alternative to judicial enforcement. That service, which he provided along with other professionals, was based on a set of rules (the ‘Regulation’) allowing exhibitors and third parties to obtain seizures, evidence acquisition and, in certain cases, the closure of stands hosting infringing products within a few hours. Companies attending the fairs where the Regulation was in force were bound to it and the orders of those who operated the service under a specific clause included in the relevant fair agreement.

(Almost) never for money,
always for love
In January 2011 Mr Casucci discovered that the Fiera di Vicenza, ahead of the Vicenza Oro T-Gold First exhibition, had started using his own Regulation without his permission. The Fiera di Vicenza had received the Regulation from another Italian colleague of Mr Casucci, who had been so kind to almost-entirely copy the Regulation's set of rules without its author's consent and, most importantly, without attribution. Mr Casucci brought proceedings against Fiera di Vicenza and that other lawyer, claiming moral rights infringement. Both defendants alleged, among other things, that the Regulation was just a set of provisions utterly devoid of creative and artistic character -- "originality", they said. As it did not reflect Mr Casucci's personality, the defendants argued, it would have not presented the minimum degree of originality provided by Italian law to access diritto d'autore protection.

The Court of Venice, though, strongly disagreed with the defendants. "In order to receive protection under moral rights provided by Italian Copyright Law", the Court said echoing the Court of Justice of the European Union in Infopaq and its progeny, it is just necessary for a work to be "the author’s own intellectual creation", meaning that, "the work must be 'creative' in the sense of new [new? Well, that’s a pretty free adaptation of the Infopaq language …] and original: it has to reflect the author’s personal and individual contribution as a result of a processing presenting a sufficient additional value as compared with the situation existing before the creation itself".

You do not need to be Giovanni Bellini to have your work protected by diritto d'autore in continental countries -- or, at least, in Venice: "the degree of originality and novelty can be modest (the creativity can’t be excluded just because the creation lies in simple ideas and notions)", the Court said, "and also a legal creation such as an anti-counterfeiting Regulation … can be protected under the Diritto D'Autore Law", the latter protecting all and any "work of sciences or art in general, also on consideration of the open and merely illustrative protectable works' list provided by Art 2, Italian Diritto D'Autore Law".

Isn't it pure poetry?
The Court also found that, in the case of Mr Casucci's Regulation, the work at hand was new and creative (read: "original") enough to access to the Diritto D'Autore protection, there being a bit of Mr Casucci's heart in it: "The Regulation does not appear to be a merely necessitated list of rules and procedures. Rather, it represents a specific expression of provisions designed to implement an anti-counterfeiting service within the scope designed by current laws in the IP field and according to Mr Casucci's professional experience in this field. As a result, the outcome is a series of personal, original, new and creative set of rules [deriving from] Mr Casucci's experience", whose originality also lies on "the way in which those provisions are organised and mixed within the author's own particular expression form".

Accordingly, the Court of Venice established that both Fiera di Verona and the lawyer who had copied Mr Casucci's Regulation had infringed his moral rights in the Regulation, and ordered the lawyer to pay a symbolic compensation to Mr Casucci and publish the decision on a number of Italian newspapers.

This decision is plenty of good news. Firstly, the Court of Venice's approach appears to faultlessly bring (or bring back) copyright to its own truly function: protecting people's literary works, whatever field of the human literature works belong to. Secondly, although some differences still exist between the two paradigms of copyright/diritto d'autore, those differences could be easier to overcome than many think – to be noted in view of a possible, proper European harmonisation not only through case law. Eventually, although lawyers' social perception might not be that good, it is with great relief that one learns that at least someone considers those within the legal profession as comparable to artists. I've always wanted to be a poet. I've almost made it.” 

Lack of originality, slogan similarity and the Greek elections


The snap Greek elections, which have been called for 20 September, did not seem to have taken anyone by surprise, with exception of the "creative" branches of... the two larger political parties in Greece. How so? It appears that in a rush to make their mark and put their slogans in everyone's mouth the incumbent SYRIZA party and the main opposition party NEA DIMOKRATIA (or New Democracy) managed to get themselves caught up in a mark - slogan row over Greek word "ΜΠΡΟΣΤΑ" (BROSTA), which means forward.

New Democracy leader and his slogan
It seems that New Democracy first occupied the spot by using the mark - slogan "Η ΕΛΛΑΔΑ ΜΠΡΟΣΤΑ" (I ELLADA BROSTA), i.e., "Greece forward". Accordingly, when a few days later, SYRIZA leader Alexis Tsipras spoke in a party event, with the words "ΜΟΝΟ ΜΠΡΟΣΤΑ" (MONO BROSTA), i.e., "Only forward", appearing on his back, New Democracy complained over copying of its campaign.

This GreeKat would sympathize more with the opposition campaign team, if he thought there is any originality in using "forward" in political campaigns. In the rather frustrated status he has found himself into, he also thinks that if any of the two slogans was ever filed as a trade mark, it should be rejected not so much as lacking distinctiveness, but primarily as being misleading... just a(n angry) thought.  
... and SYRIZA leader with his version

To be fair, it is not the first time SYRIZA had a mix up with campaign slogans. A short 8 months ago, on January 2015, during the previous election campaign, it had initiated the campaign with "ΤΟ ΜΕΛΛΟΝ ΞΕΚΙΝΗΣΕ" (The future has started), which was quickly replaced by "Η ΕΛΠΙΔΑ ΕΡΧΕΤΑΙ" (Hope is coming). The reason was that the party's initial choice had already been used by Socialists PASOK in their 2000 election campaign.
The January 'comparative' pic as appearing in iefimerida.com












This GreeKat would also have preferred if IP truly attracted the spotlight in Greek elections, as he feels it is a key throttle for innovation and growth, which in turn is paramount to addressing the Greek crisis. Alas, he fears he stands for another disappointment. At least, there is a bit of fun with political parties logos and slogans.

Monday, 31 August 2015

Letter from Japan 3: Copyright and industrial design: trapped in the Tripp Trapp ...

Here's the third in the series of occasional guest posts from Japan from one-time guest Kat and Class 46 trade mark blogger Laetitia Lagarde.  Laetitia's first post, on product placement, can be read here. and her second post, covering non-traditional marks, is here.  Now she looks at the copyright/design interface:

Copyright does not enjoy the same degree of harmonization throughout EU as trade mark and design laws do;  the intersection of these rights is nonetheless very common and a product's protection can  fall within one or more IP right category.

At the EU level, the interaction between copyright and design is found in Article 17 of the Designs Directive 98/71, “Relationship to copyright":

"A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State”.

As a result, the cumulative protection by both copyright and design laws differs greatly among the EU countries according to their standard of originality  —which is higher than the requirements of “individual character” for design protection.

For example, France and Benelux Countries have recognized the principle of “unité de l’art,” meaning that copyright protection for both applied art and industrial works shall be determined under the same criteria. However Germany has a very high threshold which excludes most designs from copyright protection; the UK requires a level of "artistic craftsmanship"; and Italy only protects designs which can be separated from the product to which they are applied (the principle of "scindibilita").

This Kat remembers fondly her previous home jurisdiction’s internal conflict, yet passionate debate (in the case of Italy, the word “passionate” is something of an inderstatement) about protecting luxury furniture designs; this caused a delay in implementing the EU directive which granted design, prototypes and patents for, among others, furniture and home accessories the same copyright protection as other artistic works. (see here). The underlying reasons for trying to exclude this double protection were not only to avoid copyright protection continuing after the lapse of registered rights, but also to encourage design registration.

Now turning to Japan, the majority of court precedents have ruled implicitly or explicitly that copyright is not denied by the mere fact that a work is an industrial product. The Design Act protects exclusively registered designs defined as “the shape, patterns or colours, or any combination of them, of an article which creates an aesthetic impression through the eye” as long as it does not fall under the category of unregistrable designs. The Copyright Act explicitly states that works of artistic craftsmanship are protected as artistic works. However, there are no provisions governing other types of industrial products (works of applied art). Therefore a decision on whether a certain product is protected is a matter of interpretation.  Court decisions basically recognize it is not appropriate to grant the same level of copyright protection to industrial products as in the case of fine arts. Accordingly copyright protection is granted to an industrial product only if it is “deemed comparable to fine arts or it has the qualities of fine arts”. In practice, only a very limited number of industrial products can satisfy the requirements for copyright protection. 
A decision on whether “it is deemed comparable to fine arts” or “it has the qualities of fine arts” is made on the basis of (1) whether the work has a high level of aesthetic expression or artistic qualities; (2) whether it is produced only in pursuit of aesthetic expression, (3) without substantial restrictions for practical purposes; and (4) whether it can serve as an object of art, or a complete artistic work, apart from its functionality.

Tripp Trapp
With that background, the IP High Court of Japan recently issued a Judgment (Stokke v Katoji, Intellectual Property High Court, April 14, 2015, Hei 26 (ne) No. 10063) which recognized the copyright in an industrial design, namely for the TRIPP TRAPP children’s chair (Stokke has known some IP trials and tribulations for the same chair in Europe, see here). The High Court reversed the lower court Judgment of the Tokyo District Court (here), which denied copyright protection for industrial designs, in particular 3D designs. The Appeal Court held that “there is no reasonable reason to limit a finding of copyright protection for applied arts on the ground of a protection by Design Law”, thereby considerably lowering the threshold for copyright protection for applied arts where a finding of originality under the Copyright Act would be sufficient.

Katoji NewYorkBaby
In conclusion however, the Stokke decision denied copyright infringement because the Katoji products were not similar to those of TRIPP TRAPP. This recent Tokyo Court decision thus allows copyright holders to sue for copyright infringement even in the absence of design registration under the Design Law. This will facilitate the enforcement of the Unfair Competition Prevention Act, which prohibits for example the production of slavish copies of a product design for three years from the first sale in Japan. Japanese practitioners are wondering whether Stokke will become a predominant trend for future similar cases.



Stokke AS is also the holder of trade mark rights relating to the chair. The slogan “The chair that grows with the child” has been used in the marketing of the Tripp Trapp chair since the 1980s. Looks like IP rights also grow with the chair in Japan...
Philosophy on designs from Japanese schoolchildren here
Designs for cat trees and chairs  here (some might be worthy of copyright protection)

Monday miscellany

Posting of comments: a new Kat policy. In order to make it easier to follow the discussions and threads of debate which appear in the readers' comments section beneath each blogpost, the IPKat has initiated a new policy -- comment-posters are asked to identify themselves via a pseudonym if they don't want to use their own names, since there are far too many people called "Anonymous" and can be difficult-to-impossible to work out which Anonymous is which.  The new policy comes fully into effect a week from now, on Monday 7 September.  Click here for a fuller explanation.


The IP Factor cometh.  Here's a final reminder that tomorrow, Tuesday 1 September, fellow IP blogger and patent attorney Michael Factor will be joining sundry friends at The Old Nick, Sandland Street, Holborn for a pleasant chat about ethics and the intellectual property professions. The time: 5 pm till 7 pm.  Michael. incidentally, is over in England to participate in a conference which is being held at St Edmund's College, Cambridge, on 4 to 5 September on "Patents on Life: through the lenses of law, religious faith and social justice".



Getting to the office on a winter morning
can be an invigorating experience ...
Interested in working in economics & IP?  The Kats' friends at the World Intellectual Property Office (WIPO) are in need of some quality company to keep them amused during the long, snowy nights of a Geneva winter.  Accordingly, and having nothing better to do, they are advertising a two-year post of Senior Economist in their Creative Economy section [Merpel is assured that this is not a euphemism for Accounts]. The post holder will focus on copyright and work with Carsten Fink and his team of cool cats [economists and statisticians: well, that figures ...]. The closing date for applications is 25 September.  Since attractive jobs for IP-friendly economists are available for applicants only a little more frequently than the Presidency of FIFA, this Kat expects that there will be many, many applicants.  Merpel assumes that, if the number of applications greatly exceeds the number of positions available, market forces will ensure that this will be reflected in a correspondingly lower salary.  Click here for application details.



Around the weblogs. The 1709 Blog carries an update on last year's Copyright Literacy Survey and subsequent developments -- and on a chance to play Copyright the Card Game. The same blog features John Enser's observations on the next bout of Euro-consultations, these being on the Satellite and Cable Directive, attractively branded "SatCab" (Eleonora's Katpost on SatCab and its possible implications for geoblocking can be found here).  However, pride of place among recent IP blogposts belongs to the must-read piece by Barbara Cookson on SOLO IP entitled "Mis-sold Community Trade Marks": Barbara makes a valid point very well, and this Kat hopes that Europe's judges, legislators and businesses take note of it.

Never too late: if you missed the IPKat last week ...

As the doughty folk of the United Kingdom struggle to get through yet another public holiday, this Kat has every sympathy with all IP enthusiasts in their battle to keep up with the latest news and views from the IP blogosphere. That's why "Never Too Late" has been designed: in just a short number of minutes you can see at a glance what substantive Katposts you missed last week. In the wonderful world of IP there isn't such a thing any more as a quiet week in which nothing happened. 

If you were away last week, or too busy working to check us out, this is what you missed (courtesy of Jeremy together with Alberto Bellan):

Star Wars? It's all Greek, but opposition succeeds in the end

Case T‑521/13 Alpinestars Research Srl v OHIM, Kean Tung Cho and Ling-Yuan Wang Yu is a grand old General Court scrap in which everyone guesses how modern Greek consumers might view a word that orginated from Classical Greek.

Breaking News: PTAB declines Bass hedge fund IPR challenges in Ampyra dispute

The Coalition for Affordable Drugs (brain child of hedge-fund manager Kyle Bass) experiences disappointment as the USPTO opts not to review a couple of big-value pharma patents. The AmeriKat reports.

Rule of Reason curbs Basic Instinct as trade mark loses its appeal

Case C-400/14 P Basic AG Lebensmittelhandel v OHIM),  Repsol YPF SA intervening see the Court of Justice of the European Union dealing with the conflict of two figurative marks containing the word "basic".


BGH: not so fast, look-alike fasteners

Guest Kat Mark guides us through a fascinating German decision on the extent to which so mundane an object as a fastener for attaching electrical installations to walls might be affected by not just IP but the EU's unharmonised unfair competition law.

Armor, Glory and ... religion in a US trade mark clash

From guest Kat Nikos comes this account of the clash of two heavily-armoured brands in the US: Under Armor and Armor & Glory.

Fashion Law and Debates - from Balenciaga to DVF

Katonomist Nicola derives yet more blogging inspiration from her holidays -- but she still takes time out from her holidaying to ask whether the US needs more, or better, legal protection for fashion.

Does the EU want to get rid of geoblocking through a review of the SatCab Directive?

Another piece of bravura blogging from Eleonora, on some potentially unintended consequences of a review of the Satellite and Cable Directive.

Acquired distinctiveness of product shape marks: AG Wathelet does not “rely” on the UK approach – but on what else?

Recently the IPKat hosted a post on the subject of Nestlé's  application to register its chocolate finger shape as a trade mark: has this application been treated to a premature burial, he asked. That post's thrust has been bolstered by this guest post by Thomas Farkas.

Posting comments on the IPKat: a new policy

Don't go on and on being anon, the Kats say: people struggle to work out who you are. But you can still post comments in disguise ...

******************
SPECIAL SINGAPORE GFIP
 * “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report INeil provides this series of reports from the Global Forum on Intellectual Property 2015 (GFIP), hosted in Singapore by the Intellectual Property Office of Singapore and the Singapore IP Academy. The event’s theme was “Simple Past, Present Continuous…Future Perfect?” In the first plenary session, the focus was on the evolving architecture of the global IP system and the influence of national IP systems, along with the tension between the territoriality of IP rights and the global scope of IP exploitation. 
 
 * “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IIThe second plenary session was devoted to the topic of ASEAN Economic Integration 2015 - Opportunities, Interoperability and Synergies in IP. ASEAN is a political and economic organization consisting of 10 member states—Singapore, Indonesia, the Philippines, Malaysia, Thailand, Brunei, Cambodia, Laos, Vietnam and Myanmar. It really is a big deal, says Neil. 
 * “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IIIThe second day of the programme moved from discussions on national, regional and international aspects of IP to a consideration of two main pillars of IP practice—the courts and the creation of value from IP. First came the courts … 
 * “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report IV…  and then a session entitled “IP Value Creation—Strategies for the 21st Century”. 

* “Simple Past, Present Continuous…Future Perfect?” GFIP Conference Report VTrade secrets and copyrights came under scrutiny here, not to mention a note on the contribution made to this event by another Kat, our very own Eleonora.
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PREVIOUSLY, ON NEVER TOO LATE 

Never too late 60 [week ending on Sunday 23 August] - Test-drive of the Unitary Patent Court, Parts V and VI |From food porn to porn with food: passion with Parmesan | USPTO Guidelines on patent eligibility | Red Bull fends off Crazy Bull in Greece | Biker Biker Biker Gang! Another offbeat look at IP from Katonomist Nicola | How to pay damages for a perfectly lawful customs seizure | Dallas Buyers Club copyright demands rejected in Australia
Never too late 59 [week ending on Sunday 16 August] - Fundamental deficiency in an EPO decision need not be a problem |Benedict Cumberbatch versus admiring audience | Emma Perot on graffiti as dress art | Location of London's division of the UPC | Cool, confident and healthy: Katonomy meets Jawbone and Fitbit |Planning permission and that London UPC venue |Partial priority and poisonous provisionals: questions for EPO Enlarged Board |Target TM parody in Australia | IP threats in the UK | Traditional knowledge and Nagoya | From Google to Alphabet | Co-branding and multiple brands.
Never too late 58 [week ending on Sunday 9 August] -  Teva UK Ltd & Another v Leo Pharma A/S | Traditional Knowledge Digital Library | Governance of the EPO Boards of Appeal |Atelier Eighty Two Limited v Kilnworx and ownership of copyright in logos | Productivity at the EPO | The Lone Inventor: a Katonomist report | Bradman Foundation v Sir Don's family| IP Inclusive |Michael Jordan in China | Stage fright and performances | Lookalikes and inactivity | Taking unfair advantage of exceptions to copyright infringement | Great Bake Off parody goes off-air.

Never too late 57 [week ending on Sunday 2 August] - French Law on out-of-print works | Swiss rule on delivery of scientific documents | Post-expiry patent royalties in the US | Confusingly similar wet-wipe packaging | Copyright infringement and Twitter jokes | Permission to link? | Criminalisation of IP and economics | Keeping count of blocked websites in the UK |Birkin Bags | Patentability of user interface designs in Germany |Smith & Nephew v ConvaTec | Report on IPEC litigation |does Twitter have a future? | New books on cyberespionage and patenting of life forms. 

Sunday, 30 August 2015

Posting comments on the IPKat: a new policy

Disguise is fine ...
A few months ago, when Merpel's blogposts on the goings-on at the European Patent Office attracted a large number of comments, she instituted a rule that readers' comments would only be moderated if they were posted in the name of their author or under a pseudonym.  This was not an attempt to discourage comments: the idea was to make it easier for readers to follow strings of discussion between comment-posters.  Since the number of comments on a blogpost can easily exceed 100 (for example the Katpost on 13 August on partial priority of patent applications which has already notched up 120), task of identifying the same comment-poster as the source of all his or her comments is arduous if they can only be identified as "Anonymous of 09:53" or suchlike.  However, it is much easier to follow and participate in a discussion if the comments are posted under real names or pseudonyms like "MaxDrei", "Meldrew", "US Anon" or "Proof of the Pudding".

... if you can still be identified
The "real name or pseudonym" rule has worked so well for the limited number of blogposts for which it was imposed that the IPKat and Merpel have decided to extend it to all blogposts. Please therefore be sure to mention your real name or a pseudonym when posting a comment. Failure to do so will result in your comment not being accepted by the moderator. Since most readers won't be used to this rule, the IPKat and Merpel will be making it binding only with effect from next Monday, 7 September. But do practise getting it right in the meantime.  This notice will be repeated a few times over the coming week, for those who either read the blog infrequently or have poor memories ...

Thanks for your cooperation -- and for your comments!

Acquired distinctiveness of product shape marks: AG Wathelet does not “rely” on the UK approach – but on what else?

Not so very long ago the IPKat hosted this guest post from Roland Mallinson on the subject of Nestlé's  application to register its chocolate finger shape as a trade mark: has this application been treated to a premature burial, he asked.  While it's fair to say that Roland's view is still a minority one, his conclusion has been endorsed by Thomas Farkas, from the Munich office of Wragge Lawrence Graham & Co. In his thoughtful comments which we reproduce below, Thomas adds the following dimensions to this already three-dimensional debate:

Quite a few blogs and newsletters [see eg here, here, here and here] have summarised Advocate General Wathelet's Opinion of 11 June 2015 in Case C-215/14 as indicating that Nestlé's unbranded KitKat finger shape (right) will not be registrable as a trade mark in the UK for lack of proof of acquired distinctiveness. But this is not what AG Wathelet actually said. The misconception on the side of those blogs is due to the fact that AG Wathelet did not, at least not explicitly, answer the decisive question asked in the referral by the High Court, England and Wales (para 54). The High Court wanted to know whether, in order to establish that a trade mark has acquired distinctive character following the use that had been made of it within the meaning of Article 3(3) of the Trade Mark Directive, 
  1. it was sufficient for the applicant for registration to prove that at the relevant date a significant proportion of the relevant class of persons recognise the mark and associate it with the applicant’s goods in the sense that, if they were to consider who marketed goods bearing that mark, they would identify the applicant;
  2. or if the applicant had to prove that a significant proportion of the relevant class of persons relies upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?
 
Condition 1 is obviously easier to establish than condition 2 since shape marks are hardly ever used without accompanying word- and/or device trade marks that will “also be present”. This is also true for the “Kit Kat” chocolate bar that has been marketed for many decades in a red wrapper with the “Kit Kat” logo. The logo is also embossed on each of the four “chocolate fingers”:
    
Condition 2 sounds odd to trade mark lawyers outside the UK, especially Germany, to say the least. A proof that the average consumer “relies” on the trade mark has never been requested by trade mark instances or civil courts. 
But courts in the UK – as we learn from the referral (paragraph 46 to 48) – hold that it is not sufficient if consumers recognize a product’s source by its shape. Under the UK approach, the requirement is not merely to furnish a demographic survey showing that a majority of persons would attribute the shape of the goods to a single company. 
UK courts have been well aware that it is far from being clear that the “reliance” requirement is in line with the Trade Mark Directive. They had already made two attempts to have the issue clarified by the CJEU by way of referral, namely in the “Viennetta” ice cream shape case (C-7/03) and in Dyson (C-321/03). The CJEU however gave no answer: Viennetta was settled, and Dyson was decided on other grounds. 
What answer does AG Wathelet suggest? And what is his position regarding the “reliance” requirement as developed by the UK courts? He says: 
“It is not sufficient for the applicant for registration to prove that the relevant class of persons recognises the trade mark in respect of which registration is sought and associates it with the applicant’s goods or services. He must prove that only the trade mark in respect of which registration is sought, as opposed to any other trade marks which may also be present, indicates, without any possibility of confusion, the exclusive origin of the goods or services concerned.” 
Since AG Wathelet avoided any reference to the “reliance” criterion it seems clear that he does not endorse the UK approach. So “reliance” within the meaning of the UK approach is not needed in his view. But a mere association with the applicant’s goods or services does not seem to be sufficient, either. 
As far as AG Whatelet requests that the indication of origin should be “without any possibility of confusion” he merely refers to the basic function of a trade mark as summarised in Philips v Remington (Case C-299/99, para 30) and Ansul v Ajax (Case C-40/01, para 36). The General Court, in a similar way, requires that a trade mark must be able to distinguish a product’s or service’s origin “directly and with certainty” (“de façon immediate et certaine”: Case T-234/01Stihl v OHIM). 
Consumers make assumptions about the origin
of goods on the basis of their shape
Still, the qualification AG Wathelet suggests is that the applicant must prove that “only the trade mark” in respect of which registration is sought, “as opposed to any other trade marks which may also be present”, indicates the origin of the goods or services at issue. But what does this mean? It is the view of this post that AG Wathelet does not endeavour to stipulate a new criterion for proving acquired distinctiveness. He does not ask for anything beyond what is required for the distinctiveness of any other trade mark. Use as a trade mark and acquired distinctiveness, enabling the end consumer to distinguish goods as to their origin, will always be deemed present when the relevant class of persons perceives the trade mark in question (in this case: the shape of the goods) as an independent indicator of origin, even where there are other indications of origin to which the public will pay attention likewise. 
The CJEU’s decision in Colloseum v Levi Strauss (Case C-12/12) provides a good example for such a case. It revolved around use preserving trade mark rights within the meaning of Article 15 Community Trade MarkRegulation. This may be the reason why it is, even though mentioned, not in the focus of AG Wathelet’s opinion. In Colloseum the trade mark was not constituted by a product in its entirety, but pertained rather to a part of a product, specifically to a blue-jeans pocket which was designed in a particular way and labelled with a red cloth tab (Levi Strauss & Co.'s famous “Red Tab”, depicted on the right, invented in 1936 – just one year after the “Kit Kat” bar of 1935).
 
In actuality, however, both before and after registration of the trade mark, the use was only of pockets on which the red tags were labelled with the word mark “LEVI’S” (depicted on the left). It was obvious in that case that, when attributing a pair of blue jeans to the manufacturer Levi Strauss & Co., the public was looking also to (and may have “relied” on) the famous “LEVI’S” word mark and not simply and solely at the back pocket with the red fabric tab. The OHIM nevertheless registered the trade mark because it had acquired distinctiveness under Article 7(3) Community Trade Mark Regulation. Referring to the judgment in the "Have a Break" case, Nestlé v Mars (Case C-353/03 para 30), the CJEU confirmed that use as demonstrated served to preserve the trade mark rights and, indirectly (because use preserving a trade mark right is equated to use which creates a trade mark right) that such use was also apt to create such rights “as a trade mark”, i.e. as a distinctive sign capable of and perceived as distinguishing the origin of a product (Case-12/12, paras 32 et seq.). 
This was done on the basis of the findings of the German Federal Supreme Court (which had referred Colloseum to the CJEU) that the class of persons which was being addressed is used to seeing multiple signs and 
“based on the substantial use of the red tab when marketing blue-jeans … [the public] regards this feature of the design as having an independent identification function which is separate from other indicators of origin” (BGH GRUR 2012, 177, 180 para 24 –Stofffähnchen II). 
The survey on which this finding was based had used a picture with a neutralised red tab (in the words of AG Wathelet: “only the trade mark”) without any reference to Levi Strauss & Co., so (again in the words of AG Wathelet) “only the trade mark as opposed to any other trade marks which may also be present” in reality (see illustration, right).
 
There is thus no requirement that the goods must actually be labelled – in the absence of any other sign -- exclusively by the mark applied for or that the consumer pays attention only to that mark and perceives it as the sole indicator of origin or “relies” only on it. 
As in Colloseum, it will suffice that the mark for which the acquisition of distinctiveness is at issue is one of multiple indicators. It is distinctive if – despite the existence of other marks and in addition to such – enables the consumer to attribute the product to a particular manufacturer. As in Colloseum, it will be of no consequence whether this attribution is in fact achieved solely based on the registered mark – in the case of multiple marks – or whether the consumer might, additionally, also be looking to other trade marks. 
Any other approach would (contrary to the basic tenet of Colloseum) render it practically impossible for secondary or tertiary marks to acquire distinctiveness, particularly product shape marks, packaging colours or other design elements. Such marks are typically combined with one or more word marks or with other manufacturer logos. 
This seems to be in line with the requirements of acquired distinctiveness as formulated by the CJEU originally in Chiemsee (Joined Cases C-108 and 109/97, para 52) and recently reiterated in Sparkassen red (Joined Cases C-217 and 218/13, para 42) that the evidence put forward had to prove that 
“the relevant class of persons, or at least a significant proportion thereof, identifies goods […]  as originating from a particular undertaking because of the trade mark [in question]” [emphasis added].  
So, has Nestlé, its evidence measured against the criterion suggested by AG Wathelet, proven acquired distinctiveness? Probably yes. Nestlé had submitted survey evidence. As the survey evidence submitted in Colloseum, the trade mark on the right was shown to the interviewees without the well-known word mark that in real life is used in connection with it.
More than 50% of the interviewees -- just on seeing the shape alone and “as opposed to any other trade marks” – were sure (“without any possibility of confusion") that the product had an exclusive and unique commercial origin. This shows that the shape alone indeed is capable of indicating and distinguishing its commercial origin.

What else could be required to establish an acquired distinctiveness?

Saturday, 29 August 2015

Does the EU want to get rid of geoblocking through a review of the SatCab Directive?

The power of the SatCab Directive:
from lively to ...
As also reported by The 1709 Blog, earlier this week the EU Commission launched (yet) a(nother) [for a slightly pessimistic view on the value of EU copyright public consultations see here] public consultation, this time regarding a possible review of Directive 93/83 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (the Satellite and Cable Directive, also known as the SatCab Directive) [if you are about to fall asleep just by reading "SatCab", don't: it may be more interesting than it looks at first sight (hopefully)]

The objective that the Commission is pursuing in conducting this exercise is twofold: first, to gather input in order to assess whether current rules are (still) fit for purpose; secondly, to determine whether the provisions in this Directive should be extended to transmissions of TV and radio programmes by means other than satellite and retransmission by means other than cable. In other words: whether the Directive rules should be also made applicable to online providers of TV and radio programmes.

As explained here, the latter objective is seen as "contributing to the Digital Single Market Strategy" (DSMS) [on which see here and here].

But in what sense?


... struggling to stay awake in one second
The DSMS, geoblocking and a mystery

IPKat readers will remember that, as far as copyright is concerned, the DSMS only proposes to tackle a handful of issues: (1) content portability; (2) ensuring cross-border access to legally purchased online service while respecting the value of rights in the audiovisual sector [as pointed out in numerous responses to the 2014 Public Consultation on the Review of EU Copyright Rules, what happens at the moment is that it is problematic to access online services in another EU country. Access restrictions depend on the geographic location of users' IP address, and are caused by relevant licensing terms]; (3) introducing an exception for commercial/non-commercial text and data mining; (4) discussing the role and responsibilities of internet service providers, alongside better online enforcement.

Besides the seemingly unambitious policy agenda in the area of copyright, the DSMS does not really say HOW the Commission intends to undertake any of the possible reforms to the relevant legislative framework.

With particular regard to issue #2, ie geoblocking, possible legal instruments to tackle it have been discussed for a while.

How could geoblocking be tackled?

In the internal draft White Paper that the IPKat exclusively leaked last year, the previous Commission discussed a number of alternatives to ensure cross-border access to content, including defining further "the act of 'making available' on the internet. One option [in this respect] would be to redefine it by localising the act in one single Member State ('country of origin'), for example where the centre of activities of the uploader is, or where the upload takes place. A licence from the relevant right holders for that country would suffice for service provision to take place legally in all Member States."

Could it now be that the current Commission intends to tackle geoblocking via a review of the SatCab Directive?

Indeed.


But this time it may be about becoming able
to watch all your favourite
TV programmes online everywhere in the EU
without having to use your VPN anymore!
"Country of origin" rule to be extended to online transmissions?

For satellite broadcasting, Article 1(2) of the Directive establishes that the relevant copyright-restricted act takes place "solely in the Member State where, under the control and responsibility of the broadcasting organization, the programme-carrying signals are introduced into an uninterrupted chain of communication leading to the satellite and down towards the earth (often referred to as “the country of origin” principle).

As stated in the Consultation form, this means that rights only need to be cleared for the "country of origin" of the broadcast and not also for the country/ies of reception, ie the countries where the signals are received [surprisingly enough, there are no decisions of the Court of Justice of the European Union on the interpretation of Article 1(2)]

The fact that the act of communication/making available only occurs in one Member State is - as explained and emphasised by Jan Rosén in his chapter in EU Copyright Law, "the main rule of the Directive! ... In practice, this is a choice-of-law rule, but it is still a provision of substantive law, not a conflicts rule."

As regards the price of the licence, Recital 17 in the preamble to Directive states that account should be taken of all aspects of the broadcast, such as the actual audience, the potential audience and the language version.

By proposing the extension of the country of origin principle to online transmissions and retransmissions, could this mean that rightholders would become unable to prevent online access to their copyright works across the entire territory of the EU, once rights have been cleared in the first Member State?

This may look indeed like one of the main outcomes of this Consultation, and such as to make it look slightly less dry (and technical) than the phrase "SatCab Directive" may suggest at first sight.

In any case interested individuals and organisations have time until 16 November 2015 to submit their responses.

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