FASTWEB FINED (AGAIN) BY THE COMPETITION AND MARKET GUARANTOR AUTHORITY (“AGCOM”) FOR MISLEADING ADVERTISING

24/04/2018

With the decision rendered at the end of the hearing of April 11, 2018, the Competition and Market Guarantor Authority imposed a pecuniary sanction of more than 4 million Euros against the giant of electronic communications Fastweb, for having it made unfair and misleading commercial practices pursuant to articles 20 paragraph 2, 21 and 22 of the Consumer Code.

 

The conduct of Fastweb banned by the Guarantor concerns a series of advertising claims – publicized via TV, internet, brochures and advertising – aimed at emphasizing the integral and exclusive use of optical fiber and the achievement of the highest performance in terms of speed and reliability of the connection omitting, however, to adequately inform the consumers about the characteristics of the transmission technology used, the geographical limits of the offer and the real potential of the offered fiber service. According to the Guarantor, such conduct is in contrast with articles 20, 21 and 22 of the Consumer Code since it did not put the consumer in a position to identify the elements that specifically characterize the offer, with particular reference to the different type of services related to the technology underlying the various types of offer; moreover, still according to the Guarantor, Fastweb would have not provided adequate visibility to the additional option, upon payment after a period of gratuity, which allows to obtain the maximum speed advertised. The fine of over 4 million Euros is the result, among others, of the balancing between the aggravating factor of Fastweb’s recidivism and the mitigation due to the partial amendment, by Fastweb, of the information on its own offers.


LGV AVVOCATI WINS IN THE MATTER OF JURISDICTION

28/03/2018

In a recent decision, the Court of Bergamo recognized the lack of jurisdiction of the Italian judicial authorities in a negative assessment procedure for receivables established against a Dutch company that is a client of LGV.

 

The present proceeding was initiated, with an appeal pursuant to article 702-bis of the Italian Code of Civil Procedure, by an Italian company – manufacturer of motorcycle helmet – against its Dutch distributor, assisted by LGV, in order to request verification of the non-existence of the right claimed by the latter in relation to the recognition of a bonus on turnover in 2016.

LGV appeared before the Court contesting, on a preliminary basis, the lack of jurisdiction of the Italian judge, on the basis of the provisions of EU Regulation 1215/2012; in particular, in particular, it maintained that the Dutch Court had jurisdiction both under Article 5 of the abovementioned Regulation, in relation to the connecting factor for the general forum of the defendant, and both in application of Article 7 on optional forums in the case of the sale of movable property.

The Court of Bergamo, in a decision issued only 5 months after the start of the proceedings, upheld the preliminary requests of the defendant, declaring that the Italian judicial authority lacked jurisdiction and ordered the applicant to pay the costs of the proceedings. In particular, the Court clarified that, in application of Article 4 of Regulation (EU) No 1215/12, „(…) in cases of international disputes, jurisdiction lies with the courts of the place where the defendant is domiciled or, in the case of companies, the place of domicile“ and that, pursuant to  Article 7 of the aforementioned Regulation, in the case of contracts for the sale of movable property, jurisdiction lies with the court of the place, situated in a Member State, where the goods were delivered or should have been delivered under the contract. In the present case, the defendant is based in the Netherlands and the applicant’s assets were delivered to the Netherlands; the judge, therefore, concluded that the Italian judge lacked jurisdiction.


CROCS SHOES: INVALIDITY OF THE DESIGN REGISTRATION

21/03/2018

On 14 March, The General Court of the European Union has confirmed that the design registration of the Crocs’ footwear design is invalid due to a lack of novelty. Crocs failed to demonstrate to have not pre-disclosured the design.

 

On 22 November 2004, Western Brands filed an application to OHIM (now EUIPO) to register a footwear design, claiming the priority of the US application filed on 28 May 2004. The design was thus registered as Community design on 8 February 2005, and then transferred to Crocs on 3 November 2005.

In 2013, a French company called Gifi Diffusion requested EUIPO to invalidate Crocs’ design for a lack of novelty, stating that it was disclosed before the 12-month period preceding the priority date (that is, prior to 28 May 2013). In fact, a design can be protected in the EU if it wasn’t disclosed to the public before the 12-month period preceding the priority date.

On 13 February 2014, the Invalidity Division of EUIPO dismissed Gifi Diffusion’s application, because the prior disclosure had not been demonstrated.

On 27 March 2014, Gifi Diffusion filed a notice of appeal against decision of the Invalidity Division, demonstrating that the design was disclosed prior to 28 May 2013 on three occasions: on Crocs’ website; at a boat show in Florida and by putting on sale shoes with that design in a consistent number of American states. For these reasons, the Third Board of Appeal of EUIPO annulled the Invalidity Division’s decision, declaring the design invalid. Crocs appealed against the decision, stating that disclosure events could not reasonably have become known to the footwear industries in the EU, during their normal business.

With its decision, on 14 March 2018 the General Court has nevertheless assumed that Crocs failed to prove both that the website could not be found by footwear producers operating outside the USA and that they were not aware of the international boat show in Florida. The Court also affirmed the sale of footwear of that design was also carried out in a manner which could not have gone unnoticed by the Union’s specialised circles.

These three observations led the Court to consider EUIPO’s findings to be correct and, therefore, to dismiss Crocs‘ appeal.


THE GENERAL COURT ANNULS THE REFUSAL TO REGISTER, AS AN EU TRADE MARK, A FIGURATIVE MARK INCLUDING THE CURRENCY SYMBOLS ‘€’ AND ‘$’

15/03/2018

EUIPO did not give sufficient reasons for its refusal to register the EU trade mark bearing the symbols „€“ and „$“ and the Court of Justice, annulling the refusal of EUIPO, reiterated that any refusal by EUIPO to register must, in principle, refer to each of the goods or services concerned

 

In 2015, the Polish company Cinkciarz.pl asked the European Union Intellectual Property Office (EUIPO) to register an EU trade mark for software, financial services, including foreign exchange, and publications, containing the ‘€’ and ‘$’ currency symbols.

EUIPO refused to register that sign as an EU trade mark because of its descriptive character and because it lacked distinctive character. According to EUIPO, the figurative elements consisting of round shapes are not sufficiently significant to distract the public’s attention from the message which the ‘€’ and ‘$’ currency symbols convey in relation to the goods and services concerned. Cinkciarz.pl brought an action before the General Court for annulment of that decision.

By the judgment dated 8 March 2018, the General Court annuls EUIPO’s decision. The General Court first points out that any refusal of registration by EUIPO must, in principle, be reasoned for each of the goods or services concerned. Although EUIPO may confine itself to providing general reasoning for all of the goods or services concerned in the case where the same ground of refusal is given for a category or group of goods or services, such an option extends only to goods and services which have a sufficiently direct and specific relationship to each other, to the point where they form a sufficiently homogeneous category or group of goods or services. Next, the General Court specifies that the distribution of the goods and services in question into one or more groups or categories must be carried out based on the characteristics which are common to them. The General Court finds that EUIPO examined the descriptive character of the sign at issue without referring to each of the goods and services covered by that sign and that it adopted general reasoning in their regard. The General Court therefore examines whether the goods and services covered by the mark applied for all have a common characteristic. It observes in this regard that the mark applied for covers more than 80 goods and services, falling into three very different distinct classes, whereas EUIPO, however, confined itself to finding that all the goods and services covered by the mark were related to foreign exchange transactions.

The General Court holds that the characteristic upheld by EUIPO is not common to all the goods and services at issue. According to the General Court, the general reasoning adopted by EUIPO is therefore not relevant for all the goods and services concerned. It was for EUIPO to provide additional reasoning for the goods and services which are not characterized as being related to foreign exchange transactions, to explain why registration of the mark applied for had to be refused. Since the contested decision does not contain any such additional reasoning, the General Court finds that there was a failure to state reasons.

In conclusion, with regards to the distinctive character of the mark applied for, the General Court states that EUIPO’s conclusion is vitiated by the same failure to state reasons.


DRAFT BREXIT AGREEMENT: CONTINUED PROTECTION IN THE UK OF IP RIGHTS

07/03/2018

The draft Brexit Withdrawal Agreement between the EU and the UK, which was published by the European Commission on 28 February 2018, provides for continued protection in the UK of registered or granted IP rights

 

The EU Commission Draft Withdrawal Agreement provides that holders of registered EU trademark rights, Community Design rights or Community plant variety rights shall become holders of corresponding rights in the UK after Brexit (Art. 50 of the draft agreement, hereafter ‘the draft’). Article 50 (1) of the draft states that the holder of a EU trade mark, design or plant variety right, “which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom”. The Article 50 (2) provides for the same rights with in relation to the geographical indications, designations of origin and traditional specialties.  Such registration of corresponding UK rights will be free of charge and will require no administrative procedure, including no requirement for a UK address-for-service, at least up to first renewal of the right (Art. 51 of the draft).

Designations of the EU in a Madrid system or Hague system application before the end of the transition period shall benefit from the protection in the UK for their marks or designs (draft Art. 52). Unregistered Community design rights will become enforceable UK rights (draft Art. 53) and database rights will likewise become enforceable UK rights (draft Art. 54).

Article 55 of the draft proposes that pending applications for EU trade mark rights, as well as applications for Community plant variety rights, shall be dealt with by giving rise to an ad hoc right of priority in the UK for the same mark in respect of the same or similar goods or services, for a 6-month period from the end of the transition period.

With regards to the supplementary protection certificate (SPC), article 56 of the draft clarifies that where an application for an SPC is made in the UK before the end of the transition period but the procedure for grant of the certificate is ongoing at the end of that period, the applicable EU SPC regulations shall apply, and any subsequent granted certificate shall have the level of protection provided for by those regulations.

Finally, article 57 of the draft maintains that the rights that were exhausted in the EU and the UK before the end of the transition period under the conditions provided for by EU law shall remain exhausted both in the EU and in the UK.

These provisions of the draft agreement reflect the Commission’s current negotiating position on mutual recognition arrangements of IP rights.