THREE-DIMENSIONAL MARK OF A PARTICULAR BOTTLE SHAPE: THE EU COURT RULES ON DISTINCTIVENESS

05/12/2018

In 2015, a German company applied for the registration of a three-dimensional trademark for the particular shape of a bottle. The application was rejected, as was the subsequent appeal before the EUIPO Board of Appeal. The EU General Court, subsequently hearing the case, overturned the decision, asserting the distinctive character of the trademark in question.

 

In 2015 the German company Wajos GmbH applied for registration of a trademark for a particular shape of bottle, characterized by different sizes between the top and bottom of the same. The EUIPO Board of Appeal found that the shape was similar to that of a common amphora, which was already widespread on the food market, and stated that it was impossible for an average consumer to distinguish the products of Wajos from those of other companies. Furthermore, the Board considered that such a shape would meet functional requirements, since the enlargement of the upper part would allow the bottle to be placed on a support which would otherwise be difficult. According to EUIPO, for goods for which the trademark has been applied for, the relevant public would be the general consumer of food products, with a medium level of attention; such a circumstance would prevent consumers from identifying the shape of the bottle as particularly distinctive and indicative of the origin of the product. Therefore, as the trademark does not have distinctive character, it would not be eligible for registration under Article 7(1)(b) of EU Regulation 2017/1001.

In the motion against the decision of the EUIPO Commission, the company Wajos first contested a similar identification of the target audience, arguing instead that this was made up of a small circle of consumers, lovers of fine, quality food products and available from selected retailers. Such a clientele must therefore be considered more than wise and certainly able to appreciate the particularity of that specific bottle compared to other bottles on the market.

Regarding the distinctive character of the brand, Wajos supported its presence by emphasizing the non-purely functional character of the bottle configuration, clearly distinguishing it from the other forms of packaging on the market, to which the relevant public is accustomed.The European General Court firstly held that distinctive character must be assessed, on the one hand, in relation to the goods and services for which registration is sought and, on the other, in relation to the perception of the relevant public. With respect to the relevant public, the Court also identified the relevant consumer as an average consumer, on average attentive, since the list of products for which registration has been requested includes, to a large extent, consumer products in the food sector.

However, the EGC held that the average consumer was perfectly capable of perceiving and appreciating the shape of the packaging of the goods as an indication of their commercial origin, provided that the characteristics of that shape were such as to attract his attention. To that end, it is necessary to analyze the overall impression created by the shape. Where a trade mark is made up of a combination of elements – the Court maintains – the combination may have distinctive character even if the individual elements, taken individually, do not.

The Court therefore held that the combination of the elements of the Wajos bottle creates a shape that can be memorized by the relevant public, being significantly different from the other bottles on the food market. Moreover, contrary to what the EUIPO Board of Appeal has stated, the shape of the bottle in question differs from classic amphoras in that the latter are not made of glass. Finally, the enlargement of the upper part of the bottle, regardless of technical and functional reasons, can bring an aesthetic value to the trademark applied for. The European Judges therefore annulled the decision of the Board of Appeal of EUIPO, considering that while it is true that the average consumer generally does not pay attention to the shape of food products and does not associate their shape with the indication of commercial origin, in the present case the exceptional nature of the product’s packaging is, on the contrary, capable of indicating the commercial origin of the products.


ECJ: NO COPYRIGHT PROTECTION FOR THE TASTE OF FOOD PRODUCT

23/11/2018

On November 13, 2018, the ECJ issued its judgement in the case which involves two Dutch manufacturers of spreadable cream cheese dip stating that the copyright cannot vest in the taste of a spreadable cheese.

 

In 2007 a spreadable dip with cream cheese and fresh herbs “Heksenkaas” has been created and the intellectual property right of such product belong to the Dutch company “Levola”. Since January 2014 another Dutch company “Smilde” has been manufacturing a product called “Witte Wievenkaas”, a spreadable dip with cream cheese, for a supermarket chain in the Netherlands. Levola brought an action against Smilde where it maintained that the sale of “Witte Wievenkaas” infringed its copyright in the taste of “Heksenkaas”. It, therefore, claimed that Smilde should cease production and sale of the product, since the taste of “Henksenkaas” is a work protected before copyright and that the taste of “Witte Wievenkaas” is a reproduction of that work.

Hearing the case on the appeal, the Gerechtshof ArnhemLeeuwarden (the Dutch Regional Court of Appeal) asked the ECJ whether the taste of a food product can be protected under the Copyright Directive (Directive 2001/29/EC).

The Court firstly noted that the notion of “work” is an autonomous concept of EU law, that is to be given an autonomous and uniform interpretation throughout the EU. Then the Court clarified that, in order to be protected by copyright under the Directive, the taste of a food product must be capable of being classified as a ‘work’ within the meaning of the Directive. Classification as a ‘work’ requires, first of all, that the subject matter concerned is an original intellectual creation. Secondly, there must be an ‘expression’ of that original intellectual creation.

In accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights, which was adopted in the framework of the World Trade Organization and to which the EU has acceded, and with the WIPO Copyright Treaty, to which the EU is a party, copyright protection may be granted to expressions, but not to ideas, procedures, methods of operation or mathematical concepts as such.  It, therefore, follows that for there to be a “work” as referred to in the Directive, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity.

In that regard, the Court found that the taste of a food product cannot be identified with precision and objectivity. Unlike, for example, a literary, pictorial, cinematographic or musical work, which is a precise and objective expression, the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable. They depend on, amongst other things, factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed. Moreover, it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind.


A NEW RULING OF THE EU COURT ON COPYRIGHT INFRINGEMENT AND ONLINE FILE SHARING

31/10/2018

In its judgment of October 18, 2018 (case C-149/17), the Court of Justice of the European Union ruled that the owner of an internet connection through which a copyright infringement has been committed cannot be exempted from liability simply by indicating a family member who had the opportunity to access the internet network in question.

 

The issue underlying the ruling involves a publishing house – owner of the copyright on an audiobook – acting against a German citizen requesting compensation for the damages resulting from the infringement of its copyright. In particular, the publishing house complained against the sharing of its audiobook, on a peer-to-peer platform, through the Internet connection of which the citizen was the owner, so that the audiobook could be freely downloaded by an unlimited number of users. The citizen owner of the internet network claimed that also his relatives could access the network and that for this reason he could not be considered as responsible of the infringement. The network owner also pointed out that according to the German legislation a similar line of defense would be sufficient to exclude his liability. The Court of Munich therefore addressed the Court of Justice of European Union in order to know if the applicable German law is in compliance with EU legislation on copyright.

The EUCJ held that even if a balance were to be struck between the right to respect family life, on the one hand, and the right of intellectual property, on the other hand, the latter would be unjustifiably infringed if it were considered sufficient to exclude the liability of the internet line owner the indication that the internet line is available also to his family members, without further evidence being provided as to when the connection was used by such family member and the nature of that use. In doing so, the Court maintains, the fundamental right to an effective remedy and the fundamental right of intellectual property protected by EU law and in particular by EU Directives 2001/29 and 2004/48 would be seriously infringed.


TICKETONE (AGAIN) IN THE TARGET OF THE ANTITRUST.

02/10/2018

With a press release dated 26 September 2018, the Italian Antitrust Authority (AGCM) announced the start of an investigation against TicketOne S.p.A. and its parent company, the German company CTS Eventim AG & Co. KGaA, to ascertain the existence of an abuse of the company’s dominant position in violation of Article 102 of the TFEU.

 

TicketOne is back in the Authority’s sights: already in the spring of 2017, following the reports resulting from the rapid exhaustion of tickets in the primary market and the sale at a higher price in the secondary market, TicketOne was fined by the Authority for about 1.7 million Euros.

This time, according to the AGCM, TicketOne in a dominant position in the market for ticketing services for live music events (pop and rock concerts), has implemented an exclusive commercial strategy in order to bind to its ticketing platform the most important organizers (promoters) of live music events active in Italy. Consequently, the access to an essential input for competing ticketing platforms to compete in the market, namely tickets for concerts, has been precluded.

The Authority also points out that the prejudice suffered by competing platforms is aggravated by the fact that the exclusivity clause contained in the contracts between the promoters and TicketOne is particularly stringent on the online channel, which is now the main means of distributing tickets for this type of event. The Authority then found a further profile of illegality, descending from the commercial strategy implemented by TicketOne. Such an abusive strategy could also harm final consumers, since, by hindering the presence on the market of competing operators, TicketOne can charge higher prices for pre-sale tickets for live music events than the competitive ones and limit the choice of consumers among the different providers of ticketing services.

The investigation will be concluded by 31 December 2019, at the end of which it will be decided whether and which sanctions will be applied.


ALSO A CONTRIBUTION OF SIMONA LAVAGNINI IN THE VOLUME „DIGITAL SINGLE MARKET AND CLOUD SERVICES“, WHICH WILL BE PRESENTED AT THE CHAMBER OF DEPUTIES ON OCTOBER 17, 2018

27/09/2018

On the subject of legislation on cloud services, the new publication by Franzosi, Pollicino and Campus is available, entitled „Digital Single Market and Cloud Services“, to which Avv. Simona Lavagnini also contributed with the paper: „Legal Profiles of Cloud Computing: protection and management of computer programs“.

 

In the context of the Digital Single Market, the initiative to adapt the European single market to the digital age, we cannot help but consider some crucial issues that deserve particular consideration. Among these is undoubtedly that of the cloud, especially with reference to the problems that a technology of this type, which allows the storage, processing and transmission of data, can create with respect to the needs of protection of intellectual property, as well as the privacy associated with the circulation of data. The volume focuses on all aspects related to Cloud Services, both from a purely technical point of view, both from an economic and, above all, regulatory point of view, with a careful evaluation of the proposals for reform of the European Commission, as well as the most relevant Italian and European jurisprudential guidelines. The focus is particularly on the so-called Big Data, also assessing the potential new forms of responsibility for cloud managers.

In particular, the paper provided by Simona Lavagnini focuses on the profiles related to industrial and intellectual property rights in cloud-based technologies, analysing the relationship between the principle of exhaustion and the acts of software distribution. Among other things, the emphasis is on the strong process of dematerialization of the company structure, which is leading to the transition to a system in which the company accesses the intangible assets necessary for its activities through „pay-per-use“ contracts, in which the use of data and content occurs for limited periods of time.

The volume, which makes use of the contributions, in addition to Avv. Lavagnini, also of many other jurists and leading professionals in the sector, will be presented on October 17 in Rome at the Chamber of Deputies, in the presence of the members of the Parliament’s innovation intergroup.