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.


ALDI WINS A FIGHT AGAINST WINEMAKERS ALLOWING TO SELL BRANDED CHAMPAGNE SORBETS

09/01/2018

Aldi Süd, the giant discount supermarket chain from Germany, was allowed to carry on selling branded Champagne sorbets, notwithstanding EU protection of the name.

 

The Comité Inteprofessionnel du Vin de Champagne (“CIPV”), a French association of champagne producers, brought proceedings before the German courts against the German discount supermarket Aldi Süd to prohibit it from selling a sorbet under the name ‘Champagner Sorbet’. That sorbet, which Aldi Süd started selling at the end of 2012, contains 12% champagne. Taking the view that the distribution of that product under that name constituted an infringement of the PDO ‘Champagne’, the association of champagne producers, brought proceedings based on Article 118m of Regulation No 1234/2007 and Article 103 of Regulation No 1308/2013, prohibiting Aldi from using that name on the frozen goods market. According to the CIPV, the distribution of the sorbet under that name infringes the protected designation of origin (hereafter, PDO) ‘Champagne’. The German Federal Court of Justice has requested a preliminary ruling to the European Court of Justice for an interpretation of EU rules on the protection of PDOs.

Having analysed relevant provisions, the European Court of Justice upheld that Aldi could continue calling its product ‘Champagner Sorbet’ as it does not unfairly take advantage of the reputation that Champagne producers gain from using the iconic name. According to the Court, in the present case the use of the name ‘Champagner Sorbet’ to refer to a sorbet containing champagne is liable to extend to that product the reputation of the PDO ‘Champagne’, which conveys an image of quality and prestige, and therefore to take advantage of that reputation. However, such use of the name ‘Champagner Sorbet’ does not take undue advantage and, therefore, does not exploit the reputation of the PDO ‘Champagne’ if the product concerned has, as one of its essential characteristics, a taste that is primarily attributable to champagne.

It follows that the use of a PDO as part of the name under which is sold a foodstuff that does not correspond to the product specifications for that PDO but contains an ingredient which does correspond to those specifications cannot be regarded as an unfair use and, therefore, as a use against which PDOs are protected under Article 118m(2)(a)(ii) of Regulation No 1234/2007 and Article 103(2)(a)(ii) of Regulation No 1308/2013. As a consequence, it is for the national courts to determine, on the case to case basis, whether such use is intended to take unfair advantage of the reputation of a PDO.

Further, the European Court noted that if the sorbet in question did not have, as an essential characteristic, a taste which is primarily attributable to champagne, it would equally be possible to conclude that the name ‘Champagner Sorbet’ on the inner or outer packaging of the product constituted a false or misleading indication and was therefore unlawful. A PDO is protected not only against false or misleading indications which are liable to create a false impression as to the origin of the product concerned, but also against false or misleading indications relating to the nature or essential qualities of the product. Where the PDO ‘Champagne’ is used directly, by being incorporated in the name of the product in question, to openly claim a gustatory quality connected with it, that does not amount to misuse, imitation or evocation within the meaning of EU rules on the protection of PDOs.


LAVAGNINI WILL SPEAK AT THE CONFERENCE “THE DIGITAL SINGLE MARKET AND THE CLOUD: NEW RIGHTS FOR NEW SERVICES?” ORGANIZED BY THE INNOVATION INTERGROUP OF THE ITALIAN PARLIAMENT

27/06/2017

LGV founding partner Ms. Simona Lavagnini will speak at the Second Meeting of the Innovation Intergroup for the Single Digital Market organized by Messrs. Bonomo MP and Quintarelli MP focused on the subject matter “The Digital Single Market and the Cloud: New Rights for New Services?” that will be held on 4 July at the Parliamentary Group Hall of the Chamber of Deputies.

 

The event has been organized in conjunction with AIPPI Gruppo Italiano and with ALAI Italia and will focus on the topical subject matter of the single digital market and the cloud, both of which may be considered as sources of new rights and new services. The conference aims to go in depth in the various issues that such innovations give rise to and that operators, users, legal experts and the legislator must face. The panel will be formed by notable speakers, including representatives of the European Commission, judges, industry figures, and legal experts. Ms. Lavagnini will talk about the cloud as a new service, the opportunities it offers for users and its most important legal aspects. The flier of the event may be found at the following link: http://www.medialaws.eu/il-digital-single-market-e-il-cloud-nuovi-diritti-per-nuovi-servizi-roma-4-luglio/#prettyPhoto. Registration for attendance at the event is required and may be done by visiting the following link: https://www.eventbrite.it/e/biglietti-il-digital-single-market-e-il-cloud-nuovi-diritti-per-nuovi-servizi-35124134231.


“THE PIRATE BAY” CASE: THE COURT OF JUSTICE DECIDES THAT THE ADMINS OF A TORRENT FILE SHARING PLATFORM ARE ALSO LIABLE FOR COPYRIGHT INFRINGEMENT

23/06/2017

With judgment of 14 June 2017 in case C-610/15, the Court of Justice held that the making available on the Internet of content downloaded by users amounts to a “communication to the public”, an activity that requires the authorization of the copyright holder.

 

Stichting Brein is a Netherlands association that represents and protects the interests of copyright holders. This was a case in which the association sued before the Dutch courts requesting a blocking injunction against Ziggo and XS4ALL, access providers whose members for the most part use the online sharing platform “The Pirate Bay”. The injunction was asked so as to block the domain names and IP addresses of “The Pirate Bay”, with a view to avoiding that the services offered by the above mentioned providers could be used to infringe the copyright of entities or individuals whose interests Stichting Brein was required to protect. Stichting Brein succeeded at first instance, but saw its claims dismissed on appeal.

The Supreme Court of the Netherlands referred the case to the Court of Justice for a preliminary ruling and asked whether there is communication to the public, pursuant to art. 3, para. 1 of Directive 2001/29, on part of an Internet website administrator, where the website concerned does not have any protected works on it but instead is based on a system in which metadata related to protected works stored on users’ computers is categorized and indexed in such a way as to allow other users to find, upload and download the aforesaid protected works. In this judgment the Court of Justice held that the provision and management of an online sharing platform such as “The Pirate Bay” must be considered an act of communication to the public pursuant to directive 2001/29 and therefore may be allowed only with the prior authorization of the copyright holder.

The Court also held that the administrators of “The Pirate Bay” are not involved in a “mere provision” of physical equipment but instead carry out an essential role in the making available of protected works. Indeed, they act with full knowledge of the consequences of their behaviour, with the objective of providing access to the works and indexing and listing the “torrent files” that allow users to find the works and share them in a peer-to-peer exchange with and between other users. Moreover, communication of this sort concerns an indefinite number of potential recipients and extends to a significant number of people, as the administrators of “The Pirate Bay” themselves declared on the website.

Finally, the Court held that it was indisputable that the making available and the management of an online sharing platform, such as that of the main proceedings, were carried out with a view to profit, given that the aforesaid platform also produced considerable amounts of advertising revenue.


SIMONA LAVAGNINI TO SPEAK AT A WEBINAR ORGANIZED BY MICROSOFT ON THE RISKS OF COUNTERFEIT SOFTWARE

20/06/2017

On June 27, at 11 a.m., Ms. Simona Lavagnini will speak at a webinar organized by Microsoft on the enhancement of the software assets of the company, the legal consequences of the sale and use of counterfeit software, and the ways to manage IT contracts and software licences.

 

Software has now become an important resource for all companies which often find themselves having to manage a certain number of IT contracts dealing with software development, outsourcing or use licenses. It is essential for companies to know about the features of such contracts, the risks connected to them and the best ways to control them with a view to optimizing use of resources and avoid incurring in negative consequences.

Ms. Simona Lavagnini, partner at LGV Avvocati, will provide a comprehensive view of rights over software, also dealing with the civil, criminal and administrative consequences connected to use of unlicensed software or non-compliant licences. She will examine the cases in which protection is provided by copyright law and the infringements and remedies available in the field of unfair competition and consumer protection law. Ms. Lavagnini will also give some important advice for identifying unauthentic software and avoiding the risks associated with use of such software.

Mr. Paolo Valcher of the Software Asset Management and Copyright Protection division and Mr. Marco Cattaneo, Product Marketing Manager Windows Commercial, both from Microsoft Italia, will also be speaking at the webinar.

Registration is available by filling out the form available at the following link: https://info.microsoft.com/WE-NOGEP-WBNR-FY17-06Jun-27-SoftwareFakeImparaariconoscerliedevitairischi-335046_01Registration-ForminBody.html.