REGISTERING SOUNDS, MOVEMENTS, MULTIMEDIA AND HOLOGRAMS AS TRADEMARKS – THE CONSULTATION PROCESS OF THE CONCERNED CIRCLES WITH THE GOAL OF ACHIEVING AN HARMONISED PRACTICE IN THE ASSESSMENT OF VALIDITY REQUIREMENTS HAS BEGUN

15/10/2019

With Directive no. 2015/2436 the European Union has provided a framework for the regulation of new types of trademarks, responding to an increasingly widespread practice of exploiting modern forms of communication for marketing. Italy implemented the directive by Legislative Decree no. 15/2019, which, inter alia, abolished the requirement that a sign, in order to be registered as a trademark, must be capable of being represented graphically. With the prospect of registering new forms of trademarks, a series of questions still remain unanswered, such as, for example, that of intrinsic distinctiveness or the descriptiveness of new forms of trademarks. A consultation open to all interested parties and aimed at arriving at a concerted and harmonized practice will be concluded within mid-November.

 

In the context of European Union law, the implementing regulation no. 626/2018 of the Regulation on the European Union trademark clarifies that the trademark may be represented in “any appropriate form using generally available technology”, provided that it can be reproduced in the register in a “clear, precise, self-contained, easily accessible, intelligible, durable and objective manner”. This should enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor. However, these aspects – also known as Sieckmann criteria – have not (yet) been defined more precisely. In addition to the application of these criteria to new types of trademarks, the consultation also concerns the question of how any discrepancies between the representation and description of the trademark can be assessed or how priority claims should be examined when at least one of the trademarks belongs to a new type. The consultation is not limited to the examination of absolute grounds of validity but also addresses the examination of relative grounds of invalidity. There is no established case law as to how the comparison between two new types of marks should be conducted or if only one of the marks to be compared is of the new type.

The consultation, which is open until 14 November 2019, offers the opportunity to participate in the development of shared criteria. In view of the increasingly crowded space in the field of traditional trademarks, the registration of new types of trademarks offers important economic advantages, as demonstrated by a recent analysisconducted by EUIPO in collaboration with the EPO.


THE COURT OF JUSTICE OF THE EUROPEAN UNION FORCE FACEBOOK TO REMOVE ALL IDENTICAL AND ILLEGAL CONTENT WORLDWIDE

08/10/2019

Based on the recent decision of 3 October 2019, the Court of Justice strengthens the obligation for hosting providers to stay down on a worldwide scale, concerning all identical and/or equivalent contents previously declared to be illegal.

 

La vicenda

Mme Eva Glawischnig, a member of the Austrian Parliament, seeks an order that facebook removes a comment, published by a user on his personal profile and available for any facebook user, harmful to her reputation, and allegations which were identical and/or of an equivalent content.

The context behind the preliminary ruling and the request of the Court

LThe Oberster Gerichtshof (Supreme Court, Austria), when called upon to give a ruling on the question, asks the Court of Justice to interpret art. 15 of the Directive on electronic commerce (Directive n. 2000/31), which provides for a general prohibition on the supervision of host providers. In particular, the Austrian Supreme Court asked whether art. 15 generally precludes the obligation imposed on a hosting provider, who has not promptly removed unlawful information, to remove not only that illegal information but also others identical or equivalent worldwide.

The CJUE solution

The Court of Justice, by the abovementioned decision, clarifies that although art. 15 (1) of the E-commerce Directive prohibits Member States from imposing on hosting service providers a general obligation to monitor information they transmit or store, as it stands out from recital 47 of the Directive, that obligation does not concern monitoring obligations in “specific cases”. Such a specific case may arise, as in the present case, from precise information, stored by the service providers and requested by a social network user, the content of which has been analyzed and considered unlawful by the Court of the member state. Consequently, it is legitimate to consider that the Competent Court may require the hosting providers to remove information which it stores, the content of which is identical to the content of information was previously declared to be unlawful or to block access to that information, irrespective of who requested the storage of that information. The same has been acknowledged in relation to equivalent contents, provided that it contains specific elements duly identified such as the name of the person concerned, the circumstances in which that infringement was established or a content equivalent to that declared unlawful, so as not to compel the hosting provider to carry out an independent assessment of that content.
Finally, the Court of Justice clarifies that article 18 (1), Directive n. 2000/31 does not provide for any territorial limitation and therefore does not preclude the abovementioned injunctive measures from producing worldwide effects.


PARODY: THE UMPTEENTH “STRESS TEST” FOR THE PROTECTION OF RENOWNED BRANDS

04/10/2019

The Criminal Supreme Court held that the parodistic reproduction of well-known trademarks was legitimate given the unsuitability of the seized products to create confusion among the public as to their origin, since it did not consider integrated the offenses referred to in articles 473 and 474 of the Italian Criminal Code.

 

 

The history

The case concerns the marketing of “FAKE LAB” branded clothing in which famous brands are reproduced – ironically – without the (obvious) authorization of the rights holders. Following the seizure of products bearing said trademarks and the subsequent validation of the precautionary measure adopted for violation of Articles 473 and 474 of the Criminal Code, the question has reached the criminal section of the Supreme Court, which was faced with the tricky issue of “parodistic” reproduction of well-known trademarks.

Decision of the Court 

The Court held that the parodistic (i.e. artistic/descriptive) reproduction by “FAKE LAB” of third parties’ well-known mark was lawful, since the public would not be confused about the entrepreneurial origin of the goods in view of the unsuitability of the goods seized for confusion with the “originals”. According to the Court, the reproduction of the well-known mark of others is lawful whenever the mark is used with obvious ironic and parodistic purposes for the creation of new and original products (as in the case of “FAKE LAB”). Such forms of reproduction would be suitable to exclude the confusion between products and consequently the criminal offenses referred to in Articles 473 and 474 of the Criminal Code against the simple parodistic reproduction of well-known trademarks. This is because the primary function of the mark, i.e. the indication of origin, would not be affected (on the assumption that consumers would be able to understand that they were about to buy a parody of the original and not the original itself).

Contrasting decisions 

The decision of the Supreme Court, although made in criminal matters, is intended to rekindle the jurisprudential and doctrinal debate on the free use of trademarks for periodical/satirical purposes, especially in relation to well-known trademarks. The confirmation of the uncertainty in which the free parodistic uses of trademarks are found is given by the reading of the recent case law of the same Criminal Court of Cassation which, a few weeks before the decision in question, ruled oppositely in relation to the appeal of a items’ seizure bearing the trademark “FAKE LAB” (yes, the same trademark), considering – in contrast to the decision commented on here – that the offence under Article 474 of the Criminal Code existed (Court of Cassation, Penal Court Section II, 07.11.2018 no. 9347 in the on-line database DeJure). In said decision, the Court specified that the protection of Article 474 of the Criminal Code does not concern the determination of the individual purchaser in the purchase, but it concerns the public faith, i.e. the trust of citizens in the authenticity of the distinctive signs. It would have derived that, only in the case of gross forgery or if any danger of confusion on the part of the purchaser were totally excluded, the punishability of Article 474 of the Italian Criminal Code could have been excluded.

Parody of well-known trademarks in civil law and doctrine

The debate about the legitimacy of the periodistic/satirical use of well-known trademarks first arose in the civil path and has also recently been strengthened by some new regulations. The new EU trademark directive 2015/2436 (also mentioned by the Court of Cassation in the decision at stake) invites Member States to consider “artistic” uses of registered trademarks legitimate if their use complies with the principles of professional correctness and therefore cannot generate a danger of confusion about the entrepreneurial origin of the products (recital 27). This clarification is not yet present in the current Italian Industrial Property Code. In the absence of a normative provision, the doctrine and the jurisprudence have historically tried to make such uses fall within the legitimate ones according to the art. 21 c.p.i. (as creation of copyright). However, from the analysis of the cases submitted to the Italian Courts, it emerges that the object of the parody (as in the case of FAKE LAB) have always been well-known trademarks, i.e. trademarks protected not only against confusable uses but also against uses that could prejudice the image of the trademark or give an undue advantage to the abusive user. On this point, it is enough to recall the “AGIP/ACID” case in which the image of the famous six-legged dog was associated with the wording “ACID” on T-shirts. On that occasion, the Court of Milan (Trib. Milano 4.3.1999, in Giur. ann. dir. ind. 3987) held that, in order to determine the infringement, it should have been ascertained that the image of the notorious parodied mark had been damaged and not simply confused between the products (which, even in that case, had not been considered to exist). In the same sense, reference could be made to the decisions of the Court of Rome in the “GAMBERO ROSSO/GAMBERO ROZZO” case (Trib. Roma, 4.2.2010, in Giur. ann. dir. 2010 p. 198) or of the Court of Turin “DIESEL/PORCO DIESEL” (Trib. Torino, 9.3.2006, in Giur. ann. dir. 2007 p. 149) in which, although excluding counterfeiting, the periodical mark was considered to be detrimental to the image of the parodied mark because it was well known. Recently, the Court of Milan, in the “LOUIS VUITTON/GOLDEN BOYS” case (Trib. Milano, 14.9.2012, in the online database Darts.ip), clarified that renowned trademarks carry not only a message of entrepreneurial origin of the marked products but also a further message, namely the promise of a status, a philosophy, a luxury from which the bearer benefits. According to the Court of First Instance, this message must also be protected against periodical uses that may undermine the exclusivity of the renowned trademark by giving an unfair advantage to the sign of the parodying subject.

Parody in copyright

In this context, the typical defense of infringers is represented by the assertion that the parody of the well-known mark is lawful also based on the provisions of copyright as an “original” creation affixed in a decorative sense and not as a trademark to the product. This statement is based on the creative elaboration of a protected work (art. 4 l.a.) or in the exemption of the purpose of criticism (art. 70 l.a.) and in the freedom of expression constitutionally guaranteed under art. 21 Cost. The Italian jurisprudence (Trib. Milano 1.2.2001, in AIDA 2001 pag. 659 and Trib. Milano 13.9.2004, in AIDA 2005, pag. 551) has on several occasions considered the parody legitimate if it can be a conceptual reversal of the original work so as to prevent any assimilation to the work of derivation, or if the parody – while inspired by the original work – transforms it to such an extent as to make it creative and with a new expressive meaning. In the absence of these elements, we would not be faced with a lawful periodical use of a work but with a trivial counterfeiting, able not only to damage the economic exploitation rights of the author but also (in some cases) his moral rights.

Parody and other public interests

With regard to the infringement of the author’s moral rights or of the entrepreneur’s commercial image on the market, further consideration should be given to whether the parody, even if it is lawful on the basis of what has been discussed, is not capable of damaging the interests of third parties or whether it may be contrary to public morals. In some circumstances, in fact, parody can go beyond the boundaries of public morals, resulting in swearing, blasphemy and images contrary to any morals and capable of damaging (in case) the image of others. Just think of the aforementioned judicial case “DIESEL/PORCO DIESEL” or the proliferation of social pages dedicated to parody and satire that can be considered, in most cases, contrary to public morality (think of www.instagram.com/welcometofavelas__/?hl=it). In these cases, we can only classify the parody trademark as radically illegitimate also because it is contrary to public morality.

Conclusion

The judgment of the Court of Cassation commented does not seem to be able to put an end to the debate on the parody of the use of the trademark of others, which remains a particularly insidious terrain, in the light of the existing jurisprudential contrasts and the many issues that must be analyzed in order to assess the circumstances of the case. On the other hand, it is clear that the trend of periodical use of the trademark is constantly growing and that soon our Court will be called to a new “stress test” on the resistance of renowned trademarks against their use in parodied form. We do not yet know what the counter-promotions studied by the owners of well-known brands in court will be; from a commercial point of view, an interesting orientation seems to be emerging, according to which the owners of the brands themselves produce parodied versions , as can be seen in the recent use of the ADIDAS brand by the German fashion house:

https://www.adidas.ch/it/t-shirt-shmoo/EC7373.html


DESIGN WORKS ARE PROTECTED BY COPYRIGHT LAW ONLY ON CONDITION THAT THEY ARE CREATIVE

23/09/2019

The European Court of Justice clarifies that copyright protection of design works is only subject to the requirement of creativity, since it is not in line with the European law to require additional requirements, such as the existence of a specific aesthetic or artistic value.

 

The case

The original lawsuit involved the two companies Cofemel and G-Star, both active in the clothing sector. The dispute, which has come before the Portuguese Supremo Tribunal de Justiça, concerns the copyright claimed by G-Star in respect of certain models allegedly infringed by Cofemel in the production and marketing of certain pieces of clothing.

The background to the reference for a preliminary ruling

The reference for a preliminary ruling to the European Court of Justice made by the Portuguese Supreme Court is based on the fact that, on one hand, the Código do Direitos de Autor e dos Direitos Conexos – Portuguese Code of Copyright and Related Rights – includes designs in the list of works eligible for protection under copyright, and, on the other hand, does not expressly specify the conditions under which certain objects, which pursue a utilitarian aim, can enjoy such protection.

The question

As Portuguese doctrine and case law were divided on this point, the Supremo Tribunal de Justiça asked the Luxembourg court whether it should be considered, in the light of the interpretation of Directive 2001/29 given by the Court in its judgments Infopaq International dated 16th July 2009 (C 5/08, EU:C:2009:465), and Painer, dated 1st December 2011, (C 145/10, EU:C:2011:798), that design works enjoy copyright protection in the same way as any literary or artistic work, and therefore on condition that they are original, in the sense that they are the result of the author’s own intellectual creation, or is it possible to make the grant of such protection subject to the existence of a specific level of aesthetic or artistic value.

The CJEU solution

The Court held that Article 2(a) of Directive 2001/29 must be interpreted in a way in which a piece of national legislation granting copyright protection to design works upon fulfillment of a further requirement other than creativity, and in particular the production of a visual effect, which is relevant from an aesthetic point of view, is not compatible with European law.

The Court came to that conclusion on the basis that European legislative sources allow the protection conferred on designs to be combined with copyright protection. However, in pursuing different objectives, those protections are subject to different disciplines.

The Court has therefore clarified that the aesthetic effect, which a design may produce, is not a relevant element in determining whether such a design can be qualified as a ‘work of authorship’, since such an aesthetic effect is the result of the intrinsically subjective feeling of beauty, which each person observing the design in question experiences.

Protection therefore occurs when the object constitutes an “author’s own intellectual creation”, which reflects the freedom of choice and the personality of the author; and it is grounded on the elements which are the expression of such creation.

Such a concept of design (as a work protected by copyright) implies significant repercussions in national legal systems where an additional qualification to that of the existence of the creative character is required for protection. This is the case, among other things, in Italy, where art. 2 of the Italian Copyright Law only requires, for design, that the work be creative and have artistic value (interpreted by prevailing jurisprudence as the “iconicity” of the work, i.e. its recognition also by circuits other than commercial ones, and in particular by artistic ones). If the Court’s reasoning is strictly applied, it should be considered that the requirement of artistic value should no longer be required, since it would be contrary to European rules.


LGV OBTAINS ALSO BEFORE THE COURT OF CATANIA AN INJUNCTION ORDER AGAINST AN ONLINE RESELLER OF ILLICIT SOFTWARE

10/09/2019

The decision pronounced by the Court of Catania, in accordance with the unanimous jurisprudence obtained by LGV before the IP Court Division, ordered an online reseller to cease selling computer programs owned by a major software company without authorization.

 

The precautionary action was filed by LGV on behalf of its client after the latter had learned that the defendant company was reselling, through some websites, computer programs of its ownership without authorization. Such programs consisted, in particular, of programs marketed by the applicant as temporary licenses only (in the form of monthly or annual subscription). The online retailer, on the other hand, was selling these programs with perpetual licenses for “vile” amounts, according to the definition given by the above-mentioned decision.

The Court of Catania, granting the petition in its entirety, found that the defendant had unlawfully exploited the exclusive rights of ownership of the applicant company, granting the inhibitory injunction also with regard to the protection of the trademark owned by the software house. The Judge also stated that the reseller’s conducts constitute unfair competition both from the confusory perspective and with respect to the servile imitation.

The above-mentioned decision also reaffirmed the principle that the cessation of the conduct while the proceedings are pending does not eliminate the imminence of the periculum because the cessation of the conduct, determined only by the free determination of the party, cannot be considered permanent; the distributor, therefore, in the absence of a judicial order, could easily repeat the abusive conduct by creating new website The Court also stated that the requirement of imminence of the harm derives from the lasting nature of the infringement perpetrated by the defendant and, in any case, from the lasting effects of the conduct.