E-COMMERCE: IT IS NOT MANDATORY TO PROVIDE A TELEPHONE NUMBER FOR CUSTOMER SERVICE

22/07/2019

The Court of Justice of the European Union, by issuing the decision dated July 10, 2019, did not recognize the obligation – for Amazon EU, as for any other e-commerce platform – to make available to the consumer a telephone number before the conclusion of a contract.

 

The main subject of the decision in question is the e-commerce giant Amazon EU, which was brought before the German courts by the Federal Union of Power Communities and Consumer Associations (‘the Federal Union’). The Federal Union asked to ascertain Amazon’s failure – in this case, in relation to the website www.amazon.de – to comply with the legal obligation to provide consumers with effective means of contact with the online platform.

According to the German Federal Union, in particular, Amazon’s callback service did not comply with the information requirements laid down by law, since the consumer has to go through several steps to get in touch with an interlocutor of that company. The infringement therefore relates to the German law which requires the trader – before concluding a distance or off-premises contract – to provide his telephone number in any event.

The German Federal Court of Justice, before which the case was finally brought, asked the Court of Justice whether the Consumer Rights Directive (EU Directive 83/2011) precludes such national legislation and whether the trader is obliged to activate a telephone or fax line or a new e-mail address to enable consumers to contact him. The Federal Court also referred the matter to the EU Court of Justice to determine whether an e-commerce platform such as Amazon could use different means of communication, such as an instant messaging or telephone callback system.

In its judgment of 10 July 2019, the EU Court ruled that the Directive precludes such national legislation, since the Directive does not in any case oblige the trader to activate a telephone line, or fax line, or to create a new e-mail address to allow consumers to contact him. The directive requires that consumers be informed of such means of communication only if the trader has already made them available. At the same time, the Luxembourg courts found that the directive requires the trader to make available to the consumer a means of communication which guarantees direct and effective communication, in order to ensure a high level of consumer protection, consumer information and consumer security in transactions with traders.

The possibility for the consumer to contact the trader quickly and to communicate effectively with him is of fundamental importance for the protection and effective enforcement of the consumer’s rights and, in particular, the right of withdrawal. However, the Court noted that a fair balance must be struck between a high level of consumer protection and the competitiveness of undertakings, as set out in that directive, while respecting the freedom to conduct a business of the entrepreneur, as enshrined in the Charter of Fundamental Rights of the European Union.

Consequently, the Court held that it is a matter of national courts to assess whether the means of communication made available to the consumer are capable of safeguarding the consumer’s rights, since it is not in any event mandatory to provide a telephone number and the operator is able to prepare and use other means of communication, provided that they are effective.


THE EU GENERAL COURT CONFIRMS THE INVALIDITY OF THE TRADEMARK ‘NEYMAR’ REGISTERED BY A THIRD PARTY TO THE FAMOUS FOOTBALL PLAYER

20/06/2019

On May 14, 2019, the General Court of the European Union (Case T-795/17) dismissed the appeal brought by Mr. Carlos Moreira against the decision of EUIPO upholding the application for a declaration of invalidity of the trademark “Neymar”, brought by the football player Neymar Da Silva Santos Júnior (Neymar).

 

In 2013, Mr. Moreira registered the European word trademark ‘NEYMAR’ for clothing, footwear and headgear. A few years later, the well-known football player Neymar filed an application for invalidity of the trademark on the ground of bad faith, pursuant to Article 59(1)(B) of Regulation 2017/1001, which the Cancellation Division of EUIPO granted in 2016. That decision, challenged by Mr. Moreira, was further confirmed by the second Board of Appeal of EUIPO, which ruled on the appeal in 2017.

Mr. Moreira therefore brought an action before the General Court of the European Union for annulment of the EUIPO’s decision to appeal on several grounds. Although he was aware of the existence of the player at the time of the application for the trademark ‘NEYMAR’, Mr. Moreira claimed that he had not been aware of his international reputation, since the player in question had not yet arrived in Europe; in his view, purely phonetic reasons had led him to choose the sign ‘NEYMAR’.

According to the applicant, bad faith could only have been recognized in the registration of the trademark if the procedure had continued despite the opposition of the footballer, which was not the case here. Moreover, when the application was filed, the name NEYMAR was neither protected as a trademark nor used as such.

The grounds put forward by the applicant were not considered convincing by the EU General Court, which rejected the appeal on May 14, 2019 and upheld the decision of EUIPO declaring the trademark ‘NEYMAR’ invalid.

In first place, the evidence presented by Neymar in the proceedings before EUIPO shows that the Brazilian football player was known internationally by his given name, and that he was famous in Europe, for his performance with the Brazilian national team, several years before his transfer to FC Barcelona in 2013 and, in particular, before the date of filing of the trademark application.

Secondly, the applicant Mr. Moreira had a qualified knowledge of the world of football, having also filed, on the same day, a trademark application for the sign “IKER CASILLAS”, which is the name of another famous Spanish football player. Given the applicant’s knowledge of the world of football, and given the coincidence between the trade mark ‘Neymar’ and the name of the football player, it is impossible that Mr. Moreira was not aware of the existence of the football player at the time of filing the application for registration of the contested trademark.


LEADERS LEAGUE 2019: LGV CLASSIFIED AS “LEADING” LAW FIRM FOR INTELLECTUAL PROPERTY AND TMT AND AS A LAW FIRM OF EXCELLENCE IN LITIGATION IN THE FIELD OF TRADEMARKS AND PATENTS

29/05/2019

LGV confirms its position as a leading law firm in the field of copyright and Technologies, internet & telecommunications category, and as a law firm of excellence in litigation in the field of trademarks and patents.

 

Leaders League, the French company that deals with rating professional firms in various national contexts, considers the high quality of service offered by the firm in relation to copyright and TMT, naming, for the second consecutive year, LGV as the leading law firm in the Intellectual Property category with lawyers Simona Lavagnini and Margherita Stucchi, as well as a firm of excellence for litigation on trademarks and patents, with lawyers Luigi Goglia, Simona Lavagnini and Tankred Thiem.

The guide updated to 2019, takes into account the high quality of the service offered by the firm in relation to copyright and new technologies, as well as the activity carried out by LGV as a litigator in the field of trademarks and patents.

LGV, once again, has achieved a high position in a prestigious legal ranking, thus confirming the presence and influence of the firm in the international context and its role of relevance in an increasingly competitive global market.

For more details seehttps://www.leadersleague.com/en/company-directory/lgv-avvocati/italy/technologies-internet-telecommunications-1?routingLanguage=en


SIMONA LAVAGNINI AWARDED AS “COPYRIGHT LAWYER OF THE YEAR” AT LEGALCOMMUNITY IP & TMT AWARDS 2019

14/05/2019

Simona Lavagnini, founding partner of LGV Avvocati, once again confirmed as a top-level professional in copyright law.

 

Legal Community, which since several years is active in rating law firms and individual professionals on the Italian scene, has awarded the prize of “Copyright Lawyer of the Year” to Simona Lavagnini.
The ceremony took place on May 13, 2019 at the event that Legal Community dedicates to the IP & TMT Awards, bringing together the most prominent professionals in the field of intellectual property law.

Mrs. Lavagnini has achieved such important recognition thanks to her solid skills in copyright, which allowed her to distinguish among the Italian professionals, especially in the field of new technologies. Simona Lavagnini is particularly appreciated by her clients for her concrete and innovative action, as well as for the creativity used in facing challenges and new legal issues.

Lavagnini’s prize at the IP & TMT awards, especially in relation to a constantly developing field such as copyright in new technologies, is paradigmatic of the expertise and specialization of LGV Avvocati, which has a dedicated team of professionals all active and competent in the field of copyright and new technologies. In addition, this recognition further strengthens the presence and influence of LGV Avvocati in the field of copyright and IP intangible asset protection, giving the firm an important role in an increasingly competitive market.


AMERICAN GIANT AIR BNB INC FAILED THE OPPOSITION AGAINST THE TRADEMARK APPLICATION ‘CIAO BNB

08/05/2019

Ciaomanager S.r.l., a small company from northern Italy, filed in 2017 a EU word trademark application for the sign ‘Ciaobnb’ for products in classes 9, 35, 39, 41, 42 and 43. Airbnb Inc. opposed the application on the basis of its earlier trademarks ‘Airbnb’, but EUIPO rejected the opposition.

 

By decision of April 9, 2019, the Opposition Division of EUIPO rejected the opposition filed by Airbnb Inc in 2016 against the EU trademark application ‘Ciaobnb’, on grounds of lack of likelihood of confusion with the earlier trademark ‘Airbnb’, registered for the same classes.

In assessing the similarity of the signs, EUIPO found the two signs to be different for many reasons.

In first place, EUIPO found that the word ‘BNB’ tends to be associated by consumers with the concept of “Bed&Breakfast”, that is to say, a small receptive structure offering overnight stay and breakfast. Part of the services brought by the opposition concern the management and administration of facilities that provide temporary accommodation through online platforms or software applications; consequently, a sufficient connection between the mentioned services and the type of accommodation evoked by the notion of ‘BNB’ exists.

The opposing party observed that it does not provide the typical ‘Bed & Breakfast’ services, but an online platform service for the publication of accommodation offers by users themselves. Unlike the opponent argued, the Office held that the comparison of the signs must be assessed against the goods and the services on which the opposition is based, but not the business activities for which the earlier trademark is actually used, or for which it may have acquired distinctiveness through use. The element ‘BNB’, therefore, appears to descriptive as it alludes to the type of products and services provided. The initial parts of both signs, respectively ‘AIR’ and ‘CIAO’, were considered sufficiently distinctive with respect to the goods and services requested, as well as different from each other. In addition, the consumer’s perception of word signs focuses on the first part of the sign, thus confirming the difference between the two.

With regards to the distinctive character of the earlier signs, the Office acknowledged that Air Bnb Inc. enjoys a consolidated position in the industry, as attested by the various independent sources produced as evidence in the proceedings. Therefore, the trademark ‘AirBnb’ acquired distinctiveness before the filing date of the contested trademark application. However, the acquired distinctiveness only concerns part of the goods/services opposed and therefore, with regards to the rest of the goods/services, the assessment rests on their distinctiveness per se.

In the light of all these considerations, the opposition was rejected.