News

BREWMASTER WIPES THE SMILE OFF MORETTI FOR “LA BIANCA” SIGN. (BUT THE CASE IS STILL OPEN).

14/02/2019

A famous German brew master, holder of the German trademark “la Bianca” and assisted by LGV partners Luigi Goglia and Tankred Thiem, successfully opposed the registration of a similar European trademark filed by the notorious beer producer Heineken (today’s holder of the Italian brand “Birra Moretti”). The decision, issued by EUIPO after the long opposition procedure, confirmed that the prior sign “la Bianca” is a legitimate ground for refusing the registration of the sign “La Bianca” filed by Heineken Italia S.p.a.

 

Con On January 30th, 2019, EUIPO opposition division rejected the application for the registration of the figurative sign “La Bianca” filed by Heineken S.p.a. in 2016. It was found that it was lacking the novelty requirement as the German brew master already registered and used the sign “la Bianca” for beer and similar products.

In first place, EUIPO ascertained that the prior sign was genuinely used by the brew master from 2011 to 2016 to identify his own craft beer. In second place, it was found that the sign filed by Heineken for registration was confusingly similar to the prior German trademark, so the application was rejected.In particular, EUIPO held that the distinctive element in both signs was the identical expression “La Bianca”, while the figurative and word element of Heineken’s sign (the notorious Moretti’s mustache bearing the general trademark “Birra Moretti” and “Luigi Moretti”) are not likely to strike at the attention of the average consumer. Therefore, the signs were considered extremely similar – not to say identical – as long as the products – beer – were found to be related.

The EUIPO decision is of “political” importance, as it shows that the trademark hold by a craft brew master is enough to combat the monopoly of multinationals in the field of beer production and trade. The decision also outlines that companies tend to create “special” signs or add further elements to their “general” trademarks to characterize new product lines. In this case the prior sign “la Bianca” could be confusingly be considered a new line of Heineken beer, which is not true. Heineken further claimed that it should be taken into consideration the reputation in the field of its general trademark “Birra Moretti”. The office rejected the argument on grounds of the EU Trademark Regulation, according to which the exclusive rights on the sign are conferred by the registration of the sign. Hence, whatever happened before the application was filed is not relevant for the registration.

The decision is not definitive, and it has already been appealed before the appeal commission of EUIPO. Who knows whether the German brew master will finally wipe the smile off Moretti for “la Bianca”?


MCDONALD’S RISKS TO LOSE THE EXCLUSIVE RIGHT ON THE BRAND “BIG MAC”

22/01/2019

In its decision of 16 January 2019, EUIPO declared the revocation of the trade mark “BIG MAC”, owned by McDonald’s. Therefore, McDonald’s risks not to use the contested trademark exclusively within the European Union.

 

The recent EUIPO decision marks an important achievement in the fight started by the Irish fast food chain Supermac, which filed an application under Article 58(1)(a) of the EU Trade Mark Regulation, seeking the revocation – in its entirety – of McDonald’s trademark “BIG MAC”, which would not actually be used for a continuous period of five years.

As this is an application for revocation for non-use, the burden of proof to prove the actual use of the trade mark for all the goods and services for which registration has been obtained rests with the trade mark owner and not with the applicant. In the present case, the mark “BIG MAC” was registered for classes 29, 30 and 42 of the Nice Classification and therefore McDonald’s provided evidence of use to the Cancellation Division of the European Office. In particular, the following evidence was produced: three affidavits signed by representatives of McDonald’s illustrating in detail the sales figures for the period 2011-2016; brochures and prints of advertising posters, dated between 2011 and 2016; Prints of some McDonald’s websites, dated between 7/1/2014 and 3/10/2016; a print from a Wikipedia entry providing information on McDonald’s Big Mac. In addition, McDonald’s did not provide evidence from third parties and no indication was given as to how the brochures were disseminated nor were any data provided from which it could be inferred that those brochures had led to actual purchases by the consumer public. The Cancellation Division also found the voice of Wikipedia to be of little relevance, noting that anyone can modify the voice of Wikipedia.

The Cancellation Division therefore considered that those tests – after a global assessment of them – were neither sufficient nor appropriate to demonstrate actual and genuine use during the period of time in question (11/4/2012 – 10/4/2017). Therefore, EUIPO declared the mark “BIG MAC” null and void for non-use. However, McDonald’s may appeal such a decision within two months of the date on which it was issued.


APPLE VS QUALCOMM: THE GIANT OF CUPERTINO FORCED TO PULL DOWN SOME MODELS OF IPHONE FROM THE GERMAN MARKET.

08/01/2019

The lodging of the security of 1.34 billion Euro by Qualcomm enforced the judgment of first instance issued by the Court of Munich

 

This is the new development in the judicial affair between the two tech giants Qualcomm and Apple. After having obtained a ban on sales of some iPhone models in China, surpassed by Apple with iOS 12 software update, Qualcomm takes another important step in Germany.

According to the judgment issued on December 20, 2018 by the Court of Munich, the Cupertino group has infringed some patents relating to power amplification and battery power for its iPhone 7, 7 plus and 8. The German Court ordered Apple to stop selling, distributing and offering the three models of smartphones in all the famous Apple Stores located in Germany, as well as the recall of the devices from all third-party retailers.

In order for this first instance judgment to become enforceable, Qualcomm had to deposit a large sum as security, in case that in the Appeal Apple manages to prove its rights, reversing the result of first instance.


TANKRED THIEM IS ONE OF THE AUTHORS OF COMMENTARIES TO THE REGULATIONS ON THE EUROPEAN UNION TRADEMARK (no. 1001/2017) AND ON THE COMMUNITY DESIGN (6/2002)18/12/2018

19/12/2018

After the much appreciated first edition of the commentaries on the European Trade Mark Regulation and on the Community Design now both work’s second editions are available.

 

Drafted by a carefully selected team of specialized practitioners, both commentaries address each single article and apply the German style approach of analyzing element-per-element. The books include specific sections dedicated to all European Union Member States and include the contributions – inter alia the Italy country sections – of LGV’s Tankred Thiem.

During the official presentation ceremony hold in Berlin, the books have been praised as being a contribution to a genuine European Union legal culture. Written in straight – forward English language and directed to professionals all throughout Europe, a particular focus is put on the ECJ’s case law. Thanks to the efforts of a joint publisher team – a team of different editors including the German C.H. Beck oHG, Nomos Verlag and the UK-based Hart Publishing – both commentaries are available not only on the European market but also in the US and in Canada.


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.