EUIPO REFUSES TO REGISTER THE EUROPEAN TRADEMARK ‘SUPREME’

10/05/2018

The Office of the European Union for Intellectual Property has declared inadmissible the application for registration of a European trade mark filed by Chapter 4 for the mark “Supreme”, following review, considering the sign to be descriptive and devoid of distinctive character.

 

The European Union Intellectual Property Office (EUIPO) has decided to re-examine the application for registration of the European trademark proposed by Chapter 4 for the trademark “Supreme” for clothing, accessories, retail and online sale (classes 13, 25 and 35 of the Nice Classification). The Office’s decision was based on the observations of a third party.

Specifically, in the review procedure, the Supreme mark was assessed as descriptive, as the relevant consumers would perceive the sign as containing information that the goods and services for which Chapter 4 applied (handbags, clothing, retail services for clothing etc.) are of the highest quality. Consequently, according to EUIPO, consumers would be misled by that sign by giving it the ability to provide information on the very quality of the goods and services in question, which, in fact, bear the ‘Supreme’ mark.

Furthermore, the Office has argued that since the mark has a clear descriptive character, it is itself devoid of any distinctive character and thus unable to fulfil the essential function of the mark (i.e. to distinguish the goods or services of one undertaking from those of others) within the meaning of Article 7(1)(b) of the RMUE. In the opinion of the EUIPO, the sign in question is perceived by the relevant public merely as a laudatory promotional message capable of indicating the characteristics of the goods and services bearing it, highlighting its positive aspects, without any indication as to their commercial origin. EUIPO then goes so far as to state that although the sign for which Chapter 4 requested protection contains some elements which give it a certain degree of stylisation (consisting of fairly common and perfectly legible white characters, on a rectangular red background), the nature of those elements is so negligible that they do not give the mark as a whole any distinctive character.

By communication of 25 April 2018, EUIPO therefore refused the application for registration of the European trade mark filed by Chapter 4 of the Supreme trade mark, declaring it inadmissible and stating the reasons for its rejection on the basis of Article 7(1)(b) and (c) of Article 7(2) of the RMUE. Chapter 4, however, may present any observations on the objections raised by EUIPO within a period of two months from the notification of the communication of 25 April 2018; if any observations are not made within that period, the request will be rejected.


LEGATI ALL’UE – IL REGNO UNITO RATIFICA L’ACCORDO SUL TRIBUNALE UNIFICATO DEI BREVETTI (TUB)

04/05/2018

Il Regno Unito ha ratificato l’accordo relativo alla Corte Unificata dei Brevetti che crea una corte sovranazionale competente per le controversie in materia di brevetti tra gli Stati contraenti. La ratifica dimostra la volontà del governo britannico di continuare ad impregnarsi con l’attività di regolamentazione europea nel post Brexit

 

Il 26 aprile 2018 il governo britannico ha confermato che il Regno Unito ha ratificato l’accordo TUB, il trattato internazionale che prevede la creazione di un nuovo quadro di applicazione giudiziaria per la risoluzione delle controversie relative ai brevetti unitari e sui brevetti europei per i quali non è stata esercitata la rinuncia all’applicazione del Trattato.

La ratifica del Regno Unito era prevista già nel novembre 2016, ma la decisione del Regno Unito di lasciare l’Unione Europea ha sollevato dubbi sul fatto che la Gran Bretagna avrebbe ratificato il trattato o utilizzato il suo potenziale ritiro dal TUB come moneta di scambio nei negoziati Brexit.

Nella sua dichiarazione, il governo ha confermato che la partecipazione del Regno Unito al nuovo sistema TUB dopo Brexit resta incerta, nonostante la ratifica dell’accordo. L’accordo TUB prevede attualmente che i Paesi che partecipano al nuovo brevetto unitario e al nuovo sistema TUB siano membri dell’UE.

Affinché il nuovo sistema TUB entri in vigore, almeno 13 paesi dell’Unione, tra cui i tre con il maggior numero di brevetti europei – Germania, Francia e Regno Unito – devono adottare una legislazione nazionale per ratificare l’accordo TUB. La Francia e il Regno Unito lo hanno fatto, insieme ad altri 14 paesi.

Ora che il Regno Unito ha ratificato il trattato, rimane però un ostacolo prima che esso possa entrare in vigore, dal momento che la ratifica tedesca è stata bloccata da un ricorso contro il TUB pendente davanti a BVerfG.


FASTWEB FINED (AGAIN) BY THE COMPETITION AND MARKET GUARANTOR AUTHORITY (“AGCOM”) FOR MISLEADING ADVERTISING

24/04/2018

With the decision rendered at the end of the hearing of April 11, 2018, the Competition and Market Guarantor Authority imposed a pecuniary sanction of more than 4 million Euros against the giant of electronic communications Fastweb, for having it made unfair and misleading commercial practices pursuant to articles 20 paragraph 2, 21 and 22 of the Consumer Code.

 

The conduct of Fastweb banned by the Guarantor concerns a series of advertising claims – publicized via TV, internet, brochures and advertising – aimed at emphasizing the integral and exclusive use of optical fiber and the achievement of the highest performance in terms of speed and reliability of the connection omitting, however, to adequately inform the consumers about the characteristics of the transmission technology used, the geographical limits of the offer and the real potential of the offered fiber service. According to the Guarantor, such conduct is in contrast with articles 20, 21 and 22 of the Consumer Code since it did not put the consumer in a position to identify the elements that specifically characterize the offer, with particular reference to the different type of services related to the technology underlying the various types of offer; moreover, still according to the Guarantor, Fastweb would have not provided adequate visibility to the additional option, upon payment after a period of gratuity, which allows to obtain the maximum speed advertised. The fine of over 4 million Euros is the result, among others, of the balancing between the aggravating factor of Fastweb’s recidivism and the mitigation due to the partial amendment, by Fastweb, of the information on its own offers.


LGV AVVOCATI WINS IN THE MATTER OF JURISDICTION

28/03/2018

In a recent decision, the Court of Bergamo recognized the lack of jurisdiction of the Italian judicial authorities in a negative assessment procedure for receivables established against a Dutch company that is a client of LGV.

 

The present proceeding was initiated, with an appeal pursuant to article 702-bis of the Italian Code of Civil Procedure, by an Italian company – manufacturer of motorcycle helmet – against its Dutch distributor, assisted by LGV, in order to request verification of the non-existence of the right claimed by the latter in relation to the recognition of a bonus on turnover in 2016.

LGV appeared before the Court contesting, on a preliminary basis, the lack of jurisdiction of the Italian judge, on the basis of the provisions of EU Regulation 1215/2012; in particular, in particular, it maintained that the Dutch Court had jurisdiction both under Article 5 of the abovementioned Regulation, in relation to the connecting factor for the general forum of the defendant, and both in application of Article 7 on optional forums in the case of the sale of movable property.

The Court of Bergamo, in a decision issued only 5 months after the start of the proceedings, upheld the preliminary requests of the defendant, declaring that the Italian judicial authority lacked jurisdiction and ordered the applicant to pay the costs of the proceedings. In particular, the Court clarified that, in application of Article 4 of Regulation (EU) No 1215/12, “(…) in cases of international disputes, jurisdiction lies with the courts of the place where the defendant is domiciled or, in the case of companies, the place of domicile” and that, pursuant to  Article 7 of the aforementioned Regulation, in the case of contracts for the sale of movable property, jurisdiction lies with the court of the place, situated in a Member State, where the goods were delivered or should have been delivered under the contract. In the present case, the defendant is based in the Netherlands and the applicant’s assets were delivered to the Netherlands; the judge, therefore, concluded that the Italian judge lacked jurisdiction.


CROCS SHOES: INVALIDITY OF THE DESIGN REGISTRATION

21/03/2018

On 14 March, The General Court of the European Union has confirmed that the design registration of the Crocs’ footwear design is invalid due to a lack of novelty. Crocs failed to demonstrate to have not pre-disclosured the design.

 

On 22 November 2004, Western Brands filed an application to OHIM (now EUIPO) to register a footwear design, claiming the priority of the US application filed on 28 May 2004. The design was thus registered as Community design on 8 February 2005, and then transferred to Crocs on 3 November 2005.

In 2013, a French company called Gifi Diffusion requested EUIPO to invalidate Crocs’ design for a lack of novelty, stating that it was disclosed before the 12-month period preceding the priority date (that is, prior to 28 May 2013). In fact, a design can be protected in the EU if it wasn’t disclosed to the public before the 12-month period preceding the priority date.

On 13 February 2014, the Invalidity Division of EUIPO dismissed Gifi Diffusion’s application, because the prior disclosure had not been demonstrated.

On 27 March 2014, Gifi Diffusion filed a notice of appeal against decision of the Invalidity Division, demonstrating that the design was disclosed prior to 28 May 2013 on three occasions: on Crocs’ website; at a boat show in Florida and by putting on sale shoes with that design in a consistent number of American states. For these reasons, the Third Board of Appeal of EUIPO annulled the Invalidity Division’s decision, declaring the design invalid. Crocs appealed against the decision, stating that disclosure events could not reasonably have become known to the footwear industries in the EU, during their normal business.

With its decision, on 14 March 2018 the General Court has nevertheless assumed that Crocs failed to prove both that the website could not be found by footwear producers operating outside the USA and that they were not aware of the international boat show in Florida. The Court also affirmed the sale of footwear of that design was also carried out in a manner which could not have gone unnoticed by the Union’s specialised circles.

These three observations led the Court to consider EUIPO’s findings to be correct and, therefore, to dismiss Crocs’ appeal.