GENUINE USE OF THE COLLECTIVE TRADEMARK: A NEW IMPORTANT JUDGEMENT OF THE COURT OF JUSTICE OF THE EUROPEAN UNION

14/01/2020

With its judgment of December12, 2019, rendered at the end of the case C-143/19 (available at the following link http://curia.europa.eu/juris/document/document.jsf?text=&docid=221511&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=7995923), the Court of Justice of the European Union (“CJEU”) clarified that a collective mark, shown on the packaging of products marketed by the companies affiliated to the association holder of the mark, can be considered as “genuinely used” in the territory of the European Union even with reference to the specific products contained in the packaging, not bearing the aforementioned collective mark.

 

The background.
On June 12, 1996, the German company DGP GmbH filed with EUIPO an application for the registration of the figurative sign “representation of a circle with two arrows” as a collective mark for goods in Classes 1-34 and services in Classes 35, 39, 40 and 42 of Nice Classification. According to the regulations governing use filed with the trademark application pursuant to under art. 67 of EU Regulation no. 207/2009 (now replaced by Article 75 of Regulation (EC) No 1001/2017), the trademark in question was registered “in order to enable consumers and traders to recognise packaging which is part of the DGP recycling system and for which a contribution to the financing of the system has been established, as well as goods packaged in this way, and to distinguish them from other packaging and goods”.

Following the registration of the mark, on November 2, 2012 a Slovak company applied for the partial revocation for non-use of the collective mark. By decision of May 26, 2015, the EUIPO’s Cancellation Division granted the application and declared the collective mark revoked in respect of all the goods for which it was registered, with the sole exception of goods consisting of packaging.

The revocation was upheld by the Board of Appeal of EUIPO, first, and by the General Court of the European Union, second. The latter, in particular, by judgment of September 12, 2018 (case T-253/17), stated that in the present case the collective mark holder had proved the sign’s genuine use only in relation to the packaging of the goods, and not also to the goods themselves. It added that the trademark in question would have only indicated that the packaging on which the sign was imprinted could be collected and enhanced in accordance with a specific recycling system, but this would have not guaranteed any indication of origin in relation to the individual goods. For that reason, the collective mark was declared partially revoked. The General Court therefore concluded that the EUIPO’s decision declaring DGP’s collective mark to be revoked was free from any objections on that point.

CJEU Decision.
With the judgment in question, the CJEU overturned the previous rulings and annulled the judgments of both the EU General Court and EUIPO’s Board of Appeal.

The Court’s reasoning starts from the assumption that the principle of law according to which a European Union trademark is genuinely used “when used in accordance with its essential function, in order to create or preserve an outlet for the goods and services for which it is registered” also applies unquestionably to collective trademarks, the essential function of which is – as known, unlike individual trademarks – to distinguish the goods and services of the subjects affiliated to the association which owns the mark from those of other undertakings.

On the basis of this premise, the EU judges objected the judgment of the EU General Court in so far as it merely found that DGP had failed to prove that the trademark in question was also intended to create or preserve an outlet for the goods at issue (and not only for packaging containing the goods), without first examining whether the mark was “actually” used on the market for the goods or services concerned. According to the Court, that assessment should have been carried out by taking in particular consideration the uses considered justified, in the economic field concerned, to maintain or create an outlet for the goods or services covered by the mark, the nature of those goods and services, the characteristics of the relevant market, the extent and frequency of use of the mark.

In the present case, therefore, the General Court should not have ended its judgment on the fact (considered clear) that the consumer, looking at the collective mark in question, would have understood that DGP’s system concerned the local collection and recovery of the packaging of the goods and not also the collection or recovery of the goods themselves. But it should have gone further, also investigating whether the indication to the consumer, at the time when the products were placed on the market, of the provision of such a system of local collection and recycling of packaging waste, might have been capable of creating or maintaining a certain market share even for some specific products.
In fact – concludes the Court – the nature of most of the products associated with the collective mark in question, consisting of everyday goods capable of generating packaging waste on a daily basis, in no way excludes (and indeed probably confirms) that the indication on their packaging of the affiliation to such a system of local collection and ecological treatment of packaging waste may well influence consumers’ purchasing decisions and, consequently, contribute to the preservation or creation of market shares relating to the products. Which is sufficient to demonstrate the effective use of the collective mark, so as to prevent its revocation.

Giorgio Rapaccini


CJEU RULES THAT THE PROVISION OF EBOOKS IS AN ACT OF COMMUNICATION TO THE PUBLIC

08/01/2020

The Court of Justice of the European Union (CJEU), in its judgment Tom Kabinet C-263/18 of December 19th2019, ruled that the provision of an ebook for permanent use constitutes an act of “communication to the public” under the 2001/29 InfoSoc Directive.

 

The background:
Nederlands Uitgeversverbond (infra NUV) and Groep Algemene Uitgeversle (infra GAV), two associations representing dutch copyright owners, filed a lawsuit before the Court of First Instance in The Hague seeking a ban on the Dutch company ‘Tom Kabinet’ about reproducing and making available several ebooks to members affiliated to its book reading club on a special website of that company.
That request was based on the alleged copyright infringement by Tom Kabinet itself, on the ground that the offer of second-hand ebooks via an online platform to members of a reading club constituted in fact an act of communication to the public which was unauthorised and, therefore, in full breach of the publishers’ copyright.

CJEU Decision:
By judgement Tom Kabinet C-263/18 of December 19th 2019, the Court of Justice of the European Union held that the provision of an ebook cannot be covered by the right of ‘distribution to the public’ under Article 4(1) of InfoSoc Directive 2001/29. On the contrary, that activity must be regarded as covered by the concept of ‘communication to the public’ in Article 3(1) of that directive. Hence the inapplicability of the principle of exhaustion, which applies only to the right of distribution and that is excluded in relation to the right of communication to the public.
In support of its ruling, the Court points out that the European legislative authority, on the basis of the Copyright Treaty of the World Intellectual Property Organisation (WIPO) and on the basis of preparatory work for the InfoSoc directive itself, has made it clear that the principle of exhaustion applies only to the distribution of tangible works, such as books printed on a material medium, to the exclusion altogether of works in electronic form. Ebooks, being dematerialised, do not suffer any deterioration as a result of prolonged use and can therefore be considered as real copies equal to new ones on the secondary market.

The meaning of “communication to the public”:
In its ruling, the Court of Justice then paid attention to the meaning of “communication to the public”, pointing out that it should be understood in a broad sense, since it concerns all communications to the public not present at the place where they originate and, therefore, any transmission or retransmission of a work. The Court went on to emphasise that the mere preparation for downloading a work through a special website constitutes a genuine act of communication, without it being necessary for the individual user to proceed with the actual downloading of the work. From a substantive point of view, it is reiterated that the act in question must be included in the option of ‘making the work available to the public’, as it is also clear from the explanatory memorandum on the proposal for the InfoSoc Directive 2001/29.
In addition, the Court stated that through the platform managed by Tom Kabinet there were several users who could simultaneously or successively access the same work. This is further in support of the fact that the disclosure made must be classified as effective communication to the public.
In conclusion, the Court then pointed out that the making available of a book in electronic format (so-called ebook) is normally accompanied by a license to use it which authorizes the user who downloaded the work to read it.
Consequently, it is implicit to believe that the type of communication carried out by the Tom Kabinet company, addressed indiscriminately to all users registered on a special sharing platform, is addressed to a completely new audience, not included among the one originally considered by copyright holders, as expressly required by the notion of “communication to the public” outlined by the Court of Justice of the European Union.

Paolo Rovera


EU GENERAL COURT: A SIGN REFERRING TO MARIJUANA IS CONTRARY TO PUBLIC POLICY AND MAY NOT BE REGISTERED AS A EUROPEAN UNION TRADEMARK

27/12/2019

The General Court of the European Union, by judgment T-683/18 of 12 December 2019, confirmed that the sign “Cannabis Store Amsterdam” containing the graphic representation of cannabis leaves in the background is contrary to public policy and therefore cannot be registered as a trademark of the European Union.

 

The case
The applicant filed an application for registration of a European Union trademark for goods and services related to food and beverages. Following the refusal by the examiner on grounds of public policy under Article 7(1)(f) of EU Regulation 2007/1001, the applicant brought an appeal before the Board of Appeal. The Board of Appeal, by decision of 31 August 2018, also confirmed the examiner’s decision and rejected the appeal. The applicant then brought an appeal before the General Court of the European Union.

The decision of the EU General Court
By judgment T-683/18 of 12 December 2019, the General Court confirmed the decision of the Board of Appeal, in which it held that, although hemp leaf does not contain any psychoactive substance, it is often used as a media symbol for marijuana. In addition, the word “Amsterdam” refers to the fact that this city has many shops for narcotics derived from cannabis, due to the sale of cannabis being tolerated in Netherlands. Furthermore, the word “store”, which means “shop”, has the effect that the public could expect the products and services correspond to those offered by a marijuana shop.

With reference to the concept of public policy, the Court confirmed that the decisive criterion for the purposes of assessing whether a sign is contrary to public policy is the perception which the relevant public will have of the trademark. That perception may be based on inaccurate definitions from a scientific or technical point of view, which means that it is the specific and current perception of that sign that matters, irrespective of whether the consumer has all the information available. The presence in the sign of the words “Amsterdam”, “Cannabis” and “Store”, together with the cannabis leaves, means that the target public perceives that the goods and services identified by the sign contain drugs which are illegal in many Member States.

The judges emphasize the principle that if grounds for obstruction due to contrary to public policy exist only in certain EU territories, the obstruction extends to the entire territory of the European Union. EU law does not impose a uniform scale of values and acknowledges that the requirements of public policy may vary from one country to another and from one era to another. Member States essentially retain the freedom to determine what constitutes those requirements in accordance with their national politics.

In particular, the Court noted that, although there is a debate in some Member States about the legalization of marijuana also for recreational use, the use of marijuana is illegal in many European countries. That prohibition thus seeks to protect an interest which those Member States consider fundamental in accordance with their own systems of values, with the result that the rules applicable to the consumption and use of that substance are a matter of “public policy”. Considering this public policy protectable, the Court notes that there is no unanimously accepted, or even predominant trend in the European Union regarding the lawfulness of the use or consumption of products derived from cannabis, but Articles 83 and 168 TFEU which fight against illicit drug trafficking and prevention of and information on the health effects of drugs

In conclusion, the General Court rejected the appeal confirming that the sign cannot be registered under the combined provisions of Article 7(1)(f) and Article 7(2) of Regulation 2017/1001.

The full text of the decision can be found at the following link:

Paolo Passadori


THE COURT OF JUSTICE RULES ON BALSAMIC VINEGAR OF MODENA PGI: ARE THE NON-GEOGRAPHICAL TERMS PROTECTED PURSUANT TO REG. NO 1151/2012?

12/12/2019

The Court of Justice of the European Union, by decision of 4 December 2019, held that the protection of the name “Aceto Balsamico di Modena” does not extend to the use of its non-geographical terms, such as “vinegar” and “balsamic”.

 

The parties and the case
The decision of the Court of Justice involved, on the one hand, Consorzio di Tutela dell’Aceto Balsamico di Modena IGP, a consortium of producers of products designated by the name “Aceto Balsamico di Modena (PGI)” and, on the other, the German company “Balema GmbH”. The consortium requested that Balema GmbH refrain from using the term “balsamico”. In response to the request to cease and desist from the usage of said terms, Balema brought an action before the German courts seeking a declaration that it has the right to use that term for those products.

Stages of the procedure
Balema GmbH, defeated at first instance, had appealed to the German Court of Appeal, which has recognized the right to use the term “balsamic” to distinguish vinegar-based products produced in Germany, stating the absence of violation of the prohibition of usurpation, evocation or imitation of the protected geographical indications in the EU.

Preliminary ruling of the Court of Justice
The German Federal Court of Justice, has asksed the Court of Justice to determine whether the protection of the name “Aceto Balsamico di Modena”, which is conferred by the regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs covers only the entire name, that is “Aceto Balsamico di Modena”, or extends to the use of the non-geographical terms of that name, that is to say “aceto”, “balsamico” and “aceto balsamico”, in order to obtain an official interpretation of EU Regulation no. 1151/2012.

The decision issued by the Court of Justice
In its judgment of 4 December 2019, the Court held that the protection of the name “Aceto Balsamico di Modena” did not extend to the use of individual non-geographical terms. According to the Court, the registration of said PGI concerns the name “Aceto Balsamico di Modena” as a whole. Consequently, the protection granted by EU Regulation no. 1151/2012 covers only the whole name. The non-geographical terms of said PGI, namely “vinegar” and “balsamic vinegar”, their combination and translations, in the Court’s view, cannot benefit from such protection. According to the Court, those terms lack any geographical connotation. In particular, the Court has stated that the term “vinegar” is a common term and the term “balsamic” is an adjective commonly used to designate a vinegar characterised by a sweet-and-sour taste.

Valentina Cerrigone


TURNING POINT IN GERMANY ON THE USE OF GOOGLE ANALYTICS COOKIES: MANY REGIONS OF GERMANY WILL REQUIRE USER CONSENT IN THE FUTURE, ABANDONING A MODEL SIMILAR TO THAT CURRENTLY USED IN ITALY

03/12/2019

In Germany, where the implementation of personal data protection measures is the responsibility of the individual regions, and not of the Federal Government, several regional authorities have published recommendations regarding the use of instruments such as GOOGLE ANALYTICS. According to these recommendations, the use of the service in question must be subject to the prior consent of the user. The competent authorities have pointed out that when using the services of Google Analytics, the data collected are also transmitted to another recipient (Google), who uses them for its own purposes. It follows that such processing by Google can no longer be considered as a mere activity of the “data processor”.

 

Under the previous rules, services such as GOOGLE ANALYTICS were considered lawful from the point of view of processing of personal data, even though the processing in question was carried out without the prior consent of the data subjects. In this respect, some German regional authorities (e.g. Hamburg) considered the processing of personal data to be lawful in the absence of consent as long as certain specific requirements were met, such as the following:

– the creation of pseudonymised profiles;
– the right of opposition (with an opt-out procedure);
– the conclusion of a contract with Google;
– the presence of information for the user on the use of Google Analytics;
– partial deletion of the IP address in Google’s settings (IP anonymisation).

In many respects, these criteria are similar to the provisions of the Italian Data Protection authority in the directives published in 2014 and 2015.

The decision taken by the Länder was justified by the changes and technical development the product: “Google Analytics has been developed in recent years in such a way that it no longer represents processing as a mere data controller. Rather, the provider is granted the right to use the data of visitors to the websites for its own purposes.”

Since data protection matters are harmonised and since the reasons for the decision taken by the German authorities are based on an analysis of the technical characteristics of the service, it can be assumed that the issue will soon be brought to the attention of other national data protection authorities, with the possible consequence that the prior consent of the data subject will also become a necessary requirement in other EU Member States or – to be more precise – throughout the European Union (so that the various German Länder would in this case act as “forerunners”).

Tankred Thiem