The significance of comprehending the scope of protection given to marks with a reputation in EU law was brought up again in a recent case. The trademark at issue in this case is unquestionably one of the most well-known brands in the world: GOOGLE. This judgment again confirms that well-known trademarks enjoy a much broader scope of protection.

A. Subject Matter of Dispute/Background

 On 9 January 2019, Mr. Zoubier Harbaoui, a French citizen, sought to register the EU Trademark Application “GC Google Car” (word/device mark) to the European Union Intellectual Property Office (‘EUIPO’). The application was filed for ‘vehicles and conveyances’ in Class 12. The application was published on 21 February 2019. On 20 May 2019, Google LLC, based in the USA, filed an opposition.

B. Opposition

Google LLC filed an opposition against Mr. Zoubier Harbaoui. The opposition was based on EUTM registration No. 1104306 “GOOGLE” (word mark) and 12 other earlier EUTMs of the company containing the word Google (e.g. Google Chrome, Google Lens, Google Duo, Google Jump etc.). The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of European Union Trade Mark Regulation (EUTMR).

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The signs “GOOGLE” and “GC Google Car” have been found similar. The relevant public will establish a link between the signs, in other words “GOOGLE” will be perceived as the main badge of origin of the respective goods and services in both signs. The contested sign is likely to harm the earlier reputed mark in the sense that its capacity to arouse immediate association with the opponent’s company would be diminished. Furthermore, the use of the contested trademark would take unfair advantage of the distinctive character and the reputation of the earlier trademark and be detrimental to its distinctive character.

On 4 March 2020, the Opposition Division upheld the opposition for all the contested goods considering the distinctive character and repute of the earlier ‘GOOGLE’ trademark and the EUTM application was rejected in its entirety on the basis of Article 8(5).

C. Appeal

            On 13 May 2020, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The EUIPO’s First Board of Appeal examined the reputation of the earlier trademark and stated that the earlier mark enjoys a truly global reputation. Afterwards, the signs were compared and at least an average level of similarity between the conflicting signs has been found. It was also pointed out that the fact that the opponent is also developing its own project in the automotive sector, will necessarily make the consumers link the conflicting marks. In the present case, the applicant has used the term ‘GOOGLE’ together with a descriptive addition ‘CAR’ and the acronym ‘GC’, which is likely to be read as the initial letters of the words ‘Google Car’. The reference to Google is more than obvious. Therefore the use of the contested sign is liable to take an unfair advantage of the opponent’s reputation.

            The Board concluded that the conditions for the application of Article 8(5) EUTMR are met in the present case. The appeal was dismissed on 18 June 2021.

D. Decision of the European General Court (EGC)

Mr. Zoubier Harbaoui, sought annulment of the decision (‘the contested decision’) of the EUIPO’s First Board of Appeal dated 18 June 2021 and filed a further appeal with the European General Court (EGC). The Court conducted its review under three headings: (i) incorrect visual and conceptual comparison of the signs at issue, (ii) incorrect assessment of the existence of a link between the marks at issue, and (iii) incorrect assessment of the risk of unfair advantage.

(i) Incorrect visual and conceptual comparison of the signs at issue

The applicant alleges that the Board of Appeal made an error of assessment in its comparison of the signs at issue, the similarity between signs in this context is not average but low. The applicant does not challenge the Board of Appeal’s assessment that the marks at issue have an average degree of phonetic similarity.

The court held that although the abbreviation “GC” was the dominant part of the mark, the Google Car words underneath were also prominent. In this respect, it found no error in the previous decision and concluded that the signs are averagely visually similar.

An acronym representing the initials of the other word elements of the mark can even support the relevant public’s perception of the word combination of those elements. In the present case, the element ‘gc’ emphasizes the reference to the earlier mark “GOOGLE” from the point of view of the relevant public. Another point to add is that the word “google” has no specific meaning as such, however, generally associated with the intervener’s internet search engine or internet searches in general, as shown by its inclusion in the online English-language dictionary Collins. The Board of Appeal found that the degree of conceptual similarity between the signs at issue was high. The Court decided that the Board of Appeal did not make an error of assessment in finding that the signs at issue have an average degree of conceptual similarity.

(ii) Incorrect assessment of the existence of a link between the marks at issue

According to the applicant, the reputation of the earlier mark is based on search engine services and not cars. Therefore, consumers will therefore not establish a link between the marks at issue. The applicant claims that consumers will recognize the specific mark WAYMO, which the intervener uses to operate in the automotive sector, as the mark under which the intervener markets cars and car services and not Google Car. Second, the applicant argues that the application for registration of the mark applied for covers cars in general, without specifying that they are self-driving cars. Third, he submits that the parties’ business focuses are different from each other, which strongly reduces the risk for consumers of making a link between the signs at issue.

The Board of Appeal observed, that although the goods covered by the mark applied for are not similar to the goods in respect of which the earlier mark enjoys a reputation, the relevant public will be aware of Google’s reputation and will therefore associate the mark applied for with a car linked to Google. The public will clearly recognize the term “google” and assume that the vehicles and conveyances incorporate Google technologies. First, the mere existence of a separate mark used by the intervener in connection with its cars (WAYMO) does not in any way affect the fact that consumers will establish a link between the signs. Secondly, vehicles, as a broader category, include cars, including self-driving cars and therefore the applicant’s argument that the fact that the goods covered by his application are not self-driving cars must be rejected. Thirdly, the argument that the business focuses of the parties are far from each other must also be rejected, because there is in actual fact an overlap between commercial activities owing to the intervener’s activity in the automotive sector. As a result, the Board of Appeal did not commit an error of assessment in considering that the relevant public will establish a link between the marks at issue.

(iii) Incorrect assessment of the risk of unfair advantage

According to the applicant, the Board of Appeal erroneously determined that there was a danger of unfair advantage. The strength of the mark's image, the degree of distinctiveness of the mark, the degree of similarity between the marks in question, and the nature and proximity of the products or services are just a few of the factors that must be considered in order to reach an unfair competition conclusion. The more quickly and strongly the later mark conjures up the earlier mark, the more likely it is that the later mark is being unfairly used now or in the future.

The Board of Appeal stated that the applicant would unfairly advantage the earlier mark's attractiveness given the more than clear reference to it and its extremely strong reputation. The intervener's mark, WAYMO, wouldn't stop someone from using the previous mark unfairly. The Court ruled that unfair advantage exists.

Conclusion

Having regard to all the foregoing considerations and given that none of the three parts of the single plea raised by the applicant in support of the form of order sought is to be upheld, the Court decided that the action must be dismissed. Consequently, the EU Trademark Application No. 18007095 “GC GOOGLE CAR” cannot be registered as a trademark.

Millions of spectators from various countries participate in the tournaments organized around the world every year. In this context, marketing, advertising, and branding sports events have gained great importance. Sport teams and sports personalities are looked at as big business opportunities. Intellectual property is also becoming increasingly important in this growing industry.

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To recap briefly, intellectual property (IP) refers to an umbrella term used to describe creations of the mind and includes patents, trademarks, artistic works, trade secrets, copyrights, designs, etc. When IP is specifically examined for sports, it can be seen that patents can be used for the development of sports equipment; trademarks, brands, and designs can be used to define the unique personality of a team or sporting event; and copyrights play a role in conveying sports events to their audience through media.

This blog article will look at the various forms of IP that may be found in the world of sports. The aim is to give a short overview.

1. Sports Trademarks

When we think of the Olympics, do we not all remember the brand consisting of five hoops? When buying the uniform of the football team we support, does not the team's logo appear on it? When we hear the slogan "Impossible is nothing", don we not think of Adidas, whose logo consists of 3 stripes? These are some examples of trademarks that are being used in sports. One of the most common intellectual properties associated with sports is a trademark. Trademarks can be names, captions, symbols, numbers, colors, shapes, sounds, etc. They allow the customer to recognize the product and understand which company the product belongs to. In addition to providing a manner of identification, trademarks can also add to the value of a mark when used in various forms such as merchandise, sponsorships, etc. To determine a franchise's brand equity, ads and sponsorships are typically linked to trademarks.

When we think about the logo of the FC Bayern München Football Team. The logo comprises three colors: red, blue, and white. The texts on the logo are written in a certain font, and the width and length proportions of the logo were determined. This is the trademark of FC Bayern München, an important asset that, if used successfully, helps consumers develop trust, confidence, and loyalty in a product, which, for example, can be the uniform of the team. In addition, a trademark in general, especially a famous one like FC Bayern München trademark, has an incredible economic value.

In general, trademark protection is created by applying for a trademark at a trademark office. However, in some countries (e.g. USA), protection is also created by mere use of the mark. Once registered, they may be used for an endless period of time if renewed, usually every then years. The Madrid System, which is used by a United Nations agency, the World Intellectual Property Office (WIPO) to register international trademarks, enables trademark owners to submit a single application for registration across numerous jurisdictions and to maintain and renew their marks using a single process. Currently, there are 114 Contracting Parties covering 130 countries (status: 24 November 2022) Member States to the Madrid Protocol/Agreement.

2. Sports Patents

Sports technologists have used their creativity, innovation, and expertise to create better, safer equipment in the pursuit of sporting success. For instance, new high-tech materials used to create stronger and lighter athletic footwear have allowed football athletes all over the world to achieve new levels of success while reducing the danger of injury. Patents protect these inventive sports technologies under the IP system. Sports patents include gym equipment, sportswear, energy drinks, nutritional supplements, etc. For the duration of the patent, which is typically 20 years, it prevents an innovation from being used without permission by a third party.

Patents are territorial, just as other intellectual property rights are; they only have legal standing in the nation or territory in which they were granted. Thus, obtaining patent protection across numerous nations may be time-consuming and costly. Inventors can start the process of securing patent protection in individual countries or in several nations by submitting a single international application under WIPO's Patent Cooperation Treaty (PCT).

3. Designs in Sports

Designing a product in a way that appeals to consumers has a crucial role in enhancing its commercial worth and increasing its marketability in a highly competitive market. In order to create designs that are successful and adapt to shifting consumer preferences, businesses devote significant resources and experience. For example, some textiles are designed to provide insulation and protection against wind and water, qualities that are crucial for athletes competing in colder areas.

Sports-related products with unique 2D or 3D shapes are protected by design legislation, which is a significant source of IP protection in the sports sector. To be protected by law, an industrial design must typically be registered. Protection, however, is only offered in the nation in which the design is registered. The Hague System of the WIPO offers secure protection for an industrial design across several nations. Companies can protect themselves from lookalikes and fake products by registering their designs and acquiring intellectual property rights over them.

4. Copyright and Broadcasting Rights in Sports

Of course, it is not a coincidence that nobody is out on the streets on the days of big games! Everyone is either attending the game in person or watching it on television. This allows billions of people all over the world to experience the thrill of major sporting events at the same time. The sale of broadcasting and media rights has become the primary source of income for the majority of sports organizations, providing the money required to support major athletic events.

The connection between sport and television and other media is supported by copyright and related rights. Broadcasters have exclusive rights for 20 years to permit rebroadcasting, recording, reproduction, and public communication of their broadcasts under the Rome Convention, which was signed in 1961 and is for the protection of performers, producers of phonograms, and broadcasting organizations. The creation of an international legal framework that effectively and appropriately guards against broadcast signal piracy is the goal of ongoing WIPO negotiations.

5. Licensees in Sports

Licensing and merchandising enable fans to support a sporting event by providing them with actual, officially licensed products. Caps, t-shirts, mugs, shoes, toys, lighters, and other items are among the most typical and well-liked merchandise options. So, IP right owners who hold patents, trademarks, and copyrights may provide licenses to third parties in exchange for payment. Without giving ownership of the intellectual property, licenses give rights for technology usage, publishing and entertainment, merchandising, and trademark use.

6. IP and Dispute Resolution in Sports

In the area of intellectual property and sports, disputes may arise over sports broadcasting and media, licensing and merchandising rights for important sporting events, and commercial exploitation of athletes' image rights, among other issues. The WIPO Arbitration and Mediation Center offers alternative dispute resolution (ADR) guidance and case administration services as part of the WIPO ADR Services for Specific Sectors to assist parties in resolving disputes arising in the areas of intellectual property (IP) and sports without resorting to court litigation.

Conclusion

IP is used to characterize all types of mental works, including patents, trademarks, literary and artistic creations, trade secrets, copyrights, and designs, and can be used to create sports gear, trademarks, branding, and designs, as well as to establish the distinctive character of a team or sporting occasion. Protecting intellectual property rights holders' interests and avoiding harm to them are crucial. Legal protection of IP rights is achieved through registrations that can be made locally or internationally.

            For more information, please see the link below for the WIPO brochure "Reference Guide to Sustaining Sport and its Development through Intellectual Property Rights": https://www.wipo.int/export/sites/www/sports/en/docs/guide-sustaining-sport-ipr-2022.pdf

The European Law Students’ Association (ELSA) is an international organization that brings together law students and young lawyers from many countries throughout Europe, helps them expand their knowledge of different legal systems, and promotes mutual understanding, exchange of information, and personal contacts between young lawyers and law firms.

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Background to ELSA Traineeships

ELSA Traineeships is one of ELSA's oldest projects, organized twice a year, and provides opportunities to apply for various internships at law firms across Europe. In the past 14 years, the IP boutique firm LexDellmeier headquartered in Munich, Germany, has offered one 3 – 6 month internship to ELSA per year.

This year, the application cycle for ELSA Traineeships was very competitive (48 applications for one open traineeship at LexDellmeier), and the overall quality of applications received was extremely high. After evaluating the applications, we welcomed our new intern in February 2023, who will work with us for three months.

About Sabah Mine Cangil

Ms. Sabah Mine Cangil is 24 years old, speaks Turkish, German and English and lives in Istanbul, Turkey. She decided to study law after graduating from Istanbul German High School in 2017 with an Abitur Diploma. She graduated from Istanbul University Faculty of Law in 2021. This year, she will graduate from the second undergraduate program she studies at Istanbul University, which is sociology. She is also a student of the Public Law Master's Program at Istanbul University Institute of Social Sciences and is writing her master’s thesis now.

After her graduation, she completed her oneyear compulsory legal internship at GEMS Schindhelm Law Firm in Istanbul and just recently received her lawyer's license in December 2022. During her legal internship, she worked mainly in the fields of commercial law, labor law, and immigration law.

While gaining various experience in the legal field and looking into the field of intellectual property, she also tries to spare time for her hobbies: playing the drums, singing, and doing sports. As a singer-songwriter, she has two original songs published on digital platforms. In the field of sports, she did Aikido for many years; now she does reformer Pilates.

During her undergraduate studies, she attended many international seminars and did a lot of comparative law studies (DigiCrimJus, Dreiländerseminar, etc.). She has previously participated in law summer schools in Innsbruck, Austria, and Athens, Greece, and had the opportunity to do an internship in Athens through ELSA, gaining international experience. Therefore, she applied for the ELSA Traineeships again. Intellectual property law is an area she would like to specialize in, so she wanted to apply for the internship at LexDellmeier IP Law Firm. She has been accepted for the internship and is very excited to work for three months, half remotely and half on-site in Munich, Germany.

Expectations regarding the ELSA Traineeship

During her time at LexDellmeier, she would like to expand her knowledge in the field of  intellectual property (IP). In this context, she will be assisting the LexDellmeier team in the preparation of counseling and litigation services they provide to clients on an international basis. She will also be researching and writing blog posts on specific topics of intellectual property and will take part in a 3-month project during her internship. She firmly believes that working at a law firm in Germany will improve her language skills (English and German) professionally, improve her ability to communicate with people, and teach her how to work collaboratively in an international business environment with international colleagues and clients.

We warmly welcome her to the LexDellmeier team!

What a ride and wake-up call for McDonald’s. 

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After the European Union Intellectual Property Office (EUIPO) had been of the opinion in the first instance that genuine use of EUTM 000062638 “BIG MAC” (word mark) had not been proven sufficiently by McDonald’s, the EUIPO’s Board of Appeal (BoA) now reversed the first-instance decision – also after classifying all kinds of additional evidence as eligible for consideration.

The following blog article shows how hard it may be nowadays for trademark owners to prove sufficient use of their trademarks for the goods and services registered. Trademark owners must be careful and diligent when compiling so-called “proof-of use” materials. And, always keep in mind that the standards to prove use are different around the world!

1. First instance proceedings before the EUIPO Cancellation Division (CD)

On 11 January 2019, the EUIPO caused quite a stir among trademark experts with its first instance decision (Case no. 000014788) that EUTM 000062638 “BIG MAC” of McDonald’s International Property Company, Ltd. is not genuinely used for the goods and services for which it had been registered, which are the following:

Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts;

Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar;

Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

In its first instance decision, the EUIPO inter alia assessed that

• three affidavits (with attached examples of packaging, promotional brochures etc.) have “less weight than independent evidence”;
• the EUIPO proprietor failed to prove the extent of use of its mark;
• all remaining evidence originates from the EUTM proprietor itself;
• Wikipedia entries cannot be considered as a reliable source of information;
• taking into account the submitted evidence as a whole, the documents do not provide conclusive information that the products marked with the EUTM (“BIG MAC”) are offered for actual sale, as there is no confirmation of commercial transactions and
• there is no single piece of evidence that refers to any of the registered services being offered under the EUTM.

2. Appeal proceedings before the EUIPO Board of Appeal (BoA)

McDonald’s, of course, appealed and the BoA has now it its decision of 14 December 2022 – quite rightly – acknowledged that McDonald’s has sufficiently proven genuine use of the mark “BIG MAC” for at least the following goods and services (in bold):

Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, fish sandwiches, pork sandwiches, chicken sandwiches, preserved and cooked fruits and vegetables, eggs, cheese, milk, milk preparations, pickles, desserts;

Class 30: Edible sandwiches, meat sandwiches, pork sandwiches, fish sandwiches, chicken sandwiches, biscuits, bread, cakes, cookies, chocolate, coffee, coffee substitutes, tea, mustard, oatmeal, pastries, sauces, seasonings, sugar;

Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive- through facilities; preparation of carry-out foods; the designing of such restaurants, establishments and facilities for others; construction planning and construction consulting for restaurants for others.

1. Evidence considered in the appeal stage

The BoA of course examined the evidence McDonald’s had provided in the first instance proceedings.

However, in addition to that, McDonald’s had submitted a large amount (700 pages) of additional evidence as to genuine use in the appeal stage, namely

• consumer surveys
• online newspaper and magazine articles regarding the “BIG MAC Index” (which is an informal way of measuring the purchasing power parity between two currencies)
• photographs of original packaging used in relation to the “BIG MAC” product
• various copies of receipts and/or excerpts from electronic cash registers
• screenshots of TV commercials
• photographs showing the adverts used at bus stops
• advertising material
• photographs of menus in McDonald’s restaurants
• news articles and third party publications (for example screenshots of YouTube videos)
• Google analytics report relating to McDonald’s websites displaying the “BIG MAC” product
• a financial audit report
• further affidavits and a letter of confirmation.
• further affidavits and a letter of confirmation.

The Cancellation Applicant of course argued that the additional evidence should be rejected in its entirety because it constitutes a significant and substantial part of the evidence of use and was only submitted at the appeal stage without due cause.

It is very interesting from a procedural point of view that the BoA considered all the approximately 700 pages of newly submitted documents from McDonald’s and did not reject them as delayed. They have, however, dealt with the question of admissibility of these documents very carefully and concluded that the conditions for accepting the additional evidence submitted by the EUTM proprietor have been met, as the additional evidence only supplements and builds on the evidence submitted before the CD.

2. Evaluation of the evidence – overall assessment

As regards the evidence provided in the first instance proceedings, the BoA found that the affidavits cannot be disregarded as merely internal documents deriving from the EUTM proprietor. Their probative value was supported by all the other evidence, including the evidence on the sale, marketing and restaurant services. As to the Wikipedia extracts, the BoA explained that it contains many references and external links, including references to reputable sources such as articles in know newspapers and magazines and that, therefore, it has confirmatory value.

Remarkable regarding the consumer surveys is the BoA’s explanations in response to the Cancellation Applicant’s arguments that they do not date from the relevant time period. Here (cf. 82), the BoA noted that “it would be unreasonable, rigorous and highly economically burdensome to require the proprietor of each mark to have consumer surveys covering all periods of the EUTM’s registration available for the entire duration of the EUTM’s validity.” Moreover, the market surveys would be “supplementary evidence which reflects the degree of awareness of the relevant public of that particular mark, which, particularly in the case of such an extensive awareness of the “BIG MAC” mark in the relevant market, is built up over a long period of time, in the order of years.”.

In sum, the BoA found that the evidence, taken as a whole, fulfils all conditions (place, time, nature and extent) of use, but not with respect to all registered goods and services. Well, the most important goods and services for McDonald’s “BIG MAC” – food prepared from meat, meat sandwiches and restaurant services – should now still be included in the list of goods and services (slight exception: use for “franchising restaurants” in class 42 was not seen as proven; however “operating restaurants” is still included in class 42).

All in all, the BoA concluded that the evidence submitted during both stages shows that the EUTM “BIG MAC” was not only used to identify a specific product (sandwich), but also to distinguish the restaurant services provided by McDonald’s from similar services of other providers.

According to the BoA, the evidence as a whole proves that the EUTM proprietor has seriously tried to acquire, and actually keeps a significant commercial position in relation to the contested mark in the relevant market. “In fact, the Board confirms that this is also common knowledge” (cf. 191).

3. Comments

Even if the impression arises that the BoA was kind of generous, e.g. on questions of the admissibility of late submissions, the judgment is to be regarded as correct.

That the trademark “BIG MAC” is used in  most of the claimed goods and services should be completely out of the question. “BIG MAC” is probably  even to be considered a famous trademark. For us, it was out of question that McDonald’s could prove proper use of its trademark “BIC MAC” in the EU. However, the EUIPO decisions show that “lovelessly” compiled documents and mere own belief the mark is used will collide with the EUIPO Guidelines of proof of use and an extremely strict CD. In the appeal stage, McDonald’s made significant improvements in the documentation they submitted and the BoA rightly took corrective action.

It remains to be seen whether the Cancellation Applicant (Supermac’s (Holdings) Ltd.) will file an appeal to the General Court.

YUMMY OR DANGEROUS? PEANUT EXTASY

Peanuts… Yummy! But what if the product designation does not just say „PEANUTS“, but „PEANUT EXTASY“? My first thought as a consumer would still be „Yummy“ expecting that the product contains a high percentage of peanuts and that it, therefore, tastes very „peanutty“ and that it can take you to a state of ecstasy when eating it. The European Union Intellectual Property Office (EUIPO) saw this differently and rejected an EU trademark application for the term „PEANUT EXTASY“.

BACKGROUND

On 24 September 2021, EU Trademark Application No. 018565187 for the word mark „PEANUT EXTASY“ was filed with the EUIPO for different foodstuff and confectionary in Classes 29 and 30. The EUIPO rejected the application saying it was not eligible for registration pursuant to Article 7(1)(f) and 7(2) EUTMR. It argued that part of the relevant public, namely, the French-speaking public, would understand the word „EXTASY“ as a reference to the illicit drug EXTASY and that the application was therefore contrary to accepted principles of morality and could not be registered as a trademark.

DECISION OF THE BOARD OF APPEAL

In its decision of 11 November 2022, the Fourth Board of Appeal of the EUIPO confirmed the examiner’s decision (R 1005/2022-4). It stated that the fight against drugs was a very important objective of the European Union and its member states and that “the Office should not assist positively those who wish to promote their commercial objectives by means of trade marks which are insulting certain fundamental values of a civilised society.” It held that a significant part of the French-speaking general public in the EU will easily understand the word “EXTASY” and make an immediate direct reference to a hard drug. The mark “PEANUT EXTASY” would be perceived by “a reasonable consumer with an average threshold of sensitivity and tolerance” as a message promoting the use of illicit drugs for recreational purposes. As this was contrary to accepted principles of morality, the application could not get registered as a trademark.

The applicant argued that the term “EXTASY” has more than just one meaning and that one of these other meanings was a reference to a state of ecstasy with enthusiasm and happiness and that this other meaning would be the first to come to a consumer’s mind when seeing “PEANUT EXTASY” – not any meaning related to drugs. Without discussing this argument in detail, the Board of Appeal did not consider that the meaning of “extasy” as an illicit drug might not be the first and foremost meaning coming to a French-speaking consumer’s mind when reading the words “PEANUT EXTASY” on foodstuff. Instead, it concluded that the term ‘EXTASY’ was understood by the relevant public as an indication of a type of hard drug and that this fact alone was sufficient to find an absolute ground for refusal.

CONCLUSION

I am definitely with the applicant: The consumption patterns of ecstasy and chocolate bars vary significantly. And I will definitely not fall for the illicit drug just because of seeing the word on foodstuff and confectionary. It sometimes feels like the “well informed, reasonably observant and circumspect average consumer” is not considered well informed, reasonably observant, or circumspect.

How do you feel about the decision? Would you be “shocked” by seeing the word “EXTASY” on a chocolate bar – like the EUIPO argues? Would a connection between a chocolate bar called “PEANUT EXTASY” and the illicit drug ECSTASY come to your mind at all when seeing the mark “PEANUT EXTASY”? Let us know what you think. We welcome your comments and remain at your disposal for further discussion of the issue by email at info@lexdellmeier.com or by phone at +49 89 55 87 98 70.

When you go out to eat and you choose a drink with your meal, would go for mineral water, wine or beer? The answer, of course, depends on your individual preferences and habits. However, when it comes to trademarks, the question might become of interest when the degree of similarity between mineral water, wine and beer has to be assessed and decided in infringement, opposition or invalidity proceedings. The decisions of the different trademark offices and courts are not always consistent and often unpredictable. At least regarding the degree of similarity between “beers” and other beverages, you may now find some guidance by the European Union Intellectual Property Office (EUIPO).

Background

In the context of its Boards of Appeal Action Plan 2021-2026, the EUIPO has published six (6) reports to date which aim at enhancing consistency, coherence and predictability of the work of the Boards of Appeal. The documents reflect existing case law from the Court of Justice, the General Court and the Boards of Appeal, but have no binding effect. However, by identifying and analyzing relevant case law on a specific topic, they intend to enhance predictability of decisions and legal certainty by increasing knowledge, awareness and transparency among the various stakeholders.

So far, the Boards of Appeal Case-law Research Reports have analyzed the following issues:

• The distinctive character of slogans
• Trademarks contrary to public policy or accepted principles of morality
• Similarity between foodstuffs/drinks and services for providing food and drink
• Proof of technical function of a design under Article 8(1) CDR
• Identification of the features of a design under Article 8(1) CDR
• Similarity between beers and other beverages

All reports are available on the EUIPO website at https://euipo.europa.eu/ohimportal/en/boards-of-appeal.

The latest Research Report

The latest research report focuses on the comparison between „beers“ as contained in Class 32 of the Nice Classification and “other beverages” of all kinds contained in Classes 29, 30, 32 and 33 like

• milk and milk-based beverages (Class 29),
• beverages with coffee, cocoa, chocolate or tea base (Class 30),
• any non-alcoholic beverages including mineral waters and fruit juices (Class 32),
• any alcoholic beverages including wine (Class 33).

After analyzing current trends in case law of the Court of Justice, the General Court and the EUIPO’s Boards of Appeal including discrepancies in the degree of similarity found by the different bodies, the research report suggests the following degrees of similarity:

• a high degree of similarity between „beers“ and „non-alcoholic beverages“ of Class 32 in general,
• a high degree of similarity between “beers” and “alcoholic beverages, except beers” [general category] in Class 33;
• a high degree of similarity between “beers” and low-alcohol content beverages in Class 33 such as “cider, perry and alcopops”;
• an average degree of similarity between „beers“ and specific non-alcoholic beverages in Class 32 such as „mineral waters, juices, soft drinks, energy drinks“,
• a low degree of similarity between “beers” and “wines”;
• a low degree of similarity or dissimilarity between “beers” and high-alcohol content spirits and liqueurs;
• dissimilarity between „beers“ and „non-alcoholic beverages“ in Classes 29 and 30 such as „coffee, tea, cocoa, milk-based beverages“.

Conclusion

When assessing the similarity of goods and services in trademark infringement, opposition or invalidity proceedings, all relevant factors relating to those goods and services need to be considered. It is settled case law that these factors include, in alia, their nature, their intended purpose, their method of use, whether they are in competition with each other or are complementary, the distribution channels of the goods or services concerned, and whether or not the relevant public might consider it usual for the goods at issue to be sold under the same trademark. If the latter is not the case, this is a strong indication that there is no similarity between them.

When discussing all of these factors in arguing a specific degree of similarity between “beers” and other beverages, the latest research report of the Boards of Appeal can serve as guidance. It should, however, not be taken as a fact since market practices and the consumers’ perception of market practices can change over time – and this may also change the result of the comparison of “beers” and other beverages. CHEERS!

Should you like to discuss the similarity of specific goods and services with us, do not hesitate to contact us by email to info@lexdellmeier.com or by phone: +49 89 55 87 98 70.

Imagine you are the owner of a registered trademark and you have invested significant amounts of money into establishing your trademark and related product(s) in the market. Would it not be very annoying to see third parties offering replacement parts or accessories for your product(s) using your registered mark? It definitely is so for the Philips Group, one of the world's leading developers and manufacturers of electric shavers. Read here what the Higher Regional Court of Frankfurt recently decided in this case (OLG Frankfurt, 6 W 28/22, Decision of 3 May 2022).

[Screenshot taken at www.amazon.de on 25 September 2022;

similar offer to the one decided upon by the Higher Regional Court of Frankfurt]

Background

Earlier this year, a German subsidiary of the Philips Group tried obtaining a preliminary injunction against a Chinese competitor offering replacement shaver heads on its website by mentioning that they fit certain razors originating from the Philips Group. In its advertisement, it used a sign similar to a registered International Registration from Philips Group containing the word part „Philips“ and protected, among others, for razors and accessories.

Decision of the Higher Regional Court of Frankfurt

The Higher Regional Court of Frankfurt, in its decision of 3 May 2022, decided that use of a third party trademark in advertisements for replacement goods was no trademark infringement as long as it was in line with honest practices in trade and commerce.

According to settled case law of the European Court of Justice (ECJ), use of a third party mark is not in accordance with honest practices in trade and commerce if, for instance,

• it gives rise to the belief that there is a commercial relationship between the third party and the proprietor of the registered trademark;
• it takes unfair advantage of the distinctive character or repute of the registered mark, thus deminishing the registered mark‘s value;
• it disparages or discredits the registered trademark;
• the third party product is presented as an imitation or replica of the original product by bearing the mark of which its manufacturer is not the proprietor (see ECJ, Judgment of 17 March 2005, C-228/03 - Gillette, paragraph 49).

Regarding the shaver heads, the Court in Frankfurt acknowledged that use of a registered trademark of the original manufacturer was generally not allowed and considered trademark infringement. At the same time, it confirmed the necessity to refer to the original manufacturer’s trademark to let the consumer know that its own goods can be used as replacements for individual parts of the original product. Such reference was found allowed as it did not create the impression that the offered goods were original replacement parts from the trademark owner. The preliminary injunction sought for was denied.

Conclusion

If a competitor uses the registered trademark of an original manufacturer to say that its goods are non-original replacement parts or accessories for a product manufactured by the trademark owner, the use of the registered mark can be privileged as long as such use is in accordance with honest practices in trade and commerce.

Should you like to receive further information on the legal situation regarding the use of registered trademarks for third party replacement products or accessories or should you like to discuss your own use of somebody else’s mark, do not hesitate to contact us by email to info@lexdellmeier.com or by phone: +49 89 55 87 98 70.

Following a request for a preliminary ruling by the German Federal Court of Justice (BGH) on January 30, 2020 the European Court of Justice (ECJ) ruled on when unregistered designs of individual parts enter into force in the event of disclosure of the overall product.

I. Facts of the case and background information

Ferrari is an Italian automobile manufacturer of luxury sports cars and Formula 1 vehicles. Mansory Design & Holding GmbH (Mansory Design) is a manufacturer of technical exclusive car equipment - mainly for luxury car brands and specializes in the development and distribution of tuning products and accessories.

In the year 2014 Ferrari had launched the FXXK sports car. A costly racing car that is not approved for road traffic in a limited edition at a price of 2.2 million Euros. The special feature is the eye-catching design of its front hood. This is characterized above all by a ”V”-shaped element curving downwards at the front, a fin-like element protruding centrally from this element and a two-layer front spoiler. Ferrari first unveiled its FXX K sports car in a press release on December 2, 2014 featuring the following photographs of the vehicle:

Mansory Design manufactured comparable tuning front components that mirrored the overall impression of the FXX K sports car by Ferrari. Ferrari claimed that the marketing of those components by Mansory Design constitutes an infringement of the rights conferred by one or more unregistered Community designs of which it is the holder.

In its infringement action Ferrari asseted the infringement of the rights arising from several unregistered Community designs (UCDs). The action was based on three unregistered UCDs: the "V"-shaped front bonnet, alternatively the two-layer front spoiler and as a third alternative based on the vehicle as a whole as disclosed in the press release. In addition, Ferrari asserted claims limited to Germany based on supplementary protection of intellectual property under German competition law (§ 4 no. 3 UWG).

The Regional Court of Duesseldorf dismissed the action in its entirety. In the next instance, thef Higher Regional Court of Düsseldorf dismissed Ferrari's appeal on the grounds that only an unregistered UCD had arisen on the sports car published by the press release as an overall product, but, that this had not been infringed by the distribution of the tuning kits in dispute by Mansory Design.

The BGH submitted a request for a preliminary ruling under Article 267 TFEU (Treaty on the Functioning of the European Union) to the ECJ.

II. The issue and legal questions relating to unregistered designs

In the revision procedure the BGH had to deal with the question whether the making available to the public of the image of a product in its entirety also amounts to the making available of the designs of the parts of that product. In principle, the issue is whether unregistered Community designs can arise on individual parts of a product by way of disclosure of an overall representation of the product und if so, which legal standards have to be applied when determining the requirements for protection of these parts or elements.

The BGH submitted the following questions to the ECJ as a request for a preliminary ruling under Article 267 TFEU:

(1)      Can unregistered Community designs in individual parts of a product arise as a result of disclosure of an overall image of a product in accordance with Article 11(1) and the first sentence of Article 11(2) of Regulation No 6/2002 (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs- CDR) ?

(2)      If Question 1 is answered in the affirmative:

What legal criterion is to be applied for the purpose of assessing individual character in accordance with Article 4(2)(b) and Article 6(1) of Regulation [No 6/2002] when determining the overall impression of a component part which – as in the case of a part of a vehicle’s bodywork, for example – is to be incorporated into a complex product? In particular, can the criterion be whether the appearance of the component part, as viewed by an informed user, is not completely lost in the appearance of the complex product, but rather displays a certain autonomy and consistency of form such that it is possible to identify an aesthetic overall impression which is independent of the overall form?

III. Legal starting point
Within the European Union designs can be protected and commercialized without registration on the basis of a so-called unregistered Community design (UCD) right.
An UCD is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. There is no extension of the protection after three years. The act of making available to the public is called ‘disclosure'.

The wording of the Design Regulation abstains from the question whether the protection of the (registered or unregistered) design of a product in its entity automatically includes the isolated protection of its parts or elements.

Pursuant to Article 2 (a) of the CDR a design is protected by an "unregistered Community design", if made available to the public.

The substantive requirements for obtaining design protection in the EU - registered or unregistered -  i.e. novelty and individual character, are the same for products and their parts. For the protection of the appearance of a component part of a complex product, the requirements set out in Art. 4(2) CDR must also be observed. These are visibility when used as intended and novelty and individual character of the visible features of the component part itself.

Pursuant to Art. 11(1) and (2) CDR, protection arises if the design, which in particular meets the requirements of Art. 4 CDR, has been made available to the public within the EU, i.e. if it has been made known, exhibited, used in trade or otherwise disclosed in such a way that it could be known in

However, on the basis of the wording of the CDR the initial question cannot be clarified, so that it was in need of interpretation.

IV. The decision of the ECJ

The ECJ ruled that Article 11(2) CDR must be interpreted as meaning that the making available to the public of images of a product, such as the publication of photographs of a car, entails the making available to the public of a design of a part of that product, within the meaning of Article 3(a) of that regulation, or of a component part of that product, as a complex product, within the meaning of Article 3(c) and Article 4(2) of that regulation, provided that the appearance of that part or component part is clearly identifiable at the time the design is made available. In order for it to be possible to examine whether that appearance satisfies the condition of individual character referred to in Article 6(1) of that regulation, it is necessary that the part or component part in question constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colors, shapes or texture

The ECJ answered the submitted question of the BGH in the affirmative and stated that a design on a part of this product or on a component part of this product as a complex product is made available to the public if illustrations of a product are made available to the public. Thus, by making the images of a product available to the public, designs can be created on the entire product as well as on parts or components without the latter having to be disclosed separately. Further, the ECJ stated that protection arises on condition that the part or component in question represents a visible part of the product or complex product, clearly delimited by lines, contours, colors, shape or a particular surface structure. This requires that the appearance of this part or this structural element of a complex product must be capable of itself creating an overall impression and not be completely lost in the overall product.

V. Conclusion

The Court recognizes that the disclosure of an overall product may give rise to a plurality of unregistered designs in individual sections of the overall product. Contrary to what has been assumed by German case law so far, neither an independent act of disclosure in relation to the respective sub-component is necessary, nor does the sub-component have to show a certain independence and unity of form. In this understanding designers are not required to make available separately each of the parts of their products in respect of which they wish to benefit from unregistered Community design protection. The decision of the ECJ opens up flexible ways and provides broader protection of unregistered design rights and also individual parts.

For more information and the case law cited in this blog article please be referred to the court judgements in German and English:

LG Düsseldorf, Entscheidung vom 20.07.2017 - 14c O 137/16 -

OLG Düsseldorf, Entscheidung vom 06.12.2018 - I-20 U 124/17

BGH, Urteil vom 10. März 2022 - I ZR 1/19

EuGH, Urteil vom 29.10.2021 - C‑123/20

In the digital world of social media platforms – you come across NFTs everywhere. It has even become Collins English Dictionary´s word of the year in 2021. But do you actually know what those three letters truly stand for?

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In the digital world of social media platforms – you come across NFTs everywhere. It has even become Collins English Dictionary´s word of the year in 2021. But do you actually know what those three letters truly stand for?

What is a “NFT”? The meaning behind the three “gold” letters

In general, traditional artworks such as paintings (i.e. Mona Lisa) are valuable because they are one of their kind. Contrary thereto, digital content can easily duplicated thousands of times. The question therefore is: How to own and protect such digital artworks? And the answer is via NFTs.

NFT is an abbreviation for „Non-Fungible-Token” and stands for a digital ownership certificate. It manifests one’s ownership of digital content, such as of original versions of videos, pictures, GIFs or even tweets. The certificate (so-called token) can then be further traded in an auction, or the owner can grant a usage license to others. All these transactions seem to be similar to the marketplace with traditional artworks. However, in comparison to traditional artworks, the certificate does not bear a copyright. The owner only holds the digital token representing the artwork, but not the artwork itself. Another distinction is that the sales are usually made in crypto currencies.

The transaction and official database of owners is then stored on a publicly available ledger called “blockchain”. To sum it up in an easy way: the NFTs are a new sort of “bitcoin” – only not covering digital currency, but digital collectables.

Most famous NFT sales – alias NFT as a source of fortune?

In the age of social media where videos, pictures and GIFs can quickly be shared and go viral– such content does not only make the creator famous within few clicks, but, can also be a source of great fortune. Currently, one of the so far most successful and well-known NFT sales was the clip of “Charlie bit me”. Even though the plot of the video is actually very simple – portraying a baby Charlie biting his brother Harry´s finger – for over the past 14 years the clip has become one of the most looked at videos on YouTube with over 885 million views. And in 2021, the clip then made a record sale when it was sold as a NFT for incredible 588.000 EUR!

However, “Charlie bit me” is not the only example of a great NFT deal – also other NFTs are currently worth millions. To name few other great sales – the famous “Nyan Cat” GIF was sold for ca. 656.000 EUR, the original picture of the so called “Disaster Girl”, Zoë Roth, for ca. 400.000 EUR, the “Overly-Attached Girlfriend” image for ca. 388.000 EUR and the “Side-eyeing Chloe” image for ca. 72.000 EUR. But, not only pictures can be sold as NFTs – for example the co-founder of Twitter, Jack Dorsey, has sold his first ever tweet for approx. 2,7 Million EUR.

Also, in March 2021 the traditional auction house Christie´s held the first digital-only art auction for the purely digital NFT based artwork “The Frist 5000 Days” by the American graphic designer Beeple. The artwork – a collage of thousands of individual daily images – was sold for unbelievable 65,5 Million EUR, positioning the artist among the three most valuable living artists of our time.

The downside of NFTs and legal protection

The NFTs have been around since 2014, but only now they are gaining public awareness – especially in the arts sector. However, the million-dollar business also has some downsides. Many experts question the actual durability and risks accompanying this business as it can “disappear” any time causing monetary damages. Next, the NFT - such as bitcoins - also face some critics with respect to its environmental impact as to maintain the blockchain and to enable the payment in crypto currencies, the process requires a vast amount of energy and resources.

Legal protection in Germany

As stated above, the certificate does not grant its owner a copyright to the artwork with respect to a legal standpoint. The NFT itself does not fulfil the requirements set by the German Copyright Act on “personal spiritual creation”. Also, German copyright is not transferable (as in other countries, e.g. the US). As a result, only the actual artwork enjoys the copyright protection under German law, not the NFT itself. Therefore, the creator of the artwork remains its copyright owner – but by selling the NFT he can grant usage rights (e.g. via a license). 

It remains to be seen if and how the protection will change within the next years. LexDellmeier if following the changes and will report on different aspects of NFTs in the upcoming blog articles.

#nft #nfts #copyright #monalisa #artwork #nontangiblefunds #licensing

1. Subject matter and background of the action

In its decision of 29 June 2022, the European General Court (EGC) upholds the contested decision of the Board of Appeal of EUIPO dated 6 April  2021. According to the EGC, the EUIPO’s Board of Appeal  correctly ruled an infringement of Art. 8 (5) of the regulation on the European Union Trademark (EUTMR).The basis of the Board of Appeal's decision is Puma SE's opposition proceedings dated 1 August 2018 01.08.2018 against the registration of the EU Trademark “PLUMAflex by Road” (word/device mark) applied for by the applicant on 27 March2018.

The following trademarks are the subject of the case for the goods footwear (except orthopedic footwear):

                           vs.         

EU Trademark No. 12579728                        EU Trademark Application No. OJ 2017 L 154

2. Legal background

The present judgment of the EGC deals with the applicability of Article 8(5) EUTMR and its requirements. This provision is a relative ground for refusal which may be invoked by third parties against the registration of a trademark in opposition proceedings.

The wording of Art. 8(5) EUTMR reads as follows:

"Upon opposition by the proprietor of a registered earlier mark within the meaning of paragraph 2, the mark applied for shall not be registered even if it is identical with or similar to an earlier mark, regardless of whether the goods or services for which it is to be registered are identical with, similar to or dissimilar to those for which an earlier mark is registered if, in the case of an earlier Union mark, it is a mark with a reputation in the Union and, in the case of an earlier national mark, it is a mark with a reputation in the Member State concerned, and the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. "

The ECG emphasizes that for the applicability of Art. 8(5) EUTMR, the following cumulative conditions must be fulfilled:

• identity or similarity of the marks in dispute
• a certain degree of recognition of the earlier mark

likelihood that, in the absence of due cause, the mark to be registered will take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark addition to the conditions required by the wording of the provision, according to the ECJ, the following additional circumstances are relevant:

• Art. 8(5) EUTMR requires that the public, on the basis of a certain degree of similarity
• Unlike the provision of Art. 8 (1), the provision in (5) does not require a likelihood of confusion. Rather, Art. 8(5) requires that the targeted public establish a connection between the earlier and later marks.
• The relevant public for the assessment of the detriment to the distinctive character or the repute of the earlier mark is the average consumer of the goods or services for which that mark is registered, who is reasonably well informed and reasonably observant and circumspect.

3. The EGC Decision

The Court mainly deals with the finding of similarity, distinguishing between visual, phonetic and conceptual similarity, which are to be examined comprehensively. In line with the Board's decision, it is found that overall similarity is to be affirmed.

As far as the conceptual similarity is concerned, the Court confirmed that the similarity of the marks in the German-speaking area must be taken into account. This is because it is precisely in this area, where the Puma mark enjoys an exceptionally high degree of recognition. The word "pluma" has no meaning and there is no conceptual equivalent of "pluma" in the German language. As a result, the German public is more inclined to associate a meaningless word which is phonetically and visually similar to another word with meaning - as is the case here between “PUMA” and "pluma". Thus, the mental link required by Article 8(5) EUTMR is established. It is true that the word "pluma" has the meaning of feather in Spanish, Portuguese and French, so that there is no conceptual similarity. However, in view of the high reputation of the mark for the German-speaking public, the conceptual similarity in that area alone must be taken into account. In that sense, it cannot be assumed that the mere depiction of a feather is sufficient to convey to the German-speaking public the meaning of the word 'feather' in other languages. A divergent conceptual similarity due to such a hypothetical mental transfer cannot be assumed.

From a visual point of view, the court also confirmed that a figurative element - such as the grey feather in this case - may give a mark a slightly different impression, but does not have the potential to take away its overall similarity to an earlier, well-known mark. This follows from the fact that figurative elements in combination with word elements are only secondarily noticeable in the perception. On the contrary, in the case of marks containing several word elements, the consumer tends, for practicable reasons, to take in only the primary or first  word(s) and to neglect the subsequent ones. In the case of "PLUMAflex by road", this means that the consumer only focuses on the word "PLUMA" when perceiving the mark.

4. Conclusion

With this judgment, the EGC has shown that it applies a very broad standard when assuming a likelihood of confusion with respect to well-known marks. It has clarified that already a similar detail of a trademark, which stands next to other word or design components, can already cause a likelihood of confusion, if this appears as a dominant feature. Furthermore, the EGC has recognized that the degree of awareness may play a role in the context of determining the likelihood of confusion in such a way that the assessment of the similarity of two marks is ultimately affected on the basis of that traffic area in which awareness is of a particularly high degree. It will remain to be seen if the ECG decision is final or appealed to the European Court of Justice (ECJ).

The ECJ Decision dated 29 June 2022 can be found here:

https://curia.europa.eu/juris/document/document.jsf?text=&docid=261888&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1