4 July 2017 – Application for an EU trade mark claimed as a “position mark” affixed to the side of a tyre – Judgement of the Court of Justice of the EU (General Court), case T 81/16

4 July 2017 – Application for an EU trade mark claimed as a “position mark” affixed to the side of a tyre – Judgement of the Court of Justice of the EU (General Court), case T 81/16

The judgement concerns an action against a decision of the Board of Appeal of EUIPO dismissing an appeal against the examiner’s decision to refuse the application for registration of a mark, on the ground that the trade mark sought was devoid of any distinctive character for the goods referred. Namely, in the application for registration, the mark at issue is described as “a pair of essentially equal curved strips positioned on the side of a tyre and running along its circumference. The trade mark in question is a position mark”, and the goods in respect of which registration was sought fall correspond to the following description: “Tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels” (Class 12).

The applicant adduced new evidences for the first time before the General Court, both after the application was lodged and during the hearing, which were intended to support, in essence, the distinctive character of the mark applied for. The General Court confirmed that “facts not relied on by the parties before the adjudicatory bodies of EUIPO may not be relied on at the stage of the action before the General Court and that the General Court may not re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. Indeed, the legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision”. Consequently, such evidences were held by the General Court as inadmissible.

Also, the General Court set forth that, “even though the applicant has claimed protection for additional goods, namely, rims and covers for the wheels of vehicles, the sign for which registration is sought is necessarily limited to tyres, being affixed to these, and not to any other goods. This is a direct consequence of the nature of the mark applied for, namely, a “position mark” affixed to the side of a tyre”.

Furthermore, the General Court reaffirmed that, although a minimum degree of distinctive character is sufficient, provided that “the trade mark enables the relevant public to identify the origin of the goods or services which it covers and to distinguish them from those of other undertakings”, “nevertheless, a sign which is excessively simple and is constituted of a basic geometrical figure, such as a circle, a line, a rectangle or a conventional pentagon, is not, in itself, capable of conveying a message which consumers will be able to remember, with the result that they will not regard it as a trade mark unless it has acquired distinctive character through use”.

In the present case, “the goods at issue are directed both at the public at large and a professional public”, and “the level of attention cannot be considered as being particularly high”. ”In any event, the question whether the relevant public is characterised by a high or particularly high level of attention is irrelevant. Having regard to the elements composing the mark applied for, which are characterised by extreme simplicity, the mark does not convey a message related to the commercial origin of the goods covered, whatever the relevant public’s level of attention”.

In fact, the General Court endorsed the contested decision setting forth that the mark applied for “is extremely simple and does not display any particular characteristics or an aspect easily and immediately perceived by the relevant public as indicating the commercial origin of the goods at issue. Consequently, consumers will perceive the contested sign as a mere decorative element affixed to the sidewall of tyres or any other goods covered by the application for registration”. Furthermore, “in order for a trade mark to be registered it is not sufficient for it to be original, it must also differ substantially from the basic shapes of the goods concerned, commonly used in trade, and must not appear as a simple variant of those shapes”.

As to acquired distinctiveness through use, the General Court confirmed that “it is necessary that at least a significant proportion of the relevant public, by virtue of that mark, identifies the goods or services concerned as originating from a particular undertaking. However, the circumstances in which that requirement for acquisition of distinctive character through use may be regarded as satisfied cannot be established solely by reference to general, abstract data such as predetermined percentages”. In that regard, “the applicant merely states that it has supplied since 2011, exclusively, tyres for Formula 1 Championship teams and that, therefore, the mark applied for enjoys wide televised media coverage, accordingly it is seen by millions of viewers across the entire world”. Nevertheless, it is not sufficient, for the purposes of recognising acquired distinctiveness through use, “that a mark has been seen by many. It is also necessary for those persons to be capable of attributing to that mark a distinctive function. None of the evidence presented provides information relating to the way in which the relevant public understands the mark”. Thus, “none of the evidence submitted makes it possible to show that the relevant persons or, at least, a significant proportion of these, identify, thanks to the mark applied for, the goods covered by it. The evidence submitted merely makes it possible to show that the sign for which registration was sought was used by the applicant on those goods. Nevertheless, they do not make it possible to show that the sign will be perceived by the relevant public as an indication of commercial origin of the goods covered by the mark applied for”, and no acquired distinctive character through use, at the time the trade mark application was submitted, has been recognised by the General Court. – Full judgement

4 July 2017 – Community design representing an electronic wristband – Judgement of the Court of Justice of the EU (General Court), case T 90/16

4 July 2017 – Community design representing an electronic wristband – Judgement of the Court of Justice of the EU (General Court), case T 90/16

The judgement concerns an action against a decision of the Board of Appeal of EUIPO in proceedings for a declaration of invalidity of a Community design registered for “measuring instruments, apparatus and devices”, actually consisting of an electronic wristband, on the ground of that the contested design was devoid of individual character.

Significantly, the General Court shared the contested decision that stated that “the features of the designs which were claimed but did not appear in the registered representations of the designs did not come within the protection covered by each registration and could not be taken into account. The Board of Appeal thus implicitly rejected the explanations concerning the features of the prior design which the applicant had produced before it on the ground that, in his explanations, the applicant claimed that the design had features which did not appear in the representations of that design”. (Nevertheless, in this regard the Court also specified that “it is possible to take into account, in order to compare designs, the products actually marketed and corresponding to those designs, at least for illustrative purposes, in order to confirm the conclusions already drawn from the assessment of the designs as described and represented in the applications for registration”).

Also, the General Court endorsed the contested decision setting forth that “the degree of freedom of the designer of a design is determined by, inter alia, the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product to which the design is applied. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned”. In the present case, “the Board of Appeal correctly found that the degree of freedom of the designer was high, and not very high”, because “the degree of freedom of a designer of an electronic wristband was limited by the technical constraints which apply to those wristbands, namely the need to be ergonomic in order to fit the wrist and to contain measuring instruments” and, “in order for a wristband to be able to fulfil its function properly, it had to be relatively small, thin and light and to fit easily around the wrist”.

Furthermore, the General Court stated that “the greater the freedom of the designer in developing a design, the less likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Conversely, the more the freedom of the designer in developing a design is restricted, the more likely it is that minor differences between the designs being compared will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs being compared, which do not display significant differences, will produce the same overall impression on an informed user”. “However, the factor relating to the freedom of the designer cannot on its own determine the assessment of the individual character of a design. It makes it possible only to moderate the assessment of the individual character of the contested design, but does not determine how different the two designs have to be in order for one of them to have individual character”.

With regard to the assessment of individual character, the General Court confirmed that “in accordance with the case-law, the individual character of a design results from an overall impression of difference, or lack of ‘déjà vu’, from the point of view of an informed user in relation to any previous presence in the design corpus, without taking account of any differences that are insufficiently significant to affect that overall impression, even though they may be more than insignificant details, but taking account of differences that are sufficiently marked so as to produce dissimilar overall impressions”.  In the present case, “the comparison between the designs had to be based on the designs as they were described and reproduced in the respective applications for registration”. “Even if the button on a wristband had a functional purpose…, it could still be designed and situated on the product in various ways and … numerous configurations of that button were possible”, “in so far as that button could be placed on a wristband in different ways and could have different shapes and sizes”.

Moreover, still endorsing the contested decision, the General Court reaffirmed that “the overall impression produced by a design on the informed user must necessarily be determined also in the light of the manner in which the product in question is used”, stating that “when using an electronic wristband, the informed user attaches more importance to the part of the wristband which displays the data than to the clasp of that wristband”.

Finally, the General Court set forth that “, with regard to the national judgment invoked by the applicant, it must be recalled that the legality of decisions of the Board of Appeal must be assessed solely on the basis of Regulation No 6/2002, as interpreted by the Courts of the European Union, and not on the basis of national decisions, even where the latter are based on provisions analogous to those of that regulation”. – Full judgement

27 June 2017 – Unified Patent Court

27 June 2017 – Unified Patent Court

The Chairman has stated that the UPC Preparatory Committee is hopeful to begin the provisional application phase (including interviews and recruitment of judicial positions for the Court) in the autumn of this year, but this is now dependent on the case brought before the German constitutional court to have been resolved before this last phase of the project can begin – full message.

20 June 2017 – EU trade mark 

20 June 2017 – EU trade mark 

Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, codifying Council Regulation (EC) 207/2009, has been published in the Official Journal of the European Union. Regulation (EU) 2017/1001 repeals Regulation (EC) 207/2009, and will apply from 1 October 2017. Article 31: next implementing acts will provide for electronic representation of trade marks. Articles 83-93 concern the specific provisions on EU certification marks.