23 February, 2017

Walking the Online Plank - Advocate General Szpunar Sets the Scene for Blocking Infringing Websites

Peer-to-peer file sharing has had its enemies since its very beginning, especially when used for sharing either protected or non-protected works online. A particular offender in the former category is the infamous Pirate Bay website, which shares hyperlinks to files known as 'torrent' files, which contain metadata on the files, linking a variety of peers (i.e. file sharers) with others wishing to download said file, and deliver pieces of the file using the P2P protocol. The fight against the Pirate Bay as an intermediary has been going on for a very long time, and the matter has been winding its way through the EU courts as well. While the CJEU has yet to rule on the matter, Advocate General Szpunar handed down his opinion before the CJEU's determination on this long-standing matter.

The case of Stichting Brein v Ziggo BV concerned Stichting Brein, a Dutch organization that focusses on combatting the illegal exploitation of copyright protected works, and to protect the interests of rights holders. Ziggo BV and the other defendant, XS4ALL Internet BV, are Dutch internet service providers who largely control the Dutch market. Stichting Brein took the ISPs to court, applying to compel the ISPs block all internet access to the Pirate Bay under the Dutch transposition of Article 8 of the InfoSoc Directive.

What the CJEU had to answer were two questions that the Court summarized as follows: "… the referring court raises in reality the matter of the liability of operators of indexing sites of peer-to-peer networks for copyright infringements committed in the context of the use of those networks. Can those operators themselves be regarded as being the originators of those infringements, which would mean they are directly liable (first question)? Or, even if they are not directly liable, can an order be made blocking access to their websites, which, as I shall explain below, requires a form of indirect liability (second question)?"

The first aspect of the larger question is whether the provision of indexed metadata relating to P2P files through a search engine is a communication to the public. As has been firmly established, a communication to the public comprises of two criteria, in essence (1) an act of communication and (2) it is made to a public.

The Advocate General first set out the basics, where an 'act of communication' emphasises the essential role of the player originating the communication and the deliberate nature of their intervention (including full knowledge of the consequences of their actions), without which the customer would not have gained access to the work and therefore does. The nature of the communication is also important, with rights holders also being able to prevent the infringement even if the communication, at the choosing of the end-user, hasn't taken place yet.

A 'public' is one where the communication is intended for an indeterminate, but fairly large number of recipients; however, as was discussed in Svensson, the public has to be a new one, and the provision content to the entire internet would not necessarily amount to a 'new' public. Even If provided for the internet at large, you still have to consider the intention of the communicator and the public it wanted to reach during the communication.  If the communication is made without the authorization of the rights holder, it's clearly made to a new public they didn't consider, making the public a 'new' one for this purpose.

Online piracy is real and scary
The AG then moved onto the actual application of the above to P2P networks. In his view, a copyright protected work would be communicated to the public via a P2P network, as; firstly, the works are made available on the computers of the network users, so any other user can download them; Secondly, the amount of users in P2P networks and using the Pirate Bay clearly would be an undefined and significant number of persons; and lastly, as no consent was given by the rights holder to share the works on these systems or websites, the works have been distributed to  a 'new public', since "if the author of the work has not consented to it being shared on a peer-to-peer network, the users of that network constitute by definition a new public". While this amounts to a clear communication to the public, the AG had to still decide, in his opinion, who the works originated from (i.e. the users or the indexing website).

The role of the indexing websites was also deemed necessary by the AG, since "...[infringing] works would not be accessible and the operation of the network would not be possible or would at any rate be much more complex and its use less efficient" without them. He also highlighted the need for knowledge by the website operators, and specified that "...from the moment that operator has knowledge of the fact that making available took place in breach of copyright and does not take action to render access to the work in question impossible, its conduct may be regarded as being intended to allow, expressly, the continuation of the illegal making available of that work and, hence, as an intentional action". The website operators' intervention is therefore necessary and deliberate (at least in the instances as detailed above), meaning the operators would be jointly with the user making the works available and thus communicating them to the public.

The AG then moved onto the second question, discussing the need to block access to websites such as the Pirate Bay (albeit only in the instance should the CJEU disagree with his answer to the first question).

In his view, Article 8 presupposes a link between the infringement and the subject of the injunction, meaning the services of the intermediary are used to facilitate the infringement happening through the website in question. He concluded that, in the light of this dependant relationship, the intermediary has to prevent access to the site to protect itself from liability.

He also added that this would not, potentially at least, impinge on the users' fundamental rights. The blocking of websites like the Pirate Bay would be proportionate to the significance and seriousness of the copyright infringements committed on that site. The block would also not prevent legitimate uses of P2P technologies, or the finding of legally shared files online. The measures themselves, ultimately, will have to be "...proportionate to the significance and seriousness of the copyright infringements committed, which is a matter for the national court to determine".

The AG's opinion sets the scene for the CJEU, and clearly will envision the decision going the way of the rights holders. Admittedly, this would seem like the most logical solution to a complex and difficult problem to tackle; however, measures would indeed have to be proportionate and non-restricting to the public at large. This writer would envision a possible avalanche of blocking injunctions being pushed after a decision to the affirmative; however, an EU-wide block seems highly unlikely, as application has to be done on a national basis.

Source: IPKat

16 February, 2017

Putting the Hammer Down - Punitive Damages Greenlit by the CJEU

Damages are a peculiar beast in the world of IP. Too little, and you effectively encourage infringement, or at least mitigate the punch after any successful infringement claims. Too excessive, and you can cause for the balance of power to excessively shift to the rights holder's hands, possibly even encouraging the misuse of those rights in the search of easy monies. Due to this, many jurisdictions elect against excessive, or in other terms, punitive damages, which seek to punish the offender and to discourage others in the process. EU law in itself does not provide for punitive damages as a must for Member States, but does that then mean you cannot introduce them as a Member State? The CJEU answered this question less than a month ago.

The case of Stowarzyszenie “Oławska Telewizja Kablowa” v Stowarzyszenie Filmowców Polskich dealt with the use of TV programming by OTK, a local television broadcaster in Poland, for which SFP, a Polish collection society, managed the rights. The two entities had a licencing agreement in place until the late 1990s; however, OTK kept broadcasting the shows even after the end of the agreement (seeking to set the fees from a third-party body, nonetheless). SFP took OTK to court for, among other things, copyright infringement, seeking twice the amount in damages that they would have gotten from a legitimate licencing arrangement. OTK took the matter forward, particularly on the point of the punitive damages, ultimately ending up with the CJEU.

The CJEU had to answer one question: "...whether Article 13 of Directive 2004/48 [Enforcement Directivemust be interpreted as precluding national legislation... under which the holder of an intellectual property right that has been infringed may choose to demand from the person who has infringed that right either compensation for the damage that he has suffered, taking account of all the appropriate aspects of the particular case, or, without him having to prove the actual loss and the causal link between the event giving rise to the infringement and the loss suffered, payment of a sum corresponding to twice or, in the event of a culpable infringement, three times the appropriate fee which would have been due if permission had been given for the work concerned to be used".

The Enforcement Directive lays down the minimum standard of protection that Member States have to have in place, but does not preclude them from setting higher, more punitive measures to do the same (in particular what was discussed in Hansson). Similarly, the Berne Convention, the Rome Convention and the TRIPS Agreement all allow for wider protection for Member States than prescribed.

Simone considered this to be cruel and unusual punishment
The CJEU therefore concluded that Article 13 does not preclude Member States from enacting provisions that are wider than what is set in the Enforcement Directive.

Even though the compensation offered through more punitive damages is not exactly the amount of loss suffered by the rights holder, it does not mean it cannot be provided for, as that characteristic is inherent in any lump-sum compensation given to rights holders (including as set in Article 13). The CJEU also pointed out that "...the fact that [the Directive] does not entail an obligation on the Member States to provide for ‘punitive’ damages cannot be interpreted as a prohibition on introducing such a measure". This makes sense to this writer, as the lack of a requirement does not necessarily mean the opposite would be true of the very same, leaving the option open to those wishing to implement it.

Finally, the CJEU emphasized that damages awarded, without being punitive, might not cover all of the costs associated with the pursuing of those damages, which possibly includes research into the infringement, other legal fees and even, as decided in Liffers, any moral prejudice suffered by the rights holder. Even if the amount would exceed all losses suffered, including the above, the Court noted that the Member States would still have the capability to regulate any possible abuses of punitive damages in court proceedings.

The decision reached by the CJEU does not in itself change much, but does affirm the capability for Member States to have punitive damage provisions, including ones in the UK. Should they wish to implement such measures in the future is also allowed; however, EU legislation, as it stands, does not impose such an obligation. This decision will delight many rights holders in Member STates with punitive damage provisions, and pushes the law a little in their favour going forward.

Source: IPKat

06 February, 2017

All the Right Words - The British Columbia Court of Appeal Decides on Keyword Advertising and Passing Off in Canada

While the Internet's vastness and accessibility seems like a given for those who've seen it grow over the years, finding what you need can still be quite the struggle, especially when you're looking for more niche or specific information or services. Search engines like Google have made this a breeze in most cases, but unbeknownst to most, there is a war going on underneath the surface of search engines and websites. Due to the sheer amount of competition in most sectors, being the top result in a search query, or at least making it to the first page and above your competitors, pushes website administrators and creators to rely on less 'nice' methods to push their results ahead of others. One way is through the use of website metadata, particularly the keywords associated with your website. In the light of this specific feature, could you use your competitors' name or trademarks in your own website's keywords? The Canadian Court of Appeal looked to settle this point after a first instance decision sometime in late 2015.

The case of Vancouver Community College v. Vancouver Career College (Burnaby) Inc. dealt with the use of the acronym VCC, which has been used by Vancouver Community College for some time, which had also registered the abbreviation and its full name as trademarks in Canada (marks 0910482 and 0916687). Vancouver Career College also aimed to use the same acronym with or in place of their name, in their domain name, incorporating it into their marketing materials and in social media, and also purchased the keyword advertising rights to it on Google and Yahoo. Vancouver Community College subsequently took Vancouver Career College to court under claims of passing off and trademark infringement.

The Court first dealt with the claim of passing off, which is enshrined in the Canadian Trade-marks Act in section 7. Similarly to the concept of passing off, a claim in Canada needs to consist of three components: "… the existence of goodwill, deception of the public due to a misrepresentation and actual or potential damage to the plaintiff ".

The first component is goodwill in the name 'Vancouver Community College' and 'VCC', which, putting it into more simple terms, amounts to "…the positive association that attracts customers towards the owner’s wares or services rather than those of its competitor". In particular to names, this requires specific recognition in a primary sense of the name in the relevant marketplace as distinctive to that entity. The Court rejected the notion from the Supreme Court of BC had erred in required an additional secondary meaning, as only the primary meaning would be needed to establish goodwill in 'VCC'. Having considered the evidence submitted at first instance, the Court determined that the Supreme Court had erred in their finding of no goodwill (overstating the scope of evidence to the contrary, and failing to consider a body of evidence to the positive), and that there indeed was goodwill in the acronym at the relevant time.

Keywords can be quite "persuasive" (Source: Dilbert)
The second component is confusion, i.e. deception through misrepresentation to the relevant public causing confusion in the minds of the public as a likely consequence of the impugned actions. Justice Saunders, handing down the Court's unanimous decision, saw that the Supreme Court erred in their assessment of confusion in the case, as "… confusion is fully established by proof that the respondent’s domain name is equally descriptive of the appellant and contains the acronym long associated to it". The Supreme Court determined that confusion was only achieved when the searcher arrived at the website's landing page, and not before the fact. While Justice Saunders did see that the mere existence of the acronym was enough to cause confusion, the bidding for keywords containing the full name or the acronym would not cause confusion as "… the critical factor in the confusion component is the message communicated by the defendant. Merely bidding on words, by itself, is not delivery of a message. What is key is how the defendant has presented itself, and in this the fact of bidding on a keyword is not sufficient to amount to a component of passing off".

The Court then moved on to consider damage caused to the plaintiff, which, according to Justice Saunders, can include damage to one's goodwill or loss of control of that same goodwill (i.e. there is not necessarily a need for actual monetary damage). Concluding her judgment on passing off, Justice Saunders did indeed confirm that Vancouver Community College had suffered damage to their goodwill, and that Vancouver Career College had passed off their services.

Finally, the Court looked at whether the registered trademarks had been infringed under section 9 and section 11 of the Trade-marks Act. Justice Saunders dealt with this matter briefly, and saw that "… there are too many factual determinations and outstanding issues" for the Court to determine and that the matter is best remitted back to the Supreme Court for fresh consideration.

Ultimately, the Court of Appeal issued a permanent injunction against Vancouver Career College for the use of the acronym 'VCC' and 'VCCollege' in its Internet presence. The matter of damages and the breach of the trademarks were to be looked at by the Supreme Court.

The case is quite the interesting one, and the Court's considerations in terms of confusion seems to focus on the searcher's viewing of the results page, rather than the viewing of the landing page after clicking a link. It did, however, entrench the determination that the purchasing of keywords incorporating others' marks would be wholly acceptable in Canada, which does leave rightsholders somewhat exposed.

Source: JDSupra

26 January, 2017

Question Solved - CJEU Rejected Rubik's Cube TM due to Technical Functionality

Trademarks are a very flexible tool to protect a variety of interests in goods, be it looks or the design of an object. One thing it cannot, and should not protect is technical functionality, which is better suited for protection through patents. Many have tried to use trademarks as quasi-patents that last forever, but the courts are quite reluctant to allow such registrations one challenged (if even registered in the first place). One such trademark has been the subject of a 10 year legal battle, namely the Rubik's Cube. The saga has finally come to its (current) conclusion, with a long-awaited decision handed down by the CJEU in late 2016.

The case of Simba Toys GmbH & Co. KG v EUIPO dealt with a registered trademark for the design of the Rubik's Cube (No. 162784), which is owned by Seven Towns Ltd. The mark consists of a 3D rendition of the Cube, showcasing the grid pattern on all sides of the Cube. Simba Toys challenged the mark in 2006, and ultimately alleged an infringement of Article 7(1)(a) to (c) and (e) of the old Community Trade Mark Regulation (No 40/94), which set out the absolute grounds of refusal for trademark applications.

While Simba Toys put forth six arguments, the CJEU focussed only on the first, which alleged a misapplication of Article 7(1)(e)(ii) of the Regulation (which prevents the registration of a shape of goods which is necessary to obtain a technical result), under which the General Court deemed that the essential characteristics of that shape do not perform a technical function of the goods at issue.

The CJEU first had to identify what the essential characteristics of the mark are, and the Court followed the General Court's rationale, setting them out as "...a cube and a grid structure on each surface of the cube". The essential characteristics then have to be assessed in the light of the technical function of the actual goods concerned, i.e. a three-dimensional puzzle. This has to be done using the representation given in the application, namely the drawing of the Cube, along with any descriptions of the same.

Solving a Rubik's Cube can be just as challenging as protecting it
The Court deemed that the General Court had erred in their assessment of the criteria in relation to the Cube that "...for the purpose of examining the functionality of the essential characteristics of the sign concerned, in particular the grid structure on each surface of the cube, the shape at issue, as represented graphically, should have been taken as a basis, without necessarily having to take into consideration any additional circumstances which an objective observer would not have been able to ‘fathom precisely’ on the basis of the graphic representations of the contested mark, such as the rotating capability of individual elements in a three-dimensional ‘Rubik’s Cube’-type puzzle". While these 'hidden circumstances' that are not fathomed precisely by an objective observer (i.e. the rotation is not, at least arguably, evident from the drawing of the Cube), this "...cannot preclude account from being taken of the technical function of the actual goods represented by the sign at issue for the purpose of examining the functionality of the essential characteristics of that sign, as the proprietor of that mark would otherwise be allowed to broaden the scope of the protection arising from the registration thereof to cover every type of puzzle with a similar shape, namely any three-dimensional puzzle with cube-shaped elements, regardless of the principles by which it functions".

What the CJEU therefore was concerned about was that these 'hidden' features could be used almost without limit to prohibit others from using the technical functionality of, for example, rotation for 3D puzzles, simply based on the look of the puzzle itself. This makes sense, as one can appreciate that the broadening of trademarks beyond their typical protection would mean a near monopoly on some features that are not immediately apparent based on a graphical representation. The CJEU therefore rejected the appeal, and didn't refer the matter back to the General Court.

The case sets a very important precedent, and rightsholders need to be more careful in their applications for trademarks, especially when they contain, or might contain, technical functionalities. Clearly one can appreciate the defence of legitimate trademarkable features; however, overextending your rights just might lead to the loss of your mark.

Source: IPKat

23 January, 2017

IP Iustitia is Looking for Guest Writers!

This writer started his 'career' as a blogger as a guest writer for various IP blogs, and with that being said I thought it would be high-time to extend the same courtesy to my readers who might be interested in contributing to the IP blogosphere, or just to share their own knowledge, passion and enthusiasm for IP law!

Who can be a guest writer?

There really is no template here, but working knowledge or just an interest in IP law is pretty much essential. Whether you're a student, lawyer or anything in between, as long as you know something about IP and want to share your thoughts on current events or just answer a question posed for yourself, then you're a perfect fit.

What can I write about?

What ever you want, so long as it pertains to IP law in some way and is within good taste. Current (or past) cases, new laws passed in your jurisdiction, commentary on current events; the IP world is your oyster here. The more interesting or thought provoking the better!

The only thing we don't publish is merely for the sake of advertising yourself, your firm or business, without much substance bar the bare minimum. IP Iustitia is not a commercial endeavour, but a blog to share knowledge and insight. You and your firm/business will be shared as a part of the article, so long as your article itself speaks more than the tagline at the bottom.

All posts will of course be attributed to the person, including links to your website, LinkedIn profile, social media account or blog.

How do I get in touch?

Email jani.ihalainen@gmail.com or send me a message on Twitter at @IPIustitia and tell a little bit about yourself, your education and/or your profession, and why you want to write for the blog. This is not a popularity contest, and most people's content will be published, but some base knowledge is always nice.

Also, share an idea or two about what you would want to write about. No need to have a sample, but just to brainstorm and share your vision so that I can get a better idea on fit and content. If you have any questions, do let me know as well.

If your article is good, pending editorial discretion, it will be published on the blog. If you have interest to write more than just one article (and your content is good enough), recurring guest writers will be considered happily.

20 January, 2017

My Other Joke - 'Getting' the Joke not Relevant to Parody, Says US Court of Appeals

Jokes are rarely ubiquitous, and one that you might get won't necessarily translate as well to your friends, which even could be construed as offensive by some. This clear subjectivity when it comes to humor is well known by most, but this has been rarely introduced as an argument in a court of law (at least in this writer's knowledge). With that said, would 'getting' a joke be a part of the considerations surrounding parody or satire, or would a genuine attempt at being funny be such, even if some don't 'get' the joke? A question many didn't know they wanted to know the answer to was addressed recently by the US Court of Appeals.

The case of Louis Vuitton Malletier SA v. My Other Bag, Inc. dealt with the sale of canvas tote bags by My Other Bag, which feature the name of the company on one side and a caricature image of iconic and well-known designer handbags on the other, including brands like Louis Vuitton Chanel, and Fendi. The joke is a carry-over from bumper stickers with the wording "my other car" that plays to the idea of owning both the luxury item and an inexpensive alternative (without actually having the former, most likely). Louis Vuitton didn't take well to the use of their designs on MOB's tote bags and took the company to court for trademark infringement, trademark dilution and copyright infringement.

Daniela didn't understand why she was arrested because of
her 'other' bag
The Court of Appeals dealt with the matter of trademark infringement first, and quickly saw that there was no infringement by MOB as there were "…obvious differences in MOB's mimicking of LV's mark, the lack of market proximity between the products at issue, and minimal, unconvincing evidence of consumer confusion". This follows the decision by the District Court of New York at first instance, who determined that while the mark and its use are similar, there are clear, distinctive differences that distinguish MOB's image of Louis Vuitton's design, and that the two products compete in an entirely different marketplace (with Louis Vuitton clearly catering to an exclusive, luxury market, and MOB to a very casual market).

The Court then moved onto the question of trademark dilution (a case of using a well-known trademark in a different product type entirely, diminishing the distinctive value of the original mark), which at first instance was dismissed due to the defence of fair use through parody by MOB. Similarly to the above consideration, the Court of Appeals didn't take long to explain their findings, affirming that "…[MOB's bags] mimic LV's designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV's image of luxury… as to convey that MOB's tote bags are not LV handbags". Even though Louis Vuitton's marks were used, albeit in a humorous way, they still did not act as a 'designation of source', since the bags did have the MOB branding present in addition to the caricature image that shows a clear designation of origin contrary to Louis Vuitton. Clearly the trademark couldn't have been diluted in any way, as the products didn't cross over into each other's markets, nor shared features that would lead to them being confused by consumers.

The final point of consideration was that of copyright infringement, which the Court dispatched in very short terms. The Court saw that "…MOB's parodic use of LV's designs produces a "new expression [and] message" that constitutes transformative use". This, in addition to the benefit derived from the remaining fair use considerations or their irrelevancy to the matter, aided MOB's case under copyright infringement, with the claim being dismissed entirely. One can appreciate the transformative use of Louis Vuitton's designs, as the cartoonish image along with a changed logo (featuring, instead of the LV logo, a MOB version of the same) made the design something new through its humorous portrayal of the design. Ultimately, the Court of Appeals dismissed Louis Vuitton's appeal entirely.

The case illustrates the strength in a genuine parody defence, and as was discussed by Justice Furman "...the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton's sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB's rights) under trademark law". Many proprietors of high-end, well-known brands might not like, or even get, the parodies that make fun of them, but the law should allow this type of commentary or use, provided it is bona fide parody. It serves these brands well to pick their fights carefully, since a well placed joke can make fun of you, but rash acts of litigation can do more damage.

Source: JDSupra

13 January, 2017

Not Taking a Break - EU General Court Sends Kit Kat TM for Reconsideration at EUIPO

The Kit Kat chocolate bar trademark saga is one that seems to just keep on giving and giving to the IP community, offering new and fangled ways where the iconic (or dare we might now say the opposite) chocolate bar has been fought over in Europe. After a hard-fought several rounds in the CJEU and the UK courts, it all seemed all over; however, the EU General Court offered us a new judgment as an early Christmas present in mid-December.

The case of Mondelez UK Holdings & Services Ltd, formerly Cadbury Holdings Ltd v EUIPO dealt with an EU registered trademark (2632529) for a three-dimensional mark comprising of the Kit Kat chocolate bar without any markings. The mark was subsequently challenged by Nestle's favorite candy competitor, Cadbury (now owned by Mondelez), and the matter has since ultimately ended up in the General Court, largely dealing with lack of use and distinctive character.

The GC only concerned itself with Article 52(2) of the Community Trade mark Regulation, in conjunction with Article 7(3), which set out that a trademark, even if potentially found invalid, might still be registrable should the mark have acquired a distinctive character with respect to the goods and services covered. Mondelez argued that the EUIPO had failed to correctly assess this distinctive character (allowing the mark to be registered), and directed their argumentation in four separate parts.

The Court initially dealt with the second part of their plea argues that the mark had not been used for all of the relevant goods it was registered for. The Board of Appeal had seen that, based on the evidence submitted, the mark had been used for all of the goods listed above. This assessment, according to the GC, would be done "...in relation, on the one hand, to the goods or services in respect of which registration has been sought and, on the other, to the presumed perception of the mark by an average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect". Any proof employed would have to be viewed independently within the context of sub-sections within the broad terms of goods to identify whether the mark has been used for those goods.

Gilbert always forgot what his chocolate bars looked like

Under the evidence supplied, the GC did concede that the Kit Kat mark had been used for the majority of the goods listed; however, saw that it had equally not been used for bakery products, pastries, cakes and waffles, since the advertising materials only showed biscuit-like, chocolate treats with no real bakery goods included at all. This was deemed an error on the part of the Board of Appeal.

The first part of the plea dealt with a lack of use of the mark in the form as registered, and therefore would only stem from the branding or the use of other marks in conjunction with the contested mark. The EU courts have previously held that a 3D mark can acquire distinctive character even if used with other marks, as long as the public distinguishes the product from originating from a particular source as a result. The GC quickly rejected this argument, as surveys indicated a high percentage of individuals identifying the brand from just the shape alone.

They then moved onto the third part of the plea, which argues that there is a lack of use of the mark as an indicator of origin and insufficient evidence to that effect. The latter point would be assessed based on evidence showing that a significant portion of the public identifies the mark as an indicator of origin, which entails in it several factors, including market share and duration of use. The GC rejected this argument as well, having extensively discussed the evidence submitted and its application to the matter at hand, illustrating a clear recognition of the mark as an indicator of origin for those particular goods, and that it was sufficient to overcome this plea.

Finally, the fourth part of the plea asserted a lack of proof of distinctive character acquired through use of the contested trade mark throughout the European Union. Mondelez contested that, as Nestle only provided evidence with respect to 10 Member States out of 15, the Board of Appeal should not have extrapolated from that evidence applicable to the entire EU (with the Board only finding evidence of distinctive character for 5 being sufficient for the whole of the EU). According to established EU case law, a mark needs to have distinctive character in the whole of the EU, and would fail to be registered should it not have it for a part of the EU, even one single Member State. Evidence provided needs to be quantitively sufficient to prove distinctive character in the Member States concerned. The GC corrected the Board of Appeal's approach in assessing this, and set out that "…the relevant question is not whether it was shown that a substantial proportion of the public in the European Union, merging all the Member States and regions, perceived a mark as an indication of the commercial origin of the goods designated by that mark, but whether, throughout the European Union, it was proved that a significant proportion of the relevant public perceived a mark as an indication of the commercial origin of the goods designated by that mark".

The GC allowed this part of the first plea, determining that a lack of evidence for the rest of the Member States would mean that the mark has not been established to have distinctive character in the entire EU, and the registration is therefore invalid and would have to be re-examined.

The case is a very curious one, and highlights a potential big issue for applicants when it comes to evidencing the distinctive character in the entire EU. With surveys and other evidence gathering exercises being costly both monetarily and time wise, and newer launches in other territories being a hindrance for proving distinctive character. In the end, the threshold should be high; however, this writer would be a firm believer in statistics, especially for more notable, established brands, and would want more flexibility at the EUIPO (although, understanding the risks associated with giving away trademarks like candy). It will remain to be seen whether the case is appealed, and this writer would not want to see the fight for chocolate bars to ever end.

Source: Reuters