24 April, 2018

Kit Kat Kontinues - Advocate General Wathelet Dismisses Appeal on Kit Kat Shape Trademark

One would've never imagine a chocolate bar could be litigated over for many years, but the Kit Kat saga has proven that even the most seemingly mundane things can be worth a tremendous monetary investment. After the EU General Court decision last year (discussed more here) you could have imagined the matter has been largely concluded. This was clearly not the case, as Mondelez appealed the decision, which has now reached the desk of Advocate General Wathelet. They issued their opinion only last week, which will give direction to the CJEU who will decide the matter once and for all later this year.

Although discussed extensively on this blog, the case still merits a short introduction. The matter Société des produits Nestlé v Mondelez UK Holdings & Services concerns the design of the Kit Kat chocolate bar, which Mondelez has registered as a trademark (EUTM 2632529). Cadbury, now Mondelez, filed for an application of invalidity regarding the mark sometime after, with the matter being decided by the General Court last year. Nestle appealed the decision (which went against them), ending up heading to the CJEU via the Advocate General.

The case on appeal hinges on the extent of the territory that you need to show distinctive character that is acquired through use of the trade mark under Article 7(3) of the CTM Regulations. In the General Court Nestle failed to show use throughout the EU, not just in a substantial part of it, and therefore the mark was invalidated.

A Kit Kat Kounterfeit
Per the decision in August Storck KG v OHIM, the CJEU set the bar for the acquisition of distinctive character through use as requiring "…evidence… that [the mark] has acquired, through the use which has been made of it, distinctive character in the part of the [EU] in which it did not, ab initio, have such character". Adding to this, the CJEU noted that an argument for acquired distinctiveness could be rejected if there is no evidence of use, as detailed above, in a single Member State. Subsequent cases have shown that partial acquisition of distinctive character within the EU is not enough, as there needs to be 'quantitatively sufficient evidence' of acquired distinctiveness.

Looking at the above, the AG did, however, not shut the door entirely on partial acquisition of distinctiveness. They added that a mark could have acquired distinctiveness in the entire EU if evidence is provided for "…a quantitatively and geographically representative sample" of the EU. This means taking into account the various links between the national markets of Member States, and whether those links negate a lack of evidence for acquired distinctiveness in the bigger picture within Europe. Potentially a more regional approach has to be taken and therefore acquired distinctiveness could be extrapolated for any missing countries, i.e. produce evidence for the Nordics and other such 'collectives' of countries if evidence for all Member States is missing for others within those 'collectives'.

Having considered the missing evidence discussed in the General Court's decision, the AG concluded that Nestle's appeal should be dismissed.

While we are still awaiting the CJEU's decision on this matter, things don't look great for Nestle, or 3D marks in general. It will be difficult for many proprietors of such marks to show acquired distinctiveness within the EU, or most of it. It remains to be seen whether the CJEU will go in a different direction, but it seems very unlikely considering the General Court's decision and now the AG's opinion.

17 April, 2018

As the Oracle Foretold - Court of Appeals Finds no Fair Use for Google's Copying of Java APIs

The Oracle/Google saga has been wagered in the courts for years (discussed on this blog here and here), and many legal scholars enthusiastic about technology have been waiting for the matter to reach its ultimate conclusion. Although the matter is not necessarily over by any means, a recent Court of Appeals decision might have struck the final blow, and ended the matter (and the question of APIs and copyright) for the time being.

The case of Oracle America Inc. v Google LLC concerned the Java software platform, which was developed by Oracle's predecessor, Sun Microsystems. The Java platform also included an Application Programming Interface (API) that allowed for the development of software using pre-written code to execute certain functions without writing the code from scratch, delivered in packages. Google had included some Java API packages in its Android operating system without Oracle's authorisation; specifically 37 Java API packages (amounting to 11,500 lines of code). Android became widely used and very popular, after which Oracle took Google to court for copyright infringement, with proceedings ending up in the Court of Appeals in late March.

The matter focussed on whether Google's copying of the APIs amounted to fair use under 17 USC section 107, which looks at four factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

Justice O'Malley, handing down the majority's opinion, started with the first factor, which, specifically, looks at whether the purpose of the use was a commercial one, and was it transformative or not so as to lean towards for fair use.

In terms of commercial use, the Court considered that, while the Android platform is freely distributed (including the aforementioned APIs) does not mean the use is not commercial. Also, as Google earns money from advertising on the platform, this will weigh towards a finding of commercial use. Indeed, in the end the Court found that the use was commercial.

The second part of the first factor looks at how transformative the use is, i.e. "…adds something new, with a further purpose or different character, altering the first with new expression, meaning or message". The use would have to add something new or supersede the original work. The Court determined that Google's use did not change the APIs or their purpose, but used them for the exact same in the Android operating system. The context of the use within smartphones was also not novel. In short, the Court saw that "…where, as here, the copying is verbatim, for an identical function and purpose, and there are no changes to the expressive content or message, a mere change in format (e.g., from desktop and laptop computers to smartphones and tablets) is insufficient as a matter of law to qualify as a transformative use".

Google's visit to a different Oracle failed to
predict the outcome of the case
Further to the assessment of purpose and character there is also a bad faith argument that the Court considered, meaning whether Google has used the APIs "…in a manner generally compatible with principles of good faith and fair dealing". Even assuming a jury would not be convinced of Google's bad faith use of the APIs, the Court still concluded that the first factor overall weighed against a finding of fair use.

The second factor looks at the nature of the copyright work, i.e. whether the work is more factual or creative, with the latter getting a higher likelihood of protection. The Court did highlight that, while the APIs did involve some level of creativity, they ultimately were for a functional purpose. Even so, the second factor is of very little importance in a finding of fair use, per the Court, they did find that it weighed towards a finding of fair use.

The Court moved onto the third factor, which looks at the substantiality of the copying, which is more an assessment of quality rather than sheer quantity of what was copied. In retaining the functionality of the Java APIs it was necessary to copy only roughly 200 lines of code; however, Google copied nearly the entire API set of 11,500 lines of code. In brief, the Court set out that Google's copying was qualitatively significant and necessary for the creation of the Android OS, and the third factor therefore weighed against a finding of fair use.

Finally, the Court looked at the fourth factor, meaning the copy's effect on the potential market (or the market for any derivative works) or value of the original work. This includes assessing "…the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant… would result in a substantially adverse impact on the potential market for the original". Likely market harm can also be presumed by the courts if the use by the potential infringer is commercial and non-transformative.

The Court determined that, there was clear harm to the market in relation to smartphones, as Java had been employed in many phones and tablets at the time of the launch of Android. In the light of the evidence, they indicated that this would clearly lead to a finding of market harm by a jury. There was also impact on the potential market for Java, not just the existing market, specifically with regards to the smartphone market, which was deemed to be "…a traditional, reasonable, or likely to be developed market". Oracle's lack of development of a smartphone or smartphone OS was irrelevant, as the potential still existed for the company that was taken over by Android.

In balancing all of the above factors, the Court found that Google's use was not fair use, but the Court did note that, while this case did not reach the threshold for fair use in relation to computer code or APIs, they did not "…conclude that a fair use defense could never be sustained in an action involving the copying of computer code".

Google's cross-appeal for declaration that the APIs would not be protected by copyright was also dismissed by the Court, which was dismissed by the Supreme Court in a petition before this judgment.

The case is very interesting, in the light of potential copying within software development. From what this writer understands, the appropriation and repurposing of code is very common in the industry, and this decision could create an environment where companies would be more readily okay with pursuing copying. Google seemingly will not have the option to pursue the matter to the Supreme Court, and will end up paying significant damages to Oracle.

Source: JDSupra

10 April, 2018

An Opinion on Whisky - AG Øe Sets Boundries for Geographical Indicators and their Infringement

Having looked at the legal intricacies of using protected Geographical Indications in a recent case regarding Champagne, this writer has grown to appreciate the complexities of PDOs and the law surrounding them. What amounts to an infringement of GIs rights is very tricky, and any clarification from higher courts is always appreciated. Scotch whisky is one GI that is vehemently defended, and many third-parties would want to benefit from the image that the GI imparts, but to avoid the 'pesky' issues of actually conforming to the classification. In terms of a name for a whisky produced outside of Scotland, what amounts to an infringement of a GI? Ahead of a CJEU decision, Advocate General Øe gave their opinion of this question.

The case of The Scotch Whisky Association v Michael Klotz dealt with the production and sale of a whisky called "Glen Buchenbach" in Germany by Mr Klotz. The SWA objected to the sale of the whisky using the term 'Glen', which, in their view, referred to a geographical location in Scotland and implies the product is a Scotch whisky.  The use could potentially therefore infringe on the Geographical Indications Regulation, which protects Scotch whisky as a GI.

The German courts referred three questions to the CJEU on the matter, which were considered by the Advocate General.

The first question, in essence, asked "…what is meant by ‘indirect commercial use [of a] registered geographical indication’ for a spirit drink, within the meaning of Article 16(a) of Regulation No 110/2008".

The first part of the first question then focusses on whether "… in order to establish the existence of such use, prohibited by Article 16(a), it is necessary that the disputed indication be used in identical or phonetically and/or visually similar form to the protected geographical indication, or whether it is sufficient that the disputed indication evokes in the relevant public some kind of association with the indication or the geographical area relating thereto". In brief, this is whether the indication has to be phonetically or visually identical to the GI, or if the public associate the term with the GI without similarity (i.e. 'Glen' would be associated with Scotland, and therefore Scotch whisky).

The Advocate General determined that, under Article 16(a), the expression of 'direct or indirect commercial use' requires that "…the use is made of the disputed indication in the form in which it was registered or at least in a form with such close links to it that the sign at issue is manifestly inseparable from it". This means that the use would have to be in an identical or phonetically and/or visually similar form, and not just associated with the GI.

The Court has firmly established that 'direct' use would amount to the use of the GI, or a corresponding term or translation, in conjunction with goods that don't meet the specification. However, the Advocate General had to consider what amounts to 'indirect' use of a GI. In his view, this requires use where "…the indication… feature[s] in supplementary marketing or information sources, such as an advertisement for that product or documents relating to it". Additionally, broadening the provision would make following provisions, such as Article 16(b), redundant, and has to therefore be kept narrower, and won't cover cases of mere association by the public. This interpretation supports the interpretation of the objectives of the Regulation and the Article, which clearly seek to protect GIs from misuse, and to ensure quality of the goods.

The AG probably needed a drink after the case
In terms of the second part of the first question (additional information in relation to an 'association' with a GI in the minds of the public), the Advocate General swiftly concluded that the Court would not have to rule on the point, in the light of the above, but he did make brief observations on the same. In his view there is no ambiguity under the provision on what amounts to infringement, which differs from Article 16(b) that is not at issue in the matter. The Advocate General added that, in considering any "misuse, imitation or evocation" under Article 16(b), a court could take into account the context where the disputed indicator is used, and the same would apply if the Court would consider 'association' as a possibility under Article 16(a).

The second question, split into two parts as well, asks clarification on "…the concept of ‘evocation’ of a registered geographical indication relating to a spirit drink, within the meaning of Article 16(b)".

As with the first question, the first part of the second question asks whether, in determining the existence of 'evocation' "…the disputed designation must be in an identical or phonetically and/or visually similar form to the protected geographical indication, or whether it is sufficient that the designation evokes in the relevant public some kind of association with that indication or the geographical area relating to it".

Having considered relevant case law, the Advocate General concluded that for the purposes of identifying an ‘evocation’ "…the only determining criterion is whether, ‘when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’, which the national court must verify by taking into account, as appropriate, the partial incorporation of a protected name in the disputed designation, a phonetic and visual relationship, or a conceptual proximity". He also outright rejected the concept of evocation in relation to a mere association with the GI in the might of the relevant public.

As above, the second part deals with the existence of 'evocation' and whether it has to be determined looking at the use in isolation, or whether the context of the use can be taken into account. Having briefly discussed the matter, the Advocate General concluded that "…for the purposes of establishing the existence of an ‘evocation’… it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, in particular with regard to its true origin". That is because this information is largely irrelevant in the assessment, and that 'evocation' can exist even in the absence of confusion in the relevant public.

Finally the Advocate General considered the third question, which asked, in essence, "…whether, for the purposes of determining whether there is ‘any false or misleading indication… liable to convey a false impression as to its origin’, within the meaning of Article 16(c)… it is necessary to take account of the context in which the disputed element is used, in particular where the disputed element is accompanied by an indication of the true origin of the product". The question concerns the use of the name 'Glen', whether its use is false or misleading, and if its use in context can be taken into account (i.e. the use of a German location, Buchenbach, after the name).

Having considered all parties' arguments extensively, the Advocate General determined that "…for the purposes of establishing the existence of a ‘false or misleading indication’ prohibited by [Article 16(c)], it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, in particular with regard to its true origin". He also noted that, in the current case, the use of the name 'Glen' does not have a sufficiently clear and direct link with the protected geographical indication, or with its origin country, in order for it to be a 'false or misleading' indication.

The Advocate General's opinion is very important, particularly in the light of GIs and the assessment of their protection and remit thereof. It clearly narrows down the use of any disputed indication in isolation, avoiding any other contextual indicators as to origin or otherwise; however, the CJEU's ultimate decision will set the scene in a more concrete fashion later in the year. This writer expects them to follow the opinion, but that is by no means a certainty.

03 April, 2018

Only a Technicality - CJEU Decides on What Amounts to a 'Technical Function' in Registered Designs

The protection of designs is complicated, no less because the design of a particular product can often be tied to the end function it is meant to achieve. A functional element of a design might not attract protection as a design, since the regime only protects (to put very simply) aspects of designs that are of more aesthetic value. What amounts to a feature that won't be protected is difficult to decide, as many aesthetic features can often achieve a technical result as well. This prompts the question, when is a feature like that protectable or not? The CJEU took on this question on a case decided only a few weeks ago.

The case of DOCERAM GmbH v CeramTec GmbH concerned the manufacture and sale of technical ceramic components by DOCERAM, in particular, weld centring pins for the automotive and textile industries. Many of these designs are registered as Community designs (RCD 242730). CeramTec also manufactures and sells similar centring pins in the same variants as DOCERAM's registrations. DOCERAM subsequently took CeramTec to court for design infringement, with the matter ultimately ending on the desk of the CJEU.

The referring court asked two questions, which related to the factors in determining whether a design is one that is solely dictated by its technical function, and therefore not registrable under Article 8(1) of the Community Design Regulation.

The first question, as set out by the Court, asked whether "…Article 8(1)… must be interpreted as meaning that, in order to ascertain whether the features of appearance of a product are solely dictated by its function, the existence of alternative designs is decisive, or whether it must be established that function is the only factor which dictated those characteristics".

Kat's choice of 'functional' design was interesting to say the least
Having considered the legislation and relevant case law, the Court determined that "…Article 8(1)… excludes protection… for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist". In short, even if alternative designs exist, the only relevant consideration is whether the technical function is the only factor which determined the features in question and the applicability of Article 8(1).

With regards to the second question, the referring court asked whether "…Article 8(1)… must be interpreted as meaning that in order to determine whether the relevant features of appearance of a product are exclusively dictated by its technical function, that finding must be based on the perception of the ‘objective observer’".

The Article does not set out any requirements on the perspective of the assessment above, unlike other provisions in the Regulation. That in mind, the objective of the Regulation nonetheless does require national courts to take account of all the objective circumstances relevant to each individual case when determining whether features of a design are covered by the provision.

The Court finally set out that "…in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function… the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’".

The case sets out clear guidelines on the assessment of features in designs that may or may not be solely dictated by their technical function. Designs are often a pile of uncertainty, being very difficult to protect (as illustrated well by the Trunki case, more on which here). Having a clearer idea as to how the lines are drawn for protection helps both proprietors and others disputing the registrations.