The Authors' Take - For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation

For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation


by Louis Louembé, Pierre Massot, and Mythili Thaya


What is similarity between signs? If no one asks us, we know what it is. If we wish to explain, to him who asks when elements of resemblances are sufficient for a sign to be considered similar to a trade mark with reputation, we find it far more difficult! This is the paradox of trade mark lawyers put in the words of Saint Augustine (surely for a more philosophical question). Although more practical, the question of the similarity of signs is of the utmost importance to defend efficiently trade marks with reputation against free-riding.

Indeed, when a trade mark is well-known, it is sufficient for the sign in dispute to repeat a characteristic element of the trade mark with reputation, however minor it may seem, to trigger a mental association with it, as demonstrated in the famous "Master" case (judgment of 11 December 2014, Coca-Cola, T-480/12). It is therefore important to have a method of assessing similarity between signs sufficiently thorough to take into account apparently minor elements but which can be sufficient to create a likelihood of association because of all relevant factors (such as of the reputation of the trade mark, the identity of the products and services offered, etc.).

Our article aims at demonstrating that European case-law is not satisfying in this regard. Indeed, the CJUE has initially modelled the method of assessing similarity in the case of infringement of a trade mark with reputation on the method designed to search for a likelihood of confusion. As a consequence, it excludes any consideration of reputation at the stage of assessing similarity and encourages consideration of the overall impression produced by the signs. Although the CJEU has attempted to make certain adjustments, the method of assessing similarity in relation to trade marks with reputation remains unsatisfactory and a source of uncertainty in the case law. It is also inconsistent with the case law on protected designations of origin, even though the logic governing these two systems is similar. We conclude that the method of assessing similarity in the case of infringement of a trade mark with reputation should be reviewed and defined with regard to its own purpose, i.e. identifying elements of resemblances sufficient to create a mental link between signs, and not a likelihood of confusion.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

U.S. Second Circuit Court of Appeals tames “transformative” fair use; rejects “celebrity-plagiarist privilege”; clarifies protectable expression in photographs


by Jane C. Ginsburg


In Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (March 26, 2021), the Second Circuit reversed the SDNY’s grant of summary judgment that Andy Warhol’s silk screen adaptation of a photographic portrait of entertainer Prince was a fair use. The Second Circuit’s decision retreats both from its prior caselaw’s generous characterization of artistic reuse as “transformative,” and from the outcome-determinacy of a finding of “transformativeness.” The court also provided an important explanation of copyrightable authorship in photographs.

Lynn Goldsmith's photograph (L);
Andy Warhol's Prince (R) 

Like other recent decisions, this judgment may signal a taming of “transformative use.” Prior caselaw, particularly in the district courts, seemed to accept almost any alleged new meaning or purpose, or added expression, as “transformative,” and then, having racked the first fair use factor into the defendant’s column, lined up the other three to conform to the first. Appellate courts now may be curbing this enthusiasm, both by adopting a more critical assessment of alleged transformations, and by reviving the independent importance of the fourth factor, market harm. In emphasizing the impact of the defendant’s use on the plaintiff’s ability to license derivative works, the Second Circuit may have begun to redress Cariou’s derogatory treatment of the art world proletariat. The court recognized that depriving photographers of licensing markets, including markets for using their works as “raw material” for other artists to stylize, disserves the overall goal of copyright to promote creativity by enabling artists to make a living.

Furthermore, the court’s exposition of protectable expression in photographs should reassure photographers, particularly photojournalists, whose art consists largely of knowing how and when to seize the moment. Against the contention that such images merely convey a reality the photographer did not create, the court’s emphasis on “the image produced in the interval between the shutter opening and closing,” (at *37) recognizes that “the readiness is all.” (Shakespeare, Hamlet V.2).


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

by Michal Bohaczewski


The article analyses a rule of the EU trade mark law referred to by the legislature as ‘acquiescence’. The provisions on acquiescence provide for a period of preclusion for filing an invalidation or infringement action against a later registered trade mark which has been used on the market, provided that the proprietor of the earlier right tolerated that use for 5 successive years. 

The study first examines the prerequisites for the commencement of the period of preclusion resulting from the jurisprudence of the Court of Justice of the EU. In particular, the author refers to the requirement of knowledge by the proprietor of the earlier trade mark of the use of the later mark which, in some cases, in the absence of evidence of direct knowledge, may be deduced from the circumstances of the case. 

The article further analyses the conditions which need to be fulfilled for the period of preclusion to expire. The author raises the issue of the form in which the proprietor of the earlier right should oppose the use of the later trade mark in order to exclude his acquiescence. This matter of major practical importance is currently subject to a question referred to the Court of Justice for a preliminary ruling (C-466/20). 

The study also examines the relationship between the preclusion due to acquiescence and the ‘peaceful coexistence’ of the trade marks as a factor to be taken into account in the assessment of the likelihood of confusion between the signs, since prima facie the scopes of application of both rules may seem to overlap. The author concludes however that in reality there is little room for an overlapping between them.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Trademarking “COVID” and “Coronavirus” in the United States: An Empirical Review

Trademarking “COVID” and “Coronavirus” in the United States:

An Empirical Review


by Irene Calboli


Since its global debut in early 2020, the COVID-19 pandemic has led to a tsunami of trademark applications including the terms “COVID,” “Coronavirus,” and other medical and pandemic-management related terms. In this Article, I examine the applications that have been filed with the United States Patent and Trademark Office until the end of 2020. In particular, I present a comprehensive set of data regarding the products for which the applications have been filed, the type of filing entities, the legal basis for filing, and the date of filing throughout the relevant period. Based on these data, the COVID-19 pandemic led not only to a large number of filings for medical and pandemic-related products, but also for unrelated and promotional products. Individuals and small businesses were the largest groups of filers, and over two thirds of the applications were based on intent-to-use rather than use in commerce. The number of filings closely mirrored the development of the pandemic during the various months of 2020. In addition, when compared with previous filings for signs including terms related to past sensational events, including pandemics, the numbers of “COVID-19 related” applications were much higher than any previous filings. This confirms the catalyst effect of the COVID-19 pandemic also on the trademark application system, even though a large number of these applications may ultimately not be registered as several signs may be found to be generic or descriptive—in particular for medical and pandemic-related products—or deemed not to function as trademarks—for example if they are used as ornamentations on promotional products. The signs may also be found to be deceptive if they imply a specific cure or solution, when this may not be accurate. Still, the data presented highlight several interesting aspects of the phenomenon of “filing sensationalism,” even though it remains difficult to understand what triggered this large number of filings precisely with respect to the COVID-19 pandemic--a time that we all hope to put behind in the nearest future.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

In conversation with ... Prof. Dr. Annette Kur


The editors of the
 Journal of Intellectual Property Law & Practice (JIPLP) were very honoured when Prof. Dr. Annette Kur accepted their invitation to join the journal’s editorial board a couple of years ago. I too was delighted when Annette agreed to talk to me recently for the second in a new series of conversations with leading figures in the IP community…

The effects of chance or coincidence – perhaps serendipity? – were a recurrent theme of our conversation, a retrospective survey of Annette’s distinguished career. With characteristic modesty, Annette described how she first developed an interest in the Nordic countries, leading the Nordic Department at the Max Planck Institute for Innovation and Competition in Munich. Annette first arrived at the Institute, drawn initially by the favourable conditions in which to write her PhD, not with a background in IP, but from a competition and consumer protection perspective. This desire to protect consumers and the socially weaker has persisted ever since. It was Annette’s (rudimentary to begin with) knowledge of the Swedish language that was instrumental in establishing her at the Institute – the first defining moment of her illustrious career. Annette proceeded to master (passively) not only Swedish, but also Norwegian and Danish, and spent significant amounts of time translating, which was a key task in the country departments at the Institute. The Nordic community became and remains precious to Annette’s heart.

 

Annette referred to the Institute as a microcosm of the wider IP community, which also holds a special place for her. It is unique. A small community in the early days, the Institute became a hub for IP internationally and is still a family. Annette described the appeal of IP intellectually: copyright and its affinity with the arts, and patents, though very different, still connected with ideas. Annette loves the playfulness and flexibility of the IP system. Its rules may be rigid, but at their core is a genuine dynamism as nothing is cast in stone. As Annette put it, “everything moves”. It struck me that Annette, as a true comparativist, enjoys the intellectual stimulation provided by contrasts; she compared the German system, with its rigidity and hierarchy, with the Nordic academic landscape and its non-hierarchical style of communication. Within the Max Planck Institute, as people come together from so many different countries, it is impossible to impose a strict hierarchy or a strict dogma. According to Annette, this accentuated the openness and playfulness at the Institute, especially in the Nordic Department. 

 

Known as a guiding light in design law, having been instrumental in the creation of the system of Community designs, Annette shared with me how further serendipity influenced the next phase of her career. Having previously focused on unfair competition and trade mark law from the consumer’s point of view, Annette was invited by the then director at the Institute to participate in a new interesting research project. This was subsequently adopted by the Commission as a blueprint and European design law was established. With typical self-deprecation, Annette attributes her then being viewed as a “design person” to several more amazing coincidences, and even confusion between the Hague Conference on Private International Law and Hague – the International Design System!

 

As Annette said, “Coincidences play a role in influencing one’s life and one’s academic output”.

 

In a final strange coincidence, I was lucky enough to take delivery of the recent festschrift published in honour of Annette by Cambridge University Press. This arrived by chance about an hour before we had arranged to speak and provided me with the opportunity to read more about Annette’s history and to note some of the distinguished names whose chapters have been included in the book, a further sign of the high esteem in which Annette is held. Prof. Eleonora Rosati will shortly be reviewing the book, and readers can look forward to reading her review in a forthcoming issue of JIPLP.

The Authors' Take - Governing the fashion industry (through) Intellectual Property assets: systematic assessment of individual trade marks embedding sustainable claims

Governing the fashion industry (through) Intellectual Property assets: systematic assessment of individual trade marks embedding sustainable claims


by Sara Cavagnero


As public interest in sustainable fashion rapidly surges, trade marks are playing a prominent role in promoting eco-friendly products and engendering consumer trust. PRADA registered the trade mark “Re-Nylon” to signal its collection based on the regenerated-nylon yarn ECONYL, while the fast-fashion giant H&M relied on the trade mark “CONSCIOUS” to identify products made with recycled or organic materials.

These IP assets allow companies to transfer information on the so-called credence attributes, which empower consumers to select products reflecting not only their instrumental preferences but also their values. However, a missing piece of the puzzle relates to the correlation with sustainability commitments, given that the information provided is not neutral but framed by the brand and, thus, potentially contested.

The risks are clearly outlined in the report released in January 2021 by the European Commission, which revealed that 42% of green claims made by garments, cosmetics, and household companies on their websites are “exaggerated, false or deceptive”, and in 59% of cases not supported by any evidence.

The systematic assessment of 12.335 trade marks including 22 sustainability-related vocabularies filed in the United States, the European Union, and at the international level from 2000 to 2020, revealed that sustainability-related trade marks represent a modest portion of the overall number of registrations in classes 23, 24, and 25, but the growth figures are rising, in line with the general filing trends.

The untouched primacy of the term “green” suggests that corporate strategies are mainly based on green marketing principles, signalling, since the late 1980s, the positive correlation between eco-friendly shade or wording in visual branding and consumers’ judgment about companies’ actions.

Furthermore, by confirming that sustainable trade marks are largely decoupled from sustainable corporate practices, the research results validate the idea of expanding the existing taxonomy of greenwashing sins, by identifying a new form of disingenuous communications, conveyed via individual trade marks.

Still, this proposal is not flawless. Indeed, the IP regulatory framework is ill-adapted to monitor sustainability claims conveyed through individual trade marks and the misleading advertising regulation does not appear to be unfolding its full potential.

Potentially, instead, a more regulated approach, inspired by the food sector, may help to curb disingenuous corporate practices conveyed via trade marks.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - A critical review of intellectual property rights in the Kenyan tea sector

A critical review of intellectual property rights in the Kenyan tea sector


Agriculture remains the most important economic sector in much of Sub-Saharan Africa, providing over 50% of overall employment, so the acquisition and use of intellectual property rights (IPRs) in the sector can have wide-reaching effects. In Kenya, tea (primarily in the form of bulk, dried leaves) is the largest export product by value, and is a major source of income for hundreds of thousands of smallholder farmers. In addition to the economic benefit, tea (unlike coffee) is widely consumed in Kenya, and has significant cultural importance.

With relatively active patent, trade mark, and copyright offices, a functional plant variety protection (PVP) regime, and membership in the Africa Regional Intellectual Property Organization (ARIPO), Kenya is home to numerous tea-related IPRs held by both foreign and local entities in government and the private sector. The Kenyan tea sector is therefore targeted in this paper as a case study for exploring various aspects of the sectoral use of IPRs.

Throughout the 20th century, foreign (i.e., non-Kenyan) entities were responsible for a majority of the activity in tea-related IPRs protecting innovation (i.e., patents and PVPs). This appears to be shifting in recent years toward more ownership and participation by local entities. Furthermore, the focus of innovation is more diverse for local applicants. Whereas foreign entities largely seek to protect tea plants and methods of processing tea plants, IPR applications from local entities cover a wider spectrum of the value chain for tea and tea-related products.

In contrast, trade marks have always been predominantly used by local entities. Tea-related trade marks include some that use the names of geographic locations. Kenya does not have a Geographic Indication (GI) system, but both economic and agricultural factors point to a situation that might be ideal for GIs.

A surprising finding is the almost complete lack of any tea-related IPRs held by non-Kenyan, Africa-based entities. Although seven of the top 20 global tea producing nations are in Africa (including all five of the countries in the East African Community), this study found just a few trade marks held by entities in Egypt, Mauritius, and Uganda. Africa-based entities do not hold any tea-related patents, PVP certificates, or national plant variety registrations in Kenya. Such findings may be important for the ongoing negotiations for the African Continental Free Trade Agreement.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Final decision from a UK Community Design Court clarifies how to interpret a registered design

Final decision from a UK Community Design Court clarifies how to interpret a registered design


The decision in Rothy's Inc v Giesswein Walkwaren AG [2020] EWHC 3391 (IPEC) (16 December 2020) relates to a design for ballerina shoes, which an informal, women's slip-on shoe, with a relatively thin, flexible sole and a wide, low heel. This decision is the last judgment handed down by a UK court acting as a Community Design Court. David Stone, sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court, was faced with the task of construing what was protected as the Registered Community Design.


The key feature of the shoe which the Claimant developed was that the upper was made of knitted yarn made from recycled plastic. However, the Defendant denied that the cross-hatching in the images of the designs indicated a knitted meshwork fabric.

In determining what constitutes the claimed design, the judge rejected the submission of the Claimant that he should take into account a shoe made to the design. This would clearly risk introducing features extraneous to those claimed in the registration. As the judge pointed out, whilst superficially attractive, this argument is circular – to determine if the proffered shoe is indeed a shoe made to the design, one first needs to assess what the registration means.

The judge also rejected the submission of the Claimant that he should consider the description of the claimed design in the US design patent application from which priority was claimed. It cannot be correct to import subject matter from a priority application in this manner, in particular when the effect would be to circumvent Article 36(6) of the Community Design Regulation which stipulates that the description of a RCD does not affect the scope of protection.

This leaves only the images of the registered design to define what is claimed in the registration. The judge scrutinised closeups of the images on the EU IPO website, and concluded that the patterning shown on the upper depicts a knitted fabric. This led to the conclusion that the RCD possessed individual character, as neither of the pleaded prior designs had knitted uppers (both were suede).

The differences between the Defendant’s shoe and what the judge construed as being protected by the RCD (such as a tab at the back of the shoe and a decorative button) were held to be minor, so the Defendant’s shoe was held to infringe the RCD.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer

The Commission’s vision for Europe’s Digital Future: Proposals for the Data Governance Act, the Digital Markets Act and the Digital Services Act – A critical primer


In November and December 2020, the EU Commission has presented a triad of proposals concerning data governance, the regulation of gatekeepers in digital markets and the regulation of digital services (namely including an ambitious, yet considerate, reform of provider liability in Europe as well as the introduction of certain duties of diligence in particular for very large platforms). Specifically, this Digital Services Package respectively comprises a proposed Data Governance Act (DGA), Digital Markets Act (DMA) and Digital Services Act (DSA). Altogether, these bills represent the hitherto most ambitious and broad regulatory project in the field of data and digital services regulation worldwide.

While the (rather heterogeneous) DGA as well as the DSA will also have to be critically discussed in detail (and partly are in the paper), immediate attention has to be paid to the fundamentals of the DMA Proposal, namely, the necessary discussion of its legal basis, objective and context. To put it in a nutshell, the Proposal represents a hybrid approach to specific regulation of gatekeeper platforms, which comprises prominent elements of competition law as well as certain elements of unfair practices regulation and some other objectives (such as the efficient enforcement of certain rights relating to protection of personal data). Taken together, most of this makes perfect sense as a European Magna Carta for businesses’ and customers’ competitive freedoms vis-à-vis core platform intermediary and infrastructural services. Practically, in its current form, the proposal would effectively apply to the GAFAM-companies and a handful of further gatekeeper platforms.

However, notwithstanding the substantive competition law elements within this regulatory approach, the Proposal is only based on Art. 114 TFEU as an instrument of internal market harmonization. Against this background, presently, the main fundamental weakness of the Proposal concerns the integration in the context of or at least a more specific co-ordination with European and national competition law. This has practical consequences since sufficiently consistent and specific provisions on coordinating public enforcement of the Commission on the one hand and of the Member States’ authorities (in particular on the additional basis of competition law) on the other are lacking in the Proposal. In fact, this latter more practical aspect is partly linked to the former more fundamental aspect, since contextual integration in the realm of competition law (and consequently the use of Art. 103 TFEU as an additional basis for the Proposal) would allow to make use of the European Competition Network under Regulation 1/2003 for the public enforcement of the DMA Proposal’s provisions in order to efficiently coordinate EU and national enforcement, based on both, the DMA Proposal and EU or national competition law. Apart from that, a European legal framework for private remedies and enforcement in regard to the obligations laid down in the Proposal seems of paramount importance, since otherwise there is a considerable danger of disharmonization and inefficiency in regard to diverse or lacking private remedies according to the different Member States’ respective national contract, tort and unfair competition laws.

Make no mistake: The Magna Carta in many ways was a document of the weakness of King John of England in enforcement of his power against the rebel barons. Issues of public and private enforcement will also be the crucial tie-breakers for making the DMA Proposal a future success in practice – thus they should be addressed comprehensively from the start.


[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]