The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Saturday, 30 December 2017

AIPPI Event Report: Are you sitting comfortably....? Patent Roundup 2017

The end of this year's Michaelmas term for the AmeriKat was characterized by the usual unpredictability and busyness that has almost become a holiday tradition over the last few years.  This meant that she missed out in her usual favorite pre-holiday events from Christmas parties to AIPPI's favorite yearly round-up.  But the President of the UK Group of AIPPI and long-standing Kat friend, Justin Watts (WilmerHale) was there to report for readers.  Over to Justin:
"AIPPI UK's annual Christmas present is in the form of a round-up of the year's patent cases.  As for the past few years, Andrew Lykiardopoulos QC was both chef and maître d', serving up a feast of goodies to an appreciative audience.  HoganLovells generously hosted the event (and their mulled wine and mince pies were especially appreciated). 
 Andrew's talk reviewed the patents year in the UK courts, and was by its nature an overview.  I’ve taken even more of an overview in this note: highlighting the topics, and leaving it for readers to go and do their own digging (on the IPKat) if they want more detail. 
 Andrew noted that it had been a relatively good year for rightsholders, with more winning than losing.  He took the audience on a rapid and entertaining gallop through the year’s cases, giving personal insights especially on Actavis.  As in previous years, 
Andrew's handout provides a valuable source of reference (especially for IP diploma students), setting out as it does the principle quotes from the year's major cases.  This year's will be available shortly on the AIPPI UK website.  Andrew’s note, and Bristows “Review of the Year” when Brian [Cordery] finishes it, are the two must-haves short guides to patents for anyone with an exam coming up.  
Andrew started with the year’s SPC cases (Abraxis, Teva v Gilead, Teva v Merck, Sandoz v GD Searle) before going on to the legal highlights: Actavis, AbbVie and Unwired Planet.  He noted on Actavis in particular that important questions remain to be worked out, and in particular the status of the “golden thread” (i.e. what is in or obvious from the prior art, cannot infringe.)  
On Actavis, Andrew also took the audience through the subsequent cases that have referred to it (Generics v Yeda, Illumina v Premaitha, Fisher v ResMed).  He then commented on some decisions of lesser importance but still worthy of note (Shanks (inventors' remuneration), Generics v Teva (CGK and multiple experts),  Accord (title to priority), Chugai (validity of foreign IP))."

Congratulations to Sean Dennehey!

Sean Dennehey
Readers who are recovering from copious amounts of holiday engorgement and spending much of their days blankly scrolling through news items on their smartphones may have already read about the exciting news from this year's New Year's Honours list.  The UK Intellectual Property Office's very own Sean Dennehey (Deputy Chief Executive) has been honored with a Commander of the Order of the British Empire (CBE).  Sean first joined the IPO in 1978 as a patent examiner, was appointed as the Director of Patents in 2004 and Deputy Chief Examiner in 2007.  With the Battle of Brexit, March of the UPC and trade agreements on his plate, Sean has a lot on his plate in 2018.

But before he devours all of that, the IPKat team sends their biggest congratulations on the wonderful honour!

Friday, 29 December 2017

Never Too Late: If you missed the IPKat Last Week!

Too busy celebrating the holiday season to keep up with the latest IP news? No problem! As always, the IPKat is here to bring you a quick summary -- the 175th edition of Never Too Late (week ending 24th December).

feeeelin' festive!
Katfriend Mirko Brüß (Waldorf Frommer Rechtsanwälte) has had a chance to analyze the reasoning of the decision of the German Federal Court of Justice (BGH), which refused the idea of having to apply the GS Media [Katposts herepresumption of knowledge for for-profit link providers to search engines, in case I ZR 11/16. In the case, an unlawful act of communication to the public by the defendant can only be found once the defendant knew or should have known of the unlawful nature of the work that it is linked to. Such knowledge would be present once the defendant was expressly informed by the rights holder of the unlawful nature of the information appearing on the site.

Kat friends Tim Golder and Lauren John (of Allens) report on legislative developments in relation to IP Australia’s release of an exposure draft of the legislation that will partially implement the Federal Government's response to the Productivity Commission's (PC) final report on its inquiry into Australia's IP arrangements. They discuss some of the significant amendments to Australia's IP laws that are included in the draft legislation.

Rainier days ahead for Starbucks as it loses trade mark opposition in Singapore
Kat friend Gillian Tan of Infinitus Law reports on a recent decision in Singapore in which Starbucks failed in an opposition based on its composite mark and its colour scheme. In the case Starbucks Corporation vs Morinaga Nyugyo Kabushiki Kaisha [2017] SGIPOS 18, Starbucks opposed the registration of a mark by the Japanese dairy company, based on alleged similar layout. The Intellectual Property Office of Singapore (IPOS) found that it was not the colour scheme per se or the conceptual layout comprising the concentric circles that would be retained in the minds of the consumer. Rather, it is the textual and figurative elements in the marks that play significant roles in the recollection of the marks. Because these elements are completely different from each other, the marks are not visually similar.

To celebrate 98 years since the Sex Disqualification (Removal) Act 1919 was passed, officially deeming women to be “persons”, Hayleigh takes the opportunity to consider gender diversity in law, and intellectual property law in particular. In view of this, she introduces the World IP Women (WIPW) global network. 

Katfriend Nedim Malovic (Sandart & Partners) reports on a judgement released earlier this week (Comité Interprofessionnel du Vin de Champagne v Aldi Süd Dienstleistungs-GmbH & Co.OHG, C-393/16) where the Court of Justice of the European Union (CJEU) reviewed relevant EU legislation on protected designations of origin (PDOs), following an injunction sought by the Comité Inteprofessionnel du Vin de Champagne (CIVC) against the sale of the sale of “Champagner Sorbet” in 2012.

Eleonora’s annual copyright awards have been presented! Looking at the past 12 months of cases, categories of awards include; most important copyright decision, copyright person of the year, most important unresolved issue, most important policy issue for 2018, and most important copyright-protected work.


PREVIOUSLY ON NEVER TOO LATE

Never Too Late 174 [week ending 17 December] The first modern blockbuster IP merchandising campaign? Disney, Davy Crockett and the coonskin cap I UPC - update from UK on statutory instruments I The ILO rules reinstatement of Board of Appeal member, but EPO resists I INTA calling: The 2018 Ladas Memorial Award competition for paper on a trademark subject I R 0003/15: surprising interpretation of feature violates right to be heard I Germany: Bundespatentgericht annuls Nespresso capsule shape mark I Wind in the sails for atypical trade marks in the EU - graphical representation following the recent EUTM reforms I Coty, distribution agreements and luxury brands I Around the IP Blogs! I Monday Miscellany

Never Too Late 173 [Week ending Sunday 10 December] Why is it so difficult to the make the case against counterfeiting (or does it just seem so)? | The Red Bull colours: no trade mark registration for indeterminate colour combination | Limoges porcelain now protected by French GI scheme | BREAKING NEWS - CJEU holds that preserving luxury image of products in selective distribution agreements is not contrary to competition law | AIPPI Congress Report 15: Partial Designs: Full Protection? | AIPPI Congress Report 16: Patentability of Computer-Implemented Inventions | INTA Brand Authenticity Conference (Report 4): Brands, social media and CSR | Commissioned research opportunity - exhaustion of rights | BREAKING: CJEU holds that SPCs cannot be obtained on the basis of an "end of procedure notice" pursuant to Article 3(b) SPC Regulation | You snooze (for 40 years) you lose – HABITAT mark (un)enforced in bad faith | Role of CJEU post-Brexit to be considered by House of Lords inquiry

Never Too Late 172 [Week ending 26 November] EMA relocation: and the winner is...Amsterdam! I In memoriam: Azzedine Alaïa, the King of Cling (and what it tells us about the fashion industry) I Athens Court of Appeal applies CJEU GS Media linking decision and interprets 'profit-making intention' restrictively I Damages awarded for the ‘loss of opportunity’ to commercialise photographs following infringement ILost their marbles? When can you register a geographical name as a trade mark? Mermeren v Fox ISir Robin Jacob calls for System 2 thinking for patent law I Florence court prohibits unauthorized commercial use of David's image I Thursday Thingies [Week ending 3 December] Clash of the beer pongs - Breakthrough Funding Ltd v Nearby Media Ltd I WTO establishes panel to examine Qatar’s complaint against UAE I What's next for trade marks in the UK and EU? Report on JIPLP/GRUR trade mark conference I BREAKING: CJEU rules in that the making available of copies of TV programmes saved in the cloud must be authorised by rights owner I The VCAST decision: how to turn a private copying case into a case about communication/making available to the public I France: patent infringers can be ‘named and shamed’…within reason I BGH rules on international jurisdiction of German courts in EU trade mark cases I EU Commission sets middle course for SEP licensing in Europe I Judge Hacon’s 10 (+ 1) commandments on joint authorship under UK copyright law. I UK House of Commons committee progresses final stages of UPC ratification I INTA Brand Authenticity Conference (Report 1): Building brand value via ethical and sustainable credentials; INTA Brand Authenticity Conference (Report 2): Building brand value via ethical and sustainable credentials and INTA Brand Authenticity Conference (Report 3): Building brand value via ethical and sustainable credentials I Now available!: English translation of Dutch Supreme Court decision in MSD v Teva highlights UK Supreme Court's Actavis decision I Student essays: how to write a good piece? I Around the IP Blogs!

Photo: JoshBerglund19

This Kat will be a JudgeKat and bids farewell

Last June, the Swiss parliament elected this Kat as president of the Swiss Federal Patent Court. Not sure they were aware that he is a Kat, but in any case, I will be taking up my office on 1 January 2018 and cease all blogging.

It just does not seem appropriate for a judge to criticize other judges' decisions, and uncritical blogging is boring. Additionally, I have always tried to be as brief as possible in my blogging, to the detriment of more complex issues. This may lead to the impression that this judge is incapable of more thorough analysis, although it is really due to the medium.

Ever since Jeremy first asked me to be a guest blogger back in 2009, I greatly enjoyed contributing to the IPKat. The reach of IPKat is staggering, and the  breadth and depth of its contributors astonishing. IPKat is a leading voice in the discussion of European IP issues, and I am proud to have been a little part of it. Given the number of pressing issues in European IP policy (the proposal of the EU Directive on Copyright in the Digital Single Market; UPC or no UPC... to name just two) I have no doubt that the discussion will be vigorous in the future, too (of course everybody will abide by the IPKat Comment Policy). While not actively contributing to the blog anymore, I will keep reading it, like many other European judges do.

For the time being, I wish all our readers a very Happy and Prosperous New Year!

Should anyone feel the urge to contact me, you can find me here: Mark Schweizer

Thursday, 28 December 2017

Book Review: Intellectual Property in Australia

Katfriend Jin Ooi (Senior Associate, Allen & Overy LLP) has kindly reviews the latest edition of Intellectual Property Australia:

"Intellectual Property in Australia" is now in its 6th edition (updated to August 2017), the title having been in circulation for
more than 25 years since its 1st edition. This edition is co-authored by Andrew Stewart, William van Caenegem, Judith Bannister, Adam Liberman and Charles Lawson.

This is a comprehensive and comprehensible book on the Australian IP regime, written in an engaging and accessible manner, whilst also providing an authoritative and compelling voice. The book aims to be “an invaluable resource for both undergraduate and postgraduate students, and those who teach them”, and “a practical reference for practitioners”. These aims are more than adequately met, and the book should be a vital resource for those studying and working in the field.

The book covers the usual IP rights one would expect to see - confidentiality, copyright, designs, patents, trade marks, and more. It is set out methodically in a way which follows the steps that may be taken to protect and/or exploit an idea, beginning with the protection of ideas which have not yet been put in the public domain (Chapters 3 and 4 covering the notion of confidentiality and breach of confidence), followed by the writing down and recording of the idea (Chapters 5 to 10 covering copyright, moral rights, circuit layouts, and designs), and inventive ideas (Chapters 11 to 14 dealing with the patents system, validity and infringement, and Chapter 15 with plant breeder’s rights). The book goes on to deal with the common law and statutory mechanisms for protecting a distinctive commercial reputation that may result from the successful exploitation of an idea – Chapters 16 to 18 are mainly devoted to the tort of passing off, whilst also covering the notions of misrepresentation, “unfair competition”, and misleading or deceptive conduct, and Chapters 19 and 20 cover the registration and protection/exploitation of trade marks.

Satisfyingly, the book also goes beyond these topics, devoting whole chapters to enforcement of IP rights (Chapter 2), the international dimensions of IP protection (Chapter 21), and the commercial strategies and transactions employed to exploit the various IP rights (Chapter 22). The full IP spectrum is as such covered from conception and subsistence right up to commercialisation and litigation. In the context of interlocutory injunctions in Chapter 2, the requirement of an undertaking as to damages is touched upon, but perhaps mention could also have been made of the Commonwealth Government’s unprecedented claims in the Federal Court for payment of compensation under such undertakings provided by innovator pharmaceutical companies in patent proceedings (albeit the decision in Commonwealth v Sanofi has yet to be rendered).

Updates to the previous edition include a brief discussion of new section 115A to the Copyright Act 1968 (Cth), which enables an injunction to be granted against a carriage service provider requiring it to take reasonable steps to disable access to an online location outside Australia which infringes or facilitates copyright infringement. The Roadshow Films v Telstra (2016) case is cited, but perhaps mention could also have been made of the Universal Music v TPG Internet (2017) case, in addition to the interesting, albeit cursory, discussion in both cases on which party should bear the costs of complying with the orders (a similar costs issue is due to be considered in the coming weeks by the UK Supreme Court in the Cartier v British Telecommunications case). Some of the other updates include the much-discussed High Court decision in D’Arcy v Myriad Genetics (2015) on gene patenting, and a review of the Productivity Commission’s report on Australia’s IP arrangements and the Commonwealth Government’s response.

Intellectual Property in Australia (6th ed, 2018) is published by LexisNexis – ISBN: 9780409345780.  The book can be purchased in paperback online for $150.  The title is also available in eBook format – eISBN: 9780409345797.

Tuesday, 26 December 2017

Can the Buddhist notion of Bodhi be appropriated as a trademark?


Trademarks in connection with religious and spiritual movements can pose a special set of challenges for registration and enforcement. Kat friend Jolena Ang reports on a most interesting instance that took place before the Intellectual Property Office of Singapore.

Enlightenment (“Bodhi”) is known to all Buddhists as the ultimate goal in Buddhism. “Bodhi” is loosely defined as the moment when a Buddhist finds the truth about life and stops being reborn. According to Buddhists, the Buddha, also known as Siddhartha Gautama, reached “Bodhi” while meditating under a sacred fig tree. Given the fundamental significance of the term “Bodhi” amongst Buddhists, the Singapore Registrar of Trade Marks in In the Matter of a Trade Mark Registration in the Name of Kwek Soo Chuan and an Application for Declaration of Invalidity thereof by Eley Trading Sdn Bhd [2017] SGIPOS 15 had to decide if a trade mark registration for “菩提” (transliterated as “Pu Ti”, which means “Bodhi” in Mandarin Chinese) for Buddhist incense products in Class 3 should be invalidated and free for all traders of incense products to use. The Registrar held that the invalidation should succeed.

Background

Kwek Soo Chuan (“the Proprietor”) was the registered proprietor of the trade mark “菩提” in Class 3 in relation to “incense; incense sticks, incense coils, incense cones, incense sprays. joss sticks, scented oils, and scented preparations” (“the ‘菩提’ Mark”). Eley Trading Sdn Bhd (“the Applicant”) applied for the ‘菩提’ Mark to be declared invalid on the following grounds:
(a) The ‘菩提’ Mark was devoid of any distinctive character;

(b) The ‘菩提’ Mark was descriptive of the intended purpose of the goods claimed;

(c) The ‘菩提’ Mark was applied for in bad faith; and

(d) The ‘菩提’ Mark was confusingly similar to the Applicant’s earlier mark for, which was registered for incense products.
Although the Applicant failed on grounds (b), (c) and (d) above, the Registrar found that the invalidation under (a) above was made out and that the ‘菩提’ Mark was devoid of any distinctive character.

The Applicant argued that traders in Singapore and overseas have been referring to their incense products as “菩提香” or “Bodhi Incense” and “菩提香”. These products have been available in Singapore long before the date of application of the ‘菩提’ Mark. The Applicant also submitted evidence from three other incense traders in Singapore, which included samples of “菩提香” incense products sold by other third party traders. It was not disputed by parties that the burning of incense is an integral part of Buddhism and that practicing Buddhists use incense as offerings to Enlightened Ones and/or the Buddha.

The Registrar’s Decision

In light of the common use of the term “菩提香” by incense traders in Singapore, the Registrar held that the plain words “菩提” were incapable of distinguishing the Proprietor’s goods without first educating the public that they were a trade mark. More importantly, the Registrar held that even if the words “菩提” were not commonly used among incense traders, she would nevertheless find that the term “菩提” was one which other traders might wish to use for legitimate reasons. In coming to her conclusion, she considered how the term “菩提” would be understood by the average consumers of incense products in Singapore. As the average consumers (Buddhists in Singapore) would likely understand the significance of the term “菩提” in Buddhism and the term “菩提” features frequently in Buddhist publications, the ‘菩提’ Mark should not be monopolised by the Proprietor.

Acquired Distinctiveness

Although the Applicant was successful in invalidating the ‘菩提’ Mark under (a) above, the Proprietor would have been able to retain his registration of his ‘菩提’ Mark if he could show that the ‘菩提’ Mark had in fact acquired a distinctive character as a result of his use. However, after reviewing the evidence submitted by the Proprietor, the Registrar was unable to find that the ‘菩提’ Mark had acquired distinctiveness. The Proprietor adduced the following documents in support:
(i) Use of the words “菩提” in his business name, “菩提佛教文物批发中心” (Translated to “Bodhi Buddhism Cultural Relic Wholesale Centre” in English).

(ii) Use of the sign  on his shop’s signboard, company vehicles, name cards, letterheads, invoices, calendars and product packaging.

(iii) The marking his products and advertisements with the words “菩提”, the sign  and/or the device . (Examples were provided in the judgement at pages 19 and 20, see link above.)
While it appeared that there were some attempts by the Proprietor to use his ‘菩提’ Mark per se and not in combination with other words or elements, the Registrar held that it was not entirely clear or consistent how the Proprietor wanted to use his ‘菩提’ Mark. The evidence of use of the words “菩提”, the signage  and/or the device  on the Proprietor’s products and advertisements did not indicate a clear and consistent message to consumers as to whether they were intended to indicate the origin of the goods or to be discriptive, decorative and/or inspriational. For example, the device on packaging was significantly smaller than other elements found on the packaging. In the face of other elements and marks found on the packaging, the evidence did not suggest that customers would rely on the device as a secondary trade mark for the claimed goods.

Further, most of the evidence submitted pertained to the use of his business name “菩提佛教文物批发中心” , and the use of the sign. The Registrar found that they were used to merely designate the distributor of the products and not the products themselves. Although the Proprietor stated in his oral testimony that he is referred to by his customers as “菩提”, the Registrar found that this did not necessarily mean that his customers also distinguished his goods by his ‘菩提’ Mark. This is because it is not a natural consequence that use of a company’s trade name would indicate use of the ‘菩提’ Mark on the claimed goods. As a result, no acquired distinctiveness was found.

The Registrar’s finding on acquired distinctiveness serves as an important reminder
on the need to adopt a consistent approach in the use of its marks and decorative elements in marketing materials and product packaging. Businesses should remember that whether acquired distinctiveness is found depends on the nature of the use of the mark and the effect of such use on the average consumer.

The decision is currently pending on appeal to the High Court of Singapore.

Photo at lower left licensed by David Wilmot under the Creative Commons Attribution-Share Alike 2.0 Generic (https://creativecommons.org/licenses/by-sa/2.0/deed.en) license.

Monday, 25 December 2017

Never Too Late: If you missed the IPKat Last Week!

Been away and want to catch up with the recent IP news? No problem! As always, the IPKat is here to bring you a quick summary -- the 174th edition of Never Too Late.


“With less than 10 shopping days to Christmas, it is worth taking a Kat’s eye retrospective of what may have been the first big-time modern IP merchandising campaign.” – In this holiday season, IPKat’s own Neil Wilkof shares his earliest memory of craving a holiday gift, in the mid-1950’s, when America was awash with Davy Crockett mania.


Guest Kat Eibhlin Vardy provides a quick update from the UK on the outstanding legislation that will enable the UK to ratify the UPC Agreement.


Merpel discusses the recent major development in the saga of the suspension of the member of the Boards of Appeal of the European Patent Office, which, however, still has failed to bring the affair to a conclusion.


For Kat readers with an academic bent: INTA is currently accepting submissions of original papers on trademark law or a matter that directly relates to, or affects, trademarks for its 2018 Ladas Memorial Award competition. INTA’s Ladas Memorial Award is an annual international competition that is open to both students and professionals. 


In R 0003/15 of 28 November 2017 the EPO's Enlarged Board of Appeal found the right to be heard of the patentee infringed, annulled the Technical Board's decision and sent the case back for re-hearing. Kat Mark Schweizer recaps the rather surprising interpretation, and would like to thank KatFriend Heiko Sendrowski for the news alert.


Kat Mark Schweizer discusses George Clooney and his “what else?” coffee the recent news that the German Federal Patent Court found Nestlé's German shape mark in the form of a "Nespresso" capsule invalid for coffee: the essential characteristics of the mark conformed to (the drawings of...) German patent DE 27 52 733 (with a priority of 1976) and were all essential to obtain a technical result. 


Roberto A. Jacchia and Giulia Beneduci (De Berti Jacchia Franchini Forlani in Milan) contribute a guest post, in which they share some interesting thoughts on non-traditional trade marks and the impact of recent EU trade mark reforms. 


A few days ago the Court of Justice of the European Union (CJEU) issued the much-awaited decision Coty Germany GmbH v Parfümerie Akzente GmbH, C-230/16. Want to know the essentials of the case? See the summery made by InternKat Cecilia Sbrolli.

And the weekly routines, Around the IP Blogs! and Monday Miscellany.

Photo courtesy of Qi-cheng.


PREVIOUSLY ON NEVER TOO LATE


Never Too Late 173 [Week ending Sunday 10 December] Why is it so difficult to the make the case against counterfeiting (or does it just seem so)? | The Red Bull colours: no trade mark registration for indeterminate colour combination | Limoges porcelain now protected by French GI scheme | BREAKING NEWS - CJEU holds that preserving luxury image of products in selective distribution agreements is not contrary to competition law | AIPPI Congress Report 15: Partial Designs: Full Protection? | AIPPI Congress Report 16: Patentability of Computer-Implemented Inventions | INTA Brand Authenticity Conference (Report 4): Brands, social media and CSR | Commissioned research opportunity - exhaustion of rights | BREAKING: CJEU holds that SPCs cannot be obtained on the basis of an "end of procedure notice" pursuant to Article 3(b) SPC Regulation | You snooze (for 40 years) you lose – HABITAT mark (un)enforced in bad faith | Role of CJEU post-Brexit to be considered by House of Lords inquiry

Never Too Late 172 [Week ending 26 November] EMA relocation: and the winner is...Amsterdam! I In memoriam: Azzedine Alaïa, the King of Cling (and what it tells us about the fashion industry) I Athens Court of Appeal applies CJEU GS Media linking decision and interprets 'profit-making intention' restrictively I Damages awarded for the ‘loss of opportunity’ to commercialise photographs following infringement ILost their marbles? When can you register a geographical name as a trade mark? Mermeren v Fox ISir Robin Jacob calls for System 2 thinking for patent law I Florence court prohibits unauthorized commercial use of David's image I Thursday Thingies [Week ending 3 December] Clash of the beer pongs - Breakthrough Funding Ltd v Nearby Media Ltd I WTO establishes panel to examine Qatar’s complaint against UAE I What's next for trade marks in the UK and EU? Report on JIPLP/GRUR trade mark conference I BREAKING: CJEU rules in that the making available of copies of TV programmes saved in the cloud must be authorised by rights owner I The VCAST decision: how to turn a private copying case into a case about communication/making available to the public I France: patent infringers can be ‘named and shamed’…within reason I BGH rules on international jurisdiction of German courts in EU trade mark cases I EU Commission sets middle course for SEP licensing in Europe I Judge Hacon’s 10 (+ 1) commandments on joint authorship under UK copyright law. I UK House of Commons committee progresses final stages of UPC ratification I INTA Brand Authenticity Conference (Report 1): Building brand value via ethical and sustainable credentials; INTA Brand Authenticity Conference (Report 2): Building brand value via ethical and sustainable credentials and INTA Brand Authenticity Conference (Report 3): Building brand value via ethical and sustainable credentials I Now available!: English translation of Dutch Supreme Court decision in MSD v Teva highlights UK Supreme Court's Actavis decision I Student essays: how to write a good piece? I Around the IP Blogs!

Never Too Late 171 [week ending Sunday 12 November] Düsseldorf Court of Appeal in SISVEL v Haier publishes "guidebook" to SEP litigation under Huawei/ZTE | Swiss Supreme Court weighs in on K = Na | Beware the special requirements of software protection in Brazil | The protection of vehicles using trade marks and registered designs - London Taxis vs Scooters | Who is going to win the big EU Commission SEP licensing battle - "use-based" or "licence to all"? | Is TRIPS preventing vulnerable countries from accessing basic drugs? The case of South Africa | The New Intellectual Property of Health | Research Handbook on Intellectual Property in Media and Entertainment | When the cutting edge technology passes you over: The "winner takes it all" (and it ain't your home town) | Can a film be released without mention of the name of its director? | Saturday Sundries | [week ending Sunday 19 November] Birss J in Accord v Research Corporation Technologies attempts to cut the red tape on the right to claim priority | Looking for answers on ANSERA | Speech from European Judges Forum: But Sir Robin, let's be frank, we will put (just to be short), in Milan the Central Court... | Special interview with Patricia Kelly, Director General of IP Australia | "Intellectual Property Arrangements: Productivity Commission Inquiry Report" | "Australian Government Response to the Productivity Commission Inquiry into Intellectual Property Arrangements" | When public domain works meet trade mark law: Norwegian Industrial Property Office applies EFTA Court’s judgment and dismisses applications to register Vigeland’s artworks as trademarks | Event report: The private copying exception and the compensation of harm in a dematerialised environment | How far away is global trade secrets protection? US industry's call to action as EUIPO analyzes baseline data | IPIB: How competitive is your IP service firm? | Erasing Kevin Spacey: performers' rights to the rescue? | Around the IP Blogs! | Sunday Surprises

Sunday, 24 December 2017

CJEU rules that ice cream sold as ‘Champagner Sorbet’ can be branded as ‘Champagne’

Aldi Süd's Champagner Sorbet
In a judgment released earlier this week (Comité Interprofessionnel du Vin de Champagne v Aldi Süd Dienstleistungs-GmbH & Co.OHG, C-393/16) the Court of Justice of the European Union (CJEU) reviewed relevant EU legislation on protected designations of origin (PDOs) in deciding a case concerning a sorbet branded and sold as ’Champagner Sorbet’.

Katfriend Nedim Malovic (Sandart & Partners) reports.

Here’s what Nedim writes:

“Following the sale of “Champagner Sorbet” in 2012, the Comité Inteprofessionnel du Vin de Champagne (CIVC) brought proceedings against Aldi Süd, seeking an injunction from the Regional Court of Munich I that would prohibit further sale of the product under that name, despite it containing 12% champagne. According to the CIVC, Aldi Süd would infringe the PDO ‘Champagne’.

The court granted the injunction, but this was reversed on appeal. The CIVC thus brought an appeal before the German Federal Court of Justice (BGH), which stayed the proceedings and made a reference to the CJEU.

In particular, the BGH asked the CJEU whether Article 118m(2)(a)(ii) of Regulation 1234/2007 (Single CMO Regulation) and Article 103(2)(a)(ii) of Regulation 1308/2013 also apply in a case, like the one at issue, in which a PDO is used as part of the name of a foodstuff which does not correspond to the product specifications but to which an ingredient has been added which does correspond to the product specifications. The German court also wished to know whether and in what sense use of a name such as ‘Champagner Sorbet’ would constitute undue exploitation of the reputation of the PDO ‘Champagne’.

The AG Opinion

Advocate General (AG) Sanchez-Bordona issued his Opinion (not available in English) in July 2017. He reasoned that said provisions are applicable in a case like the one at issue and the referring court should assess whether there is a legitimate interest in justifying the commercial use of the PDO ‘Champagne’. The test is whether the average consumer, who is reasonably well informed and reasonably observant and circumspect, would be led to believe that a connection exists between the ingredient protected by the PDO, the packaging and labelling, and the PDO ‘Champagne’.

Champagne
The CJEU judgment

The CJEU substantially followed the AG Opinion, stating that if it tastes like champagne – it is champagne.

1. Scope of the provisions in light of the added champagne ingredient

The CJEU stated that the scope of the two provisions in each Regulation is to be understood broadly. Those provisions are encompass any direct or indirect commercial use of a PDO and protect the PDO-holder against the taking of an undue advantage over its reputation. This is in line with the objective stated in Recital 97 in the preamble to Regulation 1234/2007, ie to protect PDOs and Protected Geographical Indications (PGIs) against any against any use intended to take advantage of the reputation enjoyed by products which comply with the relevant specifications.

Furthermore, the CJEU in Bureau national interprofessionnel du Cognac  C‑4/10 and C‑27/10 (at para 55) had reasoned that use of a mark containing a PGI, or a term corresponding to that indication, constitutes a direct commercial use of that geographical indication.
  
2. Exploitation of the PDO’s reputation

EUIPO v Instituto dos Vinhos do Douro e do Porto, C‑56/16 P, and Bureau national interprofessionnel du Cognac, C‑4/10 and C‑27/10 provide guidance in situations which give rise to exploitation of the reputation regarding a protected designation of origin. The CJEU held that exploitation of the reputation of a PDO, within the meaning of Article 118m(2)(a)(ii) of Regulation 1234/2007 and Article 103(2)(a)(ii) of Regulation 1308/2013, entails, inter alia, use that seeks to take undue advantage of the reputation enjoyed by a PDO.

The use of the name ‘Champagner Sorbet’ conveys an image of luxury and prestige, and therefore may take advantage of the reputation of the PDO ‘Champagne’. Accordingly, the CJEU found it necessary to examine whether such use amounts to taking unfair advantage of the reputation of the PDO.

The CJEU considered whether undue advantage arises when products protected as PDOs are contained as ingredients in or with other products. In doing so, the CJEU sought direction in the Guidelines to the Regulation on quality schemes for agricultural products and foodstuffs (No 11517/2012)). 

Section 2.1.2 in the Guidelines sets out three conditions for determining whether a name registered as a PDO may be mentioned in the trade name of a foodstuff incorporating products benefiting from that PDO:        

-       The foodstuff in question should not contain any other comparable ingredient;
-       This ingredient should also be used in sufficient quantities to confer an essential characteristic on the foodstuff concerned;
-       The percentage of incorporation should be indicated in close proximity to the trade name

In light of the above considerations, Article 118m(2)(a)(ii) of Regulation 1234/2007 and Article 103(2)(a)(ii) of Regulation 1308/2013 should be interpreted as meaning that the use of “Champagne”, as part of and sold as “Champagner Sorbet”, constitutes exploitation of the reputation of a PDO.

Turning to whether the quantity of ingredient in question which confers on the foodstuff concerned one of its essential characteristics matters, the Court held that this is significant but not sufficient. It is necessary to undertake a qualitative assessment. As the AG also noted, it is not a question of identifying in the foodstuff the essential characteristics of the ingredient protected by a PDO but of establishing that that foodstuff has an essential characteristic connected with that ingredient. That characteristic will often be the aroma or taste imparted by that ingredient.

Keen for a toast
3. Whether use of “champagne” constitutes misuse, imitation or evocation

The CJEU answered this in the negative, holding that by incorporating “Champagne” into “Champagner Sorbet”, direct use is made of the PDO to claim openly a “gustatory quality” connected with it. This does not amount to misuse, imitation or evocation.

4. Applicability of false or misleading indications that may convey a false impression to the geographical origin of the product

According to the CJEU is possible under the above-mentioned provisions to prohibit both false and/or misleading indications regarding the PDO. This possibility relies, in particular, on the crucial element of taste.

If the foodstuff at issue in the present case did not have – as an essential characteristic – a taste attributable primarily to the presence of champagne in its composition – it would be possible to conclude that the foodstuff constituted a false or misleading indication within the meaning of Article 118m(2)(c) of Regulation1234/2007 and 1308/2013.

Conclusion

The judgment essentially bubbles down to the conclusion that the taste – connected with the ingredient in question – characterizes the exploitation of the reputation.  The AG was reasonable in suggesting this solution, primarily because it would be very difficult to leave out the element of taste in an attempt to portray an edible product’s essential characteristic.

In relation PDO’s, the CJEU confirms that these are given a relatively wide scope of protection. A PDO is in fact protected against false and/or misleading indications that are able to create a false impression regarding the origin of the product in question.  Furthermore, the implication of the “taste-element” supports the conclusion that a PDO is now also protected against false and/or misleading indications relating to the nature or essential qualities of the product.”

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