IP GAZET

01    Why Lotus is a sports car, toilet paper and a cookie at the same time?

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A person drives to the supermarket in his Lotus sports car to buy a pack of Lotus toilet paper and quickly throws a pack of Lotus biscuits into the cart on the way to the checkout, and then returns home with his Lotus sports car after paying. to drive. It is clear that 'Lotus' has several faces, but why is this and why are the different trademark holders not attacking each other? We explain it in this article.

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The reason why these apparently identical marks can coexist is because trademark law is subject to the specialty rule. This principle means that a registered trademark only provides protection for the goods and services for which the trademark is registered and used. You should always include this list of goods and services (also known as the 'classification') with your trademark application, and this list will define the scope of protection of your trademark.

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Because sports cars, toilet paper and biscuits have nothing to do with each other, the companies behind these three Lotus brands do not infringe on each other in any way. The average consumer will not be confused about the origin of these goods. We all know that Lotus Bakeries does not make sports cars and that Lotus Cars Ltd. does not produce cookies.

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This is an important difference between trademark law and, for example, copyright or patent law. With those intellectual rights, it doesn't matter in what context or sector you use a copyrighted work or a patented invention to be considered an infringing use. 

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So if you are considering registering a certain mark as a trademark yourself and you see a list of similar existing marks in the trademark register, always first check under which classes they are registered and for which goods and/or services they are actually used.

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We must make one nuance to the foregoing: if you file a trademark application that is similar to a well-known trademark, and if the circumstances show that you clearly want to 'free ride' the well-known trademark, or that your trademark could damage, you can still commit a trademark infringement. In those cases, it does not matter whether you are submitting the trademark for completely different goods or services.

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To know whether or not your word or logo can infringe an existing trademark, a thorough investigation of the trademark register is necessary. mr. As a law firm, Franklin specializes in conducting novelty searches and can assist you with advice and action.

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02    Shape mark of iconicMoon Boatdeleted from trademark register

 

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After years of litigation, the General Court of the EU has ruled that the shape mark of the known Moon Boot has insufficient distinctive character and should therefore not be eligible as a mark for footwear. The ruling confirms a number of important principles related to shape marks.

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Context 

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The Moon Boat is unknown to few. The model was commercialized after the moon landing in 1969, and since then the iconic boot has been sold more than 20 million times. In 2011 Tecnica Group, the company behind the Moon Boot, registered the shape of the boot as an EU trademark. 

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The Swiss company Zeitneu filed an invalidity claim with the European Intellectual Property Office (EUIPO) in 2017. Zeitneu won both at first instance and before the appeals chamber and the trademark was declared invalid for all goods related to footwear. Tecnica eventually went to the EU General Court to challenge the decision, but was ultimately unsuccessful.

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Decision of the General Court

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In its decision, the General Court refers to a number of established basic principles that apply to shape marks, which are in essence not traditional marks such as a figurative mark or a word mark. 

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First and foremost, the Court points out that the degree of distinctiveness required to obtain (or maintain) trademark protection is, in principle, the same for all types of trademarks. In other words: no more distinctive character may be required for a shape mark than for a word or figurative mark. As a reminder, 'distinctiveness' means that the average consumer perceives the mark as originating from a particular company and that the consumer can therefore distinguish the branded product or service from those of other companies. Once this distinctiveness is present, the sign is sufficient to be protected as a trademark, regardless of the type of trademark.

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However, the Court also states that the perception of the average consumer can differ depending on the type of brand. The average consumer will not necessarily perceive the shape of a product itself as quickly as a brand, say a logo or a word affixed to a product.

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Before a shape mark consisting of the representation of the actual product can be legally acceptable, this shape must deviate 'significantly from the norm' in the sector.

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When the General Court then applies those principles to this case, it comes to the same conclusion as EUIPO, namely that the shape mark corresponds to the generic shape of a ski boot and therefore does not deviate significantly from the standard.

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Familiar does not necessarily mean distinctive

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It is important to remember from this judgment that a high brand awareness and even the fact that the shape of the Moon Boot enjoys copyright protection (which was even decided by the Italian court in 2021), does not mean that a trademark automatically has distinctive character. Certainly with regard to 3D shapes, the conclusion remains that it is still not self-evident to protect this as a trademark. It is therefore important for your IP portfolio not only to rely on a shape trademark, but also on traditional trademarks (such as a word mark and figurative mark), design law and copyright. If you actually envision a product shape that clearly deviates from the norm, make sure that competitors do not copy you to avoid that your shape eventually becomes the norm.

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03     Private copy exception also applies to cloud storage 

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In its judgment of 22 March 2022, the Court of Justice ruled that the copyright exception of the private copy also applies when the end user stores a copyright-protected work for private use on a cloud environment. In that case, a fair compensation will be due. This must ultimately be borne by the end user who makes the private copy, but the Court sees no objection to it being collected from the cloud services themselves because they can pass on this levy to their end users. 

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Context

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The cause of this case is a discussion between Austro-Mechano, a copyright collective management company, and Strato AG, a provider of cloud storage services. 

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More specifically, the dispute concerns whether or not fair compensation is due when a customer makes a private copy of a copyrighted work and stores it on the cloud of a third-party provider (being Strato AG in this case). Indeed, making a private copy is an exception to the exclusive property rights of the author, but fair compensation must be paid in return, which reaches the author through the collecting society. However, Austro-Mechano, which collects these fair fees, presents the bill to Strato AG itself because the identities of the cloud users making the private copies are difficult to trace.

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Since Strato AG contests both positions, it is taking Austro-Mechano before an Austrian court. In a degree of appeal, the Oberlandesgericht has referred a number of questions to the Court of Justice for a preliminary ruling, namely whether the storage of content on a cloud environment falls within the private copying exception (and therefore fair compensation is due), and if so, whether it in that case whether or not it is obligatory to have this compensation paid by the cloud services.

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Decision of the Court of Justice

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In its judgment, the Court of Justice first answers the first question in the affirmative. 

She emphasizes that the exceptions to copyright must be technologically neutral so that they can withstand new technologies. In that sense, cloud computing is a good example of such a recent development. 

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The Court returns to the legal regulation, which states that reproduction for private use is a “reproduction”, “on any medium whatsoever”.

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A "reproduction" refers to the reproduction of a work and, according to the Court, also includes the uploading of a work in the cloud. After all, a copy of the work is actually being made, which perfectly falls under the concept of "reproduction". 

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The expression “any medium” refers to all mediums on which a protected work can be reproduced. Cloud servers are also included here, and it does not matter that the server is not owned by the end user, but by a cloud storage service. 

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In this sense, it is clear to the Court that uploading a work to the cloud constitutes a private copy and that fair compensation can therefore be levied.

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The remaining preliminary question is therefore whether or not cloud service providers should be obliged to pay this fair compensation. The Court takes a practical stance here: on the one hand, it points out that it is still the end user who makes the private copy and therefore owes compensation, but on the other hand, the Court also realizes that it is not always easy to identify these end users. In that case, it is justified to collect the compensation from the cloud storage service, because the Court also knows that the cloud service will pass on these charges to its end users so that the right persons will eventually bear the fair compensation.

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With this ruling, the Court of Justice continues to consistently interpret copyright in a flexible and technologically neutral way, which is certainly to be welcomed.

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