Intellectual Property Matters – July 2014
Print newsletter01/07/2014

Bad faith registrations
In a case before the General Court [1] Simca Europe Ltd had obtained registration of […]
In a case before the General Court [1] Simca Europe Ltd had obtained registration of the work mark SIMCA as a Community Trade Mark for goods in Class 12.
Peugeot Citroen brought a cancellation action on the basis of Article 51(1)(b) of the Community Trade Mark Regulation [2]. Article 51(1)(b) provides that a Community Trade Mark shall be declared invalid where the applicant was acting in bad faith when he filed the application for the trade mark.
In essence, Peugeot alleged that the application for registration had been made in bad faith with the sole objective of preventing Peugeot from marketing vehicles under the SIMCA name.
Peugeot relied on the fact that it was the holder of an international registration for the mark SIMCA, which designated a a number of EU Member States (in some cases as far back as 1959). Peugeot maintained that the mark had been registered purely for the purpose of extortion or “blackmail” so that Peugeot would be compelled to pay compensation for the cancellation of the mark; it was a “speculative” mark or a “blocking” mark.
The Board of Appeal upheld the cancellation action, finding that Peugeot had prior rights and that, although it had stopped manufacturing vehicles under the SIMCA name in the 1970s, the brand nonetheless enjoyed a reputation in relation to motor vehicles and that the sole purpose of the registration application was to “free-ride on the reputation of [Peugeot’s] registered marks and to take advantage of the good reputation of those marks through the deliberate unlawful use of the sign SIMCA”. Simca appealed.
The General Court had no difficulty in dismissing the appeal. In cases such as this, which concerned registrations arguably made in bad faith, the question of bad faith had to be determined by means of an overall assessment of the relevant factors, including the fact that the applicant knew or should have known that a third party had been using, in at least one Member State, an identical or similar sign for identical or similar products liable to be confused with the sign in respect of which registration was sought. Further, the intention of preventing a product from being marketed might, in certain circumstances, be indicative of bad faith on the part of the applicant. Here, as the applicant had previously worked as an independent contractor for Peugeot, he was found to be aware of the brands’ reputation in relation to Peugeots’ previous usage.
The General Court considered that the Board of Appeal had been entitled to find that the real purpose of the application for registration had been to “free-ride” on Peugeot’s reputation and to take advantage of that reputation.
Though not new law, the case is a helpful summary of relevant considerations that a court will take into account when determining a cancellation action on the basis of Article 51(1)(b) of the Community Trade Mark Regulation
____________________
[1] Case T-327/12
[2] Regulation No 40/94 (now Regulation No 207/2009)

Can you combine a third party’s existing trade mark with another distinctive mark?
In BIMBO SA v OHIM [1], BIMBO SA applied to register BIMBO DOUGHNUTS as a […]
In BIMBO SA v OHIM [1], BIMBO SA applied to register BIMBO DOUGHNUTS as a Community Trade Mark in respect of “pastry and bakery products, specifically doughnuts”. That application was opposed by Panrico SA on the basis of prior registrations, in particular the mark DOGHNUTS, which was registered in Spain in respect of “pastry products and preparations…round-shaped dough biscuits”.
The General Court upheld the opposition from the OHIM’s Board of Appeal. In its decision, the General Court referred to the leading, somewhat controversial case of Medion [2], which established that “where goods or services are identical, there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein”.
The General Court considered that DOUGHNUTS had an independent distinctive role in Bimbo’s mark.
Before the CJEU, Bimbo argued that the General Court decision contradicted established case law which was to the effect that the average consumer usually perceived a trade mark as a whole and only in exceptional cases was it possible for a component of a composite mark to retain an independent distinctive role.
The CJEU declined the opportunity to revisit Medion, despite a recommendation from the Advocate General that it do so. It was happy that the General Court had carried out the necessary global assessment in determining whether there was a likelihood of confusion and its decision was not based solely on the fact that the term “doughnut” had an independent distinctive role within the Bimbo mark. Rather, the CJEU confirmed that, following Medion, where an earlier mark is used by a third party as part of a composite sign that includes the company name of the third party, that earlier mark might retain an independent distinctive role, provided that it does not form a unit with the other elements of the composite sign having a different meaning from those components taken separately, and even if the other elements of the sign are the dominant ones.
Bimbo is not the first company to attempt – and fail – to register a mark containing DOUGHNUTS as a Community Trade Mark. The CJEU decision is likely to disappoint a number of brand owners who feel that the Medion case is operating as an unreasonable restriction to registrations.
____________________
[1] Case C – 591/12 P
[2] Case C‑120/04 Medion [2005] ECR I‑8551

Copycat packaging and protected designations of origin
The discount grocer, Aldi, has been in the news in the last month with two […]
The discount grocer, Aldi, has been in the news in the last month with two unrelated cases concerning different intellectual property rights.
Copycat packaging
The first concerned copycat packaging, an issue currently very much to the fore for retailers. The Saucy Fish Co, owned by Icelandic Seachill, has instituted trade mark and passing off proceedings against Aldi. In essence, the Saucy Fish Co is arguing that Aldi has infringed its intellectual property rights by packaging some of its own-brand fish and sauce products in packs which closely resemble the Saucy Fish Co’s own packaging.
It is reported that Aldi has agreed to an interim injunction requiring it to remove the packaging in question from its shelves, pending the court’s final determination of the case.
Whilst the issue of copycat packaging is a major concern for brand owners, the issue is particularly interesting in the context of discounters who may stock a look-alike product without also stocking the branded product. In this case, apparently Aldi did not stock the original Saucy Fish products. The brand owner may not therefore face the dilemma of whether or not to sue their own customer, presumably rendering the possibility of proceedings being instituted more likely as generally, it is rare for disputes about look alike products to reach the courts. If the case does proceed to trial an interesting question will be whether or not the public are actually confused – or do they realise exactly what Aldi is purported to be doing, namely stocking a product that looks like – but is not – the branded product.
Protected designation of origin
The second dispute involving Aldi was a German case. The Regional Court of Munich has ruled that Aldi’s champagne sorbet may no longer be called “Champagner Sorbet”. The action was brought by the Comité Interprofessionel du Vin de Champagne, which was apparently concerned about the damage being done to the reputation of its champagne. It also relied on the fact that “champagne” is a protected designation of origin which Aldi was exploiting (see our earlier article on Protected Food Name status).
Aldi’s product reportedly contains 12 per cent champagne. The remainder is made up of water and sugar.
The Court ruled that by calling the product “Champagner Sorbet” and labelling it with a photograph showing a champagne bottle, Aldi had exploited the reputation of champagne.
As an alternative epithet, the Court proposed “Schaumwein-Sorbet”, in English, “Sparkling Wine Sorbet”, which one would imagine might take a bit of selling to Aldi’s marketing team.

Parody as an exception to copyright infringement
The case upon which the Advocate General delivered his opinion [1] concerns Johan Deckmyn of […]
The case upon which the Advocate General delivered his opinion [1] concerns Johan Deckmyn of the right-wing Vlaams Belang political party. Deckmyn distributed a calendar including an image adapted from a comic book entitled “De Wilde Weldoener”. In Deckmyn’s version, the mayor of Ghent is shown showering coins on immigrants. The rights holders in the original work instituted copyright proceedings in the Belgian court. Before the Brussels Court of Appeal, Deckmyn argued that the image should fall within the Belgian exception for parody, caricature and pastiche. The Belgian law reflects Article 5(3)(k) of the Information Society Directive [2], which allows Member States to introduce an exception to the reproduction right and the right of communication to the public for the purpose of caricature, parody or pastiche.
The Court of Appeal referred a number of questions to the Court of Justice of the European Union:
- Is the concept of parody an independent concept in EU law?
- If so, must a parody satisfy the following conditions or conform to the following characteristics: (i) originality; (ii) such that the parody cannot reasonably be ascribed to the author of the original work; (iii) be designed to provoke humour or to mock, regardless of whether any criticism thereby expressed applies to the original work or to someone else; (iv) mention the parodied work?
- Must a work satisfy any other conditions or conform to other characteristics in order to be capable of being labelled as a parody?
The Advocate General considered that:
- parody should be considered as an autonomous concept in EU law. (The Advocate General did not distinguish parody, pastiche and caricature for these purposes)
- a parody must be both a copy and a creation. It is for the national courts to determine whether a modification is sufficient so that it would not be confused with the original and would, itself, be considered “original”
- the subject of the parody does not have to be the original work
- the parody must be humorous. Again, it is for the national courts to determine whether it is humorous (a more subjective assessment is hard to imagine!)
- the courts must have regard to the potential conflict between freedom of expression and anon-discrimination based on cultural, religious and linguistic diversity. Parodies which are “contrary to the deepest, fundamental values of a certain society” should be prohibited.
It bears emphasising that an Advocate General’s opinion does not bind the Court of Justice. It is effectively a recommendation and, as such, it is not unknown for the Court to depart from an Advocate General’s reasoning.
If followed by the Court, however, the parody exception will leave considerable leeway with the national courts.
At present, the UK does not have a parody exception. Proposed regulations governing new copyright exceptions for parody (and also private copying) have recently been delayed, with October 2014 the earliest possible date for their implementation and 2015 arguably more likely.
[1] Case C-201/13
[2] 2001/29/EC

The Lush v Amazon dispute, continued
In our April newsletter, we reported that Lush had succeeded in its action against Amazon, […]
In our April newsletter, we reported that Lush had succeeded in its action against Amazon, preventing the latter from using its trade mark to promote rival goods for sale on Amazon’s website and via Google. The High Court ruled that Amazon had infringed Lush’s trade mark by suggesting to users of its internal search engine, and in sponsored search results, that Lush goods were offered for sale on its site when they weren’t.
Following the ruling the two companies attempted – and failed – to reach an agreement as to the form of the court order. Accordingly, the form of the order was referred back to the High Court for a ruling. Before the High Court, Lush sought a general form of injunction against infringement while Amazon argued that the scope of the injunctive relief owed to Lush should be limited to certain uses of the Lush mark. In particular, Amazon argued that it was “technically difficult” for Amazon to avoid infringing Lush’s rights because of the way it designed its software. For instance, Amazon maintained that it did not quite know how to prevent its web page from reproducing the word Lush above the offering of a range of products competitive to Lush products. The Court was not persuaded that Amazon lacked the technical know-how to comply with a general form of injunction and, accordingly, that was what the court ordered.
Regarding the territorial scope of the injunction, Amazon argued that this should be confined to the UK. The court held that as the infringement related to a Community trade mark, the injunction should be EU-wide.
The court also ordered Amazon to publish a notice on its website, by way of a link to the judgment, for one month. This was in relation to all pages which returned a response in return to the search term “Lush”. However, the court did acknowledge that the case had attracted considerable publicity so did not require Amazon to publish anything in the national press. It also agreed to a stay regarding the publicity order, pending any appeal to the Court of Appeal.