english law

Today we turn our attention not to a particular country, but to an economic region — the European Union.

While we are looking ahead and planning what to do in New Year 2017 there are some mile stone cases taken in 2016 in the EU which might influence our decisions this year and in the future.

Beware which link you share on your own domain name and online

Court of Justice of the European Union (CJEU) has decided that linking to copyright-infringing services can infringe copyrights. That’s a good news for right holders who are frustrated at the existence of sites that provides lists of links to pirated music and films but that do not host such material themselves. However, it is a bad news for such giants as Google or other browser providers as well some accidental parties who can be found infringing somebody’s copyright only because they are having such links shown in their search results or hosting websites.

Moreover, the ruling marks a rare occasion on which the court went against of its advocate general as in his opinion the everyday functioning of the Internet would be at risk—an average person can’t be expected to check whether the stuff they’re linking to was legally published or not.

Hence, due to this ruling anyone posting links online should be cautious regarding its source and hopefully within the coming year we will get much clearer picture how this ruling affects us – regular Internet users sharing various links with our family, friends and colleagues.

Rubik’s cube lost their trademark – what does it mean?

After ten years of legal battle we have received a ruling in the EU in relation to the world’s bestselling toy of all time for more that 40 years – Rubik’s cube. They lost the key trademark which was allowing them protection of the 3D shape of this toy as long as they would wish (in other words as long as they would produce it and renew the registered trademark).

Why has this happened? CJEU came to the conclusion that its shape was not sufficient to grant it protection as a trademark in first place as its shape was due to functionality or a technical solution implicit in the trademark rather than serving as a trademark. Hence, it invalidated the 3D trademark registered back in 1999.

What will happen next? Well, as the shape of the toy is no longer protected by any IP law it is possible that there will be soon many competitors producing cheaper imitations of the Rubik’s cube, including the party which brought this case back in 2006 and was able to successfully argue that 3D shape of this toy does not deserve protection as a trademark.

This judgment underlines also one more important hint – trademark registrations should not be used to achieve an eternal monopoly on technical solutions or functional characteristics of products. There might be other rights more suitable such as under patent or design law which having a limited life – unlike trademarks – will protect them only for a particular time and then can be used by anyone. Hence, this will impact not only toy and game industry but also others who will need to re-consider whether their products can be registered as 3D marks like in case of KitKat bar which was also found illegible for 3D trademark protection early in 2016.

Adidas takes it all

In another trademark case, CJEU (the highest court in the EU) has, decided that a later filed EU trademark

application was confusingly similar to the earlier registered mark in the EU.

This also wasn’t an easy battle and it took 6 years to be finally decide whether a trademark application consisting of graphical elements of 2 stripes filed in connection with shoes was confusingly similar to existing registration for a graphical mark consisting of 3 stripes as shown above (and belonging to Adidas).

Adidas claimed that the two-stripe mark was confusingly similar to their existing three-stripe registration and would take unfair advantage of, or be detrimental to, the repute of such marks. Initially, the EUIPO Opposition Division and their Board of Appeal did not agree with Adidas and rejected the opposition finding that Adidas could only enjoy protection against identical or highly similar reproductions of their three-stripe mark.

Hence, Adidas appealed to the General Court, which, in a judgment of May 2015, agreed with Adidas and annulled the Board’s decision. Nevertheless, the other party appealed to the ECJ on various grounds, which in the decision of the ECJ dated 17 February 2016 upholds the General Court’s judgment and Adidas has won their battle after several years and preventing other party from registering their mark.

This final court decision and overall battle not only shows that there might be different rulings given by different bodies by the time the matter gets to the highest court. It does not only show that – in compare to the earlier mentioned case – that registered trademark can be a very powerful tool and moreover – the winner takes it all so it is important to fight for own rights and use registered trademarks in order to enforce own rights.

The decision shows also that anyone’s mark if used extensively can become widely recognized and this recognition can straighten its protection against other marks which at first sight are not that similar. Adidas was able to win this case as they have shown reputation of their three-stripe mark within the EU and this recognition on the EU market within average customers was the key to win it despite the mark representation was claimed to be ‘banal, generic embellishments’ by the courts.

Moreover, it needs to be also remembered – that if Adidas has not initiated this procedure by filing a formal opposition the later mark would be registered in the EU as EUIPO does not reject fresh EU trademark applications based on relative grounds and it is up to owners of live marks within the EUIPO to protect their own rights and take legal steps whenever there is a new similar application filed within the EUIPO. Only then EUIPO will compare such rights and decide whether the later one can be registered or not.

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Katarzyna Eliza Binder-Sony is a Polish intellectual property and commercial solicitor based in London, specializing in European Union trademark and design protection. Besides developing and protecting her clients’ brands and ideas, Eliza also provides consultancy services in both commercial and corporate law. Eliza received her LL.B from the University of Law, London (Hons) and has a Masters in Law from the University of Cardinal Stefan Wyszynski, Warsaw, Poland (Hons). She loves coffee, particularly Spanish café bombón (and generally everything Spanish – food, people, sound of language, country, beaches, islands, and literature).

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KATARZYNA ELIZA BINDER-SONY, is a Polish intellectual property and commercial solicitor based in London, specializing in European Union trademark and design protection. Besides developing and protecting her clients’ brands and ideas, Eliza also provides consultancy services in both commercial and corporate law. Eliza received her LL.B from the University of Law, London (Hons) and has a Masters in Law from the University of Cardinal Stefan Wyszynski, Warsaw, Poland (Hons). She loves coffee, particularly Spanish café bombón (and generally everything Spanish - food, people, sound of language, country, beaches, islands, and literature).