EU court rulings from last week and why they matter
Last week, WIPR reported on several important senior court rulings, including one case involving shoe manufacturer Crocs and another concerning a ‘Mafia’ trademark. Below we outline why they are important for lawyers.
Taking design protection seriously
Shoe manufacturer Crocs was mistaken in its belief that EU manufacturers couldn’t have access to its US Community design, according to Ben Evans, senior associate and chartered trademark lawyer at Blake Morgan.
The news comes after the EU General Court confirmed the cancellation of a registration of Crocs’ Community design because it was made available to the public before its registration.
While the application to register the design took priority from a US application in 2004, Evans said that it’s clear the design was in the public domain in 2002. This does not comply with EU rules stating that a design has to be new and not made public more than 12 months before a filing.
“And while the design was available in the US and not the EU in 2002, it’s a mistake to believe EU manufacturers couldn’t have accessed the design at that point—especially because the design was online,” explained Evans.
The question is, according to Evans, whether the disclosure had or could have been known in the EU within the concerned relevant sector. Anything other than a very obscure disclosure is likely to cause problems, particularly if it is made online, he added.
“What this ruling does show is that designers and manufactures must take design protection seriously—and do so early on,” advised Evans. “It’s not always easy to know whether you’ve got a future best-selling shoe brand on your hands, but filing for a registration needn’t be complex, costly or time consuming; and it makes good business sense too.”
No comprise of values
An EU General Court decision not to allow a trademark featuring the words ‘La Mafia’ could have a wider impact on the commercial and marketing decisions of companies operating in the EU.
The General Court ruled that the trademark, which had been applied for by a Spanish restaurant chain, was invalid as it “trivialises the serious harm” done by the criminal organisation to the “fundamental values of the EU”.
“This case might have an impact on the future commercial and marketing choices of companies operating in the EU. The companies might give up investing in brands that are likely to be considered contrary to public order and public morality and which might not to be protected,” said Sara Balice, lawyer at DLA Piper.
Julia Holden, partner at Trevisan & Cuonzo, added that even though the applied-for trademark was intended as a parody, it was “extremely distasteful”.
“The combined words ‘La Mafia’ (the dominant element) with ‘take a seat’ carry strong negative emotive values and its use for restaurants would trivialise the wrong doing of the mafia, turning it into a globally positive image,” she said. “This can’t be acceptable and is likely to cause offence both to Italian and to European values.”
Holden added that words like ‘La Mafia’, ‘ISIS’ or ‘Nazi’ create such strong negative sentiments that it is important they are not used in a light context for the likes of clothing or food as it “dilutes” and “devalues” the significant emotions they arouse.
“Even if the intention of the applicant is merely to create a ‘parody’, this may not be the long-term outcome and it is the role of the courts to ensure that accepted moral values and public policy values in our society are not compromised,” Holden concluded.
Subjective similarity in figurative marks
A recent decision involving a prominent timeshare company shows how “subjective” the assessment of visual and conceptual differences can be, according to Leighton Cassidy, partner in Fieldfisher’s London office.
On Thursday, March 15, the EU General Court annulled the European Union Intellectual Property Office’s (EUIPO) rejection of Marriott Worldwide Corporation’s application to invalidate a trademark.
Cassidy said he was initially “a little surprised to read that the General Court had come to such a different conclusion from the Board of Appeal and the EUIPO’s Cancellation Division”.
Marriott’s main ground of appeal had centred on the EUIPO’s assessment of the visual and conceptual differences between its figurative mark, a silhouette of a griffin, and the applied-for figurative mark, a silhouette of a made-up creature.
Rebecca Anderson-Smith, attorney at Mewburn Ellis, said that while the Board of Appeal had “concluded that the marks are dissimilar, there appeared to be some clear similarities, particularly visually”.
Both marks were registered for use in relation to hotel services and Marriott sought the invalidation of the trademark on the grounds of a likelihood of confusion.
The EU General Court found that the board had “erred in the assessment of the visual and conceptual similarities between the signs at issue” and “wrongly found that those signs are different”. It annulled the board’s rejection of Marriott’s invalidity application.
According to Cassidy, the decision “exposes the difficulty in assessing” the similarities between figurative marks where there is no word element.
He agreed with the court’s annulment of the EUIPO’s finding that there was no conceptual similarity between the griffin and the other made-up animal, as “both represent imaginary creatures merging the characteristics of several animals”.
The appeal board said the signs show "completely different figures characterised by very different features", but the court said the similarities “cannot be regarded as negligible”.
Anderson-Smith commented that it’s difficult to see how the similarities could be “perceived as negligible in the overall impression created by the marks”.
Overall the decision is demonstrative of how subjective the assessment of differences can be in relation to figurative trademarks, Cassidy explained, adding that owners of such marks should bear that in mind when approaching disputes.
Anderson-Smith added that the case is “far from over”. She explained that the appeal board must again consider whether there is a likelihood of confusion and that it may well conclude that “the marks are similar to a certain extent, but that it is not enough to cause confusion”.
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