gavel_istock-615076890_marianvejcik-1-3-1
22 January 2018Copyright

Swedish court seeks CJEU clarification on TM laws

A Swedish IP court has requested clarification on three aspects of the EU trademark regulation, including the interpretation of the term “shape, or another characteristic, which gives substantial value to the goods”.

The Swedish Patent and Market Court referred the query to the Court of Justice of the European Union (CJEU) in the context of an ongoing case concerning trademark and copyright infringement.

Owners of Swedish interior design company Svenskt Tenn had alleged that Textillis, a UK organisation selling textile prints online, sold items with a particular pattern which infringed the copyright and trademark rights of the Swedish company.

Svenskt Tenn collaborated with, and still sells the patterns of, famous Austrian architect Josef Frank.

The company claimed that Textillis sold items incorporating the pattern from one of Frank’s textile prints, known as ‘ Manhattan’. ‘Manhattan’ is a figurative mark in blue, white, green, and red.

Since 2012, Svenskt Tenn has owned EU trademark number 010,540,268 relating to the mark in classes 21 and 16, which include tissues, textiles, and tablecloths.

Svenskt Tenn claimed that the pattern designed by Frank is an artistic work under the Swedish Copyright Act, and one which the company retains the rights to.

The Swedish company asked the Patent and Market Court for injunctive relief. In response, Textillis complained that the ‘Manhattan’ mark should be revoked due to its lack of distinctive character and portrayal as a “ sign consisting of a shape”.

The court rejected the application to invalidate the ‘Manhattan’ mark, holding that EU law allows trademarks to include graphic signs, so pattern-like images such as ‘Manhattan’ can be registered.

Textillis’s use of the pattern was found to have constituted trademark infringement, and the court ordered the company to cease using it on fabrics, pillows, and furniture.

Textillis disputed the findings and, on appeal, the Patent and Market Court of Appeal elected to stay the proceedings while referring three queries to the CJEU.

First, whether the trademark regulation is applicable to attempts to invalidate a trademark occurring after amendments were made to the regulation in March 2016, in relation to trademarks which were registered prior to the changes.

Second, whether the scope of the regulation covers a sign consisting of a 2D portrayal of a 2D product, such as a fabric.

Finally, if the second query is affirmed by the CJEU, the Swedish court is seeking interpretation of the wording “shape, or another characteristic, which gives substantial value to the goods”. The court is requesting clarification on whether this includes circumstances where, when the mark covers multiple classes, the sign could be applied differently across those goods and services.

The case was referred in December 2017, and can be found (in Swedish) here.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories like this sent straight to your inbox.

Today’s top stories

USPTO keeps running despite government shutdown

USITC launches probe into telecommunication systems

Nearly 75% of brands experienced TM infringement in 2017

Chinese national sentenced over theft of US trade secrets

Haseltine Lake strengthens team

Grant & Eisenhofer launches IP litigation practice

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk