“The European Commission’s five-point Action Plan on IP is likely to lead to a number of specific initiatives, including legislative changes and new enforcement tools, being launched in the next few years.”
In a previous piece, we covered the top five patent developments of the year in Europe. Here, we review some of the key cases and legislation that shaped 2020 in other areas of IP, including trademarks, copyright, design and legislative actions.
1) SKY Mark Survives Bad Faith Attack
In its judgment in Sky v SkyKick (Case C-371/18) in January, the CJEU said that an EU trademark cannot be invalidated for lack of clarity and precision, and provided guidance on what constitutes bad faith. The decision reassured owners of trademarks in Europe, who had feared that many marks would be invalidated if the Advocate General’s Opinion were followed.
In this case, broadcaster Sky’s registrations for SKY covered goods and services such as “software” in Class 9 and “Internet portal services” in Class 38. They were attacked for being too broad and vague. Following the CJEU judgment, Lord Justice Arnold found that the marks had been applied for partly in bad faith, but remained valid and infringed for services including “telecommunications services” and “electronic mail services.” In a subsequent decision, he granted both parties permission to appeal certain findings.
Attention has now turned to a dispute concerning an EUTM registration for MONOPOLY. In 2019, an EUIPO Board of Appeal partly invalidated the trademark, finding that Hasbro acted in bad faith when it filed an application including goods and services covered by earlier registrations. The EU General Court heard Hasbro’s appeal in October 2020 and a decision is expected next year (Case T-663/19).
2) Football and Fame
In a case involving an EUTM application filed by Argentine soccer player Lionel Messi, the CJEU upheld a General Court judgment concerning Messi’s application for a figurative sign (pictured). The application was opposed by a company that owns trademark registrations for MASSI covering clothing and cycling equipment (Joined Cases C-449/18 P and C-474/18 P).
The Court upheld the finding that Messi’s reputation counteracted the visual and phonetic similarities between his application the earlier registrations. It added that the reputation of the person applying for his name to be registered is one of the relevant factors in the likelihood of confusion assessment. In this case, the General Court had found that Messi’s reputation was one factor in establishing a conceptual difference between ‘messi’ and ‘massi’. Moreover, Massi’s reputation was a well-known fact, and should have been taken into account by EUIPO.
The decision is welcome news for trademarks with a significant reputation—although there are likely to be few with as significant a reputation as Messi, who is probably the most famous soccer player in the world and whose name is instantly recognized throughout Europe.
3) Commission Reviews Design Law
The European Commission is reviewing design protection in the EU, including unitary and national systems. In November, it published a report evaluating the EU legislation and recommending changes. This followed an extensive consultation process conducted during 2018 and 2019.
The report said that the design protection system may be underused, and the legislation is not fully adapted to the digital age (for example there is uncertainty over the protection of GUIs and icons). It also said that “the economically important spare parts market continues to be fragmented, causing considerable legal uncertainty and distorting competition.” The Commission is likely to propose revisions to the legislation next year, though the issue of auto spare parts is controversial and there will be lobbying on both sides of the argument.
Design rights are a popular means of IP protection in Europe, due to the low costs and broad protection, and are widely used by designers in industries ranging from furniture and fashion to smartphones and online games. However, there continues to be discussion about the bar on protection of “features … solely dictated by the technical function.” See, for example, the recent General Court judgment in Tinnus Enterprises LLC v EUIPO (Case T-574/19 of November 18 2020.)
4) New EU IP Action Plan
The European Commission published a five-point Action Plan on IP on November 25. The Action Plan seeks “to help companies, especially SMEs, to make the most of their inventions and creations and ensure they can benefit our economy and society.” Specifically, it sets out steps to:
- Improve the protection of IP – improving SPCs, modernizing EU design protection, strengthening GIs and addressing the impact of technologies such as AI and Blockchain;
- Boost the update of IP by SMEs – by improving information and advice, offering financial assistance and making it easier to use IP as a level for access to finance;
- Facilitate the sharing of IP – to increase technological uptake especially in times of crisis, improve the copyright infrastructure, take action to better mobilize IP-protected data and improve the transparency and predictability in the licensing of standard-essential patents;
- Fight counterfeiting and improve enforcement of IP rights – by establishing an EU anti-counterfeiting toolbox; and
- Promote a global level playing field – by strengthening the EU’s position as a global standard-setter in IP and setting the EU response to unfair practices committed by other third country players.
Announcing the Plan, Commissioner for the Internal Market Thierry Breton said: “Today, we are proposing to overhaul our intellectual property system to strengthen Europe’s ability to develop next generation technologies, reflect advances in data and AI; allow companies to quickly pool their knowledge in times of crisis, and support Europe’s path towards economic recovery and the green transition.”
The Action Plan is likely to lead to a number of specific initiatives, including legislative changes and new enforcement tools, being launched in the next few years.
5) Liability of Online Platforms
Questions concerning the liability of online platforms for IP infringement carried out by their users, the meaning of “communication to the public,” and the scope of the safe harbor continue to come before the courts in Europe. In July, the CJEU ruled in Constantin Film Verleih GmbH v YouTube LLC and Google Inc (Case C-264/19 ), a copyright case referred by the German Federal Supreme Court regarding the Enforcement Directive.
The dispute concerned the illegal uploading of two movies (Parker and Scary Movie 5) to youtube.com. Constantin Film, which owns the rights to the movies in Germany, sought information relating to the users who had uploaded the works from YouTube and its parent company Google. The Court ruled that the term “addresses” in the Enforcement Directive “does not cover, in respect of a user who has uploaded files which infringe an intellectual property right, his or her email address, telephone number and IP address used to upload those files or the IP address used when the user’s account was last accessed.”
Another case involving YouTube, also referred from Germany, concerns the safe harbor provision in the 2000 e-Commerce Directive, in particular what constitutes “actual knowledge of illegal activity or information”. The Advocate General’s Opinion in the case was published in July, and a judgment is expected in the next few months.
The European Commission is expected to publish the Digital Services Act before the end of this year, following a consultation which closed on September 8. The Act is likely to update the e-Commerce Directive to address the liability of online platforms, including for IP infringement carried out by users. IPWatchdog will post analysis of the Act once it is available.
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