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Author: Meriem Loudiyi (INLEX)
Chronopost v DHL Express France  R 2425/2013-4, The Fourth Board of Appeal of OHIM, 28 January 2015
Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv114, first published online: June 23, 2015
The Fourth Board of Appeal of the Office for Harmonisation in the Internal Market revoked a decision of the Cancellation Division that had cancelled the Community trade mark WEBSHIPPING, owned by Chronopost, on the grounds of non-use. The Board of Appeal upheld the appellant’s position that trade mark infringement incurred by its direct competitor constituted a proper reason for non-use. Additionally, the Board of Appeal pointed out that the concept of ‘proper reason for non-use’ was not limited to the cases covered by the previous rulings.
Article 51 of the Community trade mark (CTM) Regulation 40/94 states that a CTM shall be declared invalid on application to the Office for Harmonisation in the Internal Market (OHIM) or on the basis of a counterclaim in infringement proceedings if in a continuous period of five years the trade mark in question has not been put to genuine use in a significant part of the European Community in connection with the goods or services in respect of which it is registered, unless the owner of the trade mark proves that there is a proper reason that justifies this non-use.
Chronopost and DHL (France) both provided international express mail services, and were thus direct competitors in this market. Chronopost was the owner of the CTM WEBSHIPPING (registered on 7 May 2003) and of the French trade mark WEBSHIPPING.
In September 2004 Chronopost brought an action against DHL before the Paris Court of First Instance alleging infringement of its CTM. They wanted an order that DHL pay damages for the illegal use of this trade mark, as well as prohibiting the use of that trade mark in the Community. In March 2006 the court held that DHL had infringed Chronopost’s French trade mark, but did not adjudicate on the infringement upon the CTM. On appeal by Chronopost the Court of Appeal of Paris, acting as a second instance CTM Court, held that DHL had infringed both the French trade mark and the CTM, and prohibited DHL from using this trade mark in the French territory, subject to a periodical penalty in the event of infringement. A subsequent appeal by DHL to the French Supreme Court was dismissed on 23 June 2009.
In July 2012 DHL brought before the Cancellation Division of OHIM a revocation action seeking to cancel Chronopost’s CTM on the ground of non-use. Invited to provide evidence of use of this trade mark, Chronopost was unable to provide any proof, but alleged that the non-use of its CTM was justified by ‘proper reasons’.
The reasons invoked by Chronopost were the infringement of its trade mark by DHL as well as the fact that the trade mark dispute had been going on since 2004. In other words, Chronopost underlined the fact that they had been prevented from using their own mark due to the intensive use which had been made of the trade mark by DHL in the whole European Community in relation to identical products and services. Indeed, it could not freely use the subject mark, as the consumer would not understand that identical services could be provided under the same trade mark by the two main actors and competitors in this field of activity.
In October 2013 the Cancellation Division upheld DHL’s action and revoked the rights of Chronopost over the mark. The Cancellation Division held that the concept of proper reasons for non-use must be interpreted narrowly, the only two proper reasons for non-use being force majeure and abnormal bureaucratic obstacles. Accordingly, it considered that an infringement procedure was not a proper reason, and cancelled the CTM for non-use.
Chronopost appealed in December 2013 to the Fourth Board of Appeal, which upheld it on the basis that the fact that the mark was already used by an infringer completely prevented the legitimate owner from using its own trade mark. It thus recognized trade mark infringement as a new ‘proper reason’ justifying the non-use of the trade mark.
This decision is innovative, given that it recognizes trade mark infringement as a new ‘proper reason’ for non-use. As the Board of Appeal mentioned in its decision, the CTM Regulation does not define the concept of ‘proper reason’ for non-use. This concept was defined by the Court of Justice of the European Union (CJEU) in the landmark case of Le Chef de Cuisine (Armin Häupl v Lidl Stiftung & Co. K  Case C 246/05). In that decision, the CJEU considered that, for proper reasons for non-use to apply, it was not necessary for the obstacle to be impossible (an unreasonable obstacle being sufficient) but that this obstacle must be independent of the trade mark owner’s will.
The Board also noted that, although the most usual case of proper reasons for non-use is the seemingly never-ending process for obtaining a marketing authorization for medicinal products, it would be an error to restrict this concept only to that kind of case. By doing so, the Board of Appeal enlarged the restrictive list of acceptable ‘proper reasons’ for non-use.
Notwithstanding the fact that the question regarding the definition and application of this concept had already been raised in European Instances, the Board of Appeal considered that the WEBSHIPPING case could not be covered by the previous decisions, given that for the very first time, the applicant for revocation was also the infringer.
In this sense, the Board confirmed that the fact that the mark in question was already used by an infringer was to be considered as a ‘proper reason for non-use’ for it completely prevented the legitimate owner from using its own mark freely, as there was a real risk of confusion in the consumer’s mind, especially as the mark was used for identical services. Moreover, the Board highlighted that, by using the trade mark, the legitimate owner would have indirectly enhanced the value of its direct competitor’s mark, constituting therefore an unreasonable obstacle for trade mark use being independent to the owner’s will.
The Board therefore concluded that ordering the cancellation of such a mark would imply that a mark could be systematically infringed until it becomes vulnerable to cancellation for non-use, which would be completely unfair, for it would mean that an infringer could benefit from his illegal act.
Unsurprisingly, the decision of the Board of Appeal shows how European instances are open to take into consideration economic factors in their legal reasoning. This decision has the virtue of being legally founded as well as business-orientated, and therefore is the correct one.Continue Reading ...
Case C 147/14 Loutfi Management Propriété intellectuelle SARL v AMJ Meatproducts NV, Halalsupply NV is a Court of Justice of the European Union (CJEU) ruling last Thursday in a Community trade mark-related reference from Belgium. This ruling did not require any rocket-science, which is why the CJEU reached its decision without the need to trouble the Advocate General for any advice. It is however one of those comforting rulings that reassure trade mark practitioners that principles which are of general application, such as those relating to comparison of marks, apply to specific and somewhat unusual situations too, unless there is any compelling reason why this should not be so.
In the underlying dispute Loutfi was the proprietor of two Community trade marks. The first, depicted on the right, was filed on 24 September 2009 and registered on 22 March 2010 for goods in Class 29 (including meat, fish, poultry and game), in Class 30 (including sugar, bread, pastry products and honey) and Class 32 (including beers, mineral waters and other non-alcoholic beverages) That Community trade mark registration referred to the sign combining the colours red, white and green.
The second, depicted on the left, was filed on 24 August 2011 and registered on 8 January 2012 for goods in Class 29 (including meat, fish, poultry and game) and in Class 30 (including sugar, bread, pastry products and honey). This mark was also referred to as combining the colours red, white and green.
In November 2011 Meatproducts (then known as ‘Deko Vleeswarenfabriek’), filed the Benelux trade mark EL BAINA, depicted on the right, for ‘meat, meat products, prepared meat products, prepared poultry products, processed meats, processed meats with beef, processed meats with poultry, processed meats with game, prepared meals with beef, fish, poultry and game not included in other classes; meat extracts; these products being prepared in accordance with Islamic precepts’ (Class 29) and for ‘prepared dishes not included in other classes; coffee, tea, cocoa, sugar, rice, tapioca, flours, cereal products, bread, pastry and patisserie products, these products being prepared in accordance with Islamic precepts’ in Class 30. This trade mark was registered on 10 February 2012. Another business, Halalsupply, subsequently took over the business of Meatproducts, including the latter’s trade mark portfolio.
In trade mark proceedings in Belgium, Loutfi applied to the President of the Rechtbank van koophandel te Brussel (Commercial Court, Brussels) under Articles 9(1)(a) and (b) of Regulation (207/2009, for a seizure order against Meatproducts and Halalsupply and any party holding products sold under the mark EL BAINA, their packaging and related documents. This application, which was granted, was lifted three months later by the same court, following an application made by the defendants. Loufti then appealed to the Hof van beroep te Brussel (Court of Appeal, Brussels). That court found that the defendants’ sign referred to the same goods, or at least to similar goods to those identified in Loutfi’s two Community trade marks, that both parties’ goods were marketed as ‘halal’ products prepared in accordance with a ritual prescribed by the Muslim religion and, consequently, mainly intended for a Muslim public. Further, the court considered that the relevant public must, in the present case, be defined as being the public composed of Muslim consumers of Arab origin who consumed ‘halal’ food products in the European Union and who had at least a basic knowledge of written Arabic.
Comparing the marks, the court noted that the word elements ‘EL BNINA’, ‘EL BENNA’ and ‘EL BAINA’, being Arabic terms written in Latin script, were dominant both in the Community trade marks and in the defendants’ sign, with the depiction of those words in Arabic script being rather less prominent. Further, while the Arabic words appearing in Latin and Arabic script on Loutfi’s two Community marks and in the defendants’ sign had some visual similarity, their pronunciation and meaning differed substantially since, in Arabic, ‘el benna’ means ‘taste’, ‘el bnina’, ‘softness’ and ‘el baina’, ‘sight’. The court concluded that the examination of the likelihood of confusion between the parties’ respective marks could vary according to whether the meaning and the pronunciation of the word elements in the Arabic language, in both Latin and Arabic script, were taken into account. Accordingly the Hof van beroep te Brussel decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:
‘Having regard, in particular, to Articles 21 [non-discrimination on religious and other grounds] and 22 [respect for cultural, religious and linguistic diversity] of the Charter of Fundamental Rights of the European Union, must Article 9(1)(b) of Regulation 207/2009 be interpreted as meaning that, in the assessment of the likelihood of confusion between a Community trade mark in which an Arabic word is dominant and a sign in which a different, but visually similar, Arabic word is dominant, the difference in pronunciation and meaning between those words may, or even must, be examined and taken into account by the competent courts of the Member States, even though Arabic is not an official language of the European Union or of the Member States?’
The CJEU, adding that there was no need to consider Articles 21 and 22 of the Charter of Fundamental Rights of the European Union [and without explaining why these provisions were cited in the first place] in what was effectively a straightforward trade mark matter, ruled as follows:
Article 9(1)(b) … must be interpreted as meaning that, in order to assess the likelihood of confusion that may exist between a Community trade mark and a sign which cover identical or similar goods and which both contain a dominant Arabic word in Latin and Arabic script, those words being visually similar, in circumstances where the relevant public for the Community trade mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account.
The IPKat believes that this is entirely correct and notes that this ruling will offer guidance to dealers for the responsible labelling of not merely halal products but also for kosher products and those of any other minority linguistic, religious or cultural groups.
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Like it or not, we have entered the age of Uber – the love-it-or-loathe-it ride-share scheme which has caught not only the imagination of the public but the attention of the lawyers. In this guest post, Katfriend Revital Cohen (Baker & McKenzie, Barcelona) tells us all about a legal development that may have major repercussions in Europe not just for our understanding of the concept of a “transport service” but for our attitude towards new web-based business models that do not fit neatly within the concepts and classifications found in European Union regulatory and competition law up to the earlier years of this century, Revital explains:
Is UberPOP a transport service? A new reference to the CJEUMany readers will be familiar with Uber, the on-demand ride-sharing platform which has revolutionised the concept of urban transport. Launched in San Francisco in 2009, it has quickly expanded all over the world and it is now currently available in 57 countries.Uber offers a range of different services. From UberBLACK, a professional limousine service, to UberPOP, an informal ride-sharing service connecting passengers with drivers of private cars through a smartphone application. The GPS location sharing, the pick-up timing and the payment are all performed online. UberPOP drivers are not required to have a licence to pick up the passengers and are not bound to regulations that apply to taxis.UberPOP’s undeniable success has nevertheless shaken the heavily regulated taxi industry. In Europe, following taxi associations’ protests and claims, UberPOP has been restricted in Germany, Belgium, the Netherlands, France and Italy. In some of those countries, courts have taken the view that Uber operates as a conventional transport company and that it is breaching licensing regulations governing professional taxi drivers, as well as local laws on passenger transportation since the activities of UberPOP drivers do not fall within the scope of the relevant licences.
Asociación Profesional Élite Taxi on Twitter
In Spain, UberPOP has been temporarily suspended since December following an injunction issued by the Commercial Court of Madrid. This is not the only court dealing with Uber in Spain since, on 29 October 2014, Profesional Élite Taxi filed a claim before the Commercial Court of Barcelona alleging that Uber’s activities constituted acts of unfair competition. Six months after the injunction issued by the Madrid Court, Judge José María Fernández Seijo, who is handling the Uber case in Barcelona, decided to stay the proceedings and seek guidance from the Court of Justice of the European Union (CJEU) as regards the legal nature of the services offered by Uber.The Order for Reference, which was issued on 17 June, is available here in Spanish. Paragraph 9 of the Order can be translated as follows:
“In order to determine whether Uber is engaging in acts of unfair competition under Spanish law, I consider it necessary to determine before whether or not [Uber] requires a prior authorization; the authorization will depend on the nature of services which are carried out [by Uber], by establishing whether it is a transport service, an information society service, or a combination of both things.”In greater detail, the questions which are referred to the CJEU are:
1. Does Article 2(2)(d) of Directive 2006/123 … on services in the internal market [the “Services Directive”] exclude from the scope of the Directive the lucrative activities of intermediation between the owner of a vehicle and a person needing transportation within a given city, [where that intermediation consists in] providing the digital means – interface and software application – allowing them to connect, as that service is deemed a transport service? [Article 2.2 of the Services Directive expressly excludes a number of services from its scope, including “(d) services in the field of transport, including port services, falling within the scope of Title V of the Treaty”. Recital (21) of the Services Directive also establishes that transport services, including taxis, should be excluded from the scope of the Services Directive].
2. Should the service carried out by UBER SYSTEMS SPAIN, S.L. not be considered a transport service but fall within the scope of the Services Directive, is Article 15 of the Unfair Competition Act – which refers to the infringement of any laws having as their object the regulation of trade – contrary to the Services Directive, namely Article 9 on the freedom of establishment and authorization scheme, when the reference to internal laws or rules is made without taking into account that the authorization, permit, and license regime cannot be in any way restrictive, that is, cannot unreasonably hinder the principle of the freedom of establishment? [In accordance with Article 9(1) of the Services Directive, authorisation schemes may be maintained by Member States only if they are non-discriminatory, justified by an overriding reason relating to the public interest and proportionate, that is, that the objective pursued cannot be attained by means of a less restrictive measure].Those questions might still be not final as the parties had five days in which to submit comments. The final questions, though, have not been reported yet.
Licensed to purr …
The CJEU answers could have a huge potential impact on the legal challenges that Uber is currently facing in Europe. Indeed, should the CJEU rule that Uber is not a transport service and that the Services Directive applies, the legality of the restrictions imposed by the Member States under the current regulations will have to be assessed under the principles enshrined in the Services Directive, namely the principle of non-discrimination, the principle of proportionality and freedom of establishment, to the pleasure of Courtney Love.Be that as it may, the Court of Barcelona’s reference may shed light on the wider, international debate over the sharing economy versus traditional services. On one hand, new services such as Uber have completely changed perception of transportation, accommodation, advertising, food services and so on. As this case study published by the Business Innovation Observatory highlights, the growth of the internet and of the information technology has created value and opportunity without resorting to traditional industry, by facilitating
“a match between a consumer owning a certain resource (property or skill/competence) and a consumer in need of that resource, at the right time and against reasonable transaction costs”.While they present substantial differences compared to traditional industry, in some cases they share the same “traditional” public or, anyhow influence, the way consumers enjoy “traditional” services (think, eg, to over-the-top video platforms providing user generated contents compared to traditional broadcasters that choose their programmes).
Sharing can be fun …
Is that enough to justify the application of laws and regulations designed for conventional industry to new platforms? The answer to this question is far from easy, given the different (and sometimes diverging) interests involved. On the one hand, traditional industries should be put in the position to play in a balanced and non-discriminatory competitive environment. On the other, new-economy enterprises deserve a legal framework that values their peculiarities, allowing them to exist and keep innovating. Last but not least, consumers’ right to choose and to benefit of new economy’s added valueshall be safeguarded.
Inasmuch as new and traditional services actually compete one with the other, a reasonable balance could be found by providing light regulation for the first and a substantial de-regulation for the latter. Ultimately a less-is-more legal framework for all could be another added value brought by new economy.
Says the IPKat, apart from its obvious challenge placed by Uber to traditional transport service licensing and regulation, the use of the word “Uber” within the context of an intermediation between consumers (passengers) and the service providers (drivers) raises questions for intermediation activities that address trade mark law too. These affect the correct classification of services as well as trade mark use: whose use is it and what is its effect, whether for the purposes of acquiring distinctive character, of establishing genuine use, or of infringement?Continue Reading ...
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