Swedish Patents and Market Court of Appeal requests CJEU to clarify notion of ‘shape, or another characteristic, which gives substantial value to the goods’
The 'Manhattan' print |
The reference concerns Article 7(1)(e)(iii) of the 2009 EU Trade Mark Regulation as amended by Regulation 2015/2424 [now Regulation 2017/1001].
Background
The reference has
been made in the context of infringement and invalidity proceedings regarding EU trade mark
(EUTM) ‘Manhattan’.
Svenskt
Tenn is an interior design company, and has acquired a good reputation for its
products. The company also notoriously collaborated with famed Austrian architect Josef Frank. The collaboration resulted in Mr
Frank producing 2,000 furniture sketches
and 160 textile prints, which are still marketed and sold by Svenskt Tenn. Among the textile prints, there is a pattern known
as ‘Manhattan’.
Svenskt
Tenn claims that the pattern that Mr Frank designed is an artistic work
within the meaning of the Swedish Copyright Act, in which the company holds the
copyright. Since 2012 the company has
also owned the EUTM “Manhattan” (No 010540268), this being a figurative mark
characterized by the colours blue, white, green, and red. The trade mark is, inter alia, registered in
classes 21 and 16 of the Nice classification for: tissues and textiles (class
21); and table cloths, napkins posters, and graphic presses (class 16).
Textillis
is a UK company that since 2013 has also sold and marketed textile prints
through its online marketplace. Textillis has allegedly sold certain fabrics
and textiles incorporating the pattern designed by Mr Frank.
Josef Frank |
The Patents
and Market Court (lower instance) found that it had not been demonstrated why
the Manhattan trade mark should be revoked. In support of this, it held that
the EU Trade Mark Regulation states that a EUTM may consist of all signs which
can be represented graphically, including images, provided that they have
distinctive character. In this regard, because pattern-like images can be
registered as trade marks, the Court found that the elements represented in the
Manhattan design are signs that are likely to attract trade mark protection. Furthermore,
the Patents and Market Court found that the registration of the Manhattan trade
mark did not entail a sign consisting of a shape. Thus, a trade mark could not
be cancelled on the basis of the absolute grounds for refusal within Article 7(1)(e)(iii)
of the Regulation.
The case
was appealed to the Swedish Patent and Market Court of Appeal which decided [see also here] to stay the proceedings and refer
the following questions to the CJEU [please note that the reference is not yet available on the
Curia website so the translation from Swedish may not be accurate]:
1. Whether Article 4 of Regulation 2015/2424 means that the wording of what is
now Article 7(1)(e)(iii) of the EU Trade Mark Regulation applies to invalidity
proceedings brought after the entry into force of the new provisions but in
relation to trade marks registered before that date;
2. Whether Article 7(1)(e)(iii) of the
EU Trade Mark Regulation should be interpreted as meaning that its scope covers
a sign consisting of the two-dimensional representation of a two-dimensional
product, including a fabric; and
3. If
the answer to question 2 is yes – how should the wording in Article
7(1)(e)(iii), “shape, or another
characteristic, which gives substantial value to the goods", be interpreted? Would it
cover a situation where the registration includes a variety of classes of goods
and services and the sign in question could be applied differently to the various
goods and services covered by the registration?
The IPKat will follow this reference and reports on relevant updates in due course.
The IPKat will follow this reference and reports on relevant updates in due course.
Swedish Patents and Market Court of Appeal requests CJEU to clarify notion of ‘shape, or another characteristic, which gives substantial value to the goods’
Reviewed by Nedim Malovic
on
Thursday, January 18, 2018
Rating:
No comments:
All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.
It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.
Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html