Never Too Late: If you missed the IPKat last week!

If the incrementally later sunsets have corresponded with being late to the IP news, don't worry: here's the summary of what you missed last week.

Trade Marks

A Kat looking forward to the longer days.
Image from Pixabay.

Anastasiia Kyrylenko informed readers of a new CJEU referral from the French Supreme Court on the interplay between bad faith and functionality under trade mark law. The case, which concerns the pink shape of a hip-replacement implant, raises issues about whether a trade mark application made under the belief that it protected an element with a technical function, could be considered to be made in bad faith. We will eagerly await the decision, which will provide interesting guidance on the relationship between the different absolute grounds for refusal.

Marcel Pemsel discussed the case concerning a trade mark application for the words 'KÖLNER DOM' (meaning 'Cologne Cathedral'), which was held to be non-distinctive. The German Supreme Court affirmed that the sign would not be understood as an indication of the commercial origin but only as a reference to the building. In doing so, the Court distinguished the CJEU's earlier NEUSCHWANSTEIN judgment on descriptiveness of marks comprising geographical names.

Anna Maria Stein evaluated a decision of the General Court on bad faith and abuse of right under trade mark law. The applicant was found to have used a dishonest strategy of blocking by repetitive and abusive filing at the national level, in order to bypass the six-month cooling off period, contrary to the accepted standards of commercial behaviour.

Katfriend Zoi Krokida reviewed the book Contentious Trade Mark Registry Proceedings (2nd ed) by Michael Edenborough KC, which was nominated in the IPKat book of the year awards 2023. The book draws on the author's wealth of experience to produce an excellent resource on the practice and procedure before the United Kingdom trade mark registry. 

Katfriend Til Todorski provided updates on a pending CJEU decision (IKEA, C-298/23). The International Trademark Association (INTA) submitted an amicus brief asking the CJEU not to interpret the concept of "due cause" too broadly. The case raises questions about balancing fundamental rights, specifically freedom of expression (including the freedom to express political opinions and political parody) and the rights conferred by a trade mark. INTA argues that while freedom of expression may constitute "due cause", the CJEU should be careful not to use "due cause" as a back door to incorporate something that was deliberately not included in EU trade mark law.

Copyright

Eleonora Rosati discussed the Advocate General opinion in the latest CJEU case (GEMA v GL, C-135/23) on communication to the public, which concerns the installation of TV sets by the operator of a rental apartment building. AG Szpunar drew parallels to SGAE to conclude that the building operator has performed an act of communication directed at a ‘new public’, but noted that this applied to short-, not long-term tenants.

Alessandro Cerri analysed a Spanish decision about the creation of NFTs based on the works of three well-known Catalan artists. Barcelona's Ninth Mercantile Court, curiously, applied the four factors for fair use in US law to find that the digitisation of the physical works constituted "harmless use" such that the authorisation of the copyright rightsholders was not required.