Legislation
China
China acceded to the 1961 Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents and the Convention entered into force in China on November 7, 2023.
The 1961 Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Convention) is the international treaty with the widest scope of application and the largest number of contracting states under the framework of the Hague Conference on Private International Law. Its aim is to streamline the procedures involved in the international circulation of public documents.
With the implementation of the Convention in China, effective from November 7, 2023, public documents issued by China and intended for use in other contracting states will only require Hague Apostille, eliminating the need for consular authentication from the embassy or consulate of the destination state in China. Likewise, public documents issued by other contracting states and intended for use in China will only require Hague Apostille, without the need for consular authentication from the Chinese embassy or consulate in the originating state.
Public documents typically required in legal proceedings in China include notarized Power of Attorney, notarized Certificate of Identity of Legal Representative, Certificate of Incorporation/Good Standing, and proof of the signatory's authority to execute legal documents on behalf of the company, among others. China's accession to the Convention will significantly simplify the process, reduce the time required, and lower the costs associated with the preparation of these public documents. Consequently, it will greatly enhance the efficiency of foreign companies from the contracting states to participate in legal proceedings in China.
Hong Kong
Application of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Trade Marks (Madrid Protocol) to the Hong Kong Special Administrative Region (HK) of the People's Republic of China (PRC)
After almost a decade of discussions, the Madrid Protocol is now expected to be implemented in Hong Kong in 2024. The HK Government is currently preparing the final legislative steps to implement the Protocol.
The implementation of the Madrid Protocol is seen as an important strategic step that complements the PRC's National 14th Five-Year Plan which focuses on HK's development into a regional IP trading centre.
With the implementation of the Madrid Protocol, HK will also benefit from the convenient and cost-effective central solution for the international registration of trade marks (IR) which covers 100+ member countries.
Overseas trade mark owners including those from the PRC* can apply for an IR at their local offices and designate HK as an additional jurisdiction whilst HK trade mark owners will also be able to take advantage of this system.
whilst the PRC has been a contracting party to the Madrid Protocol since 1995, HK is joining via special arrangements between the Chinese government and the World Intellectual Property Organization, whereby the PRC and HK are treated as the same contracting party under the Madrid Protocol.
France
French bill to establish a framework for artificial intelligence using the regime for copyright protection
A draft law to regulate artificial intelligence through copyright was proposed by the French National Assembly on 12 September 2023. It provides that:
- the use by AI software of works which are protected by copyright for training purposes or their exploitation in the form of output should be subject to the prior authorisation of the relevant authors or rights holders (Article 1 of the bill);
- when a work is created by AI without any human intervention, the rights holders are the authors or assignees of the initial works that made it possible to generate the new work (Article 2 of the bill);
- the words "work generated by AI", together with the names of the authors whose works contributed to the creation of the AI generated work, must be affixed to the work (article 3 of the bill).
The declared aim of this bill is to protect the creations of authors and artists in the face of the threat posed by AI. To achieve this, the bill seeks to guarantee the traceability of AI-generated works, making it possible to compensate authors and artists and promote authors' remuneration by providing a framework for the collective management of rights in AI-generated works. It remains to be seen how these provisions will be implemented in practice, and it is unlikely that they will pass into law as currently drafted. The intention behind this bill is no doubt to highlight the risk that AI represents for authors and artists and start the debate on how to share value created by AI works.
Case law
Singapore
Guidance on the registrability of patterns as trade marks in Singapore
Louis Vuitton (the "Applicant") had applied for the registration of its classic monogram design without the initials LV. The registration of the pattern was refused by the trade mark examiner on the basis that the mark was not distinctive, and the examiner's refusal was upheld despite the Applicant's further submissions. In light of this, the Applicant requested an ex parte hearing which resulted in the current decision. Prior to this decision, the Singapore Trade Marks Registry had not previously issued any guidelines in relation to the registrability of pattern marks in Singapore.
In this case, the Hearing Officer concluded that pattern marks would generally not be distinctive, as the average consumer would regard a pattern as decorative and not as a trade mark denoting commercial origin. Nonetheless, pattern marks that are fanciful, unusual and/or arbitrary may be inherently distinctive, and thus registrable, if used in relation to goods and services which do not normally bear any patterns at all. This is because it is in these situations that the pattern will help consumers identify the source of the goods/services, as opposed to simply being decorative. Conversely, if patterns are used on goods and services which usually bear patterns (e.g. clothing), it is unlikely that the consumer will think that the pattern denotes origin. Therefore, in such situations, the pattern would not be able to function as a trade mark, unless the applicant can demonstrate that the pattern had acquired distinctiveness as a result of use in Singapore.
In this case, the famous Louis Vuitton pattern was allowed to proceed to registration in relation to smartphones, portable media players, microphones, chains [Jewellery], precious stones and diamonds. ; while the following specifications were struck out, among others: eyewear, jewellery, earrings, bracelets and clothing.
In obiter, the hearing officer found that it is arguable that the inclusion of a monogram to a pattern mark would render pattern marks sufficiently distinctive as a whole. However, the hearing officer did not make a finding on this point as the facts of the case did not call for it.
Germany
Requirements for exhaustion in the distribution of luxury perfumes by discounters
It is an accepted principle that the presentation of goods at a discount outlet can significantly damage the reputation of a luxury brand if the presentation of goods lacks the "exclusiveness" associated with a prestigious brand, as the German discounter "Aldi Süd" learned to its cost when it started selling "JOOP! Jump" and "Calvin Klein ckIN2U" perfumes in its stores.
A registered trade mark grants its owner the exclusive right to sell goods bearing its trade mark. Excluded from this are goods which have already been placed on the market within the European Economic Area, pursuant to the so-called "exhaustion" principle set out Article 15(1) of the European Union Trade Mark Regulation ("EUTMR"). However, in exceptional cases, the trade mark owner can oppose the use of the trade mark for legitimate reasons (Article 15(2)). Following the ECJ's "Dior/Evora" decision (C-337/95), a legitimate reason may also be damage to the reputation of the trade mark.
For luxury goods, the reseller must be careful not to damage the reputation of the trade mark by impairing the prestigious character of the goods or their association with luxury. A balance must be struck between the trade mark owner's legitimate interest in being protected against advertising and sales methods that damage its reputation, and the reseller's interest in being able to resell the goods using the usual forms of advertising for its sector. According to the Higher Regional Court, Aldi Sud presented the perfumes in a " shabby" manner, namely right next to the conveyor belt at the checkout and in glass showcases on paper napkins next to rummage boxes containing plastic-wrapped pyjamas and other everyday goods.
The Higher Regional Court thus went beyond the ECJ Dior/Evora decision by recognising that the prestigious character does not require the trade mark in question to be a "luxury trade mark". The court considered that goods in the mid-premium segment are also entitled to benefit from the exception to the exhaustion principle where (i) the goods are found to have a luxurious appearance (which was the case for the brands in question due to their selective distribution network) and (ii) that appearance was unreasonably impaired by the specific way in which the goods were presented. However, the Higher Regional Court of Düsseldorf did not totally prohibit the sale of the perfumes in the defendant's discount shops nor the advertising in its brochure -- in a very fact based decision, the court focused on the specific manner in which the goods were presented when finding that there was an infringement. This decision serves to further clarify of the scope of the exhaustion principle in relation to luxury and mid-premium brands in Germany and confirms that the assessment will always be fact based.
UK
Recent UK Trade Mark Infringement Case -- Crowded Markets and Sufficiency of Evidence
A trade mark for "BEVERLY HILLS POLO CLUB", featuring a polo player on a horse, was held not to be infringed by signs for "ROYAL COUNTY BERKSHIRE POLO CLUB", also featuring a polo player on a horse, in a recent UK Supreme Court judgement. The Court rejected each of the claimant's arguments, finding there to be no likelihood of confusion and, despite finding that there was some reputation, no dilution and no passing off.
The case addressed the following concepts in particular:
The impact of a "crowded market", in this case a market of polo-themed goods, on the assessment of the distinctiveness of an earlier mark. Where numerous brands co-exist in a particular market, this may impact the way the relevant average consumer recalls a mark, and thus, the relative distinctiveness of a mark relied upon for the purposes of trade mark infringement. Where a motif or element is common in brands within a specific market, the average consumer is more likely to rely on other branding cues, especially the name, as a distinguishing feature to determine origin.
The quality of any evidence of confusion. The judge was highly critical of the evidence put before the court, especially on behalf of the claimants, going as far as to comment on "how insubstantial the supposed evidence of confusion" between the brands was. Insofar as the trial bundle was concerned, the judge commented that the inclusion of marginal annotations were in such a manner that was misleading, inaccurate, or otherwise insufficient.
The case serves as a useful reminder to trade mark infringement claimants and their lawyers to build a compelling case based on sufficient, cogent evidence of reputation and confusion, particularly where the brands concerned compete in a crowded market of other brands featuring common motifs, elements and/or features.
Italy
Substantial value and shape marks in Italy -- where copyright protection excludes the right to a trade mark
On 28 November 2023, the Italian Supreme Court ruled on a dispute between Piaggio, the manufacturer of the famous Vespa scooter, and a number of Chinese scooter manufacturers. First of all, the Supreme Court upheld the second instance decision which found that the Chinese scooters infringed copyright in the Vespa design, which was good news for Piaggio.
The Court then looked at the validity of the Vespa shape mark owned by Piaggio, and the scope of the requirement that in order to benefit from protection the shape of the mark must not constitute the substantial value of the goods for which the sign is registered. The Court, which only examines questions of law and not fact, took as its starting point that a shape with substantial value is "a shape which gives the product a market value, an additional factor of attractiveness, which is in any event capable of influencing the consumer's choice 'to a large extent', but not necessarily and only in a predominant way".
Therefore, the fact that there are other competing reasons, in addition to the substantial value, which induce the consumer to buy the product, does not in itself exclude the existence of the ground for refusal. On the contrary, it is necessary to determine whether the substantial value confers a specific market value on the product. The Court then added that, where the shape is that of a design for a product protected by copyright because it has (according to Italian copyright law) artistic value, as in the case of the Vespa, "the recognition of artistic value (...) generally also implies the attribution of that 'substantial value' which precludes registration of the shape as a trade mark". Consequently, according to the Supreme Court, as a general rule, copyright protection excludes protection as a trade mark, since the concept of artistic value seems to imply the presence of substantial value. In so doing, the Supreme Court overturned the decision of the second instance. The matter has now been referred back to the Court of second instance to assess whether the shape of the Vespa scooter actually has substantial value and we will report back !
Netherlands
In a recent legal case, the famous Dutch comedy group Jiskefet, who are also the proprietors of the JISKEFET trade mark, found themselves in a dispute with a third-party publisher, Noblesse, regarding its use of the name 'Jiskefet' as the title for an encyclopaedia about the group.
In the earlier proceedings, the Dutch courts ruled that Noblesse's use of JISKEFET trade mark did not constitute trade mark infringement. The justification for the finding of non-infringement was that (i) the use of the trade mark in the book title was considered part of the product itself and therefore could not be considered as Noblesse using it for its goods or services, and (ii) Noblesse was simply exercising its right to freedom of information, a fundamental right on which the editors was entitled to rely to justify its use of the trade mark in the title for an encyclopaedia concerning the comedy group.
However, the case didn't end there. It was escalated to the Dutch Supreme Court, where Jiskefet sought to claim infringement based on unconventional grounds. They argued that Noblesse's use of their trade mark was not in accordance with honest practices in industrial and commercial matters, and thus based their infringement claim on the Benelux' implementation of article 14 of the European Union Trade Mark Directive. This article contains certain exceptions to the trade mark owners' exclusive rights, which enable third parties to use a registered trade mark when (i) the trade mark is also the name/address of the third party, (ii) the sign used is not distinctive or describes certain characteristics of the goods and services for which it is used, or (iii) the use refers to the goods and services of the trade mark owner, and in particular when it is used to indicate that spare parts and accessories are compatible with the trade mark owner's products. When relying on one of these exceptions to the trade mark owner's monopoly, the third party must also be able to demonstrate that its use of the trade mark is in accordance with honest practices in industrial or commercial matters.
Jiskefet claimed that, despite the fact that there was no trade mark infringement by Noblesse (as the mark was not used as a trade mark), its infringement-based claim should still be granted because Noblesse's use of JISKEFET was not in accordance with honest practices in industrial or commercial matters. In this argument, the comedy group was trying to make the condition of "honest commercial practices" an independent right of action for an infringement claim.
The Dutch Supreme Court rejected Jiskefet's argument, confirming that where the third party use does not qualify as trade mark infringement, it is not possible to make an alternative claim based on a general requirement that the relevant use must be in accordance with honest practices in industrial or commercial matters. The court was clear that this condition was only applicable where the third party was seeking to rely on one of the Article 14 exceptions to the trade mark monopoly.
With this ruling, the Supreme Court clarified the contours of the Article 14 exceptions to the trade mark monopoly, confirming that the requirement for use of the mark to be in line with honest commercial practices, was not an autonomous right of action, but rather one of the conditions necessary to be able to rely on the exception.
France
Parasitic competition -- jurisdiction outside of France -- amount of the damages
At the end of last year, the Paris Court of Appeal ordered Mango to pay damages of €2 million to Céline in an action based on parasitic competition. Celine identified that over a period of three years, Mango France and its Spanish parent company, Punto Fa had copied aspects of fifteen of its designs for sun glasses, earing and handbags, and sold the imitations at the same time or shortly after the launch of the Celine products. The Court found that Celine's products could all be considered as flagship products, based on the evidence relating to advertising expenditure and the wide-ranging press coverage for the products. Consequently, the Court considered that each product enjoyed an individual economic value and that the Mango products were not simply a fortuitous coincidence but a concerted attempt by Mango and Punto Fa to profit from the investments and reputation of Celine when selling their own products.
The Court also held that it had jurisdiction to rule on all the losses resulting from the acts of parasitism committed by Punto FA throughout the European Union, because of the risk of irreconcilable decisions being rendered by another court if these acts were to be judged separately. This decision is in line with a trend among French courts to declare themselves competent to hear claims relating to acts committed outside France in intellectual property matters. It is an application of Article 8 of the Regulation 1215/2012 of 12 December 2012 on jurisdiction and recognition and enforcement of judgements in civil in commercial matters which provides that a co-defendant based in another Member State can be sued in the courts of the country where one of the other co-defendant is domiciled where the claims against the defendants are so closely connected that it is expedient to determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings.
EU
Application of the right to appeal to the CJEU following the recent procedural reform.
The Court of Justice of the European Union (CJEU) decided that an appeal brought against a decision of the General Court in invalidity proceedings, where the earlier trade mark had enhanced distinctiveness in the UK, was allowed to proceed. The General Court has previously dismissed the evidence related to an earlier trade mark's distinctiveness in the UK, on the grounds that, in invalidity proceedings, an applicant must be able to prohibit the use of the contested mark not only on the date on which that mark was filed, but also on the date when the decision was handed down, which in the present case was after the expiry of the transition period provided by the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union ("Withdrawal Agreement"). The appeal relied on a single ground, raising the question of the date on which it is necessary to assess whether the conditions regarding the invalidity of a registration are satisfied : at the date of the filing or priority date of the contested trade mark, or at the date on which the EUIPO issues its decision.
Since the recent reform of the appeal procedure, an appellant must demonstrate that, independently of the issues of law which are specific to its case, the appeal raises issue(s) which will have an impact on the unity, consistency or development of EU law.
The appellant claimed that the question of the date on which it is necessary to assess whether the conditions of for invalidity are satisfied arises not only as regards the effects of the Withdrawal Agreement on pending proceedings, which potentially concern a significant number of invalidity and opposition proceedings, but also all situations in which the earlier mark or the scope of the protection conferred by it, is affected by events occurring after the priority date or the filing date of the contested mark (such as a loss of distinctiveness or reputation, or a change in the law applicable to the proceedings). The CJEU therefore found that the issue raised by the appeal "goes beyond the scope of the judgment under appeal and, ultimately, that of the appeal" and allowed the appeal to proceed. The application of this new procedural rule will be one to watch in EUIPO proceedings.
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