Latest Trends in EU Trademark and IP Cases 2023
Explore the latest developments in EU trademark and IP law with updates on CJEU and General Court cases, including key judgments and appeals. Insights from the Fordham IP Conference and analysis of notable cases involving online marketplaces. Stay informed on the changing landscape of intellectual property rights in the EU.
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EU Trademark Update 2023 EU Trademark Update 2023 Fordham IP Conference, April 2023 Fordham IP Conference, April 2023 James Nurton Director, Lextel Partners jnurton@lextelpartners.com Editor, MARQUES editor@marques.org Twitter: @marquesIP
Trends in CJEU cases Year New IP cases Completed IP cases (judgments & orders) 2018 2019 2020 2021 2022 92 74 51 83 49 74 92 76 61 63 2022 new cases: 7 references, 39 appeals, 2 interim measures, 1 special 2022 completed cases: 17 judgments, 46 orders
Trends in EU General Court cases Year New cases Completed cases (judgments and orders) 349 318 237 307 291 2018 2019 2020 2021 2022 301 270 282 308 270
Joined Cases C-148/21 and C-184/21 Christian Louboutin v Amazon Europe Core S rl et al, 22 December 2022 Article 9(2)(a) of Regulation (EU) 2017/1001 must be interpreted as meaning that the operator of an online sales website incorporating, as well as that operator s own sales offerings, an online marketplace may be regarded as itself using a sign which is identical with an EU trade mark of another person for goods which are identical with those for which that trade mark is registered, where third-party sellers offer for sale, on that marketplace, without the consent of the proprietor of that trade mark, such goods bearing that sign, if a well-informed and reasonably observant user of that site establishes a link between the services of that operator and the sign at issue, which is in particular the case where, in view of all the circumstances of the situation in question, such a user may have the impression that that operator itself is marketing, in its own name and on its own account, the goods bearing that sign.
Joined Cases C-148/21 and C-184/21 Christian Louboutin v Amazon Europe Core S rl et al In order to determine whether an advertisement, published on an online sales website incorporating an online marketplace by a third-party seller active on that marketplace, using a sign which is identical with a trade mark of another person may be regarded as forming an integral part of the commercial communication of the operator of that website, it is necessary to ascertain whether that advertisement may establish a link between the services offered by that operator and the sign in question, on the ground that a well-informed and reasonably observant user might believe that the operator is marketing, in its own name and on its own account, the goods for which the sign in question is being used.
Joined Cases C-148/21 and C-184/21 Christian Louboutin v Amazon Europe Core S rl et al The nature and scope of the services provided by the operator of an online sales website incorporating an online marketplace to the third- party sellers who offer goods bearing the sign at issue on that marketplace, such as the services consisting inter alia in dealing with the questions of the users relating to those goods or to the storage, shipping and management of returns of those goods, are also likely to give the impression, to a well-informed and reasonably observant user, that those same goods are being marketed by that operator, in its own name and on its own behalf, and may thus establish a link, in the eyes of those users, between its services and the signs placed on those goods and in the advertisements of those third-party sellers.
Case T-768/20, Standard International Management LLC v EUIPO/ Asia Standard Management Services Ltd July 13, 2022 Class 18: Leather goods, in particular leather desk and office accessories/ leather CD holders, book ends, wallets, handbags, backpacks, luggage, cosmetic cases and jewellery cases ; Class 25: Wearing apparel, in particular T-shirts, men s and women s underwear, headgear, jackets, sweatshirts[,] robes, shoes, bathing suits, athletic wear and jeans ; Class 38: Providing computer/online internet access facilities ; Class 39: Parking valet services ; Class 41: Providing meeting/convention room facilities for educational conventions ; Class 43: Hotel, restaurant, bar, cafe, cocktail lounge services; providing banquet and social function facilities for special occasions; catering services; personal valet services; providing meeting/convention room facilities for other type conventions ; Class 44: Barber shop/beauty salon services
Case T-768/20, Standard International Management LLC v EUIPO/ Asia Standard Management Services Ltd July 13, 2022 It is sufficient to state that there is genuine use of a trade mark where that mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it has been registered, in order to create or preserve an outlet for those goods or services. Even if the applicant were to supply goods or services outside the European Union, it is conceivable that the applicant would make use of that mark in order to create or preserve an outlet for those goods and services in the European Union. It is sufficient to note that advertisements and offers for sale constitute acts of use of a trade mark. Therefore, those are relevant in order to demonstrate use in respect of the services or goods for which the contested mark is registered, in so far as those services or goods are the subject of advertisements and offers for sale.
Case T-222/21, Shopify Inc. v EUIPO October 12, 2022 SHOPIFY Class 9: Application software; e-commerce software; Mobile apps; Application software for mobile phones; Computer e-commerce software; Computer software for advertising; Computer software for mobile phones; Software for tablet computers; Software for online messaging; Software for mobile phones; Software for interactive television; Virtual reality software; Media content; Media software ; Class 35: Advertising for others; Advertising analysis; Analysis of advertising response; Evaluating the impact of advertising on audiences; Advertising, marketing and promotional consultancy, advisory and assistance services; Advertising and marketing services provided via communications channels; Provision of an on-line marketplace for buyers and sellers of goods and services; Analysis of the public awareness of advertising; Analysis relating to marketing; Consumer response analysis; Dissemination of data relating to advertising; Grain market analysis; Coupon procurement services for others; Mediation of advertising; Advertising via electronic media and specifically the internet; Promotional marketing services using audiovisual media; Retail purposes (Presentation of goods on communication media, for -); Presentation of goods on communications media, for retail purposes; Presentation of companies on the Internet and other media; Advertising and marketing services provided by means of social media; Presentation of goods on communication media, for retail purposes ; Class 38: Photo uploading services; Video uploading services; Providing on-line chat rooms for social networking; Digital transmission of data; Message services; Providing online chatrooms for the transmission of messages, comments and multimedia content among users; Communication services for the transmission of information; Communication services for the electronic transmission of voices; Communication services for the electronic transmission of images; Delivery of digital audio and/or video by telecommunications; Delivery of messages by audiovisual media; Digital transmission of data via the Internet; Digital transmission of voice; Delivery of messages by electronic media; Message sending, receiving and forwarding; Interactive transmission of video over digital networks; Interactive communication services; Inter-active video text services; Video transmission via digital networks; Transmission of messages and images; Provision of access to an electronic marketplace [portal] on computer networks .
Case T-222/21, Shopify Inc. v EUIPO October 12, 2022 in the context of cancellation proceedings, the proprietor of an industrial property right, particularly an earlier mark, must establish that he or she may prohibit the use of the EU trade mark at issue, not only on the filing or priority date of that mark but also on the date on which EUIPO decides on the application for a declaration of invalidity The same applies, a fortiori, in the context of opposition proceedings It follows, in essence, that, for the evidence of enhanced distinctiveness of the earlier mark acquired through use in the United Kingdom to be relevant for the application for a declaration of invalidity of the contested mark, that use must still be capable of being relied on at the date on which EUIPO rules on the application for a declaration of invalidity. after the expiry of the transitional period, no conflict can arise in the United Kingdom between the contested mark and the earlier mark, which are no longer protected in that territory. At the date of the contested decision, the public of the United Kingdom was no longer part of the relevant public of the European Union.
Case T-222/21, Shopify Inc. v EUIPO October 12, 2022 Lastly, while it is true that the date to be taken into account for assessing the enhanced distinctiveness of the earlier mark is the filing date of the contested trade mark application , the fact remains that the requirement of permanence or persistence of the prior right at the date on which EUIPO rules on the application for a declaration of invalidity is a matter of enforceability, previous to such a substantive assessment.
Trademark and design cases pending at CJEU Reference Keyword Right Date of order Summary Case C-382/21 KaiKai RCD December 10, 2021 Priority from earlier patent Case C-801/21 BASMATI EUTM April 7, 2022 Brexit and prior rights Case C-337/22 APE TEES EUTM November 16, 2022 Brexit and prior rights Case C-580/22 Bonnawalt EUTM January 30, 2023 Independence of legal representative
Further reading CJEU data: https://curia.europa.eu/jcms/upload/docs/application/pdf/2023- 03/stats_cour_2022_en.pdf General Court data: https://curia.europa.eu/jcms/upload/docs/application/pdf/2023- 03/stats_tribunal_2022_en.pdf Louboutin judgment: https://curia.europa.eu/juris/liste.jsf?num=C-148/21 The Standard judgment: https://curia.europa.eu/juris/liste.jsf?num=t-768/20 Shoppi judgment: https://curia.europa.eu/juris/liste.jsf?num=t-222/21
James Nurton Director, Lextel Partners jnurton@lextelpartners.com
