Cross-Border Trade Mark Review: Insights from Europe and China

Legislation & Practice

China

Good news for trade mark applicants - review proceedings can now be suspended where a cited mark is subject to a non-use cancellation action

In the event of an ex officio refusal due to prior cited marks, the applicants often file non-use cancellation actions against the cited mark to get it off the register. However, the non-use cancellation action will often outlast the parallel review proceedings appealing against the refusal. As a consequence, the applicants have to exhaust legal procedures by filing administrative lawsuits and repeatedly re-filing the applied-for marks to avoid the possibility of other third parties applying for identical or similar marks after the removal of the cited marks. The costs associated with these administrative lawsuits and repeated re-filings have long been a concern for trade mark applicants.

To address these issues, the CNIPA has added new Regulations on the Suspension of Review Cases to its recently issued Trademark Review and Adjudication Work System for Trademark Review Cases. The new Regulations aim to reduce unnecessary costs for legitimate right holders by coordinating the different proceedings. They specify seven situation where a review case should be suspended, and three circumstances under which a review case may be suspended depending on the specific circumstances of the case. Notably, in the case of an ex officio refusal review, where the cited trade mark is under attack in separate proceedings, the review proceedings can be suspended at the request of the applicant.

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France

Online influencers are now subject to regulation in France

The Law aimed at regulating commercial influence and combating the abuses of influencers on social networks entered into force in France on 10 June 2023. The aim of this legislation is to establish a framework for the new online influence professions and to make various players in the industry more accountable.

To this end, the new law introduces a legal definition of an influencer (article 1) and prohibits influencers from promoting certain products or services such as aesthetic surgery, products contain nicotine or crypto assets (article 4). It also requires them to identify their promotional publications as such (article 5) and identify where images have been enhanced or produced by AI. Influencers residing outside the European Union must now appoint a legal representative domiciled within the EU (article 9) and take out insurance with an EU based insurer. Finally, the new text gives an active role to platforms hosting influencers, notably by obliging them to set up a process for reporting and removing illicit content (articles 10, 11 and 12). These provisions will not however enter into force until the European Commission has confirmed that they comply with EU law.

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Case law

Europe

Trade mark with a reputation and the necessary link between distinct goods and services

On the basis of Article 8(5) of EUMR No. 2017/1001, the owner of a trade mark with a reputation is entitled to oppose the registration of a trade mark application, regardless of whether the goods covered are identical or similar to those covered by the trade mark with a reputation. However, the Court reiterated that in order to uphold the trade mark owner's claims, it is necessary for the public to establish a link between the trade mark and the application. The Court confirmed the Board of Appeal's approach and held that there was no link between the trade marks at issue because the goods were too dissimilar (the earlier trade mark had a reputation for bread, whereas the application was for goods related to bicycles).

EU General Court, 2nd ch. 2, 24 May 2023, T-509/22

Italy

Court of Florence – historical works of art – image rights

On 21 April 2023 the Court of Florence has handed down a decision which concerns the use of the image of Michelangelo's David in advertising without the authorization of the Galleria dell'Accademia of Florence. GQ magazine had published an image of Michelangelo's David on its cover which, using a morphing effect, was fluidly transformed into the image of a famous model, clearly for advertising purposes. The court’s decision is interesting in that it clearly affirmed for the first time the existence of an image right for a cultural property. This is in line with the rulings of the Italian Supreme Court which have repeatedly confirmed the existence of an image right for legal persons.

The depiction of a cultural property is now also subject to an image right, which can be enforced against third parties upon the initiative of the public body responsible for the protection and valorization of Italy’s substantial cultural properties. The decisive point for the Court was the fact that the Cultural Heritage and Landscape Code (Art. 108, paragraph 3-bis, Legislative Decree 42/2004) allows works of art to be freely used only for the purposes of developing culture and promoting knowledge. In particular, the Court stated, "the rationale behind the provisions under consideration (Art. 108, paragraph 3-bis Cultural Heritage and Landscape Code) clearly outlines a system of protection, which also involves a non-patrimonial aspect pertaining to reproduction of the cultural asset. These aspects constitute the image right of the cultural good.” A warning to all businesses seeking to use Italy’s fantastic landmarks and works of art in their advertising – if the object is commercial, an authorization is necessary.

Supreme court – tic tac®

On 11 May 2023 the Italian Supreme Court has ruled once again on the validity of shape trade marks. The case that came before the Court concerned the protectability of the famous tic tac® sweet container in transparent plastic with a flip lip. In deciding the case, the Supreme Court, which deals only with questions of law, went over the impediments to registration of shape trade marks, reiterating the distinction between shapes imposed by the nature of the product, shapes necessary to achieve a technical result and shapes that give substantial value.

Specifically, according to the Court, a shape imposed by the nature of the product must be understood as that “which is not inspired by a criterion of fantasy or differentiation of the product, but is a useful and convenient shape that exclusively expresses the value, i.e. the essential features of the product”; a necessary shape, however, must be understood as that which is necessary to achieve a technical result such that “it cannot be avoided without thereby compromising the function” of the product; lastly, a substantial shape must be understood as that “whose aesthetic value changes the identity of a product as such, because it increases its commodity value, without changing its function”. Having examined the impediments to the registration of shape marks, the Supreme Court, in line with the first and second instance rulings, confirmed the validity of the trade mark registration for tic tac® sweet container, in a useful decision which summarizes the key points for validity of a shape mark.

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UK

Similarity of marks pivotal in an opposition based on unfair advantage and detriment

The well-known whiskey brand, Jack Daniel’s, who is proprietor of a “family” of marks sharing the common distinctive element “JACK” failed to successfully oppose the registration of a trade mark application for JACK & VICTOR covering whisky and related goods and services. Irrespective of the identity of goods, the UKIPO held that there was no likelihood of confusion between the JACK & VICTOR mark, and the earlier marks relied upon by the Opponent (JACK DANIEL’S, JACK, GENTLEMAN JACK), due to “significant differences” between the marks. The opposition on grounds of unfair advantage, or detriment to, the reputation or distinctive character to the earlier marks similarly failed for similar reasons, and also due to insufficient supporting evidence. Whilst goodwill was found to exist in Jack Daniel’s business in relation to whisky, the passing off claim also failed, on grounds that misrepresentation would not be possible where marks are not sufficiently similar.

Proprietors benefiting from broad protection afforded to trade marks with enhanced distinctiveness and reputation should remain mindful that an opposition will only be successful if the UKIPO is persuaded that a third party mark is sufficiently similar. Where there are significant differences between the marks at issue, compelling arguments and evidence will be required to support the notion that the later mark would be viewed as a brand extension of, or collaboration with, an earlier mark, or otherwise viewed as part of the family of earlier marks.

Key to the outcome in this case was the finding that personal forenames names, such as “JACK” have a low degree of inherent distinctiveness and that the additional elements “& VICTOR” in the applicant’s mark were sufficient to render the respective marks dissimilar.

UKIPO, O/0453/23, of 15 May 2023

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China

Protection of Prior Rights

In an opposition case against a trade mark application for HUA MANLOU covering tea and related goods, the opponent asserted his prior rights to the character name Hua Manlou from a well-known novel written by his father. The applicant presented evidence demonstrating that the term Hua Manlou had appeared in the works of poets from the Tang and Song dynasties, well before the novel was first pubished, and there are also contemporary songs and prose named Hua Manlou. The CNIPA concluded that Hua Manlou is not exclusively associated with the character from the opponent’s father’s novel, and the opponent’s evidence was insufficient to establish a likelihood of confusion. As a result, the opposition claim was rejected.

The name of works and characters can qualify for protection under Chinese law, but it is necessary both to protect legitimate prior rights and to prevent undue restrictions on the public’s freedom to use elements in the public domain. This case sets out the scope of prior rights and prevents improper restrictions on the use of elements in the public domain.

Read more: CNIPA, April 27, 2022, (2022) Trademark Opposition No. 0000053606

Germany

Permissible use of another's trademark in keyword advertising - Higher Regional Court of Braunschweig, February 9, 2023 (Case No. 2 U 1/22)

In keyword advertising, advertisers book keywords with a search engine operator, and when they are entered, the advertisements they have purchased are displayed in the list of results. If the advertiser uses a trade mark or a trade mark-protected designation of a third party as a keyword for his advertisement, the question often arises as to whether this constitutes an infringement of the trade mark or the corporate designation. This question was addressed by the Higher Regional Court of Braunschweig in its ruling of February 9, 2023 (Case No. 2 U 1/22).

The Court followed the established case law of the ECJ and German Federal Court of Justice on keyword advertising. Accordingly, there is usually no trade mark infringement if the advertisement appears in an advertising block that is clearly separated from the hit list and marked as such, and itself contains neither the trade mark nor any other reference to the trade mark owner or the products offered under the trade mark. The Higher Regional Court of Braunschweig clarifies that an "advertising block" clearly separated from the actual search results which is marked as such is not mandatory. The only decisive factor is whether an average internet user can recognize whether the advertisements contained in the hit list originate from the trade mark owner or a company economically associated with him or rather from a third party.

The Higher Regional Court of Braunschweig decided, when internet users are shown an advertisement of a third party on the basis of a keyword identical with the trade mark, there is no impairment of the trade mark's function of origin if a) the advertisement appears before the actual hit list, b) is sufficiently clearly marked as an advertisement and c) itself contains neither the trademark nor any other reference to the trademark owner or the products offered under the trademark. The Higher Regional Court of Braunschweig did not allow an appeal.

There is no publicly available link to the decision (only for subscribers of certain databases), however the press release by the Higher Regional Court of Braunschweig is available here.