Judgment “Puma” of the General Court of the European Union: when reputation alone is not sufficient to characterize the infringement
(GCEU, December 7th, 2022, T-623/21, Puma SE / EUIPO – Vaillant GmbH)

Following the filing in 2018 of an application for the European Union trademark “PUMA”, designating goods in class 11 (appliances and installations for lighting, heating, cooling…), company PUMA SE filed an opposition on the basis of its semi-figurative European Union trademark PUMA registered in class 25 (articles of clothing). It claimed that the reputation of its PUMA trademark had been damaged under Article 8(5) of the EU Trademark Regulation. This article provides that a trademark application may be refused if several cumulative conditions are met, namely: (i) the earlier trademark is registered, (ii) the trademarks at issue are identical or similar, (iii) the earlier trademark has a reputation (in the Member State concerned or in the Union, as the case may be), and (iv) the use without due cause of the contested trademark leads to the risk that undue advantage may be taken of the distinctive character or the repute of the earlier trademark.

The two EUIPO instances rejected the opposition, recognizing reputation of the PUMA trademark but not the infringement. After an appeal, the General Court of the European Union successively took up the conditions of this provision and finally confirmed rejection of the opposition. The main point of assessment concerned the last condition, which implies, as the Court recalls, that without necessarily confusing them, the relevant public can establish a link between the two similar or identical trademarks (point 21). The Court thus recalls the various factors to be taken into account in assessing such a link, which include in particular the degree of similarity between the goods and services at issue.

While the Court found that the relevant public for the two trademarks partially overlapped, it noted that the goods at issue were so dissimilar that the contested mark was “not capable of evoking the earlier trademark in the mind of the relevant public”. It concluded that despite the very high similarity of the two signs and the “high, even extraordinarily high, level of reputation” of the earlier PUMA trademark, no link between the trademarks was established in the mind of the public.

Thus, with this decision, the Court reaffirms that the reputation of the earlier trademark is not sufficient to escape the notion of specialty. Characterization of the link of association in the mind of the relevant public is just as important for the application of Article 8(5) EUTR.

The Council of State partially cancels the ordinance transposing Directive 2019/790 of April 17th, 2019 on copyright and related rights in the digital single market

Ordinance No.2021-580 of May 12th, 2021 transposed into French law certain provisions of Directive 2019/790 of April 17th, 2019 on copyright and related rights in the digital single market. The Directive had to be transposed by June 7th, 2021.

However, in its decision of November 15th, 2022, following claim for cancellation filed by the Multidisciplinary Committee of Artist-Authors (CAAP) and by the League of Professional Authors, the Council of State partially cancelled said ordinance on the grounds that the transposition of the aforementioned Directive was imperfect (Council of State, 10th – 9th chambers combined, November 15th, 2022).

The Council of State specifically targets the transposition of Articles 18 and 20 of the Directive, since the requirement of proportional and appropriate remuneration provided for by the Directive for the benefit of authors is only partially transposed in the Intellectual Property Code.

In practice, these provisions of the Directive are intended to allow authors to contest the remuneration provided for in the contract if they can justify by concrete elements of an inequitable sharing of the value between them and their co-contractor, without being obliged to demonstrate an injury, i.e. a remuneration of the author that is more than seven twelfths lower than the actual exploitation rights (article L. 131-5 of the Intellectual Property Code).

Pending the entry into force of a corrected ordinance, authors can nevertheless directly invoke the provisions of the Directive in their claims since the transposition deadline has now expired.

Entry into force of the unitary patent system: the wait is over

After years of waiting, the unitary patent system will finally come into force on June 1st, 2023. On the one hand, it will allow registration of patents with unitary effect in Europe (at least within the countries adhering to the system) and, on the other hand, the entry into operation of the Unified Patent Court (“UPC”).

The expected advantages are numerous. The unitary patent will indeed allow its holder to benefit from a uniform protection on the territory of application, and no longer from individual protections depending on the designated States, thus reducing the costs relating to its acquisition. Similarly, registration formalities will be simplified.

Above all, by granting the UPC exclusive jurisdiction to hear infringement disputes and nullity suits for both unitary patents and European patents, the UPC Agreement here again simplifies the procedures and limits the costs for the applicants. Indeed, they will no longer be obliged to act before the Courts of each State designated by the patent in dispute. Moreover, they will be able to obtain injunctions and damages, which will take effect throughout Europe. This international Court will finally allow the emergence of harmonized case law in patent matters, by eliminating the risk of divergent decisions from one State to another concerning the same patent.

Launch of discussions on the Design Package

After modernization of the legal framework applicable to trademarks, the European Council invited the Commission to present proposals for the revision of EU legislation on designs, i.e. the amendment of the Community Design Regulation (EC) No.6/2002 and the Directive on the legal protection of designs 98/71/EC, which the Commission did on November 28th, 2022. This announced recast is part of the EU’s action plan for intellectual property, which had already led to the adoption of the Trademark Package.

The proposals aim at harmonizing national design laws and procedures for greater fairness within the EU and simplifying and rationalizing the registration process.

The proposals include reducing fees for the first ten years of protection, facilitating the representation of designs in the application for registration, and introducing the possibility of including several designs in a single application.

In addition, the Commission proposes to include in the regulation a “repair clause”, i.e. the total and immediate liberalization of the reproduction of new designs when they concern spare parts of complex products.

Since their publication, these proposals for a regulation and directive on designs have been the subject of a public consultation open until January 23rd, 2023, the results of which should be taken into account in the process of adopting these texts. Once the final texts have been adopted by the European Parliament and the Council, the Member States will have to transpose the provisions of Directive 98/71/EC as amended within two years. The various provisions of Regulation (EC) No.6/2002, also amended, will apply directly in national law.

The interministerial mission on Metaverses has issued its report

The report on metaverses started by the interministerial mission jointly appointed by the Ministries of Economy, Culture and Digital was submitted on October 24th, 2022 to French Ministers Jean-Noël Barrot and Rima Abdul Malak. This report aims to provide keys to understanding Metaverses, to consider the opportunities but also the emerging risks and to focus on the common objectives of the various players for the coming years.

More than 80 personalities, professionals and organizations were interviewed for this report. Among them are entrepreneurs in virtual and/or augmented reality, in the blockchain field, actors from the cultural sector, artists, video game professionals and other researchers in social sciences, artificial intelligence and computer science.

The report on Metaverses is the first real institutional consideration of the subject. The authors start by trying to define the metaverses, which are characterized as online services “providing access to shared and persistent real-time 3D simulations of spaces in which we can have immersive experiences” .

The authors go on considering what would be a sustainable “metaversial” strategy for France and Europe, namely to organize the Metaverses infrastructure, to support and promote innovation in the field, to start regulating it as soon as possible, and finally to take into account societal and environmental issues.

From an intellectual property perspective, the authors have targeted some of the challenges for the different actors of Metaverses and the protection of their rights. In this respect, they recommended in particular:
– For the actors, to extend their portfolio of trademarks with new registrations, potentially of three-dimensional trademarks in order to protect the digital goods in metaverses;
– To acquire relevant domain names available on the blockchain (for example, with the new extensions “.crypto” and “.eth”);
– To insert the specific use of an artwork inside metaverses in licensing and transfer of rights agreements/clauses, in accordance with Article L. 131-3 of the French Intellectual Property Code;
– For platforms, to implement tools to detect illicit acts in metaverses and digital identification, as well as tools to request via complaints the removal of counterfeit offers or other trademark violations.

Given the diversity and scope of the issues at stake, the authors call for in-depth studies on the various topics discussed. This could remind you of the CSPLA report on NFTs that we mentioned in our previous newsletter!