The use of the sign “Obelix” as a trademark does not necessarily incur likelihood of confusion

On September 7, 2020, a Polish company filed an application at the EUIPO for the word trademark “Obelix” for goods in class 13, which covers weapons and military equipment (projectiles, firearms, grenades, etc.).

On January 10, 2023, French publishing company Les Éditions Albert René filed a cancellation action against the trademark, invoking likelihood of confusion and a damage to the reputation of its prior word trademark “Obélix”.

In a decision issued on March 13, 2024, the EUIPO’s Cancellation Division rejected this request, pointing out that the proof of use of the earlier trademark produced by the French publishing company was insufficient and that its renown had not been demonstrated.

The case was reexamined by the EUIPO’s Board of Appeal, which confirmed the rejection of the claim for cancellation of the subsequent trademark “Obelix in a decision dated November 11, 2024.

The first objection levelled to the French publishing company was that it had provided proof of use that merely demonstrated that the Obélix sign was used as a fictional character, and not as a distinctive sign indicating the commercial origin of the products.

Likelihood of confusion was then dismissed by the Board of Appeal due to the lack of similarity between the products at issue, which are fundamentally different.

Lastly, Les Editions Albert René tried to demonstrate the renown of the “Obélix” trademark by producing numerous evidence (license agreements, merchandising, Parc Astérix). This evidence has been considered as unable to establish the reputation of the “Obélix” trademark. It was therefore considered that the “Obélix” sign was perceived primarily as an illustration of the fictional character (point 60). The Chamber considers that it has not been demonstrated in what way the sign could be perceived as a commercial trademark apart from the fictional character.

The merchandising exploitation is finally not enough to establish the renown of a trademark. Even if the comic strip is renowned, the “Obélix” sign is not necessarily used as a trademark.

‘However, even assuming that the comic series Asterix & Obelix is well-known, this does not automatically mean that the term ‘Obelix’ on its own has a reputation as a trade mark’

EUIPO, Decision of the Second Board of Appeal of 11 November 2024 – R 875/2024-2

The damage to the reputation of the Puma trademark dismissed

In a decision rendered on December 4, 2024, Puma SE’s opposition to the registration of the trademark “LaZZarO by Li Puma”, filed with the EUIPO on 13 October 2020 by Mr. Luca Gottardo Li Puma, was rejected. The company therefore appealed against the decision of the opposition division.

While the reputation of the Puma trademark was not disputed by the Board of Appeal, Puma argued that it had not recognized the damage to the reputation of its brand on the grounds that the public would not establish a link between the disputed signs.

In the case at hand, the earlier Puma trademark, registered for goods in class 25 covering clothing and footwear, was opposed to the trademark “LaZZarO by Li Puma”, registered for services in class 40 relating to recycling and waste disposal.

Considering the differences between these two industries, the General Court of the European Union, in its decision of December 4, 2024, followed the same assessment as the Board of Appeal and ruled that the reputation of the PUMA trade mark had not been damaged.

This position is justified by the lack of proximity between the sectors covered by the trademarks in dispute and by the features of the prior PUMA trademark, which refers to a common noun.

The renowned trademark is not, in fact, exempt from the demonstration of a link between the trademarks, which is necessarily more difficult to demonstrate when the goods or services in question are destined for different target audiences. In this case, the Court ruled that the clothing sector was “fundamentally different” from the recycling and waste disposal industry.

In addition, the court pointed out that the standard of proof required in such a demonstration was increased when the earlier trademark involved a common name, such as one referring to an animal.

TEU, December 4, 2024, case T-30/24, Puma v. LaZZaro

Direct effect of Article 5(2)(a) and (b) of Directive 2001/29 on copyright regarding fair compensation for right owners

On November 14, 2024, the CJEU issued a ruling (case C-230/23) on the direct effect of Article 5(2)(a) and (b) of the Copyright Directive, allowing an individual to invoke it before national courts in the absence of transposition under national law. The case was referred to the Court by a Belgian Court which had to rule on a dispute between REPROBEL, the Belgian collecting society responsible for the collection and distribution of remuneration rights for reprography activities, and company COPACO.

COPACO, which is subject, under Belgian law, to the payment of a fixed fee in its capacity as a distributor of reproduction equipment, has suspended payment of REPROBEL’s invoices, referring to the decision of the CJEU rendered on November 12, 2015 (C-572/13, HEWLETT-PACKARD BELGIUM) which ruled that the flat-rate portion of the remuneration for fair compensation as provided for under Belgian law breaches Article 5 of the Directive. REPROBEL therefore summoned it before the Ghent Business Court, which has referred preliminary questions to the Court to clarify the proper interpretation of Article 5 of the Directive and determine whether it has a direct effect for private individuals.

The Court first considered that Article 5 of the Directive must be interpreted as “meaning that an individual may rely, before a national court, against an entity entrusted by a Member State with collecting and distributing the fair compensation established under that provision, on the fact that the national legislation laying down that compensation contravenes provisions of EU law which have direct effect, since such an entity has, in order to perform that task in the public interest, special powers beyond those which result from the normal rules applicable in relations between individuals”.

Above all, the Court ruled that Article 5 of the Directive had a direct effect. Based on well-established case law, the Court examined whether this provision was unconditional and sufficiently specific to be invoked by individuals before national courts, in the absence of transposition of the directive in question, or in the event of improper transposition. In this respect, the Court based its decision on the beneficiaries of the protection provided for in the disputed provision, the content of this protection and the entity responsible for this protection.

The Court then referred to the analysis of Article 5 as resulting from the HEWLETT PACKARD BELGIUM decision, from which it appears that a fair compensation system comprising an upstream lump sum part, supplemented by a proportional downstream part, must include reimbursement mechanisms to avoid any excessive compensation to right owners. As the Belgian rules on which REPROBEL’s claims were based were found to be contrary to European law, Belgian courts had to set aside the national regulations in order to ensure that the Directive was fully effective.

Drawing consequences from the direct effect of this measure, the Court held that it could be invoked by an individual before the national courts, to set aside the application of incompatible national rules.

CJEU, case C-230/23, 14 November 2024, REPROBEL/COPACO

Parasitism retained for the portrayal of the fictional character Amélie Poulain in an advertising campaign

ME Group France, a company specialized in the exploitation of photo booths, broadcasted an advertising campaign called “Amélie 2.0” in which a Zorro-masked woman appears in a photo booth.

The authors and the exploitation company for the movie Amélie Poulain sued the company that broadcast the advertising on the grounds of author’s right infringement and parasitism.

In a judgment issued on December 19, 2024, the Judicial Court of Paris dismissed the claim of author’s right infringement on the character of Amélie Poulain but did uphold the charges of parasitism against company ME Group France.

On the grounds of infringement, the judges rejected the claims by considering that the scene in the film Amélie Poulain, in which the main character appears dressed as Zorro in a photo booth, is not original.

On the ground of parasitism, however, the judges first noted the individualized economic value that the claimant companies had created through the success of the film since its release in 2001 and then considered the willingness of company ME Group France to position itself in the wave of the movie’s reputation.

The advertising campaign in this case used the physical features of a woman dressed up as Zorro, labelled explicitly as “Amélie Poulain 2.0”.

By identifying the character directly both with her clothing from a scene in the film and her name, the company went beyond a simple creative process and deliberately “took undue advantage of the reputation of the film and that of its heroine”.

The removal of any visual or poster featuring the character “Amélie 2.0” was ordered.

TJ Paris, December 19, 2024, No.22/13834

Statute of limitation for the inventor’s right of authorship runs upon publication of the patent application

The inventor’s right of authorship is covered by Article L. 611-9 of the Intellectual Property Code, which provides that the inventor, whether or not an employee, must be identified as such in the patent, and may also object to this mention.

Unlike the author’s moral right, the Intellectual Property Code does not expressly state that this right is permanent, unalienable and imprescriptible.

In a judgment of January 14, 2025, the 4th chamber of the Judicial Court of Paris, which had been primarily asked to rule on a contractual dispute yet considered the issue of the prescription of the inventor’s right of authorship and its starting point.

An inventor demanded that the Court rule against his former employer for infringing his moral rights due to a breach of his right of authorship. He alleged that a patent application published on 30 May 2014 should have referred to him as the inventor.

The Court held that the purpose of this action for infringement of the inventor’s right of authorship was to obtain compensation. Therefore, this action, having a patrimonial nature, was subject to the five-year limitation period under ordinary law. Article 2224 of the Civil Code provides in this respect that personal or movable property actions are subject to a limitation period of five years from the day on which the holder of a right knew or reasonably should have known the facts enabling him to enforce it.

In the case at hand, the Court considered that the claimant had every opportunity to be aware of the facts enabling him to initiate legal action for contesting the patent and claiming compensation from the date of publication of the patent application on May 30, 2014. It therefore ruled that his deadline for initiating legal action expired on May 30, 2019. On the date of his claim brought in September 2020, the limitation period for his action had therefore expired.

TJ Paris, January 14, 2025, No.19/06678

The remastered version of a music video does not constitute a new work

By an order of January 16, 2025, the interim Judge of the Judicial Court of Paris dismissed the request for preliminary injunction made by the heirs of the director of the music video for the song Bohemian Rhapsody from the band Queen, against a remastered version of this music video broadcasted on YouTube.

The claimants alleged a manifestly unlawful interference in that this remastered version was a new work infringing the director’s moral rights, since it had not been authorized while he was alive in 2019, and did not include his name in the credits.

The interim judge held that the claimants did not demonstrate any difference between the original version of the music video, made in 1975 and broadcasted on YouTube since 2008, and its remastered version. Thus, he rejected the argument that the remastered version was a new work.

As a result, given the peaceful and well-known use of the original work on the YouTube platform (almost 2 billion views since 2008), the lack of changes to the work through remastering and the practices regarding credits on music videos that do not require the mention of the director in the credits, the judge considered that the breach of respect for the name and status of author, and respect for his work was not obvious.

It should be emphasized that this interim order is in line with case law on remastering, which holds that the remastered work is not a new work but a change of technical format that does not alter the work but tends to restore it and does not require any authorization from the author (see, for example, the decisions quoted by the defendants in the proceedings, TGI Paris, December 8, 2016, No.15/10378, confirmed by CA Paris, September 25, 2018, No.17/01341).

TJ Paris, January 16, 2025, No.24/54615

Confirmation of the validity of music publishing agreements providing for a term of the assignment of rights corresponding to the term of their protection

Between 1977 and 1980, the French singer and songwriter Francis Cabrel granted Warner the publishing rights for 24 of his compositions.

After noticing that two of his songs had been illegally reproduced, Francis Cabrel held Warner responsible for several breaches and sued it for the termination of six publishing contracts. Francis Cabrel claimed that the publisher had a general duty to oversee the respect of the author’s moral rights.

Subsidiarily, Francis Cabrel also based his claim on the possibility of unilaterally terminating open-ended contracts. He considered that said publishing contracts, which provided for a term of the assignment of rights equal to that of the author’s rights protection, for up to 70 years after his death, constituted prohibited perpetual commitments and fell under the regime of open-ended contracts.

Through a judgment issued on January 17, 2025, the Judicial Court of Paris completely dismissed his claims.

The Court first considered that while the publishing contract implied a relationship of trust and performance in good faith, it did not involve an obligation of oversight for the publisher.

On the requalification as an open-ended period contract, the Court emphasized that, as a matter of principle, a transfer as a definitive effect and it is only by way of derogation that the intellectual property code provide for limited-term transfer in the field of literary and artistic property. Therefore, a clause providing for an assignment of rights for the entire duration of the term of protection of the song is not illicit, and a contract containing such a clause does not imply a perpetual commitment or an indefinite period.

TJ Paris, January 17, 2025, No.22/12054

Clarification of the interpretation of Articles 3(a) and 3(c) of the SPC Regulation in the presence of a combination product of active ingredients

To what extent can a combination of active ingredients mentioned in a patent, one of which was already disclosed when the patent was filed, be protected by a SPC, even though the active ingredient resulting from said patent had already resulted in a first SPC? This is in essence the question decided by the CJEU in a ruling of December 19, 2024, which clarified the interpretation to be given to Articles 3(a) and 3(c) of the SPC Regulation relating to combination products.

Several preliminary questions were asked by Finnish and Irish Courts, as they were facing disputes between company MERCK SHARP & DHOME and generic drug manufacturers. The first case, in Finland, was about the validity of the SPC relating to a combination of sitagliptin and metformin resulting from a patent relating to the use of sitagliptin for the treatment of diabetes, said combination SPC being subsequent to an initial SPC relating to sitagliptin alone, metformin being already known from the prior art. The second case, in Ireland, was about a SPC granted for the combination of ezetimibe and simvastatin, which resulted from a patent for the use of ezetimibe for the treatment of cholesterol. Once again, an initial SPC had been issued for ezetimibe alone, and simvastatin also belonged to the prior art. Given their similarities, the Court joined these proceedings and examined the questions together, due to their similarities.

The Court first interpreted Article 3(c) of the SPC Regulation, which provides that to be granted, a SPC must cover a product that has not already been the subject of a SPC. In order to determine if a SPC covering a combination product can be delivered, the Court, on the basis of the definitions of a product (as resulting from the SPC Regulation) and active ingredient (as resulting from European case law), considered that a product made with only one active ingredient was different from a combination product made with active ingredients. The Court then recalled that the conditions of Article 3 of the SPC Regulation, cumulative, must be interpreted autonomously from one another. On this basis, the Court ruled that it’s not necessary to examine if the 2 active ingredients at issue in a combination SPC are protected by a registered patent, condition resulting from Article 3(a) of the SPC Regulation, in order to assess compliance of the SPC with Article 3(c).

The Court deduced that Article 3(c) “must be interpreted as not precluding the grant of a SPC for a product consisting of two active ingredients even if one of those two active ingredients has already been, alone, the subject of an earlier SPC and it is the only one to have been disclosed by the basic patent, whereas the other active ingredient was known at the filing date or priority date of that patent”.

Subsequently, the Court continued its analysis with the interpretation of Article 3(a), in order to determine if it is sufficient for the product to be mentioned in the claims of the patent to be protected by said patent. The Court based its reasoning on the 2-step test established in the TEVA decision (C-121/17), according to which a product is protected by a basic patent only if it is necessarily falls under the invention covered by said patent, and if each of its active ingredients is specifically identifiable.

In accordance with this decision, the Court judges that “it does not suffice that a product is expressly mentioned in the claims of the basic patent in order for that product to be regarded as being protected by that patent, within the meaning of [Article 3(a)]. It is also necessary, in order to satisfy the condition laid down in that provision, that that product necessarily fall from the point of view of a person skilled in the art, and in the light of the description and drawings of that patent, under the invention covered by that patent at the filing date or priority date”.

Finally, the Court ruled on the question of whether a combination product does fulfill the condition of Article 3(a) and is indeed protected by a basic patent when the active ingredients of the combination are expressively named in the patent claims, and that it occurs that both active ingredients can be used together, when one of them is in the public domain.

Applying the 2-step test to the combination product, the Court asserts that the combination must be disclosed by the patent, and that it must resolve (or participate to resolve) the technical problem disclosed by the patent. The fact that one of the active ingredients of the combination is already known does not obstruct the test, in the condition that, contributing to the solution of the technical problem, the combination as a combined effect that goes beyond the simple addition of the effects of the active ingredients.

Therefore, the Court concludes that “a product consisting of two active ingredients (A+B) is protected by a basic patent, within the meaning of [Article 3(a)], where A and B are expressly mentioned in the claims of that patent and the specification of that patent teaches that A may be used as a medicinal product for human use alone or in combination with B, which is an active ingredient in the public domain at the filing date or priority date of that patent, provided that the combination of those two active ingredients necessarily falls under the invention covered by the same patent”.

CJEU, cases C-119/22 and C-149/22, December 19, 2024