Queen Mary Journal of Intellectual Property

Month: May, 2016

US Supreme Court finds no copyright violation in Google Books Library project

by Sahana Pal

In a landmark decision that brought an end to the decade-long legal battle between Authors Guild and Google, the US Supreme Court dismissed[1] the former’s writ of certiorari on 18 April 2016, effectively agreeing to the Second Circuit Court of Appeals decision[2] that Google has not violated any copyright law in creating their electronically searchable mammoth book library of more than 20 million books.

The Google Books Library Project, a service that started in December 2004, makes and retains digital copies of books and magazines submitted to it by authors and publishers through the Google Books Partner Program, allows the libraries that submitted a book to download and retain a digital copy, and allows the public to search the texts of the digitally copied books and see displays of snippets of text.

Authors Guild, America’s oldest and largest professional organization for writers then brought a suit against Google in 2005, along with Association of American Publishers, alleging “massive copyright infringement”. Their main issue was that Google’s inclusion of book “snippets” was too substantial in nature, thus challenging the definition of “fair use” under section 107 of the US Copyright Code.

The suits were consolidated and a settlement reached, where Google decided to pay $125 million to copyright holders in return for the right to continue using the scanned results. But then a district court ruling rejected the settlement on grounds of Google’s unfair competition advantage. An amended suit was filed in 2011, which got dismissed in 2013, as the district court found the project abiding by the rules of fair use. Authors Guild appealed.

The Court of Appeals for the Second Circuit concluded that Google’s copying was transformative within the meaning of Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-585 (1994), did not offer the public a meaningful substitute for matter protected by the plaintiffs’ copyrights, and satisfied § 107’s test for fair use. Specifically, the Court noted that:

[T]he purpose of Google’s copying of the original copyrighted books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it.

Snippet view adds important value to the basic transformative search function, which tells only whether and how often the searched term appears in the book. Merely knowing that a term of interest appears in a book does not necessarily tell the searcher whether she needs to obtain the book, because it does not reveal whether the term is discussed in a manner or context falling within the scope of the searcher’s interest. For example, a searcher seeking books that explore Einstein’s theories, who finds that a particular book includes 39 usages of “Einstein,” will nonetheless conclude she can skip that book if the snippets reveal that the book speaks of “Einstein” because that is the name of the author’s cat. In contrast, the snippet will tell the searcher that this is a book she needs to obtain if the snippet shows that the author is engaging with Einstein’s theories.

Google’s division of the page into tiny snippets is designed to show the searcher just enough context surrounding the searched term to help her evaluate whether the book falls within the scope of her interest (without revealing so much as to threaten the author’s copyright interests). Snippet view thus adds importantly to the highly transformative purpose of identifying books of interest to the searcher.

Authors Guild expressed disappointment on Supreme Court’s affirmation of the decision, saying the Court was “blinded by the public benefit arguments” resulting in a “colossal loss” for the authors, as effectively the ruling has held “Google, not authors, deserves to profit from the digitization of their books.”[3] Criticizing the Second Circuit’s lack of empathy towards the emerging online book market, Mary Rasenberger, executive director of the Authors Guild commented that “Authors are already among the most poorly paid workers in America; if tomorrow’s authors cannot make a living from their work, only the independently wealthy or the subsidized will be able to pursue a career in writing, and America’s intellectual and artistic soul will be impoverished.”

Google however, was all praises for the judgment, as it believed the decision was in the best interest of the authors as well as the public.

Nevertheless, what can be said for sure without taking sides, is that the decision has certainly stretched the boundaries of “fair use exception” under copyright laws, and opened up a whole new dimension of archival digitization. Especially for non-profits and libraries with limited financial resources, this decision comes as a ray of new hope, as Google Books finally become “legal” after a decade.

Sahana Pal

Assistant Editor, QMJIP


[1] Full decision available at http://www.supremecourt.gov/orders/courtorders/041816zor_2co3.pdf

[2] Full decision available at http://www.ca2.uscourts.gov/decisions/isysquery/b3f81bc4-3798-476e-81c0-23db25f3b301/1/doc/13-4829_opn.pdf

[3] See https://www.authorsguild.org/industry-advocacy/supreme-court-declines-review-fair-use-finding-decade-long-book-copying-case-google/

Cadbury’s appeal falls flat as Registrar of Trade Marks refuses to delete part of their purple trade mark

by Sahana Pal

Cadbury’s appeal for deleting an alleged purple series mark from UK Trade Mark Register was recently dismissed by the High Court on 18 April 2016.[1]

The original application was registered on 19 May 1995 (the 876 mark) for a swatch of Cadbury purple and the description of which was given as “The mark consists of the colour purple”. There was an initial objection based on lack of distinctiveness which was eventually overcome. Then the Registrar was concerned with the description of the mark and, following a formal request by Cadbury to clarify that description by a proposed form of words, on 9 September 1997 the Registry responded with a suggestion that the mark be amended to “The mark consists of the colour purple, as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”.

But following the 2014 Court of Appeal decision in Societe Des Produits Nestle SA v Cadbury UK Ltd , [where it was held that Cadbury’s attempt of registration of the colour purple (different from the 876 mark) as “applied to the whole visible surface” or being “the predominant colour applied to the whole visible surface” of packaging of chocolate goods lacked the required clarity, precision, self-containment, durability and objectivity to qualify for registration and did not satisfy the requirement of “a sign” that was “represented graphically” for the purposes of EU Directive 2008/95 Article 2] Cadbury apprehended an invalidity attack on its 876 mark as well, and proposed to strike off the section “or being the predominant colour applied to the whole visible surface” from their description – pursuant to the Trade Mark Rules 2008 r.28(5) – thereby limiting the mark to a sign consisting of the colour purple applied to the whole visible surface of the packaging of its goods.

However, the hearing officer dismissed Cadbury’s application, stating that the Court of Appeal’s judgment could not be read to the effect that the verbal description of the mark was actually a description of two marks, and accordingly there was no mark to be deleted at all, making any further proceedings contrary to Trade Marks Act 1994, s 44. Cadbury appealed, contending that the officer had made a material error of principle in not recognising that the 876 mark was a series mark consisting of two marks that differed only as to matters of a non-distinctive character not substantially affecting the identity of the mark, and that, once his error was acknowledged, the appeal had to be allowed.

Mr Baldwin QC, sitting as a Deputy Judge of the High Court, took note of the arguments and held that Cadbury’s proposal was “fundamentally flawed” as

the 876 mark is not a series mark, the description is not of two marks or of a series of marks, there are no identifiable members of any series which might be the subject of a request for deletion, accordingly any request for such a deletion cannot be entertained and the appeal must be dismissed.

He further noted that the Court of Appeal’s reasoning clearly did not apply here, since there the Court had referred to the description of the mark as a whole and did not distinguish between them as two separate marks. In the current case, the mark in suit’s ‘alternative’ description encompassed a large but unknown number of signs with only one characteristic in common – purple being the predominant colour applied to the whole visible surface of the packaging. That single common characteristic was insufficient to satisfy the section 41 criteria for series trade marks, because in a hypothetical sign, although purple might be the predominant colour in terms of area, there could be yellow or green spots as well, which contributed to the sign’s overall distinctive character. The disputed 876 mark thus covered a number of marks which were not part of any series, and consequently, no deletion of the requested wordings was possible.

[1] Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks [2016] EWHC 796 (Ch)

Sahana Pal

Assistant Editor, QMJIP


‘The New Trade Mark Defenses System’

by Maria Tsouvali

In 2008 EU Commission decided that it was time for a groundbreaking reform in the European Trade mark system. Eight years later, notable changes have been brought into effect by the new (EU) 2015/2436 Directive and (EU) 2015/2424 Regulation. In the light of this, from 23 March 2016, the name of OHIM became European Union Intellectual Property Office (EUIPO) and the name of CTM changed as to European Union trade mark (EUTM). In this article I will follow the changes relating to trade mark defences.

According to Article 12 of the Regulation[1] and Article 14 of the Directive[2], a Trade mark proprietor is not be entitle to prohibit third parties from using a Trade mark in course of trade where it is the name of a natural person.  As with all of the defences this is subject to the proviso that the use is ‘in accordance with honest practices regarding industrial or commercial matters’[3].

The ‘own name defence’ has been narrowed down to ‘natural persons’, excluding corporations, business entitles and partnerships when relying on that kind of defence[4]. In that case it is crucial for enterprises to consider appropriate searches before adapting tradenames .That would ensure that there are no relevant third-party rights that could potentially be infringed. It is therefore important to declare that this defence has been successful in the past regarding company names. In Stichting BDO and others v BDO Unibank, Inc and others[5] the English High Court held that the defendants’ use of the marks BDO and BDO REMIT did not infringe Stichting BDO’s Community trade mark. Although this case was a rare example of the ‘own name’ defence it succeeding in the UK courts something which was altered under then new legal regime. [6] The previous provision (Article 6 (1) (a) of the TM Directive) has been interpreted broadly by the ECJ as well. In AnheuserBusch v.Budejovicky Budvar the ECJ extended the use to trade names[7].Through those changes Commission seemed to be interested in imposing its original intention rather than letting courts broadening the interpretation of such defence which may cause damage to Trade Mark holders[8].

Due to the current reforms, another significant change has been made. The descriptiveness defence has been extended to cover the use of non-distinctive signs as well. More specifically, signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering service or other characteristics of goods or services can be applied by a defendant in order to avoid trade mark infringement. [9] This will enable Trade mark proprietors of using non-distinctive components of earlier registered marks as decorations or as indications of their own marks. Thus, we assume that the new defence will apply only to those components of registered marks which remain non distinctive and not to the non-distinctive elements which have acquired distinctiveness through use. In that respect its application would be slightly different from the descriptive use exception. [10]Moreover, applications are rejected only when they consist exclusively of non-distinctive elements, so it is possible to register marks that include of non-distinctive components as well. Consequently one may imply that the justification behind the new adaptations is Commissions intention to endow some freedom to Trade mark proprietors.

The reform package brought another fundamental change regarding the extension of the ‘intended purpose’ defence as to a more general referential use. The new amendment of the EU law applies where the use of a third party sign is ‘necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts’.[11]The scope of law is extended to all circumstances where the TM is being used for the purpose of identifying or referring to goods or services as those of the proprietor of the EUTM, offering greater protection for suppliers of accessories or spare parts. [12] Without a doubt, that change offers remarkable freedom to European traders giving them the opportunity to refer to Trade mark owner’s goods or services by using another trader’s mark. This provides equivalent freedom as in the United States where a body of case law has emerged, in which traders are permitted to such acts. [13]Even though this change brought a ‘notional broadening of the exception we should underscore that in terms of reform it did not extend the defence too much[14].  Max Planck Institute had suggested the broadening of the exception as to parodic references as well which was not finally included to the new reform package[15].

Regarding the ‘own name defence’ narrowing the scope of the limitation does not seem appropriate. It creates unequal conditions for trade names in case of conflicts regarding company names. Regarding that issue, there have been disputes within the member states which were resolved by the ECJ to the contrary of what was finally adopted by the new law.[16] Using the rule of proportionality the EU Commission should have tried to balance the rights to property (Art. 1 of Protocol No 1 ECHR) and the rights to freedom of expression (Article 10 ECHR) in favor of the broadening of that exception. Enterprises would be limited in using certain company names which may be well established in course of trade. While every rule is tested by fair use[17] this would not cause any unfair judgements against Trade mark proprietors if the Article kept its broad definition.

On the other hand, regardless the proposals of the Max Planck Institute[18], the EU Commission denied the adaptation of a parody exception in contrast with Copyright Law, where parody exists as a defence (Article 5(3)(k) of the InfoSoc Directive)[19]. In a case where a trader offers goods that have expressive qualities this could lead to trade mark infringement and consequently to restriction of freedom of speech.[20] An example drawn by US case law would be helpful here. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog the plaintiff was selling dog toys under the name ‘Chewy Vuitton’[21] using the name of the famous warehouse. This would have been a case defence under the parody exception if it was finally adopted. In general an exception for communication purposes to protect trade marks in artistic works was denied as well, making us wonder that in vast harmonization processes fundamental rights –like freedom of speech- sometimes are being compressed .

Maria Tsouvali

Assistant Editor  QMJIP

[1] Regulation (EU) 2015/2424.

[2] Directive(EU) 2015/2436.

[3]   L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1062.

[4] Steven James, ’Significant changes to the EU trade mark system ahead’, E- commerce law & policy journal, p 2.

[5] Stichting BDO et al. v. BDO Unibank, Inc et al., [2013] EWHC 418 (Ch).

[6] http://www.inta.org/INTABulletin/Pages/UNITEDKINGDOMOwnNameDefenseSuccessful.aspx

[7] Case C-245/02 – AnheuserBusch v. Budejovicky Budvar.

[8] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1064.

[9] Art.14(1)(b) of (EU) Directive 2015/2436 and Art 12(1)(b) of (EU) Regulation 2015/2424.

[10] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1069.

[11] Art 14(1)(c) of (EU) Directive 2015/2436 and Art 12(1)(c) of (EU) Regulation 2015/2424.

[12] Steven James, ’Significant changes to the EU trade mark system ahead’, E- commerce law & policy journal, p 2.

[13] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1071.

[14] L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1071.

[15] Max Planck Institute,’Study on the Overall Functioning of the Community Trade Mar System’(2010), [2.258]-[2.262].

[16] Case C-245/02 – AnheuserBusch v. Budejovicky Budvar.

[17] Art 14(2) of (EU) Directive 2015/2436 and Art 12(2) of (EU) Regulation 2015/2424.

[18] Max Planck Institute,’Study on the Overall Functioning of the Community Trade Mar System’(2010),[2.262].

[19] http://europeanlawblog.eu/?p=2539

[20]L.Bently and B.Sherman ‘Intellectual Property Law’,(2014),Oxford, p. 1093.

[21] Louis Vuitton Malletier S.A. v. Haute Diggity Dog, (4th Cir. 2007).


by cristinaberra

Hashtags, which first appeared on Twitter with the function of linking users’ posts, have become so popular that they are now widespread on every social media, providing brands with new ways to engage with consumers. Hashtags appear in fact to be a powerful marketing tool, that allows business to drive online conversations about their brands, study consumers’ reactions and ultimately strengthen the connection they have with the public, thus enhancing their brands’ fan base. In such a context, it is not uncommon to see competitors trying to divert the content stream tied to a hashtag with their own products and marketing messages. That is why companies are more and more seeking protection for the hashtags they use, especially through trade mark law. But can a hashtag be registered as a trade mark?

The US Patent and Trademark Office defines hashtags as forms of metadata comprised of a word or phrase prefixed with the symbol ‘#’ and consider them registrable, but only if they function as identifiers of the source of the applicant’s goods or services. It seems then that the registration of hashtags follows the same rules that are applied to any other trade mark’s registration: essentially, the sign has to be capable of distinguishing the goods or services of one undertaking from those of another. This requirement however appears not so easy to meet, as hashtags often tend to be descriptive terms or slogans, which lack inherent distinctiveness. In such situations, the only way to secure registration is to prove secondary meaning, which seems anyway challenging, because slogans are often treated merely as a form of advertisement rather than source identifiers.

Moreover, it is questioned if the registration of hashtags may raise freedom of speech issues, especially given the innate nature of their use: such tools are in fact intended to be disseminated online, by social media users, to group entries into topics and to create links among posts having the same content, and not to be subject to some forms of private property. One of the biggest opponents of the registrability of hashtags is their creator Chris Messina, who believes the effort to trade mark hashtags to be misguided. In his view, “trademarks don’t belong on hashtags. Hashtags are a kind of conversational commons, and should be owned by no one but the crowd.” Companies however assure that they have no intention to prevent customers and fans from using the hashtags as a trade mark, as their only target is to stop competitors from using them for their sole commercial gain, trying to divert the online traffic and use it as an advertising channel.

Turning to trade mark infringement, according to the relevant provisions, if the use of a hashtag creates a likelihood of confusion on the public or makes it appear that there is a connection or link with the trade mark owner, an infringement might then be found. The grounds of an infringement action have of course to be assessed on a case-by-case basis and while considering the facts, the question that the Courts should try to answer is whether the use of the hashtag really has the power to create a likelihood of confusion or association, or simply promotes an intended social media message. In fact, the possibility of posts “going viral” can happen very quickly and in such circumstances a delicate balance should be drawn between the occurrence of infringement and the will of capturing the public’s attention at a given moment.

Ultimately, it will be on the Courts to have the final say on establishing the “legal status” of hashtags and their enforceability as trade marks. Until then, as brands surely will not stop to seek trade mark protection, they should at least #registerwithcaution.

Cristina Berra

Assistant Editor, QMJIP

From “Signing Off” to Passing Off. UB40 and the dispute over the use of the band’s name

by cristinaberra

“Signing Off” was the debut album of UB40, a British reggae/pop band which was formed in Birmingham in 1979 and over time has sold more than 70 million records, achieving great success both nationally and internationally.

The band was originally formed by nine members and this line-up stayed unchanged for nearly thirty years until 2008, when the frontman Ali Campbell left the group and was followed shortly by the keyboard player Mickey Virtue. In 2013 Astro left the band as well and the three formed a new version of the group, calling themselves “UB40 featuring Ali Campbell, Astro and Mickey Virtue”.

These facts have led to the recent lawsuit , where the remaining six members have claimed passing off on the goodwill of the group and the use of the band’s name. In that dispute the High Court recently considered the defendant’s application for summary judgment in  Campbell v Campbell (unreported, 21 March 2016).

Here are the facts of the case.

Goodwill is a form of intangible property that has be defined as “the benefit and advantage of the good name, reputation and connection of a business”.[1] Typically, passing off actions concern the goodwill that arises in relation to the name, symbol or logo that has been employed by a trader and consequently has been associated with its business.

The members of the band as in the original complete line-up were all employed by a company, which was the sole owner of the goodwill in the band and in the band’s name. In fact, according to the contracts of employment, the band’s members had no right to use the “UB40” name, and would not have any after departing from the group. The company went into administration in 2006 and into voluntary liquidation in 2008, and the group’s members then set up a second company, which however did not acquire the business from the first one. Successively, Ali Campbell, Astro and Virtue left, founded their new band and started to perform under the name “UB40”, which was thus used by both the two groups. The claimants (the remaining members of the original line-up) then sued the members of the newly founded group, arguing passing off on the use of the band’s name. The defendants in turn applied for summary judgment to strike out the case on the basis of an alleged assignment – from the first company’s liquidators – of the first company’s business and goodwill.

On the basis of the facts, the Court essentially held that any assignment of goodwill by the liquidators was ineffective because the company – after going into administration – ceased to carry on any business and, by so doing, abandoned any goodwill, so that it could no longer be assigned. Citing Ad Lib Club v Granville Case[2], the Court specified that, if the company had merely suspended the business activities, with a clear intent to resume them at some point, the assignment might have had some efficacy. However, the facts did not prima facie show this intent, which might nevertheless be assessed in the course of the trial.

This judgment has thus opened the way for a full High Court trial and it still has to be seen if the Court will eventually find passing off in the present case. What appears certain so far is that Ali Campbell and his fellows will “vigorously defend” the claim made against them.

Cristina Berra

Assistant Editor, QMJIP

[1] IRC v Muller’s Margarine [1901] AC 217

[2] Ad Lib Club Ltd v Granville [1971] 2 All E.R. 300

Is sportswear a trend in trade mark litigation?

by Federica Pigozzo

In recent years sportswear has clearly emerged as one of the biggest trends in the fashion industry. The aesthetics of brands such as Alexander Wang and Vetements is heavily influenced by cuts, silhouettes and materials that traditionally belonged primarily to activewear. Stella McCartney, Yohji Yamamoto, Raf Simons and Rick Owens have all collaborated with the world’s top sportswear labels. In the ultimate attempt to climb the fashion pyramid and gather an even wider fanbase, apparel giants including Puma, Nike and Adidas have enlisted celebrities of the likes of Rihanna, Kanye West and Pharrell as artistic collaborators.

Despite its evident benefits in terms of commercial growth and revenue streams[1], the developing bond between fashion and sportswear entails at the same time a number of conceivably alarming consequences. One of the most relevant among them is the rise of “inspired” pieces coming not only from high street stores but also from high fashion brands.

Such phenomenon is particularly evident when considering the trainers production: as stated in a recent interview by Arthur Hoeld, head of Adidas Original, ‘the number of high-end fashion brands that are copying our silhouettes […] is unheard of’[2]. Stan Smith and Superstars are undoubtedly some of Adidas’ most famous footwear models. First produced in the ’60s, they have recently taken the fashion industry by storm, quickly becoming the to-go choice to achieve that understated yet chic look that fashion editors have deemed to be in trend for the past few seasons. A glance at the production of H&M and Zara, as well as of Isabel Marant, Saint Laurent and Givenchy reveals the extent to which these silhouettes have been used as a source of inspiration. In fact, it is possible to notice how shoes that heavily channel Adidas trainers have been introduced in their collections by all the abovementioned brands and many more.

The risks attached to the described practices are clear. Even though in most cases the original producers decide not to address their imitators, trade mark law has once again proved to be an effective tool when a global brand’s repute is at stake and the threat to its reputational capital is too high to be ignored: as fashion trends keep coming back in style in a seemingly ceaseless motion, in the same way cases involving sportswear marks appear to repeatedly serve as the focus of the trade mark discussion. Two recent decisions on the matter brilliantly illustrate such tendency.

In the first one, Shoe Branding Europe BVBA v. Adidas and OHIM (case C‑396/15 P)[3], the CJEU upheld the decision of the General Court and therefore Adidas’ opposition against Shoe Branding’s European Union Trade Mark (EUTM) application for a two-stripes positional mark on a shoe. The second one, Puma SE v. OHIM and Sinda Poland Corporation (case T‑692/14)[4], saw Puma being awarded a victory in its claims against Sinda’s application for a EUTM regarding a logo in the shape of a leaping creature.

It is particularly interesting to note that in both cases the European judges overruled the previous decisions – by EUIPO Opposition Division and Boards of Appeal – on the grounds of similar arguments based on the notions of “global analysis” and “average consumer”, as well as on an examination of the criterion of similarity between the marks as per sec. 8(1)(b) Council Regulation 207/2009.

When investigating on the possible visual, aural or conceptual similarity between Sinda’s two-stripes position mark and Adidas’ three-stripes figurative one, the Board of Appeal found them to be visually dissimilar: the different number of stripes and the signs’ different location were considered to be enough to give them a distinct appearance. In fact, as the marks involved were of pictorial nature, a phonetical comparison could not be performed and neither of them was found to convey a relevant conceptual meaning. Accordingly, the Court concluded for their overall dissimilarity[5]. In the same way, the Board of Appeal confirmed the rejection of Puma’s opposition for the reason that their trade mark and Sinda’s sign did not share any visual element: if the earlier mark clearly represented a jumping feline, the one applied for seemed to depict an unidentified creature composed of features coming from different animals[6].

In both cases, the failure of the similarity test led to a lack of compliance with one of the requirements set out in sec. 8(1)(b) and therefore to a lack of infringement altogether: as the similarity of signs is a conditio sine qua non under the abovementioned provision, the enhanced distinctiveness or reputation of the earlier mark and the fact that the good or services in question were nearly identical were considered as irrelevant in the judge’s assessment.

Following appeals by both Adidas and Puma, the General Court reversed the previous judgements on similar grounds.

First of all, it was argued that the Board of Appeal failed to conduct an overall estimate of the marks in question but instead focused on slight differences between them, consequently overlooking the many features in common. On the contrary, the global analysis imposed by sec. 8(1)(b) requires the marks to be evaluated from the average consumer’s perspective, namely as a whole and by taking into account the factor of imperfect recollection[7]. In the light of such considerations, the Court ruled that neither the stripes’ different number and inclination nor the animals’ opposite leaping direction and physical features were enough to view the marks as dissimilar: in both cases, it was found that the aforementioned discrepancies were of merely minor nature and that the overall similar impression produced by the marks on the consumers would not be substantially influenced by them[8]. In the Adidas case, the CJEU reached the same conclusion and therefore confirmed the General Court’s findings[9].

Secondly, the judges further clarified the meaning of the average consumer criterion. Within their arguments, both Shoe Branding and Sinda stated that the notion should be regarded in the context of the specifications of the considered market. Thus, the consumer of expensive sports footwear uses a relatively higher degree of attention and is ‘informed, attentive, not easily fooled and well able to distinguish between different brands’[10]. Once again, both the CJEU and the General Court dismissed said assertions and explained that sport shoes should be considered as normal, everyday goods and that the reasonably well informed, observant and circumspect consumer only adopts the average degree of attentiveness when purchasing them[11]. As a consequence, the likelihood of confusion would be reasonably higher.

If we adopt a broader perspective in acknowledging these findings, it is easy to see how they assume a substantial relevance when considered in the context of the fashion industry. Silhouettes and shapes are the essence of a designer’s creative exercise; nonetheless, they are easily copied but only protectable with great difficulty and under limited circumstances. In case of infringement, trade dress protection generally constitute a useful tool under US trade mark law[12]. However, the hereby described decisions seem to indicate that traditional and especially non-traditional trade marks can be effectively used by fashion brands to seek a protection that can cover to an extent their trade dress, even within the less favourable framework of EU trade mark law.

Federica Pigozzo

Associate Editor, QMJIP


[1] See http://www.businessoffashion.com/articles/intelligence/nike-adidas-sportswear-fashion

[2] http://www.reuters.com/article/us-adidas-fashion-idUSKCN0UZ0WA



[5] Case T‑145/14, Adidas AG v. OHIM and She Branding Europe BVBA, paragraph 26.

[6] Case R-2214/2013-5, Puma SE v. Sinda Poland Corporation, paragraph 24.

[7] Case T-692/14, Puma SE v. OHIM and Sinda Poland Corporation, paragraph. 32.

[8] Ibid, paragraph 33-34; case T‑145/14, paragraph 44.

[9] Case C‑396/15 P, Shoe Branding Europe BVBA v. Adidas and OHIM.

[10] Ibid, paragraph 12. See also Case T-692/14, paragraph 21.

[11] Case C‑396/15 P, paragraph 24; case T‑145/14, paragraph 26.

[12] See for example Adidas America, Inc et al v. Payless Shoesource, Inc., No. 3:2001cv01655

Easter rabbits: a fairy tale on communication right

by federicapezza

A famous rabbit, a bunch of half-naked models and the “netizens” society. These are the main characters of the story I am going to tell you today. But before I start, some clarification is required: it’s nothing about Easter nor an adult movie version of Bugs Bunny. Forget the chocolate rabbits and the cartoons.

This story is a different one: it has a starting point, a development and obviously, as the finest of traditions, a big question mark as a conclusion.

Let’s start at the beginning.

Once upon a time, in Copyright Law, the communication to the public right constituted one of the three main internationally recognised rights of the author. This right, which has existed since the Berne Convention, is aimed at rewarding the copyright holder for the public performance of his original work in the theatres.

Until this point, everything was (kind of) right.

But then an innovation occurred. The content could now be communicated to a public situated in a different place at the same time (broadcasting) or even at a different time (making it available on the Internet). Further, on the internet, even the practice of hyperlinking became a new issue.

Nothing was right anymore.

And here we are again with our rabbit. Because one of the main cases concerning hyperlinking deals with the famous Playboy bunny.

In the GS Media case[1] the ECJ court is going to analyse whether or not the defendant, a popular Dutch blog, infringed the communication to the public right by posting links to pictures meant for publication in the Dutch version of Playboy magazine, which had been leaked on an Australian server.

According to the previous Svensson case, the criterion to apply when dealing with “hyperlinking” is the presence of a “new” public, which was not originally considered by the right holder. Thus, the consequence was that every time the content was made freely available or authorised on the internet, given the lack of a new public, there was neither communication nor infringement of the right.

But what happens if the content has not been authorised? Does this amount to infringement?

This is the big question mark that closes our story and that is going to be resolved, hopefully in the upcoming weeks.

On 7th of April, Advocate General Wathelet delivered his opinion in GS Media BV v Sanoma, opining that linking to IP protected subject matter which was uploaded without consent of the right holder would not amount to communication to the public if the material was previously accessible.[2]

Looking ahead to the decision, we can anticipate that a positive outcome would result in an onerous obligation for any website owner using hyperlinks to check the content provided, in order to verify whether or not it has been authorised.

Anyway, let’s just hope this rabbit is jumping in the right direction.

[1] C- 160/15 GS Media

[2] http://curia.europa.eu/jcms/upload/docs/application/pdf/2016-04/cp160037en.pdf

Federica Pezza

Assistant Editor, QMJIP

Trademark parody and dilution: what if the mark’s owner does not get the joke?

by cristinaberra

Recently, there has been much talk on fashion magazines and blogs about the newly founded US brand Vetememes evoking the cult French brand Vetements. The web community has positively embraced Vetememes raincoats mimicking Vetements’ ones and quite uniformly agreed that the garment amounts to parody, without really questioning if it can be considered as such and whether the Paris based fashion company will file a lawsuit for trademark infringement and dilution. In this event, would the trade mark owner be likely to succeed or would the Courts take a parody defence into account, supporting Vetememes’ conduct?

US trademark law expressly provides a fair use defence for parody within the exceptions for a dilution claim: according to 15 U.S.C. §1125 (c) (3), if the use of a famous mark amounts to a parody[1] and does not constitute a designation of source, it cannot be actionable as dilution. If this provision can be quite easily applied in a non-commercial context – such as in pure political or critical speech – trademark parody in the course of trade creates bigger issues, as the provision does not extend the fair use defence to parodies used as trademarks.

However, recently US courts have shown openness in interpreting the “commercial” use of parody in relation to claims of trademark infringement and dilution (see, for example, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252, 4th Cir. 2007, Louis Vuitton Malletier SA v My Other Bag Inc, 1:14-cv-034, 2016). First, according to the interpretation given by the Courts, infringement would likely to be found only when the claimant could demonstrate a likelihood of confusion between the mark and the alleged parody in relation to the origin of the goods. Moreover, as far as dilution claims are concerned, blurring appears hard to prove in case of effective parody, as the Courts tends to consider that a parody does not threat the uniqueness of the mark, rather it reinforces and enhances its notoriety in the eye of the public. Dilution by tarnishment, which occurs when the use of the similar sign harms the reputation of the senior trademark, looks even harder to demonstrate in case of parody, as it has usually been found in obscene contexts or in relation to illegal activities (see, for example, University of Kansas and Kansas Athletics Inc., v Larry Sinks Clark Orth and Victory Sportswear, LLC., 644 F. Supp. 2d 1287, 1306; PepsciCo, Inc #1 Wholesale LLC and others 84 USPQ 2d 1040).

That being said, apparently there is no need to worry about legal actions in the case at hand. In fact, according to the New York Times, “Vetements will not be filing any lawsuits over the Vetememes raincoat and hope that he has enjoyed making his project as much as we [Vetements] do making our clothes”[2]. Contrary to others, some famous marks’ holders seem – finally – to get the joke.

Cristina Berra

Assistant Editor, QMJIP

[1] US Courts have acknowledged that a successful parody must initially bring to mind the original work, but it must be clever enough to be clear that it is not the original and is not even connected with it, being just a humorous take-off on it (see Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ. Group, Inc., 886 F.2d 490, 494 (2nd Cir. 1989).

[2] http://www.nytimes.com/2016/04/01/fashion/vetements-wont-be-pouring-cold-water-on-parody-raincoat.html?_r=0

May 2016 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in May 2016. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.


  • 3 May – Oxford – OIPRC – Drones and Privacy in Public – Link.
  • 4 May – London – Osborne Clarke – The Internet of Things III | security by design – Link.
  • 5 May – Blackburn – IPO – Understanding IP – An Interactive Workshop – Link.
  • 5 May – Glasgow – CREATe – Fashion as urban creative economy; start ups, IP and the rise of e-commerceLink.
  • 5 May – Manchester – LES – IPEC – The Judge’s Perspective from HHJ Hacon Link.
  • 5 May – Oxford – OIPRC – Challenging Compliance with International Intellectual Property Norms in Investor-state Dispute Settlement Link.
  • 6 May – Leeds – MBL – Registered Designs & Design Right Litigation ExplainedLink.
  • 6 May – Manchester – MBL – IP for Commercial Lawyers – A Practical GuideLink.
  • 9 May – London – LSE – Building, Managing and Monetizing Your IP PortfolioLink.
  • 10 May – London – IPO – Intermediate Guide to CopyrightLink.
  • 10 – 12 May – London – IPO – IP Masterclass 2016 Course – Link.
  • 10 May – London – ITMA – ITMA London Evening MeetingLink.
  • 11 May – London – CIPA –CIPA’s One Hundred and Thirty Fourth Annual General Meeting – Link.
  • 11 May – London – Osborne & Clarke – Foundations of IT Law Programme: Module 5 – Negotiating IT ContractsLink.
  • 11 May – Kent – Revolutionary Events – Kent Vision Live Link.
  • 11 May – Cambridge – CIPA – East of England Happy Hour –Link.
  • 11 May – London– OIPRC & AIPPI– A Brave New World – an in depth look at the EU Trade Mark reforms – Link.
  • 11 – 12 May – London – The London Business ShowLink.
  • 12 May – Edinburgh – IPO & ITMA – IPO & ITMA RoadshowLink.
  • 12 May – TBC – BLACA – Money In The Bank Or Pie In The Sky? Remuneration Rights As An Alternative To Copyright Enforcement Link.
  • 12 May – London – CILIP & UKeiG – UKeiG Training: Social Media and Digital Marketing for Information ProfessionalsLink.
  • 12 May – London – CIPA – The Brexit Symposium – Link.
  • 12 May – Oxford – OIPRC – Are We Running Out of Trademarks? An Empirical Study of Trademark DepletionLink.
  • 13 May – Stoke-on-Trent – Staffordshire Chamber of Commerce – Finest Intellectual Property – The Value within – Link.
  • 16 May – London – MBL – Patents Court Litigation – An Advanced GuideLink.
  • 17 May – Oxford – OIPRC – What is the practical significance of Myriad for genomic medicine?Link.
  • 17-18 May – London – IBC – Telecoms Law and Regulation Europe Conference 2016Link.
  • 18 May – Cheltenham – The Gloucestershire Business Show 2016 Link.
  • 18 May – London – CIPA – An Insight into the Patentability and Enforcement of Second Medical Use Patents in the Epo and English Courts, Seminar Link.
  • 18 May – Hatfield –Enterprise Europe Network – IP and Cyber Security: how to protect yourselfLink.
  • 18-19 May – London – IQPC – Information Governance & eDiscovery Summit 2016Link.
  • 18-19 May – London – Managing IP – Technology, Media and Telecommunications forum – Link.
  • 19 May – Bristol – University of Bristol – The Right of the Dot – Link.
  • 19 May – Newcastle – MBL – Intellectual Property Rights in Software – Link.
  • 19 May – Bournemouth – CIPPM – Trevor Cook on Copyright Parody – Link.
  • 19 May – London – MBL – Copyright Law and Practice in one day – Link.
  • 20 May – London – IALS – Intellectual Property and the Politics Knowledge – Link.
  • 23 May – London – MBL –The Law of Design: a detailed introduction – Link.
  • 23 May – SCL – IT Contracts Update – Part 2: The In-house PerspectiveLink.
  • 24 May – London – CREATe – Copyright Education and Awareness Symposium – Link.
  • 24 May – London – JA Kemp – How to Get More from the Patent System in Technology Transfer Link.
  • 24 May – London – UCL IBIL – Drafting and Negotiating Contracts with Universities – Link.
  • 24 May – Newmarket – Venturefest East – Venturefest EastLink.
  • 25 May – Glasgow – CREATe – Government’s position and public debates on UGC and fair use in Hong Kong – Link.
  • 25 May – London – MBL – A Practical Guide to Trade Secrets – Key Risks, Exploitation & More!Link.
  • 25 May – London – MBL – Due Diligence on Intellectual PropertyLink.
  • 26 May – Leeds – SCL – Foundations of IT Law – Module 3: Outsourcing Law and Practice and Module 4: Internet Law and Social MediaLink.
  • 27 May – Bristol – MBL – Intellectual Property Rights in Software – Link
  • 31 May – London – CILIP – Copyright: challenges and solutions for information professionalsLink.


  • 3 May – Copenhagen, Denmark – WIPO – Roving Seminars on WIPO Services Link.
  • 3-4 May – Helsinki, Finland – EPO – PATLIB 2016Link.
  • 5 May – Prague, Czech Republic – Bird & Bird – Bird & Bird & FinTech Seminar Series 2016 – Link.
  • 5-6 May – Alicante, Spain – EUIPO (former OHIM) – IP Case Law – Substantive and Procedural issues of TM and Dispute ResolutionLink.
  • 9 May – Strasbourg, France – CEIPI – 3D printing, trademark protection and the luxury industryLink.
  • 10 May – Barcelona, Spain – LES Spain & Portugal – Puesta en común de un caso práctico sobre licenciamiento: Barcelona 10 de MayoLink.
  • 10-11 May – Luxembourg, Luxembourg – ICT – ICT Spring Europe 2016Link.
  • 11 May – Barcelona, Madrid and Sevilla, Spain – OEPM – Talleres prácticos sobre búsquedas de patentes en el sector sanitario- Madrid, Barcelona y SevillaLink.
  • 11 May – Leon, Spain – OEPM – Protección de la artesanía a través de la Marca y el Diseño Link.
  • 13 May – Amsterdam, the Netherlands – UNION IP – ExCo Spring 2016Link.
  • 23 May – Madrid, Spain – OEPM – Jornada de estudio y actualización en materia de patentes (Los Lunes de Patentes)” – Link.
  • 24 May – Brussels, Belgium – Bristows – EU Pharmaceutical Law ForumLink.
  • 24 May- Amsterdam, the Netherlands – FORUM – Patent for Software – PART I – Link.
  • 25 May – Sevilla, Spain – LES Spain & Portugal – Puesta en común de un caso práctico sobre licenciamiento: Barcelona 10 de MayoLink.
  • 25 May – Amsterdam, the Netherlands – FORUM – Patent for Software – PART II – Link.
  • 25 May – Amsterdam, the Netherlands – FORUM – Masterclass: EPO Oral Proceeding – Link.
  • 26-27 May – Geneva, Switzerland – WIPO – Seminar on Intellectual Property and Genetic ResourcesLink.
  • 26-27 May – Strasbourg, France – CEIPI – Séminaire de préparation à l’examen français de qualification, spécialisation « brevets d’invention »Link.
  • 27 May – Paris, France – IRPI – Design, mode, objets connectés et droitLink.
  • 31 May – Frankfurt, Germany – TechnolgieAllianz – TechnologieAllianz-KonferenzLink.
  • 31 May – Basel, Switzerland – FORUM – Quo Vadis, SPC?Link. 


  • 2 May – Detroit, MI, USA – USPTO – Madrid Update Link.
  • 3 May – Detroit, MI, USA – Finnegan – Maximizing IP Effectiveness in the Auto Industry – Link.
  • 3-4 May – Palo Alto, CA, USA – IP Counsel Café – Patent Protection in Flux: Emerging Trends and How to RespondLink.
  • 3-5 May – San Francisco, CA, USA – Bio – BioSafe Meetings – Link.
  • 4 May – Chicago, IL, USA – IPLAC – IPLAC Annual MeetingLink.
  • 4 May – Philadelphia, PA, USA – LES USA & Canada – Medical Device Development – From Conception to Market Success Link.
  • 4 May – Stanford, CA, USA – Stanford Law School – How Intellectual Property Adds Value to Start-Ups – Link.
  • 4 May – Stanford, CA, USA – Stanford Law School – Stanford IP Law and the Biosciences Conference – Link.
  • 5 May – Alexandra, VA, USA – USPTO – Patent Public Advisory Committee Quarterly Meeting – May 2016Link.
  • 5 May – Cambridge, MA, USA – LES USA & Canada – Boston Celebrates Around the World IP DayLink.
  • 5 May – Oakland, CA, USA – CLA – Music Publishing 101: An introduction to the Intricate and Important World of Music Publishing Music Publishing 101: An introduction to the Intricate and Important World of Music Publishing Link.
  • 6 May – San Jose, CA, USA – USPTO – Silicon Valley USPTO Public TourLink.
  • 9 May – Atlanta, GA, USA – The Copyright Society of the USA – Blurred Lines and Pretty Woman: Substantial Similarity and Fair Use in Music Infringement CasesLink.
  • 10 May – Cleveland, OH, USA – USPTO – OH PTRC Public Training ProgramLink.
  • 10 May – New York, NY, USA – LES USA & Canada – Boston Celebrates Around the World IP DayLink.
  • 10 May – San Jose, CA, USA – USPTO – Trademark Tuesdays – Link.
  • 10 May – Washington, DC, USA – George Washington University Law School – 2016 Symposium on Intellectual PropertyLink.
  • 11 May – El Segundo, CA, USA – CLA – Legal Basis for Creative Businesses Link.
  • 12 May – Houston, TX, USA – Center Force – The IP Strategy Summit – Link.
  • 12 May – New York, NY, USA – Managing IP – MIP PTAB Forum 2016 – Link.
  • 16 May – TBC, California, USA – LAIPLA – LAIPLA Annual Meeting Dinner & Young Lawyers EventLink.
  • 17 May – Minneapolis, MN, USA – AIPLA – 2016 Chemical Practice Boot Camp– Link.
  • 17 May – New York, NY, USA – The Copyright Society of the USA – The “cool” side of copyright law: tattoos, street art and beyond Link.
  • 17 May – Sacramento, CA, USA – CLA – 9th Annual Artistic License Award – Link.
  • 19 May – Alexandria, VA, USA – USPTO – Additive Manufacturing Partnership MeetingLink.
  • 19 May – San Jose, CA, USA – USPTO – Patent Brown Bag “Lunch and Learn”Link.
  • 18 May – Venice, CA, USA – CLA – Music Business: Creation and Distribution in the Digital Age – Link.
  • 18 May – Minneapolis, MN, USA – AIPLA – AIPLA 2016 Spring Conference – Link.
  • 18-20 May – Orlando, FL, USA – IACC – IACC 2016 Spring ConferenceLink.
  • 19 May – Boston, MA, USA – Center Force – The IP Strategy Summit – Link.
  • 19 May- Chicago, IL, USA – IPLAC – IPLAC Trademark Committee Panel DiscussionLink.
  • 19 May – Stanford, CA, USA – Stanford Law School – Fashion, Art, and Design Law Society: A Conversation with Simon Frankel – Link.
  • 19-20 May – Mountain View, CA, USA – MCLR – Legal Frontiers in Digital Media 2016 Link.
  • 20 May – Detroit, MI, USA – The Copyright Society of the USA – A Clear View of Blurred Lines – Link.
  • 21-25 May – Orlando, FL, USA – INTA – 138th INTA Annual Meeting – Link.
  • 21-26 May – Vancouver, BC, Canada – PIUG – PIUG 2016 Annual ConferenceLink.
  • 25 May – Kansas City, MO, USA – USPTO – USPTO Midwest Regional Seminar– Link.
  • 26 May – New York, NY, USA – Dentons – A World Tour of Recent Developments in Trademark LawLink.
  • 26 May – Wilmington, DE, USA – USPTO – Women’s Entrepreneurship SymposiumLink.


  • 3 May – Sao Paulo, Brazil – Associação Paulista de Propriedade Intelectual – 30º grupo de estudos de propriedade intelectual – gepi – tema: secondary meaningLink.
  • 4 May – Sao Paulo, Brazil – Associação Paulista de Propriedade Intelectual – Tutelas Provisórias no Novo CPC e a Propriedade IntelectualLink.
  • 10-12 May – La Habana, Cuba – OCPI – Desafíos mundiales de la Propiedad IndustrialLink.


  • 3 May – North Ryde, NSW, Australia – Watermark – North Ryde: Innovation capture – mechanics, culture and processLink.
  • 4 May – Eveleigh, NSW, Australia – LES ANZ – License Agreement Workshop – Link.
  • 4-5 May – Tunisi, Tunisia – ICANN – Middle East DNS Forum 2016Link.
  • 4-6 May – Sydney, NSW, Australia – LES ANZ – Annual 2016 Conference – Link.
  • 5 May – North Ryde, NSW, Australia – Watermark – North Ryde: Protecting IT-Based Inventions Internationally: the Legal Minefield Facing ‘Software Patents’ Link.
  • 5 May – Sydney, NSW, Australia – IP Australia – IP 101 and patents for start-upsLink.
  • 10 – 11 May – Adelaide, SA, Australia – AusBiotech – AusMedTech 2016Link.
  • 12 May – Auckland, New Zealand – LES ANZ – Plant variety licensing: insights and examples PLUS tour – Plant & Food Research – NZ Link.
  • 17 May – Brisbane, QLD, Australia – IP Australia – Learn to protect your brand and product with Intellectual PropertyLink.
  • 17 May – Seoul, South Korea – GRC – GCR Live 2nd Annual IP & Antitrust Asia-PacificLink.
  • 15 – 18 May – Beijing, China – LES – LESI International Annual Conference 2016 – Link.
  • 28 May – Sydney, NSW, Australia – IP Australia – 2016 Good Design Festival – Link.


Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GiancaMoretti

QMJIP – Volume 6 – Issue 2 (April 2016)

by Giancarlo Moretti

The last issue of QMJIP has been published (Volume 6 – Issue 2). The table of content reads as follows:

  • Editorial – Johanna Gibson
  • The interface between the EU copyright law and the fundamental economic freedoms of trade and competition in the digital single market: from the FAPL case to the decision in UsedSoft – Mario Cistaro
  • Copyright theory and a justificatory framework for creative autonomy in cultural industries -Mary Gani-Ikilama
  • Chinese collective management of copyright: the need for extensive changes – Haijun Lu
  • Huawei ./. ZTE, or, how the CJEU closed the Orange Book – Philipp Maume
  • China’s problematic recognition of a right of priority based on an application filed in Taiwan – Ping-Hsun Chen
  • Regulating copyright in the digital age in Spain: the Sinde law – Ercilia García Álvarez, Sheila Sánchez Bergara and Jordi López Sintas
  • Indirect infringement of intellectual property in China – Yang Cao
  • A chapter called controversy: breaking down the Delhi high court appellate bench verdict in F Hoffmann-La Roche v Cipla Ltd – Eashan Ghosh
  • Book Review – Lior Zemer
  • Book Review – Maria Mercedes Frabboni


Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GiancaMoretti