Influencer marketing and unlawful use of trademarks

By judgment of February 4, 2020, the Court of Genoa faced the issue of a well-known fashion company and its designer who had repeatedly published on their respective Instagram profiles contents in which footwear and clothing products were combined with luxury cars (with the related intellectual property rights in the foreground).

The Court found that the positioning of the products suggested the existence of a (non-existent) relationship between the clothing brand and the car manufacturer. All of which led to unlawful use of the latter’s trade mark.
This is one of the first social applications of the new Article 20(1)(c) of the Italian intellectual property code. The provision now provides that it is unlawful to use a well-known trademark also for purposes other than that of distinguishing goods and services where without due cause it takes unfair advantage of the distinctive character or repute of the trademark.

Although the Court of First Instance did not consider the use of the trademark to be distinctive, it held that there is a commercial use which, in the context of the activities of influencers, is lawful only if authorised by the proprietor of the distinctive sign or in cases where the images displayed may communicate – to the public – a meaning other than advertising and commercial meaning, that is to say, they are descriptive of scenes from the life of the influencer or of third parties. Such lawfulness would derive from the obvious consideration that the publication of scenes of everyday life imply the inevitable display of the distinctive signs of the products normally used by the represented subject to perform the published action.

Unified Patent Court: AIPPI in favour of Milan’s nomination

The International Association for the Protection of Intellectual Property has expressed its support for the nomination of Milan to host a Division of the Unified Patent Court.
In the document released, AIPPI, after recalling that Italy is among the signatories of the agreement establishing the Unified Patent Court signed on February 27, 2013 and subsequently ratified following the entry into force of Law no. 214 of November 3, 2016, stresses that this agreement has not yet entered into force. Germany, in fact, the country with the highest number of European patents in the year prior to its signature, has not yet validly ratified it.
The instrument of ratification has in fact been declared null and void by the German Constitutional Court due to defects in the adoption procedure.

Preventing new arguments before the EU Court: the Court of Justice ruling

The CJEU has ruled on the range of the review to be carried out by the EU General Court on the decisions of the Boards of Appeal of EUIPO in the EU trademark registration proceedings. The specific issue raised was examined by the CJEU in its judgment of June 18, 2020 (case C 702/18 P).
In the case at hand, the EU General Court had found the arguments of a party to opposition proceedings inadmissible. These elements were related to the allegedly weak distinctive character of the earlier trademark, not raised before the Board of Appeal. The CJEU overturned the judgment of the General Court, finding an error of law in its decision of inadmissibility.

In particular, according to the Court:
– the elements which may be validly submitted for assessment by the General Court depend on the subject-matter of the dispute before the Board of Appeal;
– the Board is nevertheless required to rule on all questions which, in the light of the parties’ arguments, are necessary for a proper decision;
– the assessment of the inherent distinctiveness of the earlier mark constitutes a matter of law necessary to ensure a correct decision, so that the bodies of EUIPO are obliged to examine that question, if necessary of their own motion.

Is Brompton’s bike eligible for protection under copyright law?

The Court of Justice of the European Union has ruled on the request for a preliminary ruling concerning the well-known folding bike model, called Brompton.
The decision is set out in Judgment C 833/18 of June 11, 2020, in which the creator of the folding system and a Korean company, which markets similar bicycles, are opposed.
The question which led the referring court to refer the matter to the Court of Justice is whether a bicycle, whose folding system was protected by a patent which has now expired, can be classified as a work protected by copyright.
According to the ECJ, it should only be assessed whether, through the shape of the product, its author has expressed his creative capacity in an original way. The existence of an earlier patent is relevant only where it would adversely affect that assessment.