PGA Intellectual Property Newsletter – 08/06/2020

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Nestlé v. Impossible Food: vegan hamburger can no longer be called “Incredible”

Nestlé will have to find a new name for its vegan “Incredible Burger”. In fact, according to the Hague District Court, the trademark chosen by the food giant would produce confusion with the signs of its American competitor Impossible Foods.
In particular, Nestlé had initially launched its Incredible Burger in Europe in April 2019 under the brand “Garden Gourmet”. Subsequently, the multinational would turn to Impossible for a possible licensing agreement in the summer of 2018. However, without entering any agreement, the Swiss giant would still have launched the new “Incredible” brand. According to the Court, the choice of the trademark was an attempt to frustrate Impossible Foods’ entry into the European market by offering its plant-based foods under a similar name. However, Nestlé planned to challenge the decision.

The European Court of Justice on the “use of the trademark in the course of trade”

By judgment of 30/04/2020 (Case C-772/18), the Court of Justice of the European Union was called upon to clarify whether “use of a trade mark in the course of trade” constitutes “use of a trade mark in the course of trade” by a person who – while not carrying on a commercial activity in a professional capacity – receives, releases for free circulation in a Member State and keeps goods manifestly not intended for private use, sent to his address from a third country and to which, without the consent of the proprietor, a trade mark is affixed.
The Court of Justice concluded that “a person who does not engage in trade as an occupation, who takes delivery of, releases for free circulation in a Member State and retains goods that are manifestly not intended for private use, where those goods were sent to his or her address from a third country and where a trade mark, without the consent of the proprietor of that trade mark, is affixed to those goods, must be regarded as using that trade mark in the course of trade”.

Piracy on Telegram: new AGCOM decision

By resolution 164/20/CONS the Italian Authority AGCOM ordered the rejection of the proceedings initiated at the request of FIEG against Telegram.
In fact, a recent FIEG monitoring activity showed that at least ten channels were active on Telegram, followed on average by about 60,000 users each, dedicated to the illegal distribution of newspapers. The same messaging platform had intervened by ordering the operators of the channels in question to cease their illegal activities. As a result of this intervention, as many as 7 out of 8 channels actually ceased to make available editorial works in violation of the Intellectual Property Rights of third parties.
On the contrary, AGCOM’s activity was essentially limited to taking note of this spontaneous adjustment, without which the Authority itself could not have intervened directly against Telegram.

All this, because “due to the location abroad of the servers used, pursuant to art. 8, paragraph 2, of the Regulation, the Authority cannot proceed with the removal of illegally uploaded content, as this would involve the use of filtering techniques that the European Court of Justice has deemed incompatible with EU law”. “It would be possible to disable access to the site only according to the criteria of gradualness, proportionality and appropriateness that the cited article. 8, paragraph 2, of the Regulation has borrowed from European directives”. However, in the case of the Telegram – “qualifiable as an entity offering instant messaging as the main service” – precisely these conditions of proportionality would not exist. Any intervention would in fact lead to the disabling of the entire instant messaging service.

Golden year for EUIPO: 2019 Annual Report has been published

The 2019 Annual Report of the European Intellectual Property Office (EUIPO) has been published. As highlighted in the report, a number of relevant events took place during that year:
– the celebration of the 25th year of activity,
– the filing of the two millionth Community trade mark application,
– the development of a new strategic plan (SP2025).
– the cooperation agreement with Europol on the fight against crime in the field of intellectual property,
– the big Horizon 5.0 IP conference,
– the extension of EU-funded projects in Africa, the Caribbean and Georgia,
– the increased use of innovative and mobile working methods within the Office.