Sll service group, a German company, registered a particular log at EUIPO. The logo , a long line with Lumi8 wrote in bold characters on it was so registered on the 25 of August 2015 , but I just one year the same logo would be opposed by another company Elfa International AB that reports in the test of the opposition that :

–        the EU word mark LUMI, which was registered on 3 July 2014 under the number 12591335 and covers ‘metal building materials; small items of metal hardware; fittings of metal for building and furniture; knobs of metal; clothes hooks of metal; rails of metal; doors frames and door panels of metal; metal frames for sliding doors; furniture casters of metal’ in Class 6; ‘building materials (non-metallic); doors, doors panels and door frames, not of metal; cornices, not of metal; wood paneling; cask wood; folding doors, not of metal; sliding doors’ in Class 19, and ‘furniture, mirrors; doors for furniture; lockers; coat hangers; furniture shelves; edgings of plastic for furniture; clothes hooks, not of metal; cases of wood and plastic; furniture casters, not of metal; furniture partitions of wood; furniture fittings, not of metal; cupboard; wardrobes; sliding door wardrobes’ in Class 20;

–        the EU figurative mark LUMI Endless possibilities, which was registered on 14 June 2013 under the number 11499928 and covers ‘metal building materials; small items of metal hardware; fittings of metal for building and furniture; knobs of metal; clothes hooks of metal; rails of metal; doors frames and door panels of metal; metal frames for sliding doors; furniture casters of metal’ in Class 6; ‘building materials (non-metallic); doors, doors panels and door frames, not of metal; cornices, not of metal; wood paneling; cask wood; folding doors, not of metal; sliding doors’ in Class 19, and ‘furniture, mirrors; doors for furniture; lockers; coat hangers; furniture shelves; edgings of plastic for furniture; clothes hooks, not of metal; cases of wood and plastic; furniture casters, not of metal; furniture partitions of wood; furniture fittings, not of metal; cupboard; wardrobes;

Could lead to a like hood of confusion.

What does all of this mean? Well:

     VS 

The opposition moved by the second company (the one of the Lumi Endless possibilities) was based on the Art 196 of the regulation 2017/1001, an important regulation on the ground of copyright law of which we will talk here in the future.

Returning to the case By decision of 14 November 2017, the Opposition Division of EUIPO, basing its decision solely on the earlier EU word mark LUMI (‘the earlier mark at issue’), without it being necessary to examine the other earlier mark relied on, upheld the opposition and rejected the application for registration in respect of all the goods referred above on the ground that there was a likelihood of confusion within the meaning of Article 8(1) (b) of Regulation No 207/2009. This is for saying that for them there was no actual reason to refuse the other brand to use that logo (remember what we had say about design logos…the EUIPO division here is stating that the “Endless design was enough to differentiate one form the). By decision of 28 August 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal after having, like the Opposition Division of EUIPO, examined the opposition in the light solely of the earlier mark at issue. In essence, the Board of Appeal found that, even taking into account a higher level of attention on the part of the relevant public, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, in particular on account of the identity of the goods at issue, the normal degree of distinctiveness of the earlier mark at issue and the overall visual, phonetic and, at least for part of the relevant public, conceptual similarity of the signs at issue. In that regard, the Board of Appeal stated that the presence of the letter ‘n’, the number 8 and the banal figurative elements of the mark applied for were not likely to influence the consumer’s perception and did not call that similarity into question. Furthermore, the Board of Appeal pointed out that, even if the earlier mark at issue were to be considered as having a low degree of distinctiveness for the whole of the relevant public owing to the meaning of the term ‘Lumi’ with regard to the goods at issue, that would not be a sufficient reason to exclude a likelihood of confusion between the marks in question. The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001  provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. That plea consists, in essence, of four parts, which relate to the contested decision in so far as that decision concerns, as regards the first part, the visual comparison of the signs at issue, as regards the second part, the phonetic comparison of the signs at issue, as regards the third part, the conceptual comparison of the signs at issue and, as regards the fourth part, the global assessment of the likelihood of confusion. For the purposes of applying Article 8(1) (b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services, which they cover, are identical or similar. The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment of 12 June 2007, OHIM v Shaker, C‑334/05).  As regards the visual comparison, the Board of Appeal found, in paragraph 44 of the contested decision, that the signs at issue were similar to the extent that they begin with the sequence of letters ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the whole of the earlier mark at issue. By contrast, the Board of Appeal found that the signs differed in the other elements of the mark applied for, such as the additional letter ‘n’ and the number 8 placed at the end of that mark, and the other graphic features of that mark, namely the stylization of the characters.  In that regard, it pointed out, that the graphic features of the mark applied for had a limited impact, since the minimalistic stylization of the letters in the element ‘lumin’ and of the number 8 was rather common and was not a particularly eye-catching element. Furthermore, it observed that the circumstance that the element in common, ‘Lumi’, corresponded to the beginning of the mark applied for and was the only element in the earlier mark at issue played an important role, since the identical beginnings were capable of reducing the impact of the additional letter and number which are placed at the end of the mark applied for. It concluded, in paragraph 48 of the contested decision, that there was at least an average degree of visual similarity due to the presence of the element ‘Lumi’, which was placed at the beginning of the mark applied for and was the only element in the earlier mark at issue. Taking under consideration the decision of the Board of Appeal the court states that that the signs at issue differ in some elements, like the additional letter ‘n’ and the number 8 placed at the end of the mark applied for, and in other specific features of that mark’s graphic representation. However, the first four letters of the mark applied for are identical to those of the earlier mark at issue and appear in the same order. Moreover, the earlier mark at issue is fully included in the mark applied for and the mark applied for has four of the five letters of which it consists in common with that earlier mark. It follows that those signs have a significant number of letters in the same position in common. Those similarities will be noticed immediately and easily be remembered by the relevant public. Consequently, the overall impression created by the signs at issue is dominated, in each of those signs, by the fact that they have the same sequence of letters, ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the whole of the earlier mark at issue and the beginning of the mark applied for, in common.  According to settled case-law, where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have a significant number of letters in the same position in common and if the word element of the figurative sign is not highly stylized, notwithstanding the graphic representation of the letters in different fonts, in italics or bold, in lower case or upper case, or in color. In that regard, it must be stated that the similarities between the signs at issue cannot be counteracted by the differences as those differences are secondary and are not therefore sufficient, in the context of an overall visual assessment, to outweigh the similarities.  As the Board of Appeal pointed out, the graphic features of the mark applied for have a limited impact, since the minimalistic stylization of the letters in the element ‘lumin’ and of the number 8 is rather commonplace and is not a particularly eye-catching element. First, the word element of the mark applied for is not highly stylized, but has a rather simple style. Secondly, the figurative elements and the graphic structure of that mark are not in any way capable of creating a graphic feature which is particularly striking in the eyes of the relevant public and is capable of attracting its attention. It follows that, as is apparent from the overall impression created by the signs at issue, those signs are visually similar to an average degree overall. Consequently, the Board of Appeal’s assessment, on the basis of the overall impression created by the signs at issue, that there is at least an average degree of visual similarity between those signs is not marred by error, with the result that the first part of the single plea must be rejected.  As regards the phonetic comparison of the signs, the Board of Appeal found, in paragraph 49 of the contested decision, that the comparison had to be carried out between the word elements of the signs at issue, namely ‘Lumi’ and ‘lumin8’, taking into account that the figurative elements of the mark applied for had no bearing. It pointed out, in paragraph 50 of that decision, that it was apparent that the pronunciation of those signs coincided in the pronunciation of the identical combination of letters ‘l’ ‘u’ ‘m’ ‘i’, which represent the first part of the mark applied for and is the only element in the earlier mark at issue. By contrast, the Board of Appeal found that, irrespective of their pronunciation in the different languages in the European Union, the signs differed in the sound of the additional letter ‘n’ and the number 8 in the mark applied for. The Board of Appeal concluded that, from a phonetic point of view, there was at least an average degree of similarity between the signs at issue, given that the marks fully coincided as regards the pronunciation of the letter sequence ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the sole element in the earlier mark at issue and the beginning of the mark applied for. It took the view that that fact alone was liable to create strong visual and phonetic similarities between those signs. In that regard, the Board of Appeal found, in paragraph 52 of that decision, that the addition of the number 8, which is included in the mark applied for, could not be sufficient to rule out such visual and phonetic similarities between the two marks, which were created by the presence of the element in common, ‘Lumi’. It found that such an element, regardless of whether it was dominant within the mark applied for, would be liable, being placed at the beginning, to attract the public’s attention more than the number 8 and the additional letter ‘n’ at the end of the word element ‘lumin’ in the mark applied for.  In that regard, according to the case-law  the phonetic comparison of the signs must be carried out by taking into account the overall impression given by those signs, as the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. In the present case, it must be stated, as the Board of Appeal pointed out, that the signs at issue differ in the sounds of the letter ‘n’ and of the number 8 in the mark applied for. However, in the light of the characteristics of the signs at issue namely, in particular the fact that they have in common the same sequence of letters ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the whole of the earlier mark at issue and the beginning of the mark applied for, the overall phonetic impression created by the signs at issue is dominated, in each of those signs, by the fact that their pronunciation coincides fully as regards the element ‘Lumi’, and that is so regardless of the rules of pronunciation used by the relevant public in the territory of the European Union. As the Board of Appeal rightly pointed out, the mere addition of the word element ‘eight’, which is represented in the mark applied for in the form of the number 8, cannot be sufficient to rule out the phonetic similarity between the signs at issue that is created by the identical pronunciation of the element ‘Lumi’, which is common to those signs. In those circumstances, the presence of the number 8 may even make consumers more likely to identify, in the mark applied for, the element ‘Lumi’, which is common to both marks, as a number is clearly distinct from a combination of letters (judgment of 20 February 2018, Kwang Yang Motor v EUIPO — Schmidt (CK1), T‑45/17, not published, EU: T: 2018:85, paragraph 47).   Furthermore, it must be stated that, in spite of the fact that the earlier mark at issue consists of two syllables, whereas the mark applied for consists of three, the sound made by the additional letter ‘n’ and number 8, which are placed at the end of the word element ‘Lumi’ in that latter mark, does not create a significant difference in the overall phonetic impression created by the signs at issue. The sound produced by those additional elements is not sufficient, in the context of an overall phonetic assessment, to outweigh the similarity of those signs, which is characterized by the fact that they have the sound arising from the pronunciation of the same element ‘Lumi’, which is situated at the beginning of those signs, in common. It follows that, as is apparent from the overall impression created by the signs at issue, those signs are phonetically similar to an average degree overall. Consequently, the Board of Appeal’s assessment, on the basis of the overall impression created by the signs at issue, that those signs are phonetically similar to at least an average degree, is not marred by error, with the result that the second part of the single plea must be rejected. As regards the conceptual comparison of the signs at issue that some consumers in the European Union might understand the common word elements ‘Lumi’ and ‘lumin’ as allusive of ‘light’ because of the Latin, word ‘lumen’. It stated that those were, in particular, consumers who speak English (‘luminous’), French (‘lumineux’, ‘la lumière’), Spanish (‘luminoso’, ‘la lumbre’) or Italian (‘luminoso’, ‘il lume’). It found that therefore, in respect of that part of the relevant public, there was a conceptual similarity between those signs to the extent that they evoked the concept of ‘light’. The Board of Appeal, however, stated, in paragraph 55 of that decision, that a significant part of the relevant public in the European Union would not link the word elements ‘lumi’ and ‘lumin’ to the concept of ‘light’. It found that that concerned, in particular, the part of the public which does not speak English or a Romance language, including consumers, for example, from Poland. The Board of Appeal also pointed out that, as regards the part of the relevant public that was likely to perceive the concept of ‘light’ in the element ‘lumi’ in the earlier mark at issue and the element ‘lumin’ of the mark applied for, there would be at least a low degree of conceptual similarity between the signs at issue. In that regard, it stated that the number 8 did not convey any specific concept and would not alter the conceptual similarity between the terms ‘lumi’ and ‘lumin’. The Board of Appeal also pointed out, in paragraph 57 of that decision, that, as regards the remainder of the relevant public, which would not understand the meaning of the terms ‘lumi’ and ‘lumin’, the signs at issue would be viewed as fanciful terms, with the result that no conceptual comparison could be made.  In the present case, it must be stated, as the Board of Appeal pointed out that part of the relevant public in the European Union might understand the terms ‘lumi’ and ‘lumin’ as alluding to ‘light’ on account of the Latin word ‘lumen’. That could be the case as regards the relevant public that speaks, in particular, English (‘luminous’), French (‘lumineux’ or ‘lumière’), Spanish (‘luminoso’ or ‘lumbre’) or Italian (‘luminoso’ or ‘lume’). Consequently, as regards that part of the relevant public that is likely to perceive the concept of ‘light’ in the element ‘lumi’ of the earlier mark at issue and in the element ‘lumin’ of the mark applied for, there would be at least a low degree of conceptual similarity between the signs at issue. In that regard, it must be stated that the number 8, attached to the term ‘lumin’, does not convey any specific concept, as has been pointed out in paragraph 49 above, and cannot therefore alter that similarity between the terms ‘lumi’ and ‘lumin’. However, it must also be stated that another part of the relevant public in the European Union might not be able to link the terms ‘lumi’ and ‘lumin’ to the concept of ‘light’. That could be the case as regards the relevant public which does not speak, in particular, English or a Romance language. Consequently, as far as that public which does not understand the meaning of the terms ‘lumi’ and ‘lumin’ is concerned, those terms will be perceived as fanciful and it is therefore impossible to make a conceptual comparison of the signs at issue. As regards the applicant’s argument that the mark applied for LUMIN8 can be construed by the relevant public, depending on how it is pronounced, as meaning ‘nuit de lumière’ or ‘Lichtnacht’ or even ‘light night’ and therefore has nothing to do conceptually with the term ‘lumi’, it must be held that that interpretation is unrealistic. Furthermore, that interpretation requires the relevant public concerned to make a mental effort in order to arrive at that meaning. It must be stated that the association of the elements ‘lumin’ and ‘8’ invoked by the applicant does not result in a clear and specific meaning being attached to the mark applied for. However, according to the case law, conceptual differences between two signs are capable of counteracting visual and phonetic similarities between them only if at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately; Consequently, that argument on the part of the applicant cannot reasonably succeed. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case. A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa.   For the purposes of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to compare the various marks directly and must therefore rely on his imperfect recollection of them. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question. As regards the applicant’s argument that the lack, in the present case, of phonetic and conceptual similarity between the signs at issue counteracts any low degree of visual similarity that there might be, it is sufficient to state, as has been examined in the context of the comparison of the signs that, since there is, on the contrary, an average degree of visual and phonetic similarity and, at least for part of the relevant public, a low degree of conceptual similarity between the signs at issue, the Board of Appeal was fully entitled to find, in paragraph 58 of the contested decision, that, ‘overall’, the signs at issue were ‘similar to an average degree’. The counteraction invoked by the applicant could not therefore apply. Consequently, that argument cannot reasonably succeed.  In the present case, in view of all the factors relevant in the context of a global assessment of the likelihood of confusion between the marks at issue and, in particular, of the identity of the goods at issue and the normal degree of distinctiveness of the earlier mark at issue , it must be held that there is a likelihood of confusion between the marks at issue on the part of the relevant public referred to in paragraph 18 above, even when a higher level of attention on the part of that public is taken into account. Consequently, the Board of Appeal was fully entitled to find, without infringing Article 8(1) (b) of Regulation 2017/1001, in the context of a global assessment of the likelihood of confusion, that, even taking into account a higher level of attention on the part of the relevant public, there was, in the present case, a likelihood of confusion between the marks at issue. It follows that the Board of Appeal’s assessment of the factors that are relevant with regard to the global assessment of the likelihood of confusion is not marred by error, with the result that the fourth part of the single plea must also be rejected. Moreover, it must be pointed out, as observed by the Opposition Division and the Board of Appeal of EUIPO, that there is no need to examine the applicant’s arguments concerning the other earlier mark, namely the earlier EU figurative mark LUMI Endless possibilities. Since a likelihood of confusion with regard to only one earlier mark is sufficient to uphold the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 and the Court has held, in paragraph 73 above, that the Board of Appeal was fully entitled to find, without infringing that provision, that there was such a likelihood of confusion between the mark applied for and the earlier mark at issue, namely the earlier EU word mark LUMI, those arguments must be held to be ineffective, inasmuch as they cannot lead to the annulment of the contested decision in that regard. 

COMMENT

What interest us here is the same principle that we have established with the previous post : not only how to interpretation the eye of the consumer in order to know if any confusion could be generated , but even objectively analyzing the two brands from a visual , phonetical and conceptual view. It is here interesting the language analysis of the court, in order to understand if the two phonetical meaning could be confused, and if the concept was so. This Link between the concept, the word and the visual in a descent scale is a really interesting topic indeed and seems to suggest not only a relation between the three sides of the proofs but even an epistemological view (indeed the court first analyses the visual, then from here goes for the words, and then for the concept, cumulating them and not giving any hierarchical importance, but evaluating the whole of them).

On 20 October 1999, Shaker filed an application for a Community trademark with OHIM for the following figurative mark:

On 1 June 2000 Limiñana y Botella, SL filed a notice of opposition. The ground relied on in support of the opposition was the likelihood of confusion referred to in Article 8(1) (b) of Regulation No 40/94. By decision of 9 September 2002, the OHIM Opposition Division upheld the opposition and consequently refused registration of the mark claimed.  In the disputed decision the Second Board of Appeal of OHIM, to which Shaker had referred, rejected the latter’s application. In essence, the Board considered that the dominant element of the mark for which registration was sought was the term ‘Limoncello’ and that that mark and the earlier trade mark were visually and phonetically very similar to one another, so that there was a likelihood of confusion. On 7 January 2004, Shaker brought an action before the Court of First Instance seeking annulment of the disputed decision, pleading, firstly, an infringement of Article 8(1) (b) of Regulation No 40/94, secondly, a misuse of powers and, thirdly, an infringement of the duty to provide reasons.  As regards the first plea in law, the Court of First Instance, after establishing the similarity between the products at issue, held in paragraphs 53 and 54 of the judgment under appeal, concerning the opposing signs:

‘53      [T]he Board of Appeal had to consider which component of the trade mark claimed was apt, by virtue of its visual, phonetic or conceptual characteristics, to convey, by itself, an impression of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible in that respect … .

54      However, if the trade mark claimed is a complex mark which is visual in nature, the assessment of the overall impression created by that mark and the determination as to whether there is any dominant element must be carried out on the basis of a visual analysis. Accordingly, in such a case, it is only to the extent to which a potentially dominant element includes non-visual semantic aspects that it may become necessary to compare that element with the earlier mark, also taking into account those other semantic aspects, such as for example phonetic factors or relevant abstract concepts.’

Following this approach, the Court of First Instance held, at paragraph 59 of the judgment under appeal, that the representation of the round dish decorated with lemons was clearly the dominant component of the mark for which registration was sought. It established that the word elements of that mark were not dominant on a visual level and held that there was no need to analyze the phonetic and conceptual characteristics of those elements. Consequently, at paragraph 65 of that judgment, it held that the representation of the round dish had nothing in common with the earlier trade mark which is purely a word mark. In paragraphs 66 to 69 of the judgment the Court of First Instance held:

‘66      there is therefore no likelihood of confusion between the trademarks in question. The dominance of the figurative representation of a round dish decorated with lemons in comparison with the other components of the mark claimed prevents any likelihood of confusion arising from visual, phonetic or conceptual similarities between the words “limonchelo” and “limoncello” which appear in the marks at issue.

67      In the context of the global assessment of the likelihood of confusion, it should also be observed that the average consumer has only occasionally the opportunity to carry out a direct comparison of the various trademarks but must rely on his imperfect mental image of them … Thus, the dominant element of the trade mark claimed (the round dish decorated with lemons) is of major importance in the overall assessment of the sign because the consumer looking at a label for a strong alcoholic drink takes notice of, and remembers, the dominant element of the sign, which enables him to repeat the experience on the occasion of a subsequent purchase.

68      The dominance of the figurative component (a round dish decorated with lemons) in the mark claimed means that in this instance the assessment of the distinctive elements of the earlier trade mark does not affect the application of Article 8(1)(b) of Regulation No 40/94. Although the degree of distinctiveness of an earlier word mark may affect the assessment of the likelihood of confusion … that requires that there be, at the very least, some likelihood of confusion between the earlier trade mark and the mark claimed. However, it is clear from the overall assessment of the likelihood of confusion between the trade marks at issue that the dominance, in the case of the mark claimed, of a round dish decorated with lemons prevents there being any likelihood of confusion with the earlier trade mark. Consequently, there is no need to adjudicate on the distinctiveness of the earlier trade mark …

69      In the light of those considerations, the Court must hold that, notwithstanding the fact that the goods concerned are identical, there is not a sufficiently high degree of similarity between the trade marks in question for a finding that the Spanish reference public might believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings. Accordingly, contrary to OHIM’s finding in the contested decision, there is no likelihood of confusion between them within the meaning of Article 8(1) (b) of Regulation No 40/94.’

Therefore, the Court of First instance accepted the first plea, held that there was no need to examine the other pleas in law and annulled the disputed decision. It also altered it, holding the appeal by Shaker before OHIM to be justified, so that the opposition had to be rejected.  In support of its appeal OHIM raised two pleas in law but withdrew the second in the course of the proceedings before the Court following a rectification by order of 12 June 2006 by the Court of First Instance. It is therefore necessary to examine only one plea in law.

In the present case, the pleas raised by OHIM concern a question of law, in that it seeks to demonstrate that the Court of First Instance misinterpreted the scope of Article 8(1) (b) of Regulation No 40/94, insofar as it limited itself to a visual analysis of the marks at issue and did not proceed to a phonetic and conceptual assessment of those marks. Regarding this it should be recalled that, pursuant to this provision, upon application by the owner of an earlier trade mark, the trade mark applied for is refused registration when, by reason of its identical nature or its similarity with the earlier trade mark and by reason of the identical nature or similarity of the goods or services covered by the two trademarks, there is a likelihood of confusion on the part of the public in the territory where the earlier trade mark is protected. Such a risk of confusion includes the risk of association with the earlier trade mark.  On this point, the Community legislature explained, in the seventh recital of Regulation No 40/94, that the appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified.  In this regard, it is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. According to further settled case-law, the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details.   It should be added that in order to assess the degree of similarity between the marks concerned, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed. In the present case the Court of First Instance, at paragraph 49 of the judgment under appeal, noted the case-law mentioned in paragraph 35 of the present judgment according to which the global appreciation of the likelihood of confusion must be based on the overall impression created by the signs at issue. However if the trade mark claimed was a complex mark which was visual in nature, the assessment of the overall impression created by that mark and the determination as to whether there was a dominant element had to be carried out on the basis of a visual analysis. It added that, in such a case, it was only to the extent to which a potentially dominant element included non-visual semantic aspects that it might become necessary to compare that element with the earlier mark, also taking into account those other semantic aspects, such as for example phonetic factors or relevant abstract concepts. On the basis of those considerations, the Court of First Instance, in the context of the analysis of the signs at issue, firstly held that the mark for which registration was sought contained a dominant element comprising the representation of a round dish decorated with lemons. It then inferred that it was not necessary to examine the phonetic or conceptual features of the other elements of that mark. It finally concluded that the dominance of the figurative representation of a round dish decorated with lemons in comparison with the other components of the mark prevented any likelihood of confusion arising from the visual, phonetic or conceptual similarities between the words ‘limonchelo’ and ‘limoncello’ which appear in the marks at issue. However, in so doing, the Court of First Instance did not carry out a global assessment of the likelihood of confusion of the marks at issue.   It is important to note that, according to the case-law of the Court, in the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.  In those circumstances, OHIM is right to maintain that the judgment under appeal is vitiated by an error in law and it is necessary to refer the case back to the Court of First Instance and to reserve the costs.

COMMENT

In this case, we have a first definition by the court of how the analysis of the similarities or the likelihood of confusion must be done. Remember that this moment is central in the determination of whether a trade mar could be accepted or not as individual or original. The importance of this moment in the determination lead to a deep analysis of the two designs , from a visual , conceptual  and phonetical view , in order to know if the consumer would be misguided. Take notice that tin a previous post we had talked about the type of customer that need to be imagined in this process , as an average user with no technical expertise.

EU law does not preclude national legislation which provides that, in disputes involving consumers, mandatory mediation should take place before any court proceedings

However, since access to the judicial system must be ensured, a consumer may withdraw from mediation at any time without having to give reasons

Mr Livio Menini and Ms Maria Antonia Rampanelli, who are Italian nationals, brought proceedings before the Tribunale Ordinario di Verona (Verona District Court, Italy) against the bank Banco Popolare, which sought repayment of a loan of €991 848.21. The Verona District Court pointed out that, under Italian law, the action brought by Mr Menini and Ms Rampanelli is not admissible without a prior out-of-court mediation procedure, even though they are acting as ‘consumers’. Furthermore, Italian law provides that, in the context of such mandatory mediation, consumers must be assisted by a lawyer and may not withdraw from the mediation without a valid reason. Having doubts as to the compatibility of those national rules with EU law, the Verona District Court asked the Court of Justice to interpret the directive on consumer disputes.1 In today’s judgment, the Court points out that the directive, whose objective is to enable consumers to submit, on a voluntary basis, complaints against traders by using alternative dispute resolution (ADR) procedures, could be applicable in the present case, since the mediation procedure may be regarded as one of the possible forms of ADR, a matter which it is for the national court to determine. In particular, the Court notes that the directive is applicable where the ADR procedure (in the present case, the mediation procedure) meets the following three cumulative conditions: (1) it must have been initiated by a consumer against a trader concerning contractual obligations arising from a sales or service contract; (2) it must be independent, impartial, transparent, effective, fast and fair and (3) it must be entrusted to an entity established on a durable basis which is entered on a special list notified to the European Commission. In the event that the Italian court finds that the directive on consumer disputes is applicable,2 the Court notes that the voluntary nature of the ADR procedures provided for in that directive lies not in the freedom of the parties to choose whether or not to use that process but in the fact that the parties are themselves in charge of the process and may organise it as they wish and terminate it at any time. Accordingly, what is important is not whether the mediation system is mandatory or optional, but the fact that, as expressly laid down in the directive, the parties’ right of access to the judicial system is maintained.

( 1 Directive 2013/11/EU of the European Parliament and of the Council of 21 May 2013 on alternative dispute resolution for consumer disputes and amending Regulation (EC) No 2006/2004 and Directive 2009/22/EC (OJ 2013 L 165, p. 63). 2 On the other hand, the Court points out that Directive 2008/52/EC of the European Parliament and of the Council of 21 May 2008 on certain aspects of mediation in civil and commercial matters (OJ 2008 L 136, p. 3) applies only to crossborder disputes, while the case in question is not of a cross-border nature, since both Banco Popolare and Mr Menini and Ms Rampanelli have their headquarters or residence in Italy.)

In that regard, the Court finds3 that the requirement for a mediation procedure before bringing court proceedings may be compatible with the principle of effective judicial protection under certain conditions to be verified by the national court. That is, in particular, the case provided that that procedure (1) does not result in a decision which is binding on the parties4 , (2) does not cause a substantial delay for the purposes of bringing legal proceedings, (3) suspends the period for the time-barring of claims and (4) does not give rise to high costs, and only if (5) electronic means are not the only means by which the settlement procedure may be accessed and (6) urgent interim measures are possible. Accordingly, the Court finds that the fact that legislation, such as the Italian legislation, has not only put in place an out-of-court mediation procedure, but has also made it mandatory to have recourse to that procedure before bringing an action before a judicial body is not incompatible with the directive. On the other hand, the Court notes that national legislation may not require a consumer taking part in an ADR procedure to be assisted by a lawyer. Finally, the Court points out that protection of the right of access to the judicial system means that any withdrawal from an ADR procedure by a consumer, with or without a valid reason, must never have unfavourable consequences for that consumer at subsequent stages of the dispute. However, national legislation may provide for penalties in the event of the failure of parties to participate in a mediation procedure without a valid reason, provided that the consumer may withdraw following the initial meeting with a mediator.

This request for a preliminary ruling concerns the interpretation of Article 9(2) of Regulation (EU) No 260/2012 of the European Parliament and of the Council of 14 March 2012 establishing technical and business requirements for credit transfers and direct debits in euro and amending Regulation (EC) No 924/2009. Deutsche Bahn is a rail transport company with its registered office in Berlin (Germany). It offers consumers the possibility to book international train journeys on its website. For that purpose it concludes contracts with consumers on the basis of its general conditions of carriage. According to one of the clauses in those general conditions of carriage, bookings made on Deutsche Bahn’s website may be paid for by credit card, via PayPal, by credit transfer or under the SEPA direct debit scheme. However, according to that clause, payment by SEPA direct debit is only accepted subject to the observance of several conditions, namely that the payer have a place of residence in Germany, that he consent to the direct debit being taken from an account held with a bank or savings bank that has its registered office in a SEPA-participating State, that he instruct the bank or savings bank to honour the SEPA direct debit and that he register on the Deutsche Bahn website. In addition, in order to activate the SEPA direct debit scheme, the payer must give his consent to undergo a credit check. The VKI brought an action for a prohibitory order before the Handelsgericht Wien (Commercial Court, Vienna, Austria) by which it sought to have Deutsche Bahn ordered to cease using that clause in consumer contracts. In support of that action, the VKI claimed that the clause at issue in the main proceedings, according to which the payer must inter alia have a place of residence in Germany in order to make a payment by SEPA direct debit, is contrary to Article 9(2) of Regulation No 260/2012 since, first, a consumer’s payment account is generally located in the Member State of his residence and, secondly, that clause imposes an even weightier obligation than a condition requiring the payer to open a payment account in Germany. Deutsche Bahn contends that since Regulation No 260/2012 is addressed to payment service providers, it aims to protect payments rather than payers. That regulation does not require payees to offer payment by SEPA direct debit to all consumers throughout the European Union. Moreover, other methods of payment are available to consumers for the purpose of purchasing tickets on its website. In any event, the condition regarding the consumer’s place of residence is justified. Indeed, in contrast to the situation in relation to other payment procedures, under the direct debit scheme the payee receives no payment guarantee from the payment service provider. By judgment of 13 July 2016, the Handelsgericht Wien (Commercial Court, Vienna), allowed the VKI’s claim with regard to consumers residing in Austria, having held that the clause was contrary to Article 9(2) of Regulation No 260/2012. By judgment of 14 March 2017, the Oberlandesgericht Wien (Higher Regional Court, Vienna, Austria), hearing the case on appeal, set aside that judgment and dismissed the VKI’s claim on the ground that, while Article 9(2) of Regulation No 260/2012 ensures that both payers and payees only require a single bank account for both domestic and cross-border payments by direct debit, the regulation does not oblige payees to accept, in all cases, specific payment instruments for the settlement of commercial transactions with consumers. The Oberster Gerichtshof (Supreme Court, Austria), which is hearing the VKI’s appeal against that judgment, considers that, by prohibiting payers and payees from specifying in which Member State the other party’s account must be held, Article 9(2) of Regulation No 260/2012 does not apply to payment service providers but applies to the relationships between payees and payers and, accordingly, aims to protect payers. Whilst it is true that on a literal interpretation that provision only prohibits making the geographical location of the payment account a criterion, nevertheless, a clause, such as that at issue in the main proceedings, which precludes payment by SEPA direct debit when the payer is not resident in the same Member State as that in which the payee has established his place of business, could be contrary to that provision since a payer’s payment account is, as a general rule, located in the Member State in which the payer is resident. In those circumstances, the Oberster Gerichtshof (Supreme Court) decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

‘Must Article 9(2) of Regulation [No 260/2012] be interpreted as meaning that the payee is prohibited from making payment under the SEPA direct debit scheme dependent on the payer’s place of residence being in the Member State in which the payee also has its registered office or residence, if payment in a different way, for example with a credit card, is also allowed?’

By its question, the referring court asks, in essence, whether Article 9(2) of Regulation No 260/2012 must be interpreted as precluding a contractual clause, such as that at issue in the main proceedings, which excludes payment by SEPA direct debit where the payer’s place of residence is not in the same Member State as that in which the payee has established his place of business.  As a preliminary point, it must be borne in mind that, as is apparent from recital 1 of Regulation No 260/2012, that regulation was adopted in the context of the project to create SEPA, with the intention of developing, for payments in euros, common Union-wide payment services to replace national payment services. According to Article 1, that regulation aims to lay down rules for credit transfer and direct debit transactions denominated in euros within the Union where both the payer’s payment service provider and the payee’s payment service provider are located in the Union, or where the sole payment service provider involved in the payment transaction is located in the Union. As is apparent particularly from recitals 1 and 6 of that regulation, the technical and business requirements provided for by the regulation apply to national and cross-border payments made under SEPA according to the same basic conditions and in accordance with the same rights and obligations, regardless of location within the Union, in order to ensure a complete migration to Union-wide credit transfers and direct debits and thus to introduce an integrated market for electronic payments in euros in which there is no distinction between national and cross-border payments. In that respect, Article 9(2) of Regulation No 260/2012 provides that a payee who uses a direct debit to collect funds from a payer holding a payment account located within the Union is not to ‘specify’ the Member State in which that payment account is to be located, provided that the payment account is reachable in accordance with Article 3 of that regulation, given that the term ‘direct debit’ is defined in Article 2(2) of that regulation as a national or cross-border payment service for debiting a payer’s payment account, where a payment transaction is initiated by the payee on the basis of the payer’s consent. Pursuant to Article 3(2) of Regulation No 260/2012, a payer’s PSP which is reachable for a national direct debit under a payment scheme must be reachable in the same way, as is also apparent from recital 9 of the regulation, for direct debits initiated by a payee in accordance with the rules of a Union-wide payment scheme via a PSP located in another Member State. It thus follows from the wording of Article 9(2) of Regulation No 260/2012, read in conjunction with Article 3(2) of that regulation, that a payee receiving a direct debit is prohibited from requiring that the payer’s account be located in a particular Member State when that account is reachable for a national direct debit. In the present case it is common ground that, although the clause at issue in the main proceedings requires the payer to have his place of residence in the same Member State as that in which the payee has established his place of business, namely Germany, it does not, by contrast, require the payer to have a payment account in a specific Member State. That clause is therefore not explicitly covered by the wording of Article 9(2) of Regulation No 260/2012. However, the Court of Justice has consistently held that, in interpreting provisions of EU law, it is necessary to consider not only their wording but also the context in which they occur and the objectives pursued by the rules of which they are part (judgment of 17 October 2018, Günter Hartmann Tabakvertrieb, C‑425/17, EU:C:2018:830, paragraph 18 and the case-law cited). In that regard, the fundamental purpose of Regulation No 260/2012, as was noted in paragraphs 18 to 20 above, is to establish technical and business requirements, as regards direct debits in particular, in order to develop common Union-wide payment services. That being said, Article 9(2) of that regulation, in so far as it expressly concerns the specific relationship between the payer and the payee, also contributes to the objective of achieving the high level of consumer protection necessary to ensure broad support for SEPA by those consumers, as is apparent from recital 32 of that regulation. That provision allows, as regards payment by direct debit, a single payment account to be used for any transaction within the European Union, thus avoiding costs associated with maintaining several payment accounts, and does so by ensuring, as is apparent from recital 10 of Regulation No 260/2012, that business rules do not have the effect of preventing consumers from making payments, within the context of an integrated market for electronic payments in euros, to accounts held by payees with PSPs located in other Member States.  However, it must be noted that a clause, such as the one at issue in the main proceedings, under which a distinction is drawn on the basis of the payer’s place of residence, is liable to operate mainly to the detriment of consumers who do not have a payment account in the Member State in which the payee has established his place of business. It is common ground that consumers most often have a payment account in the Member State in which they are resident. Such a clause therefore indirectly indicates the Member State in which the payment account must be located, thus producing effects comparable to those resulting from such an indication of a specific Member State.  In most instances, that residence condition restricts the accessibility of payment by SEPA direct debit only to payers with a payment account in the Member State in which the payee has established his place of business and, accordingly, excludes from this method of payment payers with payment accounts in other Member States. Accordingly, that clause reserves this method of payment essentially to national payment transactions within the meaning of Article 2(27) of Regulation No 260/2012, namely those made between a payer and a payee each with a payment account with PSPs located in the same Member State, and to the exclusion, as a result, of most cross-border payment transactions, which involve, in accordance with Article 2(26) of that regulation, PSPs located in different Member States. It follows that a clause such as that at issue in the main proceedings is liable to undermine the practical effect of Article 9(2) of Regulation No 260/2012, since it prevents payers from being able to make a direct debit from an account located in the Member State of their choice. That clause therefore frustrates the objective pursued by that provision, that being, as was stated in paragraph 28 above, to prevent business rules from undermining the development of an integrated market for electronic payments in euros, referred to in recital 1 of that regulation. In this regard it is irrelevant that the consumer may use alternative payment methods. Although payees remain free either to offer payers the possibility of making payments by SEPA direct debit or not, by contrast, contrary to what Deutsche Bahn maintains, when they do offer such a possibility, those payees may not subject the use of that payment method to conditions which undermine the practical effects of Article 9(2) of Regulation No 260/2012. However, according to Deutsche Bahn, it can be inferred from Regulation (EU) 2018/302 of the European Parliament and of the Council of 28 February 2018 on addressing unjustified geo-blocking and other forms of discrimination based on customers’ nationality, place of residence or place of establishment within the internal market and amending Regulations (EC) No 2006/2004 and (EU) 2017/2394 and Directive 2009/22/EC (OJ 2018 L 60 I, p. 1) that Article 9(2) of Regulation No 260/2012 does not relate to a residence condition, such as that at issue in the main proceedings. However, aside from the fact that it excludes from its scope transport services, such as those at issue in the main proceedings, and that it only became applicable from 3 December 2018, that is to say after the facts of the main proceedings, it is sufficient to state that Regulation No 2018/302, which specifically concerns geo-blocking, has no effect whatsoever on the interpretation of Article 9(2) of Regulation No 260/2012, as the Advocate General noted in point 39 of his Opinion, in the absence of a cross-reference made by the EU legislature between those two regulations. Deutsche Bahn also maintains that a residence condition such as that at issue in the main proceedings is justified by the need to credit-check payers, since the risk of abuse or default on payment is particularly high when, as in the case in the main proceedings, the direct debit follows on from a mandate delivered directly by the payer to the payee without the involvement of either of their payment service providers. In those circumstances, the payee should himself assess the risk of the client defaulting on his payment. It must be noted, however, as the Advocate General observed in points 46 and 47 of his Opinion, that neither Article 9(2) of Regulation No 260/2012 nor any other provision of that regulation provide for an exception to the obligation set out therein, the EU legislature having sufficiently taken into consideration the various interests at stake between payers and payees when adopting that provision. In any event, as the Commission noted during the hearing, nothing prevents a payee from reducing the risk of abuse or of default on payment by, for example, providing that delivery or printing of tickets will only be possible once the payee has received confirmation that the payment has actually been collected.  In the light of the foregoing, the answer to the question referred is that Article 9(2) of Regulation No 260/2012 must be interpreted as precluding a contractual clause, such as that at issue in the main proceedings, which excludes payment by SEPA direct debit where the payer does not have his place of residence in the same Member State as that in which the payee has established his place of business. On those grounds, the Court (Fifth Chamber) rules:

Article 9(2) of Regulation (EU) No 260/2012 of the European Parliament and of the Council of 14 March 2012 establishing technical and business requirements for credit transfers and direct debits in euro and amending Regulation (EC) No 924/2009 must be interpreted as precluding a contractual clause, such as that at issue in the main proceedings, which excludes payment by direct debit in euros under the European Union-wide direct debit scheme (SEPA direct debit) where the payer does not have his place of residence in the same Member State as that in which the payee has established his place of business.

On 11 marc 2015, Francesco Legrottaglie presented a denunciation against the defendant, reporting he had stolen some jewels and sold them back to a merchant in Osuna (Italy). Two years later, in 2017, the defendant had admitted the crime, and asked the judge to have an offer, as it is stated on art 444 of Italian Criminal Procedure Code. Problem is as per same article for the crimes as recycling it is foreseen that in order to receive the benefits of a flea bargaining the profit of the crime shall be returned. Now the defendant did not returned the profit, and therefore even if he had admit the crime could not reive a better treatment as per previous agreement with the Accuse. There was so a bad situation: a defendant willing to admit his crime (even because in Italy he would have a lower yearlong sentence), but the agreement could not be accepted until the profit would have been returned (a profit that the defendant does not have). The Judge had therefore decided to ask the Accuse to modify the charge, in theft, avoiding so the necessity of returning the profit. However, the Accuse could not proceed, an s they had proof of the proof, and therefore the judge was appointed by the accuse to decide by the facts shown in the trial if the crime was a theft or a recycling. Now this change is the real problem, as changing the title of the charge would result in not letting the defendant use the flea bargaining (a civil rights recognized in Italian constitution and criminal code)). The Italian judge had therefore escalated a European law questions regarding the regulation 2012/13 and the art 48 TFUE, asking if they are applicable on the case, considering that there would be a different treatment based on the different charge.

The court would start to deliberate Over the prejudicial measure, took by the judge, fist considering the Admissibility. Indeed from a side the Italian government reports the demand di pronuncia pregiudiiziale, cannot be received by the court unde the basis of the 2012/13 regulation, as it concerns transnational crimes, while the crime the court is considering in this case is a crime committed by an Italian national in Italian state limit towards another Italian national, therefore it does not qualified as transitional crime. To this claim the Court will answer reporting that nor the art 1 or any other one present in the regulation quoted is actually defining the regulation itself as binding just transnational crimes. Regarding the matter considered by the Regulation the court goes on explaining how in the regulation at art 10, 14 and then reminded in 3 and 4, the main goal is to create an European pattern of common law of which every sentence shall include in its motivation, in order to facilitate the communication between the European organisation and members state, and members state themselves, creating a web of common law criteria to utilize in criminal trials. Goal of the regulation is therefore harmonization and not any other , therefore the claim could be receivable by the Court OF European Justice e, considering its role of law harmonizing inside the European union ,  and the fact the question is regarding harmonizing European principles and the member state law ones.

Again, the Italian government replied that it could be a matter of the Eu court but the material fact it is anyway outside the legal framework of the competence of that regulation, as the fact is not foreseen in it. The court again states its role given by the art 267 of TFUE is the one , as reported before , of harmonizer of the Eu law between the member state , and in application of it in member state case , whenever would be asked by the member state judge to check on it. Again the Court askes herself: What this regulation 2012/13 is talking about? Considering the first article of the mentioned regulation is regulating the right to get informed of any suspect during investigations regarding their charges. The art 6 th explains that there are two sides of this information right: from a side there is a long list about the rights the suspected or the felon must be informed, and on the other side form the art 6 of the regulation we have the other side of the right that is lined with the right of the discovery of the accuse acts. As the case central problem is the change of charges and therefore the possibility of opening again even the terms for presenting the request for the agreement between the parts , it is to said that the part that would interest the case is the second one , that means the one regarding the informative of the accuse. The Court therefore link the case to the art 6 of the regulation , reporting that the suspect had not been arrested nor put in jail , and it had been notified with all the accuse charges and descriptions. The court anyways argues that the problem here is grounded in the fact that there is a change not on the title of the crime but on the facts, and it is therefore to analyse under the light of the Art 6 and the right to inform of the charges and the proofs to sustain it the defendant. The court then reports how in art 6 it’s not explain how it should be delivered such information about the accuse , but just that it shall not compete with the process equilibrium ,meaning the possibility of the equality of the judgement and of a right defense. IT is anyway clear that does not means ti is not possible for the accuse to change actually the information  linked with the charges , or even the proofs found them , but the only thing to respect in this case is the necessity to the other part to know such changes , in order to be able to defend himself.  It is then to add the fact that central on constant jurisprudence from previous cases, had been the title of the charges and their qualification, therefore any changes must been done in consideration of the right to defense of the defendant, that shall know anything that his contested to him. Now in italic just if the modifications are regards fact, and not the fact qualifications, the defendant could ask an agreement by art 444. Now the defendant had been informed about the changes, and as per Italian criminal procedure code, it is given to him the possibility of presenting defensive memoirs.  Therefore the change the Italian judge would like to made it is regarding not the facts but instead the judicial qualifications of the fact t, but not the fact themselves s, therefor it would not possible for the defendant to open the Agreement under the prevision of a new charge.  This consideration is then corroborated by the analyse of the 12/20163 regulation as a while and particular the art 4 and 6 , and then the ?TFUE : indeed ti is clearly stated that the right of defense means the defendant needs to know everything about his charges , and even about the eventual modification. Now being modified the type of charge it is not so clear if the European law would give to the judge the power of bypass a national law that actually is not colliding in anyway with the European one. Indeed, the defendant had been informed both of the changes and of the possibility of resenting defensive memoirs, and this therefore leads to the conclusion that the art 6 of 12/2013 and 46 of TFUE should be interpreted in a way in which they grant that there is the possibility for a national norm to actually not gigging the possibility not finding or apply a n agreement if the changes regarding the charges are based not on the facts that found the charges themselves s, but on the perception of them , reporting the fact remains the same , and changes just the interpretation of them.

In the previous post w had took under consideration a recent case about Design protection , in which it was defined individuality as a main feature of the procedure for defying in a patent in order to protect a new project. The concept of individuality of the good is quite an interesting one, for the multiple layers that defines it inside the case law and the regulations itself.  As reported by Annette Kur, Max Planck and Thomas Dreier in European Intellectual Property Law: Text, Cases and Materials:

“individual character denotes a qualitative step, i.e. the design must also differ to some extent from the available wealth of forms, with the relevant perspective for the assessment being that of an informed user”.  

As we had said in the previous post this means that a good in order to be protected by the union patent needs to have anything particularly different from the standard model that is around and this had to be spotted by the eye of an average user.

“It is a common view that legal protection of industrial designs has to follow either a patent or a copyright approach.”

As Kur says (A. Kur “The Green Paper’s “Design Approach” – What’s wrong with it” E.I.P.R. 1993, 15(10), p.374), and we can find this to be true especially if we take under consideration European law, in which the requirements of novelty and of individuality are foreseen in order to give a patent that recognize that individuality and novelty so much to patent it. Saez explains this phenomenon referring to two basic values in design that merit protection:

“the value inherent in the creativity of the designer and the objective or ‘market’ value of the design.” (V.M. Saez “The Unregistered Community Design” E.I.P.R. 2002, 24(12) p. 585).

Former value falls under the protection of copyright and latter “[…] within a system of registration close to patents.” (ibid p.585). Jehoram on the other hand states, “Designs, of course, are quintessentially a subject for copyright protection […]” (H.C. Jehoram “The EC Green Paper on the Legal Protection of Industrial Design: Half Way Down the Right Track – A View from the Benelux” E.I.P.R. 1992, 14(3), p.76). Commission has chosen to reject abovementioned alternatives and have taken, as Kur 23 says, a “Design Approach” (A. Kur “The Green Paper’s “Design Approach” – What’s wrong with it” E.I.P.R. 1993, 15(10), p.376). That being said only new designs should be registered for the purposes of preventing monopolization of designs, which are known or widely used in the market. Furthermore requirement that designs must be new serves the purpose of preventing there-registration of designs for which the protection period is about to expire. For above-mentioned reasons an alternative “Design Approach” has been chosen. Now the 2002 regulation does not define novelty and individuality but even the limits of the law concept of design to take under consideration “a result of three elements:

• A functional improvement or technical innovation in the product;

• A creative contribution of aesthetic nature by the designer; and

• An investment by the manufacturer to develop the two preceding

Elements.” (Green Paper on the Legal Protection of Industrial Designs – 111/F/5131/91-EN Brussels, June 1991, para. 5.4.1. P.56).

In evaluating if, the novelty had been added to the design and if the requirement of individuality is present, we necessarily have to enquire about functionality or the improvement that had been assigned to the new project. Saying that this innovation cannot been translated in reality without an aesthetical representation, or contribution that suits the function ability of the product, and both of this passages had been putted together by an author (which creative freedom has we had seen is important in order to stabilize the grade of the possible intervention from scratch).

Then Article 4 of the Regulation provides the requirements for protection. Paragraph one of this article shortly states, “Design shall be protected by Community design to the extent that it is new and has individual character”. This creates twofold criteria that every design shall fulfill in order to benefit from protection under the Regulation. Every design has to be new and has to have individual character. It is a cumulative test thus if one of the criteria is not complied with design will not be protected. As said therefore just one of the two criteria missing is enough to stop the eventual protection. Additional requirements are set for designs that are “applied to or incorporated in a product which constitutes a component part of a complex product…” Such designs shall be protected only if they “remain visible during normal use” and themselves fulfill the requirements of being new. Therefore, Novelty and Individuality became so not only the main features of the good that needs to be put under protection, but even the limits of the protection. However, how would we define correctly those two criteria?

Article 5 of the Regulation defines the concept of novelty. Paragraph 1states that “design shall be considered to be new, if no identical design has been made available to the public”:

1. In case of UCD before the date when design has first been made available to the public.
2. In case of RCD before the date of filling the application or alternatively the date of claimed priority.

Paragraph two states “Designs shall be deemed to be identical if their features differ only in immaterial details”. Novelty requirement has been “…interpreted and applied in very different ways in the various countries.” 45 (Green Paper on the Legal Protection of Industrial Designs – 111/F/5131/91-EN Brussels, June 1991, para. 5.5.1.1. P.67) however it could be separated into two groups known as “Subjective novelty” and “Objective novelty”. “Subjective novelty” requires proof that design has not been copied from other designers work. 46 (W.T. Fryer “Design users suggest national law changes, EC approach and strategy: Federal Republic of Germany surveys on design protection” E.I.P.R. 1990, 12(10), p. 362) whereas, “Objective novelty” requires proof that design is not known (made available to the public) anywhere in the world. “Subjective novelty” grants a right to the design owner to prevent third parties from copying the design he or she has developed. If however, a similar design has been achieved independently and there is reason to believe that designer could have not known about the former design, both designs will be granted protection and will coexist. Some industries are very mature where design differences are slight or where designs are very much limited by the standardization, technical or physical restraints. In such areas, there is a high risk of creating two designs independently that are essentially the same. In such industries “Subjective novelty” would not preclude both designers to market their products and enjoy design protection, because “Subjective novelty” requires only showing that design has not been copied. Whereas under the “Objective novelty” test, exclusive rights to the design would be granted for one designer only. It thus would preclude even independently created designs from being used.  Objective novelty” is difficult to apply in practice because it is so resource exhaustive. According to the theory, in order to determine whether a design is new, one has to compare it with all designs available in the world throughout the history. Commission stated in the Green Paper that “…- at the present stage of technology -, no way exists in which a national authority [nor European Community] 49 can establish whether a design is ‘new’ in the sense of ‘universal, objective novelty’”. The Commission rejected time and geographical area limitations finding them to be an “artificial solution” 52 to the problem. It proposed a new solution according to which the novelty will be tested against the knowledge of “specialists operating within the Community in the sector of the marketable goods to which the design is intended to be applied.” 53 This was further developed to its current wording: “known in the normal course of business to the circles specialized in the sector concerned, operating within the Community.” 54 As Horton states, “this is not strictly speaking a geographical limitation…” 55 Why is it so? The “experts”, whose opinion will be requested, as the Commission points out in the Green Paper, are specialists, designers, merchants, and manufacturers operating in the sector concerned. 56 Even though the “experts” have to operate in the Community their knowledge is not restricted territorially. Current advancements in the multimedia sector will certainly keep the trend of expanding their knowledge of foreign markets and thus the body of prior design. After establishing that “Objective novelty” test, limited to the knowledge of “experts” operating within the Community, has been the choice for the Regulation one has to analyze how this test is applied. Article 5 paragraph 2 defines that “designs shall be deemed to be identical if their features differ only in immaterial details” 65 consequently in practice the features of the design shall be compared by the “experts”. Designs

Shall pass novelty test either by being:

1. Not known to the “experts” operating in the Community; or
2. They present “…sufficient differences from known designs to Constitute a creative independent development.”

A design can have a short description up to 100 words to explain the elements visible in the representation. (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] O.J. L3, Art. 36.1(c).). “A design can be presented in up to seven views.” 73 (M. Schlotelburg “The Community Design: First Experience with Registrations” E.I.P.R. 2003, 25(9), p.385.)A design can be exposed either in color or in black and white, in photograph or in drawing. Three-dimensional designs do not have to be shown from all sides. What method of representation is chosen will determine the scope of protection. As Schlotelburg points out, “applicants should be aware that the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them.”

In the town of Remscheid in Germany, a company called Visi/one is having some problems. Two years ago (2013) in order to progress they business they had developed a new product (they work with car-etiquettes), which had been deposited for patenting. The model presented, a particular folder able to preserve the vehicle etiquettes, had immediately encountered a big problem: the fact that it was quite a standard one.

Indeed in 2015 (two years after the patent) EasyFix GmbH  , another company working in the same business field , raised a complaint to EUIPO , reporting the project had no real innovation , and that was similar to a lot of same products destined to the same market. The next year the european organization decided to follow the procedure in order to delete the project for lack of individuality. The German company had clearly protested over this rule , but the EUIPO had refused to accommodate their claim as again , they reported that the proofs produced by EasyFix (a series of largely used models of third parties identical to the Visio/one one ) had showed them how the product is not at all innovative and imitates a lot of already wide spread goods. At this Point H. Bourree e M. Bartz, the two legal corporates and lawyers for Visi/one, had decided to proceed their claim in front of the European court of Justice that had sentenced on 13 June 2019 about it.

THE PROOFS

The case brought by the two German lawyers was peculiar: first, they would argue against the proofs brought in the trial by the counterpart. Starting from a series of criteria dictated on the art 7 first paragraph of the regulation 6/2002, the accuse would say that the models presented as proofs were actually reputed to be circulating in the market in 2015 (this means after two years the project of Visi/one was deposited), and this would not then proof the fact that previous model were already reporting the same features of the incriminated project. A second fact that was contested by the accusing part , was that the EUIPO had worked on the case basing their judgment on a catalogue of an online page connected with EasyFix , that would show as proof that there were price lists containing the project clones before the actual plead for the registration by Visi/one was made. Fact is, a catalogue that allegedly would proof that correlation of time, was actually chaotic: a lot of time the address of the company EasyFix would be missing, or wrong (even differently spelled), and constant double pages and blank white parts were encountered in analysing it. EUIPO had reported already in the counter claim after their decision that they will not judge a book by the cover, and same will be for the catalogue: the fact it was so chaotic didn’t actually mean that projects were not online. The third point is on the same line as the second one, as the catalogue had reported on the Appendix that it was published for a particular “Salon of the Car market” in 2010, but yet the Accuse reported that this could not be proven, both for the chaotic state in which the document is, and  because no real proof of the publishing had been reported. Finally, the proof shown are objectively different between each other and from the final model, which Visi/one was trying to register. What they are saying is that from a side the documents shown as proofs are actually not grounded in a certain time span that could be pointed to be antecedent to the project and its patenting.

On the Other side of the Ring EUIPO reports that Art 7 of 06/2002 regulation does not describe what kind of proofs had to be took into consideration while judging on the matter , but just that it has to be proof of previous existence of the project. Therefore, they are entitled to both manage and analyse whatever kind of product had been brought to them, this means there are no claims that could be made on the evaluation of the proof s as a whole. Basically while the Accuse is trying to show that materially the proofs brought could not demonstrate any particular fact, the Defense is reporting that they are obliged to consider, as per regulation, the while of the proofs, even taking in consideration the correlation between them, and that no presumption or abstract theory could not, always by the same regulation, being appointed indeed as proving anything (this regarding the accuse theory of EasFix inserting in a later moment the models in catalague , a theory that is a non proovable presumption).  The goal of the Organization is not to calculate the possible presumptions, as the accuse is claiming when it reports the various documents are inconsistent or with contradictory descriptive data. These details are not relevant for EUIPO, as it is duty of the defense in any process to show objective proofs against the facts claimed, so it was for Visio/one to prove in front of them with objective facts that the counter claims were wrong. That had not been done, and at the opposite, they had just repeatedly worked their way in order to demolish any veracity of the proof just basing themselves on presumptions and not on the actual state of the proof. Obviously beside that they claim that the catalogue even if vague  was published in time for 2010 , this means that it is not important to have  real publishing date, as we know that he could been seen in 2010 , 3 years before the registration of the model by the German Company.

The first thing the Court did was actually to consider the fact shown and the actual object used to prove it: now the accuse is reporting there is one chaotic catalogue that could be open to interpretation and not demonstrating the fact at all. That is not all true (at least for the court) : they found out that in both the claims in first and second instance the catalogue was never one , but two in the same folder, one reporting the price listing of 2011 , and one reporting the models presented in an auto salon in 2010/2011. The catalogues are clearly chaotic as they had been scanned and then sent to the lawyer in order to prove, but they actually report a certain amount of certainty on showing the fact, or better on showing the model was already known before the registration. Then going in the details there are several parts that redirect to the actual date as 2010 or 2011  reporting the models of the cars and the date in which they will reach the market. Is clear therefore that we could not say that a document is not valid just because someone else had ruined its integrity, until it reaches the standard by law to be qualified as Proof. Hence it is even to syndicate the fact that the accuse is not recognizing the proof as relevant as it was already been not scrutinized by the EUIPO on the first and second instance, thing that does not mean it was not relevant , but just that the proof level had been reached in other ways , and that still the document was presented as thema probandum and therefore could not been forgotten as a simple document , as we said before for the regulation 6/202 the whole amount of the thema probandum is important in order to understand the value of the proof we have in front of us , this means that even if the proof won’t be took in consideration , anyways it is still a proof of the whole proving implant of the accuse. On this first point therefore, the Court had rejected all the requests of the Visio/one party, as there were no real claims on the invalidity of the proof, and they had been all accepted by the court.

The second point of that accuse again is related with the previous one: do you remember when they were saying that the proof they did took in consideration in second instance, wasn’t in first? Well now the accuse is saying: well if they say they weren’t took in consideration , why didn’t inform us that at least these proofs had became relevant now? Obviously the EUIPO said it was not its duty to inform anyone, and that the proofs were already available in the beginning to the accuse.

The court starts pointing out that in art 62 of the regulation 6/2002 , is stated it is necessary that any decision is took under proofs that had been evaluated listening to both the parts thesis , and therefore leaving the possibility to both to express their idea regarding the Thema probandum and about the Thema Decidendi.

It is obvious that in this case, the decision had been made based on other proofs, but this does not mean that the latter were not relevant or illicit, the opposite they are bot legit and relevant, just that the organization had decided to ground its decision on a safer basis, without taking in consideration the proofs. Then another part of the process is the possibility to the parts of presenting their position, and that had been possible, since the court, in every step of the proceedings that had been made till that moment had been reminded  Therefore they were already informed both of the proof and of the fact that it could be used against them. Conseguentely, even this second point has no actual existence for the Court.

Third point is still based on art 62 , as the accuse underline that for that article any sentence shall be motived  , reporting the whole of the legal and factual reasoning done in order to achieve that sentence. The accuse here underlines that having  pointed that the catalogue (one of the two) was not dated before the actual registration they would have  to know why this doc had been accepted.

On this again the court does see no invalid act by the commission : first it is to say that has per previous jurisprudence and case law is not necessary to proove or to motivate what is objectively clear under the eyes of the whole parts of the judgment , and having the documents incriminated here all the date reported in front Page (2011) , there is no need for the commission that was enquiring over the claim to motivate why they would not proceed on that : being objectively impossible demonstrate the opposite of what is clear to everyone by just looking to the document.

Finally (and we reach the last point moved by the accuse), the Visi / one attorneys complained about the fact that there is still a small space to authorship and create something even out of already known designs, and that the concept of individuality could be applied to the product, that therefore should no have been blocked in its path to the market.

The court restarts again to analyse the regulation 6/2002  , reporting that at the art 25 , paragraph 1 letter b)

“a drawing or a model could be declared null only in the cases foreseen in this disposition , and in particular if it does not have characteristic as novelty and individuality.”

Now the concept of individuality is very broad and related to another: Impression. Indeed the regulation underlines how much for Individuality we recognize as the fact that to the end user the product would generate a different general impression from another in the past (even if similar), and in taking under consideration how individual is a product we cannot left aside the whole question around the possibility of creative action by the Author himself (meaning that the author work had to be considered in evaluating the individuality). Another point therefore , is how this evaluation will be organized , to which the court recognize a procedure in the previous jurisprudence: first of all it is to determine which market the product is going to fill , or better which kind of product we have in front of us and where it is going; then it is to enquire about the end user, about the level of his knowledge of the product and if he is actually able to spot the difference between the previous products and this one (the prototype); how much there was possibility for the Author to innovate the matter and finally its contribution to innovation considering this third requirement : finally to the impressions of the end user both to the previous and for the latter version. Here therefore we got a 4-step rule to follow in order to evaluate the individuality of a particular product, a procedure that had been grounded in case law by the court. Now for the case the court is right now using the market is clear as the identity of the end use. Still three parts of the procedure miss on our valuation: end user, author liberty on adding new content, and finally the impressions.

Staring from the End user, the court states that it is important to now first the fact that he is the End user, the Iphone that is going to use the product in the way that it was meant to. On the other side this End user shall be informed, this means that he must know about the various model, even just by their appearance, and could relate and confront them, being so able to spot the difference. this means that for example when I buy a particular car, I buy that car because I see something in it and I know it is different from any kind of other car of different model: it is that particular car of that particular model that I want, and I recognize it as having a particular set of features and logos. Now in our case the commission had stated that the differences between registered model and previous one is not so strong or efficient to differentiate the product under the eye of the end user form another one.  Now that could be said as true considering who are we talking about as End user : indeed if I have an expert in front of me that is able to recognize all the models and their design he would maybe spot any minimal difference between product A (previous) and Product B ( New). The fact is that anyway, even the jurisprudence do not consider an expert as a proper end user, as an end user is the average user with not a deep knowledge of the matter. Therefore as the end users were mere merchants, they could not spot the real difference between two products identical if not for minimal details. In addition, in that, the court had seen a right reasoning of UNIPO, and therefore first and second step of the procedure had been reported as correct.

One of the main problem will be to determine author’s freedom in adopting new features or new designs inside a particular field, considering both the regulation and the particular goal of the object. Now In the sentence by EUIPO it was stated how much broad was actually the possibility for the author to modify the design and the material of the product, things that instead had been kept obsequious to the previous models. Now the concept of the freedom of the author is quite wide in European Law literature: indeed it is said to not be the main component in the valuation of the individuality of the brand, but still it has a reverse proportion with the product (this means that much was larger the freedom that is recognized to the author, less the small details will count, while much is compressed, so the details will result as way more important). As you see so, the great question that the court is leading to is coming out: was the author free or was he much more bided by regulation laws and efficacy of the project? Now this would be considered as enlarged if we are talking of a product to which we could change shape or colour if the description of the product does not have any form or shape specified. Now for the etiquettes recipients that could not be said, as there is no regulation on what form or shape shall the etiquette had, and same could go with colours or materials. There is no particular regulation or internal law, nor any particular defiance due to the efficiency of the product that could lead us to say the author was forced to do it in some particular ways, the opposite he was pretty re in deciding what to do about it. At this point therefore the occur  recognize that even the third check , on the author freedom , had been well made by the UNIPO , recognizing therefore that they had a large variety of design solution , none of them had been used.

Going to the fourth and last part of the enquire; we need to face with the Impressions.  Now as we had said with impressions we describe the general idea that the informed end user had of the product, it is important that he does not feel any De JA vu in relation with other products he had seen or used in previous times. It is to underline as the court does that the comparison must be made taking in consideration models that had been distributed to the public or registered (not the one still on prototype). On the first instance the EUIBO had reported that they had not taken in consideration the other models, as it was clear that the goal of the etiquette was to show a simple etiquette without damaging it, and as every one of them is pretty similar and pretty as the same features, it is not necessary to evaluate as the end user would not put any attention in the slight differences seen by the accuse. The Euipo had underlined the same  differences as irrelevant in second instance. Now the court had to analyse the design of the product, that result of three parts in every model, the transparent front, the square shaped back and finally an insert patch. Now if the same are the features and in the same way are modified in the new product , with no great difference for the end user , it results that they had no difference at all if not minimum ones.

Now let us make a quick recap:

–              The proofs shown are considered valid, as it is in power of UNIPO to take them in consideration and evaluate them in the various layer of the proceeding.

–              The sentence and the motivation is legit and could not be addressed as unlawful.

–              Finally the evaluation of the individuality of the product shows that the product has no individuality or novelty whatsoever.

This is the point in which the Court clearly states that the whole proceeding is not granted in law , as the question that were raised were not relevant at all for considering the choices of the European organization as unlawful or wrong in any sense (even procedurally). Therefore after almost 6 years of legal battle , the court of Eu justice had decided that Viso/ one was not entitled to delete the decision , and therefore to have its patent back.

COMMENT

In this sentence the Court had touched again the thin ice that is the Copyright legislation, reporting how it must be evaluated a product as novelty or individuality able to make a difference inside other models in the market. The importance of dividing the of the individuality, or better of its way of reveal itself to the eyes of the enquirer, make us understand even some features of the individuality: it is not only the difference that guarantee uniqueness to the product, but even a constant evaluation based on the possibility of the author inside the market he would had liked to address, the final outcome of his project, and the impression that the end user has on the thing. We could therefore said that we had a triple way of conceptualizing the individuality based on this decision : we had an individual side , rapresented by the choice of the author and his own evaluation of the business field in which he would like to  enter. Secondly, there is to evaluate the project or the product as an object: therefore in all his differences and all the regulation that shapes it before it actually came out form the mind of the author. Finally we had the social layer , the one represented d by the market itself moved by the informed end users : their impressions of what had been before is determinant in defining if something is really new and particular , or just the same.