NEWSLETTER MarCH 2023
Trademark LAW
General Court finds that Danish fashion brand’s registration of crown logo does not take unfair advantage of the Rolex logo
In a recent decision the General Court found that there was no likelihood of confusion between the Danish fashion brand ‘Junk de Luxe’ registration of a crown logo and the registered Rolex logo consisting of a crown and the letters “ROLEX”.
The contested sign was filed for goods covering clothing, footwear and headgear in class 25, whereas Rolex’ earlier trademark was registered for watches in class 14. The Board of Appeal had found that clothing, footwear, and headgear covered by the contested mark were dissimilar to the jewelry and watches covered by the earlier mark due to the dissimilar characteristics and intended uses. The General Court likewise found that there was no likelihood of confusion within the meaning of art. 8(1)(b) EUTMR.
The General Court agreed with Rolex that the Rolex crown logo had acquired a reputation within the European Union. The Court however found that Rolex had not proven that the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, or that it would be detrimental to that distinctive character or that repute. Consequently, the opposition on the basis of Article 8(5) EUTMR was likewise rejected.
The decision can be read in full here.
The Maritime- and Commercial High Court finds that Wunderbaums EU-trademarks cannot prevent the registration of Danish trademarks containing a spruce tree
In recent decision by the Danish Maritime- and Commercial High Court, the Court upheld the Danish Board of Appeal for Patents and Trademarks decision to reject the opposition by Wunderbaum against a number of trademarks containing a spruce tree.
The Court found, like the Board of Appeal, that it was undisputed that Wunberbaums trademarks were well-known and that there was likeness between the goods in class 3 and 4.
The Court however found that even if the trademarks all contained a spruce tree, the actual shape of the trademarks had significant stylistic and expressive differences. On this basis the Court did not find the necessary basis for overriding the Appeal Board's decision.
The decision can be read in full in Danish here.
Copyright Law
Supreme Court finds design of ceramic vases protected by copyright and the Marketing Practices Act and raises awarded damages to 1 million
The Danish Supreme Court has now finally concluded the extensive product imitation case between design company Anne Black ApS and Denmark’s biggest retail conglomerate Salling Group along with its retail product manufacturer Ronald A/S.
The judgement, which was published on 22 March 2023, concluded that Salling Group and Ronald had infringed Anne Black’s copyright and rights in accordance with the Danish Marketing Practices Act. The infringers were ordered to pay DKK 1 million in damages and DKK 600.000 in costs.
The case included several issues of general importance for the IP sector in Denmark, and it will likely serve as an important precedent for the protection of designers and rightsholders.
Read more about the case in our in depth article here.
The ”Blurred Lines-Effect” – Significant Increase in Copyright Claims following the US “Blurred Lines” case
In 2015, the song “Blurred Lines” created by artists Robin Thicke and Pharrell Williams in 2013 was found to infringe the copyright of the tune “Got to Give It Up” of 1977 by musician Marvin Gaye. The verdict was upheld by a dissenting court in 2018, in which the dissenting judge noted that verdict allowed Gaye to "[…] accomplish what no one has before: copyright a musical style". The case sparked considerable debate and criticism within the music industry and copyright scholarship for its wide line between wrongful plagiarism and rightful inspiration.
Although concluded in 2018, the case has impacted US copyright case law ever since. At large, the majority of copyright disputes are settled without a trial. However, between 2016 and 2020, an average of 15 music copyright claims were filed with US courts, compared to the average of five cases a year between 2010 and 2015. Hence, the case has been seen as expanding the scope of copyright – with the consequence of substantially restricting music creativity and production – and thus opening floodgates for broad copyright claims.
Albeit the US copyright regime is distinct from EU copyright law, it is not inconceivable that this tendency will eventually affect EU copyright law: Just in 2018, two copyright claims against the musician Ed Sheeran were filed in the UK, and in 2019, legal proceedings on the copyright of the Danish song “Nede Mette” were initiated before the Danish Maritime and Commercial High Court.
Read more about the “Blurred Lines-Effect” here.
PATENT LAW
Danish court grants PI, albeit dissenting opinion finds patent invalid due to lack of inventive step
On 28 February 2023, the majority of the Danish Maritime and Commercial High Court did not find sufficient grounds for rebutting the presumption of the validity of the Danish patent, held by Novartis, and thus decided to grant a preliminary injunction against Zentiva. Notably, though, the opposing judge held the patent-in-suit to be invalid, as it was devoid of inventive step. The patent-in-suit was a pharmaceutical patent used for the treatment of multiple sclerosis.
The dispute of the case was whether the presumption of validity of the patent-in-suit had been undermined to an extent that rendered the grounds for issuing a preliminary injunction uncertain.
Although the patent application did not include any test results pertaining to the experiments described in the application, the Court found that the experiments were not to be regarded as merely prophetic, as they were substantiated by an inside report by Novartis dated 12 May 2009 concerning experiments performed in the years of 2000 and 2005. Thus, external information was used to substantiate the requirement for a sufficient description.
The parties – and the judges – disputed on the determination of the state of the art – in specific, whether this comprised Novartis’ presentation of the invention dated 21 June 2005 or their press release of 6 April 2006 – and the involvement of an inventive step. As the presentation did not provide any further, novelty-defeating descriptions of the invention, the press release was considered the closest prior art, to which the invention was to be compared.
With reference to the statements given by experts before the EPO, with three arguing that the effect of a dose of 0,5 mg fingolimod was not obviously deducible from the press release and one of the opposite opinion, the majority found both interpretations plausible. Ultimately, the Court did not find sufficient grounds for setting aside the decision by the EPO.
Read more about the decision in our in depth article here.
Marketing Practices Law
Proposal of new EU directive on green marketing claims
On 22 March 2023 the European Commission set forth a proposal for a new directive labeled the Green Claims Directive. The purpose of the directive is to prevent false environmental claims and to allow consumers to make better and more informed choices regarding the environmental properties of the products they buy.
The basis for the proposal is a 2020 study by the Commission, which found that more than half of the studied environmental claims were vague, misleading, or unfounded and that 40% were undocumented.
Misleading or undocumented environmental claims has long been an issue in marketing law. The Danish Consumer Ombudsman has issued guidelines on environmental claims, but up until now the issue has not been regulated specifically and has instead fallen within the general clauses in the Danish Marketing Practices Act.
Most recently, in a case before the Maritime- and Commercial High Court where a producer of roofing felt claimed that its products were more eco-friendly than competing products. The
Court found that the claims pertained to facts and therefore had to be documented pursuant to the Marketing Practices Act § 13. Since the claims regarded the environmental properties of the products, the Court found that the requirements for documentation were more rigorous. The defendant did not fulfill these requirements. The judgement can be read in full in Danish here.
The Proposal for a Green Claims Directive can be read in full here.