Trade Marks and Geographical Indications 

Image by Riana Harvey

Jocelyn Bosse provided an update on an intellectual property-related aspect of Russia’s occupation of
Ukraine. The Russian Federal Service for Intellectual Property registered “Melitopol Cherries” as a new geographical indication, which prompted Ukraine to ask the WIPO General Assembly to intervene. The Melitopol Cherries were a significant component of Ukraine’s exports and had already been registered as a Ukrainian geographical indication since September 2020.

Marcel Pemsel discussed and criticised the reasoning of the EU General Court’s decision on Nike’s “FOOTWARE” trade mark by comparing the CJEU’s Koninklijke KPN Nederland (case C-393/99 P) and Doublemint (case C-191/01 P) decisions. The General Court upheld Puma’s allegations, ruling that “FOOTWARE” was an invalid trade mark under Art. 7(1)(c) EUTMR due to being descriptive.

Katfriend Spyridon Sipetas (Stockholm University) explored “the brat phenomenon” in light of the extensive use of the “brat green” not only by Charli xcx but also by the Green Party and several fashion brands. Although Charli xcx uses the “brat green” prominently in her new album cover and to promote the album, she has not attempted to monopolise her signature colour under trade mark law by claiming acquired distinctiveness, at least for now. Our Katfriend considers this “open use” strategy a novel approach to colour branding in the digital age.

Patents

Rose Hughes analysed the recent decision of the Enlarged Board of Appeal (T 1994/22) which restricted reliance on post-published evidence to demonstrate patentability (introduced by G 2/21). The Board of Appeal revoked the selexipag polymorph patent due to lack inventive step, and the patentee was not allowed to rely on broad, vague statements regarding the product’s quality as post-published evidence.

Copyright

Katfriend Mirko Brüß (Brüß Law) analysed two recent decisions of the Court of Justice of the EU arising from referrals by German courts, concerning the right of communication to the public. As the right of communication to the public within the meaning of Art. 3 (1) of Directive 2001/29/EC is divided into several rights in German copyright law, with the first referral (C-723/22) the Court of Justice was asked to clarify which of those rights would be affected when a hotel provides television sets in its rooms and fitness areas, and when a signal is retransmitted to those televisions via a cable distribution system owned by the hotel. In the second referral (C-135/23) the Court of Justice confirmed that if the tenants of an apartment building can be regarded as a ‘new public’, then the apartment operator’s act of “providing television sets equipped with an indoor antenna that, without further intervention, pick up signals and enable broadcasts to be made” would fall within the scope of communication to the public.

Kevin Bercimuelle-Chamot reported on the recently published EU AI Act, focusing on its IP-related provisions. Recitals 104 to 109 and Article 53 of the long-awaited Regulation, when read together with the Directive 2019/790, address copyright issues arising from the training of generative AI tools with copyright protected content.