This edition of Brands Update looks at developments in the trade mark world in light of the COVID-19 pandemic, as well as providing a round-up of UK and European trade mark cases. We provide tips on how brand owners can protect their trade marks, and examine how the ASA and CMA are cracking down on COVID-19 related practices. We also provide a guide to the responses of the IPOs worldwide to the pandemic. The guide will be updated regularly.
In other news...
- The CJEU has given judgment in Coty Germany GmbH v Amazon (C-567/18). The CJEU held that the mere storage of goods by Amazon (in the context of its online market place) which infringe trade mark rights does not constitute an infringement by Amazon of those trade mark rights. A company which, on behalf of a third party seller, stores goods without being aware that they infringe trade mark rights does not of itself use that trade mark, so long as it does not pursue, like the seller, the aim of offering the goods for sale or putting them on the market. We will be featuring a longer article on this case in next month's Brands Update.
- The CJEU has also issued its preliminary ruling in AR v Cooper International Spirits LLC and Others. The question referred by the French Court was whether the owner of a national trade mark whose rights in a registration have been revoked for non-use retains the right to claim compensation for infringing use which occurred before the date on which the revocation took effect.
The CJEU held that the Trade Marks Directive gives member states the option of allowing trade mark owners the right to claim compensation in such circumstances. Since the French legislature had not included a provision in its legislation preventing a claim of infringement where the mark in question has been revoked, a compensation claim must be possible. We will be featuring a longer article on this case in next month's Brands Update.
- The AG's opinion in Constantin Film Verleih GmbH v YouTube LLC, Google Inc. (C‑264/19) has been released. This concerns the scope of Article 8 of the Enforcement Directive. Article 8 provides that, in IP infringement proceedings, on request of the claimant, a competent judicial authority may order that information on the origin and distribution networks of the infringing goods or services be provided by the infringer and/or certain other persons. That information includes the "names and addresses" of the producers, manufacturers, distributors and the like of the infringing goods or services.
The question referred was whether, in respect of a user who has uploaded infringing files to a video sharing platform, "names and addresses" includes that user's email address, telephone number and/or IP address. The AG's view is that the words "names and addresses" does not cover these items. In coming to this view, the AG looked at the natural meaning of the words used, the use of similar words in other Directives, the background to the Directive and what would have been meant when the Directive was drafted. Accordingly, Member States are not obliged to provide for the possibility for competent judicial authorities to order that such information be provided.
We will also be featuring articles in next month's edition of Brands Update on cases including on a trade mark opposition by Cambridge University which considers the extent of trade marks which include geographical locations, an attack on the Babybel 3D mark, and eBay's dispute with Gamersbay.