Simont Braun authors ICLG Belgian Chapter on Designs

What are the key principles of Benelux Design law?

Fernand de Visscher and Julie Kever authored the Belgian chapter on Designs in the International Comparative Legal Guide 2021 (ICLG): a pragmatic and comprehensive overview for all IP practitioners.

The guide is available here.

Should you have any question, please contact the authors:
fernand.devisscher@simontbraun.eu
julie.kever@simontbraun.eu
+32 (0)2 543 70 80

Trademarks & Designs | Fake application or renewal invoices!

Trademark applicants and owners often receive documents asking for payments related to a trademark or design application or renewal. Cautiousness is highly recommended in this respect!

For example, a new misleading invoice is in circulation, which takes the form of a fake European Union Intellectual Property Office (EUIPO) renewal invoice. The misleading invoice has recently been reported to the EUIPO. This fake invoice uses the EUIPO’s logo, name, acronym and address, and purports to be a EUTM renewal invoice issued by the EUIPO. It is mailed from Geneva, Switzerland, and includes a demand for a “registration and entry fee” to be transferred to a Polish bank account with a PL IBAN prefix.

Trademark applicants and owners should be aware of these practices.

The EUIPO has published a list of the firms or registers that users have complained of as having sent misleading invoices. The list is available here.

As can be seen from the list, the same applies to designs applications and renewals.

The list is not exhaustive.

For any question of guidance, please do not hesitate to contact:
Emmanuel Cornu: emmanuel.cornu@simontbraun.eu
Julie Kever: julie.kever@simontbraun.eu

The CJEU Testarossa judgement | Clarification of the contours of genuine use & the burden of proof

A trademark which has not been put to Genuine use by its owner or an authorised third party within five years after its registration is liable to revocation unless there are proper reasons for its non-use.

On 22 October 2020, the Court of Justice of the European Union (“CJEU”) clarified the contours of the notion Genuine use of a trademark, and in particular when the trademark is used only for some of the goods protected by such trademark. The CJEU also clarified the question of the burden of proof of Genuine use in revocation proceedings. A long-expected and welcome decision (available here) for all practitioners and trademark owners.

Relevant facts

Ferrari had registered the “Testarossa” trademark as both an international and a national (German) trademark in 1987 and 1990 respectively. The registrations notably cover vehicles, motor cars and parts thereof. Ferrari sold a luxury sports car model under the “Testarossa” trademarks between 1984 and 1991 and sold the follow-up models until 1996. During the period relevant to the assessment of Genuine use of the “Testarossa” trademarks, these were used only to identify replacement and accessory parts of luxury sports cars previously sold under those trademarks.
In the first instance proceedings, the Regional Court of Düsseldorf (Germany) cancelled the trademarks on the grounds of revocation, as it considered that Ferrari had not made Genuine use thereof. Ferrari launched an appeal before the Higher Regional Court of Düsseldorf which referred several questions to the CJEU for a preliminary ruling on the interpretation of Article 12(1) of Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trademarks (this directive is no longer in force; it was repealed and replaced by Directive (EU) 2015/2436 (see Article 16).


Highlights of the ruling

1. To use the trademark for some of the goods can suffice

To use the trademark for some of the goods covered by the registration may be sufficient to maintain the trademark protection for all the goods covered, unless the former are perceived by the consumer as an independent subcategory of the latter.

If independent sub-categories within a broad category of goods can be identified, Genuine use must be established for each sub-category. The purpose and intended use of the goods or services at hand is the essential criterion to determine the existence of an independent subcategory of goods. As an example, in a recent decision (T-49/20 of 15 October 2020), the General Court of the European Union considered “plastic safety boxes and closures thereof” as an independent sub-category of the broad category “goods of plastic” protected by a trademark.

The fact, for goods or services, to belong to a “particular market segment” such as, in the case at hand, “sports cars” or “luxury cars”, within the broader category of “cars”, is not relevant to establish if they constitute an independent subcategory.

Hence, Genuine use of the trademark for luxury sports cars and replacement parts or accessories of those cars may be considered as Genuine use of the trademark for “vehicles” and “replacement parts” per se (in its broad sense).

2. Use of the trademark for related services and for second-hand goods is relevant

The use of the trademark for services (maintenance, repair) in relation to those goods is relevant to assess the existence of Genuine use.

When the trademark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it was registered, there is Genuine use, even if this use relates to second-hand goods. The principle of exhaustion of trademark rights does not alter this consideration.

3. The trademark owner has the burden of proof in revocation proceedings before national courts.

The trademark owner has to prove Genuine use of its trademark.

The owner of the trademark at issue is best placed to give evidence that its mark has been put to Genuine use. National rules stating otherwise shall be set aside as they could harm the fundamental EU law objective of “the same protection under the legal systems of all the Member States”. In so doing, the Court unifies the principle of the burden of proof on an EU level.

Lessons for the Benelux trademark owners

The Court’s lessons are valuable for Benelux trademark owners, particularly with regard to the burden of proof.

Revocation proceedings against a Benelux trademark can be brought either before the Benelux Office for Intellectual Property, through administrative proceedings, or before the national courts, through judicial proceedings.

Before the Office, it is up to the owner of the trademark threatened by revocation to prove that his trademark has been put to Genuine use. Therefore, the burden of proof falls directly on the defendant.

Before the national courts and, in particular, before the Belgian courts, the burden of proof falls on the claimant (the same applies in Germany): the party invoking the revocation of a trademark for non-use has to prove such non-use. However, as providing evidence of a negative fact is particularly difficult, the judge often reverses the burden of proof and transfers it to the trademark proprietor or, at least, obliges the defendant to loyally participate in the administration of evidence.

After the “Testarossa judgment”, there will no longer be any question of applying the principles of civil procedure before the national courts, but only the teaching of the CJEU. The owner of the trademark threatened with revocation will have to provide all evidence of Genuine use. Therefore, in its daily business management, the trademark owner should pay particular attention to preserve all relevant documents and archives in case such a claim would arise.

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For any question or assistance, please contact the authors:

Julie Kever
julie.kever@simontbraun.eu
+32 (0)2 533 17 08

Emmanuel Cornu
emmanuel.cornu@simontbraun.eu
+32 (0)2 533 17 22

Simont Braun recognised again for its patent expertise by iAM 1000

Our IP team has again been highly recognised in Silver Band for its expertise in patents by iAM Patent. The department is ranked in Silver with the following mention:

“Complex global patent litigation is meat and drink to the lawyers at Simont Braun, who conjure up ingenious solutions to contentious challenges in the life sciences, medical device, electronics sectors. Fernand de Visscher recently played a hand in a high-profile matter for weapons manufacturer FN Herstal, ensuring that his client could keep its key product on the international market. He also teamed up with colleague Eric De Gryse to represent OGI Systems, a diamond and gemstone manufacturer, in parallel infringement proceedings which are also ongoing in Israel and India. They both possess significant trial strength and an intuitive feel for the intricacies of each brief, giving every angle the attention it deserves to cover all bases and construct bulletproof arguments.”

Fernand de Visscher and Eric De Gryse are also individually ranked in Silver for their experience and capabilities.

Thank you to our clients and peers for your trust!

Simont Braun authors ICLG Belgian Chapter on Trademarks

Emmanuel Cornu, Eric De Gryse, Julie Kever and Romain Meys authored the Belgian chapter on Trademarks in the International Comparative Legal Guides 2020, providing a high-level and easy-to-read overview of the key issues and legal principles applicable to this field.

The Belgian chapter is available here.

For any question in this area, do not hesitate to contact the authors.

Simont Braun assisted Rewe in one of the largest mergers in the European retail sector

Simont Braun has advised Rewe, the second largest German supermarket chain, on the Belgian legal aspects of the purchase of Lekkerland/Conway, a major wholesaler specialised in consumption on the go, supplying gas stations, kiosks, convenience stores, etc. The transaction was signed on 28 May 2019 and the parties are now waiting for clearance by the competition authorities.

As both Rewe Group and Lekkerland are active in several European countries, their merger implied substantial cross-border aspects and the active cooperation of several top tier law firms, principally in Germany (lead), Belgium, Switzerland, the Netherlands and Spain.

Simont Braun’s Corporate M&A team advised Rewe on the Belgian legal aspects of the transaction, in particular by carrying out a legal due diligence on the Belgian target companies and assisted on the related legal and regulatory questions surrounding the transaction.

Our team is delighted to have contributed to such a landmark European cross-border transaction, in close cooperation with Taylor Wessing Germany (lead firm). Our demonstrated capabilities to act in the framework of international transactions make us a go-to law firm for such matters on the Belgian market. Our integrated multidisciplinary structure and strong linguistic skills were clearly a plus,” highlights Axel Maeterlinck, partner in Simont Braun’s Corporate M&A department.

The Rewe Group generated a turnover over € 61 billion last year, courtesy of its 360,000 employees in 22 European countries. With the merger with Lekkerland, a new European powerhouse is born in the convenience segment. Lekkerland has about 4,900 employees in Europe and generated a turnover of € 12.4 billion euro last financial year. In Belgium, the group operates under the name Conway and its 400 people generate a turnover of € 1.5 billion (source: www.retaildetail.be).

The Simont Braun team was led by partner Axel Maeterlinck, together with partners Fernand de Visscher, Steven Callens and the assistance of counsel Pierre Van Achter and associates Tine Bauwens, Laura Grauer, Julie Kever and Peter Blomme.

Benelux Trademarks: Extension of the procedures with the Office and centralisation of the appeals with the Benelux Court of Justice

On 1 June 2018, the amendments[1] to the Benelux Convention on Intellectual Property (BCIP), adopted in 2014, entered into force. From 1 June on, new powers are attributed to both the Benelux Court of Justice (BCJ) (1) and the Benelux Office of Intellectual Property (BOIP) (2). Furthermore, a new opposition ground – currently already available to opponents of EU trademarks – is available (3). The implementation of the second EU harmonisation directive is on track but still not in force.

Article also available in French, Dutch and German.

Centralisation of the appeals filed against the decisions of the BOIP with the second chamber of the BCJ

Until now, appeals against decisions of the BOIP (refusal or opposition decisions) had to be filed before the Courts of Appeal of Brussels, The Hague or Luxemburg, depending essentially on the residence of the trademark applicant.

According to the new article 1.15bis BCIP, the BCJ becomes the unique and central jurisdiction for all appeals against decisions of the BOIP in the framework of its attributions under titles II, III and IV BCIP (trademarks, designs, amendments of registrations and i-depot procedure).

The new competence of the second chamber of the BCJ replaces the current competence of the national courts of appeal as regards these decisions. Further to the intended harmonisation of case law, the centralisation of all appeals before the same court aims at enhancing procedural efficiency.

The appeal period is two months, irrespective of the type of BOIP decision against which the appeal is launched. Whereas the procedure in first instance before the BOIP can be conducted in French, Dutch or English, the appeal is introduced either in French or Dutch. Attention must be drawn to the fact that the choice of language in the appeal proceeding depends, according to article 1.6 of the rules of procedure of the BCJ, not on the language of the procedure in first instance, but on the sole choice of the appellant. Consequently, even if the proceedings before the BOIP have been conducted in Dutch, the appellant will be allowed to launch the appeal in French, and conversely. It is furthermore of interest to note that the rules of procedure do not foresee the possibility to bring incidental appeals before the BCJ’s second Chamber.

The appeal against the second Chamber’s decisions will be brought before the First Chamber for legal review only (analogous to the Dutch Supreme Court “Hoge Raad” and the “Court of cassation” in Belgium and Luxembourg). The First Chamber also retains competence of preliminary rulings concerning questions asked by national courts about the BCIP. Both First and Second Chambers should be entitled to submit preliminary questions to the Court of Justice of the European Union.

Filing invalidity and revocation applications to the BOIP

Until now, invalidity and revocation proceedings had to be filed before Belgian, Dutch or Luxemburg national courts. From 1 June on, the BOIP and the national courts have concurrent jurisdiction.

It is now possible, through an administrative procedure, to obtain the invalidation of a trademark on absolute (a.o. against signs which cannot constitute trademarks, lack distinctiveness, etc.) or relative grounds (a.o. against identical or similar prior trademarks), or to claim its revocation in the absence of genuine use. With these new administrative remedies available under chapter 6bis, the BCIP is now in line with the EU trademarks regulation, which already provides for an administrative procedure before the EUIPO. It will be up to the claimant to launch either a procedure before a national court (ruled by articles 2.27 and 2.28 BCIP) or an administrative procedure before the BOIP (new chapter 6bis, new articles 2.30bis until 2.30quater). Such choice will depend on strategic considerations. In this respect, it is noteworthy that the administrative proceedings are suspended when the trademark on which the invalidity or revocation action is based (article 2.30ter, sub 2.a.iii BCIP) or the trademark against which said action is directed (article 2.30ter, sub 2.b.iii BCIP), is subject to a judicial nullity or revocation procedure. Furthermore, a counterclaim for infringement will not be possible before the BOIP, but only before national courts.

As reported sub (1), as from 1 June 2018, appeals against final decisions of the BOIP in these matters will have to be filed before the second chamber of the BCJ.

New opposition ground: well-known trademarks

Under the previous law, the opponent could only act against an identical or confusingly similar trademark registered for identical or similar goods or services (previous article 2.14, al. 1 BCIP). Today, the BOIP is regarded as having the necessary resources to handle a broader range of opposition grounds. Hence, an additional ground for opposition is made available: the opponent, owner of a well-known trademark, can invoke such trademark to oppose a later trademark even if different goods or services are concerned, subject to the respect of the other applicable conditions. Article 2.14 BCIP was modified accordingly.

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All amendments outlined above entered into force on 1 June 2018 for procedures initiated as from that date. This means, in particular, that the previous article 2.14, al. 1 BCIP (limited grounds for opposition) remains applicable to all opposition proceedings launched before 1 June 2018.

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For any question or assistance, please contact
Emmanuel Cornu and Eric De Gryse
emmanuel.cornu@simontbraun.eu
eric.degryse@simontbraun.eu
+32 (0)2 543 70 80

[1] Protocol of 21 May 2014 and Protocol of 16 December 2014.