POU | Decision 0013473
Date Published: Oct 1, 2017
CANCELLATION No 13 473 C (INVALIDITY)
Paul Salame, Immeuble Abou-Habib, 6ème étage Antelias Main Street, Antelia El-Metn, Lebanon (applicant), represented by Cabinet Germain & Maureau, BP 6153, 69466 Lyon Cedex 06, France (professional representative)
a g a i n s t
Importexma, S.L. Cardener, 35-37 Bjos, 08024 Barcelona (Spain) (EUTM proprietor), represented by Francisco Pérez Requena, Mallorca, 272 - 7ª planta, 08037 Barcelona (Spain) (professional representative).
On 07/04/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 12 149 142 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
REASONS
The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 12 149 142, namely:
Class 25: Ready-made clothing for women, men and children.
Class 35: Providing of information and consultancy relating to the retailing and sale via global data transmission networks of all kinds of ready-made clothing for men, women and children.
Class 39: Transport, storage and distribution of all kinds of ready-made clothing for men, women and children.
The application is based on, inter alia, European Union trade mark registration No 11 491 131 and a work protected under the copyright laws in Spain. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR. Moreover, the applicant invoked Article 52(1)(b) EUTMR and Article 53(2)(c) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
In support of its claim under Article 52(1)(b) EUTMR, the applicant argues that the word and pictorial elements ‘POU’ and (the POU character) were created by Mr Paul Salame which is the owner of several earlier rights. It refers to EUTM, US, Canada and Brazil trade mark filings, all preceding the filing date of the contested EUTM. The applicant is also the owner of a certified US Copyright. The applicant contends that it has used these verbal and pictorial elements in particular in a domain name, in a mobile game application for iTunes and in a Facebook page all before the filing of the contested EUTM. It also refers to two license agreements concluded with two Spanish companies for the licensing of ‘POU character, designs and font’ in connection with a variety of products covering various countries, including all the Member States. The applicant makes the point that the POU character is an original design by Mr. Salame which does not appear anywhere worldwide prior to his use of that sign. As a result, the applicant contends that the EUTM proprietor could not ‘coincidentally’ come up with the same stylisation associated with the same name in a bona fide way, over one year after the first publishing of ‘POU’.
Regarding the claim under Article 53(2)(c) EUTMR, the applicant indicates that it is the owner of a registered US copyright for work identified as ‘Baby Pou’, ‘Child Pou’ and ‘Adult Pou’ (with devices) first published on 05/08/2012 and registered on 16/01/2013. It refers to the relevant provision of US law on copyright to claim its entitlement to the work. It argues that the US and the EU Member States (especially Spain) are bound by the Berne Convention for the Protection of Literary and Artistic Works and Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The applicant further focuses on the protection of copyright in Spain and explains it detail how the applicant’s works are protected under Spanish law (Royal Decree 1/1996 and Trademark law No 17/2001). The applicant considers that the evidence submitted shows that the work is “original” and that the copyright to existed prior to the date of filing of the EUTM and that such copyright is protected in Spain. Applying the provisions of the Spanish law to the case, the applicant concludes, after comparing the devices, that the EUTM infringes its copyright.
Finally, with respect to the claim under Article 53(1)(a) in conjunction with Article 8(1)(b) EUTMR, the applicant compares each of its earlier EUTM No 11 620 937 ‘POU’ and No 11 491 131 against the contested EUTM and concludes that the goods and services are identical or similar and the signs are similar. As a result, there is a likelihood of confusion in the eyes of the public.
In support of its observations, the applicant filed the following evidence:
- Appendix A: information on the various trade marks filed by the applicant in the EU, Canada, US and Brazil and on the US copyright;
- Appendix B: evidence of use of ‘POU’ and device, in particular, registration of the domain name pou.me (05/09/2008), the release of the mobile game application on iTunes on 15/12/2012 which features the device and ‘POU’, and the Facebook page for ‘POU’ character created on 29/07/2012;
- Appendix C: license agreements with two Spanish companies, starting respectively 01/04/2013 and 01/06/2013, covering various territories (including all Member States) referring to a variety of license products (such as plush toys);
- Appendix D: extracts of US law on copyright;
- Appendix E and F: extracts of Spanish law in Spanish (with English translation).
The EUTM proprietor did not submit observations in reply.
EARLIER COPYRIGHT — ARTICLE 53(2)(c) EUTMR
- Existence and ownership of the earlier copyrights
According to Article 53(2)(c) EUTMR, a European Union trade mark will be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to another earlier right under the EU legislation or national law governing its protection, and in particular copyright.
Pursuant to Rule 37 EUTMIR, the application for a declaration of invalidity must contain particulars of the right on which the application is based and particulars showing that the applicant is the proprietor of an earlier right as referred to in Article 53(2) EUTMR or that it is entitled under the applicable national law to claim that right.
In the present case, the applicant submitted copies of the official copyright registration in the US under No VA 1-856-770 (Appendix A). The certificate shows, among other things, the title of the work (‘Baby Pou, Child Pou, Adult Pou’), the date of publication (05/08/2012), the author (the applicant), the copyright claimant (the applicant), the date of certification (15/01/2013) and the protected work which includes three devices:
This evidence proves that the applicant is the proprietor of the copyright invoked in these proceedings and that this copyright is earlier than the contested EUTM (that is, earlier than 18/09/2013).
As above indicated, the applicant also submitted extracts of text of the US Copyright Law (Appendix D) proving that the earlier copyright indeed enjoys protection in the US: pursuant to §410 o the US Copyright Law it is a copyrightable subject matter which has met the legal and formal requirements for registration. In other words, it is an original work.
- Protection of the earlier copyrights under the Spanish law
The applicant argues that its work, protected by the US copyright, is also protected under the relevant Spanish law (where the EUTM proprietor is located).
In Appendix E, the applicant submitted the consolidated text of the Spanish Law on Intellectual Property (Royal Legislative Decree No 1/1996 of 12/04/1996) and provided an English translation of the relevant provisions, including:
Article 5(1): author is considered the natural person who creates any literary, artistic or scientific work.
Article 10(1)(e): The subject matter of intellectual property shall be all original literary artistic or scientific creations expressed in any manner or medium, whether tangible or intangible, that is known at present or may be invented in the future, including the following: … works of ….drawing… cartoons; (2) The title of a work, if it is original, will be protected as part of it.
Article 17: The author has the exclusive exercise of the rights to exploit his work in any form and in particular the rights of reproduction, distribution, public communication and conversion which cannot be exercised without his permission except in cases provided for in this Act.
Article 138(1): The holder of the rights recognized in this law, without prejudice to other actions required, may request the cessation of the infringer’s unlawful activity and demand compensation for material ad moral damage, in the terms set out in Article 139 and 140 (…)
In light of these provisions, the applicant contends that Spanish law admits that a work consisting of a drawing may be protected as a copyright provided that it is original. It grants to its author the exclusive exercise of the rights to exploit this work in any form, to prohibit such exercise without his permission, to request the cessation of the infringer’s unlawful activity and demand compensation for material and moral damage.
Moreover, the applicant refers to the Spanish Trade Mark Law 17/2001 of 07/12/2001 and in particular to Article 9(1): Without due authorization, the following may not be registered as trademarks: (…) (c) signs which reproduce, imitate or transform creations protected by copyright (original version submitted in Appendix F)
The applicant further compares the character of ‘Adult Pou’ protected by the earlier US copyright and the contested EUTM, claiming that the contested EUTM identically reproduces the term ‘POU’ and the device as shown below:
Protected work | Contested trade mark |
The applicant considers that the EUTM is a double reproduction of the title of the work and the device which are protected under Spanish copyright law. The applicant is the author of the original work as shown by the US copyright registration The contested EUTM, therefore, infringes an earlier original work and its use can be prohibited pursuant to Spanish law.
The Cancellation Division agrees with the applicant’s arguments. From the evidence submitted (the US certificate of copyright showing the applicant as the author of the work) it is clear that the applicant created the work before the filing of the EUTM. Pursuant to Article 5 of the Spanish Royal Decree-Law 1/996, the author is the natural person who creates any literary, artistic or scientific work. Pursuant to Article 17 and 138 of the same legislation, the author has the exclusive right to exploit his work and the right to prohibit its use.
The character featuring in the contested EUTM is a copy of such protected work with only some minor modification in the colour. Moreover, the verbal element of the EUTM refers to the title of the protected work (which is also protected pursuant to Article 10(2) of Spanish Royal Legislative Decree 1/1996). The contested EUTM therefore infringes the earlier copyright and the use of the EUTM can be prohibited under Article 138 of the Spanish Law on Intellectual Property.
For the sake of completeness, it is also noted that, as argued by the applicant, both the US and Spain (where the EUTM proprietor is located) are bound by the Berne Convention for the Protection of Literary and Artistic Works and the TRIPS agreement. Pursuant to the Berne Convention, the “national treatment” principle applies to authors from other Contracting Parties. In other words, authors of US works shall enjoy the same protection of their works in Spain as this country accords to its own authors.
Finally, as argued by the applicant, the notion of copyright protection is applicable irrespective of the goods and services the contested mark covers and merely requires an unauthorised reproduction or adaptation of the protected work or a part thereof in the contested mark. Therefore, it is not necessary to find the relevant goods and services similar in order to conclude on the violation of a copyright.
- Conclusion
In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services.
Since the application is fully successful on the grounds of Article 53(2)(c) EUTMR, there is no need to further examine the other grounds of the application, namely Article 8(1)(b) in conjunction with Article 53(1)(a) EUTMR and Article 52(1)(b) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Michaela SIMANDLOVA | Elisa ZAERA CUADRADO | José Antonio GARRIDO OTAOLA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.