Newsletter September 2022
Design law
Advocate General Opinion indicates a limited scope for the “normal use”-exception in Design law
Both EU and member state design regulations stipulates that only designs visible during “normal use” of a product can receive design protection. The interpretation of what constitutes “normal use”, has been widely debated, and The Court of Justice of the European Union will soon have to interpret the exemption in relation to a German case, where a manufacturer of bike saddles claims that the underside of a bike saddle is visible during “normal use”, due to the user being likely to remove the bike saddle in order to prevent theft.
While the CJEU has not yet made its decision in the case, Advocate General Szpunar has delivered his Opinion, which stipulates a very wide interpretation of the term “normal use”, whereby all situations which may reasonably arise during use of the product constitute “normal use”. This indicates a significant limitation of the exemption, should the Court follow the Opinion, which will have a sizable impact for both EU and national member state design registrations.
The Advocate General’s Opinion can be read here.
Trademark law
Interim injunction denied regarding a use-constituted 3d trademark for the shape of a lollipop due to ceased marketing of the product
In accordance with the Danish Trademarks Act, a trademark right can be established through continuous and geographically extensive use. On the basis of this, the plaintiff in the case claimed that the long-lasting marketing of the “DUMLE”-lollipop had established a 3d trademark to the shape of the non-wrapped lollipop.
Albeit noting that Danish consumers were expected to be familiar with the non-wrapped shape of the “DUMLE”-lollipop by virtue of its marketing, the Danish Eastern High Court refrained from concluding on the matter, as marketing of the “DUMLE”-lollipop had permanently ceased in March of 2021. Thus, a use-constituted right to the shape of the lollipop had in any case lapsed. Consequently, the Eastern High Court upheld the ruling given by the Maritime and Commercial High Court and denied an interim injunction against the marketing of the “MUMS!”-lollipop.
As for protection under the Danish Marketing Practice Act, the Eastern High Court found that the wrapping of the “DUMLE”-lollipop was commercially distinctive and thus protected. However, as the two products were sufficiently distinguished, an infringement was not rendered probable.
The Court’s decision can be read in Danish here.
EUIPO elaborates rules and legal issues regarding trademarks and designs in NFTs and in the metaverse
EUIPO has recently held a webinar focusing on legal aspects and EUIPO practice regarding trademarks and designs in NFTs and in the metaverse. During the webinar a number of relevant questions were raised regarding IP-rights and these new technologies, such as distinctiveness for virtual goods (who often emulate physical goods), how to prove the use of virtual goods, and how to classify virtual goods in both the trademark and design class systems.
The EUIPO also reported that it had already registered around 1150 applications relating to NFTs and just over 200 applications relating to the metaverse this year. In its draft for the 2023 Trademark Guidelines the EUIPO has added a section regarding “Downloadable goods and virtual goods”, however many questions remain unanswered regarding how these new technologies will fit under the EU trademark and design legal frameworks.
The slides from the EUIPO webinar can be found here, and the Draft Guidelines can be read here.
Marketing practice law
The Consumer Ombudsman stresses the rules on “greenwashing”
In three cases concerning marketing statements on the environmental qualities of products, the Consumer Ombudsman found the statements undocumented, an issue known as “greenwashing”. Consequently, the statements constituted misleading marketing practices which is a violation of the Danish Marketing Practice Act. For the purpose of meeting the issue of “greenwashing”, the Consumer Ombudsman has issued a quick guide on the use of environmental statements in companies’ marketing.
The release and quick guide from the Consumer Ombudsman can be read in Danish here and here, respectively.
Viagogo receives DKK 2 million fine for violating the Danish Marketing Practice Act
The popular ticket selling website Viagogo has received a hefty fine of DKK 2 million for misleading market practices in a case before the City Court of Copenhagen. The Court found that the company’s pricing practices mislead consumers, as purchases through the website did not sufficiently disclose that the consumer would also have to pay the delivery costs of the tickets.
The case is significant as the court utilized the new fine system in the Danish Marketing Practices Act, which was introduced on January 1st this year. This allowed the Court to put more emphasis on the company’s earnings during the period of violation, which resulted in a larger fine.
The Court’s decision is not publicly available, however the Consumer Ombudsman’s summary of the case can be read in Danish here.
IT law
The EU Commission releases proposal for a new directive on artificial intelligence (AI) liability
As a part of its AI strategy, the EU commission has published its proposal for an AI liability directive along side with a white paper on the subject. The directive is meant to address the specific issues regarding liability that is associated with AI, such as the difficulties of proof and transparency that are inherently linked with the technology.
The new directive, if adopted, will most likely join a number of other AI-specific EU regulations, most notably the AI act, which is expected to be adopted near the end of 2022 or early 2023.
The Artificial Intelligence Liability Directive Proposal can be read here.