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Trade Marks title1 titlegreat2, Application to the case; S1= the first…

- - - - ✓ fulfilled
    - - 3 criteria (Arsenal v Reed)
        
        not as a private matter
        
        S2: ✓ fulfilled
        
        S1: ✗ not fulfilled
        
        economic advantage (Societe)
        
        S1: ✗ not fulfilled
        
        S2: ✓ fulfilled
        
        commercial activity
        
        S2: ✓ fulfilled
        
        S1: ✗ not fulfilled
      - Application to Online Market Place (L'Oréal SA v eBay International AG)
        
        The seller who lists goods for sale on an online marketplace is using the trademark in the course of trade
        
        Hannes is the seller and therefore acting "in the course of trade"
  - - - ORIGIN PROTECTION
        
        or (b) Likelihood of Confusion
        
        Proof of confusion required
        
        Similar sign/goods
        
        (a) Double Identity
        
        Identical sign
        
        Identical goods
        
        Absolute protection
        
        If double identity (9(2)(a)) applies and is satisfied
        → use ONLY 9(2)(a)
        
        → Apply (a) Double Identity
      - ECONOMIC AND REPUTATIONAL PROTECTION
        Separate and Non-Exclusive
        Art. 9(2)c
        
        ONLY FOR REPUTED TRADEMARKS
        
        Irrelevant similarity
        
        Likelihood of confusion not required
        
        Reputation
        Known by significant public
        
        Market Dominance
        
        Brand Recognition
        
        Promotion
        
        Consumer Recognition
        
        IS THERE A LINK
        
        Identical sign
        
        Identical goods
        
        Strong reputation
        
        High distinctiveness
        
        (Post-sale) confusion supports link
        
        ✓ "Link" = consumer connects product to LEGO
        
        Intel v CPM, C-252/07
        
        WHY BOTH 9(2) a & c SHALL BE CONSIDERED
        Alternative pleading, not simultaneous grounds
        They are NOT cumulative
        
        Risk mitigation
        Backup strategy
        
        NO: (a) Double Identity
        
        Not truly absolute
        
        Identical sign and good
        
        Affected or liable to affect trademark functions
        
        still: Art. 9(2)c
        
        Adam Opel v. Autec
        
        TYPE OF HARM
        Non-Cumulative
        
        DILUTION/BLURRING
        Detriment to distinctive character
        
        ? UNCERTAIN
        
        DILUTION = Weakened Uniqueness
        
        Brand shape no longer unique
        
        Consumer link to LEGO blurs
        
        Needs proven change in consumer behavior
        
        Harder to show than free-riding
        
        TARNISHMENT
        Detriment to repute
        
        ? UNCERTAIN
        
        Reputation harmed
        
        Unsafe products
        
        Negative brand link
        
        Needs proof (consumer opinion)
        
        Inferior quality
        
        FREE-RIDING
        Unfair advantage
        
        Economic Gain Without Compensation
        
        ✓ MET
        
        WITHOUT DUE CAUSE
        DEFENSE ANALYSIS
        
        Pure profit motive; no justification
        
        No legitimate commercial need
        
        No comparative advertising
        
        No parody or artistic purpose
        
        No rights in LEGO mark
        
        ✓ NO DUE CAUSE
  - - - Identity of Signs (LTJ Diffusion v Sadas)
        
        Reproduction without modification
        
        Insignificant differences
        
        unnoticed by an average consumer
        
        Average consumer perception
        
        Lloyd v Klijsen (C-342/97)
        
        reasonably well informed
        
        reasonably observant
        
        circumspect
        
        Overall appearance
        
        No absolute replication required
      - 3D scan reproduction
        
        3D scan authentic figure
        
        Create precise digital model
        
        Print replica with consumer 3D printer
      - Same geometry
        
        Cylindrical head + stud
        
        Trapezoidal torso
        
        Moveable limbs
        
        Attachment points
      - Irrelevant differences
        
        Layer lines
        
        Material
        
        ABS or PLA filament
        
        LEGO's precision-molded ABS
        
        (acrylonitrile butadiene styrene
        
        Color
      - ✓ YES - Identical
    - - LEGO: Toys (Nice Class 28)
      - Hannes: Toy minifigures (Nice Class 28)
        
        Designed for play
        
        Marketed as toys
        
        Perceived as toys
      - Same category
      - ✓ YES - Identical
  - - - Actual or Likely harm
      - Genuine trademark interest
        
        NOT merely blocking competitors
    - - Origin (essential)
        
        Arsenal v Reed (C-206/01)
      - Quality
        
        L'Oréal v Bellure (C-487/07)
      - Communication
        
        BMW v Deenik (C-63/97)
      - Advertising
        
        L'Oréal v Bellure (C-487/07)
      - Investment
        
        Interflora v Marks & Spencer (C-323/09)
    - - Origin Function
        
        Average consumer
        
        Imperfect recollection
        
        Three consumer groups
        
        Initial buyer
        
        Secondary viewers
        
        Post-sale confusion
        
        ✓ AFFECTED
      - Quality Function
        
        LEGO standards
        
        Injection-molded
        
        Safety tested
        
        Durability
        
        Dimensional accuracy
        
        3D-printed issues
        
        Layer lines
        
        Brittle material
        
        Poor fit
        
        Safety concerns
        
        Consumer Attribution of Quality
        
        ✓ AFFECTED
      - Investment Function
        
        LEGO investment
        
        R&D
        
        Marketing
        
        Brand recognition
        
        Customer loyalty
        
        Hannes's conduct
        
        Free-riding
        
        Price undercutting
        
        Dilutes premium positioning
        
        ✓ AFFECTED
      - Communication and advertising functions
        
        ✓ AFFECTED
        
        Dilution of brand message
  - - - Article 15(1)
      - Not put on market by LEGO
      - Unauthorized reproduction
      - ✗ NOT APPLICABLE
    - - Article 14(1)(b)
      - Shape
        = product itself
      - Not describing characteristics
      - ✗ NOT APPLICABLE
  - - - Cease sales
      - Take-down notices
        
        eBay
        
        platforms
      - Prevent future listings
    - - Diminished brand value
      - Lost sales to competitor
      - Lost profits
      - Unjust enrichment
    - - Prevent secondary market exploitation
      - Remove from circulation
      - Destroy infringing goods
    - - Alternative to damages
      - Infringer's revenue minus costs
      - Full profit surrender
    - - Sale, import, distribution banned
      - Security deposit requirement
      - Prohibition on future activities
- - - - Article 60 EUTMR
        
        EXCEPTION
        
        Proprietor of right listed in 60/1 and 60/2 expressly consents to registration of trade mark BEFORE submission of the application for the declaration of invalidity or the counterclaim
        
        BB Services v EUIPO (T-297/22)
        MINIFIGURE UPHELD
    - - Article 59 EUTMR
        
        Contrary to art.7 EUTMR
        
        EXCEPTION
        
        d) signs/indications customary in the language or practices of the trade
        
        b) devoid of distinctive character
        
        c) exclusively characteristics of the goods or service
        
        IN ADDITION "acquired distinctive character in relation to goods/services after registration"
        
        Reason why Lego bricks aren't protected. Article 7(1)(e) EUTMR provides absolute grounds for refusal for shapes that are: (ii) Functional shape: Necessary to obtain a technical result
        
        Bad faith
        
        "conduct which departs from accepted principles of ethical behaviour or honest commercial and business practices" (AG Sharpston Lindt)
        
        In the time of filing the application
        
        Undermine, in a manner inconsistent with honest practices, the interests of third parties; or Obtain an exclusive right for purposes other than those falling within the functions of a trade mark (CJEU Koton case)
    - - Article 58 EUTMR
        
        TM initially validly registered but has not been genuinely used, has become a generic term or is liable to mislead the public