EU intellectual property ("IP") law tends to be influential in South Africa and we therefore like to keep abreast of EU developments. In this article, we discuss two recent EU trade mark decisions.
Genuine use of trade marks - VAPIX
This deals with the recent case of Sta Grupa v EUIPO. In 2016 a Swedish company, Axis AB, registered the trade mark VAPIX with the European Union Intellectual Property Office ("EUIPO"). The registration was in class 9 and it covered a range of goods including 'interface for cinematographic, optic apparatus and instruments'. A competitor, Sta Grupa AS, subsequently applied to cancel the registration for VAPIX for all the goods covered. The basis of the attack was non-use over a period of five years.
Axis AB responded by submitting evidence of use. Sta Grupa contested this evidence, claiming that the VAPIX applications programming interface ("API") was a free-to-access computer tool. The case went through the various stages.
The Cancellation Division
The Cancellation Division revoked the VAPIX registration, holding that there was insufficient evidence of use from independent sources. It also held that there was no evidence that products bearing the trade mark were sold as independent products rather than as ancillary products under the VAPIX trade mark. It added that the number of users of VAPIX was too small to create an outlet for the products, no invoices had been submitted, and Axis had not carved out a niche market for its products. The decision was taken on appeal.
The Board of Appeal ("BOA")
The BOA disagreed with the Cancellation Division and held that genuine use had been proven for APIs in relation to digital surveillance - even though they were offered free of charge, they did have a commercial aim.
The General Court
The General Court upheld the finding of the Cancellation Division that genuine use had been established. It made a number of points:
- Continuous and uninterrupted use is not required – use over the course of time can be sufficient.
- Use in a number of EU countries is sufficient. In this case, there was proof of use of the trade mark in the Netherlands, the Czech Republic, Spain, Germany, France and Sweden.
- As regards the nature of the use, the fact that access to the VAPIX API was free did not mean that the use was not 'used in the course of trade'.
- As for the extent of use, the evidence showed that the trade mark VAPIX API is assessed independently of the parent trade mark AXIS. There were several thousand views of VAPIX API on the relevant web pages, and this made it quite clear that it was not token use.
Use in the course of trade - Off-White
This is an odd one.
Mr Aslan
A Mr Aslan travelled from Turkey to Germany and, in his suitcase were 22 items of clothing, all bearing the trade mark Off-White. The German customs officers were suspicious (or perhaps jealous) and they confiscated the goods, which were subsequently destroyed. Mr Aslan took this matter to the court, and for reasons that are unexplained, happened to be the District Court of The Hague.
The issue before the court was whether the import of counterfeit goods bearing the registered trade mark constituted trade mark infringement under Article 9(2)(a) of the EU Trade Mark Regulation. The article makes it an infringement to 'use in the course of trade' a 'sign' that is identical to an EU trade mark in relation to goods or services that are identical to those covered by the EU trade mark registration.
Off-White
Off-White's view was that the number of garments involved clearly pointed to this being used in the course of trade, and they put the value at US$11,700. Mr Aslan, on the other hand, claimed that the goods were all for his own use, which meant there had been no use in the course of trade.
The District Court
The District Court of The Hague took the view that use in the course of trade means a commercial activity within the private sphere. The court held that 22 items do not necessarily point to an intention to commercialise. The court decided that it had not been established that Mr Aslan had infringed Off-White's trade mark rights.
The Court of Appeal
In a bizarre end, the case went up to the Court of Appeal (also in The Hague), where Mr Aslan for reasons best known to himself, said that he accepted that he had infringed Off-White's trade mark rights. As a consequence of this volte-face, the Court of Appeal ruled that Mr Aslan had been guilty of trade mark infringement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.