McCain Case - Ericsson and Apple sign a global licence deal

McCAIN (CASE T‑553/21)

In 2000, the company McCain GmbH registered a three-dimensional trade mark of a smiley face as a European Union Trade Mark (EUTM), for goods in class 29 of the Nice Agreement, namely “Prefried potato croquettes and mashed potato products, deep-frozen”. 

In 2018, the company Agrarfrost GmbH, filed an application for revocation of the above mentioned EUTM, before the Cancellation Division of the EUIPO, alleging the lack of genuine use of the EUTM for the goods concerned.

The Cancellation Division of the EUIPO rejected the revocation request and a subsequent appeal was dismissed by the Boards of Appeal (BoA), on the grounds that the evidences submitted by McCain proved a genuine use of the trade mark in the relevant period. 

Agrarfrost lodged an appeal against this decision before the General Court (GC).

From its side, the GC reminded the obligation to use the EUTM for the goods and services for which the trade mark was registered and in the relevant period of time - i.e., five years before the application for revocation was filed. 

McCain submitted as evidence to prove genuine use, the packaging of the product, reproducing a two-dimensional smiley face, rather than the registered three-dimensional trade mark. Even so, the evidences submitted by McCain were considered by the Court as suitable evidences to demonstrate the use of a trade mark during the relevant period, for the contested goods. 

The GC dismissed the appeal on the grounds that the trade mark owner was able to demonstrate genuine use of the three-dimensional trade mark, for the goods for which the trade mark was registered. 

ERICSSON AND APPLE SIGN A GLOBAL LICENCE DEAL 

Earlier this month, the companies Ericsson and Apple signed a global patent licence agreement, concerning the 5G technology. 

Ericsson owned thousands of patents related to wireless communication systems, that were considered Standard Essential Patents (SEP) and thus they should have been licensed under FRAND (Fair, Reasonable and Non-Discriminatory) terms. 

In 2015, Apple sued Ericsson alleging that the royalties for those licences were excessively expensive to be considered as FRAND and that the technology of those patents was not deemed essential to the standards. 

From its side, Ericsson countersued Apple claiming that the U.S. company infringed 41 of its patents, as the licences that allowed Apple to use Ericsson’s technology on Ipads and Iphone had expired. 

After a few months, both companies signed a licensing agreement for their patents on 2G, 3G and 4G technology, but they were unable to reach an agreement on 5G technology. In essence, Ericsson claimed that the royalties it sought for the licences covering 5G technology were in line with the FRAND terms provided for essential patents.

Now, after years of legal disputes, both companies have signed a cross-licence agreement for “patented cellular standard-essential technologies, and granted certain other patent rights”, which means that, for the time being, this agreement puts an end to all ongoing legal disputes.