Netflix boosting Squid Game trade mark protection, and the ECJ ruling in favour of Ferrari

 

Netflix ramping up its trade mark protection in light of Squid Game success

 

Have you watched Squid Game (yet)? Netflix reported last month that the Korean show broke all records, by becoming its biggest ever series launch – 111 million users watched it (or part of it) in the first 28 days following its release. 

In light of this triumph, Netflix reacted quickly and filed a large number of trade marks worldwide to protect the Squid Game name and logo with regard to several categories of goods and services. As noted by WIPO, the streaming giant has so far filed applications in more than two dozen jurisdictions, including Argentina, Canada, the European Union, Malaysia, Peru, Philippines, the Republic of Korea and the USA.

A quick look at TMview confirms that in the course of October, the number of trade mark applications related to the show has simply exploded worldwide, for figurative marks and word marks alike. While some of these applications may not originate from Netflix (and may thus be attempts from third parties to ride on the show’s success), it seems that the majority does. See for example this application for a figurative trade mark in the US (USPTO).

 

What is interesting here is that Netflix is seeking registration in a number of classes beyond just class 9 covering TV series – for example classes 16 (books, stationery, office supplies…), 18 (bags, luggage, leather goods…) and 21 (bakeware, kitchenware…). Why? Because those classes all cover key categories of merchandising products for the show, in particular cookie cutters which, as fans will know, are at the centre of one of the show’s deadly challenges.

This is therefore a good (and almost real-time!) example of a multinational ramping up its trade mark protection efforts to match the outpouring of public interest in its show… and thus to ensure that it can reap major benefits on the merchandising side too. If its trade mark applications go through, Netflix will get exclusivity over the use of the Squid Game name and logo to sell a number of derived products. Non-official sellers using those names and logos to sell products covered by the trade marks (stationery, kitchenware…) may then become liable for trade mark infringement, as they would be commercialising counterfeit goods.

 

Non-official merch has been flooding online selling platforms in the past few weeks – Etsy and Amazon are already full of cookie cutters, green tracksuits and eerie full-face masks. Netflix’s trade mark filings are therefore the way for the company to regain control over the sale of Squid Game derived products – and to limit the ways in which third parties can use the show’s reputation for their own benefit.

It is therefore likely that you will soon find several types of cutters for your Dalgona cookies – the unofficial ones (which would then have to stop being sold using the “Squid Game” name or logo), and the official ones marketed by Netflix and its authorised resellers. Something to keep in mind for your Xmas baking efforts!

 

 

ECJ rules in favour of Ferrari in unregistered community design case

 

Last week, the Court of Justice of the European Union (ECJ) released its ruling in case C-123/20 opposing Ferrari and Mansory Design (a German car design company selling car accessories). This followed a request for preliminary ruling from the German Federal Court (Bundesgerichtshof).

 

Since 2016, Mansory Design had been producing and selling “tuning kits” designed to alter the appearance of the Ferrari 488 GTB (priced at around $250,000 according to Reuters) to make it look like the top-of-the-range Ferrari FXX K (priced at $2.6 million).

Ferrari, which had presented the Ferrari FXX K to the public for the first time on 2 December 2014 via a press release, sued Mansory Design for infringement, claiming that several unregistered community designs arose at the date of the press release in relation to parts of the FXX K model (components of its bodywork, in particular the V-shaped section of the bonnet and the front bumper). Thus, Ferrari claimed that by reproducing these parts and offering them for sale in its “tuning kits”, Mansory was infringing its unregistered design rights.

 

The competent German Regional Court dismissed Ferrari’s claims in their entirety, and the Higher Regional Court subsequently dismissed Ferrari’s appeal, stating that the first and second designs claimed never existed, since in particular “Ferrari had not shown that the minimum requirement of a certain autonomy and consistency of form had been satisfied”. The Court also found that while the third design claimed did exist, it was not infringed.

Ferrari then brought the case to the German Federal Court of Justice, which in turn asked the ECJ to clarify whether the making available to the public of images of a product, such as the publication of photographs of a car, could lead to the making available to the public of a design on a part or a component part of that product.

 

For the record, EC Regulation 6/2002 on Community designs grants protection to a design, as unregistered community design, for three years following the date where it was made available to the public within the Community.

 

So here, the question was to know whether the publication of pictures of the entire FXX K model in the press release was enough to create unregistered community design rights in parts / components of that car (since the components on which Ferrari claimed rights were not made available to the public separately).

The ECJ answered yes, highlighting that the conditions for registered and unregistered community design protection to arise are the same for products and parts of a product. However, it also stressed that in order for the making available to the public of the product as a whole to constitute also a making available of a part of that product, it is essential that the part of that product is clearly identifiable when the design is made available.

This decision is a win for Ferrari as it confirms that the unregistered designs claimed by the luxury car manufacturer actually exist (as they arose when pictures of the car were published via press release) – meaning that it is in a position to enforce them against tuning-kit copycats.