Nike succesful in the footWARE case and the latest opinion in the Star Taxi case

Good morning everyone. Hope you all had a wonderful weekend. Now, time for some IP news.

Nike successful in registering Footware as a trade mark

If you remember, a month ago we reported that Puma was trying to prevent Nike from registering “footware” as a trade mark on the basis that:

• The trade mark was descriptive: it is merely descriptive for technology-driven footwear designs
• The trade mark was non-distinctive: since it is quite obvious that it is a combination of footwear and Software.
• “Footware” has become a term generally used to describe a combination of foot products with software technologies.

However, the UK IP Office sided with Nike. Indeed, the Office considered that while “Ware” is not distinctive regarding the classes applied for by Nike (classes 9, 38 and 42 for hardware, software, telecommunication services and cloud computing) “Foot” is not descriptive of any of the goods and services for which registration is applied for. Therefore, the first two grounds of opposition (descriptive and non-distinctive) were dismissed.

Regarding the third ground of opposition, the Office considered that there is not enough evidence regarding the use of footware in the UK and even less evidence of it being used for the products at issue.

AG Spuznar’s opinion in Star Taxi App case

Case C-62/19 Star Taxi App involves a provider of a mobile application connecting drivers and passengers in urban transport.

Star Taxi, like Uber, helped passengers to establish contact with providers of urban transport services. However, StarTaxi, unlike Uber, did not automatically select two parties for a ride but rather displayed a list of drivers available from whom the passenger was free to choose. In addition, Star Taxi did not set the fare. The fare was paid directly to the driver. Finally, only taxi drivers authorised and licensed to provide taxi services were allowed on the platform and no additional steps were taken to control the quality of the vehicles and their drivers or the drivers' conduct.

Star Taxi App, operating without authorisation in breach of what is required by Romanian Law, was eventually fined. The provider appealed, arguing that the legal provisions applied to it were contrary to the EU law. Against this background, the Regional Court in Bucharest decided to stay the proceedings and refer several questions to the Court of Justice.

The questions raised here were as follows:

• Should Star Taxi be considered as a provider of information society services?
• Could Start Taxi be subject to the Romanian requirements imposed on operators of taxi services, including the requirement to obtain prior authorisation to operate.  

First question.

According to article 1.1.(b) of Directive 2015/1535, an information society service is "any service normally provided for remuneration, at a distance, by electronic means and at the individual request of a recipient of services".

According to the AG, the service at issue that consists in putting taxi passengers directly in touch, via an electronic app, with taxi drivers falls under that definition. In this case,  the service is merely an adjunct to a pre-existing and organised taxi transport service (given that it was only offered to licensed drivers), while its provider did not exercise control or decisive influence over the conditions under which transport services were provided by the taxi drivers. Hence, unlike in the case of Uber, the E-Commerce Directive should be considered applicable to the analysed services.

Second question.

According to Article 4(1) of the e-commerce directive, Member States shall ensure that the taking up and pursuit of the activity of an information society service provider may not be made subject to prior authorisation or any other requirement having equivalent effect. However, the principle mentioned above "shall be without prejudice to authorisation schemes which are not specifically and exclusively targeted at information society services". Focusing on the latter, AG Szpunar argued that providers of information society services can, in such case, be subject to an authorisation scheme.

The AG opinion does not equal the definitive judgment. However, should the CJEU follow this opinion, this would entail that:

- apps that allows to connect customers to services, such as the one at issue, should be considered information society services, subject to the e-commerce directive.

- if Member States have set in place authorisation schemes for these specific services, then ISS will also be subject to say requirements. Hence, if Romania or any other MS requires taxi dispatching services to gather the appropriate authorisation, then companies providing said services through apps will also be subject to said authorisation. 

This is all we have for this week!