Telegram in trouble for continued IP infringement and piracy on its platform - EU General Court dismisses the Ern laboratories’ appeal in trade mark dispute

Telegram in trouble in Spain for continued IP infringement and piracy on its platform

On 22 March, the Spanish National High Court ordered internet service providers to block Telegram as an interim injunction in response to several copyright infringement lawsuits filed by the country's leading media companies, Mediaset España, Atresmedia, Movistar Plus and Egeda.

The lawsuits are based on the alleged unauthorised use of copyrighted audio-visual content and specifically accuse Telegram of acting as an unauthorised distribution system for this type of content. In the lawsuit, the media companies requested an interim injunction for the duration of the investigation. They also requested information from Telegram that could help identify the operators of Telegram channels linked to piracy.

This blockade, which would impact 8 million users who currently use the service in Spain, was the judge's response to Telegram's failure to provide the information requested about the identity of users suspected of illegally sharing protected content from the British overseas territory of the Virgin Islands, where the company is based. The judge concluded that the messaging platform's failure to assist rights holders in identifying the operators of certain Telegram channels made it necessary to take action, and considered that preventing access to the Telegram network could put an end to intellectual property infringements.

On Monday 25 March, the National Court judge suspended the blockade of the messaging application. Although the judge considered the blockade to be necessary, appropriate and proportionate to stop pirated content being disseminated on the platform, he suspended the order until the National Police drew up a report and analysed the impact that this temporary suspension may have on users.

This is not the first national blockade the application has faced. Since its launch in 2013, China has blocked Telegram for failing to comply with its online censorship regulations. In 2018, Russia blocked it for refusing to provide its encryption keys. In the same year, it was also blocked in Iran during massive protests.

 EU general court dismisses the Ern laboratories’ appeal

On 13th March, in case T-206/23, the General Court of the European Union (GC) dismissed the appeal lodged by Ern Laboratories against a decision by the European Union Intellectual Property Office (EUIPO) allowing another Spanish company to use a similar trade mark used in relation to products derived from cannabis.

In 2019, Cannabinoids Spain S.L. filed a trade mark application to the EUIPO to register the figurative trade mark "Sanoid" consisting of the word written in green letters and a dot under the “o”, for a wide range of goods and services, such as cosmetics based on cannabis derivatives, marijuana and cannabis for medical use, and related services, all falling within classes 3, 5, 31, 32, 35, 41, 42 and 44 of the Nice Classification.

In 2020, Laboratories Ern opposed the registration in respect of all goods and services, arguing that there was a likelihood of confusion with its earlier  Spanish word trade mark No 290365, SANODIN, registered in 1995, which covers pharmaceutical, veterinary and general disinfectant products in classes 1 and 5 of the Nice Agreement.

Initially, the EUIPO Opposition division accepted the opposition in part, recognising the existence of confusion between the trade mark applied for and the earlier trade mark for goods and services in Classes 5, 45 and 42, such as treatment of inflammation of the mouth in Class 5. However, the EUIPO Board of Appeal overturned the initial decision, stating that there was no likelihood of confusion between the two signs. This conclusion was based on the finding that the goods and services in question were different or, at most of low similarity, and that the conflicting marks were only slightly similar graphically and phonetically for the majority of Spanish and European consumers.

Following Laboratories Ern's appeal, the General Court of the European Union had to determine whether there was a likelihood of confusion between the EU trade mark "Sanoid" and the earlier national trade mark "SANODIN", on the basis of their similarity and the specific goods and services they covered. It also examined whether the goods and services covered by the two marks were sufficiently similar to create a likelihood of confusion among consumers.

First, the Court considered the differences in the nature and purpose of the goods covered by each trade mark, such as pharmaceutical products for the treatment of inflammation of the mouth in the case of "SANODIN" and cosmetics and toiletries in the case of "Sanoid".It found that while some products and products did share a low degree of similarity (specifically class 3 for cosmetics products, class 5 for pharmaceutical products, class 42 for scientific research services and class 44 for medical services), the rest of products and services were different. It also assessed the level of attention of the relevant consumers and concluded that the differences in the goods and services were significant enough to avoid confusion. As the goods and services in question relate to healthcare and self-care products, the marks were unlikely to cause confusion within the mind of the relevant consumers due to the fact that their common part (the use of “SANO” in their word elements) was not distinctive, and the other elements (the use of “DIN” vs “ID” and the graphical elements) were different enough.