The Patent and Market Court of Appeal of Svea Court of Appel (PMÖD) in case PMT 3491-16 found the company Textilis Ltd (Textilis) liable for both trade mark and copyright infringements of Svenskt Tenn’s textiles. PMÖD also sought a preliminary ruling from the European Court of Justice which issued a decision in case C-21/18.

Copyright infringement
Svenskt Tenn AB (Svenskt Tenn) markets and sells textiles designed by Estrid Ericson and Josef Frank. Textilis Ltd (Textilis), a British company, sells textiles and textile products which correspond to Svenskt Tenn’s specific textile designs Elefant och Anakreon.

One of the questions in this case was if Textilis selling and marketing of their textiles and products from their website was in accordance with the Swedish copyright law (1960:729)? The textile design of Textilis textiles and products corresponded to Svenskt Tenn’s textile design Elefant and Anakreon. The court should decide if the products have been offered or disseminated to the public in Sweden.

The Swedish copyright law implements Article 4.1 of the Directive 2001/29/EG of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society (“the Infosoc-directive”). Article 4.1 in the Infosoc-directive obliges the member states to give the originator/creator an exclusive right to their work, as well as give permission to, or prohibit all kind of dissemination of the original or copies thereof through selling or otherwise.

Article 4.1 in the Infosoc-directive and the meaning of “dissemination” was interpreted by the ECJ in the case C-5/11. A trader who directs his advertising at members of the public residing in a given Member State and creates or makes available to them a specific delivery system and payment method, or allows a third party to do so, thereby enabling those members of the public to receive delivery of copies of works protected by copyright in that same Member State, makes, in the Member State where the delivery takes place, a ‘distribution to the public’ under Article 4(1) of the Infosoc-directive (see case C-5/11 Donner p. 25). Therefore, a Swedish originator is due to the implementation of the Infosoc-directive, able to hinder dissemination of her/his work within Sweden regardless of which country’s law the transaction is to be determined.

ECJ case law stipulates that to claim dissemination to the public in a certain member state, it is not sufficient that an offer is available on the internet and could be reached by the public in that particular member state.

The Infosoc-directive must be interpreted as meaning that it allows a holder of an exclusive right to distribute a protected work to prevent an offer for sale or a targeted advertisement of the original or a copy of that work, even if it is not established that such advertisement gave rise to the purchase of the protected work by an EU buyer, in so far as that advertisement invites consumers of the Member State in which that work is protected by copyright to purchase it. (See case C-324/09 L’Oréal article. 64, and case C-516/13 Dimensione article 28). Therefore, only the fact that a product was offered on a website is not sufficient to claim dissemination to the public in that member state. Instead the trader must direct its offer to the public in the member state where the protection of the rights was claimed.

In the case it was indisputable that Textilis – on their website www.textilis.com – offered textiles, textile products such as pillows and furniture for selling with a textile design which correspond to among others Elefant och Anakreon. It was possible on the search engine google.se to search for the following text – Josef Frank textiles from 500 SEK/m free shipping in whole Europe – on Textilis website.

Textilis website was available under the top level domain textilis.se.. The advertisement on textilis.com was in Swedish. The designation of price on google.se was in Swedish crown (SEK). Textilis sent advertisements to Svenskt Tenn’s fanclub on Facebook. Additionally, the correspondence between Textilis and a buyer in Sweden regarding an order of textiles also proved that the parties have entered an agreement regarding purchase and delivery. All these circumstances proved that Textilis disseminated their work to the public in Sweden.

PMÖD found that Textilis sold and disseminated textiles and products corresponding to Svenskt Tenn’s textile design Elefant and Anakreon on the Swedish market and to the Swedish public. Therefore, PMÖD held Textilis responsible for copyright infringement of Svenskt Tenn’s textile design.

Trade mark infringement and preliminary ruling of the European Court of Justice (ECJ) in case C-21/18
Svenskt Tenn claimed trade mark infringement of among others their European trade mark and figurative mark MANHATTAN. Svenskt Tenn claimed that Textilis without permission marketed the trade mark MANHATTAN on its website during the summer 2013.

Textilis objected and stated that the company does not use ”MANHATTAN” as a trade mark. The company argued that they merely on its website, marketed a product with textile design corresponding to the textile design of MANHATTAN. Furthermore, Textilis has argued that if design can be trademark protected then designs can be protected forever and not have the temporal limitation that a copyright has.

PMÖD sought a preliminary ruling from the European Court of Justice. One of the questions was if two-dimensional decorative motifs, which are affixed to goods, could be protected by a trade mark?

In its ruling the ECJ stated as follows. Article 7(1)(e)(iii) of Regulation No 207/2009 must be interpreted as meaning that a sign such as that at issue in the main proceedings, consisting of two-dimensional decorative motifs, which are affixed to goods, such as fabric or paper, does not ‘consist exclusively of the shape’, within the meaning of that provision (see C-21/18 articles 40-42).

The ECJ found that a sign which consists of two-dimensional decorative motifs and affixed to goods does not consist with the shape of a product. Therefore, the ECJ found that a two-dimensional decorative motif as a sign in this case could obtain trade mark protection.

Based on the preliminary ruling PMÖD reasoned as follows. Textilis used MANHATTAN as a sign consisting of two-dimensional decorative motifs fixed on their textile products. Textilis used MANHATTAN without permission from Svenskt Tenn. Therefore, PMÖD held Textilis liable for trade mark infringement.

The judgement testifies the importance of legal action and prosecution against infringement of intellectual property rights and that the party guilty for infringement need to rethink and end its inadmissible use of an owner’s rights.

If you are curious and have any further questions do not hesitate to contact me!

Kristine Nilsson Wieslander, Attorney at law
Brann AB Intellectual Property Law Firm