Litigation
2011
IPPT20120419, ECJ, Bonnier Audio v ePhone
Internet service provider can be ordered to give personal information of alleged infringer to copyright holder
IPPT20120216, ECJ, SABAM v Netlog
Injunction against hosting service provider to install contested filtering system precluded: that Directives 2000/31, 2001/29 and 2004/48, read together and construed in the light of the re-quirements stemming from the protection of the applicable fundamental rights, must be interpreted as precluding an injunction made against a hosting service provider which requires it to install the con-tested filtering system.
IPPT20111201, ECJ, Philips - Nokia
Not ‘counterfeit goods’ within the meaning of the regulation when brought into customs territory under suspensive procedure. Counterfeit goods: where proven that they are intended to be put on sale in the EU. Suspension of release of goods for examination of infringement; grounds for suspecting infringement.
IPPT20111201, ECJ, Painer v Standard
Connected claims: risk of irreconcilable judgments. Intellectual creation and scope of protection: portrait photograph. Newspaper publisher may not use of their own volition a work protected by copyright by invoking an objective of public security. Right to quote: not required that press report quoting a work is itself protected by copyright; obligation to indicate the source, including the name of the author or performer.
IPPT20111018, ECJ, Realchemie v Bayer
Concept of ‘civil and commercial matters’ includes payment of fine to ensure compliance with judgment. Costs of exequatur procedure are legal costs within meaning of IP Enforcement Directive
IPPT20110922, ECJ, Bell & Ross v OHIM
Inadmissibility of action: failure to submit signed original of the application nit capable of being regularised. No excusable error: responsibility rests with the lawyer
IPPT20110712, ECJ, L’Oréal v Ebay
Court order against operator of an online marketplace regarding future infringements possible.
IPPT20110412, ECJ, DHL Express v France Chronopost
Community trade mark: as a rule European wide prohibition, unless use does not affect the functions of the trade mark. Prohibition extends, as a rule, to the entire area of the EU. Limitation of territorial scope required in case the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds. Periodic penalty payment community trade mark court, or equivalent national provisions, has effect in Member States to which the territorial scope of such a prohibition extends.
IPPT20110308, ECJ, Opinion on unified patent litigation system
Unified patent litigation system incompatible with European Law. Exclusive jurisdiction in field of Community patents would alter the essential character of powers which are indispensable to preservation of the very nature of EU law. Member States confer jurisdiction on actions between individuals to a court created by international agreement
2010
IPPT20100415, ECJ, Schräder v CBP
A species is composed of its different varieties: The very nature of a ‘species’ is that it is composed of its different varieties and, for this reason, a detailed description of such a species cannot be detached from the varieties which it comprises. Limited review to determine variety lacking distinctness.
IPPT20100225, ECJ, Lancôme v OHIM - Color Edition
‘Color Edition’ normal association: That the association of the terms ‘color’ and ‘edition’ was not unusual but a normal construction in light of the lexical rules of the English language and that the mark did not therefore create, for the target public, an impression sufficiently far removed from that produced by the simple juxtaposition of the verbal elements of which it was composed to alter its meaning or scope.
2009
IPPT20091016, EBA-EPO, Computer Implemented Inventions
No suspicion of partiality: According to established case law of the Boards of Appeal, of the Enlarged Board and also of national courts of member states, the mere fact that a board member has expressed a view on the legal issue to be decided on a previous occasion, be it in a prior decision or in literature, be it in a prior position in the EPO or as an expert for external political institutions, cannot lead to the conclusion of doubts as to impartiality. Nor does a purely subjective impression that the opinions of a board member might be disadvantageous to a particular interest justify an exclusion
IPPT20090615, EBA-EPO, Kos Life Science
No suspicion of partiality: the present Board cannot identify in the corpus of said decision any reason justifying a suspicion of partiality or establishing a preconceived mind. […]. It is sufficient to state that said decision does not contain any bold contention, nor has it been substantiated in "such outspoken, extreme or unbalanced terms" that it would preclude the capacity of the member concerned from dealing with the pending referral with an open mind and without preconceived thoughts.
IPPT20090423, ECJ, AEPI v Commission
The concept of serious impediments to the proper functioning of the common market may constitute one of the criteria for evaluating whether there is sufficient Community interest to necessitate the investigation of a complaint. The effect on trade between Member States thus serves as a criterion to define the scope of Community competition law.
IPPT20090219, ECJ, LSG v Tele2
Obligation to disclose to private third parties personal data relating to Internet traffic in relation to copyright infringement allowed. Internet access providers are intermediaries
2008
IPPT20081114, CFI, Artisjus v Commission
Lack of urgency interim measures
IPPT20081002, ECJ, K-Swiss v BHIM
Where OHIM is unable to prove that a document has been duly notified, or if provisions relating to its notification have not been observed, but that document has reached the addressee, OHIM may produce proof of the date of receipt and that the document is deemed to have been notified on that date.
Eurohypo does not have a distinctive character: No additional element to make the combination, created by the current and usual components EURO and HYPO, unusual or have its own meaning which distinguishes the services offered by the appellant from those of a different commercial origin.
2007
IPPT20071011, ECJ, Freeport v Arnoldsson
International jurisdiction in case of connected claims; different legal bases does not preclude application article 6(1)
Registration of the trade mark BAINBRIDGE – Opposition by the proprie-tor of earlier national trade marks all having the component ‘Bridge’ in common – Opposition rejected – Family of trade marks – Proof of use – Concept of ‘defensive trade marks’.
IPPT20070614, ECJ, Le Chef de Cuisine
Obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute ‘proper reasons for non-use’ of the mark.
IPPT20070313, ECJ, Kaul v Bayer
The Board of Appeal is required to take account of the facts and evidence submitted for the first time by the party opposing an application for registration of a mark in the written statement lodged in support of its appeal before that board against a decision given by an Opposition Division.
2006
IPPT20061207, EBA-EPO, Exclusion and objection
Avoidance of appearance of partiality: if a member of a Board of Appeal in a notice of withdrawal gives a ground which may by its nature. Participation in earlier matter as such no ground for exclusion
IPPT20060713, ECJ, Roche v Primus
That finding is not called into question even in the situation referred to by the national court in its second question, that is where defendant companies, which belong
to the same group, have acted in an identical or similar manner in accordance with a common policy elaborated by one of them, so that the factual situation would be the same.
2005
IPPT20051018, ECJ, Class International
A trade mark proprietor cannot oppose the mere entry into the Community, under the external transit procedure or the customs warehousing proce-dure, of original goods bearing that mark which had not already been put on the market in the Commu-nity previously by that proprietor or with his consent
2004
IPPT20041116, ECJ, Anheuser Bush
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor's exclusive right to the trade mark – Alleged use of the sign as a trade name
Distinctive character: the overall impression must be considered.
Only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision. Evidence must show that consumers did not need to become accustomed to the mark through the use made of it, but that it immediately enabled them to distinguish the goods or services bearing the mark from the goods or services of competing undertakings.
IPPT20040427, ECJ, Turner v Grovit
Brussels Convention is to be interpreted as precluding the grant of an injunction before a court of another Contracting State.
The Convention does not permit the jurisdiction of a court to be reviewed by a court in another Contracting State.
2003
IPPT20031209, ECJ, Gasser v Misat
Article 21 is intended, in the interests of the proper administration of justice within the Community, to prevent parallel proceedings before the courts of different Contracting States and to avoid conflicts between decisions which might result therefrom.
IPPT20030410, ECJ, Schulin v STV
Only obligation to provide information to holder of plant variety right in case of indication of possible infringement
2001
Where TRIPs became applicable in the Member State concerned at a time when the court of first instance has heard the case but not yet delivered its decision, Article 50 of that agreement is applicable to the extent that the infringement continues beyond the date on which TRIPs became applicable with regard to the Community and the Member States.
2000
IPPT20001214, ECJ, Dior v Tuk and Assco v Layher
Jurisdiction: the jurisdiction of the Court of Justice to inter-pret Article 50 of TRIPs is thus not restricted solely to situa-tions covered by trade-mark law.
Direct effect: The provisions of TRIPs, are not such as to create rights upon which individuals may rely directly before the courts by virtue of Community law. Community law neither requires nor forbids that the legal order of a Member State should accord to individuals the right to rely directly on the rule laid down by Article 50(6) of TRIPs.
IPPT20000926, ECJ, Commission v French Republic
Customs seizure: Unauthorized detention of goods in transit to another Member State where they may be lawfully marketed
1999
IPPT19991123, ECJ, Portugal v Council
Direct effect: no direct effect WTO agreements, except where the Community intended to implement a particular obligation.
IPPT19991014, ECJ, Adidas
Custom seizure: Disclosure of identity of declarants or consignees to trademark owner.
1998
IPPT19980616, ECJ, Hermes v FHT
Dutch summary proceedings is a provisional measure as stated article 50(6) TRIPs.
IPPT19980519, ECJ, Drouot Assurances v Consolidated Metallurgical Industries
Article 21 of the Convention is not applicable in the case of two actions between different parties, unless it is established that, with regard to the sub-ject-matter of the two disputes, the interests of the parties are identical to and indissociable from one another.
1997
IPPT19971104, ECJ, Dior v Evora
The proprietor of a trademark or holder of a copy-right can not oppose a reseller that advertises in a way that is customary for that sector of trade, unless use of the goods seriously damages the reputation of the trademark.
1995
IPPT19950307, ECJ, Shevill v Presse Alliance
Place where the harmful event occurred must be understood as being intended to cover both the place where the damage occurred and the place of the event giving rise to it. In the case of a libel by a newspaper article the place of the event giving rise to the damage, is the place where the publisher of the newspaper in question is established.
1994
It is sufficient, in order to establish the necessary relationship between different actions, that separate trial and judgment would involve the risk of conflicting decisions, without necessarily involving the risk of giving rise to mutually exclusive legal conse-quences.
1991
IPPT19910627, ECJ, Overseas Union
International jurisdiction: Second seised court to stay proceedings
1990
IPPT19900111, ECJ, Dumez France
International jurisdiction: The place where the damage occurred: can be understood only as indicating the place where the event giving rise to the damage, and entailing tortious, delictual or quasi-delictual liability, directly produced its harmful effects upon the person who is the immediate victim of that event.
1988
IPPT19880927, ECJ, Kalfelis v Schroeder
International jurisdiction : Jurisdiction of Article 6(1) Brussels Convention is exception to the principle that jurisdiction is vested in the courts of the State of the defendant's domicile. Therefore a connection between the claims made against each of the defendants required. Connection between claims is present if there is a risk of incompatible judgments which are incompatible with each other. Atonomous concept of "matters relating to tort, delict or quasi-delict" of article 5(3) Brussels Convention
IPPT19880204, ECJ, Hoffman
Irreconcilable judgments: Irreconcilable within the meaning of article 27(3) of the Brussels Convention are judgmentsthat have legal consequences which are mutually exclusive
1983
IPPT19831115, ECJ, Duijnstee v Goderbauer
Court has to declare on its own motion that is has no jurisdiction in case of exclusive jurisdiction under article 16 of the Brussels Convention. The term "proceedings concerned with the regis-tration or validity of patents" contained in article 16 (4) must be regarded as an independent concept intended to have uniform application in all the contracting states. It does not include proceedings relating to rights of ownership of a patent
1980
Article 24 Brussels Convention: National courts are best able to assess the cir-cumstances which may lead to the grant or refusal of the measures sought or to the laying down of procedures and conditions which the plaintiff must observe in order to guarantee the provisional and protective character of the measures ordered.
1976
IPPT19761130, ECJ, Bier v Mines de Potasse
International jurisdiction: Place where harmful event occurred in article 5 (3) must be established in such a way as to acknowl-edge that the plaintiff has an option to commence proceedings either at the place where the damage occurred or the place of the event giving rise to it
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