2004
Print this pageIPPT20041130, ECJ, Peak Holding
Goods cannot be regarded as having been put on the market where the proprietor of the trade mark has imported them, without actually selling them. A prohibition on reselling in the EEA does not mean that there is no putting on the market in the EEA.
IPPT20041124, ECJ, Henkel v OHIM
Shape of a white transparent bottle possesses required distinctiveness to be registered as a three-dimensional mark. Registrations already made in Member States are a factor which may be taken into account for the purposes of registering a community trade mark
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
IPPT20041109, CJEU, Fixtures Marketing v OPAP
Database law: A fixture list for a football league constitutes a database: it refers to any collection of works, data or other materials, separable from one another without the value of their contents being affected.
IPPT20041109, ECJ, British Horseracing Board v William Hill
Directive 96/9/EC – Legal protection of databases – Sui generis right – Obtaining, verification or presenta-tion of the contents of a database – (In)substantial part of the contents of a database – Extraction and reutilisation – Normal exploitation – Unreasonable prejudice to the legitimate interests of the maker – Horseracing database – Lists of races – Betting
IPPT20041027, TBA-EPO, Salk Institute
[T 0609/02] Enablement; insufficient disclosure: If the description of a patent specification pro-vides no more than a vague indication of a possible medical use for a chemical compound yet to be identified, later more detailed evidence cannot be used to remedy the fundamental insufficiency of disclosure of such subject-matter.
IPPT20041021, UKHL, Kirin Amgen v Hoechst
Purposive construction and article 69 EPC: Person skilled in the art reads [the claim or] the specification on the assumption that its purpose is to both to describe and to demarcate an invention. Doctrine of equivalents and article 69 EPC: Article 69 firmly shuts the door on any doctrine which extends protection outside the claims. Equivalence: guidelines for purposive construction. Invention should normally be taken as having been claimed at the same level of generality as that at which it is defined in the claims. New technology: The question is whether the person skilled in the art would understand the description in a way which was sufficiently general to include the new technology. Insufficiency claim 19: no enabling disclosure: If the claim says that you must use an acid, and there is nothing in the specification or context to tell you which acid, and the invention will work with some acids but not with others but finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency.
IPPT20041021, ECJ, KWS Saat v OHIM
Acquiring distinctive character colourmarks by use. In that context, a colour per se may acquire, for the goods or services in respect of which registration is sought, a distinctive character in consequence of the use which has been made of it, by virtue of Article 7(3) of Regulation No 40/94.
IPPT20041021, ECJ, Erpo Mobelwerk
Appeal – Community trade mark – Phrase DAS PRINZIP DER BEQUEMLICHKEIT – Absolute ground for refusal – Distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94
IPPT20041019, TBA-EPO, Procter & Gamble
[T 0540/02] Amendment European patent application: Needs to be directly and unambiguously derivable from application. According to the consistent case law of the Boards of Appeal it is not permissible to extract isolated features from a set of features which have originally been disclosed in combination
IPPT20041012, ECJ, Vedial v OHIM
Cumulative conditions likelihood of confusion article 8(1)(b): Having found that there was no similarity be-tween the earlier mark and the mark applied for, the Court of First Instance correctly concluded that there was no likelihood of confusion, whatever the reputation of the earlier mark and regardless of the degree of identity or similarity of the goods or services concerned.
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.
IPPT20041005, ECJ, Alcon v OHIM
Court of First Instance correctly found that the BSS mark had become customary for the target public concerned and the use made of the mark had not been able to confer distinctive character on it
Distinctive character: a separate analysis of each of its elements instead of on the overall perception of that word by the average consumer.
The frequent use of trade marks consisting of a word and a number in the telecommunications sector indicates that that type of combination cannot be considered to be devoid, in principle, of distinctive character.
IPPT20040916, ECJ, Nichols v Registrar
The assessment of the existence or otherwise of the distinctive character of a trade mark constituted by a surname, even a common one, must be carried out specifically.
IPPT20040727, ECHR, Sidabras v Lithuania
No breach of Article 10 ECHR: Inability to find employment because of the KGB Act not a restriction on ability to express views, because searched positions do not involve the imparting of ideas and information
The relevant public’s perception can differ in relation to the various categories of trademarks so it may prove more difficult to establish the distinctiveness of the marks in certain categories. Complaints relating to the Court of First Instance’s finding that the sign does not serve as an indication of origin for the target public - which is composed of both professionals in the construction field and the public in general - intended solely to call into question the assessment of the facts and are not accompanied by arguments establishing that the clear sense of the evidence was distorted.
IPPT20040624, ECHR, Von Hannover v Germany
Publication of photos: In the present case there is no doubt that the publi-cation by various German magazines of photos of the applicant in her daily life either on her own or with other people falls within the scope of her pri-vate life: There is therefore a zone of interaction of a person with oth-ers, even in a public context, which may fall within the scope of “private life”. Balancing protection of private life and freedom of expression: the decisive factor in balancing the protection of private life against freedom of expression should lie in the contribution that the published photos and articles make to a debate of general interest.
IPPT20040624, ECJ, Heidelberger Bauchemie
Trade marks – Harmonisation of laws – Directive 89/104/EEC – Signs capable of constituting a trade mark – Combinations of colours – Colours blue and yellow for certain products used in the building trade
IPPT20040429, ECJ, Procter & Gamble
Three-dimensional tablets for washing machines or dishwashers – Absolute ground for refusal to register – Distinctive character
Medicinal products – Marketing authorisation – Procedure relating to essentially similar products
IPPT20040426, EBA-EPO, AstraZeneca
[G 0002/02] Priorities from India: The TRIPs Agreement does not entitle the applicant for a European patent application to claim priority from a first filing in a State which was not at the relevant dates a member of the Paris Convention but was a member of the WTO/TRIPs Agreement
IPPT20040421, TBA-EPO, Hitachi
[T 258/03] In general, a method involving technical means is an invention. Subject matter consisting of technical and non-technical features can be an invention. In the Board's view, activities falling within the notion of a non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications. Business scheme lacking technical character: Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed.
Three conditions for abuse by refusal to grant a licence (a) to offer new products or services not offered by the owner (b) not justified by objective considerations and (c) to reserve the market by eliminating all competition.
The more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character.
IPPT20040429, ECJ, Commission v Germany
By automatically classifying as medicinal products vitamin preparations lawfully manufactured or marketed as food supplements in the other Member States where they contain three times more vitamins, other than vitamins A and D, than the daily amount recommended by the Deutsche Gesellschaft für Ernährung (German Food Association), the Federal Republic of Germany has failed to fulfil its obligations under Article 28 EC.
IPPT20040429, ECJ, Commission v Austria
Food preparations containing vitamins A, D or K or minerals in the chromate group or containing more than once the daily amount of other vitamins or minerals – Preparations lawfully marketed as food supplements in the Member State of exportation – Preparations classified as medicinal products in the Member State of importation
IPPT20040429, ECJ, Bjornekulla Grukindustrier v Procordia Food
In cases where intermediaries participate in the distribution to the consumer or the end user of a product which is the subject of a registered trade mark, the relevant classes of persons whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially.
IPPT20040428, ECJ, Matratzen Concord v OHIM
The claim that the Court, by considering separately the elements of the trade mark applied for, failed to assess globally the likelihood of confusion, taking into account all the factors relevant to the circumstances of the case, is unfounded.
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.
IPPT20040408, EBA-EPO, Genetic Systems
[G 0002/02] Allowability of disclaimer not disclosed in application as filed
IPPT20040408, EBA-EPO, PPG
[G 0001/03] Allowability of disclaimer not disclosed in application as filed
Free movement of goods – Medicinal products – Im-portation – Application for marketing authorisation under a simplified procedure – Common origin
IPPT20040212, ECJ, Postkantoor
Grounds for refusal to register mark - Taking account of all the relevant facts and circumstances - Prohibition on registering a mark in respect of certain goods or services if they do not possess a particular characteristic - Word made up of components each of which describes characteristics of the goods or services concerned.
For three-dimensional trade marks consisting of the packaging of goods which are packaged in trade for reasons linked to the very nature of the goods, the packaging thereof may serve to designate characteristics of the packaged goods, including their quality, within the meaning of Article 3(1)(c) of the Directive.
IPPT20040205, ECJ, Telefon & Buch v OHIM
Signs designating characteristics of the goods and services, having several meanings: sufficient that at least one of the possible meanings of that sign be descriptive
IPPT20040205, ECJ, Streamserve v OHIM
Article 7(1)(c) of the EU Trade Mark Regulation pursues an aim in the general interest that signs or indications which may serve to designate the characteristics of the goods or services may be freely used by all.
Public interest requires that signs and indications descriptive of the characteristics of goods or services in respect of which registration is sought may be freely used by all.
A mark consisting of a neologism composed of descriptive elements is itself descriptive of those characteristics, unless there is a perceptible difference between the neologism and the mere sum of its parts.
IPPT20040127, ECJ, La Mer Technology v Laboratoires Goemar
Genuine use: when it serves a real commercial purpose, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use within the meaning of the Directive.
IPPT20040115, TBA-EPO, Ecolab
[T 962/98] Inadmissable generalization of an example: in order to be acceptable an intermediate generalization must be the result of unambiguous information that a skilled person would draw from the review of the example and the content of the application as filed. The Board does not exclude that there may exist situations where some characteristics taken from a working example may be combined with other features disclosed in a more general context without necessarily creating an objectionable intermediate generalization.
Transit via Euopean Community: articles 2 and 11 of Council Regulation No 3295/94 are applicable to situations in which goods in transit between two countries not belonging to the European Community are temporarily detained in a Member State by the customs authorities of that State.
