Member States are required to recognize a body collectively representing trade mark proprietors if national law allows that body to bring legal proceedings
14-08-2018 Print this page
Member States are required under article 4(c) of the EU Enforcement Directive to recognize a body collectively representing trade mark proprietors as a person entitled to seek, in its own name, the application of the remedies laid down in the EU Enforcement Directive and to bring legal proceedings, in its own name, on condition that that body is regarded by national law as having a direct interest in the defence of such rights and that that law allows it to bring legal proceedings to that end, these being matters for the referring court to verify. Articles 12 to 14 of the Directive on Electronic Commerce apply to the provider of an IP address rental and registration service allowing the anonymous use of internet domain names, inasmuch as that service comes within the scope of one of the categories of service referred to in those articles and meets all the corresponding conditions, in so far as the activity of such a service provider is of a merely technical, automatic and passive nature, implying that he has neither knowledge of nor control over the information transmitted or cached by his customers and in so far as he does not play an active role in allowing those customers to optimise their online sales activity, these being matters for the referring court to verify.
LITIGATION - COLLECTIVE RIGHTS MANAGEMENT
SNB-REACT deals with collective rights management of trade mark holders and has filed a claim with the Harju Maakohus (judge at first instance Harju, Estonia) against Metha to terminate the infringement of the righst of ten of its members, to abstain from further infringements and for compensation for the damage caused by him. Mehta would have registered domain names on the internet that unlawfully used signs that are similar to the marks of its members and websites selling unlawful products with those signs.
According to SNB-REACT, Mehta was the holder of the IP addresses corresponding to those domain names and the websites. According to SNB-REACT, Metha is liable for the unlawful use of the signs used by these domain names and websites, and has been repeatedly informed of this. In the first instance the claims were rejected. First, because the court held that SNB-REACT was not entitled to bring proceedings in its own name to defend the rights of their members. Secondly, it was considered that SNB-REACT had shown that Mehta was the holder of the IP addresses linked to the domain names on which unlawful use is made of the signs which are identical to the marks of the members, but it has not been shown that Mehta was the holder of these domain names and websites or that they themselves made unauthorized use of the signs. The referring appeal judge asks questions about the legal standing of a body as SNB-REACT and about the liability of Metha.
The CJEU answers the prejudicial questions as follows:
1. Article 4(c) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that the Member States are required to recognise a body collectively representing trade mark proprietors, such as that at issue in the case in the main proceedings, as a person entitled to seek, in its own name, the application of the remedies laid down by that directive, for the purpose of defending the rights of those trade mark proprietors, and to bring legal proceedings, in its own name, for the purpose of enforcing those rights, on condition that that body is regarded by national law as having a direct interest in the defence of such rights and that that law allows it to bring legal proceedings to that end, these being matters for the referring court to verify.
2. Articles 12 to 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the limitations of liability for which they provide apply to the provider of an IP address rental and registration service allowing the anonymous use of internet domain names, such as that at issue in the case in the main proceedings, inasmuch as that service comes within the scope of one of the categories of service referred to in those articles and meets all the corresponding conditions, in so far as the activity of such a service provider is of a merely technical, automatic and passive nature, implying that he has neither knowledge of nor control over the information transmitted or cached by his customers, and in so far as he does not play an active role in allowing those customers to optimise their online sales activity, these being matters for the referring court to verify.
IPPT20180807, CJEU, SNB-REACT v Deepak Mehta
