2005 - 2001 ECJ
Print this page2005
The national legislation and various factors relating to the consumption of feta in the Member States tend to indicate that the name ‘feta’ is not generic in nature
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
IPPT20051006, ECJ, Medion v Thomson
Where the goods or services are identical there may be a likelihood of confusion where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein
The notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service
IPPT20050714, ECJ, Europe 1 v SPRE and GVL
Directive 93/83 does not preclude the fee for phonogram use being governed not only by the law of the Member State in whose territory the broadcasting company is established but also by the legislation of the Member State in which, for technical reasons, the terrestrial transmitter broadcasting to the first State is located.
IPPT20050707, ECJ, Nestle v Mars
The distinctive character of a mark referred to in Article 3(3) of the directive may be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark.
IPPT20050707, ECJ, Praktiker v Deutsche Patent und Markenamt
The concept of ‘services’ referred to by the directive covers services provided in connection with retail trade in goods. For the purposes of registration of a trade mark for such services, it is not necessary to specify the actual service(s) in question. However, details must be provided with regard to the goods or types of goods to which those services relate.
IPPT20050630, ECJ, Tod's v Heyraud
Article 12 EC, which lays down the general principle of non-discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work.
No distinctive character based on the overall impression which is conveyed by the shape and the arrangement of the colours of the mark applied for.
IPPT20050616, ECJ, Commission v Italy
Violation of Article 5(2) Bio-technology Directive: Italian patent law does not allow to patent elements of the human body that have been isolated. Violation of Article 6(2) Bio-technology Directive: Member States have no discretion with regard to the unpatentability of the processes and uses which it sets out. Violation of Article 8-11 Bio-technology Directive: protection for biological material directly obtained through patented process and any material derive through propagation or multiplication. Article 12 Breach Biotechnology Directive: compulsory license in case of interdependence between pa-tent on biological material invention and plant variety right
IPPT20050609, ECJ, HLH Warenvertriebs Orthica v Deutschland
The classification of a product as a medicinal product or as a foodstuff must take account of all the characteristics of the product, established both in the initial stage of the product and where it is mixed, in accordance with the method by which it is used, with water or with yoghurt.
A service comes within the concept of ‘television broadcasting’ if it consists of the initial transmission of television programmes intended for reception by an indeterminate number of potential television viewers, to whom the same images are transmitted simultaneously.
IPPT20050317, ECJ, Gillette v LA Laboratories
Use of the trade is necessary in order to indicate the intended purpose of a product where such use in practice constitutes the only means of providing the public with comprehensible and complete information. Use does not necessarily mean that it is presenting it as being of the same quality as, or having equivalent properties to, those of the product bearing the trade mark.
2004
IPPT20041130, 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
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
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.
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, 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
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 vita-mins, 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.
Free movement of goods – Medicinal products – Importation – 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 char-acteristics 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.
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.
2003
IPPT20031211, ECJ, Hässle v Ratiopharm
Supplementary Protection Certificate: so far as concerns medicinal products for human use, the concept of ‘first authorisation to place ... on the market ... in the Community’, in Article 19 (1) of Regulation No 1768/92, refers solely to the first authorisation required under provisions on medicinal products, in accordance with Directive 65/65, granted in any of the Member States, and does not therefore refer to authorisations required under legislation on pricing of or reimbursement for medicinal products. Invalidity of certificate delivered contrary to requirementsof SPC-Regulation: that a certificate which, contrary to the require-ments of Article 19 of Regulation No 1768/92, has been delivered where the first marketing authorisation in the Community was obtained prior to the relevant date fixed by that provision is invalid pursuant to Article 15 thereof.
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.
IPPT20031203, CFI, Nestlé Waters France v OHIM
The Board of Appeal erred in finding that the three-dimensional mark applied for is devoid of any distinctive character
IPPT20031127, ECJ, Shield Mark – soundmark
Graphical representation soundmark: Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, selfcontained, easily accessible, intelligible, durable and objective;
IPPT20031118, ECJ, Budvar v Ammersin
Bilateral convention between a Member State and a non-member country protecting indications of geographical origin from that non-member country.
Processing of personal data: Loading personal data onto an internet page is not transfer of data to a third country
National legislation which prohibits on pain of criminal penalties the pursuit of the activities of collecting, taking, booking and forwarding offers of bets constitutes a restriction on the freedom of establishment and the freedom to provide services.
IEPT20031023, ECJ, RTL Television
Films made for television and -series
Article 28 EC precludes the implementation of procedures for detention by the customs authorities of goods lawfully manufactured in a Member state and intended to be placed on the market in a non-member country.
Descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. A sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.
IPPT20031023, ECJ, Adidas v Fitnessworld
It is sufficient for the degree of similarity (not being likelihood of confusion) between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link be-tween the sign and the mark.
IPPT20030520, CJEU, Prosciutto di Parma
The condition of slicing and packaging in the region of production, whose aim is to preserve the reputation of Parma ham by strengthening control over its particular characteristics and its quality, may be regarded as justified as a measure protecting the PDO which may be used by all the operators concerned and is of decisive importance to them.
IPPT20030520, ECJ, Osterreichischer Rundfunk
Provided that the wide disclosure not merely of the amounts of the annual income but also of the names of the recipients of that income is necessary for and appropriate to the objective of proper management of public funds.
The mere fact that a marketing authorisation of ref-erence was withdrawn at the request of its holder should not entail the automatic withdrawal of the parallel import licence issued for the medicinal product in question, unless there is in fact a risk to the health of humans.
Three conditions to determine whether a colour can be a trade mark:
A colour can be a trademark if it is (i) a sign, (ii) capable of graphic representation and (iii) capable of distinguishing the goods or services of one under-taking from those of other undertakings.
IPPT20030410, ECJ, Schulin v STV
Only obligation to provide information to holder of plant variety right in case of indication of possible infringement
IPPT20030408, ECJ, Van Doren v Lifestyle Sports
The conditions for such exhaustion must, as a rule, be proved by the third party who relies on it, unless he succeeds in establishing that there is a real risk of partitioning of national markets if he himself bears that burden of proof.
IPPT20030408, ECJ, Pippig Augenoptik
No stricter national provisions on protection against misleading advertising allowed. The advertiser is in principle free to state the brand name of rival products in comparative advertising.
The presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well informed and rea-sonably observant and circumspect. When assessing the distinctiveness of a three-dimensional shape of product trade mark a stricter test must not be applied. A trade mark which consists exclusively of a sign or indication which may serve to designate the characteristics of goods or a service must be freely available to all and not be registrable.
IPPT20030320, ECJ, LTJ Diffusion (Arthur et Felicie)
A sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer. Essential function of a trade mark is to guarantee the identity of origin.
IPPT20030311, ECJ, Ansul v Ajax
Genuine use: not merely token use - use to guarantee the identity of the origin - use which is to create or preserve an outlet for the goods or services that bear the sign - use by the trade mark proprietor or a third party with authority to use the mark - use need not always be quantitatively significant.
The concept of equitable remuneration must be interpreted uniformly in all the Member States; it is for each Member State to determine, in its own territory, the most appropriate criteria. A proper balance has to be achieved between the interests of performing artists and producers in obtaining remuneration for the broadcast of a particular phonogram, and the interests of third parties in being able to broadcast the phonogram on terms that are reasonable.
IPPT20030109, ECJ, Davidoff v Durffee
Marks with a reputation are not to have less pro-tection where a sign is used for identical or similar goods or services than where a sign is used for non-similar goods or services. The application of Article 5(1)(b) depends on there being a likelihood of confusion.
2002
In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.
IPPT20021121, ECJ, Robelco v Robeco
A Member State may, if it sees fit, and subject to such conditions as it may determine, protect a trade mark against use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
The exercise of the trademark right must be reserved to cases in which a third party's use of the sign affects the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods. It is immaterial that in the context of that use the sign is perceived as a badge of support for or loyalty or affilia-tion to the proprietor of the mark. Post-sale confusion.
IPPT20020919, ECJ, Companyline
Two generic terms coupled together have to possess an additional characteristic such as to confer on the sign, taken as a whole, a distinctive character. A sign is to be refused registration where it is descriptive in the language of one Member State.
Cessation of the validity of a parallel import licence following the withdrawal of the marketing authorisation of reference constitutes a restriction on the free movement of goods. A risk to public health arising from the coexistence of the two versions may justify restrictions on the importation of the old version.
IPPT20020625, ECJ, Bigi (Parmesan)
Products are not covered by the system of derogations set up by Article 13(2) where they originate in the State of the PDO the protection of which under Article 13(1)(a) and (b) of Regulation No 2081/92 is at issue and they do not meet the product specification for that PDO.
IPPT20020618, ECJ, Philips v Remington
The grounds for refusal have been listed in an exhaustive manner. The criteria for assessing the distinctive character are the same for all categories of trade marks. Extensive use of a sign may be sufficient to give the sign a distinctive character.
Where the essential functional characteristics of the shape of a product are attributable solely to the technical result, Article 3(1)(e), second indent, precludes registration of a sign consisting of that shape, even if that technical result can be achieved by other shapes
The prohibition of discrimination precludes the term of protection granted by the legislation of a Member State to the works of an author who is a national of another Member State being shorter than the term granted to the works of its own nationals.
IPPT20020514, ECJ, Holterhoff v Freiesleben
Purely descriptive reference in order to reveal the characteristics of the product does not infringe the exclusive right of the proprietor of the trade mark
IPPT20020423, ECJ, MSD v Paranova
Replacement packaging of pharmaceutical products is objectively necessary if, without such repackaging, effective access to the market concerned must be considered to be hindered as the result of strong resistance from a significant proportion of consumers to relabelled pharmaceutical products.
IPPT20020423, ECJ, Boehringer Ingelheim v Swingard
Article 7(2) of the Directive must be interpreted as meaning that a trade mark proprietor may rely on its trade mark rights in order to prevent a parallel importer from repackaging pharmaceutical products unless the exercise of those rights contributes to artificial partitioning of the markets between Member States.
2001
Exhausion - consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated. Such intention will normally be gathered from an express statement of consent.
IPPT20011025, ECJ, Toshiba v Katun
Indication in a catalogue of product numbers for spare parts and consumable items may constitute comparative advertising. Only unfair advantage of the reputation attached to the marks when the public might associate the reputation of that manufacturer's products with the products of the competing supplier.
IPPT20011009, ECJ, The Netherlands v Parliament & Council
Biotech-directive aims to prevent divergences of practice and case-law. Community competent to harmonise intellectual property law. Commercial exploitation of an invention is not con-trary to ordre public or morality because of a pro-hibition. Genetically modiefied plant variety not patentable, but inventions that concern a grouping wider than a single plant variety are patentable. Biotechnology Directive deprives Member States of option under TRIPS, but is compatible with TRIPs. Biotechnological invention versus discovery
IPPT20011004, ECJ, Merz & Krell (Bravo)
Article 3(1)(d) only precludes registration of trade marks that have become customary in the current language or in the bona fide and established practices of the trade. It is immaterial, when that provision is applied, whether the signs or indications in question are descriptive.
Descriptiveness must be determined in relation to each word separately and in relation to the whole. Any perceptible difference from the terms used in common parlance can confer distinctive character.
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.
Products: ‘as they occur’ including any impurity. Number of market authorizations: irrelevant for establishing whether products are the same. Difference only in proportion of active chemical compound insufficient to qualify as different product
