Concept of “appropriate compensation” must be given an independent and uniform interpretation: when the terms of a provision of EU law makes no express reference to the law of the Member States its meaning and scope must normally be given an independent and uniform interpretation throughout the European Union. Meaning of the concept of “appropriate”: justified in the light of the specific circumstances of the case. While the exercise of their authority to grant such compensation is strictly subject to the preconditions under which either the provisional measures must have been repealed or ceased to be applicable because of any action or omission on the part of the applicant, or it must subsequently be found that there is no infringement or threat of infringement of an intellectual property right, the fact that those conditions are satisfied in a specific case does not mean that the competent national courts will automatically and in any event be obliged to order the applicant to provide compensation. Article 9(7) of the Enforcement Directive must be interpreted as not precluding national legislation which provides that a party – even though the patent on the basis of which those had been requested and granted has subsequently been found to be invalid - shall not be compensated for losses which he has suffered due to his not having acted as may generally be expected in order to avoid or mitigate his loss, to the extent that that legislation permits the court to take due account of all the objective circumstances of the case.
The General Court did not err in law in deciding that the time limit for bringing an action against the contested decision had expired: article 4(4) of the decision concerning electronic communication with and by the Office must be interpreted as meaning that notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox, unless the actual date of notification can be accurately established as a different date within that period of time.
Article 8(1) and (2) of the Copyright Directive read in conjunction with Article 3(1) thereof, and Article 3(2) of the Enforcement Directive must be interpreted as precluding national legislation under which the owner of an internet connection used for copyright infringements through file-sharing cannot be held liable to pay damages if he can name at least one family member who might have had access to that connection without providing further details as to when and how the internet was used by that family member: such a legislation would make proving the alleged infringement of copyright and who was responsible for that infringement impossible and thereby not respect the requirement to ensure a fair balance between the various fundamental rights in question.
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.
The General Court correctly held that, in the context of the invalidity proceedings based on the absolute ground for refusal, the EUIPO Board of Appeal should not, in all circumstances, rule that the that evidence submitted for the first time before the Board of Appeal must be regarded as belated: it follows from case law that no reason of principle opposes to this.
No error of law by the General Court in demarcating Forge de Laguiole’s business sectors in order to determine the scope of protection of the earlier business name FORGE DE LAGUIOLE: General Court did not in any way generally apply its case-law by analogy with regard to the scope of protection of trademarks applied on the scope of protection of business name, the judgment of 10 July 2012 had to be taken into account as evidence that the General Court takes the intended distribution channels into account.
Rule 50 of the Implementing Regulation cannot give discretion to the Boards of Appeal to additional evidence. The article contains a rule that applies horizontally. Error in law by the General Court with regards to the discretion regarding additional evidence. Judgment of the General Court regarding a breach of art. 76(2) of the Regulation 207/2009. Judgment is justified on other grounds.
The General Court was able to find, without erring in law, that the principle of res judicata did not mean that the EUIPO was bound by the judgment of the tribunal de commerce de Bruxelles: The subject matter of the proceedings was different because of the exclusive competence of EUIPO’s adjudicating bodies to authorise or refuse the registration of an EU trade mark, which is different to any proceedings before a national court.
Rule of jurisdiction of article 4.6. BCIP(court of the place of registration) as a special rule of jurisdiction is allowed under article 71 of Council Regulation No 44/2001 as indispensible to the functioning of the Benelux Union (article 350 TFEU).
Tenant of sales points falls under the concept of ‘intermediary whose services are being used by a third party to infringe an intellectual property right within article 11 of the Directive. Injunctions toward intermediaries who provide letting of sales points in market halls are subject to the same conditions as injunctions addressed to intermediaries in an online marketplace, set out in L’Oreal and Others (IPPT20110712).
Directive 2004/48 allows national legislation providing that the court takes specific circumstances of the case into account whilst ordering the unsuccessful party to pay the legal costs incurred by the successful party, as well as flat rates, if reasonable, for legal costs incurred. The proportionality principle provides that at the very least a significant and appropriate part of the reasonable costs of the successful party are borne by the unsuccessful party. The directive precludes legislation which provides that a technical advisor should only be reimbursed in the event of fault of the losing party when these costs are linked to a judicial action concerning the upholding of intellectual property rights.
Litigation: Not recognising a judgment contrary to EU law can not be justified on the grounds that it infringes public policy in a Member State, where the error of law relied on does not constitute a manifest breach of a rule of law regarded as essential in the EU legal order. An error in affecting the application of Article 5(3) Trade Marks Directive is not a manifest breach of a rule of law regarded as essential in the EU legal order.
Procedural law: Article 8(3)(e) of Directive must be interpreted as precluding a national provision, which allows, in an unlimited and unconditional manner, a banking institution to invoke banking secrecy in order to refuse to provide, information concerning the name and address of an account holder
IPPT20140410, CJEU, ACI v Thuiskopie
Strict interpretation of exceptions precludes liability for copyright holders to tolerate rights violations which may involve the making of private copies, private copy exception does not cover private copies made from an unlawful source. National legislation that makes no distinction between lawful private copies from unlawful sources and lawful sources conflict with objectives of Copyright Directive. The legislation is no proper implementation of the private copy exception, regardless of the fact that no technical facilities exist to combat unauthorized private copies Compensation System under this legislation does not provide a fair balance of interests of authors and users of protected material: indirect punishment of user. Enforcement Directive does not apply to proceedings for fair compensation.
IPPT20140403, CJEU, Hi Hotel v Spoering
Court of Member State within which damage is caused, where supposed perpetrator did not act, has jurisdiction only to rule on damage cause within territory of Member State to which it belongs
IPPT20140213, CJEU, Merck Canada
Tribunal Arbitral necessário must be considered to be a court or tribunal for the purposes of article 267 TFEU. SPC: validity of SPC is no longer than 15 years from the first MA in the European Union.
IPPT20140213, CJEU, Hungary v European Commission
Any measures adopted by the institutions of the European Union which are intended to have binding legal effects, are actionable measures (article 263 TFEU). Automatic registration by European Commission of already protected wine names in E-Bacchusdatabase does not establish binding legal effects and thus is not subject to appeal.
Distribution of images of a design to traders operating in the involved sector in the Union can be sufficient to be known in the course of business to the circles specialized in the sector concerned. Burden of proving: holder of protected design must bear the burden of proving that the contested use results from copying that design; national law may counter difficulties in production of evidence
IPPT20131003, CJEU, Rintisch v OHIM – Proti Snack
Evidence submitted after expiry of period specified: the submission of evidence after the expiry of the period specified for that purpose by OHIM, in order to establish the existence, validity and scope of protection of the earlier mark, entails the rejection of the opposition, and the Board of Appeal has no discretion in that regard.
Appeal: the appeal must state precisely the contested elements and legal arguments, failing which the plea is inadmissible.
Procedural Law: The Court cannot judge over evidences not examined by the Board of Appeal.
IPPT20130718, CJEU, New-Yorker v OHIM
Submission of additional proof of use of mark permissible through use of discretion conferred upon OHIM: OHIM is in no way prohibited from taking account of evidence submitted out of time through use of the discretion conferred on it.
No jurisdiction based on place where a harmful event occurred which is imputed to a presumed co-perpetrator of damage with respect to other presumed perpetrators
Legality decisions: general Court can review legality decisions CPVO by examining whether characterisation of facts was flawed. Descretions CPVO: CPVO has decretion to make separate request for plant material to be examined and for documentary evidence relating to it and to make new request plant material after imprecise initial request; principles of sound administration and effectiveness of proceedings.
Communication of OHIM to opposing party that opposition is admissible, is not simply a procedural measure but a decision which may only be revoked or annulled in accordance with Trademark Regulation
Possibility of irreconcilable judgments (article 6 EEX Convention) if companies are each separately accused of infringement of same national part of European patent with same product. Exclusive jurisdiction regarding validity does not preclude special jurisdiction regarding interim measures
Internet service provider can be ordered to give personal information of alleged infringer to copyright holder
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.
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.
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, CJEU, 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
Inadmissibility of action: failure to submit signed original of the application nit capable of being regularised. No excusable error: responsibility rests with the lawyer
Court order against operator of an online marketplace regarding future infringements possible.
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.
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
Agency competent to require proof that an earlier mark has been renewed, but proof that an earlier mark has been renewed won’t be given spontaneously. New plea which extends the subject-matter of the dispute cannot be introduced in appeal.
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.
‘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.
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.
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
Lack of urgency interim measures: the application for interim measures must be dismissed on the ground of lack of urgency, without there being any need to examine whether the other conditions for ordering the suspension of operation sought, in particular the existence of a prima facie case, are satisfied.
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.
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’.
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.
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.
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
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.
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
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.
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.
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.
Only obligation to provide information to holder of plant variety right in case of indication of possible infringement
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.
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.
Customs seizure: Unauthorized detention of goods in transit to another Member State where they may be lawfully marketed
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.
Dutch summary proceedings is a provisional measure as stated article 50(6) TRIPs.
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.
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.
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.
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.
IPPT19910627, ECJ, Overseas Union
International jurisdiction: Second seised court to stay proceedings
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.
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
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
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.
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