Article 98(1) of Regulation (EC) No 40/94 – Obligation of a Community trade mark court to issue an order prohibiting a third party from proceeding with such acts – Definition of ‘special reasons’ for not issuing such a prohibition – Obligation of a Com-munity trade mark court to take such measures as are aimed at ensuring that such a prohibition is complied with – National legislation laying down a general prohibition of infringement or threatened infringement coupled with penalties.
IPPT20061207, EBA-EPO, Exclusion and objection
[G 1/05] 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
The distribution of a signal by means of television sets by a hotel to customers staying in its rooms, whatever technique is used to transmit the signal, constitutes communication to the public. The private nature of hotel rooms does not preclude the communication of a work by means of television sets from constituting communication to the public within the meaning of Article 3(1) of Di-rective 2001/29.
Articles 10 EC , 81 EC and 82 EC do not pre-clude a Member State from adopting a legislative measure which approves a scale fixing a minimum fee for members of the legal profession from which there can generally be no derogation.
Freedom of speech: In these circumstances, and especially given the extremely serious accusations levelled against the K. family, there was nothing unreasonable in expecting Mr K at the very least to state his qualifications.
IPPT20061115, TBA-EPO, DUNS
[T 154/04] Methods of business research are excluded "as such" from patentability under Article 52(2)(c) and (3) EPC: Gathering and evaluating data as part of a busi-ness research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem. Principles of patentability: Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an in-vention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
Trade mark proprietor can prohibit transit of goods bearing the trade mark to a Member State where the mark is not protected only if the goods are subject to the act of a third party which necessarily entails their being put on the market.
A feature satisfies the requirement of verifiability only if the advertiser indicates, in particular for the attention of the persons to whom the advertisement is addressed, where and how they may readily examine those details with a view to verifying, the details as to their accuracy.
IPPT20060913, CFI, MIP Metro v OHIM – Tesco Stores
Purpose relatieve grounds and apposition. Two angels: The possibility of such a conflict must be consid-ered from two different angles. with regard to the substantive scope of the abovementioned provi-sions, the earlier mark and the mark applied for must be identical or similar, as must the goods or services des-ignated by those marks, so that confusion may arise between the two signs. Concerning the temporal scope of those provi-sions, both those marks must co-exist for a certain period. OHIM may request the opponent to submit facts, evidence and argument.
IPPT20060912, ECJ, Laserdisken v Kulturministeriet
Copyright: exhaustion of distribution rights harmonized: requires placing work on the market within the Community by the rightholder or with his consent. Article 4(2) Directive 2001/29 valid
Trade mark has to acquire distinctive character through use throughout the territory of the Member State or, in the case of Benelux, throughout the part of the territory of Benelux in which there exists a ground for refusal. If the ground for refusal exists only in one of the linguistic areas, it must be established that the mark has acquired distinctive character through use throughout that linguistic area.
Accordingly, the Court of First Instance is obliged to reject as inadmissible a head of claim in an application brought before it if the essential matters of law and of fact on which the head of claim is based are not indicated coherently and intelligibly in the application itself.
Committee concerning doping control – Incompatibility with the Community rules on competition and freedom to provide services.
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.
That the rule of exclusive jurisdiction laid down therein concerns all proceedings relating to the registration or validity of a patent, irrespective of whether the issue is raised by way of an action or a plea in objection.
No rental right for producers of videograms
IPPT20060706, ECJ, Commission v Portugal
Failure to properly implement directive by exempting all categories of public lending establishment form remuneration obligation
The Board of Appeal did not err in law in finding that “the configuration of the mark in question (…) did not fundamentally stand out against the other usual presentations in the trade”, and, that the wrapping at issue ‘is not substantially different’ from wrappers for sweets or caramels commonly used in trade.
Likelihood of confusion – Application for Community word mark VITAFRUIT – Opposition by the proprietor of the national word mark VITAFRUT – Genuine use of the earlier trade mark – Proof of consent of the pro-prietor for the use of the earlier trade mark – Similarity of goods.
Although one and the same substance may be the subject of several patents and several marketing authorisations in one and the same Member State, the SPC will be granted for that substance only on the basis of a single patent and a single authorisation, namely the first granted in the Member State concerned.
IPPT20060427, ECJ, L’Oréal v OHIM
Distinction between distinctive character earlier mark and distinctive character of an element of a complex mark dominating the overall impression of that complex mark
That Article 5(1) of Directive 89/104 must be interpreted as meaning that, in order to determine the scope of protection of a trade mark which has been lawfully acquired on the basis of its distinctive character, the national court must take into account the perception of the public concerned at the time when the sign, the use of which infringes that trade mark, began to be used.
Global appreciation likelihood of confusion: weak distinctive character earlier mark does not mean that a complete reproduction of that mark by the mark applied for, whatever the degree of simi-larity between the signs in question, is required. Neutralising: a clear and specific meaning capable of being grasped immediately required for counteracting similarities.
IPPT20060330, ECJ, Emanuel v CSL
Trademark not deceiving the public only because it contains the name of the designer and first manufacturer, in particular where goodwill has been assigned together with the business
IPPT20060323, ECJ, Mülhens v OHIM
Likelihood of confusion: overall impression. Mere phonetic similarity not decisive. Neutralising phentic similarity by counteracting visual or conceptual differences
Trade mark consisting of a term borrowed from the language of another Member State in which it is devoid of distinctive character and/or descriptive of the goods in respect of which the trade mark was registered.
That Article 3a(1)(g) of Directive 84/450 must be interpreted as meaning that, in circumstances such as those in the main proceedings, by using in its catalogues the core element of a manufacturer’s distinguishing mark which is known in specialist circles, a competing supplier does not take unfair advantage of the reputation of that distinguishing mark.
IPPT20060223, TBA-EPO, Microsoft
[T 0424/03] Patentability: no computer program ‘as such’: A computer system including a memory (clipboard) is a technical means, and consequently the claimed method has technical character in accordance with established case law. Moreover, the Board would like to emphasise that a method implemented in a computer system represents a sequence of steps actually performed and achieving an effect, and not a sequence of computer-executable instructions (i.e. a computer program) which just have the potential of achieving such an effect when loaded into, and run on, a computer.
The conceptual differences observed between those signs may counteract the visual and phonetic similarities between them. Account must be taken of the fact that, in view of the nature of the goods concerned and in particular their price and their highly technological character, the average consumer displays a particularly high level of attention at the time of purchase of such goods.
The average consumer will see the form of drinks packaging as an indication of the product’s commercial origin only if that form may be perceived immediately as such an indication.