2009

IPPT20091120, NLSC, Lego v Mega Brands

Dutch Supreme Court: Standardization and slavish imitation - no unnecessary confusion: Under circumstances a need for standardization among the buyers of the products can, however, lead to justification for the imitation of a product that causes confusion. Other considerations for purchase do not affect the justification of the imitation, both in view of the compatibility and the exchangeability. Color and location of the  name apparently sufficiently different to prevent a risk of unnecessary confusion.

 

IPPT20091022, Court of Appeal, London, Virgin Atlantic v Premium Aircraft Interiors
Scope of protection article 69 EPC: Principles of purposive claim construction. Skilled reader is to know patent practice: and to know (i) the purpose of including reference numerals in patent claims, (ii) the purpose of dividing claims into pre-characterising and characterising portions and (iii) the practice of filing divisional applications, and to bring that knowledge to bear when he considers the scope of the claim. Added matter by deletion or addition: Strict comparison: Subject matter will be added unless it is clearly and unambiguously disclosed in the Parent.
 

IPPT20091016, EBA-EPO, Computer Implemented Inventions
[G 0003/08] 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 

 

IPPT20091015, ECJ, Makro v Diesel

The consent to the marketing of goods bearing the mark carried out directly in the EEA by a third party who has no economic link to the pro-prietor may be implied, in so far as such consent is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his exclusive rights.

 

IPPT20091006, ECJ, Pago v Tirolmilch

Trade mark with a reputation: The territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community.

 

IPPT20090908, ECJ, Liga Portuguesa & Bwin International

Prohibition of legitimate foreign operators from offering games of chance via the internet: that Article 49 EC does not preclude legislation of a Member State, such as that at issue in the main proceedings, which prohibits operators such as Bwin, which are established in other Member States, in which they lawfully provide similar services, from offering games of chance via the internet within the territory of that Member State.

 

IPPT20090930, USCAFC, Stanford v Roche

Assignment of title: Stanford did not gain title to Holodniy’s inventions, while the VCA effected a present assignment of Holodniy’s future inventions to Cetus. Roche’s counterclaim for ownership is time-barred by statutes of limitation

 

IPPT20090908, ECJ, Budvar v Ammersin

Regulation No 510/2006 is exhaustive in nature with the result that that regulation precludes the application of a system of protection laid down by an agreement between two Member States, which confers on a designation, recognised under the law of a Member State as constituting a designation of origin, protection in an-other Member State where that protection is actually claimed despite the fact that no application for registration of that designation of origin has been made in accordance with that regulation.

 

IPPT20090903, ECJ, AHP v BIE

Grant of an SPC is possible to the holder of a basic patent for a product for which one or more SPCs have already been granted to one or more holders of one or more other basic patents.

 

IPPT20090903, ECJ, Aceites del Sur v Koipe - Carbonell v La Espanola

The Court of First Instance attributed to the figurative element of the marks at issue the character of a dominant element in relation to the other elements comprising those marks, in particular the word element. That enabled it correctly to base its assessment on the similarity of the signs and on the existence of a likelihood of confusion between the marks La Española and Carbonell by giving the visual comparison of those signs an essential character.

 

IPPT20090716, ECJ, Infopaq v DDF

The act of printing out an extract of 11 words, during a data capture process does not fulfil the condition of being transient in nature and, therefore, that process cannot be carried out without the consent of the relevant rightholders. An extract of a protected work comprising 11 words, is such as to come within the concept of reproduction in part if the elements thus reproduced are the expression of the intellectual creation of their author.

 

IPPT20090716, ECJ, Der Grüne Punkt

Abuse dominant position by requiring payment of a fee for all packaging put into circulation in Germany, even if there is no use of the DGP system

 

IPPT20090716, ECJ, American Clothing v OHIM

Protection of State emblems is not subject to there being a connection, in the mind of the public, between the trade mark for which registration is sought and the emblem. Registration of a trade mark must be refused, whether the application concerns goods or services, where one of the grounds for refusal listed in Article 6ter of the Paris Convention applies to it.  

 

IPPT20090702, ECJ, Bavaria cs v Bayerische Brauerbund

No adverse affect Geographical Indications Regulation 1347/2001 on pre-existing Bavaria trademarks. Geographical Indications Regulation 1347/2001 valid

 

IPPT20090702, ECJ, Davidoff v Bundesfinanzdirektion Sudost

For purposes of customs action, an internationally registered trade mark and a Community trade mark have the same effects.

 

IPPT20090702. ECJ, FEIA v Cul de Sac

The right to the Community design vests in the designer, unless it has been assigned by way of contract to his successor in title. Principal is not the proprietor of the right to the Community design.

 

IPPT20090618, ECJ, L'Oreal v Bellure

Unfair advantage where the third party seeks to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark. The proprietor of a trade mark is entitled to prevent the use by a third party, in an unlawful comparative advertisement even where such use is not capable of jeopardising the essential function of the mark.

 

IPPT20090615, EBA-EPO, Kos Life Science
[G 0002/08] 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.

 

IPPT20090611, ECJ, Lindt & Sprungli v Frans Hauswirth

Registration in bad faith: Take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application: (i) the fact that the applicant knows or must know that a third party is using an identical or similar sign (ii) the applicants intention to prevent that third party from continuing to use the sign, and (iii) the degree of legal protection enjoyed by that third party's sign and by the sign for which registration is sought

 

IPPT20090604, ECJ, T-Mobile v NMa

A concerted practice pursues an anti‑competitive object for the purposes of Article 81(1) EC where it is capable of resulting in the prevention, restriction or distortion of competition: not necessary for there to be actual prevention, restriction or distortion of competition or a direct link between the concerted practice and consumer prices.In examining whether there is a causal connection between the concerted practice and the market conduct of the undertakings participating in the practice, the national court is required, subject to proof to the contrary, which it is for the undertakings concerned to adduce, to apply the presumption of a causal connection. According to this presumption, where they remain active on that market, such undertakings are presumed to take account of the information exchanged with their competitors.

 

IPPT20090507, ECJ, Rotterdam v Rijkeboer

Rules limiting the storage of information on the recipients of personal data and on the content of the data disclosed to a period of one year and correspondingly limiting access to that information, while basic data is stored for a much longer period, do not constitute a fair balance of the interest and obligation at issue.

 

IPPT20090507, ECJ, Waterford Wedgwood v Assembled Investments
Article 8(1)(b) – similarity between goods or services required: Since the Court of First Instance foundthat the goods in question were not similar, one of the condi-tions necessary in order to establish a likelihood of confusion was lacking

 

IPPT20090430, ECJ, BIOS v Saarland

A product which includes in its composition a substance which has a physiological effect when used in a particular dosage is not a medicinal product by function where it constitutes a risk to health without, however, being capable of restoring, correcting or modifying physiological functions in human beings.

 

IPPT20090429, CFI, Borco-Marken v OHIM
Letters as such – without graphical ornamentations– can have distinctive character.
Concrete examination of distinctive character required. Need of availability of signs does not preclude the need of examination of capability to identify as originating from a particular undertaking

 

IPPT20090423, ECJ, Copad v Dior

It is conceivable that the sale of luxury goods by the licensee to third parties that are not part of the selective distribution network might affect the quality itself of those goods, so that a contractual provision prohibiting such sale must be considered to be falling within the scope of Article 8(2) of the Directive. No exhaustion in the case of sale of goods bearing the trade mark in disregard of a clause in the licence agreement.

 

IPPT20090423, ECJ, AEPI v Commission

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.

 

IPPT20090423, ECJ, VTB-VAB v Total Belgium and Galatea v Sanoma

The Directive must be interpreted as precluding national legislation which, with certain exceptions, and without taking account of the specific circumstances, imposes a general prohibition of combined offers made by a vendor to a consumer. Full harmonisation by the Directive.

 

IPPT20090423, ECJ, Falco Privatstiftung and Rabitsch v Weller-Lindhorst

A license is not a contract for the provision of services: A contract under which the owner of an intellectual property right grants its contractual partner the right to use that right in return for remuneration is not a contract for the provision of services within the meaning of Article 5(1)(b) of Regulation 44/2001.

 

IPPT20090402, ECJ, Damgaard

Dissemination by a third party of information about a medicinal product, including its therapeutic or prophylactic properties, may be regarded as ad-vertising, even though the third party in question is acting on his own initiative and completely independently, of the manufacturer and the seller of such a medicinal product.

 

IPPT20090331, ECHR, Sanoma v The Netherlands

No Journalistic privilege: handover of journalistic materials proportionate given the nature and seriousness of the crimes: ramming wall with a shovel: the actions of the police and the public prosecutors were characterised by a regrettable lack of moderation. Even so the reasons advanced for the interference complained of were “relevant” and “sufficient” and “proportionate to the legitimate aims pursued”.

 

IPPT20090326, ECJ, Selex v Commission - Eurocontrol

The acquisition of prototypes and the related management of intellectual property rights does not make that activity an economic one, since the acquisition did not involve the offer of goods or services on a given market. Eurocontrol granted licences at no cost, which indicated that the management of intellectual property rights was not an economic activity.

 

IPPT20090325, CFI, Anheuser-Busch v OHIM - Budweiser

Opposition: Evidence of  genuine use earlier trademark: The Board of Appeal referred, in particular, to advertisements showing images of Budvar beer bearing the mark BUDWEISER, to invoices sent to customers in Germany and Austria and to the fact that those advertisements and invoices related to the relevant period. Stated reasons for obvious similarities beer and malted non-alcoholic beverages

 

IPPT20090312, ECJ, Antarctica v OHIM - Nasdaq
Use of a mark: seeking to create or maintain an out-let for services.Taking unfair advantage of earlier mark: Required that the relevant public establishes a link between the earlier and later mark; no confusion required.  Relevant public: average consumers of the goods or services for which the later mark is requested, who are reasonably well informed and reasonably observant and circumspect

 

IPPT20090310, ECHR, Times Newspapers v The United Kingdom

Internet Publication Rule: Requirement to publish qualification to an article contained in an Internet archive does not constitute a disproportionate interference with the freedom of expression.

 

IPPT20090305, ECJ, Apis v Lakorda

The fact that the physical and technical characteristics present in the contents of a database also appear in the contents of another database may also be interpreted as an indication of the existence of a transfer between the two databases and therefore, of an extraction.

 

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

 

IPPT20090219, ECJ, UDV v Brandtraders

Right of the proprietor of a registered mark to prevent the use by a third party of a sign which is identical to the mark. The fact that the third party at issue uses a sign which is identical with a registered mark in relation to goods which are not its own goods, in that it does not have title to them, is not relevant and can there-fore not mean by itself that that use does not fall under the concept of ‘use’ for the purpose of Article 9(1) of Regulation No 40/94.

 

IPPT20090120, ECJ, Sony v Falcon

Rights of phonogram producers: The holder of the rights, who is a national of a non-Member State, enjoys protection in a situation where the work or subject-matter at issue was, on 1 July 1995, protected as such in at least one Member State under that Member State’s national legislation.

 

IPPT20090115, ECJ, Hecht-Pharma v Bezirksregierung Luneburg

A product cannot be regarded as a medicinal product where it is incapable of appreciably restoring, correcting or modifying physiological functions. No medicinal product in case of doubt: The directive does not apply to a product in respect of which it has not been scientifically established that it is a medicinal product by function, without its being possible to exclude that possibility.

 

IPPT20090115, Siberquelle v Maselli-Strickmode - Wellness

Genuine use: Where the proprietor of a mark affixes that mark to items that it gives, free of charge, to purchasers of its goods, it does not make genuine use of that mark in respect of the class covering those items.

 

IPPT20090115, ECHR, Reklos and Davourlis v Greece

Violation of right to respect for private life by picture taken in hospital: The key issue in the present case is not the nature, harmless or otherwise, of the applicants' son's representation on the offending photographs, but the fact that the photographer kept them without the applicants' consent. The baby's image was thus retained in the hands of the photographer in an identifiable form with the possibility of subsequent use against the wishes of the person concerned and/or his parents.