2011

IPPT20111215, CJEU, Red Bull v Winters

Service provider filling under order packaging to which the sign is affixed does not itself make use of the sign: Having regard to the foregoing considerations, the answer to the first question is that Article 5(1)(b) of Directive 89/104 must be interpreted as meaning that a service provider who, under an order from and on the instructions of another person, fills packaging which was supplied to it by the other person who, in advance, affixed to it a sign which is identical with, or similar to, a sign protected as a trade mark does not itself make use of the sign that is liable to be prohibited under that provision. Customer liable for services attributable to it

 

IPPT20111208, CJEU, Merck v Patentamt

SPC can be granted if less than five years have elapsed between the first market authorization and the date of the basic patent application. Purpose of SPC of negative or zero duration: related to paediatric extension

 

IPPT20111102, UKSC, Human Genome Sciences v Eli Lilly

Sufficient disclosure to satisfy requirements of article 57 EPC regarding “a practical application” and “some profitable use”. Supremacy principles laid down by the Board’s jurisprudence. No different assessment of evidence if one concludes that the disclosure satisfies article 57 in line with Board’s jurisprudence. Sufficient disclosure to satisfy article 57 goes hand in hand with sufficiently enabling disclosure. General principles Board’s approach in relation to article 57 in relation to biological materials.

 

IPPT20111201, CJEU, Philips - Nokia

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.

 

IPPT20111201, CJEU, Painer v Standard

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.

 

IPPT20111125, CJEU, University of Queensland v Patent Office

SPC must relate to active ingredients identified in the claims of the basic patent. SPC possible for active ingredient specified in the wording of the claims of the basic patent, where the medicinal product also contains other active ingredients. SPC can be granted in case of a process patent only for product derived from the process

 

IPPT20111124, CJEU, Scarlet v SABAM

Precluded injunction made against an ISP to install peer-to-peer filtering system: requirement that a fair balance be struck between the right to intellectual property, on the one hand, and the freedom to conduct business, the right to protection of personal data and the freedom to receive or impart information, on the other. 

 

IPPT20111124, CJEU, European Commission v Spain

Failure to fulfill obligations under Television Broadcasting directive by allowing advertising which exceeds maximum limit of 20% of transmission time

 

IPPT20111124, CJEU, UCMR – ADA v Circus Globus

Communication to a public: a public which is not present: no direct physical contact.

 

IPPT20111124, CJEU, Georgetown University v Patent Office

SPC possible for an active ingredient, where the medicinal product for which the MA is submitted contains also other active ingredients.

 

IPPT20111124, CJEU, Medeva v Patent Office

No SPC possible for active ingredients which are not specified in the wording of the claims of the basic patent. SPC possible for a combination of two active ingredients, where the medicinal product contains also other active ingredients.

 

IPPT20111013, CJEU, Pierre Fabre Dermo Cosmetique

A contractual clause in the context of a selective distribution system that bans online sale of cosmetics and personal care products amounts to a restriction of competition within the meaning of provision 101(1) TFEU when it is apparent that, having regard to the properties of the products at issue, that clause is not objectively justified: it is for the referring court to examine whether the clause can be justified by a legitimate aim, the need to provide individual advice to the customers is not accepted as legitimate aim in the context of non-prescription medicines, the aim of maintaining a prestigious image is also not a legitimate aim for restricting competition. Article 4(c) of Regulation No 2790/1999 must be interpreted as meaning that the block exemption provided for in Article 2 of that regulation does not apply to the clause at cause: it cannot be regarded as a clause prohibiting members of the selective distribution system concerned from operating out of an unauthorised place of establishment within that article.

 

IPPT20110510,BGH, Okklusionsvorrichtung
Scope of protection. In case of inconsistencies between the claims and the description, those elements of the description, which are not set forth in the claim, are generally not included in the scope of protection. The description may only be taken into account insofar as it can be read as an illustration of the subject of the claim. If the specification discloses several ways a certain technical effect can be achieved, but only one of these options has been included in the claim, then generally the use of one of the other possibilities constitutes no infringement of the patent by equivalent means.

 

IPPT20110324, CJEU, Ferrero v OHIM

Article 8(5): Reputation and distinctive character relevant factors for making a link between marks not for similarity, not for assessment of similarity. Also for assessing similarity with a word mark, degree of visual and conceptual similarity needs to be determined.  Existence of family or series of trade marks irrelevant for assessment of similarity, but relevant for likelihood of confusion.

 

IPPT20111025, CJEU, eDate Advertising and MGN

Court of place in which publisher of online content is established or in which the centre of his interests is based has full jurisdiction in respect of all damages. Court of territory of which online content was accessible only has jurisdiction in respect of damage caused in that territory. Member States to ensure that provider of an elec-tronic commerce service is not subject to stricter requirements than in the state in which it is established

 

IPPT20111020, CJEU, Greenstar v Kanzi

No exhaustion of plant variety rights in case of breach of license conditions or restrictions which relate directly to the essential features of the plant variety right concerned. Awareness or deemed to be aware of the conditions of the license of no significance restrictions

 

IPPT20111020, CJEU, Freixenet v OHIM

Incorrect automatic exclusion of marks consisting of the appearance of the packaging of the product itself that do not contain an inscription or a word element

 

IPPT20111020, CJEU, PepsiCo & Grupo v OHIM

Informed user: from a five year old to a marketing Director. When possible a direct comparison, but can be impracticable and may be indirect. Overall impression: account can be taken of goods as actually marketed

 

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

 

IPPT20111018, CJEU, Brüstle v Greenpeace

Human embryo within the meaning of Article 6 (2) (c) biotechnology directive. Article 6 (2) (c) biotechnology patent directive excludes from patentability use of human embryos for scientific research. Article 6 (2) (c) Biotechnology Directive: no patentability if technical teaching requires (i) prior destruction of human embryos, or (ii) their use as base material.

 

IPPT20111013, CJEU, Airfield & Canal Digitaal v Sabam

Indirect and direct transmission of TV programs: a single, indivisible communication to the public, which may require authorisation. Authorisation for satellite package provider required – new public

 

IPPT20111004, CJEU, Premier League

CONDITIONAL ACCES DIRECTIVE: “illicit device” does not cover foreign decoding devices which have been falsely obtained. Prevention of use of falsely obtained foreign decoding devices permitted under directive. Ban on import or use of foreign decoding devices not permitted also in case of falsely obtained devices for commercial purposes. Acts of reproduction within the memory of a satel-lite decoder and television screen permitted. Communication to the public: transmission to cus-tomers present in a public house. Obligation not to supply decoding devices outside licensed territory not permitted. National intellectual property protection of sporting events permitted. 

 

IPPT20110922, CJEU, Interflora v Marks & Spencer

Essential function of indicating origin and other functions. Use of trade mark in keyword advertising may adversely affect the indication of origin function and investment function but not the advertising function. Protection of trade mark with a reputation against key word advertising in case of freeriding or tarnishment: advertising based on keyword.

 

IPPT20110922, CJEU, Budvar v Anheuser-Busch

Acquiescence: required that proprietor was in a position to oppose use; registration or earlier mark not required, but registration in good faith of later mark and knowledge thereof are requirements. Cancellation of later trade mark not possible in case of long period of honest concurrent use in circumstances that does not have adverse effect on the guarantee of the origin of the goods.

 

IPPT20110913, CJEU, Wilfer v HABM

Case-law on three-dimensional marks consisting of the appearance of the goods themselves is applicable on a figurative mark representing the headstock of a guitar: the Court has found that it may be more difficult to prove the distinctive character of a three-dimensional mark consisting of the appearance of the goods themselves so only the marks that deviate significantly from the industry standard have distinctive character, this case-law is applicable even where a trade mark constitutes only a part of the goods referred to. 

 

IPPT20110728, CJEU, Generics v Synaptech

Supplementary Protection Certificate (‘SPC’) only available for medicinal products with a market authorisation under Directive 65/65 having undergone safety and efficacy tests

 

IPPT20110728, CJEU, Synthon v Merz

Supplementary Protection Certificate (‘SPC’) only available for medicinal products with a market authorisation under Directive 65/65 having undergone safety and efficacy tests

 

IPPT20110728, CJEU, Orifarm v Merck

Trademark Law - free movement of goods: Indication of market authorisation holder responsible for repacking in stead of actual repackager allowed

 

IPPT20110714, CJEU, Viking Gas v Kosan Gas

Refilling gas bottles generally not an infringement of trademark rights: that the holder of an exclusive licence for the use of composite gas bottles intended for re-use, the shape of which is protected as a three-dimensional mark and to which the holder has affixed its own name and logo that are registered as word and figu-rative marks, may not prevent those bottles, after consumers have purchased them and consumed the gas initially contained in them, from being ex-changed by a third party, on payment, for compos-ite bottles filled with gas which does not come from the holder of that licence, unless that holder is able to rely on a proper reason for the purposes of Arti-cle 7(2) of Directive 89/104. 

 

IPPT20110714, CJEU, BNIC

Invalidation of trade mark with protected geographical indication [cognac] in case of commercial use in respect of comparable products, exploiting the reputation or misuse.Retroactive effect Regulation on geographical indications for spirit drinks regarding trade mark registrations

 

IPPT20110712, CJEU, L’Oréal v Ebay

No use of trademark by operator of an online marketplace. Nu use "in the course of trade" when an individual sells a productthrough an online marketplace and the transaction does not take place in the context of a commercial activity. Territorial scope: Infringement if offer for sale or promotion of non-EU goods is for consumers within the Union. Sample products: not put on the market. Removal of packaging: infringement if essential information is missing or the reputation of the trade mark is damaged. Infringing use of a trademark in keyword advertisin: when the advertising is unclear or whether the goods concerned originate from the proprietor of the trade mark or from an undertaking economically linked to that proprietor or, on the contrary, originate from a third party. No liability of operator of online marketplace when there is no active role and a "notice and take-down" policy. Court order against operator of an online marketplace regarding future infringements possible.

 

IPPT20110705, CJEU, Edwin v OHIM

Invalid trade mark Elio Fiorucci because of an earlier “right to a name”, broad interpretation: As regards the wording of that provision, it should be noted that the words ‘right to a name’ do not provide any support for the restrictive interpre-tation proposed by the appellant, to the effect that the provision concerns only that right as an attrib-ute of personality and does not cover commercial exploitation of a name.

 

IPPT20110630, CJEU, VEWA v Belgium

Remuneration for public lending has to take account of the extent of public lending.

 

IPPT20110630, CJEU, Wamo v JBC

Applicability of Unfair Commercial Practices Directive limited to consumer protection. General prohibition of announcements of price reductions during period preceding sales precluded.

 

IPPT20110616, CJEU, Union Investment Privatfonds v UniCredito

Admissibility; likelihood of confusion is an ssue of fact, but failure to take all factors relevant to the case into account constitutes an error of law. Uni serial mark; Judgment of General Court on lack of association between the trade marks applied for with the earlier series of UNI-marks and likelihood of confusion insufficiently examined and substantiated

 

IPPT20110616, CJEU, Thuiskopie v Opus

Fair compensation for reproduction on a private basis: Final user is responsible for paying fair compensation for reproduction on a private basis. System of private copying levy open to Member States when able to pass on that levy in price paid by final user. With system of private copying levies it is for the Member State to ensure authors actually receive fair compensation. Interpretation of national law to allow recovery from person acting on a commercial basis, if recovery from purchaser is impossible, permitted.

 

IPPT20110609, CJEU, Alter Channel

Surreptitious advertising: intended by broadcaster to serve advertising: that the provision of payment or of consideration of another kind is not a necessary condition for establishing the element of intent in surreptitious advertising

 

IPPT20110606, USSC, Stanford v Roche

Title to patent: The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.

 

IPPT20110512, CJEU, Konsumentombudsman v Ving

Reference only to entry-level price not in itself a misleading omission: Reference to website for product characteristics may be allowed

 

IPPT20110510, ECHR, Mosly v UK

No legally binding pre-notification requirement - respect for private life under article 8 ECHR: The limited scope under Article 10 for restric-tions on the freedom of the press to publish material which contributes to debate on matters of general public interest must be borne in mind. Thus, having regard to the chilling effect to which a pre-notification requirement risks giving rise, to the sig-nificant doubts as to the effectiveness of any pre-notification requirement and to the wide margin of appreciation in this area, the Court is of the view that Article 8 does not require a legally binding pre-notification requirement. Accordingly, the Court concludes that there has been no violation of Article 8 of the Convention by the absence of such a re-quirement in domestic law.

 

IPPT20110505, CJEU, Novo Nordisk v Ravimiamet

Advertising for medicinal products for doctors and pharmacists also extends to quotations taken from medical journals or other scientific works. Prohibited: claims which conflict with the summary of product characteristics; but supplemental information may be permitted.

 

IPPT20110505, CJEU, MSD v Merckle

Advertising for medicinal products: Not prohibited: faithful reproduction of packaging and leaflet information. Prohibited: selected or rewritten information since such manipulation of information can be explained only by an advertising purpose

 

IPPT20110412, CJEU, DHL Express v France Chronopost

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.

 

IPPT20110329, CJEU, Anheuser-Busch v Budějovický Budvar

Opposition on ground of a sign used in the course of trade of more than mere local significance. General Court erred in holding (i) that the significance of the sign concerned, which cannot be merely local, must be evaluated exclusively by reference to the extent of the territory in which the sign is protected, without taking account of its use in that territory, (ii) that the relevant territory for the purpose of evaluating the use of that sign is not necessarily the territory in which the sign is protected and, (iii) that the use of the sign does not necessarily have to occur before the date of the application for  registration of the Community trade mark.

 

IPPT20110310, CJEU, Wydawnicza Technopol v OHIM

Numerals particularly suitable to describe a characteristic e.g. content. Given that such signs are generally equated with numbers, one of the things that they can do, in trade, is to designate a quantity. Need to keep free: Actual use as usual means of designation not required. Rules governing the exercise of powers by BHIM: the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.

 

IPPT20110308, CJEU, Opinion on unified patent litigation system

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

 

IPPT20110127, CJEU, Flos v Semeraro

Copyright protection not affected by expiration of national design right. Legislation reviving copyright protection – no safe harbour for previous public domain designs irrespective of date of manufacture or marketingof products.