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A commercial practice is misleading where that practice contains false information, or is likely to deceive the average consumer, and is likely to cause the consumer to take a transactional decision that he would not take otherwise
Re-utilisation of whole or substantial part of database by dedicated meta engine: when the end user is given the opportunity to use a form that indirectly uses data from a database protected under article 7.
IPPT20131212, CJEU, Rivella v BHIM
Term ‘earlier national trade mark: refers to all marks that have effect in a Member State, irrespective of the national or international registration.
IPPT20131212, CJEU, Georgetown University v NL Octrooicentrum
SPC's: A patent which protects several different products can obtain several SPC’s
SPC: SPC possible on condition that active ingredient is covered by a functional formula that is identified in the claims of the patent.
SPC: no new SPC possible in case the holder of a patent each time he places a medicinal product on the market containing a (1) principle active ingredient, protected by the basic patent and (2) another active ingredient which is not protected by the patent.
IPPT20131114, CJEU, GSK v Patent Office
Adjuvant does not fall within the definition of ‘active ingredient’ within the meaning of the provision, and adjuvant which has no therapeutic effect on its own does not fall within the definition of ‘combination of active ingredients’
IPPT20131114, CJEU, Environmental Manufacturing v OHIM
Risk of dilution reputed trade mark requires evidence of a change in economic behaviour: proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered.
Change in economic behavior is an objective condition: the change cannot be deduced solely from subjective elements such as consumers’ perceptions.
Risk of dilution: required serious risk of detriment to distinctive character based on logical deductions, which must not be the result of mere suppositions, but must be founded on ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’.
IPPT20131017, CJEU, Isdin v OHIM
General reasoning ground: general reasoning ground for refusal mark insufficient in respect of non-homogeneous groups of goods or services within the same class.
SPC: Article 3(1)(b) of Regulation No 1610/96 must be interpreted as precluding the issue of a supplementary protection certificate for a plant protection product in respect of which an emergency MA has been issued under Article 8(4) of Directive 91/414.
IPPT20131017, CJEU, RLvS v Stuttgarter Wochenblatt
Advertisements: unfair Commercial Practices Directive does not preclude the application of a national provision under which those publishers are required to use the term ‘advertisement’ for advertisements, unless it is evident from arrangement and layout of the publication that it is an advertisement.
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.
IPPT20131003, CJEU, Pinckney v Mediatech
Jurisdiction: court of the location where the damage as a result of copyright infringement has taken place only has jurisdiction to determine the damage caused in the state which it is situated.
IPPT20131003, CJEU, BKK v Wettbewerbszentrale
Terms of provision: terms of a provision of EU law which makes no express reference to the law of the Member States must be given an autonomous and uniform interpretation throughout the European Union, taking into account the context of the provision and the purpose of the legislation in question.
Trader: public body entrusted with a task of general interest, such as management of compulsory health insurance is a “trader” within the meaning of the Unfair Commercial Practices Directive.
Procedural Law: The Court cannot judge over evidences not examined by the Board of Appeal.
IPPT20130919, CJEU, Martin Y Paz v Fabriek Maroquinerie Gauquie
- the national court may not limit exclusive right in a manner which exceeds limitations arising from Articles 5 to 7.
- upon lapse of trade mark proprietor’s consent to shared use with a third party, proprietor should be able to assert the exclusive right conferred upon it by those marks against that third party and exercise that exclusive right in respect of the goods
Harmonization: complete harmonization of trade mark rules in Articles 5 to 7 of Trademarks Directive
Unfair commercial practices: if a practice can be categorized as a misleading practice, it is not necessary to determine whether this practice is also contrary to the requirements of professional diligence.
IPPT20130718, CJEU, Specsavers v Asda
Genuine use of registered trade mark: used only in conjunction with a word mark which is superimposed over it is possible, to the extent that the differences between used and registered do not change the distinctive character.
Association of the public: fact that significant portion of public associates a color with third party is relevant for the global assessment of (i) likelihood of confusion, (ii) unfair advantage or (iii) allegedly infringing sign.
IPPT20130718, CJEU, Sky Italia v AGCOM
Advertising limits: shorter hourly television advertising limits for pay-TV broadcasters permitted with due consideration of principle of proportionality.
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.
IPPT20130718, CJEU, Green Swan
Health can also be disease risk claim without claim that risk factor is ‘significantly’ reduced: a health claim need not necessarily expressly state that the consumption of a category of food, a food or one of its constituents ‘significantly’ reduces a risk factor in the development of a human disease.
Commercial communication may constitute a trade mark or brand name provided that it complies with requirements in applicable legislation: It is for the national court to ascertain, having regard to all the legal and factual considerations of the case before it, whether that communication is indeed a trade mark or brand name thus protected.
IPPT20130718, CJEU, Daiichi Sankyo and Sanofi Aventis v DEMO
Article 27 of the TRIPs Agreement falls within the field of the common commercial policy
Article 27 of the TRIPs Agreement concerns patentability, not the protection conferred
Pharmaceutical process patent does not, by reason of rules set out in Articles 27 and 70 TRIPs, have to be regarded from the entry into force of the agreement as covering the invention of pharmaceutical product
IPPT20130718, CJEU, Citroën v FvF
General prohibition of combined offers involving financial services to consumers permitted under directive and freedom to provide services
IPPT20130711, CJEU, BEST v Visys
Use of domain name and metatags can be covered by the term “advertising,” the registration of a domain name cannot.
IPPT20130711, CJEU, Amazon v Austro-Mechana
System of indiscriminate application of private copying levy on placement on the market for commercial purposes under a pecuniary claim by all natural persons, with reimbursement permitted in case use of media does not meet levy criteria, where justified as a result of practical difficulties and the right to reimbursement is effective
Rebuttable presumption of private use by natural persons is permitted under those circumstances
System whereby half of funds received shall be paid to social and cultural institutions set up for the benefit of those entitled, is permitted
IPPT20130627, CJEU, VG Wort
Copyright Directive not applicable to acts of using protected works between the date of entry into force 22 June 2001 and transposition date 22 december 2002
IPPT20130627, CJEU, Malaysia v Dairy
“Bad faith” is an autonomous concept of European law which must be given uniform interpretation. Irrelevant that the concept is optional.
No room for specific, deviating domestic systems of protection based on knowledge of foreign mark.
Knowledge of third party’s foreign use of mark which is liable to be confused insufficient to determine bad faith.
IPPT20130613, USSC, AMP v Myriad
cDNA is patent eligible, separated DNA is not. Separating a gene from its surrounding genetic material is not an act of invention; no creation or alteration of genetic information encoded in genes. Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a non-naturally occurring molecule. cDNA is patent eligible as a molecule that is not naturally occurring: the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. Not implicated by this decision: Method claims, new applications of knowledge about genes and the patentability of DNA in which the order of the naturally occurring nucleotides has been altered.
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
IPPT20130418, CJEU, Colloseum v Levi Strauss
Genuine use of a registered trademark constituting one of the elements of a composite mark is possible
IPPT20130416, CJEU, Spain v Council
Council Decision 2011/167/EU of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection legally founded
IPPT20130411, CJEU, Novartis v Apozyt
No “new placement on the market” as a result of carrying out the preparation of ready-to-use syringes based on individual prescriptions
IPPT20130307, CJEU, ITV v TVCatchup
Communication to the public through direct retransmission of internet stream of television broadcast by another organisation:
- Funding by advertising and profit-making nature of retransmission not influential
- Unimportant whether organisations compete
The mere fact that there are multiple trade mark registrations within the EU including the word ‘seven’ or number ‘7’ is not sufficient to establish the weak distinctive character of those marks.
IPPT20130221, CJEU, FCI v FCIPPR
Opposition against a later registered Community trademark possible without the need for a declaration of invalidity beforehand
IPPT20130124, CJEU, Stanleybet v Ypourgos
The freedom to provide services and the freedom of establishment preclude national legislation on games of chance: examination by national authorities
IPPT20130122, CJEU, Sky Osterreich v ORF
Article 16 (freedom to conduct a business) and article 17 (acquired legal position) of Charter do not preclude limited compensation for short news reports of major events under article 15(6) of Audivisual Media Services Directive: priority is given to the public access to information over contractual freedom.