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IPPT20151210, CJEU, El Corte Inglés v OHIM

Trademark Law: Concept “similarity” has the same meaning when used for relative grounds for refusal in article 8(1)(b) (similarity with earlier trade mark for similar goods and services) and article 8(5) CTMR (similarity with earlier trade mark). Article 8(5) CTMR requires a lower similarity than article 8(1) under b CTMR because only a possible link between marks and no confusion is required. The General Court EU was right in saying that only a small conceptual similarity was required for likelihood of confusion as set out in 8(1)(b) CTMR. Because of the small conceptual similarity should have examined whether the public is establishing a link with the renown or reputation of the earlier mark for the purpose of 8(5) CMTR.


IPPT20151119, CJEU, SBS v Belgium

Copyright Law: No act of communication to the public at ‘point to point’ transmission of programme-carrying signals to distributors


IPPT20151112, CJEU, Hewlett Packard v Reprobel

Copyright Law: Restrictions for (i) reproduction on paper or any kind of photographic or (ii) copies for private use. Because of differences in the compensation for damages, the term ‘reasonable compensation’ requires a distinction between (i) reproduction by any random user and (ii) private copies without commercial ends on any medium by a natural person. Member state is not authorized to allocate a part of the fair compensation payable to rightholders to the publishers of works created by authors, those publishers being under no obligation to ensure that the authorise benefit, even indirectly, from some of the compensation of which they have been deprived.Fair compensation can not be recovered via an undifferentiated system which also covers (i) the copying of sheet music and (ii) which also covers counterfeit reproductions made from unlawful sources.System that combines, in order to finance the fair compensation payable to rightholders, two forms of numeration namely (i) lump-sum remuneration paid prior to the reproduction operation by the manyfacturer, and (ii) proportional remuneration paid after that reproduction operation and determined solely by mean of a unit price multiplied by the number of copies produced.  


IPPT20151029, CJEU, Freistaat Bayern v Verlag Esterbauer

Database Law: Geographical information utilised from topographic maps has sufficient autonomous value to be constituted as ‘independent materials’ from a ‘database’.


IPPT20151022, CJEU, BGW v Scholz

In the Securvita case, there is no general rule for assessing the ancillary nature of a sequence of letters which reproduces the first letter of each of the words in the word combination with which it is juxtaposed. The relevant public’s perception varies according to whether what is being assessed is the descriptiveness of a sign or the existence of a likelihood of confusion. In the case of identical or similar goods and services, there may be a likelihood of confusion on the part of the relevant public between an earlier mark of average distinctiveness, and a later mark which reproduces that letter sequence and which is added a descriptive combination of words, with the result that that sequence is perceived by that public as the acronym of that combination of words.


IPPT20151021, CJEU, New Media Online

Videos of short duration under the subdomain of a website of a newspaper can be covered by the concept of program as laid down in the Audiovisual Media Services Directive. Principal purpose of a service making videos available offered in the electronic version of a newspaper depends upon whether that service as such has content and form which is independent of that of the journalistic activity of the operator of the website at issue, and is not merely an indissociable complement to that activity.


IPPT20151006, CJEU, Ford v Wheeltrims

A manufacturer of replacement parts and accessories for motor vehicles that affixes a sign identical to a trade mark registered for to its products without permission can not invoke the repair clause pursuant to article 14 Designs Directive and article 110 Community Designs Regulation: mentioned articles do not contain any derogation from the provisions of the Trade Marks Directive and the EU Trade Mark Regulation, the objective of protecting the system of undistorted competition was already taken into account in drafting the directive and regulation, national courts may not limit the exclusive right conferred by a trade mark in a manner which exceeds the limitations arising from the directive itself.


IPPT20151006, CJEU, Schrems v Data Protection Commissioner

Existence of a decision adopted by the Commission that a third country ensures an adequate level of protection does not prevent a supervisory authority of a Member State from examination. Decision of Commission that the USA ensures an adequate level of protection of transferred personal data (Safe Harbour) is invalid.


IPPT20151006, CJEU, Seattle Genetics v Patentamt

The ‘date of the first authorisation to place the product on the market in the European Union’ of Article 13(1) SPC Regulation is determined by EU law. The ‘date of the first authorisation to place the product on the market in the European Union’ is the date on which notification of the decisions granting marketing authorisation was given to the addressee of the decision.


IPPT20150916, CJEU, Nestlé v Cadbury

For the annulment of a shape it has to be covered by one or more grounds of refusal. Exclusion of a for a technical result necessary shape of goods, must be interpreted as referring only to the manner in which the goods are manufactured. Integration: applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for as originating from a particular company.


IPPT20150903, CJEU, Iron Smith v Unilever

Mark with reputation of earlier Community mark: must have reputation in substantial part of the EU, may coincide with territory of single Member State. Criteria concerning genuine use are not relevant in order to establish the existence of a ‘reputation’. Proprietor of the earlier Community trade mark who already acquired a reputation in a substantial part of the territory of the European Union, but not with the relevant public in the Member State in which registration of the later national mark concerned by the opposition has been applied for, can oppose against a later national mark  (1) when commercially significant part of public is familiar with the older mark and makes a connection with the later mark and there is an actual and present injury (2) or a serious risk that such injury may occur in the future.


IPPT20150716, CJEU, Diageo Brands v Simiramida

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.


IPPT20150716, CJEU, Coty Germany v Stadtsparkasse

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


IPPT20150716, CJEU, Huawei v ZTE

FRAND-patent holder does not abuse a dominant position to pursue infringement proceedings if he alerted the alleged infringer of the infringement, presented a specific, written offer for a licence on FRAND terms and the infringers continues to use the patent in question. Not prohibited for holder patent on FRAND terms in a dominant position to bring an action against the alleged infringer and seek the rendering of accounts or an award of damages in respect of those acts of use.


IPPT20150716, CJEU, Mevi v Bacardi

Economic operator who is importing without the consent of the proprietor and placing those goods under duty suspension arrangement must be classified as ‘using in the course of trade any sign which is identical with the trade markt in relation to goods..’ The proprietor of a trade mark may oppose, according to Article 5 of Directive 89/104, a third party placing goods bearing that trade mark under the duty suspension arrangement after they have been introduced into the EEA and released for free circulation without the consent of that proprietor.


IPPT20150709, CJEU, Pera-Grave v BHIM
Inconsistency in the arguments of the appellant: the General Court cannot be criticized for not having applied the case-law arising out of the judgment in T.I.M.E. ART v OHIM, because of the inconsistency in the appellant’s arguments


IPPT20150625, CJEU, STV v Vogel
Plant variety: in order to be able to benefit from the derogation from the obligation to obtain the authorization of the holder of the plant variety right, the right holder is required to pay the equitable remuneration, no later than 30 June following the date of reseeding


IPPT20150625, CJEU, Loutfi v AMJ Meatproducts
Likelihood of confusion: in the assessment of the likelihood of confusion between marks with Arabic words, the definition and pronunciation should be considered if the relevant public has knowledge of written Arabic.  


IPPT20150616, CJEU, Delfi v Estonia

Delfi’s liability for hateful comments posted by third parties no breach of Article 10 ECHR

IPPT20150604, CJEU, Teekanne

Unfair commercial practices: It has to be assumed that consumers read the list of ingredients of the product before purchase.The presence of a list of ingredients does not in itself exclude the possibility that the labelling is misleading. Directive 2000/13 precludes misleading labelling, even though the actual contents are apparent from the list of ingredients.


IPPT20150603, CJEU, The Sunrider Corporation v OHIM
OHIM adjudicating bodies are not obliged to establish in their decisions the accuracy of facts which are well known. Whether the facts on which the Board of Appeal of OHIM has based its decision are well known or not is a factual assessment which, save where the facts or evidence are distorted, is not subject to review by the Court of Justice on appeal. An applicant for a trade mark against whom OHIM relies on such well-known facts may challenge their accuracy before the General Court.


IPPT20150521, CJEU, Schräder v CPVO

The General Court wrongly held that the principle of examination of the facts by the CPVO of its own motion also applies in proceedings before the Board of Appeal. No lead to the setting aside of the judgment: The General Court, non the less checked of the judgment under appeal whether the evidence meets the criteria pertaining to the principle of the examination of the facts of its own motion. Appellant had not adduced, to the requisite legal standard, the facts and evidence which had not been fulfilled in technical examination of the variety LEMON SYMPHONY. Consideration of the General Court that the appellant has produced no evidence of inadequacy of technical research for granting LEMON Symphony is factual and not testable. The General Court rightly rejected measure of inquiry: the appellant did not advance any evidence whatsoever.


IPPT20150513, CJEU, Dimensione v Knoll

A holder of an exclusive right to distribute is allowed to prohibit offers for sale or  targeted advertisement, even if it is not established that the advertisement gave rise to the purchase of that protected work by an EU buyer, in so far as that advertisement invited EU consumers to purchase it. It is irrelevant for an infringement of the distribution right, that such advertising is not followed by the transfer of ownership of work.


IPPT20150507, CJEU, Voss of Norway v OHIM

EGC itself examined whether there was any concrete evidence and did not impose the burden of proving the existence of such evidence on the appellant. EGC has not failed to describe the norms and customs of the alcoholic and non-alcoholic beverages sector. The General Court rightly considered whether the contested mark departs significantly from the norm of customs of the sector. Wrongly stated that EGC when assessing distinctiveness did not examine overall impression.  EGC did not confine its analysis of the three-dimensional sign at issue to a comparison of the shape of that sign with a two-dimensional feature. That the EGC would have considered that trade mark that is made up only of components which are not devoid of distinctive character in relation to the goods concerned generally leads to the conclusion that that trade mark, taken as a whole, is devoid of distinctive character.


IPPT20150505, CJEU, Spain v Council

The Regulation Unitary Patent Translation Arrangements has a legitimate aim: the translations arrangements make the access to the unitary patent and patent system as a whole easier, it is cheaper and ensures legal certainty. Since it is not required to translate a patent in an official language of a State, the current framework is suitable for this purpose. Regulation is proportional: cost-effective and preserves the necessary balance between the interests of patent applicants and other market participants. No violation of judgment Meroni/High Authority: The Council did not delegate powers to Member States or the EPO. Article 118 TFEU correct foundation for article 4 Regulation Unitary Patent Translation Arrangements. No violation of the principle of legal certainty.


IPPT20150505, CJEU, Spain v Parliament and Council

Patent Law - Unitary Patent Law: Administrative procedure preceding unitary patent protection is compatible with EU law: only establishes unitary effect on patents granted under the EPC. Regulation can be based on article 118(1) TFEU which is apt to prevent divergences in terms of patent protection

IPPT20150416, CJEU, Nemzeti v UPC

Communication, by a professional to only one single consumer, of erroneous information is a ‘misleading commercial practice’. If there is a misleading practice it is not necessary to determine whether such a practice is also contrary to the requirements of professional diligence.


IPPT20150326, CJEU, C More Entertainment v Sandberg
Broadcasting organizations: the exclusive rights of broadcasting organizations as referred to in Article 3(2)(d) of the Copyright Directive can be expanded to live sports events on the internet, if it does not affect the protection of copyright.


IPPT20150325, EBA-EPO, Broccoli II – Tomato II

Allowable product claim directed to plants or plant material such as plant parts or fruits.
Fact that only an essentially biological process or a product-by-process claim is available for the claimed subject matter (other than plant varieties) does not make the claims unallowable. Product-by-process claim protects the product, not the process and is only allowable if (a) it is impossible to define the claimed product other than in terms of a process of manufacture and (b) the claimed product itself meets the patentability requirements. Rules for interpretation of EPC: it is established in the jurisprudence that the principles of interpretation provided for in Articles 31 and 32 Vienna Convention are to be applied when interpreting the EPC. Decisions and opinions given by national courts in interpreting the law may also be taken into consideration. No general notion of an obligatory restrictive construction of exceptions to patentability.


IPPT20150324, EBA-EPO, Freedom Innovations v Otto Bock HealthCare

When considering if an amended patent meets the requirements of article 101(3) EPC, the patent claims may be examined for compliance with of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.


IPPT20150319, CJEU, Mega Brands v OHIM
Purely descriptiveness: purely descriptive element does not preclude from being acknowledged as dominant for the purposes of assessing the similarity of the signs at issue.


IPPT20150312, CJEU, Actavis v Boehringer
Basic patent: if a basic patent includes a claim to a product comprising an active ingredient which constitutes the sole subject-matter of the invention,  that provision precludes the holder from obtaining a second supplementary protection certificate for that combination. 


IPPT20150305, CJEU, Copydan v Nokia

Article 5(2)(b) Copyright Directive does not preclude legislation for fair compensation in respect of multifunctional media such as mobile telephone memory cards, irrespective of whether the main function of such media is to make such copies, provided that one of the functions of the media enables the operator to use them for that purpose. Legislation for fair compensation in respect of the supply of media that may be used for copying for private use (such as mobile telephone memory cards), but not for components whose main purpose is to store copies for private use (such as the internal memories of MP3 players) is allowed, provided that those different categories are not comparable or the different treatment they receive is justified. Producers and importers who sell mobile telephone memory cards can be required to pay the fair compensation, if they do not know whether the final purchasers of the cards will be individuals or business customers. Member States permitted to provide in certain cases for an exemption from payment of fair compensation, provided the prejudice caused to rightholders is minimal. Where a Member State has excluded any right for rightholders to authorise reproduction of their works for private use, authorisation by the rightholder cannot give rise to an obligation to pay fair compensation. Use technological measures has no effect on the fair compensation payable in respect of private reproductions made  by means of such devices. No fair compensation in respect of reproductions made using unlawful sources. Fair compensation allowed in respect of reproductions of protected works made by a natural person by or with the aid of a device which belongs to a third party.


IPPT20150212, CJEU, Merck v SIGMA
Notice of oppossition: the holder of a patent or SPC is not required to give notification of his intention to oppose a proposed importation before invoking his rights under the first paragraph of the mechanism from the 2003 Act of Accession to the European Union. 

IPPT20150122, CJEU, Hejduk v EnergieAgentur

Judge Member State wherein allegedly infringing website can be consulted, competent as judge of place where damage occurred. Seised court has jurisdiction only in regard of damage caused in own Member State.

IPPT20150115, CJEU, Forsgren v Patentamt
SPC in principle possible where the active ingredient is covalently bound to other active ingredients which are part of a medicinal product.No SPC possible for an active ingredient whose effect does not fall within the therapeutic indications covered by the wording of the marketing authorisation.Carrier protein conjugated with a polysaccharide antigen by means of a covalent binding may be categorised as an ‘active ingredient’ only if it is established that it produces a pharmacological, immunological or metabolic action of its own which is covered by the therapeutic indications of the marketing authorisation.


IPPT20150115, CJEU, Ryanair v PR Aviation
Database directive: does not preclude the author of the database from laying down contractual limitations on its use by third parties