2016

IPPT20161221, CJEU, Tele2 Sverige and Tom Watson

National legislation providing for general and indiscriminate retention of all traffic and location data of subscribers and registered users relating to all means of electronic communication in breach with Directive on privacy and electronic communications. National legislation that gives competent national authorities access to retained data without providing that access is only granted to fight serious crime, not subject to prior review by a court or independent administrative authority and where there is no requirement that the data concerned should be retained within the European Union is in breach with Directive on privacy and electronic communications

 

IPPT20161221, CJEU, Länsförsäkringar v Matek

Based on Article 9(1)(b) of Regulation No 207/2009, read in conjunction with Articles 15(1) and 51(1)(a) of that regulation, a proprietor may, in case of likelihood of confusion, prevent third parties from using a sign identical or similar to his mark for identical or similar goods and services within five years following registration of his EU trade mark

 

IPPT20161116, CJEU, Soulier and Doke

French legilsation which authorizes an approved collecting society to reproduce and commercially exploit out-of-print books and gives authors the right to oppose only under certain circumstances is in breach of Directive 2001/29.

 

IPPT20161110, CJEU, Ferring v Orifarm

Trade mark proprietor cannot oppose the trade of a repackaged medicine when a) the medicine cannot be marketed in the importing State in the same outer packaging as in the exporting State and b) when the importer has demonstrated that the imported product can only be marketed in a limited part of the importing State’s market.

 

IPPT20161027, CJEU, Debonair v EUIPO

The General Court infringed its obligation to state reasons by presenting contradicting statements on the laudatory character of the word ‘so’ in its reasoning

 

IPPT20161026, CJEU, Westermann v EUIPO

The General Court did not err in law by not taking in consideration the revocation of the old trademark in the decision on likelihood of confusion.

 

IPPT20161026, CJEU, Canal Digital

Consideration should be given to the context in which the practice takes place when assessing whether a commercial practice must be considered as a misleading omission. Dividing the price of a product into several components and highlighting one of them must be regarded as misleading. Dividing the price of a product into several components and highlighting one of them must be regarded as misleading. Article 7(4) of Directive 2005/29 contains an exhaustive list of the material information that must be included in an invitation to purchase.

 

IPPT20161013, CJEU, Servoprax v Roche Diagnostics

Parallel importer of a self-diagnosis device is not obliged to carry out a new assessment in the importing Member State to certify the conformity of the labelling and the translation of the instructions for its use, when that device has already been subject to a conformity assessment by a notified body and it bears a CE marking

 

IPPT20161012, CJEU, Ranks and Vasiļevičs

First acquirer of a computer program may not provide his back-up copy of that program when the original is damaged, destoryed or lost without authorisation of the rightholder.

 

IPPT20161005, CJEU, F. Hoffman-La Roche v Accord Healthcare

The Court does not have jurisdiction to rule on the validity of Article 21(2) of SPC Regulation for Medicinal Products. Article 21(2) of SPC Regulation for Medicinal Products applies to a supplementary protection certificate granted by a Member State prior to its accession to the European Union. If a market authorisation is granted in the EEA before it is granted in a Member State and before its accession to the EU, only the first marketing authorisation must be taken into account for the purposes of determining the duration of validity of the supplementary protection certificate.

 

IPPT20160922, CJEU, Pensa Pharma v EUIPO

Although the General Court has erred in law regarding the admissibility of arguments put forward by Pensa Pharma, this has no impact on the operative part of the judgment under appeal

 

IPPT20160922, CJEU, Microsoft Mobile Sales v SIAE

Article 5(2)(b) of Directive 2001/29/EC precludes national legislation that depends on agreements between, on the one hand, an entity which has a legal monopoly on the representation of the interests of authors of works and, on the other hand, those liable to pay compensation or their trade associations where only the final user can request an unduly paid levy.

 

IPPT20160922, CJEU, Breitsamer und Ulrich v Landeshauptstadt München

Every individual portion of honey closed by an aluminium seal supplied to mass caterers, constitutes a ‘pre-packaged foodstuff’ where the mass caterers sell those portions separately or as part of pre-prepared meals for an all-inclusive price

 

IPPT20160922, CJEU, combit Software v Commit Business
Where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part whilst not in another part, that court must conclude to an infringement of the exclusive right for the entire area of the Union with the exception of the part where there has been found no likelihood of confusion

 

IPPT20160920, ECHR, Van Beukering & Parool v The Netherlands

The publication of R.P.’s portrait was necessary in a democratic society. However, the ECHR considers that it was not unreasonable for the Court of Appeal to consider that reticence is appropriate when publishing a portrait of someone who is suspected of a serious crime.

 

IPPT20160915, CJEU, Mc Fadden v Sony

A member state may require that a provider of access to a communication network prevents that third parties make copyright-protected work available to the general public

 

IPPT20160908, CJEU, GeenStijl v Sanoma

Posting hyperlinks to protected works on a website constitutes a communication to the public when those links are provided with the pursuit of financial gain by a person who knew of could reasonably have known the illegal nature of the publication of those works on that other website.  Having regard to the foregoing considerations, the answer to the questions raised is that Article 3(1) of Directive 2001/29 must be interpreted as meaning that, in order to establish whether the fact of posting, on a website, hyperlinks to protected works, which are freely available on another website without the consent of the copyright holder, constitutes a ‘communication to the public’ within the meaning of that provision, it is to be determined whether those links are provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works on that other website or whether, on the contrary, those links are provided for such a purpose, a situation in which that knowledge must be presumed.

 

IPPT20160728, CJEU, United Video Properties v Telenet

Directive 2004/48 allows national legislation providing that the court takes specific circumstances of the case into account whilst ordering the unsuccessful party to pay the legal costs incurred by the successful party, as well as flat rates, if reasonable, for legal costs incurred. The proportionality principle provides that at the very least a significant and appropriate part of the reasonable costs of the successful party are borne by the unsuccessful party. The directive precludes legislation which provides that a technical advisor should only be reimbursed in the event of fault of the losing party when these costs are linked to a judicial action concerning the upholding of intellectual property rights.

 

IPPT20160721, CJEU, Apple and Pear Australia v EUIPO

The General Court was able to find, without erring in law, that the principle of res judicata did not mean that the EUIPO was bound by the judgment of the tribunal de commerce de Bruxelles: The subject matter of the proceedings was different because of the exclusive competence of EUIPO’s adjudicating bodies to authorise or refuse the registration of an EU trade mark, which is different to any proceedings before a national court.

 

IPPT20160721, CJEU, EUIPO v Grau Ferrer

Rule 50 of the Implementing Regulation cannot give discretion to the Boards of Appeal to additional evidence. The article contains a rule that applies horizontally. Error in law by the General Court with regards to the discretion regarding additional evidence. Judgment of the General Court regarding a breach of art. 76(2) of the Regulation 207/2009. Judgment is justified on other grounds.

 

IPPT20160714, CJEU, Brite Strike

Rule of jurisdiction of article 4.6 BCIP(court of the place of registration) as a special rule of jurisdiction is allowed under article 71 of Council Regulation No 44/2001 as indispensible to the functioning of the Benelux Union (article 350 TFEU).

 

IPPT20160714, CJEU, Verband Sozialer Wettbewerb v Innova Vital

Health claims in food commercials fall within the scope of Regulation 1924/2006, even when the commercial is not aimed at the consumers but at health professoinals. Food business operators could avoid the obligations of regulation 1924/2006 by addressing the consumer through a health professional.

 

IPPT20160707, CJEU, Tommy HIlfiger v Delta Centre

Tenant of sales points falls under the concept of ‘intermediary whose services are being used by a third party to infringe an intellectual property right within article 11 of the Directive. Injunctions toward intermediaries who provide letting of sales points in market halls are subject to the same conditions as injunctions addressed to intermediaries in an online marketplace, set out in L’Oreal and Others (IPPT20110712).

 

IPPT20160622, CJEU, Thomas Philipp v Grunne Welle

Licensee may bring proceedings alleging infringement although that licence has not been entered in the register. Licensee can claim damages for its own loss under Article 32(3) CD-Regulation.
 

IPPT20160622, CJEU, Nikolajeva v Multi Protect
EU trade mark court not held to prohibit from proceeding with acts of infringement of a trademark when the proprietor of such a trade mark has not applied for such an order (Article 102 CTM-Regulation). No compensation possible in respect of acts of third parties occurring before publication for registration of a trade mark (Article 9(3) CTM-Regulation). Reasonable compensation for acts of third parties committed during the period after publication of the application for registration of the mark but before publication of its registration also refers to recovery of the profits, but it is not intended to make good all the harm, including non-material harm (Article 9(3) CTM-Regulation).

 

IPPT20160622, CJEU, Nissan Jidosha v EUIPO

A request for renewal relating to certain classes of goods or services (art. 47(3) Regulation 207/2009) when a request for renewal concerning other classes of goods or services covered by the same mark has been submitted previously is possible.

 

IPPT20160616, CJEU, Univeral Music

‘Place where the harmful event occured’ is not the domicile and place where applicant’s assests are concentrated for the sole reason that applicant has suffered financial damage, when this damage is a direct cause of an unlawful act in another Member State

 

IPPT20160609, CJEU, Hansson v Jungpflanzen Grunewald

Damages under article 94 of Regulation No 2100/94 cover any damage except an ‘infringer supplement’ or a restitution of gains and profits made by an infringer. "Reasonable compensation" covers all damage connected to pay the license fee, including payment of default interest. Damages under article 94(2) of Regulation No 2100/94 must be determined based on specific matters put forward by the holder of the variety infringed, if necesarry by using a lump-sum method. When estimating these damages, costs of an interlocutory application and out-of-court expences can under certain conditions not be taken into account.

 

IPPT20160609, CJEU, EGEDA v Estado

Article 5(2)(b) of Directive 2001/29 does not allow financing fair compensation from the General State Budget.

 

IPPT20160531, CJEU, Reha Training v GEMA

Uniform interpretation of “Communication to the public” in article 3(1) Directive 2001/29/EC and article 8 Directive 2006/115/EC. Act of communication to the public in case of intentionally transmitting copyright protected works by an operator of a rehabilitation centre to patients via television sets that are placed in several areas in this centre. The presence of a profit-making nature is relevant for determining the amount of remuneration.

 

IPPT20160504, CJEU, Pillbox v Secretary of State for Health
No factors of such a kind as to affect the validity of Article 20 of Directive 2014/40 on the manufacture, presentation and sale of tobacco and related products.

 

IPPT20160421, CJEU, Austro-Mechana v Amazon
All actions which seek to establish the liability of a defendant are the concept of ‘matters relating to tort delict of quasi-delict’. A claim seeking to obtain ‘fair compensation’ for reprographic reproduction or reproduction for private use due by virtue of national law falls within ‘matters relating to tort, delict or quasi-delict’, within the meaning of Article 5(3) of that regulation.
 

IPPT20160317, CJEU, Naazneen v OHIM

Appeal dismissed: The applicant’s arguments are essentially based on a misreading of the judgment of the General Court or concern factual findings of the General Court, which do not fall within the jurisdiction of the CJEU

 

IPPT20160317, CJEU, Liffers v Mediaset

Damages must be calculated based on hypothetical royalties and any moral prejudice.

 

IPPT20160303, CJEU, Daimler

Third party, who is named in an advertisement on a website, which contains a sign identical or similar to a trade mark in such a way as to give the impression that there is a commercial relationship between him and the proprietor, makes no use of the mark (Article 5(1)(a) and (b) of the Trade Marks Directive 2008) when the advertisement has not been placed by a third party or on his behalf, or if that advertisement has been placed by or on behalf of the thrid party with consent of the proprietor, where the third party has expressly requested to remove the advertisement.

 

IPPT20160217, CJEU, Sanoma v Viestintävirasto

A split screen that shows the closing credits of a television programme in one column and a list presenting the supplier’s upcoming programmes in the other, in order to separate the programme which is ending from the television advertising allowed when it meets the requirements set out in Article 19(1) Audiovisual Media Services Directive. Sponsorship signs shown in programmes other than the sponsored programme must be included in the maximum time for the broadcasting of advertising per clock hour, set in Article 23(1) of the directive. When a Member State has not made use of the power to lay down a stricter rule than established by Article 23(1) of the Audiovisual Media Services Directive, ‘black seconds’ have to be included in the maximum time for the broadcasting of television advertising per clock hour.  

 

IPPT20160217, CJEU, Shoe Branding Europe v OHIM

Trademark Law: The General Court carried out a global assessment. To assess the degree of similarity between marks, it is necessary to determine the degree of visual, aural or conceptual similarity to between them. Once proof of the reputation of a mark has been made out, it is irrelevant to the prove the inherent distinctive character.

 

IPPT20160204, CJEU, Hassan v Breiding

Unregistered license Community trade mark may bring proceedings alleging infringement.

 

IPPT20160121, CJEU, Viinaverla Oy

For the concept ‘evocation’ in Article 16(b) regulation ‘Protection geographical indications’ it is required to refer to the perception of the average consumer who is reasonably well informed and reasonably observant. For a judgment to whether there is an ‘evocation’ the referring court must take into consideration the phonetic and visual relationship between those names and any evidence that may show that such a relation is not fortuitous. Even in the absence of any likelihood of confusion, ‘evocation’ of a name referred to in Annex III to regulation ‘Protection geographical indications’ is not allowed.   

 

IPPT20160121, CJEU, Hesse v OHIM

The General Court did not err in law by upholding the assessment of the Board of Appeal according to which the goods at issue were similar because of their complementarity: complementarity is an autonomous criterion capable of being the sole basis for the existence of such a similarity.