2017

IPPT20171220, CJEU, Schweppes v Red Paralela

The proprietor of a national trade mark cannot oppose to the import of identical goods bearing the same mark originating in another Member State in which that mark is now owned by a third party when following the assignment: the proprietor has actively and deliberately continued to promote the appearance or image of a single global trade mark thereby generating or increasing confusion on the part of the public concerned as to the commercial origin of goods bearing that mark or there exist economic links between the proprietor and that third party, inasmuch as they coordinate their commercial policies or reach an agreement in order to exercise joint control over the use of the trade mark, so that it is possible for them to determine, directly or indirectly, the goods to which the trade marks affixed and to control the quality of those goods.

 

IPPT20171220, CJEU, Champagner Sorbet

The use of a Protected designation of origin (PDO) as part of the name under which is sold a foodstuff that does not correspond to the product specifications for that PDO but contains an ingredient which does correspond to those specifications – like “Champagner Sorbet” containing 12% champagne -  cannot be regarded, in itself, as an unfair use against which PDOs are protected in all circumstances: it is for the national courts to determine, in the light of the particular circumstances of each individual case, whether such use is intended to take unfair advantage of the reputation of a PDO, this is the case when that foodstuff does not have, as one of its essential characteristics, a taste attributable primarily to the presence of that ingredient in the composition of the foodstuff. 

 

IPPT20171220, CJEU, Acacia v Audi and Porsche

Scope of repair clause in article 110(1) Community Design Regulation is not limited to component parts forming part of a complex product upon whose appearance the protected design is dependent. Repair clause applies only to component parts of a complex product that are visually identical to original parts. In order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision.

 

IPPT20171220, CJEU, Incyte v Szellemi Tuljdon Nemzeti Hivatala

Date of the first MA, as stated in an application for the SPC, on the basis of which the duration of the certificate is calculated, is incorrect when the incorrect date led to a method for calculating the durating of the certificate which does not comply with the requirements of Article 13(1) of SPC Regulation for Medicinal Products, as interpreted by a subsequent judgment of the Court. When the date of the first MA is incorrect, the holder of an SPC may, under Article 18 of SPC Regulation for Medicinal Products, bring an appeal for ectification of the duration stated in the SPC, provided that the SPC has not expired.

 

IPPT20171207, CJEU, Merck Sharp & Dohme

Article 3 (b) of the SPC Regulation must be interpreted in such a way that an end of procedure notice drawn up before the expiry of the basic patent can not be equated with an MA and, on the basis of an end of procedure message, no SPC can be obtained. The fact that no marketing authorization was issued on the date of the application for an SPC is not a defect that can be repaired in accordance with Article 10, paragraph 3, of the SPC Regulation.

 

IPPT20171206, CJEU, Coty v Parfumerie Akzente

A selective distribution system for luxury goods designed, primarily, to preserve the luxury image of those goods complies with article 101(1) TFEU to the extent that resellers are chosen on the basis of objective criteria of a qualitative nature that are laid down uniformly for all potential resellers and applied in a non-discriminatory fashion and that the criteria laid down do not go beyond what is necessary. On these conditions, article 101(1) TFEU does not preclude a contractual clause which prohibits authorised distributors to use third-party platforms for the internet sale of the contract goods: these being matters to be determined by the referring court. This prohibition does not constitute a restriction of customers or a restriction of passive sales to end users, within the meaning of Article 4(b) and 4(c) of Regulation No 330/2010 regarding vertical agreements and concerted practices. 

 

IPPT20171129, CJEU, VCAST v RTI
National legislation which permits, without the copyright holders’ consent, an online recording service for television programmes which are freely accessible in the territory of the Member State, where it is the provider of the service, and not its users, that receives and records the broadcasting signal, is in breach of Article 5(2) under b of the Copyright Directive. Sum of by recording service targeted persons constitutes a 'public'. Original transmissions are made under specific technical conditions and using a different means of transmission. Transmission referred to thus constitute communications to different publics, and each of them must therefore receive consent.

 

IPPT20171123, CJEU, Benjumea Bravo de Laguna v Torras Ferrazzuolo

National law may be applied to a claim of ownership of an EU trade mark provided that the situation concerned does not fall within those covered by Article 18 of the Community Trade Mark Regulation.

 

IPPT20171103, NLSC, MSD v Teva

The mere circumstance of a carve-out not sufficient to rule out direct infringement of the second medical indication. Distinction drawn by the Appellate Court in the scope of protection of ‘classic second medical indication’ and ‘sub-group indication’ is incorrect. Direct infringement of Swiss-type claims if: average person skilled in the art will consider that the substance is (also) intended for or suited to the treatment covered by the second medical indication patent, the manufacturer or seller foresees or ought to foresee that the generic drug he manufactures or offers will intentionally be used for that treatment and that he does not take the steps to prevent his product from being dispensed for the patented second medical indication. Indirect infringement of Swiss-type claims possible on the same basis as for a claim in accordance with Article 54(5) EPC: if the manufacturer supplies or offers the drug to persons not entitled to work the invention and where he knows or it is obvious given the circumstances, that the drug is suitable and intended for the patented second medical indication. Explanation concept of ‘means relating to an essential element of the invention’ as specified in section 73(1) DPA 1995: pertains not only an element in the patent claims, let alone in that part of the claims containing a description of how the invention differs from the prior art, the means must be able to serve the concept of the invention, that which the invention is based upon, and must contribute to the realization of the teachings in the patent, and in each individual case the judge must ask himself whether this is the case, which may involve asking whether the contentious means plays such a part in the application of the doctrine in the patent that the ratio behind the existence of the notion of indirect patent infringement is satisfied.

 

IPPT20171025, CJEU, European Commission v Council of European Union

Council Decision 8512/15 authorising the Commission to open negotiations, together with member states, regarding the revision of the Lisbon Agreement on Appellations of Origin and Geographical Indications, annulled because it falls under the exclusive competence of the Union.

 

IPPT20171019, CJEU, Merck v Merck

The condition laid down in Article 109(1)(a) of the EU Trade Mark Regulation as to the existence of the ‘same cause of action’ applies only in so far as those actions relate to an alleged infringement of a national trade mark and an identical EU trade mark in the territory of the same Member States. Where actions for infringement, the first on the basis of a national trade mark concerning an alleged infringement within the territory of a Member State and the second on the basis of an EU trade mark concerning an alleged infringement in the entire territory of the European Union, are brought before the courts of different Member States between the same parties, the court other than the court first seised must decline jurisdiction in respect of the part of the dispute relating to the territory of the Member State referred to in the action for infringement brought before the court first seised. The court other than the court first seised is not required to decline jurisdiction in favour of the court first seised if the actions in question no longer relate to the territory of the same Member States or if the trade marks concerned are not identical and valid for identical goods or services.

 

IPPT20171019, CJEU, Raimund v Aigner

Article 99 (1) of Regulation No 207/2009 must be interpreted as meaning that an action for trademark infringement may not be dismissed on the basis of an absolute ground for invalidity, without that counterclaim for a declaration of invalidity being upheld. When the decision of the counterclaim for a declaration of invalidity has not become final, the provisions of regulation No 207/2009 do not stand in the way of an EU trade mark court dismissing an action for infringement within the meaning of article 96 a of that regulation on the basis of an absolute ground for invalidity.

 

IPPT20171017, CJEU, Bolagsupplysningen v Svensk Handel

A legal person claiming that its personality rights have been infringed by the online publication of incorrect information and failure to remove comments can bring an action for rectification of that information, removal of those comments and compensation of all the damage sustained before the courts of the Member State in which its centre of interests is located. The centre of interests must be determined by reference to the place where the main part of the economic activities take place: the location of the registered office is not conclusive.  A person who alleges that his personality rights have been infringed by the online publication of incorrect information concerning him and the failure to remove comments cannot bring an action for rectification of that information and removal of those comments before the courts of each Member State in which the information published on the internet is or was accessible: this is a single and indivisible application that can, consequently, only be made before a court with jurisdiction to rule on the entirety of an application for compensation for damage.

 

IPPT20171011, CJEU, EUIPO v Cactus

Judgments CIPA v Registrar (IPPT20120619) and Praktiker Bau v Deutsche Patent und Markenamt (IPPT20050707) do not relate to earlier trade marks registered before the date of those judgments. Use of only the figurative element of a composite mark is "genuine use" if the distinctive character of the mark as registered is not altered.

 

IPPT20171102, CJEU, Easy Sanitary Solutions and EUIPO v Nivelles 
Error in law in judgment of the General Court when it imposed the requirement on EUIPO to construct elements of earlier designs in assessing the novelty of a design. Rightly held that ‘sector concerned’ within meaning of Article 7(1) of the EU Designs Regulation is not limited to that of the product in which the contested design is intended to be incorporated or applied. The General Court erred in law when it imposed the requirement that the informed user of the contested design should know the product in which the earlier design is incorporated or to which it is applied. 

 

IPPT20171005, CJEU, Hanssen Beleggingen

Article 22(4) of Council Regulation (EC) regarding proceedings concerned with the registration or validity of an intellectual property right is not applicable to disputes about whether a person is entitled to be registered as a proprieter of a trade mark

 

IPPT20171005, CJEU, Wolf Oil

A distinction should be made between the assessment of the conceptual differences between signs at issue and the overall assessment of their similarities, which form two distinct stages in the analysis of the overall likelihood of confusion, the being a prerequisite for the second.

 

IPPT20170927, CJEU, Nintendo v BigBen

The Community design court can, in cases where the jurisdiction towards one defendant is based on Article 82(1) Community Designs Regulation (CDR) and jurisdiction towards a second defendant established in another Member State is based on Article 6(1) Brussel 1 Regulation and Article 79(1) of the CDR, because the second defendant makes and supplies goods to the first defendant, adopt orders concerning measures falling under Article 89(1) and Article 88(2) CDR also covering the second defendant’s conduct other than that relating to the supply chain and with a scope which extends throughout the European Union. Concept “country in which the act of infringement was committed” from Article 8(2) Rome II Regulation refers to the country where the event giving rise to the damage occurred. Where the same defendant is accused of various acts of infringement in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened by it.Third party that, without consent of the holder of rights of a design, uses images of goods corresponding to a Community design when lawfully offering for sale goods intended to be used as accessories to specific goods of the holder of the rights of those designs in order to explain the joint use of the goods thus offered for sale and the specific goods of the holder of those rights, carries out an authorised “reproduction for the purpose of making citations” within the meaning of Article 20(1)(c) CDR, as long as it fulfils the cumulative conditions laid down therein, provision provided that it fulfils the cumulative conditions laid down therein, which is for the national court to verify.

 

IPPT20170921, CJEU, Easy Sanitary Solutions and EUIPO v Nivelles 

Error in law in judgment of the General Court when it imposed the requirement on EUIPO to construct elements of earlier designs in assessing the novelty of a design. Rightly held that ‘sector concerned’ within meaning of Article 7(1) of the EU Designs Regulation is not limited to that of the product in which the contested design is intended to be incorporated or applied. The General Court erred in law when it imposed the requirement that the informed user of the contested design should know the product in which the earlier design is incorporated or to which it is applied. 

 

IPPT20170920, CJEU, The Tea Board v EUIPO
Essential function of an EU collective mark: distinguishing the goods or services of the members of the association which is the proprietor of the trademark from those of other undertakings, and not to distinguish those goods according tot heir geographical origin. Where signs are, on the one hand, collective marks and, on the other hand, individual marks, the possibility that the public might believe that the goods and services covered by the signs at issue have the same geographical origin cannot constitute a relevant criterion for establishing their identity or similarity.

 

IPPT20170914, CJEU, EUIPO v IVDP

General Court did not err in law by applying to the system provided for by Regulation No 1234/2007 the principles laid down by the Court of Justice provided for by Regulation No 510/2006. General Court erred in law in holding that the protection conferred on protected designations of origins and geographical indications under Regulation No. 1234/2007 may be supplemented by the relevant national law granting additional protection. General Court was entitled to hold, without erring in law, that the mark PORT CHARLOTTE could not be regarded as using the designation of origin ‘Porto’ or ‘Port’. No error in law in judgment that the average consumer will not associate the mark with a port wine covered by the designation of origin in question. 

 

IPPT20170726, CJEU, Continental Reifen v Michelin

The view of the General Court regarding the distinctiveness of an earlier mark is based on an error in law: it is clear from the brochures provided by Michelin that the stylised letter ‘x’ is used, in isolation or in combination with other letters, to designate a technical characteristic of Michelin tyres. Appeal dismissed in its entirely despite error in law: the operative part of the judgment is shown to be well founded on other legal grounds.

 

IPPT20170726, CJEU, Meica v Salumificio Fratelli

General Court made no error in law by holding that the Board of Appeal was fully entitled - after a global assessment - to conclude that there was no likelihood of confusion between the marks at issue. Other grounds of appeal are manifestly unfounded because they concern factual assessments of the General Court or are otherwise unfounded.

 

IPPT20170720, CJEU, Ornua v Tindale

The fact that EU trade mark and national mark peacefully coexist in part of the European Union does not allow the conclusion that in another part of the European Union, where peaceful coexistence between that EU trade mark and the sign identical to that national mark is absent, there is no likelihood of confusion. The European Union trade marks court hearing an infringement action, may take into account a part of the European Union not covered by that action, provided that the market conditions and the sociocultural circumstances are not significantly different in both of those parts of the European Union.

 

IPPT20170706, CJEU, Moreno Marin v Abadia Retuerta
A trade mark such as LA MILLA DE ORO – which refers to a good or service with a high degree of value which is abundantly present in a single place – cannot constitute an indication of geographical origin. To indicate a geographical origin that sign must be accompanied by a name designating a geographical place so that the actual physical space may be identified. If a good or service with a high degree of value is abundantly present in a single place, is unlikely to have characteristics the use of which as a trade mark would constitute a ground for invalidity within the meaning of article 3(1)(c) of the Directive 2008/95.

 

IPPT20170619, USSC, Matal v Tam

The disparagement clause violates the First Amendment’s Free Speech Clause: the disparagement clause reaches any trademark that disparages any person, group, or institution, goes much further than necessary and is far too broad. The commercial market is well stocked with merchandise that disparages prominent figures and the line between commercial and non-commercial speech is not always clear.

 

IPPT20170614, CJEU, VSW v TofuTown

Purely plant based products may not be marketed under terms as ‘milk’ and other designations that are reserved exclusively for milk products by Regulation No 1308/2013: even if those terms are expanded upon by clarifying or descriptive terms indicating the plant origin of the product at issue unless that product is listed in Annex I to Decision 2010/791.


IPPT20170614, CJEU, Brein v Ziggo-XS4ALL
The making available and management of an online sharing platform such as The Pirate Bay that offers an index classifying protected works and a search engine that allows users of that platform to locate those works and to share them in the context of a peer-to-peer network is a “communication to the public”. New public: the operators of The Pirate Bay were informed that this platform provides access to works published without authorisation of the rightholders. Sharing platform such as The Pirate Bay is carried out with the purpose of obtaining profit.

 

IPPT20170608, CJEU, Schniga v CPVO

General Court erred in law in the finding that Article 23(1) of the implementing regulation did not grant the President of the CPVO the power to insert, on completion of the technical examination of a variety, a new characteristic in respect of that variety: an application for a Community plant variety right may not be rejected solely on the ground that the characteristic of an examined variety was not referred to in either the technical questionnaire completed by the applicant or in the relevant test guidelines and protocols, no restrictions with regard to the time of insertion of a new characteristic, no infringement of the principle of legal certainty.

 

IPPT20170608, CJEU, WF Gozze Frottierweberei v Verein Bremer Baumwollborse

The use of an individual EU trade mark as a label of quality is not a genuine use. An individual trade mark cannot be declared invalid, on the basis of Article 52(1)(a) and Article 7(1)(g), because the proprietor of the mark fails to ensure, by carrying out periodic quality controls at its licensees, that expectations relating to the quality which the public associates with the mark are being met. The provisions of 207/2009 on the Community trade mark cannot be applied mutatis mutandis to individual trade marks.

 

IPPT20170601, NLDC Amsterdam, MN v Zoom in

Zoom.in failed to sufficiently demonstrate that meetings its obligations towards MN, would lead to the demise of the company: It can by no means be concluded that an agreement with YouTube, with the retention of the identity and independence of MN, could not be in agreement with the new YouTube policy. Zoom.in was insufficiently able to substantiate that a ‘suspension’ would be justified because MN severely failed to meet its obligations: Zoom.in has brought no clear notice of default to MN and the full take-over of the company management of MN goes much farther than the ‘suspension’ of obligations. Sufficiently likely that the judge in potential proceedings would rule that Zoom.in has no justification to no longer meet its contractual obligations. The claims of Zoom.in in the counterclaim to meet the obligations of the Agreement and the claim to remove a text about non-timely payment on the website of MN cannot be granted: Zoom.in failed to clearly demonstrate in which sense MN has shortcomings and Zoom.in insufficiently substantiated that the text on the website of MN is unlawful.

 

IPPT20170518, CJEU, Hummel v Nike
A legally distinct second-tier subsidiary, with its seat in a Member State, of a parent body that has no seat in the European Union is an ‘establishment’, within the meaning of that provision, of that parent body if the subsidiary is a centre of operations which, in the Member State where it is located, has a certain real and stable presence from which commercial activity is pursued, and has the appearance of permanency to the outside world, such as an extension of the parent body.

 

IPPT20170517, CJEU, EUIPO v Deluxe Entertainment

The General Court erred in law by stating that the goods and services covered by the application for registration of the sign ‘Deluxe’ displayed such differences as regards their nature, their characteristics, their intended use and the way in which they are marketed that they could not be considered a homogenous category enabling the Board of Appeal to adopt a general reasoning with respect to the absolute grounds of refusal: the General Court failed to have regard to the possibility that, despite their differences, all the goods and services at issue could have a common characteristic that could justify their placement within a single homogenous group.

 

IPPT20170516, CJEU Opinion Free Trade Agreement EU and Singapore
The Free Trade Agreement between the European Union and the Republic of Singapore does not completely fall within the exclusive competence of the European Union.


IPPT20170511, CJEU, Yoshida v EUIPO
Ornamental and fanciful aspects do not preclude the ground for refusal under article 7(1)(e)(ii) of EU Trade Mark Regulation (exclusively the shape of goods that is necessary to obtain a technical result), in so far as those aspects do not play an important role in the shape of goods at issue, all the essential characteristics of which must perform a technical function.Distinctiveness of a mark cannot preclude the application of the refusal ground of article 7(1)(e)(ii) of EU Trade Mark Regulation.

IPPT20170504, ECJ, August Storck v EUIPO

Case law in respect to distinctiveness of three dimensional trade marks consisting of the appearance of the product itself also applies in respect of figurative marks consisting of the two-dimensional representation of the product. General Court did not err in law in applying the case law to the present case. General Court was entitled to find that the mark representing the shape of a white, grey and blue square-shaped packaging was devoid of any distinctive character.

 

IPPT20170503, CJEU, EUIPO and Forge de Laguiole v Szajner

No error of law by the General Court in demarcating Forge de Laguiole’s business sectors in order to determine the scope of protection of the earlier business name FORGE DE LAGUIOLE: General Court did not in any way generally apply its case-law by analogy with regard to the scope of protection of trademarks applied on the scope of protection of business name, the judgment of 10 July 2012 had to be taken into account as evidence that the General Court takes the intended distribution channels into account.

IPPT20170426, CJEU, Brein v Filmspeler

The sale of a multimedia player on which add-ons are installed that link to websites on which protected works are made available to internet users without the consent of the copyright holders, constitutes 'communication to the public'.

 

IPPT20170316, CJEU, AKM v Zurs

Full and unaltered transmission of programmes broadcast by the national broadcasting corporation, by means of cables on national territory, is not subject to the requirement that authorisation be obtained from the author, provided that it is merely a technical means of communication and was taken into account by the author of the work when the latter authorised the original communication.

 

IPPT20170301, CJEU, ITV v TV Catchup

National legislation which states that there is no copyright infringement in the case of the immediate retransmission by cable including, where relevant, via the internet, in the area of initial broadcast, of works broadcast on television channels subject to public service obligations is contrary to Article 9 of the Copyright Directive

 

IPPT20170216, CJEU, Brandconcern v Scooters India

General Court did not commit an error in law by granting Scooters India protection for all goods listed in the alphabetical list of class 12: the rule set out in the judgment CIPA v Registrar (IPPT20120619) on the interpretation of the application for registration is not applicable to the registration of trade marks which took place before the delivery of that judgment

 

IPPT20170216, CJEU, Rundfunk v Hettegger Hotel Edelweiss

The communication of television and radio broadcasts by means of TV sets installed in hotel rooms does not constitute a communication made in a place accessible to the public against payment of an entrance fee.

 

IPPT20170214, CJEU, Opinion Marrakesh Treaty

The conclusion of the Marrakesh Treaty to Facilitate Access to Published Works for Persons who are Blind, Visually Impaired or Otherwise Print Disabled falls within the exclusive competence of the European Union because the body of obligations laid down by the Marrakesh Treaty falls within an area that is already covered to a large extent by common EU rules and the conclusion of that treaty may thus affect those rules or alter their scope. The rules of the Marrakesh Treaty which provide for the introduction of an exception or limitation to the rights of reproduction, distribution and making available to the public cannot be held to have a specific link with international trade such as to signify that they concern the commercial aspects of intellectual property, the rules of the Marrakesh Treaty governing the export and import of accessible format copies do however relate to international trade. The conclusion of the Marrakesh Treaty does not fall within the common commercial policy (article 207 CJEU) because the cross-border exchange for which the Marrakesh Treaty provides cannot be equated with International Trade for commercial purposes.

 

IPPT20170208, CJEU, Carrefour v ITM
Advertising comparing the prices of goods sold in shops having different sizes or formats, is liable to be unlawful, where those shops are part of retail chains each of which includes a range of shops having different sizes or formats and where the advertiser compares the prices charged in shops having larger sizes or formats in its retail chain with those displayed in shops having smaller sizes or formats in the retail chains of competitors unless consumers are informed clearly and in the advertisement itself that the comparison was made between the prices charged in shops in the advertiser’s retail chain having larger sizes or formats and those indicated in the shops of competing retail chains having smaller sizes or formats.