2018

IPPT20181219, CJEU, Syed

The storage by a retailer of goods bearing a motif protected by copyright on the territory of the Member State where the goods are stored may constitute an infringement of the exclusive distribution right of article 4(1) of the InfoSoc Directive: the distribution right may include an act prior to the actual sale of a work or a copy thereof with the objective of making such a sale, it must nonetheless be proven that the goods concerned are actually intended to be distributed to the public on the territory of the Member State in which those goods are protected by copyright, this cannot be inferred from the mere fact that the stored goods and the goods sold instore are identical, as regards the determination of the purpose of the goods considered, account must be taken of all relevant factors, including the distance between the storage facility and the place of sale, the regular restocking of the shop with goods from the storage facilities at issue, accounting elements, the volume of sales and orders as compared with the volume of stored goods, or current contracts of sale.

 

IPPT20181206, CJEU, Portugal Ramos Vinhos v Adega

Adegaborba.pt shall not be registered as a national Portugese word mark based on article 3(1)(c) of Directive 2008/95 regarding signs which consist exclusively of indications which may serve to designate the characteristics of the goods or services: the article pursues an aim that is in the public interest, which requires that signs or indications describing categories of goods or services may be freely used by all, the list of characteristics named in the article is not exhaustive, the Portuguese public will perceive the term “adega” as to be a reference to a facility in which wine is produced and stored and, therefore, as a reference to properties of those goods, the combination of this term and the geographical name ‘‘Borba’ - relating to the geographical origin of those goods-  is descriptive, the fact that a term is part of the corporate name of a legal person is irrelevant for the purposes of examining the descriptive character of that term.

 

IPPT20181129, CJEU, Alcohol Countermeasure Systems v EUIPO

The General Court did not err in law by finding that the proof of genuine use of the earlier mark consisting of the word sign ‘ALCOLOCK’ and registered in the UK in 1996 could be furnished by means of evidence establishing use of another mark consisting of the same word sign ‘ALCOLOCK’ registered in the UK in 2004: it follows directly from the wording of point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 that use of the mark in a form differing from the form in which it was registered is considered use for the purpose of the first subparagraph of that article, so long as the distinctive character of the mark in the form in which it was registered is unaltered, CJEU has previously held that hat provision also applies where that different form is itself registered as a trade mark (IPPT20121025). The General Court did not err in law in not examining the two relevant periods separately when examining genuine use: it is sufficient that a trade mark has been put to genuine use during a part of the relevant period, in the present case the two periods overlapped so the proof relating to the period of overlap could be taken into account for each of the two relevant periods. The General Court was not required to stay the proceedings pending Brexit in order to be able to annul the decision on the ground that an earlier UK trade mark could no longer be used to oppose the maintenance of an EU trade mark: the General Court may not annul or alter a decision on grounds which come into existence subsequent to its adoption, EU law continues in full force and effect until the time of the actual withdrawal from the EU.

 

IPPT20181113, CJEU, Levola v Smilde

The taste of a food product cannot be classified as a work: the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, the taste of a food product will be identified essentially on the basis of taste sensations and experiences which are subjective and variable, it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of taste.

 

IPPT20181025, CJEU, Enercon

Appeal against the General Court’s decision that the Board of Appeal was fully entitled to find that the contested mark for wind energy converters was devoid of any distinctive character dismissed: General Court was fully entitled to take the view that the distinctive character of the mark had to be assessed according to the category of mark chosen in the application; a colour mark, since the appellant referred for the first time at the hearing before the General Court to content that allegedly highlighted the fact that the contested mark had been registered as a figurative mark, this evidence is inadmissible, it is for neither EUIPO nor the General Court to reclassify the category chosen for a mark.

 

IPPT20181018, CJEU, Bastei Lubbe

Article 8(1) and (2) of the Copyright Directive read in conjunction with Article 3(1) thereof, and Article 3(2) of the Enforcement Directive must be interpreted as precluding national legislation under which the owner of an internet connection used for copyright infringements through file-sharing cannot be held liable to pay damages if he can name at least one family member who might have had access to that connection without providing further details as to when and how the internet was used by that family member: such a legislation would make proving the alleged infringement of copyright and who was responsible for that infringement impossible and thereby not respect the requirement to ensure a fair balance between the various fundamental rights in question.

 

IPPT20180913, CJEU, Birkenstock v EUIPO

The General Court was entitled to hold that the applicability of the case-law relating to three-dimensional marks that are indissociable from the appearance of the goods - that are devoid of any distinctive character unless they depart significantly from the norm or customs of the sector - is applicable to Birckenstock’s figurative mark representing a pattern of wavy, crisscrossing lines: this case-law also applies to a figurative mark consisting of the two-dimensional representation of the product or a sign consisting of a design applied to the surface of a product, in view of the intrinsic characteristics of the sign - which is made up of a series of elements which are repeated regularly - and the nature of the goods covered there is an inherent probability that a sign consisting of a repetitive sequence of elements will be used as a surface pattern and thus will be indissociable from the appearance of the goods concerned.

 

IPPT20180906, CJEU, Souvenir – Geschenke – Ehrenpreise eV v EUIPO

Designation ‘Neuschwanstein’ from EU word mark “NEUSCHWANSTEIN” not descriptive for quality or essential characteristic  goods and services: ‘souvenir items’ not mentioned in Nice classification, goods covered by contested trade mark are everyday consumer goods and everyday services,  souvenir function is not an objective characteristic inherent to the nature of a product, the fact that the concerned items constitute  souvenirs through the mere affixing of the name “Neuschwanstein” is not, in itself, an essential descriptive characteristic of those goods. Designation “Neuschwanstein” not descriptive for place of origin goods and services: the castle of Neuschwanstein is not famous because of souvenir items or offered services, not apparent from the case file that the contested trade mark is used to market specific souvenir products and to offer particular services for which it would be traditionally known, not all services covered by the contested trade mark are directly offered at the website of the castle, therefore it is not reasonable to conclude that, in the mind of the relevant public, the place of marketing to which the name ‘Neuschwanstein’ relates is, as such, a description of a quality or an essential characteristic of the goods and services covered by the contested trade mark. General Court gave sufficient reasons to the requisite legal standard in regard to the existence of distinctive character of the contested trade mark by stating that mere affixing of that mark on the goods and services concerned enables the relevant public to distinguish them from those sold or provided in other commercial or tourist areas. It is not apparent from the Lindt & Sprüngli-judgment (IPPT20090611) that the assessment of bad faith must necessarily take the means used to achieve a legitimate objective into account.

 

IPPT20180807, CJEU, SNB-REACT v Deepak Mehta

Member States are required under article 4(c) of the EU Enforcement Directive to recognize a body collectively representing trade mark proprietors as a person entitled to seek, in its own name, the application of the remedies laid down in the EU Enforcement Directive and to bring legal  proceedings, in its own name, on condition that that body is regarded by national law as having a direct interest in the defence of such rights and that that law allows it to bring legal proceedings to that end, these being matters for the referring court to verify. Articles 12 to 14 of the Directive on Electronic Commerce apply to the provider of an IP address rental and registration service allowing the anonymous use of internet domain names, inasmuch as that service comes within the scope of one of the categories of service referred to in those articles and meets all the corresponding conditions, in so far as the activity of such a service provider is of a merely technical, automatic and passive nature,  implying that he has neither knowledge of nor control over the information transmitted or cached by his customers and in so far as he does not play an active role in allowing those customers to optimise their online sales activity, these being matters for the referring court to verify.

 

IPPT20180807, CJEU Land Nordrhein-Westfalen v Renckhoff

Posting a photograph that was published on another website, made with the same technical means, without any restrictive measures and with consent of the copyright holder falls under the concept “communication to the public”: There is an “act of communication” when such posting gives visitors to the website on which it is posted the opportunity to access the photograph on that website. There is communication to a “public” when it covers all potential users of the website on which the photograph is posted. There is a “new public” when that public was not already taken into account by the copyright holders when they authorised the initial communication to the public of their work. Case-law about hyperlinks not applicable.

 

IPPT20180725, CJEU, KitKat

Board of Appeal could not find that the three-dimensional Kitkat EU trade mark had acquired distinctive character through use without adjudicating on whether it had acquired such distinctive character in Belgium, Ireland, Greece and Portugal: it would be unreasonable to require (separate) proof for each individual Member State, the evidence submitted must however be capable of establishing such acquisition throughout all Member States of the EU, it is not inconceivable that the evidence provided is relevant with regard to several Member States, or even to the whole of the European Union.

 

IPPT20180725, CJEU, Teva v Gilead

A product composed of several active ingredients with a combined effect is ‘protected by a basic patent in force’ within the meaning of Article 3(a) of the SPC Regulation for Medicinal Products where, even if the combination of active ingredients of which that product is composed is not expressly mentioned in the claims of the basic patent, if, from the point of view of a person skilled in the art and on the basis of the prior art at the filing date or priority date of the basic patent: (1) the combination of those active ingredients must necessarily, in the light of the description and drawings of that patent, fall under the invention covered by that patent, and (2) each of those active ingredients must be specifically identifiable, in the light of all the information disclosed by that patent.

 

IPPT20180725, CJEU, Mitsubishi v Duma

Trade mark proprietor is entitled to oppose, on the grounds of Article 5 of the Trade Marks Directive (2008) and Article 9 of the EU Trade Mark Regulation, a third party removing all the signs identical to that mark and affixing other signs, without its consent, on products placed in the customs warehouse, with a view to importing them or trading them in the EEA where they have never yet been marketed.

 

IPPT20180725, CJEU, QuaMa v EUIPO

Appeal regarding the General Court’s finding that EUIPO had not erred in interpreting the request for a change of name and address as an application for registration of a transfer of a trade mark so the intervener was entitled to file a notice of opposition inadmissible: re-examination of arguments already given before the General Court does not fall within the jurisdiction of the court, the same goes for arguments that were not put forward before the General Court. Appeal regarding the assessment of the relevant public also inadmissible: determining the relevant public and the level of attention is part of a factual assessment that does not fall within the jurisdiction of the court, findings of the General Court sufficiently motivated.

 

IPPT20180705, CJEU, Jägermeister v EUIPO

Article 36(1)(c) of the Community Designs Regulation requires the representation of a design for which registration is sought to clearly identify that design.

 

IPPT20180628, CJEU, EUIPO v Puma

The General Court was right to consider that EUIPO’s bodies could not satisfy their obligation to state reasons: Puma had raised the argument that the reputation of the earlier marks had been recognised ‘in numerous Office decisions’, the fact remains that the Board of Appeal failed to cite from among the ‘evidence submitted by the opponent’. If the Board of Appeal itself were to reach the conclusion that it could not satisfy its obligation to state reasons, without the 
evidence which had been lodged in the earlier proceedings before EUIPO, it must be considered, that it would have been necessary for the Board to exercise its power to request the production of that evidence for the purposes of exercising its discretion and carrying out a full examination of the opposition.

 

IPPT20180612, CJEU, Louboutin v Van Haren

A sign consisting of a colour applied to the sole of a high-heeled shoe is not an invalid trademark on the basis of article 3(1)(e)(iii) of the Trade Marks Directive 2008.

 

IPPT20180607, CJEU, Scotch Whisky Association

For the purpose of establishing that there is ‘indirect commercial use’ of a registered geographical indication, the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it:  not sufficient that that element is liable to evoke some kind of association with the indication concerned or the geographical area relating thereto. For the purpose of establishing that there is an ‘evocation’ of a registered geographical indication, the referring court is required to determine whether, when the consumer is confronted with the disputed designation, the image triggered directly in his mind is that of the product whose geographical indication is protected: account is not to be taken either of the context surrounding the disputed element or the fact that that element is accompanied by an indication of the true origin of the product concerned. For the purpose of establishing that there is a ‘false or misleading indication’, as prohibited by that provision, account is not be taken of the context in which the disputed element is used.

 

IPPT20180530, CJEU, L'Oréal

The CJEU refers five 'Master' trade mark cases (L’ Oréal) back to the General Court: the General Court distorted the facts and arguments made by L’ Oréal and infringed Article 8(1)(b) of the EU Trade Mark Regulation. The Judgement of the General Court, stating that that the most distinctive element of the trade mark is the element 'Masters', is ambiguous and incomplete, the General Court's reasoning was insufficient and lacked the support of case-law. Furthermore, the General Court failed to provide adequate reasoning why it disregarded a comparison of all the distinctive characters of the conflicting trade marks in its likelihood of confusion analysis.

 

IPPT20180530, CJEU, Tsujimoto v EUIPO

General Court was fully entitled to conclude that word mark KENZO ESTATE of which registration was applied for was similar to the earlier word mark KENZO: mark applied for consists of earlier mark + element that lacks distinctiveness. Use of appellant’s forename in mark applied for does not constitute a due cause: the weighing of the different interests involved cannot undermine the essential function of the earlier mark to guarantee the origin of the product.

 

IPPT20180517, CJEU, Junek v Lohman en Rauscher

Trade mark proprietor cannot oppose parallel import of a medical device in authentic inside- and outside packaging which, by its content, function, size, presentation and placement, does not give rise to a risk to the guarantee of origin of the medical device bearing the mark. Conditions from judgements Bristol-Meyers Squibb (IPPT19960711) and Boehringer (IPPT20070426) only applicable when importer has repacked product. The mere attachment of an extra label on an unprinted portion of the original packaging is not a repackaging within the meaning of these judgments. 
 

IPPT20180419, CJEU, Meo v Autoridade da Concorrencia

Interpretation concept of “competetive disadvantage” (subparagraph (c) of the second paragraph of Article 102 TFEU) where a dominant undertaking applies discriminatory prices to trade partners on the downstream market, it covers a situation in which that behaviour is capable of distorting competition between those trade partners. Finding of “competitive disadvantage” does not require proof of actual quantifiable detoriation in the competitive situation but must be based on an analysis of all the relevant circumstances of the case leading to the conclusion that that behaviour has an effect on the costs, profits or any other relevant interest of one or more of those partners, so that that conduct is such as to affect that situation.

 

IPPT20180419, CJEU, Peek & Cloppenburg

No basis in EU law for the claim that the use of a national trade mark can have a have a curative effect in such a way as to maintain the rights attached to it after it has been surrendered. Trade mark proprietor declared his surrender of the mark or allowed it to lapse. EU law precludes national legislation whereby the invalidity or revocation of an earlier national trade mark, the seniority of which is claimed for an EU trade mark, may only be established a posteriori if the trade mark can be declared invalid or revoked (1), not only at the time on which this earlier national mark was surrendered or lapsed, but also (2) on the date on which the court's decision in which this determination takes place.

 

IPPT20180308, CJEU, Doceram v CeramTec 

In order to ascertain whether the features of appearance of a product are solely dictated by its function, it must be established that the function is the only factor which dictated those characteristics: the existence of alternative designs isn’t decisive. In order to ascertain whether the product is solely dictated by its technical function, the national court must take account of all the circumstances relevant to the case; there is no need to base those findings on the ‘objective observer’.

 

IPPT20180228, CJEU, mobile.de v EUIPO

General Court has rightly found that the Board of Appeal is entitled to take account of additional evidence of use which is submitted after the time period set by the Board: addition to the evidence adduced within the time period set by EUIPO under Rule 40(6) of the Implementing Regulation which is submitted after that time remains possible, Rule 40(6) of the Implementing Regulation does not constitute a provision contrary to Article 76(2) of the EU Trade Mark Regulation, with the result that the Board of Appeal is not entitled to take account of additional evidence of use of the earlier mark in question. Cancellation Division cannot examine evidence of genuine use of the earlier mark in respect of the services for which it was considered by the Board of Appeal that that evidence had not been adduced.

 

IPPT20180125, CJEU, Schrems v Facebook

A private Facebook account user is a consumer within the meaning of Article 15 of Brussels I Regulation, even when his activities entail publishing books, lecturing, operating websites, fundraising and being assigned the claims of numerous consumers for the purpose of their enforcement. Consumer cannot start a collective action at the forum actoris on the basis of Article 16(1) of Brussels I Regulation: an applicant who is not himself a party to the consumer contract in question cannot enjoy the benefit of the jurisdiction relating to consumer contracts.

 

IPPT20180124, CJEU, EUIPO v European Food

The General Court correctly held that, in the context of the invalidity proceedings based on the absolute ground for refusal, the EUIPO Board of Appeal should not, in all circumstances, rule that the that evidence submitted for the first time before the Board of Appeal must be regarded as belated: it follows from case law that no reason of principle opposes to this.

 

IPPT20180123, CJEU, Hoffmann-La Roche

National competition authorities are allowed to consider medicinal products of which the MA lays outside the treatment of the diseases at issue, but can be used for this and therefore can be regarded as substitutable with other medicinal products as products in the same market. It is for national courts to decide whether such substitutability exists. An agreement restricting the conduct of third parties, which consists in encouraging the use of another medicinal product for the treatment of the same condition, does not escape the application of that provision on the ground the arrangement cannot be considered to be ancillary and objectively necessary for the implementation of the licensing agreement. An arrangement which consists in dissemination of misleading information relating to adverse reactions with a view to reducing the competitive pressure constitutes a restriction of competition ‘by object’ under Article 101(1) TFEU. An arrangement intended to disseminate such misleading information in respect of a medicinal product cannot be regarded as indispensable under Article 101(1) TFEU and therefore cannot be exempt.

 

IPPT20180117, CJEU, Josel v EUIPO

Appeal against judgment of the General Court regarding genuine use of the wordmark NN dismissed by reasoned order: grounds of appeal are either manifestly inadmissible or manifestly unfounded.