2019

IPPT20191219, CJEU, Club Variedades Vegetales Protegidas

Planting of a protected variety and harvesting of the thereof, which is not liable to be used as propagating material may not be regarded as an ‘act of production or reproduction (multiplication)’ of variety constituents within the meaning of Article 13(2)(a) Community Plant Variety Rights Regulation: authorisation of the holder of a Community plant variety is required if the conditions laid down in Article 13(3) of that regulation are fulfilled, unless the holder has had reasonable opportunity to exercise his right in relation to the said variety constituents.The fruit of a plant variety, which is not likely to be used as propagating material, may not be regarded as having been obtained through the ‘unauthorised use of variety constituents’ (Article 13(2)(a) Community Plant Variety Rights Regulation where those variety constituents were propagated and sold to a farmer by a nursery in the period between the publication of the application for a Community plant variety right in relation to that plant variety and the grant thereof. The same applies to those fruits if those fruits were harvested after the Community plant variety right was granted. When the propagation and sale takes place after the grant of the plant variety right, the holder may assert his or her right under Article 13(2)(a) and (3) of that regulation unless the holder had a reasonable opportunity to exercise his or her right in relation to those variety constituents.

 

IPPT20191219, CJEU, NUV v Tom Kabinet

The supply to the public by downloading, for permanent use, of an e-book is covered by the concept of ‘communication to the public’: from the explanatory memorandum of the Directive follows that the intention was that any communication to the public of a work, other than the distribution of physical copies of the work, should be covered not by the concept of ‘distribution to the public’, but by that of ‘communication to the public’. Usedsoft judgment - in which the CJEU held that exhaustion does not extend only to copies of computer programs on a physical medium - does not apply to e-books: an e-book is not a computer program, unlike the Software Directive 2009, the EU legislature did not desire assimilation of tangible and intangible copies of works protected for the purposes of the relevant provisions of the Copyright in Information Society Directive, the sale of a computer program on a material medium and the sale of a computer program by downloading from the internet are similar from an economic point of view. However, the supply of a book on a material medium and the supply of an e-book cannot be considered equivalent from an economic and functional point of view, the fact that an e-book may form part of an e-book so as to enable it to be read cannot result in the application of software provisions. Subject to verification by rechtbank Den Haag (District Court, The Hague, Netherlands) must the making available of an e-book by Tom Kabinet be regarded as being communicated to a public: there is “communication” because the works are available to anyone who is registered and that these persons are being able to access the site from a place and at a time individually chosen by him or her, there is a “public” because the number of persons who may have access, at the same time or in succession, to the same work via that platform is substantial, there is a “new public” because a communication is made to a public that was not already taken into account by the copyright holders.

 

IPPT20191204, CJEU, Aceto Balsamico di Modena

The protection of the name ‘Aceto Balsamico di Modena’ does not extend to the use of the non-geographical terms of that name such as ‘aceto’ and ‘balsamico’ and ‘aceto’ and ‘balsamico’ are common terms.

 

IPPT20191114, CJEU, Spedidam v INA

The Copyright Directive must be interpreted as not precluding national legislation which establishes, as regards the exploitation of audiovisual archives by a body set up for that purpose, a rebuttable presumption that the performer has authorised the fixation and exploitation of his performances, where that performer is involved in the recording of an audiovisual work so that it may be broadcast: the protection of the performer also extends to the exploitation of audiovisual archives, the performer’s prior authorization is required for any act of reproduction or making available to the public of the fixations of their performances, provisions on consent for any act of reproduction or making available to the public also allow the consent to be expressed implicitly, when a performer who is himself involved in the making of an audiovisual work so that it may be broadcast by national broadcasting companies, and who is thus present at the place where such a work is recorded for those purposes, first, is aware of the envisaged use of his performance and gives his performance for the purposes of such use, it is possible to take the view, in the absence of evidence to the contrary, that he has, as a result of that involvement, authorised the fixation of that performance and its exploitation.

 

IPPT20191112, CJEU, Organisation juive européenne v ministre de l'Économic

Foodstuffs originating in territories occupied by the State of Israel bear the indication of their territory of origin, accompanied, where those foodstuffs come from an Israeli settlement within that territory, by the indication of that provenance. It follows from Regulation No 1169/2011 (on the provision of food information to consumers) that the origin of a foodstuff must be indicated where failure might mislead consumers. It must be held that displaying, on foodstuffs such as those at issue in the main proceedings, the indication that the State of Israel is their ‘country of origin’, when those foodstuffs actually originate in one of the territories referred to in paragraph 33 above, would be liable to deceive consumers. The omission of the indication ‘comes from an Israeli settlement’ could suggest that that food has a place of provenance other than its true place of provenance.The fact that a foodstuff comes from a settlement in breach of the rules of humanitarian law, may influence the purchasing decisions of consumers on ethical reasons.

 

IPPT20191031, CJEU, Repower v EUIPO

Appellant has sufficient interest in appeal: annulment of the contested revocation decision would be in the appellant’s favour. Error in law of General Court to base the revocation decision on the general principle of law that permits the revocation of unlawful administrative acts instead of Article 80(1) CTMR cannot lead to annulment of the judgement: operative part of the judgement under appeal is justified on other grounds.

 

IPPT20191017, CJEU, Landwirtschaftskammer Steiermark v EUIPO

No use corresponding to essential function of a individual trade mark when the trade mark is used in such a way as to guarantee the geographical origin and characteristics of the goods belonging to different manufacturers which are attributable to the origin, but the goods are not manufactured under the control of a single undertaking responsible for quality. No genuine use of the contested trade mark in the present case: the proprietor of the trade mark is not involved in the manufacture of the goods and the responsibility for the quality of the goods rests with different manufacturers who do not form a single undertaking, since they are not economically linked at production level.
 

IPPT20191001, CJEU, Planet49

The consent for the use of cookies is not validly constituted if the user must deselect a pre-checked checkbox to refuse his or her consent. The information that the service provider must give to a website user includes the duration of the operation of cookies and whether or not third parties may have access to those cookies.

 

IPPT20190924, CJEU, GC v Google

Prohibition of processing of personal data under Directive 95/46 applies to Google: subject to the exceptions provided for by the directive, Google has the obligation to comply with a request for de-referencing to web pages containing personal data. Google may refuse to accede to a request for de-referencing of personal data falling within the special categories when processing is covered by the exception in Article 8(2)(e) of the directive: the processing relates to data which are manifestly made public by the data subject or is necessary for the establishment, exercise or defence of legal claims. Google must ascertain whether the inclusion of the link in the list of results is strictly necessary for protecting the freedom of information of internet users potentially interested in accessing that web page by means of such a search, protected by Article 11 of the Charter: on the basis of all the relevant factors of the particular case and taking into account the seriousness of the interference with the data subject’s fundamental rights to privacy and protection of personal data laid down in Articles 7 and 8 of the Charter, ascertain, having regard to the reasons of substantial public interest referred to in Article 8(4) of Directive 95/46 or Article 9(2)(g) of Regulation 2016/679 and in compliance with the conditions laid down in those provisions. Data relating to legal proceedings brought against an individual conviction are data relating to ‘offences’ and ‘criminal convictions’ within the meaning of Article 8(5) of Directive 95/46. Google is required to accede to a request for de-referencing relating to links to web pages displaying such information, where the information relates to an earlier stage of the legal proceedings in question and no longer corresponds to the current situation in so far as the data subject’s fundamental rights override the rights of potentially interested internet users.

 

IPPT20190924, CJEU, Google v CNIL

Google is not required to carry out worldwide de-referencing on all versions of its search engine – by a request or order for de-referencing: in a globalised world may access outside the Union likely have effects within the Union itself, numerous third States do not recognize the right to de-referencing, the right of the protection of personal data is not an absolute right and the balance between the right to privacy and the freedom of information is likely to vary significantly, the legislature has chosen to confer a scope on the protection that won’t enshrined beyond the territory of the Member States. Google is required to carry out de-referencing on all EU-versions: the de-referencing should be accompanied with measures that have the effect of preventing or, at the very least, seriously discouraging internet users in the Member States from gaining access to the links in question with a help from a non-EU-version using a search conducted on the basis of that data subject’s name.

 

IPPT20190912, CJEU, Bayer v Richter Gedeon

Concept of “appropriate compensation” must be given an independent and uniform interpretation: when the terms of a provision of EU law  makes no express reference to the law of the Member States its meaning and scope must normally be given an independent and uniform interpretation throughout the European Union. Meaning of the concept of “appropriate”: justified in the light of the specific circumstances of the case. While the exercise of their authority to grant such compensation is strictly subject to the preconditions under which either the provisional measures must have been repealed or ceased to be applicable because of any action or omission on the part of the applicant, or it must subsequently be found that there is no infringement or threat of infringement of an intellectual property right, the fact that those conditions are satisfied in a specific case does not mean that the competent national courts will automatically and in any event be obliged to order the applicant to provide compensation. Article 9(7) of the Enforcement Directive must be interpreted as not precluding national legislation which provides that a party – even though the patent on the basis of which those had been requested and granted has subsequently been found to be invalid - shall not be compensated for losses which he has suffered due to his not having acted as may generally be expected in order to avoid or mitigate his loss, to the extent that that legislation permits the court to take due account of all the objective circumstances of the case.

 

IPPT20190912, CJEU, Darferdas

In examining the distinctive character of a sign in respect of which registration as a trade mark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. Uses which are conceivable but not practically significant and therefore seem unlikely are not relevant when there is no concrete evidence which makes a use which is unusual more likely. No examination required of uses that are not practically significant in those cases where it appears that solely one type of use is practically significant in the economic sector concerned.

 

IPPT20190912, CJEU, Koton v EUIPO

Bad faith (article 52(1) under b) CTMR (former)): when one has the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin. No requirement that earlier trade mark is registered for the same of similar goods or services. Where at the time of application for the contested mark, third party was using, in at least one Member State, a sign identical with, or similar to that mark, the existence of a likelihood of confusion does not have to be established. The existence a likelihood of confusion is only one relevant factor among other for the existence of bad faith. Where there is an absence of any likelihood of confusion or similarity, other factual circumstances can constitute indicia establishing the bad faith of the applicant.

 

IPPT20190912, CJEU, Cofemel v G-Star Raw

Copyright protection may not be granted to designs on the sole ground that, over and above their practical purpose, they produce a specific aesthetic effect: designs must constitute the expression of original works if they are to qualify for such protection.

 

IPPT20190912, CJEU, VG Media v Google

A German provision prohibiting internet search engines from using newspaper or magazine snippets without the publisher’s authorisation must be disregarded in the absence of its prior notification to the Commission: that provision constitutes a rule on information society services and, therefore, a ‘technical regulation’ the draft of which is subject to prior notification to the Commission.

 

IPPT20190729, CJEU, Spiegel Online v Volker Beck

Copyright directive does not fully harmonise the exceptions or limitations. European fundamental rights are not capable of justifying exceptions or limitations not provided for in the directive. In striking the balance between the rights of the author and the rights which derogate from the former, there must be fully adhered to the fundamental rights enshrined in the Charter: there is nothing whatsoever in the wording of the Charter or in the Court’s case-law to suggest that an IP-right is inviolable and must for that reason be protected as an absolute right. Article 5(3)(c) of Directive 2001/29 precludes a national rule restricting the application of the exception or limitation provided for in that provision in cases where it is not reasonably possible to make a prior request for authorisation with a view to the use of a protected work for the purposes of reporting current events. Reference made by means of a hyperlink to a file which can be downloaded independently, is covered by quotation exception. A work has ''already been lawfully made available to the public'' within the meaning of the quotation exception where that work, in its specific form, was previously made available to the public with the rightholder’s authorisation or in accordance with a non-contractual licence or statutory authorisation.

 

IPPT20190729, CJEU, Red Bull v EUIPO

Justified declaration that Red Bull trade marks consisting of a combination of the colours blue and silver per se are invalid: General Court correctly applied the principles stemming from the Heidelberger Bauchemie judgement (IPPT20040624), considering that the mark was not systematically arranged in such a way that the colours concerned are associated in a predetermined and uniform way.

 

IPPT20190729, CJEU, Pelham

Phonogram producer can prevent under Article 2(c) Copyright Directive another person from taking a sound sample, even if very short ("sampling"), of his or her work for another phonogram, unless that sample is included in the phonogram in a modified form unrecognisable to the ear. Concept of ‘copy’ (Article 9(1)(b) Rental Directive) must, according to its preambule, be interpreted consistently with the same concept as it is used in the Geneva Convention. Reproduction of all or a substantial part of a phonogram constitutes a 'copy'. Member State cannot, in its national law, lay down an exception or limitation, other than those provided for in Article 5, to the phonogram producer’s right provided for in Article 2(c) of that directive. Use of a sound sample taken from a phonogram (sampling) may amount to a "quotation", on the basis of Article 5(3)(d) Copyright Directive, provided that that use has the intention of entering into dialogue with the work from which the sample was taken. Concept of ‘quotations’ (Article 5(3)(d) Copyright Directive) does not apply when it is not possible to identify the work concerned by the quotation in question. Article 2(c) Copyright Directive constitutes full harmonisation.

 

IPPT20190729, CJEU, Funke Medien v Germany

Military status reports constituting purely informative documents, the content of which is essentially determined by the information which they contain and that those reports are thus entirely characterised by their technical function, are not protected by copyright: creativity has not been expressed in an original manner and there is no own intellectual creation. Article 5(3)(c) Copyright Directive does not constitute measures of full harmonisation of the scope of the relevant exceptions or limitations. Discretion in the implementation is circumscribed in several regards: discretion must be exercised within the limits imposed by EU law, discretion cannot be used so as to compromise the objectives of that directive, discretion also circumscribed by Article 5(5) of the directive, lastly, it is for the Member States to ensure a fair balance is struck between the various fundamental rights protected by the European Union legal order. Freedom of information and freedom of the press, enshrined in Article 11 of the Charter of Fundamental Rights of the European Union, are not capable of justifying exceptions or limitations to the copyright not provided for in the Directive. In striking the balance between the exclusive rights of the author and the rights of the users of protected subject matter, the latter of which derogate from the former, a national court must rely on an interpretation of those provisions which fully adheres to the fundamental rights enshrined in the Charter. Publication of military status reports may amount to ‘use of works ... in connection with ... reporting’ within Article 5(3)(c), second case, of Directive 2001/29: reports are presented in a structured form in conjunction with an introductory note, further links and a space for comments

 

IPPT20190704, CJEU, FTI Touristik v EUIPO

Name in normal script of figurative mark in the European Union Trade Marks Bulletin irrelevant for the purpose of determining the phonetic perception of the signs which should not be confused with their name in the Bulletin. Complaints directed against grounds of the judgment under appeal purely for the sake of completeness cannot in any event lead to the judgement’s being set aside.

 

IPPT20190703, CJEU, Viridis v EUIPO

No genuine use of medicine during clinical trials in the case of a medicinal product which has not yet been granted a marketing authorisation, it is not even possible to advertise it in order to gain or maintain a market share, uses prior to imminent trading may be genuine use if they are external in nature and have an impact on building the future audience. Required conduct of a clinical trial may constitute a valid reason for non-use but trade mark registration prior to it and its long duration fall within the sphere of influence and responsibility of the trade mark proprietor, and therefore cannot be regarded as obstacles beyond his control.

 

IPPT20190612, CJEU, Patent- och registreringsverket v Hansson

Member States are free to provide for waivers of rights under national law in so far as they do not impair the effectiveness of the Trade Mark Directive and, in particular the protection against trade marks that are liable to create a likelihood of confusion. Article 4(1)(b) Trade mark Directive 2008 precludes national legislation providing for a waiver of rights whose effect would be to exclude an element of a complex trade mark from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, that attributes in advance and permanently, limited importance to such an element in that analysis.

 

IPPT20190605, CJEU, Skype v IBPT

A VoIP service is an electronic communications service when the publisher is remunerated for the provision of this service and the provision is subject to an agreement between the providers of telecommunications services who are duly authorised to send and terminate calls to the PSTN.

 

IPPT20190515, CJEU, VM Vermogens Management

Argument that trade mark VERMÖGENSMANUFAKTUR (registered prior to IP-translator (IPPT20120619)) has been annulled only for services falling under the literal meaning of the headings of Classes 35 and 36 fails: the trade mark was protected in respect of all services in those classes and therefore annulled by the Board of Appeal in respect of all the services in Classes 35 and 36, statement of reasons GEU sufficient. Argument that the General Court held that the contested trade is devoid of distinctive character only because the expression Vermögensmanufaktur constitutes a laudatory reference is, is based on incorrect reading of the judgment under appeal. Arguments put forward by the appellant concerning the use of refused evidence by the Board of Appeal are inadmissible: arguments only concern repetition of arguments at first instance.

 

IPPT20190502, CJEU, Fundación Queso Manchego v IQC

Figurative signs can “evoke” a registered name. No exception for producers of the products concerned established in the regio. Presumed consumer reaction based on sufficiently direct and clear link. Relevant consumers are European consumers, including consumers of the place where the product is made or consumed consumption.

 

IPPT20190411, CJEU, ÖKO-Test Verlag v Dr. Rudolf Liebe

Proprietor of a ‘quality label’ trade mark (for consumer information and –advice) is not entitled by Article 9(1)(a) and (b) (former) CTMR and Article 5(1)(a) and (b) of Directive 2008/95 to oppose the affixing, by a third party, of a sign identical with, or similar to, that mark to products that are not similar to, the registered goods or services. For a trade mark to have a “reputation” it is required that a significant part of the relevant public knows that sign: not required that the public must be aware that the quality label has been registered as a trade mark. Proprietor of an ‘quality label’ trade mark (for consumer information and –advice) with a reputation is entitled by Article 9(1)(c) and (b) (former) CTMR and Article 5(2) of Directive 2008/95 to oppose the affixing by a third party of a identical sign to non-similar products, if it takes unfair advantage of the mark concerned, or causes detriment to that distinctive character or reputation  when there is no existence of a ‘due cause’, in support of such affixing.

 

IPPT20190410, CJEU, The Green Effort v EUIPO

The General Court did not err in law in deciding that the time limit for bringing an action against the contested decision had expired: article 4(4) of the decision concerning electronic communication with and by the Office must be interpreted as meaning that notification will be deemed to have taken place on the fifth calendar day following the day on which EUIPO placed the document in the user’s inbox, unless the actual date of notification can be accurately established as a different date within that period of time.

 

IPPT20190327, CJEU, Hartwall

Classification given by the applicant when registering a sign as a "colour mark" or "figurative mark" is a relevant factor amongst others to establish whether that sign can constitute a trade mark under Article 2 of the Trade Mark Directive 2008 and whether this mark has distinctive character under Article 3(1)(b). Trade mark authority is obliged to carry out a concrete and global assessment of the distinctive character of the trade mark concerned: authority cannot refuse registration of a sign as a trade mark on the sole ground that that sign has not acquired distinctive character through use in relation to the goods or services claimed, for a colour combination designated in the abstract and without contours, it is necessary to examine whether and to what extent the systematically arranged colour combination is capable of conferring inherent distinctive character on the sign in question. Registration as a colour mark of a sign that is represented as a colour drawing with defined contours, but is described as a colour mark should be refused due to an inconsistency in the application for registration.

 

IPPT20190321, CJEU, Abraxis Bioscience

Marketing authorisation relied on in support of an application for a SPC concerning a new formulation of an old active ingredient, cannot be regarded as being the first marketing authorisation for the product concerned as a medicinal product in the case where that active ingredient has already been the subject of a marketing authorisation as an active ingredient.

 

IPPT20190314, CJEU, Textilis v Svenskt Tenn

Article 7(1)(e)(iii) EUTMR (Regulation 207/2009 as amended by Regulation 2015/2424) is not applicable to trade marks registered before the entry into force of the amendment to that Regulation (23 March 2016). Sign consisting of two-dimensional decorative motiffs affixed to goods such as fabrics or paper shall does not "consisting exclusively of the shape " within the meaning of Article 7(1)(e)(iii) CTMR (Regulation 207/2009 prior to its amendment by Regulation 2015/2524). Although, in the main proceedings, the sign under consideration represents shapes which are formed by the external outline of drawings representing, in a stylised manner, parts of geographical maps, the fact remains that, apart from those shapes, that sign contains decorative elements which are situated both inside and outside those outlines.

 

IPPT20190228, CJEU, Groupe Lea Nature v EUIPO
Likelihood of confusion cannot be subject to a condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark: General Court therefore not obliged to find that the element ‘so’ was dominant in order to find that the signs at issue were similar.

 

IPPT20190214, CJEU, De Staat v Warner-Lambert 

In a marketing authorisation procedure, a communication of the package leaflet or summary of the product characteristics of a generic medicinal product, which does not include indications or dosage forms which were still covered by patent law at the time that medicinal product was placed on the market ("carve out"), constitutes a request to limit the scope of the marketing authorisation of the generic medicinal product in question

 

IPPT20190131, CJEU, Pandalis v EUIPO

Appeal against General Court finding that “Cystus” has not been put to genuine use despite being used on the packaging of the goods concerned unfounded: the condition of genuine is not fulfilled where the mark affixed to an item does not contribute to creating an outlet for that item or to distinguishing the item from the goods of other undertakings, the General Court stated that in view of its context the use of the term ‘cystus’ on the packaging of the products would be perceived as descriptive of the main ingredient of those goods “Cistus” and not as identifying their commercial origin, by stating this, the General Court did not find that the mark at issue was descriptive.

 

IPPT20190123, CJEU, Klement v EUIPO

General Court implicitly held that trade mark in question has a high degree of distinctiveness solely because of its unusual shape, even though that shape is to some extent functional. Trade mark in question has been put to genuine use even though the word mark “Bullerjan” is affixed to the goods. The fact that the word mark “Bullerjan” can facilitate the commercial origin of the respective furnaces does not conflict with the fact that the word mark does not alter the distinctive character of the three-dimensional trade mark consisting of the shape of the goods. In the event that the court of first instance finds that the mark in question departs significantly from the norm or customs of the sector, it is not up to the trade mark proprietor to provide further evidence that the shape of the trade mark is not customary in the sector concerned, but to the person who claims that the trade mark has not been put to genuine use.

 

IPPT20190116, CJEU, Stock Polska v EUIPO

General Court did not fail to appraise the figurative elements of the Lubelska mark for which registration was applied. existence of a likelihood of confusion between LUBELSKA and LUBECA  to the requisite legal standard: General Court implicitly ruled that it considered the figurative elements of the mark applied for were not negligible and the word element was not dominant.