Print this page


Genuine use. Breadth of categories of goods or services for which the earlier mark was registered is a key element of the balance between, on the one hand, the maintenance and preservation of the exclusive rights conferred on the proprietor of the earlier mark and, on the other hand, the limitation of those rights in order to prevent a trade mark which has been used in relation to part of the goods or services being afforded extensive protection merely because it has been registered for a wide range of goods or services. If category goods or services earlier mark defined particularly precisely and narrowly, within which it is not possible to make any significant sub-divisions, proof of genuine use of part of the goods or services suffices. With regard to a broad category which may be sub-divided into several independent subcategories, it is necessary to require proprietor of earlier mark to proof genuine use for all autonomous subcategories. Criterion of the purpose and intended use of the goods or services is essential for defining an independent subcategory of goods.  If the goods concerned have several purposes and intended uses, determining whether there exists a separate subcategory of goods by considering in isolation of each of the purposes that those goods may have will not be possible. The General Court was right not to take into account each of the uses of the goods at issue in isolation (to cover, conceal, adorn or protect the human body), as these different uses are combined for the purpose of putting those goods on the market. Fact that the goods at issue were aimed at different publics and were sold in different shops is not relevant for defining an independent subcategory of goods. 


IPPT20201217, CJEU, Husqvarna

The date with regard to which it must be determined whether the continuous period of five years has ended is the date on which the application or counterclaim in question was filed: assessment with regard to the date of the last hearing would be against the consequences of revocation as provided for in the regulation.


IPPT20201217, CJEU, Morbier

Article 13(1) of Regulation No 1151/2012 (PDO scope of protection) covers, in a broad sense, all acts which may mislead the consumer as to the true origin of the product concerned: does not merely prohibit the use by a third party of the registered name and prohibits the reproduction of the shape or appearance characterising a product covered by a registered name where that reproduction is liable to lead the consumer to believe that the product in question is covered by that registered name. It is necessary to assess whether such reproduction may mislead the European consumer, who is reasonably well informed and reasonably observant and circumspect, taking into account all the relevant factors in the case.


IPPT20201028, CJEU, BY v CX

Submission of non-physical copies of a work not distribution to the public but communication to the public within the meaning of the Copyright Directive: As a preliminary point, it must be noted that it is apparent from the request for a preliminary ruling that the photograph at issue in the main proceedings was sent by electronic mail to the court seised, in the form of an electronic copy. The transmission by electronic means of a protected work to a court, as evidence in legal proceedings between individuals, cannot be regarded as a ‘communication to the public’: the protected work is received by a clearly defined and closed group of persons exercising public service functions in a court, and not to an indefinite number of potential recipients.


IPPT20201022, CJEU, Ferrari

A trade mark has been put to 'genuine use' for all goods if it is used for certain of the goods, such as very high-priced luxury sports cars or only for parts or accessories of certain of the goods: the mere fact that cars for which a trade mark has been used may belong to a specific market of 'sports cars' is not sufficient for them to be regarded as an independent subcategory of the class of goods. A trade mark has been put to ‘genuine use’ by the propietor when: the proprietor resells second-hand goods put on the market under that mark and the proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark. Article 351 TFEU allows a court of a Member State to apply a convention concluded before 1 January 1958: until such time as any incompatibilities between the TFEU and that Treaty can be eliminated. Burden of proof that a trade mark has been put to ‘genuine use’ rests on the proprietor of that mark: it is the proprietor of the mark at issue which is best placed to adduce evidence.


IPPT20201008, CJEU, Aktiebolaget Östgötatrafiken v PRV

Assessment of distinctive character of a sign consisting of coloured motifs applied on transport vehicles: in particular, account should be taken of perception by the relevant public and not necessary to examine whether that sign departs significantly from the norm or customs of the economic sector concerned.


IPPT20200916, CJEU, Edison

“Electrical energy” has not been wrongly excluded of the goods in Class 4 of the eighth edition of the classification of Nice: the argument that the General Court failed to adopt a ‘functional’ approach is unfounded, however, as rightly held by the General Court in paragraph 29 of the judgment under appeal, it is apparent from paragraph 61 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that the goods for which the protection by the trade mark is sought must be identified by the applicant in its application for registration with sufficient clarity and precision in order to enable the competent authorities and the economic operators, on that basis alone, to determine the extent of the protection sought, the complaint directed against a ground expressed for the sake of completeness cannot lead to the annulment and is therefore ineffective, no contradictory reasoning by the General Court, not shown or alleged that that assessment of evidence was vitiated by a distortion, insufficiently explained that the General Court erred in law by referring to the judgment, the argument by which Edison merely reproduces unchanged the complaint raised at first instance rejected as inadmissible, value that the General Court attached to the evidence does not come within the jurisdiction of the Court of Justice. Complaints regarding infringement of its procedural rights inadmissible: Edison merely reproduces verbatim the arguments that it had already raised before the General Court. Complaint regarding infringement of Article 75 of the EU Trade Mark Regulation ungrounded: the General Court carried out an extensive analysis. 


IPPT20200908, CJEU, RAAP v PPI

The concept of 'relevant performers' in Article 8(2) of Directive 2006/115 on rental right and lending right and on certain rights related to copyright in the field of intellectual property is to be interpreted in a uniform manner throughout the Union and precludes a Member State from excluding artists who are nationals of States not belonging to the EEA with the sole exception of artists who have their residence or domicile in the EEA and those who have made their contribution to a phonogram in the EEA: Article 8(2) should be interpreted in accordance with the WPPT and no reservation has been made pursuant to Article 15(3) WPPT, the obligation referred to in Article 8(2) to provide for an equitable remuneration to be shared between the producer of the phonogram and the performing artist shall apply when the use of the phonogram or a reproduction thereof takes place in the Union: it shall not be made a condition that the performer or the producer of the phonogram possesses the nationality of the EEA Member State or has their domicile in this Member State, nor that the place where the creative or artistic work is performed belongs to the territory of a Member State of the EEA. Article 8(2) of the Directive precludes a Member State from restricting the right to a single equitable remuneration in the case of performers and producers of phonograms who are nationals of third countries that have made a reservation under Article 15(3) WPPT with regard to the recognition of the right to a single equitable remuneration. Restrictions may, however, be introduced by the Union legislature if they meet the requirements of Article 52(1) Charter of Fundamental Rights of the European Union: need to preserve a level playing field for participation in the trade in recorded music is an objective of general interest that may justify a restriction of the neighbouring right set out in Article 8(2) of the Directive with regard to nationals of a third State which does not or only partly grant that right. Article 8(2) of the Directive precludes that the remuneration is only to be paid to the phonogram producer without having to share it with the performer: remuneration has the essential characteristic that it is shared and such an exclusion would undermine the undermine the aim of the Directive.


IPPT20200709, CJEU, Santen

Article 3(d) of Regulation No 469/2009 must be interpreted as meaning that an MA cannot be considered to be the first MA, for the purpose of that provision, where it covers a new therapeutic application of an active ingredient, or of a combination of active ingredients, and that active ingredient or combination has already been the subject of an MA for a different therapeutic application.


IPPT20200709, CJEU, Constantin Film v Youtube

Article 8(2)(a) of Directive 2004/48 on the enforcement of intellectual property rights must be interpreted as meaning that the term 'addresses' contained in that provision does not oblige platforms such as Youtube, in respect of a user who has uploades files which infringe an intellectual property right, to provide the user's email address, telephone number and IP address used to upload those files or the IP address used when the user's account was last accessed: the term 'addresses' in article 8(2)(a) solely refers to a postal addres, Member States do have the option to order disclosure of more complete information.


IPPT20200702, CJEU, mk advokaten v MBK Rechtsanwälte

A person operating in the course of trade that has arranged for an advertisement which infringes another person’s trade mark to be placed on a website is not using a sign which is identical with that trade mark when: the operators of other websites reproduce that advertisement by placing it online, on their own initiative and in their own name, on other websites.


IPPT20200611, CJEU, Brompton Bicycle

Articles 2 to 5 of Directive 2001/29 must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result: the product must be an original work resulting from intellectual creation. The existence of other possible shapes which can achieve the same technical result is not decisive, the national court has to verify this and the reffering court has to take accoun of all the relevant aspects of the present case, as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product.



IPPT20200514, EBA-EPO, Pepper

Patentability of essentially biological process for the production of plans or animals Negative effect on allowability if claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. Taking into account developments afterdecisions G 2/12 and G 2/13 of the Enlarged Board of Appeal, the exception to patentability of essentially biological processes for the production of plants or animals in Article 53(b) EPC has a negative effect on the allowability of product claims and product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process. This negative effect does not apply to European patents granted before 1 July 2017 and European patent applications which were filed before that date and are still pending.


IPPT20200430, CJEU, INA

A natural person who has imported - without the consent of the proprietor of the trade mark that is affixed to them - ball bearings weighing 710 kg on behalf of a third party and has retained and stored them, prior to their being uplifted for onward shipment to a non-Member State in exchange for a bottle of cognac and a carton of cigarettes, must be regarded as using that trade mark in the course of trade: since the goods - having regard to their nature and their volume - are manifestly not intended for private use, the relevant transactions must be considered to fall within the scope of a trading business, the fact that a person has imported and released for free circulation such goods justifies in itself a finding that that person has acted in the course of trade, the significance of the remuneration that the importer has received by way of consideration for his so acting is of no relevance.


IPPT20200423, CJEU, Gömböc

In order to establish whether a sign consists exclusively of the shape of goods which is necessary to obtain a technical result, assessment does not have to be limited to the graphic representation of that sign: other relevant factors such as the perception of the relevant public can also be taken into account in order to identify the essential characteristics of the sign at issue, other data that does not come from the graphic representation of the sign can only be used in the assessment when this data is derived from objective and trustworthy sources and not just from the perception that the relevant public has of the sign. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the goods where that sign enjoys protection under the law relating to designs or where the sign consists exclusively of the shape of a decorative item: the ground for refusal or invalidity provided for in Article 3(1)(e)(iii) of Directive 2008/95 can be applied if it is only on the basis of the relevant public's knowledge that it can be established that the shape gives the goods substantial value. In the present case, that knowledge relates to the fact that the product depicted in the sign at issue has become the tangible symbol of mathematical discovery which addresses questions raised in the history of science. Article 3(1)(e)(iii) of Directive 2008/95 must be interpreted as meaning that the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the product where that sign enjoyw protection under the law relating to designs: the fact that the appearance of a sign is protected as a design does not mean that trademark protection is excluded. The same goes for the instance that the sign consists exclusively of the shape of a decorative item: it is in no way inconceivable that the substantial value of this type of item may result from factors other than its shape, such as, inter alia, the story of its creation, its method of production, whether industrial of artisanal, the materials that it contains which may be rare or precious, or even the identity of its designer.


IPPT20200423, CJEU, Gugler France v Gugler

The General Court did not err in law in finding that on the date on which the application for registration of the contested Gugler Community trade mark was filed, an economic link existed between Gugler France and Gugler GmbH (which precluded the finding of a likelihood of confusion): in CJEU Schweppes (IPPT20171220), it has not been held that the existence of an economic link presupposes a particular order between the undertakings concerned.


IPPT20200402, CJEU, Coty v Amazon

Amazon is not infringing Coty trade marks by storing infringing perfumes on behalf of a third party without being aware of that infringement: the Court has already pointed out that ‘using’ involves active behaviour and direct or indirect control of the act constituting the use, in order for the storage of goods bearing signs identical, or similar to trade marks to be classified as ‘using’ those signs, it is necessary for the economic operator providing the storage itself to pursue the aim referred to by those provisions, which is offering the goods or putting them on the market.


IPPT20200402, CJEU, Stim and SAMI

The hiring out of motor vehicles equipped with radio receivers does not constitute a communication to the public: in the case of the supply of a radio receiver forming an integral part of a hired motor vehicle, which makes it possible to receive, without any additional intervention by the leasing company, the terrestrial radio broadcasts available in the area in which the vehicle is located there is no intervention to give his customers access to a protected work, such a supply differs from (case-law on) acts of communication by which service providers intentionally broadcast protected works to their clientele, by distributing a signal by means of receivers that they have installed in their establishment.


IPPT20200326, CJEU, AR v Cooper

The Trade Mark Directive leaves Member States the option of allowing the proprietor of a trade mark whose rights in that mark have been revoked on expiry of the five-year period from its registration to make genuine use of the mark to retain the right to claim compensation for the injury sustained as a result of the use by a third party, before the date on which the revocation took effect: the proprietor of a trade mark has an exclusive right within the five-year period from its registration even if the trade mark is not being used, Member States are free to decide on the date on which the revocation of a trade mark takes effect, the fact that a trade mark has not been used does not, in itself, preclude compensation in respect of acts of infringement that have been committed, that remains an important factor to be taken into account in determining the existence and, as the case may be, the extent of the injury sustained by the proprietor and, accordingly, the amount of damages that he or she might claim.



IPPT20200310, EBA-EPO, Computer Implemented Simulations

A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of  assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design. In the Enlarged Board’s opinion, the COMVIK approach is suitable for the assessment of computer-implemented simulations. Like any other computer-implemented inventions, numerical simulations may be patentable if an inventive step can be based on features contributing to the technical character of the claimed simulation method. When the COMVIK approach is applied to simulations, the underlying models form boundaries, which may be technical or non-technical. In terms of the simulation itself, these boundaries are not technical. However, they may contribute to technicality if, for example, they are a reason for adapting the computer or its functioning, or if they form the basis for a further technical use of the outcomes of the simulation (e.g. a use having an impact on physical reality). In order to avoid patent protection being granted to non-patentable subject-matter, such further use has to be at least implicitly specified in the claim. The same applies to any adaptations of the computer or its functioning. The same considerations apply to simulations claimed as part of a design process. A design process is normally a cognitive exercise. However, it certainly cannot be ruled out that in future case there may be steps within a design process involving simulations which contribute to the technical character of the invention. Moreover, “design” is not a clearly defined term, and there may well be software functions that can be associated with or even result in a “design”.


IPPT20200304, CJEU, EUIPO v Equivalenza Manufactory
General Court erred in law by taking into account the circumstances under which the goods in question are marketed at the stage of assessing the similarity of the conflicting signs: in case-law of the CJEU, although those circumstances have been applied differently in either the assessment of the similarity of the conflicting signs or the global assessment of the likelihood of confusion. however, consideration of the conditions under which the goods in question were marketed falls within the phase of the assessment of the likelihood of confusion and not within that of the assessment of the similarity of the conflicting signs, which must be carried out in the light of the intrinsic qualities of the conflicting signs. General Court erred in law in finding that the phonetic similarity is neutralised by the conceptual difference and then refraining from assessing likelihood of confusion: only in the exceptional case in which at least one of the conflicting signs has a clear, fixed and immediately comprehensible meaning in the eyes of the relevant public may the assessment of likelihood of confusion be dispensed with on the ground that, despite the existence of certain elements of visual or phonetic similarity between them, those signs give a different overall impression due to their pronounced conceptual nature. By no means established that this is the case. EUIPO correctly concluded that a likelihood of confusion exists between the figurative sign applied for BLACK LABEL by equivalenza and the figurative mark LABELL: average degree of visual conformity; average degree of phonetic conformity; conceptual difference not such as to neutralise similarity; average distinctiveness; average attention level of the relevant audience; identical goods; presence of the terms “black” and “by equivalenza” not sufficient to exclude likelihood of confusion. 


IPPT20200304, CJEU, Burlington v Burlington Arcade

The General Court erred in law by rejecting an opposition brought under Article 8(5) of the Union Trade Mark Regulation on the ground that there was no evidence of a reduction in the 'attractiveness' of the earlier marks: the article ensures protection for (i) detriment to the distinctive character of the earlier trade mark, (ii) detriment to the repute of that mark and (iii) unfair advantage taken of the distinctive character or the repute of that mark, with the ambiguous reference by the General Court to a possible reduction in the ‘attractiveness’ of the earlier trade marks cannot confirm beyond all doubt that it did in fact verified the existence of one of those three infringements. The General Court erred in law by determining that any  precise statement of the goods which may be sold in the various shops comprising a shopping arcade precluded any association between those shops and the goods of the mark applied for: in Praktiker (IPPT20050707), it was held that the applicant should be required to specify the goods or types of goods to which those services relate, the present case does not concern the protection of trade marks registered at the date of that judgement’s delivery like the trade marks in casu, it cannot be inferred from the judgement in Praktiker that ground of opposition ex article 8(1)(b) of the Union Trade Mark Regulation may be rejected from the outset, simply by invoking the absence of any precise statement of the goods to which the retail services covered by the earlier trade mark may relate.


IPPT20200227, CJEU, Fack Ju Gothe

Court was not allowed to judge that the mark ‘Fack Ju Gothe’ is contrary to the principles of morality on the basis of Article 7(1)(f) EU Trade Mark Regulation solely on the intrinsically vulgar character of that English phrase: a contrast with the principles of morality requires that the trade mark is contrary with the fundamental moral values and standards of society prevailing in that society at the time of the assessment, the examination must be based on the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered and the particular circumstances, such as legislation and administrative practices, public opinion and the way in which the relevant public has reacted in the past to that sign or similar signs, the fact that it is that mark itself which is to be examined does not mean that, in the course of that examination, contextual elements capable of shedding light on how the relevant public perceives that mark– like the fact that the word sign ‘Fack Ju Göhte’ corresponds to a successful comedy produced by the appellant, the fact title does not appear to have caused controversy, the fact that access to it by young people had been authorised and that the Goethe Institute uses it for educational purposes – could be disregarded, freedom of expression is also relevant in trade mark law. EUIPO has failed to demonstrate to the requisite legal standard that the mark is contrary to the principles of morality: the contextual factors consistently indicate that the title of the comedies was not perceived as morally unacceptable by the German-speaking public at large, no concrete evidence has been put forward plausibly to explain why the public perceive the word sign as going against the fundamental moral values and standards of society when it is used as a trade mark.


IPPT20200130, CJEU, Generics v Competition and Markets Authority

Article 101 TFEU. To assess whether a manufacturer of generic medicines that is not present in the market is a potential competitor of a manufacturer of originator medicines when the agreement at issue has the effect of temporarily keeping an undertaking outside a market first it must be determined whether the manufacturer of generic medicines had taken sufficient preparatory steps to enable it to enter the market concerned within such a period of time as would impose competitive pressure on the manufacturer of originator medicines, secondly it must be determined that the market entry of such a manufacturer of generic medicines does not meet barriers to entry that are insurmountable, existence of a patent as such cannot be regarded as an insurmountable barrier, because validity can be challenged. The finding that a manufacturer of generic medicines has a firm intention and an inherent ability to enter the market without there being insurmountable barriers can be confirmed by additional factors: an agreement between undertakings operating at same level in production chain, some of which had no presence in the market concerned, constitutes a strong indication that a competitive relationship existed between them, intention by manufacturer of originator medicines and acted upon to make transfers of value to manufacturer of generic medicines in exchange of postponement of latter’s market entry, even though the former claims the latter is infringing one or more of its process patents, the greater the transfer of value, the stronger the indication. A settlement agreement, with regard to pending court proceedings between a manufacturer of originator medicines and a manufacturer of generic medicines, who are potential competitors, concerning whether the process patent held by that manufacturer of originator medicines is valid and whether a generic version of that medicine infringes that patent has as its object the prevention, restriction or distortion of competition: when it is clear from the analysis of the settlement agreement concerned that the transfers of value provided for by it cannot have any explanation other than the commercial interest of both parties not to engage in competition on the merits, such transfers of value may involve indirect transfers resulting from profits to be obtained from a distribution contract concluded with the manufacturer of originator medicines enabling the generic manufacturer to sell a possibly defined quota of generic medicines manufactured by the manufacturer of originator medicines. A “restriction by object” cannot be rebutted by the fact that the agreement does not exceed the period of validity of the patent the fact that there is uncertainty about the validity of the patent. There is no “restriction by object” when the settlement agreement concerned is accompanied by proven pro‑competitive effects capable of giving rise to a reasonable doubt that it causes a sufficient degree of harm to competition. If a settlement agreement is to be demonstrated to have appreciable potential or real effects on competition and therefore has to be characterized as a “restriction by effect”, that does not presuppose a finding that, in the absence of that agreement, either the manufacturer of generic medicines who is a party to that agreement would probably have been successful in the proceedings relating to the process patent at issue, or the parties to that agreement would probably have concluded a less restrictive settlement agreement. Article 102 TFEU. To define the product market in a situation where a manufacturer of originator medicines covered by a process patent, the validity of which is disputed, impedes, on the basis of that process patent, the market entry of generic versions of that medicine not only the originator version of that medicine need to be taken into account, but also its generic versions, even if the latter would not be able to enter legally the market before the expiry of that process patent, if the manufacturers concerned of generic medicines are in a position to present themselves within a short period on the market concerned with sufficient strength to constitute a serious counterbalance to the manufacturer of originator medicines already on that market, which it is for the referring court to determine. Dominant undertaking that is the holder of a process patent for the production of an active ingredient that is in the public domain, which leads it to conclude, either as a precautionary measure, or following the bringing of court proceedings challenging the validity of that patent, a set of settlement agreements which have, at the least, the effect of keeping temporarily outside the market potential competitors who manufacture generic medicines using that active ingredient, constitutes an abuse of a dominant position within the meaning of Article 102 TFEU, provided that that strategy has the capacity to restrict competition and, in particular, to have exclusionary effects, going beyond the specific anticompetitive effects of each of the settlement agreements that are part of that strategy, which it is for the referring court to determine.


IPPT201200129, CJEU, Sky v Skykick

A Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision: the lack of clarity and precision of the terms used to designate the goods and services covered by the registration of a Community trade mark is no part of the exhaustive list of the absolute grounds for invalidity, the lack of clarity and precision of the terms does not fall within the scope of the requirement of graphic representability and cannot be considered contrary to public policy. A trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark: bad faith of the trade mark applicant cannot be presumed on the basis of the mere finding that, at the time of filing his or her application, the applicant had no economic activity corresponding to the goods and services referred to in that application. When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services.