2022
Print this pageIPPT20221222, CJEU, Louboutin v Amazon
Infringing use of a trade mark 9(2)(a) Regulation 2017/1001. The operator of an online sales website incorporating, as well as that operator’s own sales offerings, an online marketplace may be regarded as itself using an EU trade mark where third-party sellers offer for sale, on that marketplace, without the consent of the proprietor of that trade mark, such goods bearing that sign, if a well-informed and reasonably observant user of that site establishes a link between the services of that operator and the sign at issue, which is in particular the case where, in view of all the circumstances of the situation in question, such a user may have the impression that that operator itself is marketing, in its own name and on its own account, the goods bearing that sign.
IPPT20221117, CJEU, Merck Sharp & Dohme v Abacus
EU Trade mark. Exhaustion of the rights conferred by a trade mark. Parallel import of medicinal products. Repackaging of the product bearing the mark. New outer packaging. Anti-tampering device.
IPPT20221117, CJEU, Bayer v kohlpharma
EU Trade mark. Exhaustion of the rights conferred by a trade mark. Parallel import of medicinal products. Repackaging of the product bearing the mark. New outer packaging.
IPPT20221117, CJEU, Novartis Pharma v Abacus Medicine
EU Trade mark. Exhaustion of the rights conferred by a trade mark. Parallel import of medicinal products. Repackaging of the product bearing the mark. New outer packaging.
IPPT20221117, CJEU, Harman v AB
EU law cannot preclude a judicial practice according to which the operative part of a decision upholding an action for infringement of an EU trade mark is drafted in general terms. Provided that the defendant enjoys the effective judicial protection of the rights that it derives from Articles 34 and 36 TFEU and Article 15(1) of Regulation 2017/1001.
IPPT20221027, CJEU, SodaStream v MySoda
Exhaustion. No valid reason for trade mark proprietor to oppose further marketing of goods intended to be reused and refilled several times when the reseller has replaced the original trade mark with new labelling while leaving the original trade mark visible on those goods, provided that the new labelling does not give consumers the false impression that there is an economic connection between the reseller and the trade mark owner. The risk of confusion must be assessed globally on the basis of indications on the goods and the new labelling, as well as against the background of distribution practices in the sector concerned and the extent to which consumers are aware of these practices.
IPPT20221013, CJEU, Perfumesco.pl v Procter & Gamble
Article 10(1) of Directive 2004/48 (Enforcement Directive) does not preclude protective measure applied to goods to which an EU trade mark has been affixed, with the consent of the proprietor of that mark, but which were placed on the market of the EEA without his or her consent: article 10 of Enforcement Directive covers all goods found to be infringing intellectual property rights, without excluding a priori the application of the corrective measure of destruction. Trade mark rights fall within scope of Enforcement Directive. It is for the competent national judicial authorities to determine on a case-by-case basis the measure which, among those laid down in Article 10(1) of Directive 2004/48, may be imposed.
Collective management organisations entrusted with exemptions from payment and reimbursements must grant this in accordance with objective criteria which do not allow that legal person to refuse an application on the basis of considerations and the decisions of that legal person refusing such an application may be challenged before an independent body. National legislation which provides that exemption certificates in respect of compensation for private copying and reimbursements must be granted in good time on the basis of objective criteria which do not entail any discretion on the part of the person competent to examine applications submitted for that purpose is, in principle, capable of complying regards the requirements arising from Article 5(2)(b) of the directive. In order to avoid any risk of bias on the part of such a legal person in the grant of exemption certificates and reimbursements it must be possible to challenge the decisions of that legal person refusing to grant such a certificate or reimbursement before an independent body, whether judicial or otherwise. Collective management organisations may request access to the information necessary for the exercise of the powers of review. In so far as the information in question is confidential, the legal person and the management organisations which become aware of such information in the context of their duties are required to safeguard the confidential nature of that information.
IEPT20220908, CJEU, RTL Television
The right of retransmission by cable is not an exclusive right for broadcasting organisations to authorise or prohibit retransmission by cable within the meaning of Article 8 of Directive 93/83 provision. The exclusive right to authorise or prohibit the communication to the public of broadcasters' broadcasts can be relied on against third parties only where that communication takes place in places accessible to the public against payment of an entrance fee. Retransmission by cable does not include simultaneous, unaltered and integral transmission of television or radio programmes broadcast by satellite and intended for reception by the public. Applicable only to the relationship between holders of copyright and related rights and "cable operators" in the traditional sense of the term.
IPPT20220707, CJEU, Fennia v Philips
Trade mark proprietor as producer liable for brand products pursuant to the Product Liability Directive. That Article 3(1) of Directive 85/374 must be interpreted as meaning that the concept of ‘producer’, referred to in that provision, does not require that the person who has put his name, trade mark or other distinguishing feature on the product, or who has authorised those particulars to be put on the product, also present himself as the producer of that product in some other way.Liability for defective products and the concept of 'producer': Any person who presents himself as the producer by affixing his name, trade mark or other distinguishing mark to the product, or has authorized such affixing. No further requirements for producer presentation needed.
Earlier right applying in a particular locality vs later trade mark. In order to be enforceable against the proprietor of a subsequent trade mark, it is sufficient, in principle, that the earlier right which only applies in a particular locality, such as a trade name, is recognised by the laws of the Member State in question and that it is used in the course of trade. There is no requirement that the proprietor of that right must be able to prohibit the use of the later mark by the proprietor of that mark. Earlier right vs even earlier right . An ‘earlier right’ within the meaning of that provision may be granted to a third party in a situation in which the proprietor of the later trade mark has an even earlier right recognised by the laws of the Member State in question over the sign registered as a trade mark, to the extent that, under those laws, the proprietor of the trade mark and of the even earlier right may no longer, on the basis of its even earlier right, prohibit the use by the third party of its more recent right.
IPPT20220519, CJEU, Heitec v Heitech Promotion
No interruption of the period of limitation or stop acquiescence by an act, such as a warning letter, by which the proprietor of an earlier mark or other earlier right opposes the use of a later mark without taking the necessary steps to obtain a legally binding solution. No interruption of the period of limitation by the bringing of a court action in which the proprietor of an earlier mark or other earlier right sought a declaration of invalidity of a later mark or opposed the use of that mark, where the application initiating proceedings, although filed before the date of expiry of the period of limitation, did not, owing to a lack of diligence on the part of the applicant, satisfy the requirements of the applicable national law for service and was rectified only after that date for reasons attributable to the applicant. Limitation in consequence of acquiescence is also time-barred from bringing ancillary or related claims, such as claims for damages, the provision of information or the destruction of goods.
IPPT20220428, CJEU, Phoenix Contact v Harting
It is not allowed to dismiss interim relief for patent infringement where the validity of the patent in question has not been confirmed by a decision given in opposition or invalidity proceedings. Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.
IPPT20220324,CJEU, Austro-Mechana v Strato
The expression ‘reproductions on any medium’, referred to in that provision, covers the saving for private purposes by the provider of a cloud computing service. National legislation that does not make the providers of storage services in the context of cloud computing subject to the payment of fair compensation is not precluded, in so far as that legislation provides for the payment of fair compensation to the rightholders.
IPPT20220310, CJEU, Maxxus v Globus
Burden of proof for genuine use within the meaning of Article 19 Directive (EU) 2015/2436 Trade Marks Directive 2015 rests on the trade mark proprietor. Burden of proof does not constitute a procedural provision within the competence of the Member States. The same legal protection in all Member States is fundamental. Article 19 Trade Marks Directive 2015 precludes a procedural rule of a Member State according to which, in revocation proceedings for non-use of a trade mark, the applicant is required to carry out a market research on the possible use of that trade mark by the proprietor and to substantiated submissions in support of its application.
IPPT20220303, CJEU, Acacia v BMW
Community court of Member State where (threatened) infringement takes place by offering for sale and delivery in advertising (not cross-border) competent (Article 82(5) CD-Regulation): such acts may be the subject of an action for infringement which targets, in accordance with Article 82(5) of Regulation No 6/2002, a single Member State. The fact that the defendant took decisions and steps in another Member State to bring about those acts does not preclude such an action from being brought (see, by analogy, judgment of 5 September 2019, AMS Neve and Others, C‑172/18, EU:C:2019:674, paragraph 65). Applicable law ancillary claims: law of Member State where (threatened) infringement occurs ("lex loci delicti") applicable to claims for destruction of infringing products ("other appropriate sanction", Article 89(1)(5) CD-Regulation). Law of that Member State applicable to claims for compensation and for the provision of (accounting) information and documents ("lex fori")("matters not regulated by the Regulation", Article 88(2) CD-Regulation). If (imminent) infringement takes place on the territory of one Member State, the law of that Member State shall be the law applicable in accordance with Article 8(2) Rome II.
IPPT20220426, CJEU, Poland v European Parliament and Council
By its action, Poland, asks to annul the obligations imposed on online content-sharing service providers. The prior automatic review (filtering) of content uploaded by users) has been accompanied by appropriate safeguards by the EU legislature.
