No surprise as pharma repackaging rulings rush through

The labels on the box never troubled the IPKat,
but the contents sometimes caused surprise ...

Not every case which is bound for the Court of Justice of the European Union for a preliminary ruling takes forever.  The two cases noted here, Joined Cases C‑400/09 and C‑207/10, Orifarm v Merck Sharpe & Dohme; Paranova v Merck Sharp & Dohme, sped through in pretty good time.  One was referred in October 2009, attracting a ruling in substantially less than two years, while the other hurtled past the judges' noses at almost the speed of light, having been referred as recently as April 2010.  Speedy cases aren't usually the sign of an efficient court, though: they're an indication that the questions referred for a reference were too easy to spend a lot of time on -- as is the case here.

In Case C‑400/09 pharma giant Merck made trade mark-protected medicinal products which Orifarm imported in parallel on to the Danish market by the Orifarm group. Orifarm and another company, Handelsselskabet, held the authorisations to market and sell those medicinal products, while Orifarm Supply and Ompakningsselskabet, which carried out the repackaging, held authorisations to do so. All decisions concerning the purchase, repackaging and sale of these products, including decisions relating to the design of the new packagings and their labelling, were taken by Orifarm or Handelsselskabet. Ompakningsselskabet and Orifarm Supply bought and repackaged the medicinal products, assuming liability for compliance with the requirements for repackagers laid down by the Danish Medicinal Products Agency. The packaging of the products indicated that they had been repackaged by Orifarm or Handelsselskabet, as the case may be.

Merck sued Orifarm, Handelsselskabet and Ompakningsselskabet, on the ground that the name of the actual repackager did not appear on the packaging of the products. The trial court agreed that the defendants had infringed Merck’s trade mark rights by failing to indicate on the packaging the name of the undertaking which had actually performed the repackaging, ordering them to pay damages. The defendants appealed to the Danish Supreme Court, which decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling:

‘(1) The Court of Justice is requested to clarify whether [Bristol-Myers Squibb and Others and MPA Pharma --earlier ECJ decisions] are to be interpreted as meaning that a parallel importer which is the holder of the marketing authorisation for, and possesses information on, a medicinal product imported in parallel, and which issues instructions to a separate undertaking for the purchase and repackaging of a medicinal product, for the detailed design of the product’s packaging and for arrangements in relation to the product, infringes the rights of the trade mark proprietor by indicating itself – and not the separate undertaking which holds the repackaging authorisation, has imported the product and has carried out the physical repackaging, including (re)affixing of the trade mark proprietor’s trade mark – as the repackager on the outer packaging of the medicinal product imported in parallel. 

(2) The Court of Justice is requested to clarify whether it is of significance in answering Question 1 that an assumption might be made that, where the marketing authorisation holder indicates itself as the repackager instead of the undertaking which physically carried out the repackaging to order, there is no risk that the consumer/end user might be misled into assuming that the trade mark proprietor is responsible for the repackaging. 

(3) The Court of Justice is requested to clarify whether it is of significance in answering Question 1 that an assumption might be made that the risk of misleading the consumer/end user into assuming that the trade mark proprietor is responsible for the repackaging is excluded if the undertaking which physically carried out the repackaging is indicated as being the repackager. 

(4) The Court of Justice is requested to clarify whether it is only the risk that the consumer/end user might be misled into assuming that the trade mark proprietor is responsible for the repackaging which is of significance in answering Question 1, or whether other considerations regarding the trade mark proprietor are also relevant, for example 

(a) that the entity which undertakes the importation and physical repackaging and (re)affixes the trade mark proprietor’s trade mark on the product’s outer packaging potentially on its own account infringes the trade mark proprietor’s trade mark by so doing, and 

(b) that it may be due to factors for which the entity that physically carried out the repackaging is responsible that the repackaging affects the original condition of the product or that the presentation of the repackaging is of such a kind that it must be assumed to harm the trade mark proprietor’s reputation (see, inter alia, … Bristol-Myers Squibb and Others …). 

(5) The Court of Justice is requested to clarify whether it is of significance in answering Question 1 that the holder of the marketing authorisation, which has indicated itself as being the repackager, at the time of the notification of the trade mark proprietor prior to the intended sale of the parallel imported medicinal product once repackaged, belongs to the same group as the actual repackager (sister company).’

In Case C‑207/10 much the same thing happened, but the same court referred slightly different questions:

‘(1) Are Article 7(2) of [Directive 89/104] and the associated case-law, in particular the judgments of the Court of Justice in … Hoffmann-La Roche … and … Pfizer … and … Bristol-Myers Squibb and Others … to be interpreted as meaning that a trade mark proprietor may rely on these provisions in order to prevent a parallel importer’s marketing company, which is the holder of a marketing authorisation for a medicinal product in a Member State, from selling that product with an indication that the product is repackaged by the marketing company, although the marketing company has the physical repackaging carried out by another company, the repackaging company, to which the marketing company gives instructions for the purchasing and repackaging of the product, for the detailed design of the product’s packaging and for other arrangements in relation to the product, and which holds the repackaging authorisation and reaffixes the trade mark on the new package in the course of repackaging? 

(2) Is it of significance in answering Question 1 that an assumption might be made that the consumer or end-user is not misled with regard to the origin of the product and will not be led to believe that the trade mark proprietor is responsible for the repackaging through the indication by the parallel importer of the manufacturer’s name on the packaging along with the indication as described of the undertaking responsible for the repackaging? 

(3) Is it only the risk that the consumer or end-user might be misled into assuming that the trade mark proprietor is responsible for the repackaging which is of significance in answering Question 1, or are other considerations regarding the trade mark proprietor also relevant, for example 

(a) that the entity which in fact undertakes the purchasing and repackaging and reaffixes the trade mark proprietor’s trade mark on the product’s packaging thereby potentially infringes independently the trade mark proprietor’s trade mark rights, and that that may be due to factors for which the entity that physically carried out the repackaging is responsible, 

(b) that the repackaging affects the original condition of the product, or 

(c) that the presentation of the repackaged product is of such a kind that it may be assumed to harm the trade mark or its proprietor’s reputation? 

(4) If, in answering Question 3, the Court finds that it is also relevant to take account of the fact that the repackaging company potentially infringes independently the trade mark rights of the trade mark proprietor, the Court is asked to indicate whether it is of significance to this answer that the marketing company and repackaging company of the parallel importer are jointly and severally liable under national law for the infringement of the trade mark proprietor’s trade mark rights. 

(5) Is it of significance in answering Question 1 that the parallel importer which holds the marketing authorisation and has indicated itself as being responsible for repackaging, at the time of the notification of the trade mark proprietor prior to the intended sale of the repackaged medicinal product, belongs to the same group as the company which undertook the repackaging (sister company)? 

(6) Is it of significance in answering Question 1 that the repackaging company is indicated as the manufacturer in the package leaflet?’

What with all these questions, some readers might have been expecting a lengthy set of answers -- but not this Kat. He knew they'd be short and sweet:

"Article 7(2) of First Council Directive 89/104 ... must be interpreted as not allowing the proprietor of a trade mark relating to a pharmaceutical product which is the subject of parallel imports to oppose the further marketing of that product in repackaged form on the sole ground that the new packaging indicates as the repackager not the undertaking which, on instructions, actually repackaged the product and holds an authorisation to do so, but the undertaking which holds the marketing authorisation for the product, on whose instructions the repackaging was carried out, and which assumes liability for the repackaging".

In other words, never mind the technicalities as to whose name appears on the packaging -- look at the reality. The trade mark owner's interest in preserving the integrity of its trade marks is unaffected and the consumer is not threatened or misled,  End of story.

Fair compensation for private copying: ECJ says someone has to pay ...

Even if you feel you're being fleeced by having
to pay for private copying, they'll get you in the end ...

Today's the day the Court of Justice of the European Union gave judgment in Case C-462/09 Stichting de Thuiskopie v Opus Supplies Deutschland GmbH, Mijndert van der Lee and Hananja van der Lee, a reference for a preliminary ruling from the Hoge Raad der Nederlanden (the Dutch Supreme Court).

What was the cause of this reference? As the Court explained, Article 16c(1) of the Dutch copyright law made an exception in its national law in favour of copying for private use. However, Article 16(2) adds that a maker or importer of an item used for reproduction [once upon a time this used to be mainly tape recording equipment and photocopiers, but the recent wave of convergence will soon have us taking photos with our toothbrushes ...] has to pay a private copying levy. Stichting de Thuiskopie is the Dutch body responsible for recovering the private copying levy, while Opus -- a German company -- sells blank media online via Dutch-language websites that target Netherlands consumers. Opus's business model was bound to annoy copyright owners:

" The contract of sale established by Opus provides that, where a Netherlands consumer makes an order online, that order is processed in Germany and the goods are delivered from Germany to the Netherlands, on behalf of and in the name of the customer, by a carrier, that carrier however in fact being engaged by Opus. 

Opus does not pay a private copying levy in respect of the media delivered to its customers in the Netherlands, either in that Member State or in Germany.  ...[T]he cost of the reproduction media thus sold by Opus does not include the private copying levy".

Arguing that Opus had to be regarded as the ‘importer’ and, consequently, responsible for paying the private copying levy, the Stichting sued for payment of that levy. Opus denied liability, saying it couldn't be classified as an importer into the Netherlands of the reproduction media which it sold and that it was individual Dutch consumers who must be classified as importers. The trial court and first appellate court agreed with Opus, following which the Stichting appealed to the Hoge Raad. What an interesting dispute, said the Hoge Raaders and decided to pose the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does [the InfoSoc] Directive [2001/29], in particular Article 5(2)(b) and (5) thereof [which allow EU Member States to make exceptions to copyright in exchange for "fair compensation"], provide any assistance in determining who should be regarded under national law as owing the “fair compensation” referred to in Article 5(2)(b)? If so, what assistance does it provide? 

(2) In a case of distance selling in which the buyer is established in a different Member State to that of the seller, does Article 5(5) of Directive [2001/29] require national law to be interpreted so broadly that a person owing the “fair compensation” referred to in Article 5(2)(b) of the directive who is acting on a commercial basis owes such compensation in at least one of the Member States involved in the distance selling?’

The Court ruled today as follows:

"1. Directive 2001/29 ..., in particular Article 5(2)(b) and (5) thereof, must be interpreted as meaning that the final user who carries out, on a private basis, the reproduction of a protected work must, in principle, be regarded as the person responsible for paying the fair compensation provided for in Article 5(2)(b) [i.e. not Opus but its customers]. 

However, it is open to the Member States to establish a private copying levy chargeable to the persons who make reproduction equipment, devices and media available to that final user [so the Dutch can make Opus pay ...], since they are able to pass on the amount of that levy in the price paid by the final user for that service [... and Opus can then charge more]. 

2. Directive 2001/29, in particular Article 5(2)(b) and (5) thereof, must be interpreted as meaning that it is for the Member State which has introduced a system of private copying levies chargeable to the manufacturer or importer of media for reproduction of protected works, and on the territory of which the harm caused to authors by the use for private purposes of their work by purchasers who reside there occurs, to ensure that those authors actually receive the fair compensation intended to compensate them for that harm [this can be more or less inferred from the text of the Directive, but it would have been easier and clearer if the Directive had simply said "Member States must ensure that any fair compensation is received by the author ..." or some such formula]. In that regard, the mere fact that the commercial seller of reproduction equipment, devices and media is established in a Member State other than that in which the purchasers reside has no bearing on that obligation [i.e. the obligation of the Member State to ensure that authors get paid] to achieve a certain result. It is for the national court, where it is impossible to ensure recovery of the fair compensation from the purchasers, to interpret national law in order to allow recovery of that compensation from the person responsible for payment who is acting on a commercial basis."

The IPKat wonders if the duty of the Member State to ensure that authors receive their entitlement is one of those things that is relatively easy to impose in principle but less easy to implement in practice. Where media for the reproduction of protected works enter a country by post in an innocuous little padded envelope, sent from a vendor based in inconveniently distant EU Member State where things are, well, a little more informal than they are in the Netherlands, the identification of both vendor and purchaser and the quantification of the number of levy-payable transactions may prove difficult.

What the world says: 
"Thuiskopieheffing ook op blanco cd's uit buitenland" here
"Los estados deben garantizar siempre el cobro del canon en su territorio" here
"Diritto d'autore: per la Corte di Giustizia, i Paesi Ue che prevedono l’eccezione per copia privata devono garantire l’equo compenso: La sentenza stabilisce che bisogna riscuoterlo anche se il venditore si trova in un altro Stato membro" here
"Sheep on house roof in Pontycymmer escapes unhurt" here

WEB SHIPPING ruling: CTM injunctions both are and aren't pan-European

This morning the Court of Justice gave its ruling in Case C-235/09, DHL Express France SAS (formerly DHL International SA) v Chronopost SA, a case which the IPKat suspects will be greatly discussed, analysed, applied and indeed misapplied in years to come.

Web shipping, or clipper art?

The facts were quite straightforward. Chronopost owned both French and Community trade marks for the sign WEBSHIPPING, for, inter alia, "services relating to: logistics and data transmission; telecommunications; transport by road; collecting mail, newspaper and parcels; and express mail management". DHL, a competitor, had used the signs WEB SHIPPING, Web Shipping and/or Webshipping to designate its own online-accessible express mail management service. Chronopost sued DHL for trade mark infringement before the Tribunal de grande instance de Paris, a Community trade mark court. The court held DHL liable for infringing Chronopost's French mark, but did not adjudicate on infringement of the Community trade mark. Following an appeal, the Cour d’appel de Paris prohibited DHL from continuing to use Chronopost's French and Community trade marks, also ordering a periodic penalty payment if the injunction were breached.

DHL's appeal to the Cour de cassation was dismissed, but that court heard the cross-appeal of Chronopost in which it submitted that the Cour d’appel judgment was contrary to Articles 1 and 98 of Community Trade Mark Regulation 40/94 (CTMR) in so far as the prohibition against further infringement of the Community trade mark WEBSHIPPING, subject to a periodic penalty payment, did not explicitly extend to the entire area of the European Union.  According to the Cour de cassation, since the judgment did not contain any operative words expressly relating to the application to extend the prohibition issued by that court to the entire area of the European Union, it must be construed as applying only to French territory. However, since it had doubts as to its interpretation of Article 98 of the CTMR, the Cour de cassation decided to stay proceedings and to refer the following questions for a preliminary ruling:

"1. Must Article 98 ... be interpreted as meaning that the prohibition issued by a Community trade mark court has effect as a matter of law throughout the entire area of the [European Union]?

2. If not, is that court entitled to apply specifically that prohibition to the territories of other States in which the acts of infringement are committed or threatened?

3. In either case, are the coercive measures which the court, by application of its national law, has attached to the prohibition issued by it applicable within the territories of the Member States in which that prohibition would have effect?

4. In the contrary case, may that court order such a coercive measure, similar to or different from that which it adopts pursuant to its national law, by application of the national laws of the States in which that prohibition would have effect?"

In answer to these questions, the Court ruled thus:

"1. Article 98(1) ... must be interpreted as meaning that the scope of the prohibition against further infringement or threatened infringement of a Community trade mark, issued by a Community trade mark court whose jurisdiction is based on Articles 93(1) to (4) and 94(1) of that regulation, extends, as a rule, to the entire area of the European Union. [see comment below]

2. Article 98(1), second sentence, ...  must be interpreted as meaning that a coercive measure, such as a periodic penalty payment, ordered by a Community trade mark court by application of its national law, in order to ensure compliance with a prohibition against further infringement or threatened infringement which it has issued, has effect in Member States to which the territorial scope of such a prohibition extends other than the Member State of that court, under the conditions laid down, in Chapter III of Council Regulation ... 44/2001 ... on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, with regard to the recognition and enforcement of judgments. Where the national law of one of those other Member States does not contain a coercive measure similar to that ordered by the Community trade mark court, the objective pursued by that measure must be attained by the competent court of that other Member State by having recourse to the relevant provisions of its national law which are such as to ensure that the prohibition is complied with in an equivalent manner". [This should be fun in terms of compliance. EU Regulations are directly applicable in national law, but courts may not find that their national law lets them make up equivalent relief all by themselves.  Article 11 of the IP Enforcement Directive makes recurrent payments optional, but the effect of this ruling is to make them compulsory in these circumstances even if they are not available to local litigants]

Essentially, what the court said was that, since the jurisdiction of Community trade mark courts is pan-European and the scope of Community trade marks is pan-European, in principle an order made by a Community trade mark court in respect of a Community trade mark is pan-European too -- even though infringement of a Community trade mark is governed in each country's Community trade mark court by the national law relating to infringement of a national trade mark.  There are two exceptions to this. One is where the plaintiff only asks for partial relief.  Also, in paras 46 to 48:

"... The exclusive right of a Community trade mark proprietor, as provided for under Article 9(1) of Regulation No 40/94, is conferred in order to enable that proprietor to protect his specific interests as such, that is, to ensure that the trade mark is able to fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark (see, to that effect, Joined Cases C-236/08 to C‑238/08 Google France and Google [2010] ECR I-0000, paragraph 75 and the case-law cited)

It follows ... that the exclusive right of a Community trade mark proprietor and, hence, the territorial scope of that right, may not extend beyond what that right allows its proprietor to do in order to protect his trade mark, that is, to prohibit only uses which are liable to affect the functions of the trade mark. The acts or future acts of a defendant (namely the person whose use of the Community trade mark is complained of) which do not affect the functions of the Community trade mark, cannot therefore be prohibited".

Accordingly, if a Community trade mark court ... finds that the acts of infringement or threatened infringement of a Community trade mark are limited to a single Member State or to part of the territory of the European Union ... because the defendant proves that the use of the sign at issue does not affect or is not liable to affect the functions of the trade mark, for example on linguistic grounds, that court must limit the territorial scope of the prohibition which it issues. [Does this mean that where, on account of phonetic and conceptual similarity that exists in some EU states but not others, an injunction to prohibit use of a mark similar to a CTM cannot be prohibited in countries in which no likelihood of confusion exists, since that cannot affect the functions of the CTM?  Or does it mean that functions other than the "essential function" of indicating identity of origin have to be invoked in order to retain the pan-EU nature of the injunction?]

Merpel notes para.42 of the ruling:

"The unitary character of the Community trade mark is also apparent from the fifteenth and sixteenth recitals in the preamble to Regulation No 40/94. These state, first, that the effects of decisions regarding the validity and infringement of Community trade marks must cover the entire area of the European Union, in order to prevent inconsistent decisions on the part of the courts and OHIM and to ensure that the unitary character of Community trade marks is not undermined, and, second, that contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought on the basis of a Community trade mark and parallel national trade marks. ".

This would appear to suggest that the court did not intend anything it said about the unitary character of the Community trade mark to point to its likely position on "genuine use" of a Community trade mark in only part of the EU.

Global dispute with only local significance

"Where there's life ... there's Bud" --
but who, or what, is Bud in Europe?

Every few weeks there seems to be another giant-sized decision in the Battle of the Buds -- and here's the next installment: Case C 96/09 P Anheuser-Busch, Inc. v Budějovický Budvar, a ruling of the Court of Justice of the European Union (ECJ), delivered dew-fresh and delicious all the way from Luxembourg.

In this particular version of the battle of the two breweries for the heart and soul of Budweiser beer, Anheuser-Busch applied to register four Community trade marks (CTMs). The first was a figurative mark featuring the word Bud for goods in Classes 16, 21, 25 and 32. The other three applications were in respect of the word mark Bud, in Classes 32 (beers), 33 (alcoholic beverages), 35 (setting up databases, gathering data and information in databases), 38 (telecommunications, ie making available and supplying data and information, supplying and communicating information stored in databases), 41 (education, entertainment) and 42 (restaurant, bar and pub services; operating a database).

Budvar opposed, citing the following alleged prior rights: (i) a figurative Bud mark effective for ‘all types of light and dark beer’, in Austria, Benelux and Italy; (ii) the appellation of origin ‘Bud’, registered under the Lisbon Agreement in respect of beer, and effective in France, Italy and Portugal; (iii) an Austrian appellation of origin ‘Bud’ protected in Austria under a bilateral convention with the former state of Czechoslovakia.
The Opposition Division partially upheld Budvar’s opposition, in respect of ‘restaurant, bar and pub services’ covered by Anheuser-Busch’s fourth application. All other grounds of opposition were dismissed. The Opposition Division considered that Budvar had proved that it had a right to the appellation of origin ‘Bud’ in France, Italy and Portugal, though in relation to Italy and Portugal the arguments put forward by Budvar were not sufficiently specific to determine the scope of its protection under national law. It found that the ‘restaurant, bar and pub services’ covered by one of the applications were similar to the ‘beer’ covered by the appellation of origin ‘Bud’, there being a likelihood of confusion given that the signs concerned were identical. However, in respect of the other goods, and in the context of the applicable French law, Budvar had failed to demonstrate how the use of the mark applied for was likely to weaken or undermine the reputation of the appellation of origin concerned, when the goods covered were different.

Both parties appealed. The Board of Appeal dismissed all Budvar’s appeals but allowed that of Anheuser-Busch. It considered that Budvar no longer appeared to refer to its international figurative mark as the basis of its opposition, but solely to the appellation of origin ‘Bud’. It was however difficult to see how ‘Bud’ could be considered to be an appellation (or designation) of origin, or even an indirect indication of geographical origin. The Board also held that the evidence provided by Budvar to show use of the appellation of origin ‘Bud’ in Austria, France, Italy and Portugal was insufficient. Thirdly, it held that Budvar had not demonstrated that the appellation of origin gave it the right to prohibit use of the word ‘Bud’ as a trade mark in Austria or France.
Budvar appealed to the Court of First Instance (now the General Court), contending that (i) the sign BUD could be considered to be an appellation of origin, and (ii) the conditions of Article 8(4) of Regulation 40/94, in relation to an opposition based on the existence of an earlier non-registered mark of more than purely local significance, were satisfied. The Court of First Instance allowed the appeal.

In reaching its decision the Court of First Instance found that ‘Bud’ could be considered to be an appellation of origin and that it was protected under the Lisbon Agreement, and that the validity of a national mark may not be called into question in proceedings for registration of a CTM: when the contested decisions were adopted, the effects of the appellation of origin ‘Bud’ had not been declared invalid in France by a decision against which there was no appeal. Accordingly the Board of Appeal did not have the power to call into question the fact that the claimed earlier right was an appellation of origin. At most it could have suspended the opposition proceedings until a final judgment on the matter was delivered. The Court also found that the appellation ‘Bud’ remained protected under the bilateral convention, was still effective following the break-up of the Czechoslovak Socialist Republic.

The Court then upheld Budvar’s appeal in relation to the use in the course of trade of a sign of more than mere local significance. The Board of Appeal was wrong in law to apply, by analogy, the provisions of Community law relating to the ‘genuine’ use of an earlier trade mark. In the present context, an opposing party need only show that a sign had been used in the context of a commercial activity with a view to economic advantage. Subject to this, an appellation of origin registered under the Lisbon Agreement could not be deemed to have become generic. In any event, such appellations might enjoy protection in a particular territory even though they are only used in another territory.

On the facts, the Court held, Budvar had provided proof that the signs concerned were used in the course of trade and it was unnecessary to show that the signs were used prior to the contested CTM applications. At most, Budvar only had to show that the signs were used before publication of the trade mark applications in the Community Trade Marks Bulletin. The documents Budvar relied on were sufficient proof of use of the word ‘Bud’ even though they referred to a product on which the word ‘Bud’ was always accompanied by ‘strong’ or ‘super strong’.

In the context of an opposition based on the use in the course of trade of a sign of more than mere local significance, the Court held that it was sufficient for the sign to be used in the course of trade: the fact that it was identical to a trade mark did not mean that it was not used in the course of trade. Moreover, OHIM and Anheuser-Busch did not clearly specify how the sign ‘Bud’ had been used ‘as a trade mark’. There was no evidence that the expression ‘Bud’, displayed on the goods in question, referred to the commercial origin of the products more than to its geographical origin.

The word ‘significance’ in the formula “more than mere local significance” referred to the geographical extent of a sign’s protection: the Board of Appeal therefore erred in law when, as regards France, it linked proof of use of the sign concerned to the requirement that the right concerned must have a significance which is not merely local.

The Court then reviewed the effect and significance of litigation between the same parties and concerning the same sign in various national jurisdictions. The Court considered that those decisions were not binding upon it and that It was not conclusive that Budvar had not been able to prevent Anheuser-Busch’s distributor from selling beer in France under the Bud trade mark since, under Article 8(4), the opposing party does not need to establish that he has in fact already been able to prohibit use of a subsequent mark, but only that he has such a right available to him.

Anheuser-Busch then appealed to the ECJ.  Advocate General Cruz Villalón advised the ECJ to allow the appeal and remit the case to the General Court. Why? In particular he considered that (i) the requirement of ‘use in the course of trade’ in Article 8(4) is, like the other requirements in that provision, an independent concept which warrants its own interpretation; (ii) it is relevant to argue that an opponent relying on Article 8(4) has used the invoked sign as a trade mark rather than for the purpose of indicating the geographical origin of a product; (iii) for the purposes of Article 8(4) the use of the opponent’s sign must, where appropriate, be proved before the date of filing, rather than at any time up to the date of publication, of the opposed application for registration (iv) the judgment under appeal supplied an interpretation which was excessively literal and which adhered too closely to the wording of Article 8(4).

This morning the Court of Justice accepted the advice of the Advocate General, set aside the judgment of the (now) General Court which, it said, made three errors of law, and remitted the case for further consideration by that Court. The judgment has only just been posted on the Curia website and, at 221 paragraphs, will take some time to read, but the non-binding press release says:

" ... the General Court was incorrect in holding that it was sufficient, for the purpose of establishing that the sign ‘bud’ was of more than mere local significance, that the sign was protected in a number of States. The Court of Justice notes, in that regard, that, even if the geographical extent of the protection of the sign concerned is more than local, registration of a Community trade mark may be prevented only when the sign is actually used in a sufficiently significant manner in the course of trade in a substantial part of the territory in which it is protected. Use in the course of trade must also be assessed separately for each of the territories in which the sign is protected. 

Next, ... the General Court also made an error in holding that the Regulation did not require the sign ‘bud’ to have been used in the territory in which it is protected and that use in a territory other than the territory of protection may be sufficient to prevent registration of a new trade mark, even where there is no use at all in the territory of protection. In that connection, ...it is only in the territory in which the sign protected, in its entirety or in a part of it, that the exclusive rights attached to the sign may enter into conflict with a Community trade mark.

Finally, ... in holding that it had to be shown only that the sign concerned was used in the course of trade before publication of the trade mark application and not, at the latest, as at the date of the application, the General Court made a further error of law. In view, in particular, of the considerable period of time which may elapse between the filing of an application and its publication, applying the test relating to the date of the application provides a better guarantee that the use claimed for the sign concerned is real and not an exercise whose sole aim has been to prevent registration of a new trade mark. Furthermore, as a general rule, where the sign concerned is used exclusively or to a large extent during the period between filing of the application for a Community trade mark and publication of the application, that will not be sufficient to establish that the use of the sign in the course of trade has been such as to prove that the sign is of sufficient significance. 

The Court of Justice, while rejecting the other grounds of appeal raised by Anheuser-Busch, sets aside in part the judgment of the General Court in so far as the judgment makes the three errors of law thus found. Since the state of the proceedings does not permit final judgment to be given by the Court of Justice, the latter refers the case back to the General Court to give judgment afresh".

The IPKat was rather expecting this.  Though he has a tendency to prefer the sort of literalism that the General Court employed, he believes that the ECJ's ruling is more in line with the legislative intent than was that of the inferior court.  Merpel adds, the first of Anheuser-Busch's four applications was filed on 1 April 1996.  It's almost 15 years to the day later, and we still have the prospect of a rehearing by the General Court which itself is subject to a possible -- and in the case of these two parties highly likely -- further appeal to the ECJ.  Is there truly no better path to Community trade mark registration?

The Right of the Living Dead? Italians can't kill zombie copyright, says ECJ

Arco, or a good Chinese copy ...

The principle of the protection of legitimate expectations is not one which often gets an airing on this weblog, or in any other intellectual property blog for that matter, but it was in the news today in Case C‑168/09 Flos SpA v Semeraro Casa e Famiglia SpA, a reference to the European Court of Justice for a preliminary ruling from the Tribunale di Milano (Italy).

Briefly stated, this reference is all about this: if a work is protected by a design right which has died, but the law subsequently clarifies that that work is now protected by copyright, what effect does its sojourn in the land of dead IP rights have upon liability for copyright infringement when it returns as a zombie, now protected as a copyright work? It originated from an action which Flos brought against Semeraro in the following circumstances.  Said Flos, Semeraro had imported from China and marketed in Italy a lamp called the ‘Fluida’ lamp which, it said, imitated all the stylistic and aesthetic features of Flos's own Arco lamp. In interim proceedings the court found that the Arco lamp, which was created in 1962 and entered the public domain before 19 April 2001, was nonetheless eligible for copyright protection as an industrial design under Italian Law No 633/1941, as amended by Legislative Decree No 95/2001, and that the lamp imported by Semeraro slavishly imitated all its stylistic and aesthetic features. The Fluida imported lamps were confiscated and Semeraro was ordered to stop marketing them.

Semeraro

After these proceedings commenced, Italy changed its law on copyright protection for industrial designs but there was some doubt as to whether the new law actually conforms with Directive 98/71 (the Designs Directive) and, more specifically, with the principle of cumulation of protection established by Ar:ticle 17 of that directive ("A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State").  At the heart of the matter was a rather generous moratorium period of ten years in favour of otherwise-infringers in respect of their use of former public domain works. The referring court stopped the proceedings there and then, to ask the ECJ:

‘1. Must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a … law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

2. If the answer to the first question is in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State?

3. If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive [98/71] be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which – albeit meeting the requirements for protection laid down in copyright law – fell to be regarded as having entered the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party – without authorisation from the holder of the copyright on such designs – has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?’

Today the ECJ ruled as follows:

"1. Article 17 ... must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright protection.[i.e. Article 17 won't let Italy refuse copyright protection to ex-design-protected works that still fit the conditions for copyright protection]

2. Article 17 of Directive 98/71 must be interpreted as precluding legislation of a Member State which – either for a substantial period of 10 years or completely – excludes from copyright protection designs which, although they meet all the requirements to be eligible for copyright protection, entered the public domain before the date of entry into force of that legislation, that being the case with regard to any third party who has manufactured or marketed products based on such designs in that State – irrespective of the date on which those acts were performed". [i.e. Article 17 won't let Italy ban or suspend copyright protection for the benefit of anyone who relied on the fact that the work was once in the public domain]

On the principle of the protection of legitimate expectations the Court had this to say:

"51 ... in accordance with the principle that amending legislation applies, except where otherwise provided, to the future consequences of situations which arose under the law as it stood before amendment ..., acts performed before the date of entry into force of new legislation continue to be governed by the previous law. Thus, the revival of copyright protection has no effect on acts of exploitation definitively performed by a third party before the date on which such rights became applicable.

52 Conversely, by virtue of that principle, the fact that copyright protection applies with regard to the future consequences of situations which are not definitively settled means that it has an effect on a third party’s rights to continue the exploitation of subject-matter which is protected afresh by an intellectual property right (see, to that effect, Butterfly Music, paragraph 24).

53 It should also be recalled that it is settled case-law that the principle of the protection of legitimate expectations cannot be extended to the point of generally preventing new rules from applying to the future consequences of situations which arose under the earlier rules ...

55 As regards ... the legislative measure providing for a transitional period in relation to a specific category of third parties with a view to protecting their legitimate interests, it follows from the principle that acquired rights must be respected and from the principle of the protection of legitimate expectations that Article 17 of Directive 98/71 does not preclude such a measure, provided that the measure does not have the effect of deferring for a substantial period the application of the new rules on copyright protection for designs so as to prevent them from applying on the date laid down by that directive ...

56 In that regard, the assessment of the compatibility of the length of that transitional period and of the category of third parties covered by the legislative measure must be carried out in the light of the principle of proportionality.

57 Accordingly, the legislative measure adopted by the Member State concerned must be appropriate for attaining the objective pursued by the national law and necessary for that purpose – namely ensuring that a balance is struck between, on the one hand, the acquired rights and legitimate expectations of the third parties concerned and, on the other, the interests of the rightholders. Care must also be taken to make sure that the measure does not go beyond what is needed to ensure that that balance is struck.

58 For that purpose, the measure may be regarded as appropriate only if it is directed at a category of third parties entitled to rely on the principle of protection of legitimate expectations – that is to say, persons who have already performed acts of exploitation in relation to designs within the public domain at the date of entry into force of the legislation transposing Article 17 of Directive 98/71 into the domestic law of the Member State concerned.

59 Furthermore, the legislative measure should ensure that the period of use of the designs by those third parties is limited to what is necessary for them to phase out the part of their business that is based on earlier use of those designs or to clear their stock.

60 The measure does not go beyond what is necessary to ensure that a balance is struck between the competing rights if it does not defer entitlement to copyright protection for a substantial period.

61 In this instance, as regards the definition of the category of third parties as against whom it is provided that copyright protection is for a temporary period to be unenforceable, Legislative Decree No 95/2001 and Article 239 of the IPC may be regarded as appropriate since they are directed solely at persons who acquired their rights before the entry into force of the national measures transposing Directive 98/71.

62 Conversely, unenforceability for a transitional period of 10 years does not appear to be justified by the need to safeguard the economic interests of third parties acting in good faith, since it is apparent that a shorter period would also allow the part of their business that is based on earlier use of those designs to be phased out and, even more so, their stock to be cleared.

63 Furthermore, a 10-year moratorium in respect of copyright protection appears to go beyond what is necessary, since, by taking 10 years off the period during which a work is protected (as a rule 70 years after the death of the author), the application of copyright protection is deferred for a substantial period.

64 As regards, in the second place, Article 4(4) of Decree Law No 10 of 15 February 2007, abolishing the moratorium and rendering copyright protection unenforceable for an indefinite period in the case of products manufactured on the basis of designs which were in the public domain before 19 April 2001, it follows from the foregoing that such a measure negates Article 17 of Directive 98/71, since it has the effect of preventing, generally, the application of the new protection, that is to say, protection relating to copyright. Nor does that measure seek to restrict the category of third parties who may rely on the principle of the protection of legitimate expectations. On the contrary, the measure renders copyright more generally unenforceable, since, under the provision, it is not necessary for a third party to have begun exploiting the designs before 19 April 2001".

Quite right, says the IPKat -- though he is still trying to get his furry little brain around the interrelationship of the principle of the protection of legitimate expectations with the doctrine of proportionality.  Merpel adds, it might be fun to measure some earlier ECJ intellectual property rulings against the protection of legitimate expectations ...

Resurrection of copyright here
Revival of copyright here

Court upholds Dutch claim to Bavaria

Solving the name problem is
the easy bit: but how can I get
the top off the bottle?

Fancy a beer? You can ask for a 'Bavaria' and be sure of getting ... a brew of Dutch origins. The decision in Case C-120/08, Bavaria NV v  Bayerischer Brauerbund eV, a reference to the Court of Justice of the European Union for a preliminary from the German Bundesgerichtshof, was posted yesterday on the Curia website.

In short the Brauerbund, "a German association with the objective of protecting the common interests of Bavarian brewers", owns the registered collective trade marks ‘Genuine Bavarian Beer’ (since 1958), ‘Bayrisch Bier’ and ‘Bayerisches Bier’ (since 1968), and ‘Reinheitsgebot seit 1516 Bayrisches Bier’ (since 1985). Bavaria, a Dutch brewer which trades internationally, began using the word ‘Bavaria’ in 1925, this word being incorporated into its name in 1930. Bavaria owns several registered trade marks and figurative elements containing the word ‘Bavaria’. The registration dates include 1947, 1971, 1982, 1991, 1992 and 1995. Protection in Germany of some of those trade marks was refused in 1973, 1992 and 1993.

‘Bayerisches Bier’ (the German term for 'Bavarian beer') was covered by bilateral agreements on the protection of indications of provenance, designations of origin and other geographic names between Germany and the French Republic (1961), the Italian Republic (1963), the Hellenic Republic (1964), the Swiss Confederation (1967) and the Kingdom of Spain (1970) -- but not The Netherlands.

In September 1993 the Brauerbund, in agreement with two other Bavarian associations, submitted to the German Government an application for registration of a Protected Geographical Indication (PGI) under Article 17(1) of Regulation No 2081/92. In January 1994 the German Government informed the Commission of the application for registration of ‘Bayerisches Bier’ as a PGI in accordance with the simplified procedure under that provision.  Following some correspondence, the application was finalised in May 1997 but the final version of the specification wasn't sent to the Commission until March 2000.

The Brauerbund eventually applied to the Landgericht München for an order requiring Bavaria to agree to renounce the protection of its international trade mark, protected in Germany with priority from April 1995 and consisting of the word 'Bavaria'. That court's decision to allow this application was upheld on appeal by the Oberlandesgericht München.  Bavaria's appeal on a point of law to the Bundesgerichtshof was stayed, pending the reference to the Court of Justice of the following questions for a preliminary ruling:

‘1. Does Article 14(1) of Regulation … 510/2006 apply in the case where the protected indication has been validly registered in accordance with the simplified procedure under Article 17 of Regulation … No 2081/92 …?

2. (a) If the answer to Question 1 is in the affirmative, what date should be taken as the basis for determining the classification in time of the protected geographical indication for the purposes of Article 14(1) of Regulation … 510/2006?

(b) If the answer to Question 1 is in the negative, what provision governs the conflict between a geographical indication validly registered in accordance with the simplified procedure under Article 17 of Regulation … 2081/92 and a trade mark, and what determines the classification in time of the protected geographical indication?

3. May the national provisions on the protection of geographical designations be applied in the event that the indication “Bayerisches Bier” fulfils the conditions for registration under Regulation … 2081/92 and Regulation …  510/2006, but Regulation … 1347/2001 [which registered 'Bayerisches Bier' as a PGI] is invalid?’

This reference was itself stayed pending delivery of the judgment in Case C‑343/07 Bavaria and Bavaria Italia [in which the Court ruled that Bavaria could keep its Bavaria trade mark in Italy: see IPKat note here]. The Advocate General in this case then gave an Opinion which was fairly pro-Bavaria in its substance [see earlier IPKat note here].  But what would the Court itself say? Now we know:

"Article 14(1) of Council Regulation ... 2081/92 ... is applicable for resolving the conflict between a name validly registered as a protected geographical indication in accordance with the simplified procedure under Article 17 of that regulation and a trade mark corresponding to one of the situations referred to in Article 13 of that regulation relating to the same type of product, the application for registration of which was submitted both before the registration of that name and before the entry into force of Council Regulation ... 692/2003 ... amending Regulation ... 2081/92. The date of the entry into force of the registration of that name constitutes the reference date for the purposes of Article 14(1) of Regulation ... 2081/92.".

The IPKat is delighted with this decision, which he considers to be entirely correct.

See reports in Deutsche Welle here, PR Newswire here

Padawan v SGAE: more detail

The IPKat's previous post broke the news that the Court of Justice of the European Union's ruling Case C‑467/08, Padawan SL v Sociedad General de Autores y Editores de España (SGAE) had just been uploaded on to the Curia website. This post says a little more about it.

Under Article 2 of Directive 2001/29 (the Information Society Directive) requires EU Member States to provide for copyright and related rights owners to enjoy the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part, of their works, fixations of performances, phonograms, films and fixations of broadcasts. Article 5(2)(b) of the same Directive 2001/29 states that:

‘Member States may provide for exceptions or limitations to the reproduction right provided for in Article 2 in the following cases: …

(b) in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned’.

Under Article 5(5) of the same Directive

‘The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder.’

Article 6(4) (‘Obligations as to technological measures’) sheds further light on Article 5 as follows:

‘4. Notwithstanding the legal protection provided for in paragraph 1, in the absence of voluntary measures taken by rightholders, including agreements between rightholders and other parties concerned, Member States shall take appropriate measures to ensure that rightholders make available to the beneficiary of an exception or limitation provided for in national law in accordance with Article 5(2)(a), (2)(c), (2)(d), (2)(e), (3)(a), (3)(b) or (3)(e) the means of benefiting from that exception or limitation, to the extent necessary to benefit from that exception or limitation and where that beneficiary has legal access to the protected work or subject-matter concerned.

A Member State may also take such measures in respect of a beneficiary of an exception or limitation provided for in accordance with Article 5(2)(b), unless reproduction for private use has already been made possible by rightholders to the extent necessary to benefit from the exception or limitation concerned and in accordance with the provisions of Article 5(2)(b) and (5), without preventing rightholders from adopting adequate measures regarding the number of reproductions in accordance with these provisions.

SGAE is a body which is responsible for the collective management of intellectual property rights in Spain, while Padawan sells CD-Rs, CD-RWs, DVD-Rs and MP3 players. SGAE claimed payment from Padawan of the ‘private copying levy’ provided for in Article 25 of the Spanish IP Law for 2002 to 2004. Padawan refused, saying that the application of that levy to digital media, indiscriminately and regardless of the purpose for which they were intended (private use or other professional or commercial activities), was incompatible with Directive 2001/29. In June 2007 the trial court upheld SGAE’s claim and ordered Padawan to pay.

Padawan appealed to the Audiencia Provincial de Barcelona, which stayed its proceedings and referred the following questions to the Court for a preliminary ruling:

‘1. Does the concept of “fair compensation” in Article 5(2)(b) ... entail harmonisation, irrespective of the Member States’ right to choose the system of collection which they deem appropriate for the purposes of giving effect to the right to fair compensation of intellectual property rightholders affected by the adoption of the private copying exception or limitation?

2. Regardless of the system used by each Member State to calculate fair compensation, must that system ensure a fair balance between the persons affected, the intellectual property rightholders affected by the private copying exception, to whom the compensation is owed, on the one hand, and the persons directly or indirectly liable to pay the compensation, on the other, and is that balance determined by the reason for the fair compensation, which is to mitigate the harm arising from the private copying exception?

3. Where a Member State opts for a system of charging or levying in respect of digital reproduction equipment, devices and media, in accordance with the aim pursued by Article 5(2)(b) ... and the context of that provision, must that charge (the fair compensation for private copying) necessarily be linked to the presumed use of those equipment and media for making reproductions covered by the private copying exception, with the result that the application of the charge would be justified where it may be presumed that the digital reproduction equipment, devices and media are to be used for private copying, but not otherwise?

4. If a Member State adopts a private copying “levy” system, is the indiscriminate application of that “levy” to undertakings and professional persons who clearly purchase digital reproduction devices and media for purposes other than private copying compatible with the concept of “fair compensation”?

5. Might the system adopted by the Spanish State of applying the private copying levy indiscriminately to all digital reproduction equipment, devices and media infringe Directive 2001/29, in so far as there is insufficient correlation between the fair compensation and the limitation of the private copying right justifying it, because to a large extent it is applied to different situations in which the limitation of rights justifying the compensation does not exist?’

The Court of Justice has just ruled as follows:

"1. The concept of ‘fair compensation’, within the meaning of Article 5(2)(b) ...  is an autonomous concept of European Union law which must be interpreted uniformly in all the Member States that have introduced a private copying exception, irrespective of the power conferred on the Member States to determine, within the limits imposed by European Union law in particular by that directive, the form, detailed arrangements for financing and collection, and the level of that fair compensation.

A copy--- but is it a private copy?

2. Article 5(2)(b) ... must be interpreted as meaning that the ‘fair balance’ between the persons concerned means that fair compensation must be calculated on the basis of the criterion of the harm caused to authors of protected works by the introduction of the private copying exception. It is consistent with the requirements of that ‘fair balance’ to provide that persons who have digital reproduction equipment, devices and media and who on that basis, in law or in fact, make that equipment available to private users or provide them with copying services are the persons liable to finance the fair compensation, inasmuch as they are able to pass on to private users the actual burden of financing it.

3. Article 5(2)(b) ... must be interpreted as meaning that a link is necessary between the application of the levy intended to finance fair compensation with respect to digital reproduction equipment, devices and media and the deemed use of them for the purposes of private copying. Consequently, the indiscriminate application of the private copying levy, in particular with respect to digital reproduction equipment, devices and media not made available to private users and clearly reserved for uses other than private copying, is incompatible with Directive 2001/29".

In reaching its decision the Court added

"36 ... although it is open to the Member States, pursuant to Article 5(2)(b) ..., to introduce a private copying exception to the author’s exclusive reproduction right ..., those Member States which make use of that option must provide for the payment of fair compensation to authors affected by the application of that exception.  An interpretation according to which Member States which have introduced an identical exception of that kind ... including ... the concept of ‘fair compensation’ as an essential element, are free to determine the limits in an inconsistent and un-harmonised manner which may vary from one Member State to another, would be incompatible with the objective of that directive ...".

"44 Copying by natural persons acting in a private capacity must be regarded as an act likely to cause harm to the author of the work concerned.

45 It follows that the person who has caused harm to the holder of the exclusive reproduction right is the person who, for his own private use, reproduces a protected work without seeking prior authorisation from the rightholder. Therefore, in principle, it is for that person to make good the harm related to that copying by financing the compensation which will be paid to the rightholder.

46 However, given the practical difficulties in identifying private users and obliging them to compensate rightholders for the harm caused to them, and bearing in mind the fact that the harm which may arise from each private use, considered separately, may be minimal and therefore does not give rise to an obligation for payment, ... it is open to the Member States to establish a ‘private copying levy’ for the purposes of financing fair compensation chargeable not to the private persons concerned, but to those who have the digital reproduction equipment, devices and media and who, on that basis, in law or in fact, make that equipment available to private users or who provide copying services for them. Under such a system, it is the persons having that equipment who must discharge the private copying levy".

The IPKat suspects that this decision will spark off a lot of public debate about the rights and wrongs of private copying (now officially described by Europe's leading court as "harmful" and about the development of new models for a private copying levy which targets only those whom it should target -- if this should turn out to be both feasible and legal.

BREAKING NEWS: Padawan v SGAE ruling just out

He hasn't time to read this decision till tonight, but the IPKat is sharing with you the news that's just out on the Curia website: the ruling of the Third Chamber of the Court of Justice of the European Union this morning in Case C‑467/08, Padawan SL v Sociedad General de Autores y Editores de España (SGAE), a reference for a preliminary ruling from the Audiencia Provincial de Barcelona (Spain).

In short, the Barcelona court asked the Court of Justice the following questions:

‘1. Does the concept of “fair compensation” in Article 5(2)(b) of Directive 2001/29/EC entail harmonisation, irrespective of the Member States’ right to choose the system of collection which they deem appropriate for the purposes of giving effect to the right to fair compensation of intellectual property rightholders affected by the adoption of the private copying exception or limitation?

2. Regardless of the system used by each Member State to calculate fair compensation, must that system ensure a fair balance between the persons affected, the intellectual property rightholders affected by the private copying exception, to whom the compensation is owed, on the one hand, and the persons directly or indirectly liable to pay the compensation, on the other, and is that balance determined by the reason for the fair compensation, which is to mitigate the harm arising from the private copying exception?

3. Where a Member State opts for a system of charging or levying in respect of digital reproduction equipment, devices and media, in accordance with the aim pursued by Article 5(2)(b) of Directive 2001/29 and the context of that provision, must that charge (the fair compensation for private copying) necessarily be linked to the presumed use of those equipment and media for making reproductions covered by the private copying exception, with the result that the application of the charge would be justified where it may be presumed that the digital reproduction equipment, devices and media are to be used for private copying, but not otherwise?

4. If a Member State adopts a private copying ‘levy’ system, is the indiscriminate application of that ‘levy’ to undertakings and professional persons who clearly purchase digital reproduction devices and media for purposes other than private copying compatible with the concept of ‘fair compensation’?

5. Might the system adopted by the Spanish State of applying the private copying levy indiscriminately to all digital reproduction equipment, devices and media infringe Directive 2001/29, in so far as there is insufficient correlation between the fair compensation and the limitation of the private copying right justifying it, because to a large extent it is applied to different situations in which the limitation of rights justifying the compensation does not exist?’

The Court of Justice has just ruled as follows:

"1. The concept of ‘fair compensation’, within the meaning of Article 5(2)(b) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, is an autonomous concept of European Union law which must be interpreted uniformly in all the Member States that have introduced a private copying exception, irrespective of the power conferred on the Member States to determine, within the limits imposed by European Union law in particular by that directive, the form, detailed arrangements for financing and collection, and the level of that fair compensation.

2. Article 5(2)(b) of Directive 2001/29 must be interpreted as meaning that the ‘fair balance’ between the persons concerned means that fair compensation must be calculated on the basis of the criterion of the harm caused to authors of protected works by the introduction of the private copying exception. It is consistent with the requirements of that ‘fair balance’ to provide that persons who have digital reproduction equipment, devices and media and who on that basis, in laworin fact, make that equipment available to private users or provide them with copying services are the persons liable to finance the fair compensation, inasmuch as they are able to pass on to private users the actual burden of financing it.

3. Article 5(2)(b) of Directive 2001/29 must be interpreted as meaning that a link is necessary between the application of the levy intended to finance fair compensation with respect to digital reproduction equipment, devices and media and the deemed use of them for the purposes of private copying. Consequently, the indiscriminate application of the private copying levy, in particular with respect to digital reproduction equipment, devices and media not made available to private users and clearly reserved for uses other than private copying, is incompatible with Directive 2001/29".

The Kat's comments will follow in due course -- but readers don't have to wait for him to do so before making their own observations.

Inbev loses Budweiser CTM appeal

Just when the IPKat thought it was safe to redirect his lynx-like ears away from Luxembourg and towards the ball-by-ball commentary on the cricket match between England and Pakistan, the Court of Justice -- which has been quite quiet over the past few days -- sputtered into life again with a ruling in Case C‑214/09 P, Anheuser-Busch Inc. v Office for Harmonisation in the Internal Market, Budějovický Budvar, národní podnik, the final appeal in a minor part of the larger and apparently eternal war between the formerly American Budweiser (now European-ly Belgian) and its Czech mate Budvar.

In its ruling the Court of Justice, affirming the decision of the Court of First Instance in March 2009 (noted here), said AB Inbev (the AB being 'Anheuser-Busch') was not entitled to register the word BUDWEISER as a Community trade mark for ‘beer, ale, porter, malted alcoholic and non‑alcoholic beverages’ in Class 32. The original application, filed on 1 April 1996 (the day the Community trade mark system commenced), was opposed by Budvar on the basis of (i) its earlier international word mark BUDWEISER, registered for ‘beer of any kind’, with effect in Germany, Austria, Benelux and Italy; (ii) an international figurative mark including the words ‘Budweiser Budvar’, registered for ‘malt’ and ‘beer’, with effect in Austria, Benelux, France and Italy; (iii) an international figurative mark including the words ‘Budweiser Budvar’, registered for ‘beers’, with effect in Germany, Austria, Benelux, France and Italy, and (iv) on a number of appellations of origin including the word ‘Budweiser’.

The Court of Justice today agreed that Budvar's earlier rights to the name in Germany and Austria, where genuine use was sufficiently evidenced, were a sufficient basis upon which to base a successful opposition. AB Inbev still holds trade mark rights for the words BUD or BUDWEISER in 23 of the 27 EU countries, and this decision has no effect on them.

The Court also clarified a legal-procedural issue (at para.69), ruling that the lower court did not err in law (i) when it held that OHIM was entitled to require proof that an earlier mark had been renewed, where that mark was due to expire after the notice of opposition was filed and (ii) when it held that an opposing party was not required to provide such proof on its own initiative.

Campaign for real ale here

Sources: Court of Justice ruling; press release from Stephanie Bodoni (Bloomberg).

Becker match goes to a fifth set

It's a few weeks since this duel was decided, and even more than a week since this year's Wimbledon tennis tournament came to its close -- and anxious readers are still emailing the IPKat daily to ask him "Whatever happened to former tennis legend Boris Becker?" Becker's court of choice this time was not Wimbledon's Centre Court, but Luxembourg's rather less exciting Court of Justice of the European Union. The first of these courts is famous for setting the pulse racing; in the latter court, the pulse is scarcely detectable.

The duel in question was Case C-51/09 P Barbara Becker v Harman International Industries, Inc., Office for Harmonisation in the Internal Market, an appeal to the Fourth Chamber of the Court of Justice from the General Court.

In November 2002 Barbara Becker -- former wife of well-known former tennis player Boris Becker -- applied to register as a Community trade mark the words BARBARA BECKER for a variety of goods, including cash registers and calculating machines, in Class 9. Harman, a company that looks after Boris Becker's interests, opposed, citing its earlier Community word marks BECKER ONLINE PRO and BECKER for goods in the same Class. The grounds of opposition were that, under Article 8(1)(b) of the Community Trade Mark Regulation, on account of the similarity of the marks and the identity or similarity of the respective goods, there was a likelihood of confusion, and that, under Article 8(5) of the same Regulation, use of Barbara's mark, without due cause, would be detrimental to the reputation or distinctive character of Harman's marks or take unfair advantage of their reputation.

The first set went to Boris since the Opposition Division accepted that there was a likelihood of confusion and held for Harman: the goods designated by two marks were identical and the marks were similar, having an average degree of visual and phonetic similarity and being conceptually identical since they referred to the same surname. The second set went to Barbara, though, when the Board of Appeal held in her favour. Holding that the goods designated by the respective marks were partly identical and partly similar, the Board then compared the earlier word mark BECKER and the mark BARBARA BECKER. In its view, visually and phonetically there was only some degree of similarity between those signs; however, conceptually the signs were clearly distinct in Germany and in other countries of the European Union since the relevant public would perceive the mark BARBARA BECKER in its entirety, rather than as a combination of ‘Barbara’ and ‘Becker’. What's more, Barbara Becker was actually famous in her own right in Germany, and ‘Becker’ was a very common surname. Accordingly the differences between the two signs were significant enough to eliminate any likelihood of confusion. For good measure, the Board added that the opposition under Article 8(5) also failed: if the marks weren't similar for Article 8(1)(b) purposes, they weren't similar for Article 8(5) purposes either.

Boris took the third set when the General Court upheld Harman's challenge to the dismissal of its opposition under Article 8(1)(b). In the view of the Court, the Board had wrongly concluded that the marks were clearly distinct and was wrong to assess the relative importance of the component ‘Becker’ as compared with the component ‘Barbara’. In reaching its decision the General Court observed that

* case law had stated that, at least in Italy, consumers generally attributed greater distinctiveness to the surname than to the forename making up a trade mark, so that the surname ‘Becker’ was likely to have attributed to it a stronger distinctive character than the first name ‘Barbara’ in the composite mark;

* the fact that Barbara was famous in Germany as the former wife of Boris did not mean that, conceptually, the marks at issue were not similar: the two marks referred to the same surname and were therefore similar, especially since in a part of the European Union the component ‘Becker’ in the mark BARBARA BECKER was, as a surname, likely to have attributed to it a stronger distinctive character than the component ‘Barbara’, which is simply a first name;

* the component ‘Becker’, even if it was not the dominant component of the composite mark, would be perceived as a surname, which is commonly used to describe a person, and would retain an independent distinctive role in that mark;

* the finding that there existed a likelihood of confusion was not invalidated by the argument that a composite mark and another mark can be considered to be similar only if the common component constitutes the dominant component in the overall impression created by the composite mark; nor could it be maintained that the case-law on composite marks was not applicable in the present case because the mark BARBARA BECKER consisted of a first name and a surname.

On 24 June Barbara squared the match at 2-2 when the Court of Justice of the European Union, allowing her appeal, set aside the decision of the General Court and remitted the opposition to the General Court for the final set. According to the Court of Justice

* while it is possible that, in any given part of the European Union, surnames have a more distinctive character than forenames, it is appropriate to take account of factors specific to the case and, in particular, to the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character. That is true of the surname ‘Becker’ which is common;

* account must also be taken of whether an applicant who applies to register his or her first name and surname, taken together, as a trade mark is well known, since that factor may obviously influence the perception of the mark by the relevant public;

* in a composite mark, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. The finding with respect to such a role may be based only on an examination of all the relevant factors of each case;

* the General Court therefore erred in law in basing its assessment of the conceptual similarity of the marks on general considerations taken from EU case-law without analysing all the relevant factors specific to the case, in disregard of the requirement of an overall assessment of the likelihood of confusion, taking account of all factors relevant to the circumstances of the case, and based on the overall impression produced by the marks at issue.

The IPKat notes with approval the observation by the Court that, if the grounds relied on by the General Court in order to conclude that the marks in this case were conceptually similar were consistent with Article 8(1)(b), the result would be that any surname which constitutes an earlier mark could be effectively relied on to oppose registration of any mark composed of a first name and that surname, even though, for example, the surname was common or the addition of the first name would have an effect, from a conceptual point of view, on the perception by the relevant public of the composite mark.

Merpel adds, ex-wife, cash registers, calculating machines ... no comment.

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