Hours and minutes: the Advocate General speaks

The Court of Justice of the European Union is being kept very busy by intellectual property matters these days. Today's batch of Curia posts includes the Advocate General's Opinion in Case C‑190/10 Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (GENESIS) v Boys Toys SA and Administración del Estado, a reference for a preliminary ruling from Spain.

The question has been published in English:

"May Article 27 of Council Regulation ...40/94 ... on the Community trade mark be interpreted in such a way as to enable account to be taken not only of the day but also of the hour and minute of filing of an application for registration of a Community trade mark with OHIM (provided that such information has been recorded) for the purposes of establishing temporal priority over a national trade mark application filed on the same day, where the national legislation governing the registration of national trade marks considers the time of filing to be relevant?".

The AG's Opinion alas, is in a smattering of Euro-tongues, including Latvian -- but again not in English. The French version reads like this:

«En l’état actuel du droit de l’Union, l’article 27 du règlement (CE) nº 40/94 du Conseil, du 20 décembre 1993, sur la marque communautaire, exclut qu’il soit tenu compte, au‑delà du jour de dépôt de la demande de la marque communautaire, également de l’heure et de la minute dudit dépôt.»

With the aid of Google's translation service this reads:

"In the current EU law, Article 27 of Regulation (EC) No 40/94 of 20 December 1993, the CTM, it does not take into account beyond the date of filing of the CTM, also an hour and minute of that deposit".

We get the message.  Merpel adds, this was no easy question, it seems.  The AG needed nearly 80 paragraphs and over 40 footnotes ...

No abuse, no answers: AG gives Budweiser's dirty tricks a clean bill of health

Amazing! Having turned the magician into
a little red ball, the rabbit then proceeded
to make the Budvar trade mark vanish ...

The moment he said he'd go pop if there was anything else coming from the Court of Justice of the European Union today, the IPKat realised that the fates were bound to conspire against him. Well, here's another whopping great Opinion from the Court, this time from Advocate General Trstenjak, in Case C‑482/09 Budějovický Budvar, národní podnik v Anheuser-Busch, Inc., on a reference from the Chancery Division, England and Wales.

The facts in the case leading to this reference for a preliminary ruling can be found here, in an earlier IPKat post. The casus belli is a dirty trick played by Anheuser-Busch on Budějovický Budvar, národní podnik, applying for a declaration of invalidity of the latter's mark, which was concurrently valid with its own, just one day before the expiry of the five-year period of acquiescence and when Budějovický Budvar had no opportunity to respond to it.

The questions relate to the issue of whether the trick in question was legal under the harmonised European Union trade mark law, not whether it was dirty, and focused on the interpretation of the words of Article 4(1)(a) of the Council Directive 89/104 on the approximation of trade mark laws:

"Further grounds for refusal or invalidity concerning conflicts with earlier rights

‘1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; ...".

The Advocate General has advised the Court today that it doesn't need to answer the questions, since neither the retroactive application of Article 4(1)(a) nor its application from the date of entry into force of the directive are possible in the main proceedings. Accordingly,

"... in a case such as that at issue in the main proceedings, it must be decided in accordance with national law [and not Article 4(1)(a)] whether the proprietor of an earlier trade mark may apply for a mark to be refused registration or, if registered, to be declared invalid even where there has been long-established honest concurrent use of those marks for identical goods". [This is the Europeanese for "Good luck, boys, from now you're on your own!"]

The IPKat, noting the identity of the warring parties, doesn't think that we will have heard the last of this dispute, even once the Court gives its ruling.  Merpel is fascinated with what the AG had to say about abuse of right:

"121. The submissions of the Czech and Slovak Governments must be understood as arguing that, in their opinion, the abuse of the right under Article 4(1)(a) of the directive lies in AB’s making the application for a declaration of the invalidity of the trade mark ‘Budweiser’ registered for BB one day before the expiry of the five-year period of acquiescence, thereby depriving BB of the possibility of defending itself against the application. I find that argument unconvincing, as it rests on the questionable basic assumption that the acquiescing party is to be prevented from making full use of the period specified in Article 9(1), out of consideration for another party who, generally unlawfully, is using an identical mark. But the right-holder must be conceded the right to apply the rules of substantive and procedural law in the way that is most to his advantage without laying himself open to an accusation of abuse of rights.

122. Regardless of the question already considered in detail of whether the coexistence of the two marks on the basis of the doctrine of honest concurrent use recognised in national law is permissible under European Union law, this argument must therefore be countered by stating that it must be possible in principle for an action which is necessary for complying with a time-limit to be done up to the end of the last day. That corresponds both to the principles of the procedural laws of the European Union and its Member States and to the objectives of the directive. The expectation of the proprietor of the later mark that he will be able to use it free from objection by the proprietor of the earlier mark is already adequately protected by the fact that European Union law provides for limitation of rights to occur on the expiry of the five-year period of acquiescence. Until that period has expired, the proprietor of the later mark must be prepared for the other proprietor to take countermeasures at any time. The determination of a fixed time-limit of five years, as already explained, promotes legal certainty and effectively protects both parties by creating legal stability. To prevent the proprietor of the earlier mark from asserting his rights under Article 4(1)(a) of the directive one day before expiry of the five-year period of acquiescence would ultimately amount to calling into question the validity of that provision. Blurring the fixed time-limit on considerate grounds, as the Czech and Slovak Governments envisage, would be detrimental to the principle of legal certainty and thus not within the intention of the legislature. Their argument must therefore be rejected.

123. Consequently, no abuse of the right under Article 4(1)(a) of the directive may be seen in the fact that the application by AB for a declaration of invalidity of the later mark was made one day before the expiry of the five-year period of acquiescence".

Merpel remains unconvinced. Of course Anheuser-Busch is legally entitled to do what it did -- but the result is what we Kats, laymen, peasants and fools call an abuse.  Only erudite and sophisticated judges are unable to see this.

Faking it, or beyond suspicion? Counterfeits in transit

"Should we let him in? Are there
 grounds for suspecting that
 he's not the real Advocate General .."

If there's much more breaking news today, the IPKat will go pop, but the Opinion of Advocate General Cruz Villalon has just been published on Curia in Joined Cases C‑446/09 Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd, Far East Sourcing Ltd, Röhlig Hong Kong Ltd and Röhlig Belgium NV and C‑495/09 Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs. The first is a reference from Belgium, the second from England and Wales.

In Philips the Antwerp investigations inspectorate of the Belgian Customs and Excise Administration detained a consignment of shavers from Shanghai, wihch they suspected of infringing Philips's intellectual property rights. The customs authorities sent Philips a photograph of the ‘Golden Shaver’ and informed it that the following companies were involved in the manufacture of or trade in the detained shavers: Lucheng Meijing Industrial Company Ltd, a Chinese manufacturer of shavers; Far East Sourcing Ltd, established in Hong Kong, the shipper of the goods; Röhlig Hong Kong Ltd, the forwarding agent for the goods in Hong Kong, acting on the instructions of the declarant or consignee of the goods; Röhlig Belgium NV, the forwarding agent for the goods in Belgium, acting on the instructions of the declarant or consignee of the goods. In the customs declaration issued by the representative of Röhlig Belgium NV, the goods were declared under the temporary import arrangements without stating the country of destination. Philips brought an action before the Court of First Instance, Antwerp, seeking a ruling that its intellectual property rights had been infringed and claiming that, in accordance with Article 6(2)(b) of Regulation 3295/94 [the then-current Regulation on the temporary suspension of free movement of goods suspected of infringing certain IP rights], the Court should use as its starting point the fiction that the shavers seized had been manufactured in Belgium and should then apply Belgian law for the purposes of establishing the infringement. The Court, before ruling on the merits of the case, referred the following question to the Court of Justice for a preliminary ruling:

‘Does Article 6(2)(b) of Council Regulation ... 3295/94 ... constitute a uniform rule of Community law which must be taken into account by the court of the Member State which, in accordance with Article 7 of the Regulation, has been approached by the holder of an intellectual-property right, and does that rule imply that, in making its decision, the court may not take into account the temporary storage status/transit status and must apply the fiction that the goods were manufactured in that same Member State, and must then decide, by applying the law of that Member State, whether those goods infringe the intellectual-property right in question?’

In Nokia, Her Majesty’s Commissioners of Revenue and Customs (HMRC) stopped and inspected at Heathrow Airport a consignment of goods which had come from Hong Kong and was destined for Colombia, comprising approximately 400 mobile telephones, batteries, manuals, boxes and hands-free kits, each of which bore the trade mark ‘Nokia’. HMRC sent Nokia samples of those goods. After inspecting the samples, Nokia notified HMRC that the goods were counterfeit and asked whether HMRC intended to detain them. HMRC said it was uncertain how goods could be ‘counterfeit’ within the meaning of Article 2(1)(a)(i) of Regulation  1383/2003 [which replaced Regulation 3295/94] in the absence of any evidence that they might be diverted onto the European Union market. HMRC therefore concluded that, in the absence of such evidence, it was not lawful to deprive the owner of its goods. Nokia issued an application against HMRC, asking for the names and addresses of the consignor and the consignee together with any other relevant documents relating to the consignment in the possession of HMRC. Even though such documents were sent to it, Nokia did not succeed in identifying the consignor or the consignee of the goods, and concluded that they had both taken steps to hide their identity. Eventually Nokia commenced legal proceedings in which the judge held that the Regulation did not entitle or require customs authorities to detain or seize counterfeit goods in transit where there was no evidence that the goods would be diverted onto the market in Member States because such goods were not ‘counterfeit goods’ under Article 2(1)(a)(i) of Regulation 1383/2003. On appeal, the Court of Appeal of England and Wales referred the following question to the Court of Justice for a preliminary ruling:

‘Are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and in transit from a non-Member State to another non-Member State capable of constituting “counterfeit goods” within the meaning of Article 2(l)(a) of Regulation ... 1383/2003 if there is no evidence to suggest that those goods will be put on the market in the EC, either in conformity with a customs procedure or by means of an illicit diversion?’

This morning the Advocate General advised the Court of Justice of the European Union to rule in Philips:

Article 6(2)(b) of Council Regulation ... 3295/94 of 22 December 1994 laying down measures concerning the entry into the Community and the export and re-export from the Community of goods infringing certain intellectual property rights is not to be interpreted as meaning that the judicial authority of the Member State called on, in accordance with Article 7 of that regulation, by the holder of an intellectual property right, may take no account of the status of temporary entry or of transit of the goods in question, or, therefore, as meaning that that authority may apply the fiction that those goods were produced in that same Member State for the purpose of ruling, in accordance with the law of that State, whether or not they infringe the intellectual property right at issue

and to rule in Nokia:

Non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and are in transit from one non-member country to another non-member country may be seized by the customs authorities provided that there are sufficient grounds for suspecting [i] that they are counterfeit goods and, in particular, [ii] that they are to be put on the market in the European Union, either in conformity with a customs procedure or by means of an illicit diversion.

Says the IPKat, so it's goodbye to the notorious "manufacturing fiction" if the AG's Opinion is upheld --and a host of problems for all IP owners in policing trade in fakes and infringements if the recommendation in Nokia is going to be left for the customs authorities and national courts of 27 EU Member States to interpret and apply in their respective ways. Anyone whose daily business consists of transporting fakes from one place to another via the EU will soon compile a chart of easy-transit destinations.

In particular, what are "sufficient grounds for suspecting"? Does this mean that there are grounds for thinking the goods are more likely than not to be counterfeit, or that the possibility that are are not genuine cannot be excluded" (the highly problematic test for 'likelihood of confusion' that already bedevils EU trade mark law), or something in between. The AG says:

"106. Now the problem is that the meaning of ‘suspicion’ in this context is inherently bound up with the facts [This seems to limit the operation of any sort of presumption in favour of suspicion based on, for example, the absence of information concerning the identity of the consignee]. It is beyond doubt that ‘suspicion’ must not be taken to mean irrefutable findings, but that criterion must be prevented from leading to total discretion for the customs authorities in their action.

107. For that reason, I consider that, for the customs authorities to be able lawfully to seize goods in transit subject to their control, they must at the very least have ‘the beginnings of proof’, that is to say, some evidence that those goods may in fact infringe an intellectual property right" [that would be great if there were common standards of evidence -- and on the assumption that the customs authorities are well enough trained to deal with these issues].

Then, at para 109 the AG says

"... in the assessing of those ‘suspicions’ particular account must be taken of the danger of fraudulent entry of goods into the European Union [What is the connection between a suspicion of what a product is and the danger of what it might do?]. Despite all the precautions entailed by the system of Community vigilance, that danger exists, inasmuch as it is not to be forgotten that, even if the external transit procedure itself is founded on a legal fiction, the goods are physically to be found in the territory of the European Union".

The IPKat suspects that the Court's ruling will be a good deal shorter than the 113 paragraphs of this Opinion.  He very much hopes that they will prove to be a workable foundation for IP owners and customs authorities to deal with those cheeky folk who send fake goods right through EU terrritory with impunity.  Merpel says, what sort of evidence supports the suspicion that the goods in transit are to be marketed in the EU? Surely a set of common rules and guidance is needed here.

Breaking news: competition trumps IP in footie decoder pub brawl

With so little time in which to make their oral submissions to the Court
of Justice, counsel had to resort to extreme measures to make their point

At the time of posting this item, there's no sign of the Advocate General's keenly-awaited Opinion in Cases C-403/08 and C-429/08 Football Association Premier League Ltd & Others v QC Leisure & Others, Karen Murphy v Media Protection Services Ltd. There is however this press release from the Curia. It reads as follows:

"In the view of Advocate General Kokott, territorial exclusivity agreements relating to the transmission of football matches are contrary to European Union law

European Union law does not make it possible to prohibit the live transmission of Premier League football matches in pubs by means of foreign decoder cards

The Football Association Premier League Ltd (the FAPL) is the marketing organisation for the top English football league. The FAPL essentially grants its licensees the exclusive right to broadcast matches and exploit them economically within their respective broadcasting areas, generally the country in question. In order to safeguard this exclusivity, licensees are obliged to prevent their broadcasts from being able to be viewed outside their respective broadcasting areas. To that end, each licensee is required to encrypt its satellite signal and to transmit it in encrypted form to subscribers within its assigned territory. Subscribers can decrypt the signal using a decoder, which requires a decoder card. The exclusivity agreement also imposes restrictions on the circulation of authorised decoder cards outside the territory of each licensee.

The main proceedings in the present references for preliminary rulings concern attempts to circumvent this exclusivity. Companies import decoder cards from abroad, in the present proceedings from Greece, into the United Kingdom and offer them to pubs at more favourable prices than the broadcaster in that State. This practice makes it possible for pubs in the UK to show the live transmission of Premier League football matches using a Greek decoder card. The FAPL is attempting to stop that practice by means of a judicial ruling. Case C 403/08 concerns civil-law actions brought by the FAPL against the use of foreign decoder cards. Case C 429/08 relates to criminal proceedings which have been brought against the landlady of a pub who used a Greek decoder card to show Premier League matches. The High Court has, in each set of proceedings, referred several questions to the Court of Justice on the interpretation of EU law.
Advocate General Juliane Kokott explains that the exclusivity rights in question have the effect of partitioning the internal market into quite separate national markets, something which constitutes a serious impairment of the freedom to provide services.

With regard to possible justification for the restriction of the freedom to provide services, the Advocate General examines the protection of industrial and commercial property and, in particular, addresses the question whether live satellite transmissions of football matches involve rights the specific subject-matter of which requires a partitioning of the internal market. In this connection she first states that the specific subject-matter of the rights in live football transmissions lies in their commercial exploitation. In the present cases, the live transmission of Premier League football matches is exploited, in particular, through the charge imposed for the decoder cards. Advocate General Kokott takes the view in this connection that the economic exploitation of the rights in question is not undermined by the use of foreign decoder cards, as the corresponding charges have been paid for those cards. Whilst those charges are not as high as the charges imposed in the United Kingdom, there is, according to the Advocate General, no specific right to charge different prices for a work in each Member State.

Rather, it forms part of the logic of the internal market that price differences between different Member States should be offset by trade. The marketing of broadcasting rights on the basis of territorial exclusivity is tantamount to profiting from the elimination of the internal market. Consequently, the specific subject-matter of the rights in the transmission of football matches does not justify a partitioning of the internal market, and thus also does not justify the resulting restriction of the freedom to provide services.

Advocate General Kokott further takes the view that the contractual restriction on using decoder cards in the State of origin only for domestic or private use, but not for commercial use – for which a higher subscription charge is payable – also cannot justify a territorial restriction of the freedom to provide services. The Member State concerned may, however, in principle make provision for rights which allow authors to object to the communication of their works in pubs.
So far as concerns the question whether the showing of live transmissions of football matches in pubs infringes the exclusive right of communication to the public of protected works within the terms of the Copyright in the Information Society Directive , the Advocate General explains that, as EU law stands at present, there are no comprehensive rights which protect the communication of a broadcast to the public where no entrance fee is charged.

Advocate General Kokott further expresses the view that the application of the principle of the freedom to provide services is also in line with the Satellite and Cable Directive and with European competition law. Equally, neither does the Conditional Access Directive constitute a barrier to the use of foreign decoder cards".

See also IPKat posts of 7 December 2007 here and 24 June 2008 here.

STOP PRESS: the AG's Opinion has now been posted on the Curia website here.  It's more than 250 paragraphs long ...

AdWords - the Spanish point of view

AdWords are a hot topic and there is an ongoing interest in the various national legal view points concerning them, in particular after the Advocate General's opinion of 22 September 2009 (see the IPKat's post here).

In the light of this, the IPKat is proud to share the Spanish view point with his readers courtesy of Manuel Lobato and Fidel Porcuna (both Bird & Bird), who have co-authored "The liability of service providers in the information society. Reflections about the Opinion of the Advocate General delivered on 22 September 2009 in joined cases C-236 to 238 /08 Google v. Louis Vuitton and others before the ECJ."

Manuel, Fidel and their publisher have very kindly agreed to have their article posted on the IPKat and even provided an English translation. This Kat is a bit of an AdWords "addict" and very much enjoyed their insightful article, in particular their "Criticism of the position of the Advocate General" which is well worth a read!

The original Spanish version can be retrieved by clicking here.
The English translation (!) can be retrieved here.

Update: if anyone cannot open the links above, please e-mail Birgit with "Spanish AdWord paper" in the subject header.

Design ownership: the AG opines ... but not in English

The IPKat was pacing up and down this morning, impatiently awaiting the Advocate General's Opinion in Case C-32/08 Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo, S.L. and Acierta Product & Position, S.A., a reference for a preliminary ruling from the Juzgado de lo Mercantil Número Uno, Alicante, Spain, lodged on 28 January 2008 and obviously jumping quite briskly through the administrative hoops in Luxembourg. The questions referred in that reference relate to Article 14(3) of the Community Design Regulation 6/2002 which states

"where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law".

The Alicante court asked the Court of Justice of the European Communities the following questions:

"Must Article 14(3) ... be interpreted as referring only to Community designs developed in the context of an employment relationship where the designer is bound by a contract governed by employment law whose provisions are such that the designer works under the direction and in the employ of another? or

Must the terms 'employee' and 'employer' in Article 14(3) ... be interpreted broadly so as to include situations other than employment relationships, such as a relationship where, in accordance with a civil/commercial contract (and therefore one which does not provide that an individual habitually works under the direction and in the employ of another), an individual (designer) undertakes to execute a design for another individual for a settled price and, as a result, it is understood that the design belongs to the person who commissioned it, unless the contract stipulates otherwise? [the IPKat feels that Art.14(3) applies only to a contract where the employer and employee have the status of employer and employee, otherwise it would have not needed to use those terms. But nobody asked him ...]

In the event that the answer to the second question is in the negative, on the ground that the production of designs within an employment relationship and the production of designs within a non-employment relationship constitute different factual situations,

(a) is it necessary to apply the general rule in Article 14(1) ["The right to the Community design shall vest in the designer or his successor in title"] ... and, consequently, must the designs be construed as belonging to the designer, unless the parties stipulate otherwise in the contract? or

(b) must the Community design court rely on national law governing designs in accordance with Article 88(2) ["On all matters not covered by this Regulation, a Community design court shall apply its national law, including its private international law" -- but Art. 14(1) does apply so there should be no need to lose sleep over this, surely?] ...?

In the event that national law is to be relied on, is it possible to apply national law where it places on an equal footing (as Spanish law does) designs produced in the context of an employment relationship (the designs belong to the employer, unless it has been agreed otherwise) and designs produced as a result of a commission (the designs belong to the party who commissioned them, unless it has been agreed otherwise)?

In the event that the answer to the fourth question is in the affirmative, would such a solution (the designs belong to the party who commissioned them, unless it has been agreed otherwise) conflict with the negative answer to the second question?"

The Advocate General in this instance is AG Mengozzi, about whom the Kat shall say nothing, in any language. The Opinion has now been posted in ten official languages of the European Union, but not in English. The French version gives the AG's recommendations to the Court as follows:

"« 1. L’article 14, paragraphe 3, du règlement (CE) n°6/2002 ... doit être interprété en ce sens que le régime qu’il prévoit s’applique aux seuls dessins et modèles réalisés par le salarié dans le cadre d’un rapport de travail subordonné [Trés bien, dit l'IPChat].

2. Les articles 14 et 88 du règlement (CE) n°6/2002 ... doivent être interprétés en ce sens que le titulaire du droit aux dessins et modèles créés dans le cadre d’un rapport contractuel autre qu’un rapport de travail subordonné, tels que les dessins et modèles réalisés par un prestataire pour le compte d’un maître de l’ouvrage, doit être déterminé d’après la volonté expresse des parties et la loi applicable au contrat. La législation d’un État membre qui assimile, pour déterminer le titulaire du droit au dessin ou modèle, les dessins et modèles réalisés par un prestataire pour le compte d’un maître de l’ouvrage aux dessins ou modèles créés par le salarié dans le cadre d’un rapport de travail subordonné, n’est pas contraire à l’article 14, paragraphe 3, dudit règlement" [Per Babel Fish, as tweaked by the Kat who is slightly making it up as he goes along: "the holder of the right to the drawings and models created within the framework of a contractual relationship other than in the course of employment duties, such as the drawings and models carried out by a person receiving benefits for the account of a commissioning party, must be determined in accordance with the expressed intention of the parties and the law applicable to the contract. The legislation of a Member State which assimilates, to determine the holder of the right to the drawing or model, the drawings and models carried out by a person receiving benefits under a commission in respect of the drawings or models created by the employee within the framework of an employment relationship, is not contrary in article 14(3) of the Regulation"].

If the Kat has gone seriously astray, please put him right.
Teach your cat French here

L'Oreal v Bellure: unfair advantage aspects; IBIL seminars online

L'Oreal v Bellure

The IPKat is still scratching his furry little head over L'Oreal v Bellure. He thinks he might have cracked the AG's comments on Art.5(2) though - and they're not all bad. However, there is one fatal flaw...

The Court of Appeal asked whether there could be infringement by unfair advantage, even though the earlier mark did not suffer any harm to its essential function or to its distinctiveness or repute.

The AG (correctly in the IPKat's opinion) opined that what's important for unfair advantage is the benefit to the later user, rather than harm to the well-known mark. Such a benefit could occur without the earlier mark being harmed [IPKat comment: in fact, it's in the later user's interests here that the earlier mark isn't harmed, as this would mean that there would be less to take advantage of].

The fact that consumers connect the sign wouldn't be enough. Instead, what is needed, according to the AG, is that marketing of the later goods is made easier. However, it need not be the case that, but for the use of the offending mark, no sale would have been make. Instead, what is needed is that the link to the earlier mark must be a 'boost' to the later mark [IPKat comment: this has got to be right - how many sales depend purely on the trade mark that they bear?]

This begged the question though - when would such a boost be 'unfair'? The AG used a neat trick to get around this - use is only fair when there is no 'due cause' for the later user to use the mark. [This is the bit that the IPKat has problems with. The UK courts have taken the position that 'due cause' is very narrow - essentially just earlier rights or necessity. This would mean that almost every advantage would be unfair. It would also mean that the courts would have to ignore the word 'unfair' and just rely on whether or not there is unfair advantage. To the IPKat's mind, the really unfortunate thing here is that the AG wants everything to rest on whether there is 'due cause' but the ECJ has never defined what is meant by that term. The AG doesn't acknowledge this which means that, even if he is right, his decision doesn't clarify when an advantage is unfair at all.]

IBIL seminars online

Don't just rely on the IPKat's opinions on this case though. The slides and an audio recording of last week's UCL IBIL seminar on dilution are available here. You can also find a recording of IBIL's seminar on the European Commission's interim report into the pharmaceutical industry in the same place.

Charity begins at home, but goes to Luxembourg

Advocate General Mazak delivered his Opinion today in Case C‑442/07 Verein Radetzky-Orden v Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’, a reference for a preliminary ruling from the Oberster Patent- und Markensenat (Austria). The Bundesvereinigung Kameradschaft ‘Feldmarschall Radetzky’ (BKFR), a non-profit-making association, does not sell any goods or provide any services for remuneration. Its activity consists in the preservation of military traditions, such as the organisation of memorial services for members of the armed forces who have died in combat, remembrance services, military reunions and the upkeep of war memorials. It also does charitable work, such as the collection of money and donations in kind and their distribution to the needy. BKFR also owns the Austrian word and figurative marks for goods and services in classes 37 (upkeep of war memorials), 41 (entertainment; sporting and cultural activities; organisation of military reunions) and 45 (charitable work for the needy).

Additionally the BKFR founded a Radetzky Order, within which orders and decorations are awarded which corresponded to its trade marks. Members of the order wear the decorations at various events and when collecting and distributing money and donations in kind. The marks are printed on invitations to events, on stationery and on the association’s advertising material.

The Verein Radetzky-Orden ('Orden') applied to have BKFR's trade marks cancelled on the grounds of non-use, claiming that BKFR had not used the trade marks commercially over the course of the previous five years. The Austrian Patent Office cancelled the marks, whereupon BKFR appealed to the Oberster Patent- und Markensenat. That court decided to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

"Is Article 12(1) of [Directive 89/104] to be construed as meaning that a trade mark is put to (genuine) use to distinguish goods and services of one undertaking from those of other undertakings in the case where a non-profit-making association uses the trade mark in announcements for events, on business papers and on advertising material and that trade mark is used by the association’s members when collecting and distributing donations inasmuch as those members wear badges featuring that trade mark?".

What did the Advocate General say? He advised the European Court of Justice to rule as follows:

"Article 12(1) of First Council Directive 89/104 ... should be construed as meaning that a trade mark is put to genuine use where a non-profit-making association uses the trade mark, inter alia, in announcements for public fund-raising events, when collecting donations from the public and distributing donations, on business papers addressed to members of the public and on advertising material soliciting donations from the public, where the trade mark has been registered in connection with such services. It is thus for the Oberster Patent- und Markensenat to assess the facts in the main proceedings in the light of that guidance".

The IPKat says, the interesting bit in this Opinion comes at the end when the AG says:

"28. The contention by the Orden that the purely non-profit-making activity of collecting and distributing donations cannot be protected by trade mark law is ... unfounded. ... ‘charitable fund raising’ is specifically listed in Class 36 of the Nice Agreement. Moreover, contrary to the submissions of the Orden, I do not consider that the terms ‘using in the course of trade’ as contained in Article 5 of Directive 89/104, which enumerate the rights conferred by a trade mark, necessitates that goods and services be supplied for profit or indeed for consideration. The question of whether the proprietor of a trade mark uses that sign for the purposes of personal enrichment is thus not relevant when assessing whether the trade mark is being put to genuine use in accordance with Article 12(1) of Directive 89/104.

29. In that regard, I consider that the use of a trade mark by a non-profit-making association when collecting funds from the public and distributing such funds, where the trade mark has been registered in connection with such services, serves as an indication to donors, or potential donors, of the identity of the association in question and the purposes for which the funds are used and thus constitutes a genuine use of a trade mark in accordance with Article 12(1) of Directive 89/104.

30. However, in the light of the ruling of the Court in Ansul, I consider that the use of a trade mark by a non-profit-making association during or for the announcement or advertisement of purely private ceremonies or events involving existing members of that association constitutes an internal use of that trade mark and would thus not constitute a genuine use of a trade mark for the purposes of Article 12(1) of Directive 89/104. Thus, in my view, the award of badges incorporating a trade mark to existing members of a non-profit-making association in gatherings where the public is excluded would appear to be an internal use of the trade mark. Moreover, I consider that the use of a trade mark on business papers when addressing existing members of a non-profit-making association is, in principle, an internal use of the trade mark which would not constitute a genuine use of a trade mark. In such circumstances, it would appear that the registered trade mark is being used in a purely private manner and not in the course of trade".

The IPKat thinks this makes good sense, since it appears to respect the terms in which the Directive is couched as well as the case law of the Court; Merpel's not so sure: the division of the activities of charitable organisations into external and internal ones does not take into account that there is likely to be a close connection between the two in the eyes of the organisation itself and in the view of its members.

Intel v CPM - AG's Opinion

The IPKat brings news of the AG's Opinion in Intel v CPM. Here the Court of Appeal referred the following questions when Intel took on the proprietors of INTELMARK for telemarketing services and the like, based on the registration of the INTEL mark for computers etc.:

(1) For the purposes of Article 4(4)(a) of [the Directive], where:

(a) the earlier mark has a huge reputation for certain specific types of goods or services,

(b) those goods or services are dissimilar or dissimilar to a substantial degree to the goods or services of the later mark,

(c) the earlier mark is unique in respect of any goods or services,

(d) the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the services of the later mark,

are those facts sufficient in themselves to establish (i) “a link” within the meaning of paragraphs 29 and 30 of [Adidas I] and/or (ii) unfair advantage and/or detriment within the meaning of that Article?

(2) If no, what factors is the national court to take into account in deciding whether such is sufficient? Specifically, in the global appreciation to determine whether there is a “link”, what significance is to be attached to the goods or services in the specification of the later mark?

(3) In the context of Article 4(4)(a), what is required in order to satisfy the condition of detriment to distinctive character? Specifically, [(i) does] the earlier mark have to be unique, (ii) is a first conflicting use sufficient to establish detriment to distinctive character and (iii) does the element of detriment to distinctive character of the earlier mark require an effect on the economic behaviour of the consumer?

AG Sharpston began by setting out the context. She noted that US and EU dilution law has sometimes been criticised for not conforming to Frank Schechter's view that highly distinctive marks (rather than famous marks) should be protected, and also for not being as wide as Schechter's protection. However, the task of the ECJ was to interpret the word of a Community directive. Schechter's discussion could not govern. In line with this, she found that AG Jacob's discussion of the meaning of the various types of dilution in Adidas v Fitnessworld was in the nature of a historical and contextual discussion, rather than an expression of the extent of Community protection.

She also noted the need to balance the public interest in protecting trade marks with than in avoiding the abuse of trade mark protection.

She reformulated the referred questions into 4 questions - what is required to establish

1. a link
2. unfair advantage of distinctive character/repute
3. detriment to distinctiveness
4. detriment to repute

Establishing a link

According to the AG, establishing a link is a necessary precondition for establishing Art.5(2) infringement but it isn't sufficient. It bound up with the preliminary conditions of reputation and similarity of marks. However, factors used in establishing a link may also be relevant a second time in establishing the various types of harm.

The language of the referring court, bringing to mind, was effectively the same as establishing a link or making an association, in that all imply a mental process above the threshold consciousness.

As for how the link can be established, the AG noted the factors referred by the Court of Appeal (huge reputation, dissimilarity of goods or services and uniqueness of the mark on any market) were relevant, but probably not sufficient by themselves.

She notes that the Adidas court stated that the link must be appreciated globally 'just like a likelihood of confusion'. She then mentions the factors considered in the likelihood of confusion analysis and also considers the factors used in the US under s.43(c) of the Lanham Act as amended in 2006, which she notes are 'fully consistent with the Court's approach to the assessment of likelihood of confusion'. [IPKat comment: this is very confused. First of all, she's borrowing too greatly from confusion analysis if she approves s.43(c) as being consistent with the ECJ case law on confusion. More worryingly, she's looking at what the US uses to prove, blurring not what they use to prove an association between the marks. But she previously said that although the same factors may be relevant to both things that need to be proven, they 'must be assessed separately' and the factors 'may have to be taken into account in different ways'.]

She also notes that a link between the parties' goods may be relevant to establishing a link, but is not a requirement. Such a requirement would fly in the face of the wording of the Directive, which talks about dissimilar goods.
[IPKat comment: a sensible balance between the reality of how consumers will think and the wording of the Directive.]

She also throws in an observation that in Adidas the ECJ spoke aobut the existence of a link, rather than the likelihood of one.
[IPKat comment: this isn't helpful. Side observations could like this could give fuel to those who want an actual dilution requirement. Such a step shouldn't be taken lightly. In the US, the requirement eviscerated dilution as a cause of action and led to major legislative reform.]

Establishing unfair advantage

Unfair advantage was said to focus on the benefit to the later mark, rather than harm to the earlier mark. What is needed is 'some sort of boost given to the later mark by its link with the earlier mark'. A dampening or merely neutral effect just won't do.

Again, the referred factors were necessary, but weren't, on their own, enough to support a finding of free-riding. Having said that, the greater the reputation and distinctiveness of the earlier mark, the more likely is it that a later mark could derive an advantage from it. However, that still wasn't enough. To show that the earlier mark would enhance the performance of the later mark, the 'relationship between the prestigious connotations of the earlier mark and the context in which the later mark isn't used.' Where the earlier mark has been used, survey evidence might be helpful.

[IPKat comment: The IPKat isn't feeling too much the wiser. He suspects this is quite a flowery way of saying that it all depends on the facts of the case. Also, he's willing to offer a fabulous prize to anyone who can come up with a survey to demonstrate that a later mark has 'been enhanced' by the 'prestigious connotations' of an earlier, the construction and carrying out of which manages to survive our Court of Appeal.]

Establishing blurring

The AG also wasn't too impressed by the factors suggested by the Court of Appeal for demonstrating blurring. Once again, a link wouldn't be enough. The mark also didn't need to be 'unique', although a truly unique mark would be particularly distinctive, and very distinctive marks are more prone to having their distinctiveness impaired by the presence of similar marks. Likewise, not effect on consumers' economic behaviour was needed, though if an effect could be shown, it would 'buttress' the proprietor's case. Other factors mentioned by the Court of Appeal were relevant but not decisive one way or the other.

[IPKat comment: the Kat now knows what isn't enough to prove blurring. Will someone please put him out of his misery and tell him what is enough? Actually, the question may be flawed, and the answer may be that it will depend on balancing the mix of factors in every case, which brings us on to the AG's next point...]

None of the factors could be said to have a 'threshold' to which they had to be shown, since a global appreciation was required where the overall balance is decisive.
[IPKat comment: probably the right approach, but not great for legal certainty.]

The AG also cautioned that a first conflicting use would not normally be enough to cause detriment. Thus it would be appropriate to look instead at the likelihood of the harm being caused by repeated use.
[IPKat comment: this takes care of one of the problems with an actual dilution standard.]
Establishing tarnishment

Since tarnishment wasn't raised in the referred questions, the AG didn't say much about it, but she did observe that what is required is 'to compare the connotations of each mark, in relation to either the goods or services covered or to the broader message which they may convey, and to evaluate the damage entailed.' [The IPKat is intrigued by this 'broader message' - is it the advertising function?]

Concluding comments
The AG had 3 parting messages in relation to all 4 issues:

1. It should be remembered that the assessment is always a global one, taking into account all relevant facts. Those facts are interdependent.
   
2. Less evidence is likely to be available in registrability cases than in infringement cases. Suitable inferences will be needed in registrability cases.
   
3. Actual harm isn't required in registrability cases, but evidence of a future risk which is more than hypothetical must be show.
   

[IPKat conclusion: generally a sound opinion, which stresses the need for the assessment to be based on the facts of the specific case, and how they fit together in a global analysis. This means that there shouldn't be an overly rigid approach, but isn't great for legal certainty. Some blips though, notably a lack of clarity on actual versus likely dilution and a confusing about of borrowing from confusion case law in testing for association. The Kat would have liked to have seen dilution related back to the essential function of a trade mark - in his opinion blurring certainly is on all fours with it.]

Beecham reference: can you help?

Today the IPKat reports that the Advocate General's Opinion in Case C-132/07 Beecham Group and Others has been posted on the Curia website. The questions referred to the Court of Justice of the European Communities for a preliminary ruling by the Rechtbank van Koophandel te Brusselas are as follows:

"Must the first paragraph of Article 9 of Regulation ... 1891/04 [IPKat note: that's the implementing regulations for Regulation 1383/03, mentioned below] be construed as prohibiting the competent customs service or the competent customs office from providing, or causing to be provided, information within the terms of Article 9(2) of Regulation ... 1383/03 [IPKat note: that's the Regulation that allows the suspensive detention of imported goods by the customs authorities, to see if they infringe IP rights], or arranging, or causing to be arranged, an inspection within the terms of the second subparagraph of Article 9(3) of Regulation ... 1383/03, so long as the application for action made prior to 1 July 2004 has not been supplemented by the declaration referred to in Article 6 of Regulation ... 1383/03? In other words, is the declaration in question a formal condition governing the continued effectiveness of the application for action?

Is Article 4(2) of Regulation ... 1383/03 to be construed as allowing the Antwerp customs authorities to grant the trade mark proprietor access to six samples of the goods in order to be able to determine whether or not the goods in question were counterfeit, it being understood that such notification of a sample is not to be treated as equivalent to a thorough inspection within the terms of the second subparagraph of Article 9(3) of Regulation ... 1383/03? If so, ought this granting of access to have occurred within the period of three working days laid down in Article 4(1) of that regulation?

Right: this isn't quite the sort of help the IPKat was hoping for -- but he still needs to be rescued ...

Does Regulation ... 1383/03 preclude Belgian customs officials from providing information, acquired in the context of implementation of that regulation, outside the channels envisaged thereby - reference being made to, inter alia, Article 9(2) and the first subparagraph of Article 9(3) of Regulation ... 1383/03 - for example, within the context of the questioning of witnesses or submission of documents ordered by Belgian courts?

Does Regulation ... 1383/03 preclude information obtained as a result of the application of Articles 4(2) (see Question 2) and 9(2) and (3) thereof, other than that referred to in the first subparagraph of Article 9(3), or information obtained pursuant to the questioning of witnesses or submission of documents ordered by Belgian courts (see Question 3), from being used in the context of proceedings not designed to secure a declaration that goods are counterfeit, for example in connection with proceedings to counter parallel imports?"

The Opinion of Advocate General Dámaso Ruiz-Jarabo Colomer appears so far in eight languages, none of which is English. Can any kind soul please tell the poor Kats what it's all about? Merpel says, never mind the translations - can someone tell this poor kat what the questions mean in English?

More on O2 v H3G

The IPKat has taken a proper read through AG Mezzoni's Opinion in O2 v H3G (see previous post for reference and details).

The case involved use by H3G of bubbles in an advert which compared its phone tarrifs to those of O2. O2 objected, arguing that the use infringed Art.5(1)(b) of the Trade Marks Directive (similar marks; identical goods) and, because it took unfair advantage of its bubbles and/or denigrated them, H3G's advert was unacceptable under the Comparative Advertising Directive as well.

The Court of Appeal referred 3 questions to the ECJ:

‘(1) Where a trader, in an advertisement for his own goods or services uses a registered trade mark owned by a competitor for the purpose of comparing the characteristics (and in particular the price) of goods or services marketed by him with the characteristics (and in particular the price) of the goods or services marketed by the competitor under that mark in such a way that it does not cause confusion or otherwise jeopardise the essential function of the trade mark as an indication of origin, does his use fall within either (a) or (b) of Article 5[(1)] of Directive 89/104?

(2) Where a trader uses, in a comparative advertisement, the registered trade mark of a competitor, in order to comply with Article 3a of Directive 84/450 as amended must that use be “indispensable” and if so what are the criteria by which indispensability is to be judged?

(3) In particular, if there is a requirement of indispensability, does the requirement preclude any use of a sign which is not identical to the registered trade mark but is closely similar to it?’

The AG opined that comparative advertising is harmonised by the Comparative Advertising Directive, and should not be considered under trade mark infringement. However, this did not stop him pointing out that, had trade mark infringement been relevant, it would have been a tricky one to decide since the ECJ's jurisprudence on trade mark use is contradictory.

IPKat comment: it's not quite open season on trade marks (as the anonymous comentator in the previous post suggests, since under the Comparative Advertising Directive, we still look at types of harm which are mighty similar to trade mark infringement. It looks like good old s.10(6) is truly superfluous now.

On the second question, the AG found that the use of the trade mark did not need to be dispensible. Such a requirement wasn't suggested by the wording of the Directive or in previous cases. Also, it would be contrary to the spirit of the Directive, which sees comparative advertising as a good thing.

The favourable approach to comparative advertising meant that it should also cover use of marks which were similar, rather than identical, to the comparee's mark.

The AG then appears to go beyond his remit saying that in the circumstances, it would be hard to see how H3G could have taken unfair advantage ofO2's mark here. The AG says that the whole point of comparative advertising is to gain an advantage for oneself by establishing a link with the compared product. Thus, such a link would only be unfair if it might cuase the public to associate the reputation of the comparee's products with the comparor's. Such a link wouldn't occur here because in addition to the bubbles, H3G had identified O2 by reference to its word mark. The AG also said that while o2 might be able to argue that the distortion of its bubbles denigarted them, it could not raise the issue of whether the use had damaged their distinctiveness because damage to distinctiveness isn't mentioned in Art.3a.

IPKat comment: this favourable approach to comparative advertising is to be welcomed. He cautions readers to avoid using the AG's definitions of unfair advantage in relation to Art.5(2) of the Trade Marks Directive since they seem very much based in the justifications for comparative advertising, and also, appear to introduce a confusion element.

In view of the answer to the second question, the third question didn't need to be answered.

AG'S Opinion in O2 v H3G

Advocate General Mengozzi has delivered his Opinion from the UK reference in Case C-533/06 O2 Holdings v Hutchison 3G (the case concerning comparative advertising using bubbles).

He concludes:

... I propose that the Court give the following answer to the questions referred by the Court of Appeal (England and Wales):

(1) The use of a sign identical or similar to the registered trade mark of a competitor in an advertisement which compares the characteristics of goods or services marketed by that competitor under that trade mark with the characteristics of goods or services supplied by the advertiser is covered exhaustively by Article 3a of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 97/55/EC of the European Parliament and of the Council of 6 October 1997, and is not subject to the application of Article 5(1)(a) or (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 3a of Directive 84/450 is not to be interpreted as permitting the use, in a comparative advertisement, of a sign identical or similar to the registered trade mark of a competitor only when that use is indispensable for the purpose of identifying the competitor or the goods or services concerned.

More from the IPKat when he's had a chance to digest...

AG says peeking isn't distribution

Here's a copyright opinion from AG Sharpston in Peek & Cloppenberg. Cassina had an exclusive right to manufacture Le Corbusier furniture in Germany. P & C bought Le Courbusier-designed chairs, made by a different company, in Italy where, at the time, they were not protected by copyright. The furniture was used in P & C’s German branches in rest areas for customers (weary husbands/ boyfriends/ partners no doubt) and a table was used as part of a window display. The items were protected by copyright law in Germany. Cassina argued that this infringed its distribution right under copyright law. A reference from the German court to the ECJ ensued:

‘1.(a) Can it be assumed that there is a distribution to the public otherwise than by sale, within the meaning of Article 4(1) of [the Copyright Directive], in the case where it is made possible for third parties to make use of items of copyright-protected works without the grant of user involving a transfer of de facto power to dispose of those items?

(b) Is there a distribution under Article 4(1) of the [Copyright] Directive also in the case in which items of copyright-protected works are shown publicly without the possibility of using those items being granted to third parties?

2. If the answers are in the affirmative:

Can the protection accorded to the free movement of goods preclude, in the abovementioned cases, exercise of the distribution right if the items presented are not under copyright protection in the Member State in which they were manufactured and placed on the market?’

According to AG Sharpston, question 1(a) had to be answered in the negative. The definiton of ‘distribution’ implied a transfer of ownership. Such a reading would be in accordance with the relevant international conventions, and would also allow for the free movement of goods. A rule which found infringement where a defendant lawfully purchased protected goods in a territory where they were not protected by copyright, and then made them available temporarily where they were not so protected was not necessary to protect the specific subject matter of copyright. The fact that a narrow definition of the distribution right here contrasted with a wide definition in relation to intangible works, such as cinematographic or musical works, did not matter greatly, since intangible works were by their nature ‘, susceptible to being distributed in different ways from tangible works’.

It followed a fortiori that displaying the works in a shop window (question 1(b)) also did not infringe the distribution right.

It was therefore not necessary for the AG to answer question 2, but she found that the free movement rules did not point to a different conclusion.

She also stressed that it made no difference that the copyright owner hadn’t consented to the Italian sale.

The IPKat says that this looks like a victory for common sense. Surely copyright infringement can’t ever have been intended to stop the use (rather than the manufacture) of furniture? He’s not quite sure about the AG’s discussion of intangible works – isn’t all IP intangible?