Autumn a golden season for Interflora

Pumpkin by Flowers by Walter

As summer gives way to autumn and the golden leaves tumble, the prettiest flowers are those that come the florists -- which brings the IPKat on to today's decision in Case C-323/09 Interflora Inc and Interflora British Unit v Marks & Spencer plc and Flowers Direct Online Limited, a reference to the Court of the European Union (ECJ) for a preliminary ruling from the High Court of Justice of England and Wales.

Essentially, the problem here was that Marks & Spencer bought the word 'interflora' as a keyword for Google's AdWord paid referencing service, so that people who were looking for the world-famous Interflora flower delivery service would find an advertisement for Marks & Spencer's rival service at the top of the non-organic, paid-for search results. This did not make Interflora very happy since (i) they were proprietors of the hugely famous INTERFLORA trade mark, (ii) internet users who keyed in "interflora" as a search term were obviously looking for their website and not Marks & Spencer and (iii) worst of all, this was just before the onset of St Valentine's Day, which is one of the biggest events of the year for the flower trade. This just had to be trade mark infringement, said Interflora. The ECJ's ruling in Google France that neither the sale nor the use of terms protected by trade marks as keywords constituted a per se trade mark infringement didn't help them -- but that was a "5(1)(a)" case, where same goods/same mark (double identity) infringement was alleged. Here Interflora had a '5(2)' argument, based on a use which allegedly damaged the mark's reputation or distinctive character without due cause.

The trial judge, Mr Justice Arnold, painstakingly analysed both the relevant law and the facts, before referring a raft of ten questions for preliminary rulings. Following some helpful correspondence between the referring judge and the ECJ's registry, the ten questions were pruned down and clarified to a miserly four.

Today the Court of Justice ruled as follows:

"1. Article 5(1)(a) of ... Council Directive 89/104 ... and Article 9(1)(a) of Council Regulation ... 40/94 ... must be interpreted as meaning that the proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions [which raises the interesting question of how many functions a trade mark has. The Court has identified four by name, but it was reported last week in the MARQUES conference that up to 17 have been identified] of the trade mark. Such use:

– adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party;

– does not adversely affect, in the context of an internet referencing service having the characteristics of the service at issue in the main proceedings, the trade mark’s advertising function; and

– adversely affects the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.

2. Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment).[this looks like good news for Interflora ...]

Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term.["for example"opens the door to a large categories of actually or arguably genericising uses. This will be a litigation growth area, predicts Merpel]

By contrast, the proprietor of a trade mark with a reputation is not entitled to prevent, inter alia, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation – an alternative to the goods or services of the proprietor of that mark". [while this is expressed as a general principle, the Kat thinks that, in practice, it will become a narrow exception].

This IPKat team member is going to give this some further thought to this ruling and test it out a bit over a refreshing pint of Badger when the opportunity arises. In the meantime, he's quite struck with the relatively intelligible mode of expression of the Court's ruling which seems to him, prima facie, to be about as good as we can hope for when applying twentieth-century pre-internet trade mark legislation to a set of facts that is not provided for by the Directive and Regulation and which is scarcely within the radar of the Recitals.

That Dirty Trick: the ECJ says "no!"

Can you really magic away
someone else's trade mark? No!

Today the Court of Justice of the European Union succeeded in magicking away the horrid spectre of an injustice which, the IPKat feared, was in danger of being perpetrated following the mammoth Opinion of 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 brewer Anheuser-Busch on fellow brewer 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 turned mainly on the interpretation of the words of Articles 4(1)(a) and 9(1) of the Council Directive 89/104 on the approximation of trade mark laws. By Article 4(1)

"‘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; ...".

As for Article 9(1), it provided that

"‘1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith".

The questions posed were as follows:

"‘(1) What is meant by “acquiesced” in Article 9(1) of Directive 89/104 and in particular:

(a) is “acquiesced” a Community law concept or is it open to the national court to apply national rules as to acquiescence (including delay or long-established honest concurrent use)?

(b) if “acquiesced” is a Community law concept can the proprietor of a trade mark be held to have acquiesced in a long and well‑established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it?

(c) in any case, is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

(2) When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

(3) Does Article 4(1)(a) of Directive 89/104 apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?’".

The Advocate General has advised the Court that it didn'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!"]

In this morning's ruling, the Court ruled as follows:

"1. Acquiescence, within the meaning of Article 9(1) of ... Council Directive 89/104 ... is a concept of European Union law [and isn't just a matter for national legislation and courts to determine on the basis of their own preferences] and the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use [i.e. no naughty tricks!].

2. Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in Article 9(1) of Directive 89/104. The prerequisites for the running of that period of limitation, which it is for the national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.

3. Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services".

The IPKat thinks that the Court has got it just right.

Hungarian model captures Kat's heart, almost ...

Resisting the temptation to rush out into the street and kiss the first Hungarian he sees, the IPKat is currently rejoicing at some exciting news. As Kats go, not every feline has a position regarding the common-or-garden utility model. There's a famous fairy tale about the abused, poverty-stricken Cinderella and her two ugly sisters (here). Strange as it seems, the utility model appears to possess the characteristics of both. Like Cinderella, the utility model is a right that never gets invited to the fun events (when did you last go off to a fancy hotel to attend a conference or seminar on utility models?), while in the eyes of her detractors she is also an ugly sister, an ill-proportioned hybrid of other IP rights and the aspirations that accompany them.

This is why the IPKat is so thrilled that utility models have suddenly occupied centre-stage on the Curia website today with news that the Hungarian Fővárosi Bíróság (step up, Tibor Gold, and tell us how to pronounce those precious syllables) has referred some questions to the Court of Justice of the European Union for a preliminary ruling in Case C-180/11 Bericap Záródástechnikai Bt. v Plastinnova 2000 Kft., Szellemi Tulajdon Nemzeti Hivatala intervening. In case you're wondering, the questions posed of Europe's finest are as follows:

"1. Is it consistent with European Union law if, during proceedings to amend a decision relating to an application for invalidation of a utility model, the measures, procedures and legal remedies are applied in such a way that: the national court is not bound by the claims or statements with legal effect made by the parties, and the court is entitled to order of its own motion any evidence that it may deem necessary? [Sudden thought: these aren't enforcement proceedings, so the question can't be anything to do with the IP Enforcement Directive and, while the European Patent Convention makes mention of utility models, the interpretation of its provisions doesn't fall within the Court's normal activities. And it can't be an oblique allusion to TRIPS, surely, since that Agreement doesn't mention them, does it? And that just leaves the Paris Convention on the Protection of Industrial Property, which does mention them but doesn't bind its Members to anything at the level of detail of this question. So what is going on? Can any kind reader explain?]

2. Is it consistent with European Union law if, during proceedings to amend a decision relating to an application for invalidation of a utility model, the measures, procedures and legal remedies are applied in such a way that: the national court, when making its decision, is not bound by the administrative decision made in relation to the application for invalidation, or by the findings established therein, nor, specifically, by the grounds for invalidation indicated during the administrative procedure, or by the declarations, assertions or evidence submitted during the administrative procedure? [Merpel has just checked the Curia website. This reference is categorised under 'Intellectual Property' and not under 'Justice and Home Affairs', 'Procedure' or 'Principles of Community Law']

3. Is it consistent with European Union law if, during proceedings to amend a decision relating to a further application aimed at invalidating a utility model, the measures, procedures and legal remedies are applied in such a way that: the national court excludes any evidence submitted with the further application, including evidence relating to the state of the art, to which reference was already made in connection with the previous application for invalidation of a utility model?" [Oh well, it was fun while it lasted ...]

Europe according to Hungarians here

TV Catchup case goes to Europe

Cast your mind back to last December and you might recall, though the midst of winter's murky memories, a bright and cheeky interlude in which the recently-promoted Mr Justice Kitchin starred, ITV Broadcasting Ltd and others v TV Catch Up Ltd [2010] EWHC 3063 (Ch).  This was a copyright infringement action with a twist to it: instead of sitting there and waiting to be sued, the defendant (TV Catchup) decided to take the initiative and go apply in summary proceedings for the action against it to be dismissed on the basis that it had no chance of succeeding at trial. The outcome, which was a little bit like what happens when a fly picks a fight with an oncoming windscreen, was a decision not to dismiss the action straight off but to allow the claimant copyright owners to have their day -- four days as it turned out -- in court (click here for the IPKat's note on the summary judgment application).

ITV said that TV Catchup ('TVC') had infringed the copyright in its broadcasts by communicating those broadcasts to the public through a process of electronic transmission. This consisted of TVC running a website which allowed ordinary viewers to watch live United Kingdom television -- including broadcasts by ITV -- on their very own computers, smart phones and games consoles. To do this, the viewer had to become a member of TVC, which gave him the option to choose one of 50 or so channels. The viewer, having made his or her choice, would be taken to a new screen on which TVC provided a stream of the programme being broadcast.

"For goodness' sake, Henry,
I said 'pause', not 'paws'"

The ITV agreed that these transmissions to viewers were not "broadcasts" under section 6 of the Copyright, Designs and Patents Act 1988 (CDPA) and that TVC hadn't made ITV's broadcasts available to the public so that they could be accessed from a place and at a time individually chosen by them. However, ITV did feel that TVC’s services, which, er, communicated its broadcasts to the public by means of an electronic transmission were, if it might be so bold as to suggest this possibility, a communication of the broadcasts to the public by electronic transmission under section 20 of the same Act. TVC disagreed: in its view, in order to infringe the copyright in a broadcast under section 20, the alleged infringer's transmission must itself be a broadcast within the meaning of section 6 (which even the ITV agreed it wasn't). Mr Justice Kitchin thought this line of attack, ingenious and original though it might be, had no chance of succeeding, so we all looked forward to the trial.

Today Mr Justice Floyd delivered a 39-page, 145 paragraph judgment which reflected the judge's thoroughness in dealing with the parties' respective arguments concerning an area of law which has become almost unbearably complex and taken on an almost metaphysical dimension, divorced from the mundane nature of the activities it governs. He had to consider the validity of the amended version of section 20 itself, as well as a variety of issues relating to TVC's defences, one of which was reliance on the CDPA, s.28A which states:

"Copyright in a ... film, is not infringed by the making of a temporary copy which is transient or incidental, which is an integral and essential part of a technological process and the sole purpose of which is to enable -
(a) a transmission of the work in a network between third parties by an intermediary; or
(b) a lawful use of the work;
and which has no independent economic significance".

This was most definitely not
the sort of transmission that
Fluffikins was thinking of ...

The judge's at-a-glance ruling goes like this:

• the CDPA s.20(c) was not ultra vires the InfoSoc Directive; 
• TVC was indeed communicating films and broadcasts to the public, but, just to be on the safe side, it's a good idea to refer this issue to the Court of Justice of the European Union for a preliminary ruling, so hold your breath! ;
• subject to anything the Court of Justice might say to the contrary in its keenly-awaited ruling in Football Association Premier League v QC Leisure [Advocate General's Opinion this February noted briefly here, with links], TVC had reproduced a substantial part of the films in its buffers (which could in theory hold up to 8 seconds worth of video streaming) and on screen; 
• provisionally, the reproduction in the buffers and on the screens was not a reproduction of a substantial part of a broadcast ... but this is also to be referred to the Court of Justice of the European Union for a preliminary ruling. Keep holding that breath!
•  final judgment on the application of the CDPA, s.28A to reproduction of the films and broadcasts in the buffers and on the screens should await the outcome of the Football Association Premier League case -- but the judge's provisional view is that the defence does apply to the reproductions in the buffers;
• the CDPA section 73 defence ['Reception and re-transmission of wireless broadcast by cable': the Kat isn't even going to try to explain this one here] applies to the qualifying services ...
• ... but not in respect of re-transmission to mobile phones or of out of area services. [Throwing caution to the wind, Merpel says "the finding that, for s.73 purposes, "internet streaming" is "cable" is no great shock, since it reflects obiter observations in two earlier decisions, even though the scope of the s.73 defence now looks rather limited. However, it will be fun to see how the distinction Floyd J makes between mobile phone access and land line access will work in practice"].

So, all in all, errors and omissions excepted and without prejudice to anything that the Court of Justice may say, do or think in the future, this looks like a fairly good day in court for the commercial broadcasters. But what do the Kats say?

Without the aid of an abacus on which to count them, the IPKat finds it increasingly difficult to keep track of the increasing number of cases in which the meaning of the words "communication to the public" has been referred to Europe's highest court for an authoritative ruling. Is it six now? Merpel quips, soon we'll have as many rulings on "communication to the public" as we have on "use of a sign" in trade mark law.

Cognac comes off best in spirited attack on Finns

The Cognac zone

Food and drink authorities across the length and breadth of the European Union, and even beyond it, have been stockpiling geographical indications. This legal-gastronomic arms race was bound to produce litigation. So far, much of the recent angry, hostile legal action we've seen has concerned makers of cheeses (Feta, Gorzonzola/Cambozola, Parmigiano Reggiano) and beers (let's lift a glass to Budweiser and Bavaria), not to mention wines (Champagne is a name that trips lightly off the tongue of many a fine adjudicator).

Today it was the turn of spirits, with Joined Cases C-4/10 and C-27/10 Bureau national interprofessionel du Cognac v Gust. Ranin Oy, where the casus belli was another great French duty-free shelf-filler-- Cognac.  Decisions of the Court of Justice of the European Union (ECJ) are often quite dull to read even when the dispute is interesting, but this case has some redeeming features.  First, the judgment is relatively short: although it's 67 paragraphs in length, they're predominantly short ones.  Secondly the ECJ proceeded to judgment without troubling the Advocate General to deliver an opinion, thus minimising the risk of judicial confusion and giving the court's hard-pressed translators an afternoon off in which to sip cocktails on Luxembourg's luxurious sandy beaches.  Thirdly, Curia has provided a short press release, from which this Kat quotes extensively below:

"A trade mark containing the geographical indication ‘Cognac’ cannot be registered to designate a spirit drink not covered by that indication 

The commercial use of such a mark would adversely affect the protected indication 

Under the regulation on the protection of geographical indications for spirit drinks [Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation 1576/89], it is possible to register as a geographical indication the name of a country, region or locality from which a spirit drink originates, where a given quality, reputation or other characteristic of that drink is essentially attributable to its geographical origin. A registration of that kind is made upon application by the Member State of origin of the drink. The application must be accompanied by a technical file listing the specifications which the drink must meet if it is to be able to be designated by the protected geographical indication. 

Furthermore, the regulation prohibits the registration of trade marks which may adversely affect a protected geographical indication and states that, as a general rule, where such a mark has
already been registered, it must be invalidated [This, as one might imagine, is none too popular with trade mark owners. What makes it even more frustrating for trade mark owners is that a GI, once registered, cannot become generic in legal terms. even though in reality it is]. 

The regulation mentions ‘Cognac’ as a geographical indication identifying wine spirits originating from France. Gust. Ranin Oy, a Finnish company, applied in Finland for the registration, for spirit drinks, of two figurative marks in the form of a bottle label bearing descriptions of the spirit drinks containing the term ‘Cognac’ and its Finnish translation, ‘konjakki’. Although the Finnish authorities have accepted the application for registration, the Bureau national interprofessionel du Cognac – a French organisation of cognac producers – contests the legality of that registration before the Finnish courts. 

The Korkein hallinto-oikeus (Supreme Administrative Court, Finland) asks the Court of Justice whether it is permissible under the regulation to register national trade marks containing the term ‘Cognac’ for products which, in terms of manufacturing method and alcohol content, do not meet the requirements set for the use of the geographical indication ‘Cognac’. 

In its judgment .. the Court states first ... that although the contested marks were registered on 31 January 2003 – that is to say, before the regulation entered into force – that regulation is applicable in the present case. In that connection, the Court observes that the retrospective application of the regulation does not undermine the principle of legal certainty or the principle of the protection of legitimate expectations [because T]he obligation on Member States to prevent the use of a geographical indication identifying spirits for alcoholic beverages which do not originate from the place designated by that indication has existed in EU law since 1 January 1996.

Next, the Court observes that the two Finnish trade marks ... cannot benefit from the derogation provided for under the regulation, in accordance with which the use of a mark which was acquired before the date of protection of the geographical indication in the country of origin (or before 1 January 1996) is permitted, even if it adversely affects the geographical indication concerned. In that regard, the Court points out that, independently of the protection it enjoys under French law, the term ‘Cognac’ has been protected as a geographical indication under EU law since 15 June 1989.

The Court also finds that the use of a mark containing the term ‘Cognac’ for products which are not covered by that indication constitutes a direct commercial use of the protected indication [under Article 16(a) of the Regulation, GIs are protected against "direct or indirect commercial use". The terminology is therefore different to, and broader than, that which governs use in European trade mark legislation]. Such a use is prohibited by the regulation in so far as it concerns comparable products. The Court finds that this may be the position in the case of spirit drinks.

Likewise, the Court finds that the fact that the two Finnish marks incorporate part of the name ‘Cognac’ means that, when the consumer is confronted with the name of the marks on the bottles of spirit drinks not covered by the protected indication, the image triggered in his mind is that of the product whose designation is protected. The Court points out that such ‘evocation’ is also prohibited under the regulation ['evocation' being another term not found in European trade mark law, where resort is had to non-statutory formulations such as whether in the mind of the consumer there exists a "link" or whether a later mark calls to mind an earlier one. The absence of common vocabulary as between GI and trade mark law always offers a potential ground for distinguishing a decision on one from a decision of the other: good news for scholars and litigation lawyers, but it probably doesn't benefit anyone else].

In those circumstances, the Court holds that the Finnish authorities must invalidate the
registration of the contested marks".

It's now up to the Finnish Court to apply this guidance.

The term Cognac is now protected in India here and in China here
Make your own Cognac here
Alcohol, leading cause of death in Finland here

The trigonometry of trade mark law: Sign, Kosan and Tangent

Following all the excitement this week over the high-tech aspects of European trade mark law where brand owners tussle with internet service providers over the extent to which hosted sales can and should be controlled by the latter, the Court of Justice of the European Union (ECJ) returned today to a very much less exalted and non-digital product -- refillable gas bottles.  This return to earth, as it were, manifested itself in a short ruling of just 43 paragraphs inclusive of the recitation of the relevant legal provisions, the summary of facts and the costs order.  The Case is C-46/10 Viking Gas A/S v Kosan Gas A/S, formerly BP Gas A/S, a reference for a preliminary ruling under from the Danish Højesteret [the IPKat interjects to add that, since the Danes are so good at speaking other languages, it is easy to forget that they speak Danish too: Højesteret is the Danish for 'Supreme Court' and is not, as Merpel mischievously tells people, a tasty dessert].

Kosan made and sold bottled gas to private and commercial customers, using 'composite’ lightweight bottles the shape of which is both a three-dimensional Community trade mark and a three-dimensional Danish trade mark for "gaseous fuels and containers used for liquid fuels". In accordance with a sole distribution agreement which it made with the Norwegian producer of the bottle, Kosan enjoyed an exclusive licence to use those bottles as a shape trade mark in Denmark as well as the right to take legal proceedings against infringements of the mark.  When it used the bottles, Kosan fixed its name and logo (both of which were registered as Community word and figurative marks for gas) on to them. Consumers paying for a composite bottle filled with gas from one of Kosan’s dealers became owners of the bottle as well as the gas.

Another aspect of Kosan's business was the refilling of empty composite bottles for consumers who came back for more gas. A consumer thus had a choice when going to any Kosan dealer: he could either buy a new bottle of gas or swap his empty one for a refilled one, paying only the price of the gas.

Viking, which sold but didn't produce gas, had a filling station in Denmark from which composite bottles were dispatched, after being filled with gas, to independent dealers. Viking's bottles bore a sticky label containing its name and the filling station number, plus another sticky label with all the legal rubric on it. They also, by the purest of coincidences, featured Kosan's word and figurative marks which were neither removed nor covered. As with Kosan, a consumer could either buy a new bottle or exchange his old one for a refill.

Kosan used to sell its gas in the same yellow steel canisters as were used by most other gas suppliers, which were not registered as shape trade marks but which, like the composite bottles, bore Kosan's marks and which, Viking asserted, were refilled by others without Kosan ever objecting.

In December 2005 Kosan sued Viking and got injunctive relief which was confirmed a year late; Kosan was also awarded damages.  Viking's appeal to the Højesteret was stayed so that the court could get a preliminary ruling from the ECJ on the following questions:

‘(1) Is Article 5, in conjunction with Article 7, of [Trade Mark Directive 89/104, long-repealed now by Directive 2008/95 but still religiously cited wherever possible] to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply: 

(a) Company A sells gas in so-called ‘composite’ bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and a Community trade mark. Company A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark; 

(b) On first purchase of a composite bottle filled with gas from one of company A’s dealers the consumer also pays for the bottle, which thus becomes the consumer’s property; 

(c) Company A refills the composite bottles by a procedure under which the consumer goes to one of company A’s dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by company A; 

(d) Company B’s business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in point (a), by a procedure under which consumers go to a dealer associated with company B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by company B; 

(e) When the composite bottles in question are filled with gas by company B, adhesive labels are attached to the bottles indicating that the filling was undertaken by company B? 

(2) If it may be assumed that consumers will generally receive the impression that there is an association between companies A and B, is this to be regarded as significant for the purpose of answering Question 1? 

(3) If Question 1 is answered in the negative, may the outcome be different if the composite bottles – apart from being covered by the shape trade mark referred to – also feature (are imprinted with) the registered figurative and/or word mark of company A, which is still visible irrespective of any adhesive labels affixed by company B? 

(4) If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature company A’s word and/or figurative mark, company A has for many years accepted, and continues to accept, the refilling of the bottles by other companies? 

(5) If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to company B directly and there: 

(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by company B, or 

(b) on payment, has a composite bottle which he has brought filled with gas?’

The Court this morning ruled as follows:

" Articles 5 and 7 ... must be interpreted as meaning that the holder of an exclusive licence for the use of composite gas bottles intended for re-use, the shape of which is protected as a three-dimensional mark and to which the holder has affixed its own name and logo that are registered as word and figurative marks, may not prevent those bottles, after consumers have purchased them and consumed the gas initially contained in them, from being exchanged by a third party, on payment, for composite bottles filled with gas which does not come from the holder of that licence, unless that holder is able to rely on a proper reason for the purposes of Article 7(2) of Directive 89/104".

The IPKat feels that there's nothing radical or surprising in this ruling and he is pleased that the time between it being received by the ECJ and the questions being answered was only 18 months, inclusive of a hearing the Advocate General's Opinion. He is however disappointed that the Opinion remains untranslated into English and five other official languages of the European Union more than three months after it was issued.

"It's definitely gas", thought
Henry, "... but whose?"

Says Merpel: this may be simplified as follows: "A person who has right to control the use of a trade mark which he fixes to a reusable container can't stop them being commercially refilled by a competitor because of exhaustion of rights -- unless he has a legitimate reason for doing so" -- which is surely what the parties must have known pretty well before they even started litigating back in 2005, no? Is it really worth referring cases like this to the ECJ where the real issue is whether the facts support or detract from exhaustion of rights and any utterance by the court is, at best, tangential to the resolution of the dispute before the referring court?

Sine, cosine and tangent: teach yourself trigonometry here
A gas gas gas here

L’Oréal v eBay Part III: what the world says ...

Here in Part III, in alphabetical order, are some early responses to this morning's Court of Justice ruling in Case C‑324/09 L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited (see Part I for background, Part II for the ruling and an easy summary).

Ashursts IP partner Dominic Batchelor: "eBay will be concerned by this decision, which means it could be forced to prevent intellectual property infringements by its users. The practical and cost implications could be extensive, and any additional costs will presumably be passed on to eBay's users".

“Brand owners like L’Oréal will be jubilant at today’s ruling. Trade mark owners are no longer alone in their fight for online brand protection. Instead, as is the case on the High Street, companies which facilitate sales can be held accountable for the goods which pass through their hands", says Kirsten Gilbert (Marks & Clerk), adding "Brands have been concerned for years now that the internet has facilitated the trade of counterfeit goods. Items which would otherwise be available only from back-street traders have become instantly available to consumers in the privacy of their own homes. L’Oréal and other brand owners will be hoping that online marketplaces like eBay now sit up and pay attention to the sales of counterfeit items which go through their sites. ... Brand owners will now be working with a legal system which protects one of their key assets – their brand identity.”

Stefan Krawczyk, eBay’s European government-relations director: “The judgment provides some clarity on certain issues, and ensures that all brands can be traded online in Europe. A lot of cases will still have to be assessed by the national courts. We’ve moved on -- we fulfill most of these conditions now anyways”.

At the time this item was posted, L’Oréal had yet to issue a public statement, confirming only that the company was studying the ruling. Given the fact that L’Oréal must not only decide what it thinks about the judgment but must also determine what it should say about its own corporate policy in the wake of the ruling, any delay in issuing a statement is probably prudent.

Managing Internet IP's James Nurton said this morning's press release from the court "makes grim reading for the online marketplace".

Adam Smith (World Trademark Review blog): "the court clarified that an online marketplace is not exempted from liability when it has played an “active role” in the sale, which includes “optimising the presentation of the offers for sale in question or promoting them”. This would appear to challenge eBay’s current business practices, and its arguments that it is not responsible for third parties selling counterfeit goods, especially because it takes active steps to stop them with its Verifed Rights Owner programme".

While these responses, which the perhaps inevitable exception of that of eBay, reflect the opinion that this ruling is bad news for online market operators, this Kat is not expecting an avalanche of litigation against eBay. The fact that the company cannot automatically escape liability under the E-Commerce Directive does not mean that it is automatically liable. Apart from the fact that the success of each prospective trade mark infringement action will still turn on its facts, the cost of litigation is itself a deterrent where the infringement is small and injunctive relief -- which is pretty well automatic in the case of Community trade mark infringement even when infringement has ceased -- is not a per se remedy in the case of infringement of national marks.  Merpel adds, while the injured trade mark owner can derive some justifiable satisfaction from having brought a successful action, the biggest benefit to the consumer, and therefore to the protection of the goodwill in each brand, is for eBay and the brand owners to cooperate more fully and effectively in producing the best-possible system for notice and take-down.

L’Oréal v eBay Part II: what the Court says

KATNOTE: IF YOU NEED TO CHECK THE FACTS THAT TRIGGERED THIS PIECE OF LITIGATION, THE QUESTIONS REFERRED FOR A PRELIMINARY RULING BY THE COURT OF JUSTICE OF THE EUROPEAN UNION AND THE ADVOCATE GENERAL'S OPINION, READ L’Oréal  v eBay I: background to this morning's ruling BEFORE YOU READ THIS POST

The ruling in  Case C‑324/09 L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited has now been posted on the Curia website. 

The active part of the Court's ruling reads thus:

"1. Where goods located in a third State, which bear a trade mark registered in a Member State of the European Union or a Community trade mark and have not previously been put on the market in the European Economic Area or, in the case of a Community trade mark, in the European Union, (i) are sold by an economic operator on an online marketplace without the consent of the trade mark proprietor to a consumer located in the territory covered by the trade mark or (ii) are offered for sale or advertised on such a marketplace targeted at consumers located in that territory, the trade mark proprietor may prevent that sale, offer for sale or advertising by virtue of the rules set out in Article 5 of First Council Directive 89/104 ..., as amended ..., or in Article 9 of Council Regulation ... 40/94 ... on the Community trade mark. [there's no surprise here ...] It is the task of the national courts to assess on a case-by-case basis whether relevant factors exist, on the basis of which it may be concluded that an offer for sale or an advertisement displayed on an online marketplace accessible from the territory covered by the trade mark is targeted at consumers in that territory [... or here].

2. Where the proprietor of a trade mark supplies to its authorised distributors items bearing that mark, intended for demonstration to consumers in authorised retail outlets, and bottles bearing the mark from which small quantities can be taken for supply to consumers as free samples, those goods, in the absence of any evidence to the contrary, are not put on the market within the meaning of Directive 89/104 and Regulation No 40/94 [= Case C-127/09 Coty Prestige Lancaster v Simex, here].

3. Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark may, by virtue of the exclusive right conferred by the mark, oppose the resale of goods such as those at issue in the main proceedings, on the ground that the person reselling the goods has removed their packaging, where the consequence of that removal is that essential information, such as information relating to the identity of the manufacturer or the person responsible for marketing the cosmetic product, is missing [in which case repackaging in different information-bearing boxes would still be fine ...]. Where the removal of the packaging has not resulted in the absence of that information, the trade mark proprietor may nevertheless oppose the resale of an unboxed perfume or cosmetic product bearing his trade mark, if he establishes that the removal of the packaging has damaged the image of the product and, hence, the reputation of the trade mark [... though the repackager may need to use a reputation-neutral package].

4. On a proper construction of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, the proprietor of a trade mark is entitled to prevent an online marketplace operator from advertising – on the basis of a keyword which is identical to his trade mark and which has been selected in an internet referencing service by that operator – goods bearing that trade mark which are offered for sale on the marketplace, where the advertising does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods concerned originate from the proprietor of the trade mark or from an undertaking economically linked to that proprietor or, on the contrary, originate from a third party [this looks like an application of the Court's Case C-238/06 Google France formula].

5. The operator of an online marketplace does not ‘use’ – for the purposes of Article 5 of Directive 89/104 or Article 9 of Regulation No 40/94 – signs identical with or similar to trade marks which appear in offers for sale displayed on its site.

6. Article 14(1) of Directive 2000/31 ...on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as applying to the operator of an online marketplace where that operator has not played an active role allowing it to have knowledge or control of the data stored.

[... but ...] The operator plays such a role when it provides assistance which entails, in particular, optimising the presentation of the offers for sale in question or promoting them.

Where the operator of the online marketplace has not played an active role within the meaning of the preceding paragraph and the service provided falls, as a consequence, within the scope of Article 14(1) of Directive 2000/31, the operator none the less cannot, in a case which may result in an order to pay damages, rely on the exemption from liability provided for in that provision if it was aware of facts or circumstances on the basis of which a diligent economic operator should have realised that the offers for sale in question were unlawful and, in the event of it being so aware, failed to act expeditiously in accordance with Article 14(1)(b) of Directive 2000/31. [no surprise here]

7. The third sentence of Article 11 of Directive 2004/48 ... on the enforcement of intellectual property rights must be interpreted as requiring the Member States to ensure that the national courts with jurisdiction in relation to the protection of intellectual property rights are able to order the operator of an online marketplace to take measures which contribute, not only to bringing to an end infringements of those rights by users of that marketplace, but also to preventing further infringements of that kind. Those injunctions must be effective, proportionate, and dissuasive and must not create barriers to legitimate trade" [Good news for trade mark owners, and a headache for courts when they have to determine what is not only effective -- that's the easy bit -- but proportionate and dissuasive].

If this is all too much to take in, here's this morning's press release from the court,

"National courts must be able to order those companies to take measures intended not only to bring to an end infringements of intellectual property rights but also to prevent further infringements of that kind

eBay operates a global electronic marketplace on the internet, where individuals and businesses can buy and sell a broad variety of goods and services.

L’Oréal is the owner of a wide range of well-known trade marks. Its products (especially cosmetics and perfumes) are distributed through a closed distribution network, in which authorised distributors are restrained from supplying products to other distributors.

L’Oréal complains that eBay is involved in trade mark infringements committed by users of its website. Moreover, it claims that, by purchasing from paid internet referencing services (such as Google’s AdWords) keywords corresponding to the names of L’Oréal trade marks, eBay directs its users towards goods that infringe trade mark law, which are offered for sale on its website.

Furthermore, L’Oréal is of the view that eBay’s efforts to prevent the sale of counterfeit goods on its website are inadequate. L’Oréal has identified various forms of infringement, including, inter alia, the sale and offer for sale, to consumers in the EU, of goods bearing L’Oréal’s trade marks intended, by L’Oréal, for sale in third States (parallel importation).

The High Court (United Kingdom), before which the dispute is pending, has asked the Court of Justice a number of questions concerning the obligations to which a company operating an internet marketplace may be subject in order to prevent trade mark infringements by its users.

The Court states, as a preliminary point, that the proprietor of the trade mark may rely on his exclusive right as against an individual who sells trade-marked goods online only when those sales take place in the context of a commercial activity. That is the case, in particular, if the sales, owing to their volume and frequency, go beyond the realms of a private activity.

The Court rules first of all on commercial activities directed towards the EU by means of online marketplaces such as eBay. It states that the EU trade mark rules apply to offers for sale and advertisements relating to trade-marked goods located in third States as soon as it is clear that those offers for sale and advertisements are targeted at consumers in the EU.

It is for the national courts to assess, on a case-by-case basis, whether there are any relevant factors on the basis of which it may be concluded that an offer for sale or an advertisement, displayed on an online marketplace, is targeted at EU consumers. For example, the national courts will be able to take into account the geographic areas to which the seller is willing to dispatch the product.

Next, the Court holds that the operator of an internet marketplace does not itself ‘use’ trade marks within the meaning of the EU legislation if it provides a service consisting merely in enabling its customers to display on its website, in the course of their commercial activities, signs corresponding to trade marks.

The Court also specifically mentions certain matters concerning the liability of the operator of an online marketplace. Whilst making clear that it is for the national courts to carry out the assessment concerned, the Court considers that the operator plays an active role of such a kind as to give it knowledge of, or control over, the data relating to the offers for sale, when it provides assistance which entails, in particular, optimising the presentation of the online offers for sale or promoting those offers.

When the operator has played an ‘active role’ of that kind, it cannot rely on the exemption from liability which EU law confers, under certain conditions, on online service providers such as operators of internet marketplaces.

Moreover, even in cases in which the operator has not played an active role of that kind, it cannot rely on that exemption from liability if it was aware of facts or circumstances on the basis of which a diligent economic operator should have realised that the online offers for sale were unlawful and, in the event of it being so aware, failed to act promptly to remove the data concerned from its website or to disable access to them.

Finally, the Court rules on the question of injunctions which may be granted against the operator of an online marketplace when it does not decide, on its own initiative, to bring to an end infringements of intellectual property rights and to prevent further such infringements occurring.
Thus, the operator may be ordered to take measures making it easier to identify the sellers who are its customers. In that regard, although it is necessary to respect the protection of personal data, the fact remains that when the perpetrator of the infringement is operating in the course of trade, and not in a private matter, that person must be clearly identifiable.

Consequently, the Court holds that EU law requires the Member States to ensure that the national courts with jurisdiction in relation to the protection of intellectual property rights are able to order the operator to take measures which contribute, not only to bringing to an end infringements of those rights by the users, but also to preventing further infringements of that kind. Those injunctions must be".

The IPKat reminds readers that this is not an end to the litigation. The ruling must now be applied to the referring court and, whatever that court does, an appeal may be confidently expected. Readers' comments may also be expected ...

L’Oréal v eBay Part I: background to this morning's ruling

KATNOTE: IF YOU ARE QUITE FAMILIAR WITH THE FACTS THAT TRIGGERED THIS PIECE OF LITIGATION, THE QUESTIONS REFERRED FOR A PRELIMINARY RULING BY THE COURT OF JUSTICE OF THE EUROPEAN UNION AND THE ADVOCATE GENERAL'S OPINION, YOU CAN SKIP THIS POST AND MOVE STRAIGHT ON TO L’Oréal  v eBay II: what the Court says  

It was only two short years ago that Mr Justice Arnold told us that he was referring a number of questions to the Court of Justice of the European Union for a preliminary reference in one of the most exciting and potentially important trade mark law disputes to be heard in England and Wales in recent times -- the titan struggle between luxury cosmetic kings L’Oréal SA and online auction host eBay which reaches a critical point in today's ruling in  Case C‑324/09 L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited.


The facts in brief: Paris-based L'Oréal, which had brought similar proceedings in several European countries, objected that online auction site eBay did not do enough to prevent the sale of counterfeit goods such as perfumes and cosmetics. Broadly speaking L'Oréal's position was that eBay should be liable for counterfeit and parallel imported goods sold via its website, and that eBay should do more to prevent the sale of such trade mark infringing goods. 


The facts at length: the detailed facts can be found in a whopping big judgment of some 482 paragraphs, which you can read at your leisure on BAILII here.

To refresh readers' memories, the questions referred for a preliminary ruling were as follows:

‘(1) Where perfume and cosmetic testers (i.e. samples for use in demonstrating products to consumers in retail outlets) and dramming bottles (i.e. containers from which small aliquots can be taken for supply to consumers as free samples) which are not intended for sale to consumers (and are often marked “not for sale” or “not for individual sale”) are supplied without charge to the trade mark proprietor’s authorised distributors, are such goods “put on the market” within the meaning of Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94]?

(2) Where the boxes (or other outer packaging) have been removed from perfumes and cosmetics without the consent of the trade mark proprietor, does this constitute a “legitimate reason” for the trade mark proprietor to oppose further commercialisation of the unboxed products within the meaning of Article 7(2) of [Directive 89/104] and Article 13(2) of [Regulation No 40/94]?

(3) Does it make a difference to the answer to question 2 above if:

(a) as a result of the removal of the boxes (or other outer packaging), the unboxed products do not bear the information required by Article 6(1) of [Directive 76/768], and in particular do not bear a list of ingredients or a “best before date”?

(b) as a result of the absence of such information, the offer for sale or sale of the unboxed products constitutes a criminal offence according to the law of the Member State of the Community in which they are offered for sale or sold by third parties?

(4) Does it make a difference to the answer to question 2 above if the further commercialisation damages, or is likely to damage, the image of the goods and hence the reputation of the trade mark? If so, is that effect to be presumed, or is it required to be proved by the trade mark proprietor?

(5) Where a trader which operates an online marketplace purchases the use of a sign which is identical to a registered trade mark as a keyword from a search engine operator so that the sign is displayed to a user by the search engine in a sponsored link to the website of the operator of the online marketplace, does the display of the sign in the sponsored link constitute “use” of the sign within the meaning of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

(6) Where clicking on the sponsored link referred to in question 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, does that constitute use of the sign by the operator of the online marketplace “in relation to” the infringing goods within the meaning of 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

(7) Where the goods advertised and offered for sale on the website referred to in question 6 above include goods which have not been put on the market within the EEA by or with the consent of the trade mark proprietor, is it sufficient for such use to fall within the scope of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94] and outside Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94] that the advertisement or offer for sale is targeted at consumers in the territory covered by the trade mark or must the trade mark proprietor show that the advertisement or offer for sale necessarily entails putting the goods in question on the market within the territory covered by the trade mark?

(8) Does it make any difference to the answers to questions 5 to 7 above if the use complained of by the trade mark proprietor consists of the display of the sign on the web site of the operator of the online marketplace itself rather than in a sponsored link?

(9) If it is sufficient for such use to fall within the scope of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94] and outside Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94] that the advertisement or offer for sale is targeted at consumers in the territory covered by the trade mark:

(a) does such use consist of or include “the storage of information provided by a recipient of the service” within the meaning of Article 14(1) of [Directive 2000/31]?

(b) if the use does not consist exclusively of activities falling within the scope of Article 14(1) of [Directive 2000/31], but includes such activities, is the operator of the online marketplace exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?

(c) in circumstances where the operator of the online marketplace has knowledge that goods have been advertised, offered for sale and sold on its website in infringement of registered trade marks, and that infringements of such registered trade marks are likely to continue to occur through the advertisement, offer for sale and sale of the same or similar goods by the same or different users of the website, does this constitute “actual knowledge” or “awareness” within the meaning of Article 14(1) of [Directive 2000/31]?

(10) Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, does Article 11 of [Directive 2004/48] require Member States to ensure that the trade mark proprietor can obtain an injunction against the intermediary to prevent further infringements of the said trade mark, as opposed to continuation of that specific act of infringement, and if so what is the scope of the injunction that shall be made available?’

Advocate General Jääskinen advised the Court to rule thus:

'(1) Where perfume and cosmetic testers and dramming bottles which are not intended for sale to consumers are supplied without charge to the trade mark proprietor’s authorised distributors, such goods are not put on the market within the meaning of Article 7(1) of ... Council Directive 89/104 ...and Article 13(1) of ... Regulation ...40/94 .... [this fits with the Court's ruling in Case C-127/09 Coty Prestige Lancaster v Simex, noted by the IPKat here]

(2), (3) and (4) The trade mark proprietor is entitled to oppose further commercialisation of the unboxed products within the meaning of Article 7(2) of Directive 89/104 and Article 13(2) of Regulation No 40/94 where the outer packaging have been removed from perfumes and cosmetics without the consent of the trade mark proprietor if, as a result of the removal of the outer packaging, the products do not bear the information required by Article 6(1) of Council Directive 76/768 ... on the approximation of the laws of the Member States relating to cosmetic products, or if the removal of outer packaging can be considered as such as changing or impairing the condition of the goods or if the further commercialisation damages, or is likely to damage, the image of the goods and therefore the reputation of the trade mark. Under the circumstances of the main proceedings that effect is to be presumed unless the offer concerns a single item or few items offered by a seller clearly not acting in the course of trade.

(5) Where a trader operating an electronic marketplace purchases the use of a sign which is identical to a registered trade mark as a keyword from a search engine operator so that the sign is displayed to a user by the search engine in a sponsored link to the website of the operator of the electronic marketplace, the display of the sign in the sponsored link constitutes ‘use’ of the sign within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94.

(6) Where clicking on the sponsored link referred to in point 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, that fact constitutes use of the sign by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, but it does not have an adverse effect on the functions of the trade mark provided that a reasonable average consumer understands on the basis of information included in the sponsored link that the operator of the electronic marketplace stores in his system advertisements or offers for sale of third parties.

(7) Where the goods offered for sale on the electronic marketplace have not yet been put on the market within the EEA by or with the consent of the trade mark proprietor, it is none the less sufficient for the exclusive right conferred by the national or Community trade mark to apply to show that the advertisement is targeted at consumers within the territory covered by the trade mark.

(8) If the use complained of by the trade mark proprietor consists of the display of the sign on the website of the operator of the electronic marketplace itself rather than in a sponsored link on the website of a search engine operator, the sign is not used by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94.

(9)(a) The use referred to in point 5 does not consist of or include ‘the storage of information provided by a recipient of the service’ by the electronic marketplace operator within the meaning of Article 14(1) of Directive 2000/31 ... on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market, whereas the use referred to in point 6 may consist of or include such storage.

(9)(b) Where the use does not consist exclusively of activities falling within the scope of Article 14(1) of Directive 2000/31, but includes such activities, the operator of the electronic marketplace is exempted from liability to the extent that the use consists of such activities, but damages or other financial remedies may be granted pursuant to national law in respect of such use to the extent that it is not exempted from liability.

(9)(c) There is ‘actual knowledge’ of illegal activity or information or ‘awareness’ of facts or circumstances within the meaning of Article 14(1) of Directive 2000/31 where the operator of the electronic marketplace has knowledge that goods have been advertised, offered for sale and sold on its website in infringement of a registered trade mark, and that infringements of that registered trade mark are likely to continue regarding the same or similar goods by the same user of the website.

(10) Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, Article 11 of Directive 2004/48 ...on the enforcement of intellectual property rights requires Member States to ensure that the trade mark proprietor can obtain an effective, dissuasive and proportionate injunction against the intermediary to prevent continuation or repetition of that infringement by that third party. The conditions and procedures relating to such injunctions are defined in national law'.

AG Bot says, it's not the re-boxer who matters but the boss

Sleeping on the job: Tiddles was supposed to be
checking the packaging for trade mark-friendly
markings, ahead of parallel importation

Presumably it isn't very important since the Opinion of Advocate General Yves Bot in Affaires jointes C‑400/09 et C‑207/10Orifarm A/S and Orifarm Supply A/S v Merck & Co. Inc., Merck Sharp & Dohme BV, and Merck Sharp & Dohme and Paranova Danmark A/S and Paranova Pack A/S v Merck Sharp & Dohme Corp., Merck Sharp & Dohme and Merck Sharp & Dohme BV is only available on the Curia website in a random selection of official European Union languages that does not include Maltese, Bulgarian or English, but the IPKat wouldn't like to think that any dispute concerning the parallel importation and subsequent repackaging of pharmaceutical goods by someone other than the original trade mark owner was sufficiently important to let us all know what it is that the good M. Bot is thinking.  Merpel stifles a wicked thought: was not M. Bot nominated for public office by none other than Jacques Toubon, the eponymous pilot of the infamously anti-English Loi Toubon?  To avoid any suspicion of even the smallest connection, would it not be desirable for the Curia to ensure that all his Opinions were readily available in English and indeed in all other non-French tongues ...?

On second thoughts, it probably is a trivial case, since the Advocate General's Opinion is only 45 paragraphs long -- a veritable miniature for any dispute between a proprietary drug company and a generic one.  The conclusion of M. Bot is as follows:

«L’article 7, paragraphe 2, de la ... directive 89/104 ... rapprochant les législations des États membres sur les marques, doit être interprété en ce sens que le motif tiré de l’absence de mention sur l’emballage d’un produit reconditionné de l’entreprise qui a concrètement procédé au reconditionnement de celui-ci ne permet pas à un titulaire de marque de s’opposer à la commercialisation dudit produit lorsque figure, à côté du nom du fabricant, le nom de l’entreprise qui contrôle l’opération de reconditionnement et qui en assume la responsabilité.»

A mechanically recovered translation via Google Translate yields the following:

"Article 7, paragraph 2, of ... Directive 89/104 ... to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the ground of absence of a mention on the packaging of the repackaged product of the company that actually has repackaged the latter does not allow a trade mark owner to oppose the marketing of the product when figured, next to the name of manufacturer, is the name of the company that controls the operation of repackaging and who bears responsibility".

Well, says Merpel, I never thought it did.

Yves Bot here
Violet Elizabeth Bott here
Botulism here