Posts Tagged: "CJEU"

The Unified Patent Court (UPC) plans to open for business on April 1, 2023. Its likely place among the world’s preeminent patent courts can be inferred, at least in part, from the territorial and subject matter jurisdiction of this novel court. In Europe, several courts enjoy established reputations for patent litigation, notably in France, Germany, the United Kingdom, Holland and Italy. These courts, as well as the European Patent Office (EPO), which also enjoys a strong reputation for its case law, are the preferred venues of plaintiffs for enforcing or seeking to invalidate European patents. Due to the size and economic weight of the region, the importance of European patents, and the bench of experienced patent judges and practitioners, Europe will without doubt continue to attract a substantial share of patent litigation worldwide.

With its widespread use on social networks, mainly on Twitter, the hashtag has become a real communication tool. As a result, there have been a number of trademark registrations with the “#” symbol in the last few years. The question remains, however, as to whether using a third-party trademark with the “#” sign can be considered trademark use and is therefore likely to be infringing the trademark owner’s rights. The Oxford dictionary defines the hashtag as “a word or phrase with the symbol ‘#’ in front of it, used on social media websites and apps so that you can search for all messages with the same subject”.

On June 2, the Court of Justice of the European Union issued a press release discussing the results of the Advocate General’s opinion on two actions filed by French footwear designer Christian Louboutin, one in Luxembourg and another in Belgium, against the Amazon group (Amazon) alleging trademark infringement. As detailed in the opinion, Amazon regularly advertises red-soled platform shoes which are for sale on its platform without the consent of Louboutin. Louboutin is the owner of the EU position mark referred to as the “red sole” for goods in International Class 25 covering “high-heeled shoes (and other orthopedic footwear).” The mark at issue “consists of the colour red (Pantone 18-1663TP) applied to the sole of a shoe.” Louboutin also has national protection for the mark in both Belgium and Luxembourg.

The Court of Justice of the European Union (CJEU) has rejected a legal challenge to Article 17 of Directive 2019/790 on Copyright in the Digital Single Market. (Case C-401/19 Republic of Poland v. European Parliament and Council, ECLI:EU:C:2022:297.) The challenge was brought by the government of Poland. It argued that Article 17 of the Directive, which concerns the liability of online service providers for copyright-infringing content uploaded by users, infringed the rights to freedom of expression and information. The rights to freedom of expression and information are guaranteed in Article 11 of the Charter of Fundamental Rights of the EU.

The International Trademark Association (INTA) has made an amicus submission before the EU Court of Justice (CJEU) in a case concerning parallel imports and EU trademark law. (Case C-175/21 Harman International Industries, Inc. v. AB SA.) In the case at hand, Harman, which makes audiovisual equipment, brought trademark infringement proceedings in Poland against AB, a distributor. AB had put on the market goods featuring Harman’s trademarks, which it had obtained from a third party. Europe operates a system of regional exhaustion, as set out in Article 15(1) of the EUTM Regulation, and in parallel imports cases national courts have referred to “goods which have not been put on the market within the European Economic Area (EEA) by the right holder or with his consent.” (Gender-neutral language has not yet become established in EU jurisprudence). In this case, Harman argued that the goods had been imported into Poland and had not been put on the market within the EEA by Harman or with its consent. AB claimed it had received assurances when it bought the goods that the trademark rights were exhausted.

Last week, IPWatchdog selected five significant patent developments in Europe, examining what has happened this year and what can be expected in 2022. Here, we review five of the top trademark and copyright decisions and legislative changes across Europe and what’s coming up in the new year. One of the most significant trademark decisions of 2021 came in a case over Hasbro’s EUTM registration for MONOPOLY. The registration, for goods and services in classes 9, 16, 28 and 41, was declared invalid by the EUIPO Second Board of Appeal on the basis that Hasbro had acted in bad faith. On April 21, the EU General Court upheld that decision.

As part of its review of 2021, IPWatchdog takes a look back on five patent stories from the past year in Europe, and highlights what further developments to expect in 2022. In 2021, Europe took a giant leap towards the implementation of the Unitary Patent and Unified Patent Court (UPC). After years of delays arising from disputes over rules and language, the U.K. signing up and then withdrawing, and constitutional objections filed in Germany, it now seems highly likely that the new system will launch in late 2022. The pivotal step in this process was the decision by Germany’s Federal Constitutional on July 9 to reject as inadmissible two applications seeking to prevent the country from ratifying the UPC Agreement. (BVerfG, Beschluss des Zweiten Senats vom 23. Juni 2021- 2 BvR 2216/20 -, Rn. 1-81.) Following the decision, reported on IPWatchdog here, Germany ratified the Protocol on the Provisional Application of the UPCA, and Slovenia also did so in October.

Under European Union (EU) law—specifically, Article 103(2) of Regulation 1308/2013—signs that qualify as protected designations of origin (PDOs) or protected geographical indications (PGIs) are shielded against any direct or indirect commercial use, as well as against any “evocation” of it that is likely to mislead a consumer as to the true origin of the product. This language raises the question of the conditions under which a sign may be said to be “evocative” of a PDO or PGI.

The International Trademark Association (INTA) last week submitted an amicus brief to the Court of Justice of the European Union (CJEU) providing its input on the topic of whether earlier unregistered rights of local significance, like trade names, can coexist with later registered national trademarks. The case was referred by the Dutch Supreme Court.

Followers of European trademark developments will be familiar with the Sky v SkyKick litigation, in which the UK courts and the Court of Justice of the EU have addressed questions concerning trademark invalidity (see IPWatchdog report here). In the latest twist, the England and Wales Court of Appeal has reversed one of the main first instance findings. In its judgment, the Court allowed Sky’s appeal against a finding that its asserted trademarks for SKY were partially invalid due to lack of intention to use amounting to bad faith. The Court ruled that it was essential to determine whether the parts of the trademark registrations which were relied on were or were not applied for in good faith.

Filing a request for revocation of a trademark, despite a non-challenge clause in a trademark agreement, constitutes an act of bad faith—according to an amicus submission filed by INTA in a case pending before the Court of Justice of the EU (CJEU). The German Federal Supreme Court has referred two questions to the CJEU in a dispute between two formerly related companies. (Case C-62/21, Leinfelder Uhren München.) They had signed agreements in which the defendants in this case undertook not to attack the plaintiff’s trademark, nor to assist a third party to do so. However, a lawyer acting on behalf of the defendants subsequently filed revocation actions for non-use against the plaintiff’s EU trademarks. In response, the plaintiff asked the German courts for an order requiring the defendants to instruct the lawyer to withdraw the revocation actions, and also for damages.

Two cases pending at the EU Court of Justice (CJEU) address, respectively, questions on the licensing of standard essential patents (SEPs), and the availability of interim measures in litigation. With the hearings expected later this year, IPWatchdog looks at the key issues raised. It is relatively rare for patent cases to come before the CJEU, as there are no EU Directives or Regulations directly governing patents. However, the Court does hear patent cases when they also involve other aspects of EU law, such as Article 102 TFEU, concerning abuse of a dominant position; the Enforcement Directive; and the Biotechnology Directive. In the past few months, the German courts have referred questions in two important patent cases.

Toy maker Hasbro has been rebuked by the EU General Court, after it was found to have applied to register an EU trademark (EUTM) for MONOPOLY in bad faith. The company has owned the MONOPOLY brand since acquiring Parker Bros in 1991. It filed the EUTM application, for various goods and services in classes 9, 16, 28 and 41, in April 2010 and the mark was registered in 2011. Hasbro owned three earlier EU word marks for MONOPOLY, which were registered in 1998, 2009 and 2010 and are still live. These covered some of the same goods and services as those specified in the 2010 application. After the latest application was registered, it was attacked by a Croatian company called Kreativni Doga?aji, which argued that the application was a “repeat filing” of the earlier marks and “was aimed at circumventing the obligation to prove genuine use of those marks.”

The Court of Justice of the European Union (CJEU) last week ruled against Qualcomm in an antitrust case over UMTS-compliant baseband chipsets. The case dates back to April 2010, when UK company Icera Inc. filed a complaint accusing Qualcomm of predatory pricing by supplying three chipsets to its customers Huawei and ZTE at below cost price…. The judgment gives the Commission the green light to seek a broad range of information in antitrust investigations, which may have implications for actions against other tech companies.