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Posts Tagged: "Court of Justice of the European Union"

INTA Brief to CJEU Says Locally Significant Unregistered Trade Names Can Co-Exist with Later Registered National Trademarks

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.

England and Wales Court of Appeal Rules in SkyKick Trademark Case

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.

No Unfair Advantage or Detriment in EUTM Case Involving PUMA Logo

Sports and fashion company Puma has lost an appeal before the EU General Court, following an eight-year dispute. The trademark case concerned figurative signs depicting leaping cats, and the judgment was published on May 19 (Case T-510/19). Puma, based in Germany, filed an opposition to an EU trademark (EUTM) application filed by Gemma Group in February 2013 for “Machines for processing of wood; machines for processing aluminum; machines for treatment of PVC” in class 7. The application depicted a blue cat leaping from left to right. Puma owns earlier marks for a cat leaping from right to left, registered for a wide range of goods including clothes, accessories and sports equipment.

Copyright Holders Can Restrict Framing, Says CJEU

Copyright holders can require licensees to implement technical measures to prevent infringement, the Court of Justice of the EU (CJEU) has ruled in its latest decision on the “right of communication to the public” in EU copyright law. (Case C-392/19 VG Bild-Kunst v. Stiftung Preußischer Kulturbesitz.) The Court’s Grand Chamber, comprising 15 judges, gave its ruling on questions referred from Germany in a dispute between a copyright collecting society for visual art, VG Bild-Kunst, and Stiftung Preußischer Kulturbesitz (SPK), a cultural heritage foundation that operates a digital library called Deutsche Digitale Bibliothek. The digital library includes thumbnails of images and links to the institution providing the subject matter.

Europe’s Top Five (Non-Patent) IP Developments of 2020

In a previous piece, we covered the top five patent developments of the year in Europe. Here, we review some of the key cases and legislation that shaped 2020 in other areas of IP, including trademarks, copyright, design and legislative actions. At number one, in its judgment in Sky v SkyKick (Case C-371/18) in January, the CJEU said that an EU trademark cannot be invalidated for lack of clarity and precision, and provided guidance on what constitutes bad faith. The decision reassured owners of trademarks in Europe, who had feared that many marks would be invalidated if the Advocate General’s Opinion were followed.

CJEU Says Copyright Protection May Apply to Product Designs if Technical Result Doesn’t Prevent Creative Choice

On June 11, the Fifth Chamber of the Court of Justice of the European Union (CJEU) issued a decision in Brompton Bicycle Ltd. v. Chedech/Get2Get in which the EU’s highest court held that European copyright law extends protection to product shapes producing a technical result when the shape is an original work resulting from the author’s intellectual creation. The decision is notable both for the CJEU’s departure from the advocate general’s opinion in the case as well as its sharp contrast to U.S. copyright law, where copyright protection is expressly prohibited for product designs that have utilitarian, functional aspects.

EU Court Says Amazon Not Liable for Unwitting Third-Party Trademark Infringement

On April 2, the Court of Justice of the European Union (CJEU) issued a ruling absolving e-commerce giant Amazon.com of trademark infringement allegations brought by a German perfume distributor seeking redress for Amazon’s storage and distribution of brand-infringing perfume products sold by third-party sellers. The decision, issued by the CJEU’s Fifth Chamber, holds that Amazon’s mere storage of infringing goods in the context of its online marketplace does not constitute an infringement of trademark rights by Amazon.

UK Rules Out Participation in Unified Patent Court, Defines Priorities for FTAs

The UK Government has confirmed that the country will not be part of the planned Unified Patent Court (UPC). The decision was revealed in a statement sent by a government spokesperson to IAM Magazine on February 27, after it had been hinted at in an electronic mailing distributed by a trade association and shared on social media. This represents a reversal of policy, since the UK ratified the UPC Agreement in April 2018. Ironically, the minister who signed the ratification was the then Foreign Secretary, Boris Johnson. He is now the Prime Minister. However, the change was expected after the government published its approach to negotiations on the future relationship with the EU earlier on February 27. This document explicitly ruled out “any jurisdiction” for the Court of Justice of the EU (CJEU) in the UK.

EU Trademark Owners Relieved by CJEU Judgment in SkyKick Case

The Court of Justice of the European Union has provided reassurance to European trademark owners in its judgment today in the SkyKick case. (Case C?371/18 Sky plc, Sky International AG, Sky UK Limited v SkyKick UK Limited, SkyKick Inc.) The case involves questions referred from the UK in a dispute over SkyKick’s alleged infringement of five of Sky’s EU and UK national trademarks. Sky is a well-known broadcaster and telecoms services provider, and SkyKick is a cloud services provider. The Court stated that “a lack of clarity and precision of the terms designating the goods or services covered by a trade mark registration cannot be considered contrary to public policy, within the meaning of those provisions” and that therefore the lack of clarity and precision in a specification is not a ground for invalidity: “a Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision.”

Resale of E-Books Requires Copyright Authorization, Rules CJEU

The Grand Chamber of the Court of Justice of the European Union (CJEU) has ruled that supply to the public by downloading, for permanent use, of an e-book is covered by the concept of “communication to the public” rather than “distribution to the public.” Under Article 3(3) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (Infosoc Directive), the communication to the public right is not exhausted by any communication to the public or making available to the public. The dispute in this case was between two associations representing copyright holders on one hand and Tom Kabinet, which operates a website with a virtual market of second-hand e-books offered via a reading club, on the other hand. The associations argued that Tom Kabinet was making an unauthorized communication to the public.

National Courts Can Order Worldwide Takedown, Says CJEU in Case Against Facebook

The Court of Justice of the European Union (CJEU) has ruled that host providers, such as Facebook, can be required to take down illegal content, including identical or equivalent variations, worldwide once they are made aware of it. The Court was ruling on the interpretation of the E-Commerce Directive (Directive 2000/31/EC) in a defamation case brought by an Austrian politician. (Eva Glawischnig-Piesczek v. Facebook Ireland Limited, Case C-18/18 [ECLI:EU:C:2019:821].) The politician, Eva Glawischnig-Piesczek of the Green party, asked Facebook Ireland (which operates Facebook outside of the U.S. and Canada) to delete a news clipping and associated comment, which she claimed insulted and defamed her. Following court proceedings in Austria, Facebook Ireland disabled access in Austria to the specific content published. However, the case raised the following questions: could Facebook Ireland additionally be ordered to remove posts with identical or equivalent content to that already found to be illegal, and should it disable access to the illegal content worldwide?

Court of Justice of the European Union Provides Guidance on EU Trade Mark Jurisdiction

The Court of Justice of the European Union (CJEU) has ruled that an EU trade mark (EUTM) proprietor may bring an infringement action in an EU Member State where advertising or offers for sale are directed or located, in a case concerning alleged infringement of an EUTM in the United Kingdom by a Spanish defendant. The judgment in Case C172/18 AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree v Heritage Audio SL, Pedro Rodríguez Arribas addresses questions concerning jurisdiction, in particular in cases involving Internet sales. This litigation concerned infringement proceedings brought regarding an EUTM for “1073” in the UK Intellectual Property and Enterprise Court.

CJEU Backs Kraftwerk in Music Sampling Copyright Case

The Court of Justice of the European Union (CJEU) has ruled that a phonogram producer can prevent another person from taking a sample, even if it is very short, and including it in another phonogram, “unless that sample is included in a modified form unrecognisable to the ear.” The Court was interpreting certain provisions of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (the 2001 Directive) in the light of the rights enshrined in the Charter of Fundamental Rights of the European Union. See Pelham GmbH, Moses Pelham, Martin Haas v. Ralf Hütter, Florian Schneider?Esleben (Case C-476/17, July 29 2019). The case concerned a two-second sample of the Kraftwerk track Metall auf Metall, which was used in the song Nur mir, composed by Pelham and Haas. Hütter and Schneider?Esleben, members of Kraftwerk, brought an action for copyright infringement in the German courts, and the Bundesgerichtshof (Federal Court of Germany) referred six questions to the CJEU.

EUIPO’s Christian Archambeau on Globalization, EUTM Trends, and Brexit

IP rights face “a challenging future,” according to Christian Archambeau, the Executive Director of the EUIPO, who spoke to the media during the INTA Annual Meeting in Boston last month. In particular, he cited the challenges posed by Brexit, international cooperation, artificial intelligence (AI) tools and Blockchain, working in multiple languages, and the volume of applications. EUIPO (formerly OHIM) is the Office responsible for registering EU trade marks (EUTMs) and registered Community designs (RCD) in the European Union. But Archambeau, who became Executive Director in October last year, also emphasized its broader remit to support cooperation between offices in Europe and beyond, and to promote IP awareness, particularly among SMEs. In this respect, he said the Office is looking at “helping SMEs with services that help them and make sense to them,” although it cannot change fee levels, which are set by an EU Regulation.

Is Europe really moving away from protecting platforms and internet intermediaries?

This time last year, the combination of the Commission’s September 2017 Communication and the proposed Article 13 of the draft Copyright Directive led some to conclude that Europe was indeed moving away from protecting internet intermediaries. The Communication has now been backed up by the March 2018 Commission Recommendation and proposed new Regulation (with its focus on terrorist content). Whether Article 13 is ever enacted and in what form is still to be decided, but it is closer to adoption now than before the vote in September 2018. Meanwhile, we await answers from the CJEU regarding the permissible subject-matter breadth and territorial width of injunctions made against intermediaries.