Intellectual Property Law Internet Law IT Law Computer Law

Judgement of the Court of Justice of European Communities in case C‑227/07, Commission of the European Communities v. Republic of Poland.

1. Declares that, by failing to transpose correctly Article 4(1) of Directive 2002/19/EC of the European Parliament and of the Council of 7 March 2002 on access to, and interconnection of, electronic communications networks and associated facilities (Access Directive), the Republic of Poland has failed to fulfil its obligations under that Directive;

Judgment of the Court of Justice of European Communities of 16 October 2008 in case C-298/07, deutsche internet versicherung.

1. Article 5(1)(c) of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’) must be interpreted as meaning that a service provider is required to supply to recipients of the service, before the conclusion of a contract with them, in addition to its electronic mail address, other information which allows the service provider to be contacted rapidly and communicated with in a direct and effective manner. That information does not necessarily have to be a telephone number. That information may be in the form of an electronic enquiry template through which the recipients of the service can contact the service provider via the internet, to whom the service provider replies by electronic mail except in situations where a recipient of the service, who, after contacting the service provider electronically, finds himself without access to the electronic network, requests the latter to provide access to another, non-electronic, means of communication.

There is this case pending Vulcan Golf, LLC v. Google Inc. et al., No. 07 CV 3371 (N. Dist. Ill. June 15, 2007). You’ll have all necessary documents available at www.justia.com website. Ben Edelman from Harvard University made the whole case much more worse to argue for Google.

Edelman and other lawyers have filed a class action lawsuit representing domain owners who claim the Google Adsense for Domains (AFD) program is assisting in violating trademarks. A hearing is scheduled for as early as next month in which Edelman will ask an Illinois federal judge to allow the case against Google to proceed.

When it comes to trade mark infringement and keywords then all I can say is that European trade mark lawyers are eagerly awaiting for the Court of Justice of the EC to answer couple of important questions. In case C-236/08, Google France and Google, French Cour de Cassation reffered the following questions.

1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks[1] and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark[2] be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering infringing goods is using those trade marks in a manner which their proprietor is entitled to prevent?

2) In the event that the trade marks have a reputation, may the proprietor oppose such use under Article 5(2) of the directive and Article 9(1)(c) of the regulation?

3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or the regulation, may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000,[3] so that that provider cannot incur liability until it has been notified by the trade mark proprietor of the unlawful use of the sign by the advertiser?

In case C-237/08, Google France, French Cour de Cassation reffered the following questions.

1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks[1] be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?

2) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,[2] may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, [3] so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?

In case C-238/08, Google France, French Cour de Cassation reffered the following questions.

1) Does the reservation by an economic operator, by means of an agreement on paid Internet referencing, of a keyword triggering, in the case of a request using that word, the display of a link proposing connection to a site operated by that operator in order to offer for sale goods or services, and which reproduces or imitates a trade mark registered by a third party in order to designate identical or similar goods, without the authorisation of the proprietor of that trade mark, constitute in itself an infringement of the exclusive right guaranteed to the latter by Article 5 of First Council Directive 89/104/EEC of 21 December 1988?[1]

2) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?

3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,[2] may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, 3 so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?

I may presume that there will be another questions asked and not only from France.

Judgment of the Court of Justice of European Communities of 9 October 2008 in case C‑304/07, Directmedia Publishing GmbH.

The transfer of material from a protected database to another database following an on‑screen consultation of the first database and an individual assessment of the material contained in that first database is capable of constituting an ‘extraction’, within the meaning of Article 7 of Directive 96/9 of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, to the extent that – which it is for the referring court to ascertain – that operation amounts to the transfer of a substantial part, evaluated qualitatively or quantitatively, of the contents of the protected database, or to transfers of insubstantial parts which, by their repeated or systematic nature, would have resulted in the reconstruction of a substantial part of those contents.

I read electronic edition of Rzeczpospolita (Polish newspaper) almost every day. I think that it is a professional magazine. I do not wish to discuss the topic of paid archives - it’s their vision of publishing and how to do business. Sometimes, however, errors that appear in articles keep me discouraged.

It challenged before the court of first instance a decision of European patent clerks (OHIM) regarding the refusal of cancellation of one registration of a trademark.

Emphasis of mine. This part comes from article written by Michał Kosiarski, “Kurier równorzędny z listem poleconym“, in which, the author discuss the latest judgment of the Court of Justice in case C-144/07 P, K-Swiss v. OHIM.

At the same time I address to PT readers to ask them to submit to me any mistakes found on my site.

Adidas Am., Inc. v. Payless Shoesource, Inc., 3:01-cv-01655 (D. Or. Nov. 8, 2001). $305 million judgment. The issue was a trade mark infringement of 3 stripes. So, that’s more than $100m per stripe as Marty Schwimmer has noted. There are some documents related to this case at Marty’s website too. Adidas is very protective when it comes to this sign/mark. As an example you may read cases that were brought before The Court of Justice of the European Communities. C-102/07, adidas and adidas Benelux.

First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the requirement of availability cannot be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.

C-408/01, Adidas-Salomon AG and Adidas Benelux BV v. Fitnessworld Trading Ltd., OJ C 304, 13.12.2003, p. 5.

1. A Member State, where it exercises the option provided by Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, is bound to grant the specific protection in question in cases of use by a third party of a later mark or sign which is identical with or similar to the registered mark with a reputation, both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark.

2. The protection conferred by Article 5(2) of Directive 89/104 is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.

3. The fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of Directive 89/104 where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark, with the result that one of the conditions of the protection conferred by Article 5(2) of Directive 89/104 is then not satisfied.

Well, what can I say? Such marks and sign will always bring public controversy. I can unmodestly recommend you my post titled “Non-traditional trademarks in Polish case law” and “Reclaim Magenta“.