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Archive for: Judgments of Court of Justice of the EC

Internet domains, case C-569/08

June 3rd, 2010, Tomasz Rychlicki

The Court of Justic of European Union in its judgment of 3 June 2010, case C‑569/08, Internetportal und Marketing GmbH v. Richard Schlicht, ruled on bad faith registration of EU domain names.

1. Article 21(3) of Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration must be interpreted as meaning that bad faith can be established by circumstances other than those listed in Article 21(3)(a) to (e) of that regulation.

2. In order to assess whether there is conduct in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(3) thereof, the national court must take into consideration all the relevant factors specific to the particular case and, in particular, the conditions under which registration of the trade mark was obtained and those under which the .eu top level domain name was registered.

With regard to the conditions under which registration of the trade mark was obtained, the national court must take into consideration, in particular:

- the intention not to use the trade mark in the market for which protection was sought;

- the presentation of the trade mark;

- the fact of having registered a large number of other trade marks corresponding to generic terms; and

- the fact of having registered the trade mark shortly before the beginning of phased registration of .eu top level domain names.

With regard to the conditions under which the .eu top level domain name was registered, the national court must take into consideration, in particular:

- the abusive use of special characters or punctuation marks, within the meaning of Article 11 of Regulation No 874/2004, for the purposes of applying the transcription rules laid down in that article;

- registration during the first part of the phased registration provided for in that regulation on the basis of a mark acquired in circumstances such as those in the main proceedings; and

- the fact of having applied for registration of a large number of domain names corresponding to generic terms.

Trade mark law, case I ACa 16/10

October 8th, 2009, Tomasz Rychlicki

The French company Marin’s International brought a case before the Court for the Community Trade Marks and Community Designs, located in Warsaw (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych). The issue concerned the use of CTMs Marin’s and Lama by the Polish company Display Flash Poland sp. z o.o., within its website in NOSCRIPT tag. The Court in its judgment of 25 September 2009 case file XXII GWzt 8/09, ruled that the use of someone else’s trademark in website’s metatags infringes trade mark rights of such person, and such behaviour may be also deemed as an unfair competition delict.

I know that I should mention the opinion of the Advocate General Poiares Maduro of 22 September 2009 in joined cases C‑236/08, C‑237/08 and C‑238/08, Google France, Google Inc. v. Louis Vuitton Malletier, Google France v. Viaticum, Luteciel and Google France v. CNRRH, Pierre Alexis Thonet, Bruno Raboin, Tiger, a franchisee of Unicis.

(1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.

(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.

(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 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’).

This is way more interesting if one realizes that almost month ago Google has announced that it doesn’t use the “keywords” meta tag in web search ranking.

Display Flash Poland filed an appeal complaint. The Appellate Court in Warsaw in its judgment of 14 July 2010 case file I ACa 16/10 dismissed it.

Patent Attorneys, case C-564/07

June 13th, 2009, Tomasz Rychlicki

Judgment of the Court (Third Chamber) of 11 June 2009, case C-564/07, Commission of the European Communities v. Republic of Austria.

1. Declares that, by obliging patent lawyers lawfully established in another Member State who wish temporarily to perform services in Austria to appoint an approved agent resident in Austria, the Republic of Austria has failed to fulfil its obligations under Article 49 EC.

Trade mark law, case I CSK 96/08

March 20th, 2009, Tomasz Rychlicki

In the shade of the recent opinion of Advocate General Eleanor Sharpston QC given to the Court of Justice of the European Communities in case C‑529/07, Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, here is the story of couple of judgments decided in the recent suits brought against the Polish company Terravita by the Swiss company Chocoladenfabriken Lindt & Sprüngli, AG from Kilchberg in Switzerland.

Lindt's hare

Lindt & Sprüngli requested the Polish court to prohibit Terravita from offering, marketing or storage chocolate products with a characteristic shape of a seated hare, wrapped in metail foil with clearly marked drawings of nose, bandoline, eyes, ears and tail with bow placed on the neck. Lindt also asked the court to stop the defendant using or affixing “Terravita hare” or its image in advertising and commercial documents, and an order that the defendant withdraw the “Terravita hare” from the market, requiring the defendant to destroy all packagings, packaging designs and dies, molds and other devices intended to produce and direct wrapping the “Terravita hare”.

The District Court in Warsaw, the Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 22 September 2005 dismissed the action. The court held that the conditions set out in article 9(1)(b) of the CTMR were not met. In the court’s opinion “Goldhase”, “Lindt” and “Terravita” signs that appear on the respective products differentiated them significantly and hence there is no risk of consumer’s confusion. The average consumer of chocolate hares does not perceive the origin of the goods only on the basis of the shape of a hare, but also on the basis of other important and distinguishing elements, including the mark placed on the product, the color of the packaging, its price, the trade mark identifying the manufacturer. The average consumer sees the difference in colour of the packaging of chocolate hares, and these were different in this case. Lindt’s packaging of the hare has the color of gold, red and brown, and Terravita’s are in silver. In addition, the District Court indicated that according to article 159a(5) of the CTMR, the defendant has only the right to prohibit the use of a trade mark on the territory of the Republic of Poland.

Terravita's hare

Lindt brought an appeal. The Appellate Court in Warsaw in its judgment of 6 July 2006 case file I ACa 616/07 dismissed the case. The Court held that the shape and the colour did not inform about the origin of the goods. The form of a sitting hare, Easter eggs or bells do not have a distinctive characteristic. The court similarly assessed the coloring of the aluminum foil placed on chocolate hares. The colour of silver and gold are typical for chocolate products. In this case, the only distinctive elements of both products were sings “Goldhase Lindt” and “Terravita” and they were dissimilar. Accordingly there was no risk of consumers confusion as regards the orgin of goods.

Lind brought a cassation complaint to the Supreme Court of the Republic of Poland. The Court, in its judgment of 13 April 2007, case file I CSK 16/07, ordered the Appellate Court to reconsider the case. The Supreme Court has interpreted the EU law, pointing to the need for a comprehensive assessment of similarity of the disputed signs. Only such an assessment would determine whether there is a risk of confusion.

The Court of Appeal, after rehearing the case, changed its judgment in favour of Lindt. The court found that the Golden hare was introduced by Lindt on the Polish market in 1997 (16 pieces), and 240 pieces in 1998. On March 1999, Terravita purchased in Germany the same form as the form used by Lindt and began producing and marketing of chocolate hares. Therefore the disputed hares share the same shape and size. Both are packaged in foil – gold, or silver, both have a ribbon tied to the neck in bow but Terravita’s is printed on the foil and there is no bell. The Court of Appeal stated that the condition for the likelihood of confusion has been met. The court stressed that Lindt’s Gold hare is well known among consumers of chocolate products. Therefore, there was no doubt to believe that Lindt’s hare has a huge recognition among consumers of chocolate products, especially if its presence on the market was established for more than nine years. With regard to the Terravita silver hare the Court of Appeal held that, although the latter figure was produced using the same form as used by the Lindt, and thus both hares are having the same shape and size but additional drawings and elements preclude similarities.

This time, Terravita brought a cassation complaint. The Supreme Court in its judgment of 3 October 2008, case file I CSK 96/08 held that in the circumstances of this case, there is no doubt that disputed hares are not identical and only its shape is the same, since they are manufactured from the same form. However on the foil of both hares, in a prominent place, one may find adequately put signs “Lindt Goldhase” or “Terravita”, which in fact makes the likelihood of consumer confusion practically excluded. The Court cited its earlier case law. The Supreme Court in its judgment of 1 February 2001, case file I CKN 1128/98, published at OSNC 2001, No. 9, item. 136, held that if word-figurative trade marks are used on the market then the word elements of such signs should have been attributed the distinvtice characteristics. The SC in its judgment 8 April 2003, case file IV CKN 22/01, published at OSP 2004, No. 5, item 61, held that in case of word-figurative trade marks the word element has the distinctive characteristics because it determines the ease of assimilation and the perception by the public. The Supreme Court in its judgment of 14 November 2003, case file I CK 176/02 (unpublished) excluded the risk of confusion in a situation where bottles used by the plaintiff and the defendant had the same shape (as in the facts of this case these bottles came from the same form), but were labeled with various word and images elements. In conclusion, the Court held that in the case of two identical products, one of which concerns the Community trade mark, the likelihood of confusion within the meaning of article 9(1)(b) of CTMR does not exist, if the other characteristics of goods, in particular bearing the word or image, allow them to be clearly distinguished.

Trade mark law, case VI SA/Wa 1524/08

December 26th, 2008, Tomasz Rychlicki

The Polish Patent office invalidated the right of protection for NIZOPOL R-152880 trade mark owned by Zakłady Farmaceutyczne “POLFA-ŁÓDŹ’ Spółka Akcyjna. The request was filed by Johnson and Johnson Company who owns NIZORAL R-57978 trade mark. The PPO held that both signs are similar and share at the beggining the same 4 letters NIZO.

The Voivodeship Administratve Court in Warsaw in its judgment of 26 November 2008 case file VI SA/Wa 1524/08 invalidated the questioned decision and ordered its re-examination. Although the Court shared the view of the PPO that during the examination of the questioned word marks in the aural apect, the more attention should to be paid to the first letters and syllables, and a very small role of the endings of words should be recognized, citing J. Piotrowska, Renomowane znaki towarowe i ich ochrona, Wydawnictwo C.H. Beck, Warszawa 2001, p. 131, however, according to the VAC, the PPO did not consider at all the issues related to the degree of public attention. According to the VAC, even the ordinary and final recipient (and not only the professional) when during the purchase of products such as pharmaceuticals or cosmetic can be extremely careful in selecting the correct product because the product purchased is not the regular goods, but one that will (or may) have some consequences for his health. The recipient will also be a more likely with a similar purchase to seek and take into consideration the advice of an expert. A prudent consumer should pay particular attention to the name (and thus the mark) when purchased.

The PPO did not also made in this case, any assessment of other important factors affecting the risk of confusion, namely, did not address the issues related to the alleged occurrence in the course of trade any other similar signs/designations containing the prefix “nizo”. The PPO have to respond to arguments and the circumstances showed by the Polish company, since it is argued the legal doctrine, that the use of the same or similar trade mark by third parties could lead to a weakening of the impact of such sign, and thus – to reduce the risk of confusion, citing R. Skubisz, Prawo znaków towarowych. Komentarz, p. 91.

In this situation – according to the Court – it must be assumed that the PPO during the re-examination of the case should first consider the question of the similarity of the goods. The VAC noted that according to settled case-law, the assessment of the similarity between the goods or services should take into account all relevant factors relating to those goods or services. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary, citing T‑420/03, El Corte Inglés, SA v. OHIM.

In the opinion of the Court when re-considering the issue again with regard to the risk of misleading consumers, the Patent Office will be obliged to consider how the risk of confusion is likely to affect the power of the effectiveness (common knowledge) of the opposed earlier mark, in the light of the model of the average consumer that was established in the Community case-law. In this situation the PPO should also consider the issue of the possible risk of confusion, taking into account the intened use of both signs.

E-commerce law, case C-298/07

October 20th, 2008, Tomasz Rychlicki

The Court of Justice of European Communities in its judgment of 16 October 2008 in case C-298/07, deutsche internet versicherung, held that 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.

C-275/06, Promusicae

January 29th, 2008, Tomasz Rychlicki

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’), 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, Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, and Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) do not require the Member States to lay down, in a situation such as that in the main proceedings, an obligation to communicate personal data in order to ensure effective protection of copyright in the context of civil proceedings. However, Community law requires that, when transposing those directives, the Member States take care to rely on an interpretation of them which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order. Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality.

Details about this case in the judgment C-275/06, Promusicae.

Patent attorneys, case C-131/01

February 25th, 2006, Tomasz Rychlicki

Judgment of the Court (Sixth Chamber) of 13 February 2003, case C-131/01, Commission of the European Communities v. Italian Republic.

1. Declares that by retaining rules requiring patent agents established in other Member States to be enrolled on the Italian register of patent agents and to have a residence or place of business in Italy, in order to provide services before the Italian Patent Office, the Italian Republic has failed to fulfil its obligations under Articles 49 EC to 55 EC.

Categories: case law | EU law | Judgments of Court of Justice of the EC | Polish patent attorneys.

Patent attorneys, case C-478/01

February 21st, 2006, Tomasz Rychlicki

Judgment of the Court (Fourth Chamber) of 6 March 2003, case C-478/01, Commission of the European Communities v. Grand Duchy of Luxembourg.

1. Declares that, having regard to the requirement that patent agents, when supplying services, should elect domicile with an approved agent, and having regard to the fact that the Luxembourg Government has not provided information concerning the precise conditions for the application of Article 85(2) of the Law of 20 July 1992 amending the rules on patents and Articles 19 and 20 of the Law of 28 December 1998 governing access to occupations in craft trades, business and industry, and to certain liberal professions, the Grand Duchy of Luxembourg has failed to fulfil its obligations under Article 49 EC and Article 10 EC.

Patent attorneys, case C-76/90

February 13th, 2006, Tomasz Rychlicki

Judgment of the Court (Sixth Chamber) of 25 July 1991 in Case C-76/90, Manfred Säger v Dennemeyer & Co. Ltd.

Summary

1. Article 59 of the Treaty requires not only the elimination of all discrimination against a person providing services on the grounds of his nationality, but also the abolition of any restriction, even if it applies without distinction to national providers of services and to those of other Member States, when it is liable to prohibit or otherwise impede the activities of a provider of services established in another Member State where he lawfully provides similar services. In particular, a Member State may not make the provision of services in its territory subject to compliance with all the conditions required for establishment and thereby deprive of all practical effectiveness the provisions of the Treaty whose object is, precisely, to guarantee the freedom to provide services. Such a restriction is all the less permissible where, unlike the situation governed by the third paragraph of Article 60 of the Treaty, the service is supplied without its being necessary for the person providing it to visit the territory of the Member State where it is provided.

2. Having regard to the particular characteristics of the provisions of services in certain sectors of activity, specific requirements imposed on the provider, which result from the application of rules governing those types of activities, cannot be regarded as incompatible with the Treaty. However, as a fundamental principle of the Treaty, the freedom to provide services may be limited only by provisions which are justified by imperative reasons relating to the public interest and which apply to all persons or undertakings pursuing an activity in the State of destination, in so far as that interest is not protected by the rules to which the person providing the services is subject in the Member State in which he is established. In particular, those requirements must be objectively necessary in order to ensure compliance with professional rules and to guarantee the protection of the recipient of services and they must not exceed what is necessary to attain those objectives.

3. Article 59 of the EEC Treaty precludes provisions of a Member State which prohibit a company established in another Member State from providing patent-owners in the territory of the first State with a service for monitoring those patents and renewing them by payment of the requisite fees, on the ground that, by virtue of those provisions, such activities are reserved to persons holding a special professional qualification, such as a qualification as patent agent.

Categories: case law | Judgments of Court of Justice of the EC | Polish Chamber of Patent Attorneys | Polish patent attorneys | Treaty on European Union.

Trade mark law, case II SA 3446/01

August 10th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 14 December 2001, case file II SA 3446/01 ruled that the English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark.

The udgments of the Court of Justice of the EC in case C-3/03 P, Matratzen Concord GmbH vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs), [2004] E.C.R. I-3657 and C-421/04, Matratzen Concord AG vs. Hukla Germany SA, [2006] E.C.R. I-2303, have been issued couple of years later.