The ECJ in 2015 on Intellectual Property, Marketing & Media Law

The ECJ in 2015 on Intellectual Property, Marketing & Media Law THE ECJ IN 2015 ON INTELLECTUAL PROPERTY MARKETING & MEDIA LAW Edited by Hofhuis ...
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The ECJ in 2015 on Intellectual Property, Marketing & Media Law

THE ECJ IN 2015 ON

INTELLECTUAL PROPERTY MARKETING & MEDIA LAW

Edited by

Hofhuis Alkema Groen

This is a publication of Hofhuis Alkema Groen Design and layout: Argante Argante, Amsterdam Photography: Thomas Manneke, Amsterdam Printed by Zwaan Printmedia, Wormerveer

© 2015 Hofhuis Alkema Groen Keizersgracht 212, 1016 DX Amsterdam [email protected] www.hofhuisalkemagroen.nl All rights are reserved. No part of this publication may be reproduced, stored in a retrieval system or transmitted in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without prior permission of Hofhuis Alkema Groen Advocaten. Enquiries concerning reproduction which may not be covered by the above should be addressed to Hofhuis Alkema Groen Advocaten at the address above.

INTRODUCTION

The aim of this book is to provide a comprehensive overview of the past year’s judgments and orders of the Court of Justice of the European Union (referred to as the ECJ) for legal practitioners active in the areas of law offered by our firm. These areas have been summarised as ‘Intellectual Property, Marketing and Media Law’. But, as the nature of our profession requires, there is some further explanation to be given as to what is included in this overview and what is not. - In the intellectual property practice of our firm we focus on soft IP, most notably trademarks, copyrights, neighbouring rights, database rights and design rights. All ECJ judgments and orders on these topics are addressed in this book. We do not focus on patents or plant variety rights, so ECJ judgments on these topics are not included. - The majority of the legal aspects of marketing have been harmonised (either entirely or in part). This includes advertising law, health claims, labelling and unfair commercial practices. All judgments on these topics are addressed in this book. We have chosen not to address marketing related case law on directives or regulations that apply to one specific sector or product category only (e.g. the judgments in C-573/13, on rules for the operation of air services in the EU, and C-207/14, on the exploitation and marketing of natural mineral waters). We believe that such case law is relevant to a very limited number of readers of this book. p.05

- In our media practice, we focus on freedom of speech and media related IP law. As the first is not the subject of any specific directive or regulation, there are no cases on this topic addressed in this book. We do not focus on law pertaining to media as a regulated market, so case law relating thereto is not included herein. - Judgments on procedural aspects of EU law or harmonised national law and on private international law may bear relevance for our practice. However, judgments on these topics have only been included insofar as they pertain to IP related cases (including all cases relating to the Enforcement Directive). - In appeal proceedings where the appeal is manifestly inadmissible or manifestly unfounded, the ECJ may decide not to render judgment, but to give its decision by order. By their nature, these orders generally do not provide for new insights in EU law. For this reason, we have decided not to summarise them, unless we considered one or more topics to be worth highlighting (which, in fact, was only the case in the order of 12 February 2015, in Gamesa Eólica v Enercon, C‑35/14 P). The other orders are listed at the end of this book. Although the ECJ also renders orders in preliminary proceedings, we have decided to summarise these nonetheless. Drafts for the summaries included in this book have been prepared by Anne Sliepenbeek, Aimée van Hattum and Bart Lukaszewicz. All texts have been reviewed and edited by Max Denyer-Green (Penguin Proofing). This book has been designed by Tess Argante (Argante Argante). All has been coordinated by Wendy Bond-Mooijer. We thank them all for their excellent work. This book is easily as much theirs as it is ours. Adonna Alkema, Arnout Groen, Jesse Hofhuis Amsterdam, December 2015 p.06

TABLE OF CONTENTS

Introduction – – – – – – – – – – – – – – – – – – – – – – – – – – – 05 Categorised table of cases – – – – – – – – – – – – – – – – – – 09 List of Directives and Regulations – – – – – – – – – – – – – 11 Winter – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – 13

15 January 2015, C-30/14 (Ryanair) 22 January 2015, C-419/13 (Art & Allposters International) 22 January 2015, C-441/13 (Hejduk) 12 February 2015, C-35/14 P (Gamesa Eólica v Enercon) 26 February 2015, C-41/14 (Christie’s France) 5 March 2015, C-463/12 (Copydan Båndkopi) 10 March 2015, C-491/14 (Rosa dels Vents Assessoria) 19 March 2015, C-182/14 P (Mega Brands International)

15 19 21 24 26 29 34 35

Spring – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – 37 26 March 2015, C-279/13 (C More Entertainment AB) 16 April 2015, C-388/13 (UPC Magyarország) 7 May 2015, C-445/13 P (Voss of Norway v OHIM) 13 May 2015, C-516/13 (Dimensione Direct Sales) 4 June 2015, C-195/14 (Teekanne)

p.07

39 42 45 47 50

Summer – – – – – – – – – – – – – – – – – – – – – – – – – – – – – 53 25 June 2015, C-147/14 (Loutfi Management) 55 14 July 2015, C-151/15 (Sociedade Portuguesa de Autores) 57 16 July 2015, C-544/13 and C-545/13 (Abcur) 58 16 July 2015, C-580/13 (Coty Germany) 60 16 July 2015, C-681/13 (Diageo Brands) 62 16 July 2015, C-379/14 (TOP Logistics and Others) 66 3 September 2015, C-125/14 (Iron & Smith) 68 8 September 2015, C-13/15 (Cdiscount) 72 16 September 2015, C-215/14 (Société des Produits Nestlé) 75

Autumn – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – 79 6 October 2015, C-500/14 (Ford Motor Company) 22 October 2015, C-20/14 (BGW) 29 October 2015, C-490/14 (Verlag Esterbauer) 12 November 2015, C-572/13 (Hewlett-Packard Belgium) 19 November 2015, C-325/14 (SBS Belgium) 10 December 2015, C-603/14 P (El Corte Inglés v OHIM)

81 84 86 89 93 96

Other orders of the ECJ – – – – – – – – – – – – – – – – – – – – 99

p.08

CATEGORISED TABLE OF CASES

TRADEMARKS – – – – – – – – – – – – – – – – – – – – – – – – – – – – – Validity 7 May 2015, C-445/13 P (Voss of Norway v OHIM) 45 16 September 2015, C-215/14 (Société des Produits Nestlé) 75

Scope of protection 10 March 2015, C-491/14 (Rosa dels Vents Assessoria) 19 March 2015, C-182/14 P (Mega Brands International) 25 June 2015, C-147/14 (Loutfi Management) 16 July 2015, C-379/14 (TOP Logistics and Others) 3 September 2015, C-125/14 (Iron & Smith) 22 October 2015, C-20/14 (BGW)

34 35 55 66 68 84

Limitations 6 October 2015, C-500/14 (Ford Motor Company) 10 December 2015, C-603/14 P (El Corte Inglés v OHIM)

81 96

COPYRIGHTS – – – – – – – – – – – – – – – – – – – – – – – – – – – – – Scope of protection 26 March 2015, C-279/13 (C More Entertainment AB) 39 13 May 2015, C-516/13 (Dimensione Direct Sales) 47 14 July 2015, C-151/15 (Sociedade Portuguesa de Autores) 57 19 November 2015, C-325/14 (SBS Belgium)

Limitations 22 January 2015, C-419/13 (Art & Allposters International) 19 5 March 2015, C-463/12 (Copydan Båndkopi) 29 12 November 2015, C-572/13 (Hewlett-Packard Belgium) 89

p.09

Resale right 26 February 2015, C-41/14 (Christie’s France)

26

DATABASE RIGHTS – – – – – – – – – – – – – – – – – – – – – – – – – – Applicability of Directive 15 January 2015, C-30/14 (Ryanair)

15

Object of protection 29 October 2015, C-490/14 (Verlag Esterbauer)

86

MARKETING – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – Unfair commercial practices 16 April 2015, C-388/13 (UPC Magyarország) 16 July 2015, C-544/13 and C-545/13 (Abcur) 8 September 2015, C-13/15 (Cdiscount)

42 58 72

Labelling 4 June 2015, C-195/14 (Teekanne)

50

ENFORCEMENT – – – – – – – – – – – – – – – – – – – – – – – – – – – – Right of information 16 July 2015, C-580/13 (Coty Germany)

60

Legal costs 16 July 2015, C-681/13 (Diageo Brands)

62

PROCEDURAL LAW – – – – – – – – – – – – – – – – – – – – – – – – – – Admissibility 12 February 2015, C-35/14 P (Gamesa Eólica v Enercon)

24

PRIVATE INTERNATIONAL LAW – – – – – – – – – – – – – – – – – – Jurisdiction 22 January 2015, C-441/13 (Hejduk)

21

Recognition 16 July 2015, C-681/13 (Diageo Brands)

p.10

62

LIST OF DIRECTIVES AND REGULATIONS

Brussels I Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters Copyright Directive 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 Database Directive Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases Design Directive Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs Design Regulation Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs Enforcement Directive Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights p.11

Food Information Regulation Regulation No 1169/2011 of the European Parliament and of the Council of 25 October 2011 on the provision of food information to consumers Labelling Directive Directive 2000/13/EC of the European Parliament and of the Council of 20 March 2000 on the approximation of the laws of the Member States relating to the labelling, presentation and advertising of foodstuffs Rental Right and Lending Right Directive Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property Resale Right Directive Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art Trademark Directive Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks Trademark Regulation Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark Unfair Commercial Practices Directive Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market

p.12

WINTER 1 January up to 20 March 2015

15 January 2015

C-30/14 Ryanair

The matter at hand

DATABASE RIGHTS – Applicability of Directive

DATABASE DIRECTIVE NOT APPLICABLE TO NON-PROTECTED DATABASES

PR Aviation operates a comparison website on which consumers can compare prices of flights offered online by low-cost air companies, and can – subsequently – book a flight. In order to fulfil individual queries PR Aviation obtains the necessary data, inter alia, from the Ryanair website. In order to perform a search and access the data on this website, visitors are required to accept Ryanair’s general terms and conditions (by ticking a box to that effect) which contain a clause prohibiting use of the website for commercial purposes. Ryanair claimed that PR Aviation had infringed its copyrights and database rights and that it had acted contrary to the terms and conditions governing the use of its website. With regard to the sui generis database right, the Court of Appeal held that Ryanair did not establish the existence of ‘substantial investment’ within the meaning of the Database Directive and denied database protection. With regard to copyright, Ryanair solely relied on geschriftenbescherming (copyright protection for nonoriginal writings) claiming that the individual records in the flight database were protected. The Court of Appeal held that it was not obliged to establish whether such rights subsisted in Ryanair’s database records, because PR Aviation could successfully invoke the copyright exception of Article 24a(1) of the Netherlands Copyright Act (an implementation of Article 6 and 15 of the Database

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15 January 2015

C-30/14 Ryanair

Directive) which enables a legitimate user to make normal use of a database. The Court of Appeal held that PR Aviation’s conduct corresponded to such normal and legitimate use of the Ryanair website. It added that Article 15 of the Database Directive provides that the rights of the ‘lawful user’ to make ‘normal use’ of a database are of mandatory law, and that the prohibition in Ryanair’s terms and conditions was therefore null and void. Ryanair has appealed against this judgment before the Netherlands Supreme Court, claiming, inter alia, that the Court of Appeal wrongly applied Article 24a of the Netherlands Copyright Act and wrongly held that this exception could be invoked. According to Ryanair the actions of PR Aviation were in breach of copyright protection for non-original writings and of the terms and conditions on the website. In a landmark decision in Netherlands copyright law, the Supreme Court held, with reference to Football Dataco (C-604/10), that the concept of copyright protection for non-original writings, in existence since 1912, was contrary to the harmonised concept of what constitutes a copyrightable work. The Supreme Court then reached the conclusion that the Ryanair database was neither protected by copyright law, nor by sui generis database law. Not being sure whether it could apply the regulations stemming from the Database Directive with regard to databases that are not protected by the sui generis right, the Supreme Court asked “whether the scope of the Database Directive covers databases which are not protected either under Chapter II thereof by copyright or under Chapter III by the sui generis right and, if, therefore, the limits on contractual freedom which result from Articles 6(1), 8 and 15 of that directive also apply to such databases” (paragraph 27 of the ECJ judgment).

p.16

15 January 2015

The judgment of the ECJ

The ECJ establishes that “it is clear from the purpose and structure of the Database Directive that Articles 6(1), 8 and 15 thereof, which establish mandatory rights for lawful users of databases, are not applicable to a database which is not protected either by copyright or by the sui generis right under that directive, so that it does not prevent the adoption of contractual clauses concerning the conditions of use of such a database” (paragraph 39). The ECJ continues by explaining: “That being the case, if the author of a database protected by the Database Directive decides to authorise the use of its database or a copy thereof, he has the option, as confirmed by recital 34 in the preamble to that directive, to regulate that use by an agreement concluded with a lawful user which sets out, in compliance with the provisions of that directive, the ‘purposes and the way’ of using that database or a copy thereof” (paragraph 43). “However, as regards a database to which the Database Directive is not applicable, its author is not eligible for the system of legal protection instituted by that directive, so that he may claim protection for his database only on the basis of the applicable national law” (paragraph 44). As a result, the ECJ concludes that the Database Directive “must be interpreted as meaning that it is not applicable to a database which is not protected either by copyright or by the sui generis right under that directive, so that Articles 6(1), 8 and 15 of that directive do not preclude the author of such a database from laying down contractual limitations on its use by third parties, without prejudice to the applicable national law” (paragraph 45).

Commentary

After several decisions in copyright law where the ECJ made maximal use of its power to harmonise (by declaring itself competent with regard to questions that all thought were outside of the harmonising effect p.17

15 January 2015

C-30/14 Ryanair

of directives, for instance with regard to the concept of what constitutes a copyrightable work, and with regard to certain aspects of the ‘making available right’), the ECJ now does not do so with regard to database law. As usual, no explanation is offered. The effect of the decision is therefore somewhat disappointing. The only lesson to be learned from the decision is that the Database Directive is not applicable to databases that are not protected by the sui generis right or by the ‘structure’ copyright. With regard to the material question in the proceedings – is it allowed to contractually override the interests of ‘lawful users’ to make ‘normal use’ of a database – nothing has yet been decided. Based on the underlying principles of the Database Directive such a contractual clause can be in breach of competition law or Article 10 of the European Convention on Human Rights (freedom of information).

p.18

22 January 2015

C‑419/13 Art & Allposters International

The matter at hand

COPYRIGHTS – Limitations

NO EXHAUSTION OF DISTRIBUTION RIGHT AFTER ALTERATION OF MEDIUM

Allposters sells canvases reproducing the works of famous painters. In order to produce these canvases, Allposters uses existing posters that have been put on the market in the EU with the relevant copyright owners’ consent and transfers the images on these posters to a canvas by means of a chemical process. The images on the original posters disappear from the paper during this process. Article 4(2) of the Copyright Directive provides, in short, that the first sale in the Community of an object reproducing a copyright-protected work with the copyright holder’s consent exhausts the right to control the resale of that object within the Community. Invoking this provision, Allposters in essence took the position that copyright owners could not prevent the sale of the canvases as the ink depicting the copyright protected work was put on the market with the right holder’s consent.

The judgment of the ECJ

The ECJ first of all establishes that “exhaustion of the distribution right applies to the tangible object into which a protected work or its copy is incorporated if it has been placed onto the market with the copyright holder’s consent” (paragraph 40). This rule is then applied by holding that “a replacement of the medium […] results in the creation of a new object incorporating the image of the protected work, whereas the

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22 January 2015

C‑419/13 Art & Allposters International

poster itself ceases to exist. Such an alteration of the copy of the protected work […] is actually sufficient to constitute a new reproduction of that work, within the meaning of Article 2(a) of the Copyright Directive, which is covered by the exclusive right of the author and requires his authorisation” (paragraph 43). “The fact that the ink is saved during the transfer cannot affect the finding that the image’s medium has been altered. What is important is whether the altered object itself, taken as a whole, is, physically, the object that was placed onto the market with the consent of the right holder” (paragraph 45). The ECJ concludes by explaining that this interpretation is supported by the principal objective of the Copyright Directive to establish a high level of protection of authors, allowing them to obtain an appropriate reward for the use of their works (paragraph 48).

p.20

22 January 2015

C-441/13 Hejduk

The matter at hand

PRIVATE INTERNATIONAL LAW – Jurisdiction

ACCESIBILITY OF WEBSITE ESTABLISHES JURISDICTION

Ms Hejduk is a professional photographer of architecture from Austria and is the creator of photographic works depicting the buildings of the Austrian architect Georg W. Reinberg. The German company EnergieAgentur made those photographs available on its website for viewing and downloading without Ms Hejduk’s consent and without providing a statement of authorship. Taking the view that her copyright had been infringed by EnergieAgentur, Ms Hejduk brought an action before the Commercial Court in Vienna. Ms Hejduk relied on Article 5(3) of Brussels I which provides that a person domiciled in a Member State may, in another Member State, be sued in matters relating to tort, delict or quasi-delict, in the courts for the place “where the harmful event occurred or may occur”. EnergieAgentur however argued that the Vienna Commercial Court lacked international and local jurisdiction, because its website is not directed at Austria and because the mere fact that it is possible that a website may be accessed from Austria is insufficient to confer jurisdiction on the Austrian judge. The Commercial Court decided to ask the ECJ whether Article 5(3) of Brussels I must be interpreted as meaning that, in the event of an allegation of infringement of rights related to copyright which are guaranteed by the Member State of the court seised, that court has

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22 January 2015

C-441/13 Hejduk

The judgment of the ECJ

jurisdiction to hear an action for damages in respect of an infringement of those rights resulting from the placing of protected photographs online on a website accessible in its territorial jurisdiction. The ECJ reiterates that the special jurisdictional rule of Article 5(3) of Brussels I applies only by way of derogation from the general rule of jurisdiction laid down in Article 2 of Brussels I and attributing jurisdiction to the courts of the Member States in which the defendant is domiciled (paragraph 17). With reference to Coty Germany, C-360/12, it further holds that “the expression ‘place where the harmful event occurred or may occur’ in Article 5(3) of Brussels I is intended to cover both the place where the damage occurred and the place of the event giving rise to it, so that the defendant may be sued, at the option of the applicant, in the courts for either of those places” (paragraph 18). The ECJ also reiterates that in cases in which the alleged tort consists in the infringement of copyright by the placing of certain photographs online on a website without the photographer’s consent, the place where the event giving rise to the damage will be the place of activation of the process for the technical display of the photographs on that website, i.e. the place where the owner of the website took and carried out the decision to place the photographs online, in this case Germany (paragraphs 23-26). However, given that in the main proceedings this place (Germany) does not attribute jurisdiction to the Commercial Court in Vienna, the ECJ secondly examines whether that court may have jurisdiction on the basis of the place where the alleged damage occurred. The ECJ considers that Article 5(3) of Brussels I “does not require, in particular, that the activity concerned be ‘directed to’ the Member State in which the court seised is situated” (paragraph 32). The ECJ then finds that the “occurrence of damage and/or the likelihood of its occurrence arise from the accessibility in

p.22

22 January 2015

C-441/13 Hejduk

the Member State of the referring court, via the website of EnergieAgentur, of the photographs to which the rights relied on by Ms Hejduk pertain” (paragraph 34). Lastly, the ECJ reiterates (with reference to Pinckney, C-170/12) that, “given that the protection of copyright and rights related to copyright granted by the Member State of the court seised is limited to the territory of that Member State, a court seised on the basis of the place where the alleged damage occurred has jurisdiction only to rule on the damage caused within that Member State” (paragraph 36).

Commentary

This decision seems to provide for an almost endless possibility for ‘forum shopping’ in copyright cases with regard to alleged online infringements. National courts will almost always be competent to hear a claim with the sole reservation that the measures sought can only apply to the country where the case is pending. If claiming full damages and the final shutting down of the service (in one hit) is the objective, then the forum should be the court of the country of the defendant. In case this is not an attractive forum, a favourable precedent could be obtained in any country where the alleged online infringement takes place (and results in a certain minimum of damage, point d’intérêt, point d’action). In our opinion this rule of competence that the ECJ established can also be invoked in actions on the basis of tort against online intermediaries (ISP’s).

p.23

12 February 2015

C‑35/14 P Gamesa Eólica v Enercon

The matter at hand

PROCEDURAL LAW – Admissibility

NO RIGHT TO APPEAL IN CASE OF NO POSITION IN PREVIOUS INSTANCE

The OHIM registered a trademark upon application for registration by Enercon. Gamesa filed an application for a declaration of invalidity of the mark. After being unsuccessful in the OHIM proceedings, Gamesa applied before the General Court. Although that application was served on it, Enercon did not submit a response but merely sent the General Court the power of attorney given to its lawyer and a letter accepting the language of the case. After the General Court annulled the decision of the Board of Appeal, Enercon filed an appeal before the ECJ. Article 56 of the Statute of the Court of Justice stipulates that “an appeal may be brought by any party which has been unsuccessful, in whole or in part, in its submissions”.

The order of the ECJ

p.24

The ECJ first of all considers that “it follows from the wording of Article 134(1) of the Rules of Procedure of the General Court that, in order to be considered an intervener before the General Court, a party to the proceedings before the Board of Appeal of OHIM other than the applicant before the General Court must have responded to the application in the manner and within the period prescribed” (paragraph 22). Given the very limited procedural participation of Enercon before the General Court, the ECJ concludes that “it must […] be held that Enercon did not participate in the proceedings before the General Court […], particularly since it neither proposed its own form of order nor stated that it was supporting the form

12 February 2015

C‑35/14 P Gamesa Eólica v Enercon

of order sought by either of the other parties. Accordingly, it was not an intervener in the proceedings before the General Court and cannot, therefore, bring an appeal against the judgment of the General Court” (paragraph 25).

Commentary

As the OHIM is the defendant in an appeal before the General Court, it can be attractive from a cost perspective to let the OHIM take care of the defence. The present judgment however clarifies that, to keep the option open to appeal an adverse General Court ruling, it is required to at least submit a statement supporting the OHIM’s form of order.

p.25

26 February 2015

C-41/14 Christie’s France

The matter at hand

COPYRIGHTS – Resale right

BUYER MAY ULTIMATELY BEAR THE COSTS OF THE RESALE RIGHT

The French subsidiary of auction house Christie’s included a term in its general conditions of sale which allowed it to collect a sum, for and on behalf of the seller, in respect of any piece of art subject to the resale right which is marked in its catalogue with the symbol ‘ ’, which sum Christie’s will then pass to the collecting agency or to the artist himself. The French national association of antique dealers (SNA), whose members are direct competitors of Christie’s France, were of the opinion that the aforementioned term amounted to unfair competition, as it was placing the onus of payment of the resale royalty upon the buyer, making the buyer ultimately responsible for the resale right. Article 1(4) of the Resale Right Directive provides that the resale right shall be paid by the seller, but that Member States are allowed to provide that an art professional involved (not being the seller, but an intermediary) shall alone be liable or shall share liability with the seller for payment of the royalty. The French Court decided to ask the ECJ whether Article 1(4) of the Resale Right Directive should be interpreted as meaning that the seller is required to ultimately bear the cost of the resale royalty or whether any derogation by agreement is possible.

p.26

26 February 2015

The judgment of the ECJ

The ECJ first of all recalls the ratio behind the resale right, being to ensure that authors of graphic and plastic works of art share in the economic success of their original works (paragraph 15). Subsequently, the ECJ observes that the Member States are responsible for ensuring that the resale right is actually paid. This responsibility also implies that the Member States may determine, within the framework of the Resale Right Directive, the person liable for payment to the author (paragraphs 18-19). Several language versions of the Directive however seem to contradict each other with regard to the question of who is ultimately liable (paragraph 25). There is uncertainty as to whether Article 1(4) – in short – indicates the seller/ intermediary as ‘the person responsible for the royalty’ or as ‘the person who must ultimately bear the cost of the royalty’. The ECJ holds that this seeming contradiction should be resolved by looking at the context and purpose of the Directive (paragraph 26). In doing so, the ECJ establishes that the Resale Right Directive “makes provision about certain matters relating to [the amount of the levy], the transactions subject to payment of a royalty and the basis of calculation, [but that] it is silent about the identity of the person who must definitively bear the cost of the royalty” (paragraph 27). The ECJ further holds that one of the objectives is “to bring to an end distortions of competition on the art market” (paragraph 28). To be able to achieve this objective, the ECJ finds it necessary that “provision be made as to the person liable for payment of the royalty […] and as to the rules for establishing the amount of the royalty[, but not] with regard to the question as to who, definitively, will bear the cost of the royalty” (paragraph 30). In view of the foregoing, the ECJ concludes that “in a situation where a Member State adopts legislation which provides that the seller or an art market professional involved in the transaction is to be the person by whom the royalty is

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26 February 2015

C-41/14 Christie’s France

p.28

payable, the Resale Right Directive does not preclude those persons from agreeing, on the occasion of a resale, with any other person, including the buyer, that that other person will ultimately bear the cost of the resale royalty due to the author, provided that a contractual arrangement of that kind does not affect the obligations and liability which the person by whom the royalty is payable has towards the author” (paragraph 32).

5 March 2015

C-463/12 Copydan Båndkopi

The matter at hand

COPYRIGHTS – Limitations

SIGNIFICANCE OF COPYING FUNCTION IS RELEVANT FOR AMOUNT OF COMPENSATION and LICENSING PRIVATE COPYING HAS NO LEGAL EFFECT ON PRIVATE COPYING EXCEPTION

Copydan is the Danish collecting society responsible for the collection and distribution of the private copying levy. It has brought proceedings against Nokia claiming that Nokia should be ordered to pay a levy in respect of memory cards imported during the period of 2004 to 2009. These memory cards are contained in mobile phones and can be used to store copyright protected files such as music, films and other works. The mobile phones containing the memory cards are sold to business customers who sell them on to both individuals and other business customers. Nokia contends that a private copying levy is not payable where the reproduction is not lawful or where use of the reproduction is authorised by the right holder. According to Nokia, only lawful reproductions for private use that are not authorised by the right holder should be subject to the fair compensation system. Nokia claims that mobile telephone memory cards rarely contain such copies. The Danish court refers a number of questions to the ECJ regarding, inter alia, the private copying levy in connection with licensed content, the use of which has been authorised by the right holder; the effect of technological measures on the amount of fair compensation; the question what constitutes minimal prejudice which does not call for a compensation; how to handle a situation where private copying is not the primary or most essential function of

p.29

5 March 2015

mobile telephone memory cards; and how to apply the private copying levy system when it comes to professional use of storage media. The judgment of the ECJ

The ECJ first establishes, referring to existing case law, that Member States which have decided to introduce the private copying exception into their national law, are required to provide for the payment of fair compensation to right holders. Since Member States enjoy broad discretion in that regard, it is for them to determine who must pay the compensation and to establish the level of compensation. However, the level of compensation must be linked to the harm resulting for the right holder from the making of copies for private use (paragraphs 19 to 21). In principle, the person reproducing a work for his own private use is liable to finance the compensation. The ECJ has however accepted that, given the practical difficulties in identifying private users and obliging them to compensate the right holders, it is open to the Member States to establish a system where the private copying levy is not charged to private persons, but to those who make available the digital reproduction equipment, devices and media (paragraphs 22 and 23). It is subsequently considered that “it is unnecessary to show that natural persons in fact make copies for private purposes with the aid of such equipment. Those persons are rightly presumed to benefit fully from the making available of that equipment, that is to say, they are deemed to take full advantage of the functions associated with that equipment, including copying” (paragraph 23) and that “it follows that if digital reproduction equipment, devices and media are made available to natural persons as private users, the simple fact that that equipment is able to make copies is sufficient in itself to justify the application of the private copying levy” (paragraph 25).

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5 March 2015

C-463/12 Copydan Båndkopi

For these reasons the ECJ concludes that “it is, in principle, irrelevant whether a medium is unifunctional or multifunctional or whether the copying function is […] ancillary to the other functions, as the final users are deemed to take full advantage of all the functions provided by the medium” (paragraph 26). However, the significance of the copying function as opposed to other functions of the device in question can be relevant for the amount of compensation. Where the harm caused to right holders is minimal, no obligation to pay a compensation will arise (paragraphs 27-28). It is within the discretion of the Member States to set the threshold for what is considered minimal prejudice, it being understood that that threshold must be applied in a manner consistent with the principle of equal treatment. The ECJ also elaborates on the application of the private copying levy in situations where the use of recording media does not meet the criteria of the Copyright Directive (e.g. professional use). The ECJ reiterates that the private copying levy may be applied indiscriminately, irrespective of the final use of recording media, provided that (i) this is justified by practical difficulties, such as difficulties associated with identifying the final users, and (ii) that the persons responsible for payment have an effective right to reimbursement of the levy where it is not due. Furthermore, (iii) the levy cannot be applied to the supply of reproduction equipment, devices and media to persons other than natural persons for purposes clearly unrelated to private copying (paragraphs 44 to 48). It is up to the national courts to determine whether the private copying levy system meets these requirements (paragraphs 49 and further). The ECJ further investigates the effects of the fact that the right holder has given his consent to make private copies of files containing protected works, in particular in so far as concerns fair compensation. The ECJ considers that where a Member State has decided to introduce a private copying exception and exclude “any right for rightholders to authorise

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5 March 2015

C-463/12 Copydan Båndkopi

reproduction of their works for private use, any authorising act a right holder may adopt, will be devoid of legal effects […]. Consequently, such an act has no effect on the harm caused to rightholders due to the introduction of the measure depriving them of that right and cannot, therefore, have any bearing on the fair compensation owed” (paragraph 65). Neither can it “give rise to an obligation to pay remuneration of any kind in respect of the reproduction, for private use, by the user of the files concerned to the rightholder who authorised such use” (paragraph 66).

Commentary

This consideration is being used by right holders to claim that copies made after online distribution (e.g. copying an iTunes purchase from a computer to an iPhone) must be taken into account when establishing the amount of a private copying levy. In our opinion this line of reasoning is false since such copies are an integral part of the digital distribution model of right holders. In those circumstances the copy does not result in (additional) damage on the part of the right holder. With regard to the implementation of technological measures the ECJ recalls that such measures are of a voluntary nature and that “the non-application of those measures cannot have the effect that no fair compensation is due” (paragraph 71). It concludes that “it is open to the Member States concerned to make the actual level of compensation […] dependent on whether or not such technological measures are applied, so that […] right holders are encouraged to make use of them and thereby voluntarily contribute to the proper application of the private copying exception” (paragraph 72). With regard to reproductions from an unlawful source, the ECJ reiterates that the Copyright Directive precludes national legislation which does not distinguish the situation p.32

5 March 2015

C-463/12 Copydan Båndkopi

p.33

in which the source from which a reproduction for private use has been made, is lawful from that in which that source is unlawful (ACI Adam, C-435/12). That would “not respect the fair balance to be struck between the interests of the copyright holders and those of the users of protected subject matter, since […] all the users who purchase equipment, devices or media subject to that levy are indirectly penalised” (paragraph 77), since they “inevitably contribute towards the compensation for harm caused by reproductions […] which are not permitted under the Copyright Directive” (paragraph 78).

10 March 2015

C‑491/14 Rosa dels Vents

TRADEMARKS – Scope of protection

A TRADEMARK IS NOT AN INFRINGEMENT DEFENSE

Assessoria

The matter at hand

Rosa dels Vents brought an infringement action against U Hostels to prevent the latter from using a sign similar to Rosa dels Vents’s trademark. U Hostels contended that this action should be dismissed as Rosa dels Vents had not filed an invalidation action against U Hostels’ later trademark registration for that sign. With reference to national case law, the referring court in Madrid raised the question of whether the exclusive right of the proprietor of a trademark extends to a third-party proprietor of a later trademark, without the need for that latter mark to have been declared invalid beforehand.

The order of the ECJ

p.34

The ECJ decided to give its decision in this matter by order, as it already held that the proprietor of a Community trademark can prevent the proprietor of a later trademark from using infringing signs, without the need for that latter mark to have been declared invalid beforehand (Fédération Cynologique, C-561/11). With reference to the considerations therein, the ECJ concludes that it is ”clear from the wording of Article 5(1)of the Trademark Directive and from the general approach of that provision that, under the conditions set out therein, the proprietor of a trade mark must be able to prevent its use by the proprietor of a later mark” (paragraph 27).

19 March 2015

C-182/14 P Mega Brands International

The matter at hand

TRADEMARKS – Scope of protection

DESCRIPTIVE ELEMENT MAY BE DOMINANT BUT OTHER ELEMENTS MUST BE ASSESSED

MEGA Brands applied the sign MAGNEXT for registration as a Community trademark for essentially ‘toys’. Diset opposed against the registration of this mark on the basis of its own Spanish word mark MAGNET 4, registered for inter alia ‘toys’. The General Court dismissed the appeal of MEGA Brands against the OHIM’s decision to uphold Diset’s opposition. Its finding was, in essence, that: ‘magnet’ must be considered to be the dominant element in MAGNET 4; MAGNEXT differs from this dominant element only by the capital letter “X”; and there was a likelihood of confusion given the identity of the goods covered by them and in spite of the weak distinctive character of the earlier mark.

The judgment of the ECJ

It its appeal before the ECJ, MEGA Brands essentially argued that the General Court distorted the facts and infringed the principles established by case law, first, by categorising ‘MAGNET’ as the dominant element of MAGNET 4, even though it had found that that element is descriptive, and, second, by failing to take into consideration the figure ‘4’ which is a component of that mark. With reference to its order in Muñoz Arraiza (C-388/10 P), the ECJ considers that “even if a verbal element should be considered to have a purely descriptive character, that character does not preclude that element from being

p.35

19 March 2015

C-182/14 P Mega Brands International

p.36

acknowledged as dominant for the purposes of assessing the similarity of the signs at issue” (paragraph 34). However, it concludes that “the General Court has not provided any reasoning, not even implicitly, which makes it possible to understand why it categorised the element ‘magnet’ as dominant” (paragraph 57), and that “the General Court has failed to provide any reasoning, even if only implicit reasoning, for its decision not to include the figure ‘4’ in its assessment of the similarity of the signs at issue”(paragraph 60 ). As a consequence, this part of the General Court judgment is set aside and the matter is referred back to the General Court.

SPRING from 21 March up to 20 June 2015

26 March 2015

C-279/13 C More Entertainment AB

The matter at hand

COPYRIGHTS – Scope of protection

NO MAXIMUM HARMONISATION FOR ARTICLE 3 COPYRIGHT DIRECTIVE

C More Entertainment is a Swedish pay-TV station which, in autumn 2007, broadcasted a number of ice hockey matches to which persons interested could have paid access. Sandberg has a website on which he had created links that circumvented the paywall put in place by C More Entertainment. Via those links internet users could access the live broadcasts of two matches for free. Sandberg was subsequently prosecuted for infringing copyright and/or related (neighbouring) rights. It was argued that Sandberg was making the matches available to the public. The right conferred to broadcasting organisations, such as C More Entertainment, by virtue of the Copyright Directive relates specifically to the right of ‘making available to the public’ which forms part of the wider right of ‘communication to the public’. For the purposes of Article 3 of the Copyright Directive, ‘making available to the public’ is intended to refer to ‘interactive on-demand transmissions’ characterised by the fact that members of the public may access them from a place and at a time individually chosen by them. These requirements are not met in case of transmissions broadcast live on internet, such as those at issue in the main proceedings. The proceedings went all the way to the Swedish Supreme Court which noted that the relevant national legislation provided for wider related rights than the provisions set out

p.39

26 March 2015

C-279/13 C More Entertainment AB

The judgment of the ECJ

in Article 3(2) of the Copyright Directive. The Supreme Court therefore referred the question to the ECJ whether Member States may give wider protection to the exclusive right of authors – and broadcasting organisations in particular – by enabling ‘communication to the public’ to cover a greater range of acts than provided for in Article 3(2) of the Copyright Directive. In essence, the Supreme Court was asking whether a Member State can also prohibit the communication to the public of live broadcasts, which does not simultaneously constitute an act of making such broadcasts available to public. The ECJ sets out to investigate whether a Member State can grant broadcasting organisations rights with regard to acts which can be classified as communications to the public but which do not constitute acts of making available to the public. The ECJ considers that “neither Article 3(2) of the Copyright Directive nor any other provision thereof states that the EU legislator sought to harmonise and, in consequence, prevent or remove any differences between the national legislations as regards the extent of the protection which the Member States may grant to the holders of the rights referred to in Article 3(2) (d) with regard to certain acts, which are not expressly referred to in that provision” (paragraph 31). Furthermore, it considers that it is apparent from recital 16 in the preamble to the Rental Right and Lending Right Directive, which is important for the interpretation of the Copyright Directive, “that the Member States should be able to provide for more far-reaching protection for owners of rights related to copyright than that required by the provisions laid down in the Rental Right and Lending Right Directive in respect of broadcasting and communication to the public” (paragraph 33). It goes on to consider that the Rental Right and Lending Right Directive “gives the Member States the option of

p.40

26 March 2015

C-279/13 C More Entertainment AB

providing for more protective provisions with regard to the broadcasting and communication to the public of transmissions made by broadcasting organisations than those which must be instituted in accordance with the provisions of that Directive. Such an option implies that the Member States may grant broadcasting organisations an exclusive right to authorise or prohibit acts of communication to the public of their transmissions and in particular transmissions to which members of the public may obtain access from a place individually chosen by them, it still being understood that, as provided for in Article 12 of the Rental Right and Lending Right Directive, such a right must not affect the protection of copyright in any way” (paragraph 35). The ECJ then concludes that it “follows that Article 3(2) of the Copyright Directive must be interpreted as not affecting the option open to the Member States to grant broadcasting organisations the exclusive right to authorise or prohibit acts of communication to the public of their transmissions provided that such protection does not undermine that of copyright” (paragraph 36).

Commentary

With regard to the ‘making available’ right of Article 3, the Copyright Directive does not provide for maximum harmonisation. The same cannot be said for the ‘reproduction’ right of Article 2 (see Copydan, C-463/12, where it is expressly stipulated that the reproduction right does not, and is not allowed to, cover situations in which the ‘own intellectual character’ is not copied). In our opinion, the same cannot be said either with regard to the ‘work’ concept (see Football Dataco, C-604/10, where no copyright protection is allowed when the criterion of ‘own intellectual character’ has not been fulfilled).

p.41

16 April 2015

C-388/13 UPC Magyarország

The matter at hand

MARKETING – Unfair Commercial Practices

COMMUNICATION OF FALSE INFORMATION TO ONLY ONE CONSUMER IS MISLEADING COMMERCIAL PRACTICE

The Hungarian consumer protection authority ordered UPC to pay a fine of some EUR 85 in respect of an unfair commercial practice within the meaning of the Unfair Commercial Practices Directive for incorrectly informing a subscriber to its cable television services that the last invoice he received related to the period up to 10 February 2011, whereas, as was discovered later, the invoice related to the period up to 14 February 2011. As a result of this incorrect information the subscriber in question, Mr Szabó, had switched to another provider with effect from 10 February 2011 instead of 14 February 2011, causing him to incur the costs of two different subscriptions in the overlapping period of four days. This had cost him an additional payment of some EUR 18. Although UPC did not dispute the fact that it had provided incorrect information, it did object to the imposition of a fine, arguing that the communication of false information on one occasion to a single consumer cannot be regarded as an unfair commercial practice under the Unfair Commercial Practices Directive.

The judgment of the ECJ

p.42

The ECJ first of all points out that the EU legislature conferred a very broad meaning on the term ‘commercial practice’, inter alia as it is defined in Article 2(d) of the Unfair Commercial Practices Directive as “any act […] by a trader, directly connected with the promotion, sale or supply

16 April 2015

C-388/13 UPC Magyarország

of a product to consumers” and as the scope of that directive on grounds of Article 3(1) thereof covers activities “before, during and after a commercial transaction” (paragraphs 32 to 36). The ECJ therefore considers that the term ‘commercial practice’ also covers “the communication of information […] made by an undertaking in the context of the after-sales service relating to a subscription to cable television services by an individual” (paragraph 37). Secondly, the ECJ refers to Article 6(1) which provides that such commercial practice is to be regarded as misleading if it contains false information causing the consumer to take a commercial decision that he would otherwise not have taken. The ECJ finds that all the factors set out in that provision are present in the situation at issue in the main proceedings, which is “characterised by the fact that a consumer received from a professional […] erroneous information as to the duration of the relationship between the two parties, and by the fact that the mistake made by the undertaking prevented the individual from making an informed choice and, moreover, occasioned him additional costs” (paragraph 40). Regarding UPC’s assertion that in the case at hand it concerned an isolated and unintentional act which affected only one single consumer, the ECJ considers that the relevant provisions do not contain any indication that the act on the part of the professional must be recurrent or must concern more than one consumer. “In the light of the need to protect consumers which underlies that directive, those provisions cannot be interpreted as imposing conditions of that kind where they do not even set out such conditions explicitly […]” (paragraph 43). Furthermore, the ECJ remarks that imposing such conditions would require the consumer to establish that other individuals have been harmed by that same professional, which would be extremely difficult to prove (paragraph 46). As to the unintentional nature of UPC’s conduct, the ECJ holds that

p.43

16 April 2015

C-388/13 UPC Magyarország

“Article 11 of the Unfair Commercial Practices Directive expressly provides that the application of measures taken by the Member States in order to combat such practices is independent of evidence of intention, or indeed negligence, on the part of the professional” (paragraph 48). The fact that the consumer could himself have obtained the correct information is irrelevant as well: “The objective of the Unfair Commercial Practices Directive, which is to protect consumers in full against practices of that kind, relies on the assumption that, in relation to a trader, the consumer is in a weaker position, particularly with regard to the level of information” (paragraph 53). Commentary Although this is not the first time that the wish to

ensure a high level of consumer protection leads the ECJ to confer a wide scope on the Unfair Commercial Practices Directive, it is remarkable that the ECJ extends the reach of the Directive to isolated acts directed to one single consumer. Other than the ECJ seems to imply, the wording of the Directive certainly allows for another interpretation, considering that the term ‘practice’ used in the Directive gives the impression that the relevant conduct must be recurring and/or concern more than one consumer. This was also the opinion of the Advocate General in this case, who for a “manifold” of reasons did not consider it feasible to apply the Directive to conduct directed to one single consumer. The ECJ however went the other way with the result that undertakings now risk incurring fines for isolated and unintentional mistakes affecting only one consumer.

p.44

7 May 2015

C‑445/13 P Voss of Norway v OHIM

TRADEMARKS – Validity

OHIM MAY DECIDE CANCELLATION ACTION ON OWN EVIDENCE

The matter at hand

Upon application by Voss of Norway, the OHIM registered a three-dimensional mark for the shape of a bottle for various beverages. Nordic Spirit filed a cancellation action against this mark, arguing that this mark was devoid of distinctive character. Nordic Spirit was successful in its action, both before the Board of Appeal and the General Court. Both had inter alia come to the conclusion that the bottle at issue did not depart significantly from the norms and customs of the relevant sector. Voss of Norway appealed this decision before the ECJ.

The judgment of the ECJ

Voss of Norway argued that Nordic Spirit, being the party that invoked the invalidity of the contested trademark, had the onus of proof. On grounds thereof, Voss of Norway inter alia argued that the General Court erred in law by not examining its argument that the Board of Appeal unduly imposed on it the burden of proving the distinctive character of its mark. The ECJ however rejects this ground of appeal as unfounded as it considers that “the Board of Appeal […] carried out an independent analysis of the distinctive character of the contested trade mark and did not impose the burden of proving the existence of such distinctiveness on Voss” (paragraph 58). Commentary In Oberbank and Others (C-217/13), the ECJ concludes

that the burden of proof on acquired distinctiveness p.45

7 May 2015

C‑445/13 P Voss of Norway v OHIM

must be borne by the proprietor of the mark, also in an invalidation action. The reasoning used for that conclusion does however not apply to intrinsic distinctive character. Hence, the question of who bears the burden of proof in that regard remains unanswered by the ECJ. The present case does not change this, as the ECJ apparently concludes that the OHIM itself had gathered sufficient factual basis for its conclusion. Although evidence gathering by the OHIM in a cancellation action may be perceived by the trademark proprietor as a stab in the back from the OHIM (who accepted the mark on absolute grounds at first), it is a consequence of the administrative nature of trademark bureaus. This may in fact be something to take into account when a choice must be made between claiming invalidity as a counter claim in court proceedings, or initiating an invalidation action before a trademarks bureau: while a court will only assess facts raised by the parties, a bureau may assist the party invoking the invalidity in gathering evidence.

p.46

13 May 2015

C-516/13 Dimensione

COPYRIGHTS – Scope of protection

DISTRIBUTION RIGHT ALSO COVERS ADVERTISING

Direct Sales

The matter at hand

Knoll is a company that distributes high-value designer furniture throughout the world. Knoll is authorised to assert the exclusive copyrights in certain of those designs with regard to Germany. Dimensione, another distributor of designer furniture, distributes its furniture by direct sale in Europe and offers furniture for sale on its website. It advertised furniture similar to the protected Knoll designs on its website, which was also available in German, and in various German daily newspapers, magazines and advertising brochures, stating: “Buy your furniture from Italy, but pay nothing until collection or delivery by a forwarding agent authorised to take payment (service arranged on request).” It could not be established whether Dimensione actually sold products in Germany. Knoll stated that the furniture offered for sale by Dimensione were imitations or counterfeit versions of the Knoll-designs and brought an action against both Dimensione and its Managing Director Labianca seeking an order prohibiting them from offering that furniture for sale in Germany. Article 4(1) of the Copyright Directive stipulates that Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise. Because it could only be established that Dimensione advertised for the product in

p.47

13 May 2015

C-516/13 Dimensione Direct Sales

Germany (and not that it actually sold/delivered furniture to German consumers), the German Federal Court of Justice asked the ECJ three questions concerning the scope of the distribution right: i) whether the distribution right includes the right to offer the original or a copy of a protected work to the public for sale, and, if this question is to be answered in the affirmative; ii) whether the distribution right includes the exclusive right to advertise for those objects; and iii) whether the distribution right is infringed where eventually no purchase takes place on the basis of the offer for sale.

The judgment of the ECJ

The ECJ refers to earlier case law on Article 4(1) of the Copyright Directive in which it has held “that distribution to the public is characterised by a series of acts going, at the very least, from the conclusion of a contract of sale to the performance thereof by delivery to a member of the public. A trader in such circumstances bears responsibility for any act carried out by him or on his behalf, giving rise to a ‘distribution to the public’ in a Member State where the goods distributed are protected by copyright” (paragraph 25). The ECJ points out that it had expressly mentioned the words ‘at the very least’ and “that acts or steps preceding the conclusion of a contract of sale may also fall within the concept of distribution” (paragraph 26). With regard to the first question, the ECJ considers that, as is the case where a contract of sale and dispatch has already been concluded, ‘distribution to the public’ must also be considered proven where an offer of a contract of sale is made which binds its author, given such an offer constitutes an act prior to a sale being made (paragraph 27).

p.48

13 May 2015

C-516/13 Dimensione Direct Sales

The ECJ subsequently holds that there is also “an infringement of the exclusive distribution right under Article 4(1) of the Copyright Directive, where a trader, who does not hold the copyright, sells protected works or copies thereof and addresses an advertisement, through its website, by direct mail or in the press, to consumers located in the territory of the Member State in which those works are protected in order to invite them to purchase it” (paragraph 31). The ECJ deems it irrelevant “that such advertising is not followed by the transfer of ownership of the protected work or a copy thereof to the purchaser” (paragraph 32). It therewith also answers the third question in the affirmative.

Commentary

In its judgment the ECJ clarifies the answer with regard to the third question by distinguishing from its judgment in Peek & Cloppenburg (C‑456/06, paragraphs 33, 36 and 41). In that judgment the ECJ held that the concept of distribution to the public entails a transfer of the ownership of that object. Although – strictly speaking – advertising does not entail a transfer of ownership, the ECJ rightly points out that advertising presupposes that members of the public are invited, by targeted advertising, to acquire ownership of the original or a copy of that work. It therefore seems that the ECJ is establishing the rule that the distribution right entails all actions enabling members of the public to acquire ownership of the original or a copy of that work.

p.49

4 June 2015

C‑195/14 Teekanne

The matter at hand

MARKETING – Labelling

PACKAGING MAY MISLEAD IN SPITE OF CORRECT LIST OF INGREDIENTS

The German company Teekanne marketed a fruit tea called ‘Felix raspberry and vanilla adventure’. The packaging comprised in particular depictions of raspberries and vanilla flowers, the indications ‘fruit tea with natural flavourings’ and a seal with the indication ‘only natural ingredients’ inside a golden circle. In fact, however, the fruit tea did not contain vanilla or raspberry constituents or flavourings, but, in the words of the list of ingredients printed on the packaging, ‘natural flavourings with a taste of vanilla and raspberry’. The BVV, a German consumer protection association, brought an action against Teekanne submitting that the fruit tea’s packaging misled the consumer with regard to the contents of the tea within the meaning of Article 2(1)(a) of the Labelling Directive. The first instance court upheld the action, but that judgment was set aside in appeal on the ground that it was clear from the list of ingredients that the tea did not contain vanilla or raspberry constituents but only flavourings that tasted as such. The case was then presented to the Federal Court of Justice which referred it to the ECJ, asking, in essence, whether the Labelling Directive precludes the packaging of a foodstuff from giving the impression that it contains a certain ingredient that in fact is not present in the foodstuff, if the list of ingredients printed on the packaging does make clear that the foodstuff does not contain that ingredient.

p.50

4 June 2015

The judgment of the ECJ

While the ECJ recalls its own case law in which it acknowledged “that consumers whose purchasing decisions depend on the composition of the products in question will first read the list of ingredients” (paragraph 37), it considers that “the fact that the list of ingredients is displayed on the packaging […] does not in itself exclude the possibility that the labelling […] may be such as to mislead the purchaser […]” (paragraph 38). In this regard, the ECJ refers to Article 1(3)(a) of the Labelling Directive, which defines labelling as “any words, particulars, trade marks, brand name, pictorial matter or symbol relating to a foodstuff and placed on any packaging”, some of which may be misleading, erroneous, ambiguous, contradictory or incomprehensible. “In that case, the list of ingredients, even though correct and comprehensive, may in some situations not be capable of correcting sufficiently the consumer’s erroneous or misleading impression concerning the characteristics of a foodstuff that stems from the other items comprising its labelling. Therefore, where the labelling of a foodstuff and methods used for the labelling, taken as a whole, give the impression that a particular ingredient is present in that foodstuff, even though that ingredient is not in fact present, such labelling is such as could mislead the purchaser as to the characteristics of the foodstuff” (paragraphs 40 and 41). On this basis, the ECJ concludes that it is for the referring court to determine, “by examining the various items comprising the tea’s labelling, whether an average consumer who is reasonably well informed, and reasonably observant and circumspect, may be misled as to the presence of raspberry and vanilla-flower or flavourings obtained from those ingredients. In the context of that examination, the national court must in particular take into account the words and depictions used as well as the location, size, colour, font, language, syntax and punctuation of the various elements on the fruit tea’s packaging” (paragraph 42 and 43).

p.51

4 June 2015

C‑195/14 Teekanne

p.52



Commentary

The Labelling Directive has meanwhile been replaced by the Food Information Regulation, which entered into force on 13 December 2014. The obligation to provide nutrition information in accordance with that Regulation will apply from 13 December 2016. The ECJ’s judgment in Teekanne, however, remains relevant under the Food Information Regulation, which contains provisions nearly identical to the relevant provisions of the Labelling Directive (see Articles 2(2)(j) and 7(1)(a) of the Food Information Regulation).

SUMMER from 21 June up to 22 September 2015

p.53

p.54

25 June 2015

C‑147/14 Loutfi Management

The matter at hand

TRADEMARKS – Scope of protection

KNOWLEDGE OF FOREIGN LANGUAGE RELEVANT FOR ASSESSMENT OF INFRINGEMENT

Loutfi invoked its Community trademarks for the word/ figurative signs ‘EL BENNA’ and ‘EL BNINA’ in both Arabic and Latin script against the use of the word/ figurative sign ‘EL BAINA’ in both Arabic and Latin script by Halalsupply. The referring court in Brussels observed that the goods marketed by both Loutfi and Halalsupply are ‘halal’ products and are consequently mainly intended for a Muslim public. It moreover established that, while the marks on the one hand and the sign on the other present a certain visual similarity, the signs in Arabic mean ‘taste’, ‘softness’ and ‘sight’ respectively. The referring court asked, in short, whether Article 9(1)(b) of the Trademark Regulation must be interpreted as meaning that, in circumstances where the relevant public for the trademarks concerned have a basic understanding of written Arabic, the meaning and the pronunciation of those words may or must be taken into account.

The judgment of the ECJ

p.55

The ECJ first refers to the factual findings of the referring court, where it was established that “the relevant public […] have at least a basic knowledge of written Arabic” (paragraph 22). It then refers to its existing case law where it is stipulated that the assessment of the likelihood of confusion “includes a visual, aural or conceptual comparison of the signs at issue, bearing in mind, in particular, their distinctive and dominant components” (paragraph 23).

25 June 2015

C‑147/14 Loutfi Management

p.56

Based on these considerations, the ECJ concludes that “in circumstances where the relevant public for the Community mark and for the sign at issue has a basic knowledge of written Arabic, the meaning and pronunciation of those words must be taken into account” (paragraph 26).

14 July 2015

C-151/15 Sociedade Portuguesa de Autores

COPYRIGHTS – Scope of protection

PLAYING A RADIO IN A BAR IS A COMMUNICATION TO THE PUBLIC

The matter at hand

The Portuguese collecting society Sociedade Portuguesa de Autores initiated Court proceedings against a bar owner who played radio through loudspeakers for his customers. The Court of Appeals in Coimbra asked the ECJ to clarify whether the bar owner’s action was a ‘communication to the public’ in the sense of Article 3 of the Copyright Directive.

The order of the ECJ

The ECJ reiterated that there is a ‘public’ in the sense of Article 3 of the Copyright Directive if there is ‘an indeterminate number of potential recipients’. The customers of a bar are a ‘public’ in this sense. Further, the ‘public’ must be a ‘new public’: a public that was not considered by the right holder when authorising the original ‘communication to the public’. The Court holds that with regard to radio broadcasts right holders only took into account individual persons and relatives (as a ‘public’) but not that the radio was played in bars. The ECJ thus holds that the bar owner’s action was a ‘communication to the public’ in the sense of Article 3 of the Copyright Directive.

p.57

16 July 2015

C-544/13 and C-545/13 Abcur

MARKETING – Unfair commercial practices

UNFAIR COMMERCIAL PRACTICES DIRECTIVE APPLICABLE TO MARKETING OF MEDICINES

The matter at hand

In a case concerning the marketing of medicinal products for human use, the referring court in Stockholm asked the ECJ whether the Unfair Commercial Practices Directive applies to advertising practices relating to medicinal products for human use that (also) fall within the scope of Directive 2001/83 on the Community code relating to medicinal products for human use.

The judgment of the ECJ

With reference to its judgment in Mediaprint Zeitungsund Zeitschriftenverlag (C-540/08), the ECJ recalls that the Unfair Commercial Practices Directive “is characterised by a particularly wide scope ratione materiae which extends to any commercial practice directly connected with the promotion, sale or supply of a product to consumers” (paragraph 74). This therefore includes the businessto-consumer promotion of medicinal products. The ECJ further refers to Annex II to the Unfair Commercial Practices Directive, which explicitly mentions Directive 2001/83. On this basis, the ECJ concludes that the two directives are complementary. As to the hierarchy between the directives, the ECJ holds that, “since Directive 2001/83 contains specific rules on the advertising of medicinal products, it constitutes a special rule as compared with the general rules concerning protection of consumers against unfair commercial practices by undertakings towards them, such as those provided for in

p.58

16 July 2015

C-544/13 and C-545/13 Abcur

p.59

[the Unfair Commercial Practices Directive]. […] It follows therefrom that, in the event of conflict between the provisions of the Unfair Commercial Practices Directive and those of Directive 2001/83 […] those provisions of Directive 2001/83 take precedence and apply to those specific aspects of unfair commercial practices” (paragraphs 80 and 81).

16 July 2015

C‑580/13 Coty Germany

The matter at hand

ENFORCEMENT – Right of information

BANKING SECRECY MUST BE BALANCED WITH RIGHT OF INFORMATION

Coty Germany, the exclusive EU licensee for DAVIDOFF HOT WATER, purchased a counterfeit bottle of this perfume on an internet auction platform. In order to get hold of the name and address of the holder of the bank account into which it had paid the amount for the purchased goods, Coty Germany contacted the bank, Stadtsparkasse. Stadtsparkasse refused to provide this information, invoking German banking secrecy legislation. Article 8 of the Enforcement Directive sets out the right of information that Member States shall ensure in the context of proceedings concerning an infringement of an intellectual property right. Paragraph (3)(e) of that Article however stipulates that this right of information “shall apply without prejudice to other statutory provisions which govern the protection of confidentiality of information sources or the processing of personal data”. The referring court requested the ECJ to clarify whether this exception must be interpreted as precluding a national provision which allows a banking institution to refuse to provide information concerning the name and address of an account holder.

The judgment of the ECJ

p.60

The ECJ first establishes that “the present request for a preliminary ruling […] raises the question of the need to reconcile the requirements of the protection of different fundamental rights, namely the right to an effective remedy and the right to intellectual property, on the one hand,

16 July 2015

C‑580/13 Coty Germany

and the right to protection of personal data, on the other” (paragraph 33). In this regard, reference is made to the ECJ’s case law where it was found that “EU law requires that […] the Member States take care to rely on an interpretation of [national law] which allows a fair balance to be struck between the various fundamental rights protected by the EU legal order” (paragraph 34), and that “any limitation on the exercise of the rights and freedoms recognised must respect the essence of those rights and freedoms” (paragraph 35). The ECJ then considers that “it appears that the provision of national law at issue in the main proceedings, taken in isolation, allows […] an unlimited refusal, since its wording does not contain any condition or qualification” (paragraph 37). As “such a provision of national law […] is liable to frustrate the right to information recognised in Article 8(1) of the Enforcement Directive”, it infringes “the fundamental right to an effective remedy and the fundamental right to intellectual property” (paragraph 38). For these reasons, such national legislation “does not […] comply with the requirement to ensure a fair balance between, on the one hand, the various fundamental rights, and, on the other, Article 8 of the Enforcement Directive”.

p.61

16 July 2015

C‑681/13 Diageo Brands

The matter at hand

ENFORCEMENT – Right of information

A BREACH OF TRADEMARK LAW CANNOT LEAD TO REFUSAL OF RECOGNITION OF JUDGMENT and LEGAL COSTS AWARDED IN ALL CASES UNDER ENFORCEMENT DIRECTIVE

Following an order by a Sofia Court, Diageo, the trademark proprietor of JOHNNY WALKER, seized a container with JOHNNY WALKER whisky that was headed to Simiramida. Although the trademark rights to the goods had not exhausted, the Sofia Court of Appeal annulled the order. As a consequence, the seizure was lifted. The Bulgarian Supreme Court subsequently dismissed the appeal in cassation brought by Diageo Brands on formal grounds. In the substantive proceedings brought by Diageo against Simiramida for infringement of its mark, the Sofia City Court dismissed Diageo’s claims, holding that it followed from an interpretative decision delivered by the Bulgarian Supreme Court that the import into Bulgaria of goods placed on the market outside the European Economic Area (EEA) with the permission of the proprietor of the trademark does not infringe the rights conferred by the trademark. The Sofia City Court considered itself bound by that interpretative decision by virtue of Bulgarian procedural law. As Diageo Brands did not bring any appeal against the judgment of the Sofia City Court, this judgment became final. Simiramida filed a claim against Diageo in the Netherlands for compensation of the damages it had incurred as a consequence of the seizure. In its defence, Diageo Brands submitted that that judgment cannot be recognised in the

p.62

16 July 2015

C‑681/13 Diageo Brands

Netherlands as it is manifestly contrary to public policy in the Netherlands, within the meaning of Article 34(1) of Brussels I, claiming that the Sofia City Court manifestly misapplied EU law by basing its ruling on the interpretative decision of the Bulgarian Supreme Court, which is vitiated by a substantive error. The Supreme Court in the Netherlands raised two questions on Article 34(1) of Brussels I: i) whether the fact that a judgment of a court of a Member State is manifestly contrary to EU law constitutes a ground for refusal of recognition under that Article; and ii) whether such a refusal of recognition is precluded by the fact that the party which has recourse to that ground for refusal failed to make use of the legal remedies available in the Member State of origin of the decision, even if the use of the legal remedies in the Member State of origin of the decision was pointless because it has to be assumed that it would not have led to any different decision. The Supreme Court moreover raised a question on whether the provision of legal costs in Article 14 of the Enforcement Directive also applies “in the context of proceedings for damages brought in a Member State if the claim and the defence relate to the alleged liability of the defendant by reason of the seizures which it made and the notices which it served with a view to enforcing its trade mark rights in another Member State, and in that connection a question arises concerning the recognition in the former Member State of a decision of the court in the latter Member State.”

The judgment of the ECJ

p.63

With regards to the first two questions, the ECJ first refers to the criteria set in flyLAL-Lithuanian Airlines (C-302/13), to conclude that “in order for the prohibition of any review of the substance of a judgment of another Member State to be observed, the infringement would have to constitute a manifest breach of a rule of law regarded as essential in the

16 July 2015

C‑681/13 Diageo Brands

legal order of the State in which recognition is sought or of a right recognised as being fundamental within that legal order” (paragraph 44). The judgment provides little guidance as to when an infringement of law constitutes ‘a manifest breach of a rule of law regarded as essential in the legal order’, but the ECJ does conclude that this “is not the case [in the event] of an error affecting the application of a provision such as Article 5(3) of the Trademark Directive” (paragraph 68).

Commentary

The conclusion is understandable when parallel trade is concerned, as was the case in the matter at hand. The wording used by the ECJ however implies that manifestly incorrect judgments in matters pertaining to counterfeit goods must be recognised by courts in other Member States as well. This goes to show how hard the rule of recognition is. Of course, when for example health or safety issues are concerned, things are likely to be different – provided that the trademark proprietor can invoke other rules of law than just its trademark rights. Then, with regard to the second question, the ECJ refers to “the principle of mutual trust between the Member States, which is of fundamental importance in EU law, [which] requires, […] each of those States, save in exceptional circumstances, to consider all the other Member States to be complying with EU law and particularly with the fundamental rights recognised by EU law” (paragraph 40). The ECJ goes on to consider that it is that trust “which permits the inference that, in the event of the misapplication of national law or EU law, the system of legal remedies in each Member State, together with the preliminary ruling procedure […], affords a sufficient guarantee to individuals” (paragraph 49). For these reasons, the ECJ concludes that, for Article 34 of Brussels I to be invoked successfully, “individuals are required, in principle, to use all the legal remedies made available by the law of the Member State of origin […] save where specific circumstances make it too difficult or p.64

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C‑681/13

impossible to make use of the legal remedies in the Member State of origin” (paragraph 64).

Diageo Brands

With regards to the third question, on the costs, the ECJ first refers to its finding in ACI Adam (C-435/12), where it is considered that the Enforcement Directive is intended to govern those aspects of intellectual property rights inherent in the enforcement of those rights and in infringement of them (paragraph 73). An action for compensation, as is the subject of the matter at hand, “constitute[s] guarantees which the legislature deemed necessary as a counterweight to the prompt and effective provisional measures for which it made provision” (paragraphs 74-75). A procedure such as the case at hand must for this reason be considered to fall within the scope of the Enforcement Directive (paragraph 76). Given the broadly framed and general wording of Article 14 of the Enforcement Directive, the ECJ holds that that provision is applicable to the legal costs incurred in the context of any procedure falling within the scope of that directive (paragraph 78), i.e. including the matter at hand.

p.65

16 July 2015

C‑379/14 TOP Logistics and Others

The matter at hand

TRADEMARKS – Scope of protection

GOODS UNDER DUTY SUSPENSION ARE USED IN THE COURSE OF TRADE

At the request of trader Van Caem, logistics service provider TOP Logistics released non-exhausted Bacardi products from third states for free circulation but placed these goods under the duty suspension arrangement. It is common practice amongst parallel traders to import goods into the EU for the purpose of subsequently exporting them to third states, inter alia, to be able benefit from trade agreements between the EU and third states. Against this backgrounds, the The Hague Court of Appeals had doubts whether the placing of non-exhausted goods under duty suspension arrangements qualifies as ‘use’ ‘in the course of trade’ within the meaning of Article 5(1) of the Trademark Directive and whether this has an adverse effect on one of the functions of the trademark within the meaning of the case law of the ECJ.

The judgment of the ECJ

p.66

The ECJ first establishes that, as the goods have been released for free circulation, “those goods have been imported within the meaning of Article 5(3)(c) of the Trademark Directive” (paragraph 35). It then considers that this is use in “own commercial communications” in the sense of Google France (C-236/08 and C-238/08), as, “if it were otherwise, the acts of import and of stocking for the purpose of placement on the market, mentioned in Article 5(3) of the Trademark Directive and normally carried out without direct contact with potential consumers, could not be qualified as ‘using’ within

16 July 2015

C‑379/14 TOP Logistics and Others

the meaning of that Article and could not be prohibited, even though the EU legislature has expressly identified them as being prohibited” (paragraph 42).

Commentary

Given the tendency of the ECJ not to adopt a literal interpretation of legislation but to interpret legislation in accordance with its goals, this is a surprising reasoning. It is difficult to see how the interests of trademark proprietors are at stake when non-exhausted goods are placed under excise suspension arrangements to be exported from the EU immediately thereafter. The ECJ then considers that “the importation of products without the consent of the proprietor of the trade mark concerned and the holding of those products in a tax warehouse before their release for consumption in the European Union has the effect of depriving the proprietor of that mark of the possibility of controlling the conditions of the first placing on the market within the EEA of products bearing its trade mark. Such acts also adversely affect the function of the trade mark of identifying the undertaking from which the products originate and under whose control the initial placing on the market is organised” (paragraph 48).

p.67

3 September 2015

C‑125/14 Iron & Smith

The matter at hand

TRADEMARKS – Scope of protection

MARKS WITH REPUTATION PROTECTED AS SUCH EVEN WHERE THEY ARE NOT REPUTED but COMMERCIALLY SIGNIFICANT PART OF THE PUBLIC MUST ESTABLISH A LINK

Iron & Smith applied for the registration as a Hungarian national mark of the word/figurative sign ‘be impulsive’. Unilever opposed this application on the basis of its earlier Community trademark ‘Impulse’, invoking the additional protection granted to trademarks with a reputation. In the opposition proceedings it was found that the invoked mark had a reputation in a substantial part of the European Union, but not in Hungary. On grounds of Article 4(3) of the Trademark Directive, a trademark shall not be registered if it is similar to an earlier Community trademark where the earlier mark has a reputation in the Community and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

Commentary

This matter presented the ideal case to raise a question that needed to be answered ever since it was accepted by the ECJ, in Chevy (C-375/97) and later in Pago (C-301/07), that a mark can enjoy the additional protection of a trademark with a reputation, even if it does not have a reputation throughout the entire territory of the mark: what is the scope of protection of such a mark in those parts of the territory where it does not enjoy a reputation? p.68

3 September 2015

The judgment of the ECJ

With reference to its judgment in Pago, the ECJ first of all confirms that, “if the reputation of an earlier Community trade mark is established in a substantial part of the territory of the European Union […], it must be held that that mark has a ‘reputation in the [European Union]’, and the proprietor of that mark is not required to produce evidence of that reputation in the Member State in which the application for registration of the later national mark, which is the subject of an opposition, has been filed” (paragraph 20). This implies that a mark can enjoy the protection of a trademark with a reputation in a part of the territory where there is not even evidence of genuine use (paragraph 21).

Commentary

The above implies that the question of whether a mark is to be considered to have a reputation, is one and the same question in the entire territory of that mark; a trademark either has a reputation in the entire territory or it does not have it anywhere. However, when assessing whether use of the opposed mark enables unfair advantage to be taken of the earlier mark or is detrimental to it, it is required to look at the public’s perception in the part of the territory where the opposed mark is applied for – as it must be assessed whether there is a serious risk of such unfair advantage or detriment in that part of the territory. The ECJ comes to this finding by first considering that where “the earlier Community trade mark is unknown to the relevant public in the Member State in which the registration of the later national mark is applied for, the use of the national mark does not, in principle, enable unfair advantage to be taken of it […] and is not detrimental to [it]” (paragraph 29). The ECJ then goes on to consider that it is however “conceivable that a commercially significant part of the relevant public in the Member State where the opposed mark is applied for may be familiar with it and make a p.69

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C‑125/14 Iron & Smith

connection between that mark and the later national mark” (paragraph 30). Then, under those circumstances, “the proprietor of the earlier mark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’ and therefore show that there is either actual and present injury to its mark for the purposes of Article 4(3) of the Trademark Directive or, failing that, a serious risk that such injury may occur in the future” (paragraph 31). Commentary This judgment fits into more or less consistent case

law of the ECJ, where the thresholds for the other requirements for infringement are low and the debate is shifted towards the injuries against which trademarks may be protected: ‘risk of confusion’, ‘unfair advantage’ and ‘detriment’. With regard to the latter two types of protection, it was already considered that there is no requirement for the goods or services to be similar or dissimilar (Davidoff, C-292/00), and that even a faint similarity between mark and sign or later mark may suffice for infringement or invalidation (Ferrero, C-552/09). Now we know this protection can even be enjoyed in parts of the territory where the mark does not have a reputation.

p.70

 onsequently, the real debate will mostly be on C whether there is ‘unfair advantage’ or ‘detriment’. In this judgment the ECJ may have given some important guidance as to when this is the case: by considering that it is “conceivable that a commercially significant part of the relevant public” establishes a link, the ECJ creates the impression that this is the threshold, i.e. that it may suffice to submit evidence that merely ‘a commercially significant part of the public’ establishes a link (as a consequence of which there is unfair advantage or detriment). As small market shares may

3 September 2015

C‑125/14

be commercially significant, this threshold would be rather easy to meet.

Iron & Smith

The new criterion of ‘a commercially significant part of the relevant public’ seems to apply to opposition and invalidation actions such as those at hand, and is likely to also apply to infringement actions where the sign is used in a part of the territory where the reputed mark is known only by a commercially significant part of the public. The question that now needs to be answered is whether this will also be the case when the invoked mark has a reputation throughout the territory, and evidence is adduced that only ‘a commercially significant part of the relevant public’ establishes a link with the mark.

p.71

8 September 2015

C-13/15 Cdiscount

MARKETING – Unfair commercial practices

GENERAL PROHIBITIONS PRECLUDED BY UNFAIR COMMERCIAL PRACTICES DIRECTIVE

The matter at hand

The matter concerns a request for a preliminary ruling from the French Supreme Court with regard to provisions in the French Consumer Code prohibiting price reduction announcements which do not contain the reference price. Considering that the Unfair Commercial Practices Directive does not explicitly require price reduction announcements to mention the reference price, the referring court asked the ECJ whether the national provisions were in accordance with the Unfair Commercial Practices Directive.

The judgment of the ECJ

The ECJ holds that in cases like these, the national court must first of all establish whether the relevant provision of national law is liable to fall within the scope of the Unfair Commercial Practices Directive, which is the case only if the provision pursues the objective of protecting consumers. National laws on unfair commercial practices “which harm ‘only’ competitors’ economic interests or which relate to transactions between traders” are therefore excluded from the scope of the Unfair Commercial Practices (paragraphs 24-29). Secondly, it must be established whether the conduct that is the subject of the provision of national law constitutes a commercial practice and therefore comes within the material scope of the Unfair Commercial Practices Directive. This is obviously the case in the matter at hand, since price reductions are “intended to induce consumers

p.72

8 September 2015

C-13/15 Cdiscount

to buy products” and “clearly form part of an operator’s commercial strategy and relate directly to the promotion and sale of these products” (paragraph 30-32). The ECJ further recalls that the Unfair Commercial Practices Directive fully harmonises the rules relating to unfair business-to-consumer commercial practices, which means that Member States may not adopt stricter rules than those provided for in the Directive, even if such stricter rules result in a higher level of consumer protection (paragraph 34). Applying the Unfair Commercial Practices Directive to announcements of price reductions, the ECJ notes that such announcements, as all commercial practices, are considered unfair only if they are contrary to the requirements of professional diligence or materially distort or are likely to materially distort the economic behaviour of the average consumer with regard to the product. Whether a commercial practice meets these criteria must be assessed on a case-by-case basis, unless it concerns a commercial practice included in the exhaustive list of 31 commercial practices which are regarded as unfair in all circumstances (Annex I to the Directive). “As regards the national provisions at issue in the main proceedings, it is undisputed that practices which consist of announcing to consumers price reductions which do not show the reference price when the price is marked or displayed do not appear in Annex I to the Unfair Commercial Practices Directive. Therefore, they may not be prohibited in all circumstances, but only after a specific assessment has determined whether the practices are unfair” (paragraph 39). Consequently, the Unfair Commercial Practices Directive precludes a national provision, such as that at issue in the main proceedings, which prohibits “in a general manner announcements of price reductions which do not show the reference price when the price is marked or displayed, without

p.73

8 September 2015

C-13/15 Cdiscount

any need to determine by having regard to the facts of each particular case, whether the commercial transaction at issue is ‘unfair’ in the light of the criteria set out in Articles 5 to 9 of the Unfair Commercial Practices Directive” (paragraph 40). Commentary This judgment is in line with Wamo (C-288/10), in

which the ECJ held that similar provisions in the Belgian Law on commercial practices infringed the Unfair Commercial Practices Directive, and with its judgment in Mediaprint Zeitungs- und Zeitschriftenverlag (Case C-540/08) regarding a provision of Austrian law prohibiting practices consisting in offering consumers bonuses associated with the purchase of products or services.

p.74

16 September 2015

C‑215/14 Société des Produits Nestlé

The matter at hand

TRADEMARKS – Validity

SHAPE WHICH RESULTS FROM MANUFACTORING PROCESS CAN BE A TRADEMARK and DISTINCTIVE CHARACTER MUST NOT BE ASSESSED IN RELATION TO OTHER SIGNS

Nestlé filed an application for registration of the ‘four-finger’ shape of its KIT KAT bar as a trademark in the United Kingdom. Cadbury opposed this application, putting forward in particular that the application was devoid of distinctive character, that it consisted exclusively of the shape which results from the nature of the goods themselves and that it consisted exclusively of the shape of the goods which is necessary to obtain a technical result (Articles 3(1)(b), 3(1)(e)(i) and 3(1)(e)(ii) of the Trademark Directive respectively). The referring court raised three questions: i) whether Article 3(1)(e) of the Trademark Directive precludes registration as a trademark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result; ii) whether Article 3(1)(e)(ii) of the Trademark Directive refers only to the manner in which the goods at issue function or whether it also applies to the manner in which they are manufactured; and iii) whether, in order to establish that a trade mark has acquired distinctive character (within the meaning of

p.75

16 September 2015

C‑215/14 Société des Produits Nestlé

The judgment of the ECJ

Article 3(3) of the Trademark Directive), it is sufficient for the applicant to prove that a significant proportion of the relevant class of persons recognise the mark (i.e. the four finger shape) and associate it with the applicant’s goods, or that it is required for it to prove that they rely upon the mark as indicating the origin of the goods, as opposed to any other trade marks which may also be present (such as the name ‘KIT KAT’). With regard to the question mentioned to under i), the ECJ refers to its judgment in Hauck (C-205/13), in which it held that the three grounds for refusal of registration set out in Article 3(1)(e) operate independently of one another. It concludes that, consequently, where “a sign may be covered by one or more grounds of refusal set out under Article 3(1) (e) of the Trademark Directive […], registration may be refused only where at least one of those grounds is fully applicable to the sign at issue” (paragraph 48). In response to the question referred to under ii), the ECJ first observes that the wording of Article 3(1)(e)(ii) of the Trademark Directive “refers expressly to the shape of goods which is necessary to obtain a ‘technical result’, without mentioning the process for manufacturing those goods” (paragraph 54). The ECJ moreover considers that this interpretation “is confirmed by the objective of Article 3(1) (e)(ii) of the Trademark Directive, which consists […] in preventing a monopoly from being granted on technical solutions which a user is likely to seek in the goods of competitors” (paragraph 55). As, according to the ECJ, “from the consumer’s perspective, the manner in which the goods function is decisive and their method of manufacture is not important” (paragraph 55), it concludes that Article 3(1) (e)(ii) of the Trademark Directive “must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured” (paragraph 57).

p.76

16 September 2015

C‑215/14

Commentary With these considerations, the ECJ has accepted the

possibility that a method of manufacture that results in products of a distinct shape can – at least in theory – be monopolised through trademark law. This is a surprising outcome. Although a method of manufacture as such may not be something that the public will seek in the goods of competitors, the price difference that may be the result of a more efficient method of manufacture surely can be important for consumers. It appears that the ECJ oversaw this, as its case law has been consistent in that it prevents trademark proprietors from obtaining a functional competitive advantage through trademark law.

Société des Produits Nestlé

Then, with regard to the question mentioned under iii), the ECJ effectively limits itself to repeating established case law to reach the conclusion that “although the trade mark for which registration is sought may have been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the trade mark applicant must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate” (paragraph 66).

Commentary

The ECJ seems to have misunderstood this question – but provided for an answer nonetheless. Upon reading the question raised by the referring court, it seems it wanted to learn whether a sign can acquire distinctive character through use, even where the public effectively does not establish the origin through recognition of this sign – as one or more other signs fulfil this function (i.e. more dominant signs are also applied to the product). Applied to Kit Kat: the public may be considered not to use the four finger shape as a source identifier when they are presumed to identify the source by reading p.77

16 September 2015

C‑215/14 Société des Produits Nestlé

p.78

‘KIT KAT’, or by seeing a flat rectangular shaped product in red, with a white oval and red lettering on it (where ‘KIT KAT’ and the product design would, in other words, be perceived as the dominant signs). However, the answer of the ECJ (i.e. that proof evidencing that a sufficiently large part of the relevant public identifies the good as being from a specific source based on just the trademark applied for) implies that it is not relevant whether other, more dominant trademarks used for the same goods effectively make the applied for trademark superfluous from the perspective of source identifying.

AUTUMN from 23 September up to 21 December 2015

p.80

6 October 2015

C‑500/14 Ford Motor Company

The matter at hand

TRADEMARKS – Limitations

REPAIR CLAUSE UNDER DESIGN LAW NO DEFENCE AGAINST TRADEMARK INFRINGEMENT

In a matter concerning the unauthorised manufacture of replacement parts (in this case wheel covers) bearing the trademark of the original manufacturer, Ford Motor Company, the District Court in Turin, Italy, raised the question of whether the so-called ‘repair clause’ of Article 110 of the Design Regulation and Article 14 of the Design Directive allows manufacturers of replacement parts to apply the trademark of the original manufacturer to the replacement parts “in order to allow the end purchaser to restore the original appearance of a complex product and, therefore, also when the proprietor of the trade mark applies the distinctive sign in question to a replacement part or accessory intended to be mounted on the complex product in such a way that it is externally visible and thus contributes to the external appearance of the complex product”. Article 14 of the Design Directive is a transitional provision which states that “Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalize the market for such parts.” In this regard, Italian law provides that exclusive rights to components of a complex product may not be invoked in order to prevent the sale of such components for the purpose of the repair of that complex product so as to restore its original

p.81

6 October 2015

C‑500/14 Ford Motor Company

appearance. This rule is similar to Article 110(1) of the Design Regulation, except that the latter does not apply to ‘exclusive rights’ to component parts in general, but to Community design rights only. Arguing that the sole purpose of the application of the trademark to the replacement wheel covers was to restore the original appearance of the car as a whole, the spare part manufacturer in question, Wheeltrims, contended that the undistorted competition which European law seeks to establish requires that Article 110(1) of the Design Regulation is interpreted as constituting a subjective right for third-party producers of replacement parts to apply the trademark of the original manufacturer to the replacement part.

The order of the ECJ

The ECJ first of all establishes that Article 14 of the Design Directive and Article 110 of the Design Regulation provide for an exception to the protection of designs only, without referring in any way to the protection of trademarks (paragraph 39), and that both the Design Directive and the Design Regulation explicitly state that the provisions contained therein shall be without prejudice to any provisions of Community law or of the law of the Member State relating to trademarks (paragraph 41). As to Wheeltrims’ assertion that the objective of undistorted competition pursued by European law requires the principle of Article 110(1) of the Design Regulation to be applied to trademarks as well, the ECJ notes that the EU legislator has already taken that objective into account in the context of the Trademark Directive and the Trademark Regulation: “By limiting the effects of the rights which a trade mark owner derives from Article 5 of the Trademark Directive, or, where it concerns a Community trademark, Article 9 of the Trademark Regulation, Article 6 of that Directive and Article 12 of that Regulation seek to reconcile the fundamental interests of trade mark protection with those of free movement

p.82

6 October 2015

C‑500/14 Ford Motor Company

of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain […]” (paragraph 43). In addition, the ECJ holds that – according to settled case law – Articles 5 to 7 of the Trademark Directive establish a full harmonisation of the rules relating to trademark rights and accordingly define the rights of proprietors of trademarks in the Union: “Save for the specific cases governed by Article 8 et seq. of the Trademark Directive, a national court may not, in a dispute relating to the exercise of the exclusive right conferred by a trade mark, limit that exclusive right in a manner which exceeds the limitations arising from Articles 5 to 7” (paragraph 44). As a result, the ECJ concludes that Article 14 of the Design Directive and Article 110 of the Design Regulation do not allow manufacturers of replacement parts to apply the trademark of the original manufacturer to the replacement parts they sell to end purchasers (paragraph 45).

Commentary

Considering that the essential function of a trademark is to offer a guarantee that all the goods bearing it have been manufactured under the control of a single undertaking, a function that does not play a role in the context of design protection, it is not surprising that the fundamental interests of trademark protection trump the wish to faithfully reproduce a replacement part.

p.83

22 October 2015

C‑20/14 BGW

The matter at hand

TRADEMARKS – Scope of protection

CRITERIA FOR DISTINCTIVE CHARACTER DO NOT APPLY TO RISK OF CONFUSION

On the basis of its word/device mark for BGW, BGW invoked the invalidity of the German word mark ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’. The German Federal Patents Court considered that there is a likelihood of confusion between the marks at issue on the part of the relevant public. However, with reference to Strigl and Securvita (C-90/11 and C-91/11), the referring court considered that the absolute ground for refusal of Article 3(1)(b) and (c) of the Trademark Directive is applicable to composite marks consisting of a descriptive word combination (i.e. ‘Bundesverband der deutschen Gesundheitswirtschaft’) attached to its acronym (i.e. ‘BGW’), if the relevant public perceives that acronym as being an abbreviation of that descriptive word combination. In light of this, the referring court raised the question of whether this also applies to the relative ground of refusal of Article 4(1)(b) of the Trademark Directive, where the later mark has these characteristics.

The judgment of the ECJ

p.84

With reference to established case law, the ECJ first considers that “the absolute grounds for refusal of registration set out in Article 3(1)(b) and (c) of the Trademark Directive and the relative grounds for refusal of registration set out in Article 4(1)(b) of that directive pursue different aims and are intended to protect distinct interests” (paragraph 23). In this regard it is considered that “whereas, in assessing the

22 October 2015

C‑20/14 BGW

descriptiveness of a sign, attention is focused on the mental processes which may lead to relationships being established between the sign or its various components and the goods/and or services concerned, in assessing the likelihood of confusion, the examination relates to the processes by means of which the sign is remembered, recognised and recalled and to associative mechanisms” (paragraph 28). Based on these considerations, it is found that “in the light of the different legal context of the cases which gave rise to the judgment in Strigl and Securvita […], the findings in it are not capable of being applied to the main proceedings for the purposes of assessing whether there is a similarity between the two marks at issue” (paragraph 34). In the main proceedings, “the national court will have to examine […] whether the links which the relevant public may establish between the letter sequence and the word combination, in particular the possibility that the former may be perceived as an acronym of the latter, are such that that sequence may be perceived and remembered separately by the relevant public in the later mark” (paragraph 43).

p.85

29 October 2015

C-490/14 Verlag Esterbauer

The matter at hand

DATABASE RIGHTS – Object of protection

HOW TO ASSESS ‘INDEPENDENT MATERIALS’ OF A DATABASE

The Land of Bavaria publishes topographic maps covering the entire Federal state of Bavaria. Verlag Esterbauer is an Austrian publisher which publishes, amongst other things, atlases, tour books and maps for cyclists, mountain bikers and inline skaters. The Land of Bavaria considers that Verlag Esterbauer made unlawful use of its topographic maps and appropriated the underlying data in order to produce the material for its maps. The German Federal Court of Justice has doubts as to whether the topographic maps at hand fall within the definition of ‘database’ in the sense of Article 1(2) of the Database Directive (‘a collection of independent materials’). More specifically, the referring court has questions as to whether the data describing the nature of specific points of the earth’s surface constitute ‘independent materials’ within the meaning of Article 1(2) of the Database Directive. The ECJ has previously held that materials are ‘independent’ in the sense of Article 1(2) of the Database Directive when the materials can be separated from one another without the value of their informative content being affected. In those circumstances the Federal Court of Justice referred the question to the ECJ whether, in order to determine if a collection of independent materials exists because the materials can be separated from one another

p.86

29 October 2015

C-490/14 Verlag Esterbauer

The judgment of the ECJ

without the value of their informative content being affected, every conceivable informative value is decisive or only the value which is to be determined on the basis of the purpose of the collection and having regard to the resulting typical conduct of users. With reference to the broad definition of the database concept in the Database Directive (‘unencumbered by considerations of a formal, technical or material nature’), the ECJ starts out with establishing that analogue topographic maps can be recognised as databases within the meaning of the Database Directive (paragraph 15). In addition, it refers to the fact that Article 1(1) of the Database Directive stipulates that databases in ‘any forms’ are protected, and that recital 14 of the Database Directive mentions that the protection granted relates to both electronic and non-electronic databases (paragraphs 13-14). The ECJ reiterates that the classification as a database is dependent “on the existence of a collection of ‘independent materials’, that is to say, materials which are separable from each other without their informative, literary, musical or other value being affected” (paragraph 17). In that respect the ECJ also reiterates that “not only an individual piece of information, but also a combination of pieces of information can constitute ‘independent material’ in the sense of Article 1(2) of the Database Directive” (paragraph 20). The ECJ rejects the notion that the informative value must be assessed in light of the use that would be made by a typical user. That is too narrow a criterion. The informative value “must be assessed in the light of the value [of the information] for each third party interested by the extracted material” (paragraph 27). It concludes that therefore “information from a collection which is utilised for financial gain and in an autonomous manner […],

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constitutes ‘independent materials’ from a ‘database’ within the meaning of Article 1(2) of the Database Directive” (paragraph 28). Commentary The line of reasoning used here by the ECJ in

essence boils down to the old adage: “if it’s worth being copied, it is worth being protected”. A piece of information stemming from a database that can be used to produce and market another product retains sufficient informative value to be classified as ‘independent materials’ of a ‘database’.

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12 November 2015

C-572/13 Hewlett-Packard Belgium

The matter at hand

COPYIGHTS – Limitations

FAIR COMPENSATION: MORE GUIDANCE ON WHAT THE COPYRIGHT DIRECTIVE DOES NOT ALLOW

Hewlett-Packard imports into Belgium reprographic devices for business and household use, including ‘multifunction’ devices, the main function of which is the printing of documents. Reprobel is the collecting society for the fair compensation under the reprography exception, and it informed HP that their printers would – in principle – be subject to a levy of EUR 49.20 per printer. Hewlett-Packard was of the opinion that the levy was too high and requested the court to rule, inter alia, that the remuneration which it had paid corresponded to the fair compensation owed pursuant to the Belgian legislation, interpreted in the light of the Copyright Directive. The Brussels Court of Appeals referred several questions to the ECJ mainly regarding the interpretation of the concept of ‘fair remuneration’ in the context of both the reprography exception and the closely related private copying exception.

The judgment of the ECJ

p.89

The ECJ observes that “while reproductions made by natural persons for private use and for ends that are neither directly nor indirectly commercial may come within the scope of both the reprography exception and the private copying exception, reproductions carried out by users other than natural persons as well as those carried out by natural persons for a use other

12 November 2015

C-572/13

than private use or for commercial purposes, may come within the scope of the reprography exception alone” (paragraph 34).

Hewlett-Packard Belgium

The referring Court also wants to know whether a part of the fair compensation can be allocated to the publishers of works (if the publishers are under no obligation to let the authors benefit). The ECJ answer is negative: publishers are not right holders and do not suffer any harm from the said exceptions. They cannot, therefore, receive compensation under private copying/reprography exceptions (paragraph 48). Further, the referring Court requests how to handle with an undifferentiated levy-system which also recovers fair compensation for the copying of sheet music and counterfeit reproductions made from an unlawful source. The ECJ stresses “that it follows expressly from the wording of Article 5(2)(a) of the Copyright Directive that sheet music is excluded from the scope of the reprography exception. Sheet music cannot, therefore, be taken into consideration when calculating fair compensation in the context of that exception” (paragraph 51). The same applies to the private copying exception; “were it otherwise, the joint or parallel application of the private copying exception and of the reprography exception by Member States would risk being inconsistent” (paragraph 52). With regard to counterfeit reproductions, the ECJ reiterates that the private copying exception does not cover the case of private copies made from an unlawful source (paragraph 57). The private copying provision cannot be understood as requiring copyright holders to tolerate infringements of their rights beyond the limitation which is provided for expressly (paragraph 58). Moreover, it is apparent from the Copyright Directive that “the objective of proper support for the dissemination of culture must not be achieved by sacrificing strict protection of rights or by tolerating illegal forms of distribution of counterfeited or pirated works” (paragraph 59). Furthermore, the ECJ points out that

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national legislation, which does not draw a distinction according to the (lawful or unlawful) source from which a reproduction for private use is made, may infringe certain conditions laid down by Article 5(5) of the Copyright Directive (paragraph 59). The referring Court also requests clarification whether a national legislation can combine two forms of remuneration, namely (i) a lump-sum remuneration (paid prior to the reproduction, when copying devices are put into circulation) and (ii) a proportional remuneration, recovered after the reproduction operation (determined solely by means of a unit price multiplied by the number of copies produced). The ECJ observes that the aim of fair compensation is to compensate for the actual harm suffered (paragraph 68). It is “for the persons who have made the reproductions to make good the harm related to those reproductions by financing the compensation which will be paid to the rightholder” (paragraph 69). However, the ECJ has acknowledged that, “given the practical difficulties in identifying users and obliging them to compensate rightholders for the harm caused to them, it is open to the Member States to establish a levy chargeable not to the users concerned but to the persons who have the digital reproduction equipment, devices and media and who, on that basis, in law or in fact, make that equipment available to those users or who provide copying services for them and who are able to pass on the cost of the levy to the users” (paragraph 70). It then considers that it “is understood that the amount of a levy of that kind, which is set in advance, cannot be fixed on the basis of the criterion of actual harm suffered, as the extent of that harm remains unknown at the moment at which the devices concerned are put into circulation on national territory. Accordingly, that levy must necessarily be set as a lump sum” (paragraph 71).

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The ECJ holds that Article 5(2)(a) and Article 5(2)(b) of Directive 2001/29 “preclude lump-sum remuneration […] paid prior to the reproduction operation by the manufacturer, importer or intra-Community acquirer at the time at which a device is put into circulation on national territory, in a situation in which the amount of that remuneration is fixed solely by reference to the speed at which that device is technically capable of producing copies” (paragraph 77). With regard to the remuneration recovered after the fact, the ECJ finds that “the harm caused to the author remains the same regardless of whether or not the person liable for payment cooperates in the recovery of such a levy” (paragraph 79). “The act of cooperation or non-cooperation cannot therefore constitute an adequate criterion for varying the amount of the levy intended to finance fair compensation after the fact” (paragraph 80). The ECJ further points out that a system “which combines lump-sum remuneration fixed in advance and proportional remuneration fixed after the fact, must contain mechanisms, in particular for reimbursement, which are designed to correct any situation where ‘overcompensation’ occurs to the detriment of particular categories of users” (paragraph 85). “Such ‘overcompensation’ would not be compatible with the requirement […] that a fair balance be safeguarded between the rightholders and the users of protected subject–matter” (paragraph 86).

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19 November 2015

C-325/14 SBS Belgium

The matter at hand

COPYIGHTS –Scope of protection

DIRECT INJECTION OF BROADCAST SIGNALS IS NOT A COMMUNICATION TO THE PUBLIC

SBS Belgium is a commercial broadcasting organisation which broadcasts its programmes exclusively by a technique named direct injection. This is a two-step process by which SBS transmits its programme-carrying signals ‘point to point’ via a private line to its distributors. At that stage, those signals cannot be received by the general public. The distributors then send the signals to their subscribers so that the latter can view the programmes on their television sets. SABAM is a copyright administration society which represents authors in relation to the grant of permission for third party use of their copyright-protected works and in the collection of the fees for such use. It takes the view that SBS, as a broadcasting organisation, makes a communication to the public within the meaning of Article 3 of the Copyright Directive by transmitting via the direct injection method. Therefore, the authorisation of the copyright holders is required. SABAM requested, as compensation, the payment of a sum of money and brought an action against SBS. In the proceedings which ensued, the Court of Appeal in Brussels decided to refer the question to the ECJ whether a broadcasting organisation which transmits its programmes exclusively via the technique of direct injection makes a communication to the public within the meaning of Article 3 of the Copyright Directive.

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19 November 2015

The judgment of the ECJ

The ECJ recalls that it has previously held that “the concept of ‘communication to the public’ […] includes two cumulative criteria, namely, an ‘act of communication’ of a work and the communication of that work to a ‘public’” (paragraph 15). As regards the ‘act of communication’, “that refers to any transmission of the protected works, irrespective of the technical means or process used” (paragraph 16). It follows that the transmissions made by SBS must be considered to constitute ‘acts of communication’, within the meaning of Article 3(1) of the Copyright Directive (paragraph 19). With regard to communication to a ‘public’, the ECJ considered that it is apparent from its own case law “that the term ‘public’ refers to an indeterminate number of recipients, potential television viewers, and implies, moreover, a fairly large number of persons” (paragraph 21). However, in the underlying case, SBS transmits the programmecarrying signals to specified individual distributors without potential viewers being able to have access to those signals. Consequently, the works transmitted by SBS are not communicated to the ‘public’, but to specified individual professionals (paragraph 23). The ECJ then concludes that, given the cumulative nature of the two criteria for a communication to the public, the transmissions made by SBS do not, in principle, come within the definition of ‘communication to the public’ within the meaning of Article 3(1) of the Copyright Directive (paragraph 24). The ECJ nevertheless emphasises that “it cannot be ruled out from the outset, that in some situations, the subscribers of distributors […] may be considered to be the ‘public’ in relation to the original transmission made by the broadcasting organisation” (paragraph 25). In that regard, the ECJ points out that it has previously (in Airfield and Canal Digitaal, C-431/09 and C-432/09) “held that the distribution of the work broadcast by a professional […] amounts to the supply of an autonomous service performed with the aim of making a profit, the subscription fee being paid by those persons not to the

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19 November 2015

C-325/14 SBS Belgium

broadcasting organisation but to that professional, and being payable not for any technical services but for access to the communication in question and, therefore, to the copyrightprotected works” (paragraph 30). If this situation occurs, the professional is responsible for the communication to the public, since the transmission he makes “is not just a technical means of ensuring or improving reception of the original broadcast in its catchment area” (paragraph 31). However, if “a distributor might find itself in a position that is not independent in relation to the broadcasting organisation and where its distribution service is purely technical in nature, with the result that its intervention is just a technical means […], the subscribers of the distributors in question could be considered to be the public for the purposes of the communication made by the broadcasting organisation, with the result that [the broadcasting organisation and not the distributor] would make a ‘communication to the public’” (paragraphs 32 and 33). In light of these considerations, the ECJ confirms that “Article 3(1) of the Copyright Directive must be interpreted as meaning that a broadcasting organisation does not carry out an act of communication to the public […] when it transmits its programme-carrying signals exclusively to signal distributors without those signals being accessible to the public during and as a result of that transmission, those distributors then sending those signals to their respective subscribers so that they may watch those programmes, unless the intervention of the distributors in question is just a technical means, which it is for the national court to ascertain” (paragraph 34).

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10 December 2015

C-603/14 P El Corte Inglés v OHIM

The matter at hand

TRADEMARKS – Scope of protection

CONFUSION SIMILARITY IS NOT DETRIMENT OR UNFAIR ADVANTAGE SIMILARITY

Spanish company The English Cut applied for registration of THE ENGLISH CUT as a CTM for inter alia clothing. El Corte Inglés filed opposition against this registration on grounds of its trademarks for EL CORTE INGLÉS, which are used for its departments stores. ‘El Corte Inglés’ is Spanish for ‘The English Cut’. El Corte Inglés invoked both Article 8(1)(b) (i.e. risk of confusion) and Article 8(5) (i.e. unfair advantage and/or detriment) of the Trademark Regulation. The opposition was rejected by the OHIM. In the appeal brought before it, the General Court considered that there was a low degree of conceptual similarity and an absence of visual and phonetic similarity. Based on these findings it found that, upon assessing Article 8(1)(b) of the Trademark Regulation, there was no similarity between the signs. Upon applying Article 8(5), the General Court then merely referred to this finding and rejected the appeal on grounds thereof. El Corte Inglés appealed this decision before the ECJ.

The judgment of the ECJ

p.96

With reference to its judgment in Intra-Presse v OHIM (C-581/13 P and C-581/13 P), the ECJ considers that, “if the examination of the conditions for the application of Article 8(1)(b) of the Trademark Regulation has shown that there is some similarity between the signs at issue, the General Court must, in order to ascertain […] whether the conditions for the

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C-603/14 P El Corte Inglés v OHIM

application of paragraph 5 of that article are satisfied, examine whether […] the relevant public is capable of establishing a link between those signs” (paragraph 43). The ECJ then concludes that the General Court erred in law in the present case, as it “should have examined whether [the low similarity it established in its assessment of Article 8(1)(b)] was not sufficient […] for the relevant public to establish a link between those signs, for the purpose of Article 8(5) of the Trademark Regulation” (paragraph 48).

Commentary

It is well-established case law of the ECJ that the level of ‘similarity’ required for infringement on grounds of risk of confusion is different from the level of ‘similarity’ required for infringement on grounds of unfair advantage and/or detriment. Lower courts, however, still quite commonly only assess ‘similarity’ once, for both grounds of infringement. This is not merely an error in the reasoning of such decisions, it reflects disregard of the fundamental difference between confusion on the one hand and the other types of infringement on the other. Whereas the first requires that the public is led to an incorrect understanding, the latter pertain to much more subtle, often unexpected psychological effects that may occur under distinctly different circumstances.

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OTHER ORDERS OF THE ECJ

Article 181 of the Rules of Procedure of the Court of Justice of 25 September 2012 stipulates that “where the appeal [is] manifestly inadmissible or manifestly unfounded, the Court may […], decide by reasoned order to dismiss that appeal […] in whole or in part.” With the exception of the order of 12 February 2015, in Gamesa Eólica v Enercon, C‑35/14 P, the orders in appeal proceedings rendered in 2015 have not been described in this book. But for the sake of completeness, the following orders on the topics addressed in this book have been handed down in 2015: 13 January 2015, C-320/14 P (Asos v BHIM) 14 January 2015, C-57/14 P (Recaro v OHIM) 20 January 2015, C-311/14 P (Longevity Health Products v OHIM) 22 January 2015, C-494/13 P (GRE v OHIM) 22 January 2015, C-495/13 P (GRE v OHIM) 22 January 2015, C-496/13 P (GRE v OHIM) 5 February 2015, C-420/14 P (Jyoti Ceramic Industries v OHIM) 12 February 2015, C-370/14 P (Argo Group v OHIM) 12 February 2015, C-374/14 P (Walcher Messtechnik v OHIM) 26 February 2015, C-414/14 P (Fundação Calouste Gulbenkian v OHIM) 30 April 2015, C-622/13 P (Castel Frères v OHIM) 7 May 2015, C-343/14 P (Adler Modemärkte v OHIM) 3 June 2015, C-142/14 P (The Sunrider Corporation v OHIM) 4 June 2015, C-579/14 P (Junited Autoglas Deutschland v OHIM) 9 July 2015, C-249/14 P (Pêra-Grave v OHIM) p.99

16 July 2015, C-400/14 P (Basic v OHIM) 2 September 2015, C-531/14 P (Giorgis v OHIM) 8 September 2015, C-62/15 P (DTL Corporación v OHIM) 17 September 2015, C-548/14 P (Arnoldo Mondadori Editore v OHIM) 6 October 2015, C-517/14 P (Schutzgemeinschaft Milch und Milcherzeugnisse) 6 October 2015, C-181/15 P (Marpefa v OHIM) 15 October 2015, C-33/15 P (Cantina Broglie 1 v OHIM) 15 October 2015, C-34/15 P (Cantina Broglie 1 v OHIM) 15 October 2015, C-270/14 P (Debonair Trading Internacional v OHIM 26 October 2015, C-17/15 P (Popp and Zech v OHIM) 19 November 2015, C-190/15 P (Fetim v OHIM) 24 November 2015, C-206/15 P (Sun Mark and Bulldog Energy Drink v Red Bull)

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