Hours and minutes: the Advocate General speaks

The Court of Justice of the European Union is being kept very busy by intellectual property matters these days. Today's batch of Curia posts includes the Advocate General's Opinion in Case C‑190/10 Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (GENESIS) v Boys Toys SA and Administración del Estado, a reference for a preliminary ruling from Spain.

The question has been published in English:

"May Article 27 of Council Regulation ...40/94 ... on the Community trade mark be interpreted in such a way as to enable account to be taken not only of the day but also of the hour and minute of filing of an application for registration of a Community trade mark with OHIM (provided that such information has been recorded) for the purposes of establishing temporal priority over a national trade mark application filed on the same day, where the national legislation governing the registration of national trade marks considers the time of filing to be relevant?".

The AG's Opinion alas, is in a smattering of Euro-tongues, including Latvian -- but again not in English. The French version reads like this:

«En l’état actuel du droit de l’Union, l’article 27 du règlement (CE) nº 40/94 du Conseil, du 20 décembre 1993, sur la marque communautaire, exclut qu’il soit tenu compte, au‑delà du jour de dépôt de la demande de la marque communautaire, également de l’heure et de la minute dudit dépôt.»

With the aid of Google's translation service this reads:

"In the current EU law, Article 27 of Regulation (EC) No 40/94 of 20 December 1993, the CTM, it does not take into account beyond the date of filing of the CTM, also an hour and minute of that deposit".

We get the message.  Merpel adds, this was no easy question, it seems.  The AG needed nearly 80 paragraphs and over 40 footnotes ...

No abuse, no answers: AG gives Budweiser's dirty tricks a clean bill of health

Amazing! Having turned the magician into
a little red ball, the rabbit then proceeded
to make the Budvar trade mark vanish ...

The moment he said he'd go pop if there was anything else coming from the Court of Justice of the European Union today, tytoc collie realised that the fates were bound to conspire against him. Well, here's another whopping great Opinion from the Court, this time from Advocate General Trstenjak, in Case C‑482/09 Budějovický Budvar, národní podnik v Anheuser-Busch, Inc., on a reference from the Chancery Division, England and Wales.

The facts in the case leading to this reference for a preliminary ruling can be found here, in an earlier IPKat post. The casus belli is a dirty trick played by Anheuser-Busch on Budějovický Budvar, národní podnik, applying for a declaration of invalidity of the latter's mark, which was concurrently valid with its own, just one day before the expiry of the five-year period of acquiescence and when Budějovický Budvar had no opportunity to respond to it.

The questions relate to the issue of whether the trick in question was legal under the harmonised European Union trade mark law, not whether it was dirty, and focused on the interpretation of the words of Article 4(1)(a) of the Council Directive 89/104 on the approximation of trade mark laws:

"Further grounds for refusal or invalidity concerning conflicts with earlier rights

‘1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; ...".

The Advocate General has advised the Court today that it doesn't need to answer the questions, since neither the retroactive application of Article 4(1)(a) nor its application from the date of entry into force of the directive are possible in the main proceedings. Accordingly,

"... in a case such as that at issue in the main proceedings, it must be decided in accordance with national law [and not Article 4(1)(a)] whether the proprietor of an earlier trade mark may apply for a mark to be refused registration or, if registered, to be declared invalid even where there has been long-established honest concurrent use of those marks for identical goods". [This is the Europeanese for "Good luck, boys, from now you're on your own!"]

tytoc collie, noting the identity of the warring parties, doesn't think that we will have heard the last of this dispute, even once the Court gives its ruling.  Merpel is fascinated with what the AG had to say about abuse of right:

"121. The submissions of the Czech and Slovak Governments must be understood as arguing that, in their opinion, the abuse of the right under Article 4(1)(a) of the directive lies in AB’s making the application for a declaration of the invalidity of the trade mark ‘Budweiser’ registered for BB one day before the expiry of the five-year period of acquiescence, thereby depriving BB of the possibility of defending itself against the application. I find that argument unconvincing, as it rests on the questionable basic assumption that the acquiescing party is to be prevented from making full use of the period specified in Article 9(1), out of consideration for another party who, generally unlawfully, is using an identical mark. But the right-holder must be conceded the right to apply the rules of substantive and procedural law in the way that is most to his advantage without laying himself open to an accusation of abuse of rights.

122. Regardless of the question already considered in detail of whether the coexistence of the two marks on the basis of the doctrine of honest concurrent use recognised in national law is permissible under European Union law, this argument must therefore be countered by stating that it must be possible in principle for an action which is necessary for complying with a time-limit to be done up to the end of the last day. That corresponds both to the principles of the procedural laws of the European Union and its Member States and to the objectives of the directive. The expectation of the proprietor of the later mark that he will be able to use it free from objection by the proprietor of the earlier mark is already adequately protected by the fact that European Union law provides for limitation of rights to occur on the expiry of the five-year period of acquiescence. Until that period has expired, the proprietor of the later mark must be prepared for the other proprietor to take countermeasures at any time. The determination of a fixed time-limit of five years, as already explained, promotes legal certainty and effectively protects both parties by creating legal stability. To prevent the proprietor of the earlier mark from asserting his rights under Article 4(1)(a) of the directive one day before expiry of the five-year period of acquiescence would ultimately amount to calling into question the validity of that provision. Blurring the fixed time-limit on considerate grounds, as the Czech and Slovak Governments envisage, would be detrimental to the principle of legal certainty and thus not within the intention of the legislature. Their argument must therefore be rejected.

123. Consequently, no abuse of the right under Article 4(1)(a) of the directive may be seen in the fact that the application by AB for a declaration of invalidity of the later mark was made one day before the expiry of the five-year period of acquiescence".

Merpel remains unconvinced. Of course Anheuser-Busch is legally entitled to do what it did -- but the result is what we Kats, laymen, peasants and fools call an abuse.  Only erudite and sophisticated judges are unable to see this.

Faking it, or beyond suspicion? Counterfeits in transit

"Should we let him in? Are there
 grounds for suspecting that
 he's not the real Advocate General .."

If there's much more breaking news today, tytoc collie will go pop, but the Opinion of Advocate General Cruz Villalon has just been published on Curia in Joined Cases C‑446/09 Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd, Far East Sourcing Ltd, Röhlig Hong Kong Ltd and Röhlig Belgium NV and C‑495/09 Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs. The first is a reference from Belgium, the second from England and Wales.

In Philips the Antwerp investigations inspectorate of the Belgian Customs and Excise Administration detained a consignment of shavers from Shanghai, wihch they suspected of infringing Philips's intellectual property rights. The customs authorities sent Philips a photograph of the ‘Golden Shaver’ and informed it that the following companies were involved in the manufacture of or trade in the detained shavers: Lucheng Meijing Industrial Company Ltd, a Chinese manufacturer of shavers; Far East Sourcing Ltd, established in Hong Kong, the shipper of the goods; Röhlig Hong Kong Ltd, the forwarding agent for the goods in Hong Kong, acting on the instructions of the declarant or consignee of the goods; Röhlig Belgium NV, the forwarding agent for the goods in Belgium, acting on the instructions of the declarant or consignee of the goods. In the customs declaration issued by the representative of Röhlig Belgium NV, the goods were declared under the temporary import arrangements without stating the country of destination. Philips brought an action before the Court of First Instance, Antwerp, seeking a ruling that its intellectual property rights had been infringed and claiming that, in accordance with Article 6(2)(b) of Regulation 3295/94 [the then-current Regulation on the temporary suspension of free movement of goods suspected of infringing certain IP rights], the Court should use as its starting point the fiction that the shavers seized had been manufactured in Belgium and should then apply Belgian law for the purposes of establishing the infringement. The Court, before ruling on the merits of the case, referred the following question to the Court of Justice for a preliminary ruling:

‘Does Article 6(2)(b) of Council Regulation ... 3295/94 ... constitute a uniform rule of Community law which must be taken into account by the court of the Member State which, in accordance with Article 7 of the Regulation, has been approached by the holder of an intellectual-property right, and does that rule imply that, in making its decision, the court may not take into account the temporary storage status/transit status and must apply the fiction that the goods were manufactured in that same Member State, and must then decide, by applying the law of that Member State, whether those goods infringe the intellectual-property right in question?’

In Nokia, Her Majesty’s Commissioners of Revenue and Customs (HMRC) stopped and inspected at Heathrow Airport a consignment of goods which had come from Hong Kong and was destined for Colombia, comprising approximately 400 mobile telephones, batteries, manuals, boxes and hands-free kits, each of which bore the trade mark ‘Nokia’. HMRC sent Nokia samples of those goods. After inspecting the samples, Nokia notified HMRC that the goods were counterfeit and asked whether HMRC intended to detain them. HMRC said it was uncertain how goods could be ‘counterfeit’ within the meaning of Article 2(1)(a)(i) of Regulation  1383/2003 [which replaced Regulation 3295/94] in the absence of any evidence that they might be diverted onto the European Union market. HMRC therefore concluded that, in the absence of such evidence, it was not lawful to deprive the owner of its goods. Nokia issued an application against HMRC, asking for the names and addresses of the consignor and the consignee together with any other relevant documents relating to the consignment in the possession of HMRC. Even though such documents were sent to it, Nokia did not succeed in identifying the consignor or the consignee of the goods, and concluded that they had both taken steps to hide their identity. Eventually Nokia commenced legal proceedings in which the judge held that the Regulation did not entitle or require customs authorities to detain or seize counterfeit goods in transit where there was no evidence that the goods would be diverted onto the market in Member States because such goods were not ‘counterfeit goods’ under Article 2(1)(a)(i) of Regulation 1383/2003. On appeal, the Court of Appeal of England and Wales referred the following question to the Court of Justice for a preliminary ruling:

‘Are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and in transit from a non-Member State to another non-Member State capable of constituting “counterfeit goods” within the meaning of Article 2(l)(a) of Regulation ... 1383/2003 if there is no evidence to suggest that those goods will be put on the market in the EC, either in conformity with a customs procedure or by means of an illicit diversion?’

This morning the Advocate General advised the Court of Justice of the European Union to rule in Philips:

Article 6(2)(b) of Council Regulation ... 3295/94 of 22 December 1994 laying down measures concerning the entry into the Community and the export and re-export from the Community of goods infringing certain intellectual property rights is not to be interpreted as meaning that the judicial authority of the Member State called on, in accordance with Article 7 of that regulation, by the holder of an intellectual property right, may take no account of the status of temporary entry or of transit of the goods in question, or, therefore, as meaning that that authority may apply the fiction that those goods were produced in that same Member State for the purpose of ruling, in accordance with the law of that State, whether or not they infringe the intellectual property right at issue

and to rule in Nokia:

Non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and are in transit from one non-member country to another non-member country may be seized by the customs authorities provided that there are sufficient grounds for suspecting [i] that they are counterfeit goods and, in particular, [ii] that they are to be put on the market in the European Union, either in conformity with a customs procedure or by means of an illicit diversion.

Says tytoc collie, so it's goodbye to the notorious "manufacturing fiction" if the AG's Opinion is upheld --and a host of problems for all IP owners in policing trade in fakes and infringements if the recommendation in Nokia is going to be left for the customs authorities and national courts of 27 EU Member States to interpret and apply in their respective ways. Anyone whose daily business consists of transporting fakes from one place to another via the EU will soon compile a chart of easy-transit destinations.

In particular, what are "sufficient grounds for suspecting"? Does this mean that there are grounds for thinking the goods are more likely than not to be counterfeit, or that the possibility that are are not genuine cannot be excluded" (the highly problematic test for 'likelihood of confusion' that already bedevils EU trade mark law), or something in between. The AG says:

"106. Now the problem is that the meaning of ‘suspicion’ in this context is inherently bound up with the facts [This seems to limit the operation of any sort of presumption in favour of suspicion based on, for example, the absence of information concerning the identity of the consignee]. It is beyond doubt that ‘suspicion’ must not be taken to mean irrefutable findings, but that criterion must be prevented from leading to total discretion for the customs authorities in their action.

107. For that reason, I consider that, for the customs authorities to be able lawfully to seize goods in transit subject to their control, they must at the very least have ‘the beginnings of proof’, that is to say, some evidence that those goods may in fact infringe an intellectual property right" [that would be great if there were common standards of evidence -- and on the assumption that the customs authorities are well enough trained to deal with these issues].

Then, at para 109 the AG says

"... in the assessing of those ‘suspicions’ particular account must be taken of the danger of fraudulent entry of goods into the European Union [What is the connection between a suspicion of what a product is and the danger of what it might do?]. Despite all the precautions entailed by the system of Community vigilance, that danger exists, inasmuch as it is not to be forgotten that, even if the external transit procedure itself is founded on a legal fiction, the goods are physically to be found in the territory of the European Union".

tytoc collie suspects that the Court's ruling will be a good deal shorter than the 113 paragraphs of this Opinion.  He very much hopes that they will prove to be a workable foundation for IP owners and customs authorities to deal with those cheeky folk who send fake goods right through EU terrritory with impunity.  Merpel says, what sort of evidence supports the suspicion that the goods in transit are to be marketed in the EU? Surely a set of common rules and guidance is needed here.

Breaking news: competition trumps IP in footie decoder pub brawl

With so little time in which to make their oral submissions to the Court
of Justice, counsel had to resort to extreme measures to make their point

At the time of posting this item, there's no sign of the Advocate General's keenly-awaited Opinion in Cases C-403/08 and C-429/08 Football Association Premier League Ltd & Others v QC Leisure & Others, Karen Murphy v Media Protection Services Ltd. There is however this press release from the Curia. It reads as follows:

"In the view of Advocate General Kokott, territorial exclusivity agreements relating to the transmission of football matches are contrary to European Union law

European Union law does not make it possible to prohibit the live transmission of Premier League football matches in pubs by means of foreign decoder cards

The Football Association Premier League Ltd (the FAPL) is the marketing organisation for the top English football league. The FAPL essentially grants its licensees the exclusive right to broadcast matches and exploit them economically within their respective broadcasting areas, generally the country in question. In order to safeguard this exclusivity, licensees are obliged to prevent their broadcasts from being able to be viewed outside their respective broadcasting areas. To that end, each licensee is required to encrypt its satellite signal and to transmit it in encrypted form to subscribers within its assigned territory. Subscribers can decrypt the signal using a decoder, which requires a decoder card. The exclusivity agreement also imposes restrictions on the circulation of authorised decoder cards outside the territory of each licensee.

The main proceedings in the present references for preliminary rulings concern attempts to circumvent this exclusivity. Companies import decoder cards from abroad, in the present proceedings from Greece, into the United Kingdom and offer them to pubs at more favourable prices than the broadcaster in that State. This practice makes it possible for pubs in the UK to show the live transmission of Premier League football matches using a Greek decoder card. The FAPL is attempting to stop that practice by means of a judicial ruling. Case C 403/08 concerns civil-law actions brought by the FAPL against the use of foreign decoder cards. Case C 429/08 relates to criminal proceedings which have been brought against the landlady of a pub who used a Greek decoder card to show Premier League matches. The High Court has, in each set of proceedings, referred several questions to the Court of Justice on the interpretation of EU law.
Advocate General Juliane Kokott explains that the exclusivity rights in question have the effect of partitioning the internal market into quite separate national markets, something which constitutes a serious impairment of the freedom to provide services.

With regard to possible justification for the restriction of the freedom to provide services, the Advocate General examines the protection of industrial and commercial property and, in particular, addresses the question whether live satellite transmissions of football matches involve rights the specific subject-matter of which requires a partitioning of the internal market. In this connection she first states that the specific subject-matter of the rights in live football transmissions lies in their commercial exploitation. In the present cases, the live transmission of Premier League football matches is exploited, in particular, through the charge imposed for the decoder cards. Advocate General Kokott takes the view in this connection that the economic exploitation of the rights in question is not undermined by the use of foreign decoder cards, as the corresponding charges have been paid for those cards. Whilst those charges are not as high as the charges imposed in the United Kingdom, there is, according to the Advocate General, no specific right to charge different prices for a work in each Member State.

Rather, it forms part of the logic of the internal market that price differences between different Member States should be offset by trade. The marketing of broadcasting rights on the basis of territorial exclusivity is tantamount to profiting from the elimination of the internal market. Consequently, the specific subject-matter of the rights in the transmission of football matches does not justify a partitioning of the internal market, and thus also does not justify the resulting restriction of the freedom to provide services.

Advocate General Kokott further takes the view that the contractual restriction on using decoder cards in the State of origin only for domestic or private use, but not for commercial use – for which a higher subscription charge is payable – also cannot justify a territorial restriction of the freedom to provide services. The Member State concerned may, however, in principle make provision for rights which allow authors to object to the communication of their works in pubs.
So far as concerns the question whether the showing of live transmissions of football matches in pubs infringes the exclusive right of communication to the public of protected works within the terms of the Copyright in the Information Society Directive , the Advocate General explains that, as EU law stands at present, there are no comprehensive rights which protect the communication of a broadcast to the public where no entrance fee is charged.

Advocate General Kokott further expresses the view that the application of the principle of the freedom to provide services is also in line with the Satellite and Cable Directive and with European competition law. Equally, neither does the Conditional Access Directive constitute a barrier to the use of foreign decoder cards".

See also IPKat posts of 7 December 2007 here and 24 June 2008 here.

STOP PRESS: the AG's Opinion has now been posted on the Curia website here.  It's more than 250 paragraphs long ...