If the photo fits, copy it ...

Photo-fits are always a problem;
this was the best they could
do for Merpel ...

In a busy week, a little-publicised Opinion from an Advocate General of the Court of Justice of the European Union (ECJ) can easily be overlooked. However, Tuesday was the day that Verica Trstenjak delivered her Opinion in Case C‑145/10 Eva-Maria Painer v Standard VerlagsGmbH, Axel Springer AG, Süddeutsche Zeitung GmbH, SPIEGEL-Verlag Rudolf AUGSTEIN GmbH & Co KG and Verlag M. DuMont Schauberg Expedition der Kölnischen Zeitung GmbH & Co KG.

Painer, a photographer, specialised in taking photos of children in nurseries and day homes. In the course of her professional work, she produced portrait photos of an Autrian girl, Natascha Kampusch, before her abduction in 1998. She designed the background, determined the position and facial expression, and produced and developed the photos. Meticulous in matters of detail, Painer had more than 17 years labelled the photos she produced with her name and business name. In her business she sold copies of her works but did not grant third parties any rights to the photos or consent to their publication. The purchase price which she charged for the photos thus concerned only the payment for the copies of works.

Following Natascha's abduction, the competent security authorities launched a search appeal in which the contested photos were used. In 2006, after Natascha escaped from her abductor. There being no current photos of her, the defendant Austrian and German newspapers published the Painer's photos of her in print and online without either crediting Painer or by misattributing them to someone else.They said they received the photos from a news agency. Also published was a photo-fit which was intended to show Natasha's presumed current appearance.  This was produced by a graphic artist using a computer program and was based on one of Painer's photos.

Painer sued for copyright infringement, seeking a prohibitory injunction relating to the reproduction of the photos and the photo-fit without her consent and without indicating her as author, plus remuneration and damages. Interim injunctive relief was also sought. Anyway, in proceedings before the Handelsgericht Wien, that court decided to seek preliminary guidance on the following questions:

"1. Is Article 6(1) of Regulation No 44/2001 [on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters] to be interpreted as meaning that its application and therefore joint legal proceedings are not precluded where actions brought against several defendants for copyright infringements identical in substance are based on differing national legal grounds the essential elements of which are nevertheless identical in substance – such as applies to all European States in proceedings for a prohibitory injunction, not based on fault, in claims for reasonable remuneration for copyright infringements and in claims in damages for unlawful exploitation?

2.(a) Is Article 5(3)(d) of Directive 2001/29 [on the harmonisation of certain aspects of copyright and related rights in the information society], in the light of Article 5(5) of that directive, to be interpreted as meaning that its application is not precluded where a press report quoting a work or other protected matter is not a literary work protected by copyright?

(b) Is Article 5(3)(d) of the directive, in the light of Article 5(5) thereof, to be interpreted as meaning that its application is not precluded where the name of the author or performer is not attached to the work or other protected matter quoted?

3.(a) Is Article 5(3)(e) of Directive 2001/29, in the light of Article 5(5) thereof, to be interpreted as meaning that in the interests of criminal justice in the context of public security its application requires a specific, current and express appeal for publication of the image on the part of the security authorities, i.e. that publication of the image must be officially ordered for search purposes, or otherwise an offence is committed?

(b) If the answer to question 3a should be in the negative: are the media permitted to rely on Article 5(3)(e) of the directive even if, without such a search request being made by the authorities, they should decide, of their own volition, whether images should be published ‘in the interests of public security’?

(c) If the answer to question 3b should be in the affirmative: is it then sufficient for the media to assert after the event that publication of an image served to trace a person or is it always necessary for there to be a specific appeal to readers to assist in a search in the investigation of an offence, which must be directly linked to the publication of the photograph?

4. Are Article 1(1) of Directive 2001/29 in conjunction with Article 5(5) thereof and Article 12 of the Berne Convention, particularly in the light of Article 1 of the First Additional Protocol to the ECHR and Article 17 of the Charter of Fundamental Rights of the European Union, to be interpreted as meaning that photographic works and/or photographs, particularly portrait photos, are afforded ‘weaker’ copyright protection or no copyright protection at all against adaptations because, in view of their ‘realistic image’, the degree of formative freedom is too minor?".

On Tuesday the Advocate General responded in a 215-paragraph Opinion which concluded thus:

"1. The notion of ‘close connection’ under Article 6(1) of Council Regulation ... 44/2001 ... is to be interpreted as requiring a single factual situation and a sufficient legal connection between the claim against the defendant who is domiciled in the place where the court is based (anchor claim) and the other claim. In a case such as the present, a single factual situation cannot be taken to exist where the contested conduct of the anchor defendant and of the other defendant appears to be unconcerted parallel conduct. A sufficient legal connection may exist even where different national law which is not fully harmonised is applicable to the two claims.

2.(a) Article 5(3)(d) of Directive 2001/29 ... is to be interpreted to the effect that a Member State has the power to permit the quotation of a work without the author’s consent even where the press report quoting the work is not itself protected by copyright.

(b) That provision also requires the person making the quotation to indicate the name of the author of a photo protected by copyright unless this turns out to be impossible. Indicating the author’s name does not turn out to be impossible where the person making the quotation has not taken all the measures to identify the author which appear reasonable having regard to the circumstances of the individual case.

3(a) Article 5(3)(e) of Directive 2001/29 is to be interpreted to the effect that in the case of a search appeal which pursues a purpose of public security within the meaning of that provision a Member State may permit the reproduction of copyright photos by the media even without the author’s consent if the purposes pursued by the search have not been fulfilled and the reproduction is objectively capable of pursuing those purposes.

(b) The media may not rely directly on that provision in order to justify a reproduction without the author’s consent.

4. Under Article 6 of Council Directive 93/98/EEC harmonising the terms of protection of copyright and certain related rights and of Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights, a portrait photo is afforded copyright protection if it is an original intellectual creation of the photographer, which requires the photographer to have left his mark by using the available formative freedom.

The publication of a photo-fit based on a copyright portrait photo constitutes a reproduction within the meaning of Article 2(a) of Directive 2001/29 where the elements comprising the original intellectual creation of the template are also embodied in the photo-fit".

tytoc collie finds this fascinating and looks forward to the final ruling.  This is the first time he can recall any ruling on whether a photo-fit constitutes an infringement of an original photograph.  He also notes the bit about "a portrait photo is afforded copyright protection if it is an original intellectual creation of the photographer, which requires the photographer to have left his mark by using the available formative freedom". It seems that the ECJ is increasingly shaping the content of national copyright law these days, by defining the scope of original intellectual creation in each case.

Merpel's just puzzled to know why the court insists on referring to Natascha Kampusch as "Natascha K".  Apart from the fact that various books and articles have been written about her -- and she has even written her own -- she appears to be better known than the President of Austria (a Google search gives her 898,000 hits to his 728,000). Oh, by the way, his name is Heinz F.

Vikings to go Luxembourg: it's a gas -- and the scent of perfume too

Yesterday the peaceful, leafy glades of Luxembourg were subjected to a Viking invasion. Well, it was the day of the Advocate General's Opinion in Case C-46/10 Viking Gas A/S v BP Gas A/S, a reference for a preliminary ruling from the Højesteret (Denmark), lodged on 28 January 2010. The court had some excellent questions to ask, on the important issue of the application of trade mark law to the refilling of gas bottles. The court asked:

"Is Article 5, in conjunction with Article 7, of ... Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply: 

1. A sells gas in so-called composite bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and an EC trade mark. A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark. 

2. On first purchase of a composite bottle filled with gas from one of A's dealers the consumer also pays for the bottle, which thus becomes the consumer's property. 

3. A refills the composite bottles by a procedure under which the consumer goes to one of A's dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by A. 

4. B's business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in 1., by a procedure under which consumers go to a dealer associated with B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by B. 

5. When the composite bottles in question are filled with gas by B, adhesive labels are attached to the bottles indicating that the filling was undertaken by B? 

If it may be assumed that consumers will generally receive the impression that there is an association between B and A, is this to be regarded as significant for the purpose of answering Question 1? 

If Question 1 is answered in the negative, may the outcome be different if the composite bottles - apart from being covered by the shape trade mark referred to - also feature (are imprinted with) the registered figurative and/or word mark of A, which is still visible irrespective of any adhesive labels affixed by B? 

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature A's word and/or figurative mark, A has for many years accepted, and continues to accept, the refilling of the bottles by other companies? 

If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to B directly and there:
(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by B, or
(b) on payment, has a composite bottle which he has brought filled with gas?"

Infuriatingly again, the Opinion has been translated into a smattering of languages, including Latvian (and indeed, why not?) -- but not into English. Advocate General Juliane Kokott's words, French-style, are as follows:

"Le titulaire du droit de marque sur une bouteille de gaz enregistrée en tant que marque ne peut pas s’opposer à la vente de gaz, par une autre entreprise, dans des exemplaires de cette bouteille que le titulaire a mis dans le commerce précédemment lorsqu’il est indiqué de façon suffisamment claire que le gaz vendu ne provient pas du titulaire et qu’il n’existe pas de lien avec ce dernier.".

With the assistance of Google's online translation service this comes out in English as

"The proprietor of the mark on a gas cylinder registered as a trade mark cannot oppose the sale of gas through another company, in copies of this bottle that the holder has previously put on the market when it is stated clearly enough that the gas sold does not come from the holder and there is no link with it".

Unable to study the reasoning, tytoc collie can at least appreciate the conclusion.  Without a link, there can be no likelihood of confusion, no association and no taking of unfair advantage or inflicting of detriment, without due cause, regarding the reputation or distinctive character.  Merpel's not so happy though: if, as is generally going to be the case unless gas bottles are going to be filled with fizzy drink, the alleged infringement is an Article 5(1)(a) type -- same mark, same goods -- it shouldn't be necessary to have to show a link unless the Court of Justice's thinking in Google France has spread beyond the use of trade marks as keywords.  Can some kind reader please advise?

Both Kats ask the following question: "If you substitute the word "perfume" for "gas", does the Advocate General suggest that we can put a smell-alike scent in an empty Chanel No.5 bottle and stick a big label on it that says that the contents do not come from Chanel and that there is no link with it?"

Viking Cat cake here
Make your own gas here

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 ...

A Touch of Class: latest news of IP TRANSLATOR

A movie in which "... nothing, absolutely
nothing, goes as planned"

tytoc collie keenly followed the early stages of the IP TRANSLATOR trade mark application dispute, which has gently led to a reference for the preliminary ruling from the Court of Justice of the European Union on the increasingly controversial, if for some folk esoteric question of the effect of designating a Nice Classification heading as the specification of goods or services for which registration of a trade mark is sought.  The easy example is a designation of the Nice heading for "Musical Instruments": does it also cover music stands, since they fall within the same Class for which "Musical Instruments" is the heading, or does the fact that the applicant's designation doesn't say "music stands" mean that his application won't cover them? (See earlier IPKat posts here and here for some pertinent background).

Anyway, there have been some developments.  Let tytoc collie's friend Richard Ashmead take up the story:

"I was in The Hague last week for the Benelux Office for Intellectual Property's 40th anniversary celebratory seminar and the launch of the associated commemorative book, to which you are of course a contributor [IPKat team member Jeremy wrote a chapter, "Interpreting Territorial Use of a Community Trade Mark in Light of the Joint Statements" for this book, which is entitled Trademarks: All About Perception? ... The Kat hopes the BOIP is giving it away free, because he can't find any evidence from BOIP's publications page to suggest they're selling it]. It was an excellent day of thoughtful substance, good company and warm hospitality [Merpel wonders: at someone's expense ..?].

My contribution to their book is entitled “An Approximation of Harmonisation and Differences in EU Law & Practice on Class Headings” and includes an explanation of the IP TRANSLATOR reference case now before the ECJ. The discussions I had there, and indeed sight of your name in the book, reminded me that IPKat readers may like an update on this case. You will recall my earlier report on IP TRANSLATOR and the class headings dispute here. Here briefly then is where the case has got to:

The Appointed Person's reference order of 27 May 2010 was notified by the ECJ to the official parties at the end of July 2010. That notification set the usual somewhat elongated two month term to mid-October 2010 for those parties to submit written observations to the court, and indentified the parties entitled to submit observations as

* the parties in the case before the national court,
* the Member States, the Commission and, where appropriate,
* the European Parliament, the Council and the European Central Bank and
* non-EU-member EEA States and the EFTA Surveillance Authority

I have informal reports that the Czech Republic, Denmark, Germany, France, Austria, Poland, Portugal, Slovakia, UK and the Commission have filed written observations in due time, but have to wait for the court to arrange for translations of all observations (I assume into all 23 EU languages), and then send them to the parties [The position isn't quite so grim, says Merpel.  Assuming that each of the submissions is already in one of the official languages, it will only need to be translated into another 22]. It is notable though that all the member state observations come from countries reported (eg in the survey published by MARQUES in February 2008 which can be found on MARQUES’ website) as applying the “means-what-it-says” approach to class headings within EU registrations. I do not know what line the Commission has taken.

It is not easy to predict when these translated observations will be sent to the parties, but several experienced guesses have gone for Easter or thereabouts. There are though also informal reports that OHIM has made a request to the court to become a party to the reference case in some way [tytoc collie cannot understand why OHIM was not on the original list. IP TRANSLATOR without OHIM is like Hamlet without the Prince]. Whether that, if true, will delay the normal path of a preliminary reference case before the court I cannot tell. I suspect that it would not and that the court would either decline the request or just add OHIM to the (court-recognized) list of parties, in parallel with the normal progress. If the court does allow the request it is not clear if and by when OHIM could file written observations. The court’s "Notes for guidance of counsel” do say, though, that any party which has not submitted written observations retains the right to present oral argument if a hearing is held – a point of possible interest to the other member states which did not file written observations.

While we are waiting for copies/translations of the written observations your readers may be interested to read on MARQUES’s website its 5 October 2010 reasoned comments on IP TRANSLATOR. More recently, on 28 January 2011, the European Communities Trade Mark Association (ECTA) published its equivalent position paper, available on ECTA’s website here. Both address both sides of the debate, “means-what-it-says” and “class-heading-cover-all”, and conclude in favour of the former, as do I [me too, says this Kat, for what it's worth -- but it's better to have everyone doing the same thing, for sake of good order and to reduce the risk of error and confusion]. One way or another though it remains clear that it is the dispute between two diametrically opposing official practices in what is supposed to be a harmonised area of EU law which needs to be addressed.

The EU overall is I think working rather well towards harmonisation of its trade mark laws. In some aspects we have achieved it, but in more we are still at a stage of “approximation of harmonisation ….” (hence my title in the BOIP book). That is to be expected, given the complex social, economic and legal backgrounds from which a fully formed internal market has to develop. The class heading dispute though provides an interesting, and in practice troubling, example of how harmonisation by directive-required legal provisions can be frustrated by reading new laws through historic national spectacles. It also shows how difficult this sort of dispute can be to resolve once it has taken root in an EU-wide legal system".

tytoc collie thanks Richard for the time and trouble taken in producing this update.  He'd also like to know why there doesn't seem to be a convenient way for us all to read the submissions made by the Commission and various member states.  There shouldn't be too much that needs to be hidden from view, surely. We're only talking about trade marks ...

ONEL edges closer to resolution as Hague Court pops the questions

Does use of a Community trade mark in just one of the 27 Member States count as "genuine use" of that trade mark and, if so, in what circumstances will it do so? This question is now a little bit nearer resolution than it was before.  Thank you, Camille Janssen (Benelux Office for Intellectual Property) for sending tytoc collie this handy, if admittedly unofficial, translation from the original Dutch of the final form of the wording of the questions referred last week by the Hof Den Haag to the Court of Justice of the European Union (ECJ) for a preliminary ruling in Case number: 200.057.983/01 (ONEL/OMEL, on which please refer to earlier IPKat posts here, here, here and here, among others):

"Questions referred for a preliminary ruling

18. ... the Court feels that it is necessary to refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

1. Should Article 15(1) of Regulation (EC) no. 207/2009 on the Community Trade Mark be interpreted in such a manner that it is sufficient, in order to qualify as genuine use of a Community trade mark, for that trade mark to be used within the frontiers of a single Member State, provided that this use, if it concerned a national trade mark, would qualify as genuine use in that Member State (cf. Joint Statement no. 10 on Article 15 of Council Regulation (EC) no. 40/94 dated 20 December 1993 and the OHIM’s Opposition Guidelines)?

2. If Question 1 is to be answered in the negative, does such use of a Community trade mark within a single Member State as described above not in any instance qualify as genuine use in the Community as defined in Article 15(1) of Regulation (EC) no. 207/2009?

3. If use of a Community trade mark within a single Member State does not in any instance qualify as genuine use in the Community, to what requirements – in addition to other factors – should the territorial scope of the use of a Community trade mark be subject for purposes of determining genuine use in the Community?

4. Alternatively, should – in deviation from the assumption used above – Article 15 of the Council Regulation on the Community Trade Mark be interpreted in such a manner that determination of genuine use in the Community is made wholly independent from the frontiers of the Member States’ respective territories (and for example market shares (product/geographic markets) be taken as a point of reference)?

Decision

The Court:
- requests the Court of Justice of the European Union to rule on the questions set out in par. 18 on the interpretation of the Regulation and Directive specified above;
- defers all further judgment and suspends these proceedings until the Court of Justice
of the European Union has ruled on those questions.

This judgment was handed down by J.C. Fasseur-van Santen, A.D. Kiers-Becking and M.Y.
Bonneur, and was pronounced in open session on 1 February 2011, in the presence of the
court registrar".

Says Merpel, this is one ruling from the ECJ which will be of genuine use to trade mark owners and their professional representatives ...

Are you a budding plant varieties lawyer? If so, read on ...

Lacking opposable thumbs, Kitty always
had trouble with her flower-arrangements

Don't mock plants. They are just as profitable as other intellectual property subject-matter if you can deploy your skills correctly, and they can be exciting to litigate too. Once they're in the ground, they don't move around very much -- but plant varieties (PV) lawyers travel quite a bit; sometimes they even get to visit Luxembourg once in a while when they take PV disputes to the European Union's highest court.

A lovely bunch of lawyers, a sweet-scented bouquet of advocates no doubt, will soon be there to argue the merits of Case C-509/10 Josef Geistbeck and Thomas Geistbeck v Saatgut-Treuhandverwaltungs GmbH, a reference for a preliminary ruling from the German Bundesgerichtshof. So what is it that the Bundesgerichtshof, the veritable flower of German judiciary, seeks from the Court of Justice? The reference reads like this:

"The following questions on the interpretation of Council Regulation ... 2100/94 ... on Community plant variety rights ... and of Commission Regulation ... 1768/95 ... implementing rules on the agricultural exemption provided for in Article 14(3) of Council Regulation ... 2100/94 on Community plant variety rights ... are referred to the Court of Justice of the European Union ... 

(a) Must the reasonable compensation which a farmer must pay to the holder of a Community plant variety right in accordance with Article 94(1) of the CPVR Regulation because he has used propagating material of a protected variety obtained through planting and has not fulfilled the obligations laid down in Article 14(3) of the CPVR Regulation and Article 8 of the Community Planting Regulation, be calculated on the basis of the average amount of the fee charged for the licensed production of a corresponding quantity of propagating material of protected varieties of the plant species concerned in the same area, or must the (lower) remuneration which would be payable in the event of authorised planting under the fourth indent of Article 14(3) of the CPVR Regulation and Article 5 of the Community Planting Regulation be taken as a basis for the calculation instead? 

(b) In the event that only the remuneration for authorised planting must be taken as a basis for the calculation: in the circumstances described above, may the holder, in the event of a single intentional or negligent infringement, calculate the damage for which he must be compensated in accordance with Article 94(2) of the CPVR Regulation as a lump sum based on the fee for the grant of a licence for the production of propagating material? 

(c) Is it permitted or even required, when assessing the reasonable compensation due under Article 94(1) of the CPVR Regulation or the further compensation due under Article 94(2) of the CPVR Regulation, for the special monitoring costs of an organisation which protects the rights of numerous holders to be taken into account in such a way that double the compensation usually agreed, or double the remuneration due under the fourth indent of Article 14(3) of the CPVR Regulation, is awarded?"

tytoc collie can't wait to find out the answers though, like all cats, the concept of losing sleep over them (or indeed anything else) is alien to his personal experience.  Merpel says, is "propagation" the fusion of the words "proper" and "litigation"?

Wintersteiger 3: the legal grounds

AdWords, trade marks and adjacent European Union Member States linked by a common language -- are these not the ingredients of a first-rate piece of litigation? Of course they are, which is why tytoc collie posted two items on a trade mark dispute that is currently on its way before the Court of Justice of the European Union -- Case C-523/10 Wintersteiger. The first post sought further information about the case's factual background and legal issues raised. The second post was a mini-rant about the very short time provided by the UK's Intellectual Property Office for stakeholder consultation. The facts have been presented by a hugely helpful reader here.

 The Kat now returns to this case, taking in turn the two issues previously raised. One helpful friends writes:

"The International Registration for WINTERSTEIGER looks like it could be based on the Austrian mark on which the attack is based (illustrated in colour here).

As for the legal arguments (this is a purely unofficial summary):

The parties fight over whether the Austrian courts have international jurisdiction for an interim injunction against a defendant resident in Germany. Following the ECJ in case C-391/95 (van Uden), such jurisdiction can be based on Brussels I as well as based on national law of the country where the court is situated (Art. 31 Brussels I). Wintersteiger only relies on Art. 5 No. 3 Brussels I [nb Article 5 is reproduced in part, below]. Hence question 1. relating to this article (jurisdiction under Art. 31 Brussels I is not relevant in this case).

Wintersteiger claims infringement of its Austrian trade mark. Such an infringement would generally be considered a tort under Art. 5 No.3 Brussels I. However, it is questionable whether the harmful event - the infringement of the trade mark - in fact occurred in Austria or whether there is any likelihood that it may occur in Austria in future.

Jurisdiction according to Art. 5 No. 3 Brussels I is given (following case law of the Court) if the claimant argues facts which - if they are found to be true - can result in the infringement of a national trade mark (citing 4 Ob 110/01g = ÖBl 2002, 145 - Boss-Zigaretten; similar to BGH I ZR 163/02 = JZ 2005, 736 [Ohly] - Hotel Maritime). In the event that Products 4U had published its ad on Google.at, this criteria would certainly be fulfilled following the criteria which the ECJ laid down in C-236/08 - C-238/08, Google France and Google, ditto in C-278/08, Bergspechte, because the ad does not make it clear that the goods and services which are being advertised do not originate from the trade mark proprietor or from an undertaking which is commercially linked with it, but from a third party.

However, Products 4U have not published their ad on Google.at [the Austrian Google] but on Google.de [the German Google]. Wintersteiger claims only infringement of its Austrian trade mark. It therefore seems that the ad under attack is considered acceptable for the German market - for lack of trade mark rights in Germany. The question is under which conditions the ad is to be considered an infringement of the Austrian trade mark and as such can lead to jurisdiction of the Austrian courts.

The starting point for the answer of this question for the Court is the principle of territoriality of trade mark law: The mark is protected only in that territory, in which it is registered; it can only be infringed in this particular territory. For this reason, with national marks it depends on which conditions of locality ("raeumliche Voraussetzungen") an infringement of a trade mark takes place in the country in which the mark was registered. There may be different views for the issue of an AdWord ad on a "national “ Google website:

(i) It is conceivable that an AdWord ad can only infringe a national trade mark if the Top-level domain of the search engine is the one of the respective country where the mark is registered or (if necessary) the search engine has a generic character (e.g. .com or .org). An argument for this is the country-specific character of the different Google websites: it could be accepted that the advertiser by publishing the ad on a certain country-specific top-level domain makes clear that his ad objectively is not targeted at other countries and that there can consequently be no infringement of trade marks registered in other countries.

(ii) However, the mere possibility to access the website in the country where the trade mark is registered might be sufficient. Reason for this is the global character of the internet: Whoever uses this medium must take into account the fact that its ads are read by a world-wide audience and may therefore infringe the origin function of a trade mark registered in one or more countries. This however would have the consequence that advertisers would have to conduct a world-wide search of trade marks prior to publishing an ad, in order to avoid trade mark infringement. Further, the Court is not aware whether it is technically possible for search engine providers to prevent an ad from being shown in a particular country. If not, a prohibition to publish an ad in one country would in fact have world-wide effect.

(iii) A third solution - which is preferable in the opinion the Court - is to not only require the accessibility of the website but also a further connection between the ad and the country in which the trade mark is registered. One particular point to consider could be the language of the website, and whether the parties are in competition with each other on the market of the country in which the trade mark is registered. In the present case, this would indicate an infringement of the Austrian trade mark and thus jurisdiction of the Austrian courts. A further criterion would, if necessary, be the number of clicks on the relevant Google website. However, the Court does not know whether Google publishes these numbers. It would further be conceivable to consider whether it is proportionate in a particular case to prohibit use of an AdWord, which is protected as a trade mark in one country, on a world-wide basis.

Similar questions were put to the ECJ with regard to the infringement of personality rights in Cases C-509/09 (Federal Supreme Court/BGH) and C-161/10 (Tribunal de Grande Instance de Paris). With the current questions, the Court seeks clarification in a trade mark connection.

Regarding jurisdiction in interim injunction proceedings, Art. 31 Brussels I refers to the national law. In this case, the first instance court would have jurisdiction, because the proceedings are still pending before that court (§ 387 (1) EO). However, in Case C-391/95 van Uden the ECJ noted that a "real connecting link" had to exist "between the subject-matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought". In the opinion the Court, such a "real connecting link" in cases where a party is requested to refrain from doing something can only exist if either the defendant is based in Austria or if the infringing behaviour has occurred in Austria or could lead to the infringement of rights in Austria. However, in these cases, the Austrian court would have jurisdiction according to Art. 2 or Art. 5 No 3 Brussels I, so that Art. 31 Brussels I referring to national law does not have any independent meaning. A question relating to Art. 31 Brussels I therefore is not necessary.

For these reasons, the Court is asking the ECJ for interpretation of Art. 5 No 3 Brussels I:

"1. In the case of an alleged infringement by a person established in another Member State of a trade mark granted in the State of the court seized through the use of a keyword (AdWord) identical to that trade mark in an internet search engine which offers its services under various country-specific top-level domains, is the phrase "the place where the harmful event occurred or may occur" in Article 5(3) of Regulation 44/2001 ("Brussels I") is to be interpreted as meaning that;

1.1. jurisdiction is established only if the keyword is used on the search engine website the opt-level domain of which is that of the State of the court seized;

1.2. jurisdiction is established only if the search engine website on which the keyword is used can be accessed in the State of the court seized;

1.3. jurisdiction is dependent on the satisfaction or other requirements additional to the accessibility of the website?

2. If Question1.3 is answered in the affirmative: Which criteria are to be used to determine whether jurisdiction under Article 5(3) of Brussels I is established where a trade mark granted in the State of the course seized is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seized?"

Article 5 of Brussels I reads as follows:

A person domiciled in a Member State may, in another Member State, be sued:
1. (a) in matters relating to a contract, in the courts for the place of performance of the obligation in question;
(b) for the purpose of this provision and unless otherwise agreed, the place of performance of the obligation in question shall be:
- in the case of the sale of goods, the place in a Member State where, under the contract, the goods were delivered or should have been delivered,
- in the case of the provision of services, the place in a Member State where, under the contract, the services were provided or should have been provided,
(c) if subparagraph (b) does not apply then subparagraph (a) applies;
2. in matters relating to maintenance, in the courts for the place where the maintenance creditor is domiciled or habitually resident or, if the matter is ancillary to proceedings concerning the status of a person, in the court which, according to its own law, has jurisdiction to entertain those proceedings, unless that jurisdiction is based solely on the nationality of one of the parties;
3. in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur;
4. as regards a civil claim for damages or restitution which is based on an act giving rise to criminal proceedings, in the court seised of those proceedings, to the extent that that court has jurisdiction under its own law to entertain civil proceedings; ...

tytoc collie wondered whether, since the UK's Intellectual Property Office could spare only a week for stakeholder comments on questions which take more or less two years to resolve, it would be good to see how other countries handle the consultation issue.  He has since received information from a reader in the Netherlands which suggests that (i) there is no single standard practice; (ii) questions for the Court of Justice are distributed between the departments involved and they seem to decide on their own right which questions the Netherlands should intervene in.

Wintersteiger 1: the facts

I don't mind the skiing, said Fritz,
but I don't see why I have a do it
while dressed in a tea-cosy

tytoc collie posted a note last week on Case C-523/10 Wintersteiger, which posed some interesting-looking questions concerning choice of jurisdiction in the multi-country European Union, when it comes to suing the user of a trade mark-infringing internet search keyword and working out where the location of the "harmful event" takes place (see Katpost here).  These questions will be answered, or at any rate nibbled on, by the Court of Justice of the European Union before the referring court in Austria then applies the answers to the facts before it.  Not knowing anything about the background, tytoc collie asked if any reader could be of assistance. Fortunately, one has, and this is what she tells us:

"Wintersteiger produces and distributes service machinery for skis and snowboards inclusive of accessories and spare parts on a worldwide basis. It owns an Austrian trade mark registration with priority of 25 January 1993 covering goods and services in classes 3, 6, 7, 8 , 9, 12, 14, 16, 20, 25, 28, 37 and 42, including machines for the servicing of skis, snowboards plus accessories and spare parts, as well as specific repair and maintenance services and related machinery.

Products 4U Sondermaschinenbau GmbH is a German-based company which also develops and distributes machines for the service of skis and snowboards. It also sells accessories for machines by other manufacturers, including accessories for machines produced by Wintersteiger. These accessories do not originate from Wintersteiger, nor are they authorised by Wintersteiger. Nevertheless Products 4U sells them by reference to "Wintersteiger-Zubehoer" (Wintersteiger-accessories). Like Wintersteiger, Products 4U trades worldwide, and sells its products in particular also in Austria.

Skiing accessory

Since 1 December 2008 Products 4U had reserved the AdWord "Wintersteiger" on Google.de. When typing in "Wintersteiger", on 11 January 2010, as the first natural search result the link of the Austrian company Wintersteiger appeared on Google.de. On the right hand side, next to the search results, under the heading "Anzeige" (Ads) a text block with an advertisement by Products 4U appeared. The ad text was headed by the word "Skiwerkstattzubehoer" (ski service station accessories).  This word was in blue and was underlined. Underneath this heading, and in two lines were the words "Ski and Snowboardmaschinen" (Ski and snowboard machines) and "Wartung und Reparatur" (service and repair). The bottom line included Product 4U's internet address in green letters. By clicking the heading "Skiwerkstattzubehoer", one was led to the offer of "Wintersteiger-Zubehoer" on Product 4U's website. The Google ad did not include a note that there was no commercial link between Products 4U and Wintersteiger.

Products 4U does not own the AdWord "Wintersteiger" on the Austrian Google.at.

Wintersteiger claims that Products 4U infringes its Austrian trade mark by advertising on Google.de since the website is accessible in Austria and is in the German language. Accordingly, the website as well as ads on this website target Austrian users. The company claims that it is irrelevant that accessibility of the website cannot be limited territorially for technological reasons.

Products 4U counters that the Austrian courts have no jurisdiction and that it is not infringing the mark. Google.de was directed exclusively at the German user, as was apparent from the layout of the website. The ad therefore was only directed at German customers. If Products 4U had wanted to address Austrian customers it would also have booked an ad on the Austrian Google.at website.

The first instance court refused the application for an interim injunction on the basis of lack of jurisdiction. Even though Google.de was accessible in Austria, Google's services were offered under country-specific top-level domains and so the website Google.de was only directed at Germany. There was no sufficient connection to Austria.

Surfing accessory

The appeal court accepted its international jurisdiction, but rejected the applicant's claim and the application for an interim injunction. While the fact that Google had country specific top-level domains did not mean that Google.de was only directed at internet users in Germany, the website was accessible in Austria and in German language, it was therefore also directed at the Austrian user. It was not entirely out of the question that the Austrian user, especially those near the Austrian-German border or out of interest for German products, would search for products or companies on Google.de. Therefore the court had international jurisdiction. However, Products 4U had not infringed the trade mark rights of Wintersteiger. The trade mark did not appear in Product 4U's ad; the ad did not give the impression that there was a commercial link between Wintersteiger and Products 4U".

This is hugely useful, says tytoc collie -- and thanks so much for letting us know!  Merpel wants to know why Austrians aren't supposed to know the names of the parties, who are identified only as W********** and P******** respectively, whereas any Austrian who wants to know who they are can easily find the names if they click this Dutch site here.  Tufty says, it's good and helpful to learn that the claimant in these proceedings is W**********.  I might have thought it was W******* or even W************* ...

A tale for our time: Princess Ilonka and the Landeshauptmann

Until very recently tytoc collie had never heard of Ilonka Sayn-Wittgenstein.  Now he thinks she's heading to be a household name, either as described above or, as she would prefer it, as Ilonka Fürstin von Sayn-Wittgenstein.  The long name is banned by the Austrians, it seems, but the Germans have no problems with it.  The lady is an Austrian, but lives and works in Germany.  All this is the stuff of which exciting references to the Court of Justice of the European Union are made.  And don't think that this has nothing to do with intellectual property, because it does.

The history of Europe used to be
the story of mad kings; now we
have so few monarchs, our
legislators, administrators and
judiciary have to take it in turns
to be mad ...

The saga of Case C 208/09  Ilonka Sayn-Wittgenstein v Landeshauptmann von Wien, in which the court gave its ruling on 22 December, all began in Vienna, Austria, in 1944 where Ilonka was born, instantly becoming an Austrian citizen. After later moving to Germany, where she became permanently resident, she was adopted in 1991 by a German citizen, one Lothar Fürst von Sayn Wittgenstein, through an order issued by the Kreisgericht Worbis (Worbis District Court); in the next year the same court issued a supplementary order to confirm that, following the adoption, Ilonka had indeed acquired the surname of her adoptive father as her name at birth, in the form ‘Fürstin von Sayn-Wittgenstein’.  The designation "Fürst", and its feminine form "Fürstin", mean "prince" and "princess" respectively.  This isn't always useful for professional purposes, but it was really handy for Ilonka, whose day job was selling castles and stately homes.  

At first all went well.  The Austrian authorities registered Ilonka's long but apparently legal surname in the Austrian register of civil status; she received a German driving licence in that name and incorporated a German company under it. Her Austrian passport was renewed at least once in her princessly persona, in which the Austrian consular authorities in Germany treated her to two certificates of nationality.

Without the goodwill in "Fürstin von", Ilonka might
end up selling castles of  a less grand nature

At this point things started going pear-shaped.  In November 2003 the Austrian Constitutional Court ruled, in a similar case, that Austria's Law on the Abolition of the Nobility bans Austrian citizens from acquiring a surname which includes a former title of nobility by means of adoption by a German national who is permitted to bear that title as a constituent element of his name.  By this Law,no Austrian may bear titles of nobility, including those of foreign origin. Further, Austrian law, unlike German law, does not permit surnames to be formed according to rules that are different for men and women.  This being so, the Landeshauptmann von Wien (a sort of Viennese administrative top dog, this Kat thinks) decided that Ilonka's post-adoption birth certificate was incorrect and told her he was going to amend her surname in the register of civil status to ‘Sayn-Wittgenstein’.

The precise words with which Ilonka greeted this news are not recorded in the reference for a preliminary ruling, but tytoc collie guesses that they must have sounded impressive, even to a non-German-speaker.  Anyway, the good lady objected and maintained that, based on EU law, she was entitled to travel within the Member States of the European Union without having to change her name.. The Landeshauptmann von Wien was unmoved and lopped off the offending "Fürstin von".  Ilonka then took to the courts.  She argued on the basis of infringements of her rights to freedom of movement and to provide services, as guaranteed by the Treaties of the European Union: non-recognition of the effects of the adoption with regard to the law governing names amounted to an obstacle to the freedom of movement of persons because she would have to use different surnames in different Member States.  Also, in relation to public policy (the basis on which Austria bans handles of nobility), Member States were mutually obliged to restrict its application to the most necessary and most intolerable cases.  As if a plea based on economic freedoms wasn't enough, Ilonka invoked human rights (though this probably isn't the right court for that sort of plea: down the road in Strasbourg she might have had better luck).  She argued tht an amendment of the surname ‘Fürstin von Sayn Wittgenstein’ which she had used continuously for 15 years, constituted interference with the right to respect for family life guaranteed by Article 8 of the European Convention for the Protection of Human Rights and Fundamental Freedoms.

Born in 1944?  tytoc collie hopes the castles
she sells are as well-preserved as she is ...

The Landeshauptmann was unmoved: there was nothing in this episode to cramp the right of freedom of movement provided for in Article 21 TFEU or seriously to inconvenience Ilonka -- she was not being required to use different names but merely to remove the noble element ‘Fürstin von’ from the surname ‘Sayn-Wittgenstein’, which remained unchanged. And even if she were to suffer some professional or personal inconvenience as a result of the correction to the birth register, that inconvenience should not be accorded an importance which would justify ignoring the Law on the abolition of the nobility. Adding insult to injury he even asserted that the Germans didn't know their own law: according to the German choice-of-law rules, he said, the name of a person is determined by the law of the State of which that person is a national. If it had correctly applied the law, the Kreisgericht Worbis should have concluded that Ilonka's name had to be determined under Austrian law. Since the form ‘Fürstin von Sayn-Wittgenstein’ is not authorised under Austrian law, its attribution to the applicant is incorrect under German law too.

Hearing this dispute, the Verwaltungsgerichtshof probably thought "(i) whichever side we hold for, we'll upset the other side, (ii) we can see both sides of the answer, (iii) we don't know the answer anyway and (iv) no-one likes the Court of Justice, which is in any event on neutral soil", so it decided to stay the proceedings and refer the following question to the Court of Justice for a preliminary ruling:

‘Does Article [21 TFEU] preclude legislation pursuant to which the competent authorities of a Member State refuse to recognise the surname of an (adult) adoptee, determined in another Member State, in so far as it contains a title of nobility which is not permissible under the (constitutional) law of the former Member State?’

The Court of Justice of the European Union (Second Chamber) has now held that the question should be answered as follows:

"Article 21 TFEU must be interpreted as not precluding the authorities of a Member State, in circumstances such as those in the main proceedings, from refusing to recognise all the elements of the surname of a national of that State, as determined in another Member State – in which that national resides – at the time of his or her adoption as an adult by a national of that other Member State, where that surname includes a title of nobility which is not permitted in the first Member State under its constitutional law, provided that the measures adopted by those authorities in that context are justified on public policy grounds, that is to say, they are necessary for the protection of the interests which they are intended to secure and are proportionate to the legitimate aim pursued".

In other words, the court is saying [according to Merpel]:

"We are delivering a ruling that is applicable only to situations with the same unusual facts as this one; we can't tell from Luxembourg whether the conditions in Austria in 2010 are such as to justify the protection of interests which they are intended to secure, not that we can even imagine what they are, and we leave it to the referring court to determine what the legitimate aim pursued by the Law on the Abolition of the Nobility is, and whether trying to stop a German resident from selling castles under her preferred name is a proportional response to the threat of people with funny names staging a coup and reinstating the Habsburgs".

tytoc collie, who has no interest in either promoting or preventing noble names, thinks the prohibition on Ilonka being able to use her chosen name is pathetic and an embarrassment to 21st century Austria.  Ilonka can register her full German name as a Community trade mark, which will cover the whole of Austria; she can trade in castles in Germany and watch with amusement as the goodwill in her business crosses the Austria-German border on foot, by car, on TV and radio and via the internet.  Austria has a past -- as do many countries -- and is entitled to escape from a return to it; but Austria also has a present and a future, and it may be wondered whether the ban on titles of nobility, and on Austrians getting adopted by title-bearing Germans, is still relevant.  Merpel adds, from a trade mark infringement and passing-off point of view (in those countries where it is appropriate), the "bona fide use of one's own name" defence generally depends on one's use of the exact name and not a variant of it; if Ilonka is unable to continue to use the name of her choice, the availability of that defence might be at risk.

Castles in the air here, here and here

Trade marks, AdWords and the location of harmful events: some brain-teasers

Without the facts, tytoc collie isn't even sure
if this is the right Wintersteiger

Now here's a good IP question or two for the Court of Justice of the European Union -- it's coming up in Case C-523/10 Wintersteiger [courtesy of the UK Intellectual Property Office, here] and the questions run like this:

"1. In the case of an alleged infringement by a person established in another Member State of a trade mark granted in the State of the court seized through the use of a keyword (AdWord) identical to that trade mark in an internet search engine which offers its services under various country-specific top-level domains, is the phrase "the place where the harmful event occurred or may occur" in Article 5(3) of Regulation 44/2001 ("Brussels I") is to be interpreted as meaning that;

1.1. jurisdiction is established only if the keyword is used on the search engine website the opt-level domain of which is that of the State of the court seized;

1.2. jurisdiction is established only if the search engine website on which the keyword is used can be accessed in the State of the court seized;

1.3. jurisdiction is dependent on the satisfaction or other requirements additional to the accessibility of the website?

2. If Question1.3 is answered in the affirmative: Which criteria are to be used to determine whether jurisdiction under Article 5(3) of Brussels I is established where a trade mark granted in the State of the course seized is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seized?"

tytoc collie is surprised only that it has taken so long for these issues to reach Europe's highest court, given the high level of internet (and AdWord) use within a single market in which there are so many countries and jurisdictions.

If you would like to advise the UK Intellectual Property Office on these issues, thus enabling the UK government to decide whether to get involved or not, you can email your thoughts here.  As usual, the time for response is absurdly short, and is really an insult to the intellectual property community: you have to submit your comments by Tuesday 4 January 2011 -- and there aren't exactly many working days between now and then.   The deadline for the court to receive observations is 1 March 2011.

Merpel says, can any reader tell her what the underlying dispute is all about?

L’Oréal v eBay: what the Advocate General says

On 22 May 2009 Mr Justice Arnold told us that he was referring a number of questions to the Court of Justice of the European Union for a preliminary reference in one of the most exciting and potentially important trade mark law disputes to be heard in England and Wales in recent times -- the titan struggle between luxury cosmetic kings L’Oréal SA and online auction host eBay (see IPKat post here for background). Today in Case C‑324/09 L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited Advocate General Jääskinen delivered his keenly awaited opinion.

To refresh readers' memories, the questions referred were as follows:

‘(1) Where perfume and cosmetic testers (i.e. samples for use in demonstrating products to consumers in retail outlets) and dramming bottles (i.e. containers from which small aliquots can be taken for supply to consumers as free samples) which are not intended for sale to consumers (and are often marked “not for sale” or “not for individual sale”) are supplied without charge to the trade mark proprietor’s authorised distributors, are such goods “put on the market” within the meaning of Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94]?

(2) Where the boxes (or other outer packaging) have been removed from perfumes and cosmetics without the consent of the trade mark proprietor, does this constitute a “legitimate reason” for the trade mark proprietor to oppose further commercialisation of the unboxed products within the meaning of Article 7(2) of [Directive 89/104] and Article 13(2) of [Regulation No 40/94]?

(3) Does it make a difference to the answer to question 2 above if:

(a) as a result of the removal of the boxes (or other outer packaging), the unboxed products do not bear the information required by Article 6(1) of [Directive 76/768], and in particular do not bear a list of ingredients or a “best before date”?

(b) as a result of the absence of such information, the offer for sale or sale of the unboxed products constitutes a criminal offence according to the law of the Member State of the Community in which they are offered for sale or sold by third parties?

(4) Does it make a difference to the answer to question 2 above if the further commercialisation damages, or is likely to damage, the image of the goods and hence the reputation of the trade mark? If so, is that effect to be presumed, or is it required to be proved by the trade mark proprietor?

(5) Where a trader which operates an online marketplace purchases the use of a sign which is identical to a registered trade mark as a keyword from a search engine operator so that the sign is displayed to a user by the search engine in a sponsored link to the website of the operator of the online marketplace, does the display of the sign in the sponsored link constitute “use” of the sign within the meaning of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

(6) Where clicking on the sponsored link referred to in question 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, does that constitute use of the sign by the operator of the online marketplace “in relation to” the infringing goods within the meaning of 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94]?

(7) Where the goods advertised and offered for sale on the website referred to in question 6 above include goods which have not been put on the market within the EEA by or with the consent of the trade mark proprietor, is it sufficient for such use to fall within the scope of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94] and outside Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94] that the advertisement or offer for sale is targeted at consumers in the territory covered by the trade mark or must the trade mark proprietor show that the advertisement or offer for sale necessarily entails putting the goods in question on the market within the territory covered by the trade mark?

(8) Does it make any difference to the answers to questions 5 to 7 above if the use complained of by the trade mark proprietor consists of the display of the sign on the web site of the operator of the online marketplace itself rather than in a sponsored link?

(9) If it is sufficient for such use to fall within the scope of Article 5(1)(a) of [Directive 89/104] and Article 9(1)(a) of [Regulation No 40/94] and outside Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94] that the advertisement or offer for sale is targeted at consumers in the territory covered by the trade mark:

(a) does such use consist of or include “the storage of information provided by a recipient of the service” within the meaning of Article 14(1) of [Directive 2000/31]?

(b) if the use does not consist exclusively of activities falling within the scope of Article 14(1) of [Directive 2000/31], but includes such activities, is the operator of the online marketplace exempted from liability to the extent that the use consists of such activities and if so may damages or other financial remedies be granted in respect of such use to the extent that it is not exempted from liability?

(c) in circumstances where the operator of the online marketplace has knowledge that goods have been advertised, offered for sale and sold on its website in infringement of registered trade marks, and that infringements of such registered trade marks are likely to continue to occur through the advertisement, offer for sale and sale of the same or similar goods by the same or different users of the website, does this constitute “actual knowledge” or “awareness” within the meaning of Article 14(1) of [Directive 2000/31]?

(10) Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, does Article 11 of [Directive 2004/48] require Member States to ensure that the trade mark proprietor can obtain an injunction against the intermediary to prevent further infringements of the said trade mark, as opposed to continuation of that specific act of infringement, and if so what is the scope of the injunction that shall be made available?’

The Advocate General -- whose recommendations are accepted on average around 75-80% of the time -- has advised the Court to rule thus:

(1) Where perfume and cosmetic testers and dramming bottles which are not intended for sale to consumers are supplied without charge to the trade mark proprietor’s authorised distributors, such goods are not put on the market within the meaning of Article 7(1) of ... Council Directive 89/104 ...and Article 13(1) of ... Regulation ...40/94 .... [this fits with the Court's ruling in Case C-127/09 Coty Prestige Lancaster v Simex, noted by tytoc collie here]

(2), (3) and (4) The trade mark proprietor is entitled to oppose further commercialisation of the unboxed products within the meaning of Article 7(2) of Directive 89/104 and Article 13(2) of Regulation No 40/94 where the outer packaging have been removed from perfumes and cosmetics without the consent of the trade mark proprietor if, as a result of the removal of the outer packaging, the products do not bear the information required by Article 6(1) of Council Directive 76/768 ... on the approximation of the laws of the Member States relating to cosmetic products [in which case repackaging in non-fancy, information-bearing boxes would still be fine], or if the removal of outer packaging can be considered as such as changing or impairing the condition of the goods [but is the glamour of the packaging to be regarded as part of the 'condition of the goods'?] or if the further commercialisation damages, or is likely to damage, the image of the goods and therefore the reputation of the trade mark [This may not be as clear-cut as it sounds, since presumably evidence of damage to reputation must be tied to the circumstances of each type of sale and cannot be presumed in all cases. Thus ...]. Under the circumstances of the main proceedings that effect is to be presumed unless the offer concerns a single item or few items offered by a seller clearly not acting in the course of trade.

(5) Where a trader operating an electronic marketplace purchases the use of a sign which is identical to a registered trade mark as a keyword from a search engine operator so that the sign is displayed to a user by the search engine in a sponsored link to the website of the operator of the electronic marketplace, the display of the sign in the sponsored link constitutes ‘use’ of the sign within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94 [there's some interesting analysis in the Opinion; this is not identical to the Google France sort of situation, since the use here is by eBay as an electronic marketplace operator, not by an ordinary trader selling goods].

(6) Where clicking on the sponsored link referred to in point 5 above leads the user directly to advertisements or offers for sale of goods identical to those for which the trade mark is registered under the sign placed on the website by other parties, some of which infringe the trade mark and some which do not infringe the trade mark by virtue of the differing statuses of the respective goods, that fact constitutes use of the sign by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, but it does not have an adverse effect on the functions of the trade mark provided that a reasonable average consumer understands [as is likely to be the case nowadays, but might not have been in the early days of electronic marketplaces] on the basis of information included in the sponsored link that the operator of the electronic marketplace stores in his system advertisements or offers for sale of third parties.

(7) Where the goods offered for sale on the electronic marketplace have not yet been put on the market within the EEA by or with the consent of the trade mark proprietor, it is none the less sufficient for the exclusive right conferred by the national or Community trade mark to apply to show that the advertisement is targeted at consumers within the territory covered by the trade mark.

(8) If the use complained of by the trade mark proprietor consists of the display of the sign on the website of the operator of the electronic marketplace itself rather than in a sponsored link on the website of a search engine operator, the sign is not used by the operator of the electronic marketplace ‘in relation to’ the infringing goods within the meaning of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94.

(9)(a) The use referred to in point 5 does not consist of or include ‘the storage of information provided by a recipient of the service’ by the electronic marketplace operator within the meaning of Article 14(1) of Directive 2000/31 ... on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market, whereas the use referred to in point 6 may consist of or include such storage.

(9)(b) Where the use does not consist exclusively of activities falling within the scope of Article 14(1) of Directive 2000/31, but includes such activities, the operator of the electronic marketplace is exempted from liability to the extent that the use consists of such activities, but damages or other financial remedies may be granted pursuant to national law in respect of such use to the extent that it is not exempted from liability.

(9)(c) There is ‘actual knowledge’ of illegal activity or information or ‘awareness’ of facts or circumstances within the meaning of Article 14(1) of Directive 2000/31 where the operator of the electronic marketplace has knowledge that goods have been advertised, offered for sale and sold on its website in infringement of a registered trade mark, and that infringements of that registered trade mark are likely to continue regarding the same or similar goods by the same user of the website [there's an interesting point at stake here: is a person's knowledge actual if it relates to a likely but uncertain future event? If I now know that the rain which is currently falling is likely to be falling in an hour's time, do I have actual knowledge now of rain which may or may not fall then, or do I have actual knowledge only of a possibility or probability? And what did the legislature intend? And if I'm 60% likely to have actual knowledge of an event that is 60% likely to take place in the future, do I have actual knowledge of that event if it subsequently happens?] 

(10) Where the services of an intermediary such as an operator of a website have been used by a third party to infringe a registered trade mark, Article 11 of Directive 2004/48 ...on the enforcement of intellectual property rights requires Member States to ensure that the trade mark proprietor can obtain an effective, dissuasive and proportionate injunction against the intermediary to prevent continuation or repetition of that infringement by that third party [even if the identity of the third party infringer is unknown, the AG reminds us]. The conditions and procedures relating to such injunctions are defined in national law.

tytoc collie keenly awaits the court's ruling.

DHL v Chronopost: the Advocate General speaks, but not to some of us

Oh, the sheer excitement of it. When he got up this morning, tytoc collie washed behind his ears and prepared himself for another humdrum day of website-sniffing, quite forgetting that a whopping great story was just about to break around him. Yes, today's the day of Advocate General Cruz Villalón’s Opinion in Case C-235/09 DHL Express (France) SAS v Chronopost SA.  tytoc collie and some of his more learned readers have taken some interest in this French reference, as you can see if you click here, here and here.

To celebrate today's event -- and since the Opinion is available in only 10 of the EU's official languages -- the Court has issued a press release and this, for those who can't read the original, is what it says the Opinion's all about:

"Advocate General Cruz Villalón considers that an order of a competent national court prohibiting an infringer from continuing to use a registered Community trade mark has, in principle, effect throughout the entire area of the European Union

The domestic courts of the other Member States must recognise coercive measures which ensure compliance with the prohibition and enforce them in accordance with their national law

The Community trade mark regulation provides for a uniform intellectual property right effective throughout the entire area of the European Union and, for the purposes of protecting that right, establishes a two-tier system of specialised jurisdiction. On the one hand, the Office for Harmonisation in the Internal Market (OHIM), from whose decisions an appeal may lie to the General Court and, ultimately, the Court of Justice, decides disputes between private parties and the administration responsible for registering Community trade marks. On the other hand, the ‘Community trade mark courts’, a limited number of national courts of first and second instance designated by each Member State, decide disputes between private parties. In the context of that system, the national courts act as special courts of the European Union.

In accordance with the Regulation, where Community trade mark courts find infringement or threatened infringement of a Community trade mark, they are to issue an order prohibiting the infringer from proceeding with the acts which infringed or would infringe the Community trade mark. They may also take such measures in accordance with their national law as are aimed at ensuring that that prohibition is complied with.

Chronopost SA is the proprietor of the French and Community trade marks ‘WEBSHIPPING’ relating, in particular, to services for the collection and delivery of mail. After those marks had been registered, DHL Express (France) SAS used the same word to designate an express mail management service accessible principally via the internet. In 2007, the Tribunal de Grande Instance de Paris (Regional Court, Paris), acting as a Community trade mark court, declared that there had been trade-mark infringement, prohibited DHL from proceeding with the acts constituting the infringement, and imposed a periodic penalty payment on it, that is to say, a financial penalty should it fail to comply with the prohibition.

At last instance, DHL brought an appeal in cassation before the Cour de Cassation (Court of Cassation, France). Chronopost, for its part, lodged a cross-appeal contesting the fact that the effects of the prohibition and the periodic penalty payment had been limited to French territory. In that context, the Cour de Cassation made a reference to the Court of Justice for a preliminary ruling in order to ascertain, in essence, the territorial scope of the prohibition issued by a Community trade mark court and of the coercive measures adopted in order to ensure that that prohibition is complied with.

In his Opinion delivered today, Advocate General Cruz Villalón considers, first, that, in principle, a prohibition issued by a national court acting as a Community trade mark court has effect as a matter of law throughout the entire area of the European Union.

In that connection, the Advocate General recalls that the Regulation confers jurisdiction on the competent national court to declare that a trade mark has been infringed in one or more Member States, so that its proprietor may apply to a single court in order to bring the acts of infringement to an end in several Member States. The declaration of infringement relates to a trade mark granted by the European Union, whose judicial protection is entrusted to special national courts of the EU and therefore, in principle, the declaration has effect throughout the entire area of the EU. [The words "in principle" suggest a clawback in favour of "in practice" or "but on the specific facts" ...]

However, [... and here it comes] where the infringement or action for infringement is limited to a specific geographical or linguistic area, the court’s order is limited territorially [There's a big difference between 'infringement', which is geographically determined by the alleged infringer's business activity, or by his websites, and 'action for infringement', which is determined by the CTM proprietor]. It follows that, since the prohibition is the natural consequence of the declaration of infringement, the territorial scope of the prohibition corresponds, in principle, to the scope of the infringement. [The Kat doesn't think this is a natural consequence at all. Where the similarity of respective marks is based on aural and conceptual similarity in some countries of the EU, but not in others where different phonetic and semantic considerations apply, but the defendant's activity is pan-European, it can be argued that prohibition in a country where relevant consumers do not perceive any similarity and are not confused is anything but 'natural']

Second, the Advocate General considers that coercive measures have effect within the territory in which the declaration of infringement was made and the prohibition issued.[If we're talking about a single, monocultural territory this is not novel -- but by 'territory' is something wider meant?]

In fact, the quantification and enforcement of those measures take place at a later stage, when, if the prohibition has been infringed, the penalty is applied. The court which has imposed the periodic penalty payment will have jurisdiction as regards its quantification and enforcement only where the prohibition is infringed in the Member State of that court. By contrast, where the prohibition is infringed in another Member State, quantification and enforcement will be a matter for the court of that Member State.

However, in order to ensure that the prohibition is complied with, the court of the Member State in which the prohibition has been infringed is obliged to recognise the effects of the periodic penalty payment imposed by the Community trade mark court of the other Member State, in accordance with the rules on recognition laid down by the Brussels I Regulation.

At the same time, such measures must be adjusted to the specific features of each legal system. Thus, the court of the Member State in which the prohibition has been infringed, if its national law so permits, is simply to recognise the order and apply the periodic penalty payment to the specific case. By contrast, if its national law does not provide for such a measure, it must achieve enforcement in accordance with its own national provisions".

tytoc collie suspects that this Opinion will already have been seized by both war-camps in the battle over the issue of whether the use of a Community trade mark is 'genuine' if it takes place in only one Member State of the European Union.  However, he adds, we shouldn't rush to draw conclusions: we don't yet know what position the Court will take on this one.

Merpel says, so far as Community trade marks go, isn't WEBSHIPPING for "services for the collection and delivery of mail" pretty dire?