Walking fingers in Azerbaijan irrelevant to British action, rules judge

Sometimes, if you listen carefully, you can almost hear the sound of inflated expectations being deflated. Here is one such case.  There was only going to be one winner in the proceedings mentioned here, and it wasn't going to be any of the defendants: by name, Yell Ltd v Louis Giboin and others [2011] EWPCC 009, 4 April 2011, a decision of Judge Birss QC in the Patents County Court (PCC), England and Wales.

This logo was still accessible on
Sunday 10 April, here

In short, Yell was the registered proprietor of the YELLOW PAGES trade marks, one of which was a word mark and the other a device mark containing the words YELLOW PAGES.  These marks are well-known, both by the public and by unsuccessful litigants of various descriptions. The defendants' websites -- www.zagg.eu and www.transport-yellow-pages.com -- used the words "transport yellow pages" and a "walking fingers" device in a truck motif (right) in respect of an online directory of transport business and other services.

The defendants agreed that they had used Yell's trade marks but, they said, this was no problem: after all, their websites were not UK-based. Didn't the judge know that they were outside outside the court's jurisdiction?

Now that the PCC has its smart new set of teeth, Yell obviously hoped there would be someone, or something, to bite.  The company was not disappointed.  Even without its new cutting-edge rules, the PCC was well equipped to deal with this claim.  Judge Birss QC found that the average consumer of the defendants' services within the UK would regard their websites as being directed at them for (among other things) services which could be bought in the UK and which were being supplied in the UK.  Not only was there trade mark infringement under the Trade Marks Act 1994, sections 10(2) [similar marks and services plus a likelihood of confusion] and 10(3) [taking unfair advantage, without due cause of the reputation of YELLOW PAGES], but there was passing off too: while Yell's marks were undoubtedly associated with a paper directory service, the British public associated them with UK directory services in whatever form they were delivered --including online.

Says tytoc collie, an interesting diversion in this actions was caused by an attempt to raise the defence that the "walking fingers" had become generic, at least when used online. This brave attempt was based on US case law as well as on evidence submitted in respect of Australia and Azerbaijan. Thus

"Mr Giboin relied on a judgment of the United States' Court of Appeals for the Federal Circuit (the CAFC) dated 26th July 1995 in BellSouth Corporation v DataNational Corporation and others case 91-1461. The case was heard by Chief Judge Archer and Circuit Judges Rich and Mayer. BellSouth appealed from the decision of the Trade Mark Trial and Appeal Board of the United States PTO sustaining an opposition against their application to register a walking fingers logo as a design mark for classified telephone directories. The CAFC held that the "walking fingers" logo was a generic identifier of classified telephone directories in a (large) part of the USA.".

Alas for the defendants, both this submission and evidence that "walking fingers" online directories existed in Australia and Azerbaijan was fatally flawed by the fact that this dispute had to be determined in the UK, under British law and in relation to the mindset of the British consumer.

Merpel notes with interest that the word "numpty" appears in the judgment. As the judge explained:

"Yell also relied on the evidence of Luke Humble. He is a specialist in online marketing and website design. He is independent of Yell. He drew Yell's attention to the defendants' websites in the first place. The purpose of this evidence from Yell's point of view is that it submits Mr Humble was misled by the defendants' websites into associating them with Yell. ... Mr Giboin described him as a numpty. For those without the benefit of a Scottish education, a numpty is a derogatory expression referring to an ignorant stupid person. ...".

This is not actually the first time the n-word has been used in British litigation. It can be found, in the plural ("numpties") in Sheffield Wednesday Football Club Ltd and others v Hargreaves [2007] EWHC 2375 (QB), a Queen's Bench ruling of Richard Parkes QC, sitting as an additional High Court judge. Merpel observes that it is only necessary to explain the meaning of this word in County Court proceedings, since those engaged in High Court litigation, being better informed and probably able to converse with one another in Latin, are probably familiar with this term of art. Curiously, since the word is said to be Scottish, a search of the Scottish Courts database reveals no use of the n-word, either in its singular or plural form.

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

Innocent ... until politely requested to be guilty

tytoc collie has received various pokes and prompts to write something on the Innocent dispute, which has received some coverage in the British press.  Fortunately, before he could respond to any of them, his friend Fredericka Argent kindly delivered the following note, which pretty well says it all:

"The Daily Mail reports a story about Dawn Reid, a small business owner and vendor of a food supplement called ‘Innocent Vitamins’, who has been asked by Innocent Drinks, the international smoothie company part-owned by Coca Cola, to cease trading under that name. Mrs Reid’s food supplement, in the form of pills, is contained in a tub with the name ‘innocent vitamins’ in lower case letters, followed by the slogan ‘all goodness. no badness’. Since January, the food supplement has been sold for £6.99 per tub in Waitrose supermarkets, but it now faces being taken off the shelves. 

Mrs Reid has argued that the drinks and vitamins markets are separate and non-competing, but Innocent Drinks says that both their drinks and Mrs Reid’s pills are seen as health products and would therefore be competing goods. Innocent Drinks also argues that the lower case typeface of ‘innocent vitamins’, is written in too similar a style to its own logo: “innocent pure fruit smoothie”. The drinks company has claimed that these similarities have led to confusion among their consumers, but Mrs Reid claims that she has: “never had a buyer or customer who’s had any brand confusion.”

Interestingly, Marketing Week reports that Innocent Drinks’ lawyers wrote to Mrs Reid two weeks after they had applied for a Class 5 trade mark classification. Goods within Class 5 fall under the umbrella term ‘pharmaceuticals’, but include anything from antibiotics to hair care preparations and gluten free food. Also within Class 5 are vitamins, minerals and supplements. This makes one wonder whether Innocent Drinks’ fresh application caused them to scour the ‘Health’ aisle of supermarkets for goods which might be in competition with theirs. 

Objectively, Mrs Reid’s argument may seem like a fair observation, and it may even remind readers of another ‘David and Goliath’ battle in the infamous case of GOLDEN BALLS, the mark owned by Gus and Inez Bodur, who faced opposition in their application for a Community trade mark from Intra Presse, the French company which organises the ‘Ballon D’Or’ (Golden Ball), the European Footballer of the Year Award [on which see tytoc collie here and in earlier posts]. In that case, quite rightly, the Office for Harmonisation in the Internal Market (OHIM) ruled that the two marks were visually and phonetically different, not least due to the linguistic differences between them. This decision was followed by bullying tactics from the large French company, which proceeded to file a notice of appeal against the OHIM decision which was 600 pages long.  However, in battle of the two ‘innocents’, it looks like Innocent Drinks may be raising a fair complaint: 

First, the reality of the brands market is that commonplace words often become trade marks, for example through acquired distinctiveness. Some obvious examples of this would be ‘Apple’ for computers, ‘Orange’ for telecommunications and the prefix ‘easy’ when applied to certain services. 

Secondly, here it is not just simply the use of the word ‘Innocent’ that has stirred Innocent Drinks into action: comparing the get-up of the two products, there is little doubt that both the typeface as well as style of the Innocent Vitamins packaging are highly similar to those of Innocent Drinks. The unique selling point of Innocent smoothies has always been that they contain all natural ingredients with no added sugar and ‘no funny business’. This idea has been prevalent in the company’s advertising campaigns and slogans. Similarly, Innocent Vitamins is marketing itself as a healthy, sugar-free food supplement that contains ‘no badness’. As such, while Mrs Reid may not have realised it when branding her products, there is certainly a feeling here of a smaller product trying to take unfair advantage of the success of an earlier global product. This is especially so since both companies are in the business of health foods, even if they are likely to be stocked in separate aisles in the supermarket. 

Thirdly, Innocent Drinks appears to have acted quite reasonably here. Defending his position, Innocent Drinks co-founder Richard Reed says: “Using such a distinctive name in a similar category is not an appropriate thing for another company to do... We have given the company a way out by respectfully asking them to stop using the brand name, and doubt that most other companies would be so tolerant. We have to protect our brand.”

So, while any company that has links with the Coca Cola conglomerate is unlikely to be seen by the public as the ‘good guy’, it does appear that on balance, Innocent Drinks is well within its rights to act in the way that it has. 

In terms of legal action, for the moment it does not look as though this trade mark skirmish will turn into a battle: Mrs Reid has said that she wishes to seek an out-of-court settlement with Innocent Drinks, since she does not consider the link with them to be of any benefit to her. Advice to readers is therefore to watch the space in their local Waitrose ..."

tytoc collie hopes that the gently-gently approach of Innocent/Coca Cola will work and that it will encourage other big brand portfolio owners to tread equally gently.  He remembers, in his days as an IP kitten back in the 1970s, asking one of the in-house IP heads at Unilever why it was that, with such a large number of registered IP rights, their name, and the names of their brands, were so rarely featured in the published Law Reports.  He was told that the company's softly-softly approach -- sometimes even offering to contribute towards the cost of reprinting the other party's stationery -- paid for itself in terms of cost-effective dispute resolution and generated respect and even some goodwill from third parties.  Does this still happen, he wonders?

Rocky time for Rockwool

Building solutions manufacturer Kingspan Group plc has just won a trade mark and advertising dispute against Rockwool Limited. According to a press release from Wragge & Co., who acted for the victorious company, Mr Justice Kitchin, in the Chancery Division of the High Court (England and Wales) found that a series of Rockwool demonstrations and video recordings, which compared the fire performance of Kingspan and Rockwool products, was misleading and failed to comply with the Misleading and Comparative Advertising Directive. The judge also ruled that Rockwool took unfair advantage of Kingspan's trade marks, causing damage to its reputation, but dismissed Kingspan's malicious falsehood claim.

The judgment, [2011] EWHC 250 (Ch), has been posted on BAILII here and tytoc collie hasn't yet had the chance to read it (it's 251 paragraphs in length), The Kat will revert to this case when the opportunity occurs -- though a swift glance suggests that most of the judgment consists of a painstaking analysis of the facts, but not too much legal argument.

Rockwool here
Stone sheep here
Kingspan here
Kingspeech here
Kingspeach here

"All dough and no play ..."

Having reported very recently on one ultra-descriptive trade mark (NO ANIMALS WERE HARMED, in "King's Speech Suffers New Impediment", here), tytoc collie found himself facing another mark of the same species, which again secured a degree of success in terms of enforcement -- but here tytoc collie has more sympathy with the trade mark owner.

In the case in point, US-based toy giant Hasbro secured a notable victory last Friday in the High Court, England and Wales, in its trade mark infringement and passing off action against 123 Nährmittel and its UK supplier MAPS Toys.  At the heart of the dispute were the questions whether (i) the defendants' use of the words "play dough" on their YUMMY DOUGH, in the phrase "the edible play dough" product, infringed Hasbro's PLAY-DOH trade mark and (ii) whether PLAY-DOH was even validly registered or should in any event be revoked. Mr Justice Floyd gave judgment in favour of Hasbro, finding that the defendants did not act in accordance with honest practices in industrial and commercial matters.

This decision is not as yet available on BAILII, but he has been able to procure a copy of the 52-page judgment, the product of eight days in court and some careful thought on the part of the judge as to the manner in which he described and listed the considerations relevant to the fairness of the defendants' use.  Considering how descriptive the words "play dough" are, when taken as a term for a doughy product with which you play, crossing the line between a responsible, sensible descriptive use and one which seeks to gain some benefit from a registered trade mark which sounds much the same actually takes some going.  You can read the full text of the judgment here [nb this is a replacement link: the earlier version had the illustrations in black and white only, and careful readers would have detected the absence of a couple of pages].  Paragraph 228 lists the ten relevant considerations which led the judge to conclude that

"... the defendants proceeded on the basis that, in their opinion 'the edible play dough' was a descriptive term and that, accordingly, Hasbro would find it impossible to stop them, no matter what use they made of it. They did not consider whether making it part of the name of the product would have different implications. They did not consider it relevant to consider whether, to others, 'the edible play dough', in the particular context in which they were using it on their packaging and within the toy trade, would mean the Hasbro product, or amount to taking advantage of Hasbro's goodwill, and ignored warnings to that effect".

Edible play dough recipes here and here
Health hazards of play dough here
The constitutional role of play dough in the United States here

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************* ...

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.

Letter from AmeriKat: ACTA - its baaaa-aaack! (Part I)

The AmeriKat, like any busy city Kat, generally keeps her eyes to the pavement and her ears to her iPod during her day-to-day bustle. There are probably so many interesting performances happening around her - a street performer amusing a child, a beam of sunlight illuminating a beautiful building, a wonderful sunset seeping into the London skies (picture, left) - that she misses because she does not have time to stop and look. With technology meeting our demands more rapidly than ever before, be it ordering clothes for next day delivery or travelling thousands of miles in a matter of hours, we can become so invested only in reaching the result we can be quick to miss the journey. Although all this sounds as fluffy as the AmeriKat's long-haired coat, ignoring the journey is so easy to do even in the field of intellectual property law.

ACTA - Its here and ready, but are you?

The AmeriKat is the first to admit that she did not just absent-mindedly miss the journey of ACTA's first drafts to its nearly-final draft published last week - she chose to ignore the journey completely. ACTA (the Anti-Counterfeiting Trade Agreement) was originally meant to act only as a response to counterfeit physical goods, but following a November 2008 leak by the European Commission, it was discovered that ACTA would also include a section on enforcement of IP rights on-line. Interest in the Agreement was slow, which frustrated the AmeriKat and other keen IP watchers, but slowly with reports of secretive negotiations between powerful stakeholders and only some governments, curiosity began to grow. Last December, seeing the future on the horizon, Google entered the mix and arranged a conference regarding the US government's hush-hushed negotiations of the Agreement. As of two weeks ago, it was reported that the UK government had not even seen the current draft text of the agreement.

The AmeriKat was forwarded the consolidated draft last Friday and has had ample time to digest it for your reading pleasure. Before she delves into the text she must say that she whole-heartedly agrees that IP rights holders must have effective means of protecting their intellectual property rights and have tools for combating counterfeit goods. However, if the text of a potential agreement is poorly worded and agreed without full transparency or the involvement of all stakeholders, no matter if the desire is to protect the rights of rightsholders, these inherent failings will ultimately prejudice them as well. Legislation that is ambiguous, open for abuse by a party, or is too onerous on one party over another, will not necessarily have the effect of being a deterrent and may even spur further IP infringement in retaliation. If you make a group people mad enough by abusing the system and process, they will come back to bite you.

Section 2- Civil Enforcement

This section deals with the civil procedures, injunctions, damages, other remedies, disclosure and provisional measures for trade mark, copyright and related rights. Patents apparently do not fall within the scope of the section.

Paragraph 1 of the damages section provides that the judicial authorities in all circumstances

"shall have the authority to order the infringer who knowingly or with reasonable grounds to know, engaged in infringing activity of intellectual property rights, to pay the right holder damages adequate to compensate the injury the right holder has suffered as a result of the infringement...which may include the lost profits, the value of the infringed good or service, measured by the market price, the suggested retail price."

Paragraph 2 provides that the judicial authorities have the right to order the infringer to pay the profits to the right holder attributable to the infringement, which may be the same as the amount of damages referred to in paragraph 1.

In addition to this, paragraph 3, provides that for related-music IPR, copyright and trade mark counterfeiting each Party must establish a system that provides for one or more of the following:

"(a) pre-established damages, or

(b) presumptions for determining the amount of damages sufficient to compensate the right holder for the harm caused by the infringement, or

(c) at least for copyright, additional damages. "

Where (a), basically statutory damages, or (b), presumptions as to damages, is provided by a Party, the Party must ensure that the judicial authorities or the right holder has the right to choose such a remedy as an alternative to the remedies in paragraph 1.

Besides the interesting notion of statutory damages which is a favorite in US litigation as an alternative to presumptions, the presumptions itself are an interesting formulation. A footnote to the presumptions sentence states that a presumption may include:

"(i) the quantity of the goods infringing the right holder's intellectual property right in question and actually assigned to third persons, multiplied by the amount of profit per unit of goods, which would have been sold by the right holder if there had not been the act of infringement, or

(ii) a reasonably royalty or

(iii) a lump sum on the basis of elements such as at the least the amount of royalties or fees which would have been due if the infringer had requested authorization to use the intellectual property right in question"

This is nothing earth-shattering about this election. Many jurisdictions afford rightsholders the opportunity to elect how their damages are to be assessed, but what is interesting is that one can see the strong American influence in this negotiation by the presence of the statutory damages provision and the manner in which the presumptive damages are calculated.

Article 2.4 provides that judicial authorities shall have the authority upon the "justified request of the right holder" to order the infringer that relevant information regarding any person or persons involved in any aspect of the infringement" to provide relevant information including the identification of third persons involved in the infringement. .

Article 2.5 provides that judicial authorities shall have the authority to order prompt and effective provisional measures against a party or third party to prevent the infringement of IPRs and to preserve relevant evidence in relation to the alleged infringement. This therefore provides that judicial authorities have the authority to order interim injunctions and what is akin to the UK's Anton Piller order to prevent the destruction of evidence in cases "where any delay is likely to cause irreparable harm to the right holder."

All of this seems pretty straightforward, but it is paragraph 4 of Article 2.5 that causes the AmeriKat the most concern. It provides that:

"Each Party shall provide that its authorities have the authority to require the applicant, with respect to provisional measures, to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that applicants's right is being infringed or that infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse. Such security or equivalent assurance shall not unreasonably deter recourse to such procedures." (italics provided by AmeriKat)

Besides the usage of notoriously vague expressions of "reasonably available" and "sufficient degree of certainty" which by themselves are sufficiently woolly to induce a raised eyebrow, their usage in relation to incredibly powerful interim measures such as injunctions and search orders is more concerning. Further the last sentence of paragraph 4 states that such a security or assurance provided by the applicant to protect the defendant should not unreasonably deter an applicant's recourse to the procedures. This could be the AmeriKat reading this with "Doomsday" glasses on, but it appears to suggest that even where an applicant cannot provide a sufficient assurance, be it a cross-undertaking or a cross-undertaking backed up by a security to the court, this will not preclude the availability of a provisional order....eek! This analysis is of course premised on the assumption that an "equivalent assurance"could be a cross-undertaking as to damages to a court.

Paragraph 5 provides that were such a provisional measure is revoked or where there is subsequently no infringement of IPR, the judicial authorities shall have the authority upon the request of the defendant to provide the defendant appropriate compensation for any injury caused by these measures. This may go somewhere to addressing the last sentence of paragraph 4, but if an applicant is unable to make such an assurance to court in the first instance what makes it feasible that they would be able to do so after the order has been granted? And what does "unreasonably" mean anyway?

There may be arguments that this provision may help rights holders of lesser means obtain interim remedies, but the AmeriKat is little convinced by this argument. The stakeholders involved in the negotiations of ACTA were powerful stakeholders and rights holders, not small businesses. The AmeriKat may be cynical, but it seems unlikely that such a provision was mooted as a helping hand for smaller applicants. Further, the AmeriKat is concerned because interim measures such as injunctions and search orders that are great legal tools for an applicant, rightly or wrongly granted, are also incredibly burdensome on the respondent. To redress that balance the court asks that the applicant provide a cross-undertaking as to damages at the point of the order to redress the balance, which sometimes may require the provision of a security. The suggestion that such an assurance is not a always a necessary consideration where to provide one would "unreasonably deter recourse to such procedures" is a cause of concern and potential abuse. Of course, it is in a court's discretion if and as to how much they order an applicant to provide a cross-undertaking and/or security, but this woolly language makes the AmeriKat nervous.

Section 3 Border Measures

This section is a bit out of the AmeriKat's depth of understanding but she did notice another usage of the word "unreasonably". This time it was italicized and highlighted which means that some delegations during ACTA's negotiations expressed reservations on this part of the text. Article 2.X states that

"...for effective border enforcement of intellectual property rights, a Party should do so in a manner that does not discriminate unreasonably between intellectual property rights and that avoids the creation of barriers to legitimate trade."

The usage of the controversial word "unreasonably" seems to suggest that there will be instances where it is reasonable to discriminate between intellectual property rights and legitimate trade. Any readers care to proffer examples of when this would be?

Continued in Part II

Céline, c'est la vie -- mais ce n'est pas le fin

Céline, with the accent ...

In the dim and distant past, when dinosaurs ruled the world ... well, this may be a slight exaggeration but we're talking about September 2007, a long time ago in Kat's years, the Court of Justice of the European Communities (as it was then called) gave a fairly unspectacular ruling in Case C-17/06 Céline SARL v Céline SA. The court's ruling was prompted by a reference for a preliminary ruling from the Cour d'appel de Nancy, France and arose from a dispute between two businesses, each of which claimed an entitlement to the word Céline: the claimant, which had a registered trade mark CELINE, sought to prevent the defendant appropriating Céline as a company name and shop name. The Court ruled as follows:

""The unauthorised use by a third party of a company name, trade name or shop name which is identical to an earlier mark in connection with the marketing of goods which are identical to those in relation to which that mark was registered constitutes use which the proprietor of that mark is entitled to prevent in accordance with Article 5(1)(a) of ... Council Directive 89/104, where the use is in relation to goods in such a way as to affect or to be liable to affect the functions of the mark.

Should that be the case, Article 6(1)(a) [of the same Directive] can operate as a bar to such use being prevented only if the use by the third party of his company name or trade name is in accordance with honest practices in industrial or commercial matters".

Fast-forward to April 2010 and we have the ruling of the Cour d'appel de Nancy, helpfully summarised in volume 65, no.17 of the INTA Bulletin (released 1 October 2010).  This summary, by IP enthusiasts Franck Soutoul and Jean-Philippe Bresson of Inlex IP Expertise, reads in relevant part as follows (nb items such as this do not appear in the INTA Bulletin unless they have been independently verified, which makes them commendably reliable):

"The French court held that the functions of the earlier trademark had been affected. Evidence showed that labels with CELINE were affixed to the goods sold in the shop. The court said that, as the goods were identical and the trademark CELINE was well known, the public would wrongly conclude that all the goods had the same origin. This constituted trademark infringement under Article 5(1)(a) ...

However, when addressing the defense’s fair use arguments, the French court distinguished between the trade name and the shop name ... and the context behind the company name ....
Céline SARL had used CELINE as a trade name and as a shop name in good faith because the name was adopted two years after the registration of the plaintiff’s trademark and at a time when that trademark had no particular reputation.

However, the choice of CELINE as a company name in 1992 was regarded as resulting from bad faith, considering the success and reputation that Céline SA had then obtained both nationally and internationally under its trademark and given that Céline SA had, before the adoption, demanded that the other company not use CELINE as a company name.

While following the ECJ ruling, the decision of the French court was quite unusual in the end. The court ordered that Céline SARL stop “any” use of the name CELINE (including as a trade name or shop name). However, this position does not make sense given the finding that the trade name and shop name were adopted in good faith. This might be grounds for an appeal to the French High Court".

... and without

tytoc collie has observed that sometimes a court's judgment can make perfect sense in terms of the application of each of a set of rules to a set of facts, yet produce a result that can seem quite perplexing to traders or consumers.  On other occasions it may make a ruling which makes good sense to traders or consumers but appears to violate the text or purport of the laws.  We can't really decide whether our judiciary should serve a function which is (i) quasi-legislative in terms of how it shapes and develops statute law, (ii) purely interpretative or (iii) narrowly focused on giving words their literal meanings and applying them literally to the facts.  If one started with the facts of Céline and considered how best they should be resolved, rather than starting with the law and deciding on the outcome of its application to the Céline facts, would the two processes have a coterminous 'footprint'?

Merpel says, there's something very attractive and marketable about French forenames: Céline, Colette, Amélie, Capucine, Candide, Cher, Heloise, Michelle, Giselle, Babar ...