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 ...

Court upholds Dutch claim to Bavaria

Solving the name problem is
the easy bit: but how can I get
the top off the bottle?

Fancy a beer? You can ask for a 'Bavaria' and be sure of getting ... a brew of Dutch origins. The decision in Case C-120/08, Bavaria NV v  Bayerischer Brauerbund eV, a reference to the Court of Justice of the European Union for a preliminary from the German Bundesgerichtshof, was posted yesterday on the Curia website.

In short the Brauerbund, "a German association with the objective of protecting the common interests of Bavarian brewers", owns the registered collective trade marks ‘Genuine Bavarian Beer’ (since 1958), ‘Bayrisch Bier’ and ‘Bayerisches Bier’ (since 1968), and ‘Reinheitsgebot seit 1516 Bayrisches Bier’ (since 1985). Bavaria, a Dutch brewer which trades internationally, began using the word ‘Bavaria’ in 1925, this word being incorporated into its name in 1930. Bavaria owns several registered trade marks and figurative elements containing the word ‘Bavaria’. The registration dates include 1947, 1971, 1982, 1991, 1992 and 1995. Protection in Germany of some of those trade marks was refused in 1973, 1992 and 1993.

‘Bayerisches Bier’ (the German term for 'Bavarian beer') was covered by bilateral agreements on the protection of indications of provenance, designations of origin and other geographic names between Germany and the French Republic (1961), the Italian Republic (1963), the Hellenic Republic (1964), the Swiss Confederation (1967) and the Kingdom of Spain (1970) -- but not The Netherlands.

In September 1993 the Brauerbund, in agreement with two other Bavarian associations, submitted to the German Government an application for registration of a Protected Geographical Indication (PGI) under Article 17(1) of Regulation No 2081/92. In January 1994 the German Government informed the Commission of the application for registration of ‘Bayerisches Bier’ as a PGI in accordance with the simplified procedure under that provision.  Following some correspondence, the application was finalised in May 1997 but the final version of the specification wasn't sent to the Commission until March 2000.

The Brauerbund eventually applied to the Landgericht München for an order requiring Bavaria to agree to renounce the protection of its international trade mark, protected in Germany with priority from April 1995 and consisting of the word 'Bavaria'. That court's decision to allow this application was upheld on appeal by the Oberlandesgericht München.  Bavaria's appeal on a point of law to the Bundesgerichtshof was stayed, pending the reference to the Court of Justice of the following questions for a preliminary ruling:

‘1. Does Article 14(1) of Regulation … 510/2006 apply in the case where the protected indication has been validly registered in accordance with the simplified procedure under Article 17 of Regulation … No 2081/92 …?

2. (a) If the answer to Question 1 is in the affirmative, what date should be taken as the basis for determining the classification in time of the protected geographical indication for the purposes of Article 14(1) of Regulation … 510/2006?

(b) If the answer to Question 1 is in the negative, what provision governs the conflict between a geographical indication validly registered in accordance with the simplified procedure under Article 17 of Regulation … 2081/92 and a trade mark, and what determines the classification in time of the protected geographical indication?

3. May the national provisions on the protection of geographical designations be applied in the event that the indication “Bayerisches Bier” fulfils the conditions for registration under Regulation … 2081/92 and Regulation …  510/2006, but Regulation … 1347/2001 [which registered 'Bayerisches Bier' as a PGI] is invalid?’

This reference was itself stayed pending delivery of the judgment in Case C‑343/07 Bavaria and Bavaria Italia [in which the Court ruled that Bavaria could keep its Bavaria trade mark in Italy: see IPKat note here]. The Advocate General in this case then gave an Opinion which was fairly pro-Bavaria in its substance [see earlier IPKat note here].  But what would the Court itself say? Now we know:

"Article 14(1) of Council Regulation ... 2081/92 ... is applicable for resolving the conflict between a name validly registered as a protected geographical indication in accordance with the simplified procedure under Article 17 of that regulation and a trade mark corresponding to one of the situations referred to in Article 13 of that regulation relating to the same type of product, the application for registration of which was submitted both before the registration of that name and before the entry into force of Council Regulation ... 692/2003 ... amending Regulation ... 2081/92. The date of the entry into force of the registration of that name constitutes the reference date for the purposes of Article 14(1) of Regulation ... 2081/92.".

tytoc collie is delighted with this decision, which he considers to be entirely correct.

See reports in Deutsche Welle here, PR Newswire here

Singing the White Shark Grey Goods Blues ...

Great White Sharks can be pretty scary ...

From tytoc collie's Australian friends at Allens Arthur Robinson comes news of a recent decision that might appeal to his trade mark readers.  It's Sporte Leisure Pty Ltd v Paul's International Pty Ltd (No 3) [2010] FCA 1162, of 20 October 2010.  In this dispute Nicholas J, in the Federal Court of Australia, held that Paul's Retail infringed some 'Greg Norman' registered trade marks held by Great White Shark Enterprises (GWSE) -- even though the allegedly infringing merchandise was made by and bought from an authorised licensee.  Readers will instantly sense the problem here -- parallel importation.  The judge rejected Paul's Retail defence under section 123(1) of the Trade Marks Act 1995 (consent of the trade mark owner) because the licensee of the trade marks was not allowed to sell the goods it made outside the Union of India without consent and knew in advance that the goods made for Paul's Retail were to be sold outside India.

There are three key points to appreciate here:

1. According to the judge, when the registered owner of a trade mark consents to another person applying that mark to goods on condition that those goods must not be supplied outside a designated territory, the trade mark owner is not usually regarded as having consented to the application of the mark to goods which the other person knows, when the mark is applied, are to be supplied outside the territory. However, this a principle may be restricted to the specific facts of this case, because the evidence demonstrated that the licensee only made the goods after receiving a purchase order for them which was to be delivered outside the territory. It is not clear if the same conclusion would apply if the licensee was unaware of the destination of the goods or if the order was met from an existing stockpile.

2. In considering the authorities and concluding that the sole director of Paul's Retail, Paul Dwyer, was not liable for trade mark infringement as a joint tortfeasor, the Court considered that if a director is to be liable as a joint tortfeasor, something more than a finding that the director caused or directed his company to perform infringing acts is required. The extent of the director's personal involvement and his state of mind is important.  Whether the director held an honest belief that the acts which he directed or procured were not unlawful is also a significant (and, in this case, decisive) consideration.

3. Obiter, the court rejected Paul's Retail's submission that there is an onus on GWSE to show that the consent defence under section 123 of the Act does not apply. As a matter of construction, because section 123 of the Act creates an exception to infringement, the burden of proof lies on the person invoking the section.  However, in certain circumstances, it may take little for the evidential burden to shift to the registered owner.

... but tytoc collie is not
easily intimidated

So now you know.  Says tytoc collie, in the European Union -- where trade mark enforcement cannot be separated from principles of competition law and protection of the integrity of the single market -- the burden of proof of consent to marketing trade mark-protected goods is a complex issue. In Case C-244/00 Van Doren + Q GmbH v Lifestyle + Sportswear Handelsgesellschaft mbH [2003] ETMR 75, the Court of Justice of the European Communities (as it then was) fixed the burden of proof on the alleged infringer, unless that party could demonstrate that the effect of that burden was to enable the trade mark owner to partition the single market, in which case the burden would shift to the trade mark owner.  The Australians have spared themselves this horror, but there still seem to be some grey areas in grey area consent, as the comments on this decision show.

Great White Shark here
Great White Sharks here
Great White Shark recipe here
Three Little Fishes here [not-to-be-missed performance by Frankie Howerd]