Court of Justice of the European Union
PRESS RELEASE No 77/10
Luxembourg, 29 July 2010

Judgment in Case C-214/09 P

Anheuser-Busch Inc. v OHIM and Budĕjovický Budvar, národní podnik
Anheuser-Busch may not register the word ‘Budweiser’ as a Community trade mark for beer

Budějovický Budvar, which brought opposition proceedings against that registration, was not obliged to provide, automatically, proof of renewal of its earlier identical mark during the period set for submission of evidence in support of its opposition. In 1996, the American brewer Anheuser-Busch applied to OHIM (the Office for Harmonisation in the Internal Market) for registration of the word ‘Budweiser’ as a Community trade mark for beer and malted alcoholic and non-alcoholic beverages. The Czech brewery Budějovický Budvar brought opposition proceedings against such registration relying on its earlier international word mark BUDWEISER, protected in particular in Germany and Austria.Budějovický Budvar provided evidence showing its ownership of the earlier trade mark but the protection enjoyed by that mark expired during the period which OHIM had set for submission of evidence in support of the opposition. As OHIM had not requested during that period that Budějovický Budvar provide evidence of renewal of its earlier mark, the company submitted that evidence – on its own initiative – but at a later stage in the opposition proceedings.

OHIM rejected Anheuser-Busch’s application for a Community trade mark on the ground that the mark applied for was identical to Budějovický Budvar’s earlier mark. OHIM also found that the goods listed in Anheuser-Busch’s application were essentially identical to the goods ‘beer of any kind’ covered by the earlier mark. In view of the identity of the marks and the obvious similarities between the goods concerned, OHIM also upheld Budějovický Budvar’s opposition in relation to malted non-alcoholic beverages.

Anheuser-Busch brought an action before the General Court against the OHIM decision. In its judgment delivered in March 20091, the General Court upheld OHIM’s decision, finding that Budějovický Budvar already held the right in Germany and Austria to use the word ‘BUDWEISER’ commercially for beer. The General Court also held that the Czech brewery had not been obliged to produce, on its own initiative, evidence of renewal of its earlier mark during the period fixed by OHIM for the submission of evidence. Anheuser-Busch challenged the judgment before the Court of Justice, relying inter alia on the argument that, as the protection afforded to the earlier mark had expired before the end of the period fixed for the submission of evidence, Budějovický Budvar ought to have submitted evidence of the mark’s renewal within that period. The Court of Justice today finds that Budějovický Budvar was not obliged to provide, automatically, within that period evidence of renewal of its earlier mark even though the protection afforded by that mark expired between the date on which notice of opposition had been filed and the end of that period. In fact, Budějovický Budvar would have been obliged to submit such evidence only if OHIM had expressly requested it. OHIM did not, however, make such a request. Furthermore, the new rules relating to the production of evidence, which entered into force in 2005 and which now impose an express obligation on an opponent to produce proof of renewal of its earlier trade mark, may not be applied retroactively to the present case. The Court therefore finds that, as Budějovický Budvar was not required to prove renewal of its trade mark during the period set for the submission of evidence in support of its opposition, it could submit the renewal certificate for the mark after that period had expired.


BUD Budweis and České Budĕjovice

By judgment of 16 December 2008 of the Court of First Instance in Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06 (Budĕjovický Budvar v OHIM) it was held that OHIM made several errors by rejecting the opposition brought by Budĕjovický Budvar against Anheuser-Busch’s applications for registration. Between 1996 and 2000 the American brewing company Anheuser-Busch made applications to the Office for Harmonisation in the Internal Market (OHIM) for the registration as Community trade marks of the word sign BUD and a figurative sign containing the word ‘bud’ for a wide range of goods and services, including beer. The Czech brewing company Budĕjovický Budvar filed notices of opposition against registration of the Community trade marks, in respect of all of the goods covered by the application. In support of its opposition, the Czech company relied, inter alia, on the appellation of origin ‘bud’ registered previously for beer under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration and protected as such in France, and the appellation ‘bud’ protected under a treaty entered into by Austria and the former Czechoslovak Socialist Republic on the protection of indications of source, appellations of origin and other designations referring to the source of agricultural and industrial products, signed on 11 June 1976. OHIM rejected Budĕjovický Budvar’s opposition in its entirety on the ground that the sign BUD could not be deemed to be an appellation of origin, that the Czech company had not proved genuine use in trade of the appellation of origin ‘bud’ and that that appellation did not entitle Budĕjovický Budvar to prohibit use of the word ‘bud’ as a trade mark, in Austria or in France. In particular, OHIM considered that European consumers could not perceive the word ‘bud’ to be an abbreviation of the name of the Czech city České Budĕjovice, the German name of which is ‘Budweis’.

Budĕjovický Budvar brought actions before the Court of First Instance against the decisions rejecting its opposition, which observes, firstly, that OHIM must take account of earlier rights which are protected in the Member States, and cannot call into question how they are classified. Consequently, in so far as the protection granted in Austria and in France to the appellation ‘bud’ is valid under the national law of those States, OHIM is obliged to take account of the effects of that protection. Next, the Court of First Instance holds that, by having required Budĕjovický Budvar to prove a ‘genuine’ use of the appellations ‘bud’ and to do so on each of the territories where those appellations were protected, OHIM made an error of law. OHIM ought merely to have determined whether the signs concerned were used in the context of a commercial activity with a view to economic advantage, and not as a private matter, whatever the territory concerned by that use. Further, the Court of First Instance considers that the Czech company successfully proved that the appellations concerned are used in the course of trade. As regards OHIM’s assertion that Budĕjovický Budvar uses the sign BUD as a trade mark, the Court of First Instance observes that there is nothing to suggest that the expression ‘bud’, displayed on the goods concerned, refers to the commercial origin rather than to the geographical origin of the product. Lastly, the Court of First Instance holds that OHIM made an error by not taking into account all the relevant elements of fact and law to determine whether Austrian and French law gave Budĕjovický Budvar the right to prohibit use of a subsequent trade mark.On all of those grounds, the Court of First Instance annuls OHIM’s decisions.

Sourrce: Press release of the court of 16 December 2008



Israel joins the International Trademark System

Israel joined the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks with WIPO Director General Francis Gurry. The Madrid System will become operational in Israel on September 1, 2010. It trademark owners a cost-effective, user-friendly and streamlined mean of protecting and managing their trademark portfolio internationally.

Under the WIPO-administered Madrid System a trademark owner may protect a mark in up to 85 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.
If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office.  Thereafter, the international registration can be maintained and renewed through a single procedure.  Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

Trademarks are a key component of any successful business marketing strategy as they allow companies to identify, promote and license their goods or services in the marketplace and to distinguish them from those of their competitors, and cement customer loyalty. A trademark symbolizes the promise of a quality product and in today’s global and increasingly electronic marketplace, a trademark is often the only way for customers to identify a company’s products and services. Trademark protection hinders moves to “free ride” on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove devastating to a business.

Israel is the 85th member of the WIPO-administered international trademark system which is governed by two treaties, namely, the Madrid Agreement Concerning the International Registration of Marks (1891) and the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989).

Source: WIPO Press Release of  June 1, 2010 - PR/2010/644



WIPO Launches Global On-line Resource to Facilitate Access to IP Information

WIPO launched on June 1, 2010, WIPO GOLD, a free, on-line global intellectual property (IP) reference resource that provides quick and easy access to a broad collection of searchable IP data and tools relating to, for example, technology, brands, designs, statistics, WIPO standards, IP classification systems and IP laws and treaties.

WIPO is committed to narrowing the global knowledge gap by facilitating the free-flow of IP information globally, and by improving access to and use of IP information. For example, much of the technological information found in patent documents is not published elsewhere.

Powerful databases, such as WIPO’s PATENTSCOPE® search service, makes it possible to conduct, free-of-charge, high-quality searches of data relating to over 1.7 million international patent applications filed under the PCT, and patent data collections of a growing number of countries.

Source: Press release of WIPO  PR/2010/645 of June 2, 2010



Court of Justice of the European Union
PRESS RELEASE No 32/10
Luxembourg, 23 March 2010

Judgment in Joined Cases C-236/08 to C-238/08
Google France and Google Inc. et al. v Louis Vuitton Malletier et al.

Google has not infringed trade mark law by allowing advertisers to purchase keywords corresponding to their competitors’ trade marks
Advertisers themselves, however, cannot, by using such keywords, arrange for Google to display ads which do not allow internet users easily to establish from which undertaking the goods or services covered by the ad in question originate

Community law on trade marks (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) entitles proprietors of trade marks, subject to certain conditions, to prohibit third parties from using signs which are identical with, or similar to, their trade marks for goods or services equivalent to those for which those trade marks are registered.

Google operates an internet search engine. When an internet user performs a search on the basis of one or more key words, the search engine will display the sites which appear best to correspond to those key words, in decreasing order of relevance. These are referred to as the ‘natural’ results of the search.

In addition, Google offers a paid referencing service called ‘AdWords’. That service enables any economic operator, by means of the reservation of one or more keywords, to obtain the placing – in the event of a correspondence between one or more of those words and that/those entered as a request in the search engine by an internet user – of an advertising link to its site, accompanied by a commercial message. That advertising link appears under the heading ‘sponsored links’, which is displayed either on the right-hand side of the screen, to the right of the natural results, or on the upper part of the screen, above those results.

Vuitton, which is the proprietor of the Community trade mark ‘Vuitton’ and of the French national trade marks ‘Louis Vuitton’ and ‘LV’, Viaticum, which is the proprietor of the French trade marks ‘Bourse des Vols’, ‘Bourse des Voyages’ and ‘BDV’, and Mr Thonet, the proprietor of the French trade mark ‘Eurochallenges’, became aware that the entry, by internet users, of terms constituting those trade marks into Google’s search engine triggered the display, under the heading ‘sponsored links’, of links to sites offering imitation versions of Vuitton’s products and to sites of competitors of Viaticum and of the Centre national de recherche en relations humaines respectively. They therefore brought separate sets of proceedings against Google for declarations that it had infringed their trade marks.

The Cour de cassation (French Court of Cassation), ruling as a court of final instance in the sets of proceedings which the trade mark proprietors have brought against Google, has referred questions to the Court of Justice on whether it is lawful to use, as keywords in the context of an internet referencing service, signs which correspond to trade marks, where consent has not been given by the proprietors of those trade marks.

The use, in an internet referencing service, of keywords corresponding to other persons’ trade marks

The Court notes that, by purchasing the referencing service and selecting, as a keyword, a sign corresponding to another person’s trade mark, with the purpose of offering internet users an alternative to the goods or services of that proprietor, an advertiser uses that sign in relation to its goods or services. That is not the case, however, where a referencing service provider permits advertisers to select, as keywords, signs identical with trade marks, stores those signs and displays its clients’ ads on the basis of those keywords.

The Court states that the use, by a third party, of a sign which is identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider, however, allows its clients, namely the advertisers, to use signs which are identical with, or similar to, trade marks, but does not itself use those signs.

If a trade mark has been used as a keyword, the proprietor of that trade mark cannot, therefore, rely, as against Google, on the exclusive right which it derives from its mark. By contrast, it can invoke that right against those advertisers which, by means of a keyword corresponding to its mark, arrange for Google to display ads which make it impossible, or possible only with difficulty, for average internet users to establish from what undertaking the goods or services covered by the ad originate.

In such a situation – which is characterised by the fact that the ad in question appears immediately after the trade mark has been entered as a search term by the internet user concerned and is displayed at a point when the trade mark, in its capacity as a search term, is also displayed on the screen – the internet user may err as to the origin of the goods or services in question. The function of the trade mark, which is to guarantee to consumers the origin of goods or services (the trade mark’s ‘function of indicating origin’), is thus adversely affected.

It is for the national court to assess, on a case-by-case basis, whether the facts of the dispute before it point to an adverse effect, or a risk thereof, on the function of indicating origin.

With regard to the use, by internet advertisers, of a sign corresponding to another person’s trade mark as a keyword for purposes of the display of advertising messages, the Court also takes the view that that use is liable to have certain repercussions on the advertising use of that mark by its proprietor and on the latter’s commercial strategy. Those repercussions of third parties’ use of a sign identical with the trade mark do not of themselves, however, constitute an adverse effect on the ‘advertising function’ of the trade mark.

The liability of the referencing service provider

The Court has also been asked to rule on the liability of an operator such as Google in respect of the data of its clients which it stores on its server.
Questions of liability are governed by national law. European Union law, however, lays down restrictions on liability in favour of information society intermediary service providers (Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) (OJ 2000 L 178, p. 1).

With regard to the question whether an internet referencing service, such as ‘AdWords’, is an information society service consisting in the storage of information supplied by advertisers and whether, on that ground, the liability of the referencing service provider may be limited, the Court rules that it is for the referring court to examine whether the role played by that service provider is neutral, in the sense that its conduct is merely technical, automatic and passive, pointing to a lack of knowledge of, or control over, the data which it stores.

If it proves to be the case that it has not played an active role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.



Court of Justice of the European Union
PRESS RELEASE No 38/10
Luxembourg, 22 April 2010
Judgment in Case C-62/09

Association of the British Pharmaceutical Industry v Medicines and Healthcare Products Regulatory Agency

Public authorities may offer financial incentives to induce doctors to prescribe cheaper medicinal products
However, those authorities are required, first, to ensure that the incentive scheme is based on non-discriminatory objective criteria and, second, to make public, inter alia, the therapeutic evaluations relating to the scheme

The directive relating to medicinal products for human use ( Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (OJ 2001 L 311, p. 67), as amended by Directive 2004/27/EC of the European Parliament and of the Council of 31 March 2004 (OJ 2004 L 136, p. 34) prohibits, where medicinal products are being promoted to doctors or pharmacists, pecuniary advantages or benefits in kind from being supplied, offered or promised to such persons.

To reduce public expenditure on medicinal products, the national public health authorities in England and Wales introduced schemes providing doctors with financial incentives to prescribe to their patients medicinal products cheaper than other medicinal products in the same therapeutic class. However, choosing cheaper medicinal products with a different active substance might, in certain cases, have adverse consequences for the patient. The prescription of statins, which are cholesterol reducing substances, is primarily at issue in this case.

The High Court of Justice of England and Wales has asked the Court of Justice whether the prohibition on financial incentives in the directive precludes the system applied in England and Wales.
In today’s judgment, the Court finds that the prohibition in the directive concerns primarily the promotional activities carried out by the pharmaceutical industry and seeks to prevent promotional practices which may induce doctors to act in accordance with their economic interests when prescribing medicinal products.

By contrast, that prohibition does not apply to national public health authorities which, themselves, have competence for ensuring that the directive is applied for defining and to define the priorities for action in relation to public health policy, in particular so far as concerns the rationalisation of the public expenditure allocated to that policy.

In that regard, the Court notes that the health policy defined by a Member State and the public expenditure in that field do not pursue any profit-making or commercial aim. Therefore, the financial incentive scheme examined, which forms part of such a policy, cannot be regarded as seeking the promotion of commercial promotion of medicinal products. In addition, as regards that scheme, no danger to public health can be established in so far as the therapeutic value of the medicinal products favoured is constantly reviewed by the public authorities.

In those circumstances, it is permissible for those authorities to determine, on the basis of evaluations of the therapeutic qualities of the medicinal products by reference to their cost for the public budget, whether certain medicinal products containing a given active substance are, from the point of view of public finances, preferable to other medicinal products containing a different active substance, but falling within the same therapeutic class.

The Court points out, none the less, that the public authorities are required to make available to professionals in the pharmaceutical industry information showing that the scheme at issue is based on objective criteria and that there is no discrimination between national medicinal products and those from other Member States. In addition, those authorities must make such a scheme public and make available to those professionals the evaluations establishing the therapeutic equivalence of the active substances available belonging to the same therapeutic class covered by the scheme.
In the light of all the above findings, the Court holds that the financial incentive system examined is compatible with the directive and that, furthermore, it does not prejudice the objectivity of prescribing doctors.



Court of Justice of the European Union
PRESS RELEASE No 34/10
Luxembourg, 15 April 2010

Judgment in Case C-518/08   Fundación Gala-Salvador Dalí and Visual Entidad de Gestión de Artistas Plásticos (VEGAP) v Société des auteurs dans les arts graphiques et plastiques (ADAGP) and Others

Member States can determine the categories of persons capable of benefiting from the resale right after the death of the author of a work of art  However, in the present case, it is for the referring court to take account of all the relevant rules for determining the national law which governs the succession of Salvador Dalí’s resale right and, therefore, the actual successor to that right ( Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art (OJ 2001 L 272, p. 32) establishes an obligatory resale right for the benefit of an author of a work of art and, after his death, for the benefit of those entitled under him. The resale right is an intellectual property right which allows the author, and those entitled under him, to receive a royalty based on the sale price obtained for any resale of one of his works subsequent to its first transfer. That right benefits the author throughout his life and, thereafter, those entitled under him for 70 years after his death.

The French legislation limits the beneficiaries of that resale right after the death of the artist to his heirs and excludes all legatees. The artist cannot therefore bequeath that right by will. The painter Salvador Dalí died on 23 January 1989 in Spain, leaving five heirs at law, who were family members. In addition, by his will, Salvador Dalí established the Spanish State as sole legatee over his intellectual property rights. Those rights are administered by the Fundación Gala-Salvador Dalí, a foundation established under Spanish law, created in 1983 at the initiative of the painter himself.

In 1997 the Fundación Gala-Salvador Dalí granted to VEGAP, a Spanish society, an exclusive worldwide mandate to manage collectively and exercise copyright over the works of Salvador Dalí. VEGAP has, in addition, a contract with its French counterpart, ADAGP, which is responsible for the management of Salvador Dalí’s copyright in France. Since then, ADAGP has collected amounts in respect of the exploitation of Salvador Dalí’s works, which were transferred by VEGAP to the Fundación Gala Salvador Dalí, with the exception of those in respect of the resale right. Pursuant to French legislation, ADAGP paid the amounts in respect of the resale right directly to Salvador Dalí’s heirs.

Taking the view that, under Salvador Dalí’s will and Spanish law, the royalties levied upon sales at auction of the artist’s works in France should be paid to it, the Fundación Gala-Salvador Dalí and VEGAP summonsed ADAGP before the Tribunale de Grande Instance de Paris (Paris Regional Court) for payment of those royalties. In the course of those proceedings, the French court referred to the Court of Justice the question whether Directive 2001/84 precludes a provision of national law which reserves the benefit of the resale right solely to the artist’s heirs, to the exclusion of testamentary legatees.

In today’s judgment, the Court considers that, in the light of the objectives pursued by Directive 2001/84, Member States may make their own legislative choice in determining the categories of persons capable of benefiting from the resale right after the death of the author of a work of art. In that regard, the Court recalls that the adoption of Directive 2001/84 is based on two objectives. First, it seeks to ensure that authors of graphic and plastic works of art share in the economic success of their works. Second, the directive seeks to put an end to distortions of competition on the market in art inasmuch as the payment of a royalty in certain Member States might lead to displacement of sales of works of art into those Member States where the resale right is not applied.

As regards the first objective, which seeks to ensure a certain level of remuneration for artists, the Court finds that the attainment of that objective is in no way compromised by the transfer of the resale right to certain categories of persons to the exclusion of others after the death of the artist. As regards the second objective, the Court states that the European Union legislature sought to resolve a situation in which sales of works of art were concentrated in Member States in which the resale right was not applied, or where it was at a lower rate than that in force in other Member States, to the detriment of auction houses or art dealers based in the territory of the latter Member States.

Thus, while it was considered indispensable to provide for harmonisation concerning works of art and sales affected by the resale right as well as the basis for and rate of the royalty, the Court considers that the harmonisation brought about by that directive is limited to those domestic provisions that have the most direct impact on the functioning of the internal market. Therefore, there is no need to eliminate differences between national laws which cannot be expected to affect the functioning of the internal market, including legislation which determines the categories of persons capable of benefiting from the resale right after the death of the author of a work of art.

Moreover, the Court considers that that analysis is reinforced by the fact that, while the European Union legislature wanted those entitled under the author to benefit fully from the resale right after the death of that author, it nevertheless left to each Member State, in accordance with the principle of subsidiarity, the task of defining the persons capable of being categorised as those entitled under their national law. That being so, the Court explains however that it is for the referring court to take due account of all the relevant rules for the resolution of conflicts of laws of succession in order to determine which national law governs the succession of Salvador Dalí’s resale right and, therefore, who is the actual successor to that right under that national law.


General Court of the European Union
PRESS RELEASE No 31/10
Luxembourg, 18 March 2010
Press and Information
Judgment in Case T-9/07
Grupo Promer Mon Graphic SA v OHIM – Pepsico Inc

The General Court delivers its first judgment on the Community design

It annulled OHIM’s decision to dismiss the application for a declaration of invalidity against PepsiCo’s design for the shape of a ‘rapper’

The Community design was created by the Community (Council) Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), which defines the Community design as ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.’ Designs which are novel and have individual character may be protected. The proprietor of a design may prevent any third party not having his consent from using it. The scope of that protection covers any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design must be taken into consideration. A Community design may be declared invalid if, among other reasons, it is in conflict with a prior design.

On 9 September 2003, PepsiCo filed an application for registration of a Community design at OHIM, the Community trade mark office which is also responsible for registering Community designs, for the shape of a ‘rapper’ (a small, flat or slightly curved disc on which colour images can be printed). The Community design was registered for ‘promotional item[s] for games’. In February 2004, Grupo Promer Mon Graphic, a Spanish marketing and promotion company, filed an application for a declaration of invalidity against that design. In support of that application, the company relied on the existence of a prior right: a Community design, filed on 17 July 2003, for ‘metal plate[s] for games’.

OHIM dismissed the application for a declaration of invalidity, holding that the goods covered by the designs at issue concerned a particular category of promotional items, namely ‘rappers’ or ‘tazos’ (the Spanish name for ‘rappers’), and that, therefore, the freedom of the designer of those promotional items was severely restricted. Accordingly, the Board of Appeal concluded that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user.

Grupo Promer Mon Graphic claimed that the Court should annul that decision.

The Court considers that a Community design is in conflict with a prior design when, taking into consideration the freedom of the designer in developing the Community design, that design does not produce on the informed user a different overall impression from that produced by the prior design relied on.
In this case, the Court finds that OHIM properly found that the product in question belonged, within the broad category of promotional items for games, to the particular category of game pieces known as ‘pogs’, ‘rappers’ or ‘tazos’.

Similarly, OHIM was correct to find that the informed user could be a child in the approximate age range of 5 to 10 or a marketing manager in a company that makes goods which are promoted by giving away ‘pogs’, ‘rappers’ or ‘tazos’, the important point being that both those categories of person are familiar with the phenomenon of ‘rappers’.
OHIM was also correct to find that the designer’s freedom was severely restricted since he had to incorporate the common features of ‘rappers’ in his design. Moreover, the designer’s freedom was also limited in so far as those items had to be inexpensive, safe for children and fit to be added to the products which they promote.
By contrast, OHIM erred in finding that the two designs produce a different overall impression on the informed user. The Court considers that some of the similarities between the two designs were not the result of a restriction of the designer’s freedom. In particular, the central part did not have to be delineated by a circle; this could also have been done by a triangle, a hexagon or an oval. In addition, the designs are similar in that the rounded edge of the disc is raised in relation to the intermediate area of the disc between the edge and the raised central area, and the respective dimensions of the raised central part and the intermediate area of the disc, between the edge and the raised central part, are also similar.

Consequently, the Court annulled OHIM’s decision to dismiss the application for a declaration of invalidity.



Global Financial Crisis Hits International Trademark Filings in 2009

Source WIPO Pressrelease
Geneva, March 18, 2010
PR/2010/634

International trademark filings under WIPO’s Madrid System for the International Registration of Marks (“the Madrid system”) dropped by 16% in 2009 as a result of the global economic downturn, though increases were observed among some major users of the system, notably the European Union (EU) (3.1%) and Japan (2.7%), as well as in the Republic of Korea (ROK) (+33.9%), Singapore (+20.5%), Croatia (+17.5%) and Hungary (+14.5%).

WIPO received 35,195 international applications under the 84-member Madrid system compared to 42,075 in 2008.  Similarly, international trademark registrations were down 12% on 2008 with a total 35,925 international registrations in 2009.  Trademark registrations reflect the introduction of new products and services to the market and are sensitive to business cycles.  The comparatively smaller decrease (-1.2%) in the renewal of international trademark registrations, compared to 2008, reflects the value of established brands at a time when consumers opt for goods that are tried and trusted.  In 2009, 19,234 international trademark renewals were recorded.

“International trademark filings took a hit in 2009,” said WIPO Director General Francis Gurry, “this is not surprising given the difficult financial conditions and restrained consumer demand facing companies around the world.  While trademark protection is sound business practice in good times and bad, companies are more cautious about bringing new products to market when economic uncertainty is high.  That said, trademarks and the brands they underpin play a key role in value creation and provide the basis for business expansion when the economy recovers.”

Mr. Gurry noted “Historically, we know that demand for intellectual property rights declines in periods of recession.  These downturns are more strongly and rapidly felt in the area of trademarks which are more closely tied to market conditions.  Demand for intellectual property rights, however, had reached unprecedented levels prior to the crisis and we have every reason to believe that international trademark activity will pick up as economic growth solidifies and broadens.”


Regional and National Filing Trends

The EU accounted for over half of the international applications received – some 21,824 - in 2009.  This includes international applications filed through national trademark offices of the countries concerned and those filed through the Office of Harmonization for the Internal Market (OHIM) – applicants from the EU may opt to file through their national office or through OHIM.  Some 3,710 international applications were filed through OHIM in 2009 representing a 3.1% increase on figures for 2008.

Marked declines in the filing of international trademark applications were evident in a number of countries in 2009, including the Czech Republic (-34.6%), Sweden (-34%), Italy (‑32.2%), Spain (‑29.9%), Denmark (-27.1%), Benelux (-26.2%), and Germany (-22.9%). Significant decreases were also recorded in international applications received from France (-16.5%), Austria (-15.7%), China (‑14.3%), the United Kingdom (-13.3%), the United States of America (USA) (-13.1%) and the Russian Federation (-10.3%). 

However, the filing of international trademark applications rose in a number of countries in 2009 including the EU with a 3.1% increase and Japan with a 2.7% increase.  Significant increases were also recorded by the Republic of Korea (+33.9%), Singapore (+20.5%), Croatia (+17.5%) and Hungary (+14.5%).

Among major users, applicants in Germany filed 4,793 international applications, representing 13.6% of the total down 22.9% on 2008.  OHIM ranked second with 3,710 international applications reflecting a 3.1% increase on 2008 figures.  Applicants in France accounted for 3,523 international applications, representing 10.5% of the total and a decrease of 16.5% compared to 2008.  Businesses in the USA filed the fourth largest number of applications, with 3,201 applications or 9.1% of the total and a 13.1 % decrease compared to 2008.  Switzerland held its 5th ranking with 2,671 international applications, and a decrease of 7.4 %, followed by the Benelux countries (Belgium, Luxembourg and the Netherlands) with 1,968 international applications representing a decrease of 26.2% compared to 2008.

In 2009, the EU moved up two places to become the second largest user of the Madrid system.  Norway moved from 21st to 19th position, the ROK moved from 30th to 23rd position, Hungary from 27th to 25th position, and Singapore from 33rd to 28th position.

Developing countries accounted for 1,973 filings representing 5.6% of the total.  Within this category, the highest growth rates were seen in the ROK with a 33.9% increase, and Singapore with a 20.5% growth rate.

Top Holders and Top Applicants

With 136 international trademark applications, Novartis (Switzerland) was the largest filer in 2009 followed by Lidl (Germany), Henkel (Germany), Zhejiang Medicine Company (China), Shimano (Japan), KRKA (Slovenia), Richter Gedeon (Hungary), L’Oréal (France), BSH Bosch und Siemens (Germany), Egis Gyógyszergyár (Hungary), Pfizer (Switzerland), Janssen Pharmaceutica (Belgium), Bayer (Germany), Glaxo Group (UK), Boehringer Ingelheim (Germany), Nestlé (Switzerland), Sanofi Aventis (France), Callaway Golf Company (USA) and Siemens (Germany).

In May 2009, the number of international trademark registrations topped one million when Austrian “eco” company Grüne Erde, which specializes in natural wood, textile and cosmetic products, registered its mark. 

Henkel (Germany), with a total of 2,815, holds the largest number of international trademark registrations under the Madrid system.  The top twenty holders by the end of 2009 were: Henkel (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium), l’Oréal (France), Nestlé (Switzerland), Unilever (Netherlands), ITM Enterprises (France), BASF (Germany), Sanofi-Aventis (France), Siemens (Germany), Lidl (Germany), Bayer (Germany), Biofarma (France), Boehringer Ingelheim (Germany), Richter Gedeon (Hungary), Syngenta (Switzerland), Philips (Netherlands), Ecolab (Germany), Merck (Germany), Hofer  (Austria) and Deutsche Telekom (Germany).


Top Designated Countries

Madrid Union members were notified of 303,344 new designations (contained in new registrations or territorial extensions) in 2009, representing a 20% decrease compared to 2008 again reflecting the generally flat global economic conditions.  When submitting an international trademark application, applicants must designate those member states in which they want their mark to be protected.  Applicants can also extend the effects of an international registration to other members at a later date by filing a subsequent designation.  In this way, the holder of an international registration can expand the geographical scope of the protection of a mark in line with evolving business needs.

The top six in the ranking of most designated member states remained unchanged.  China (with 14,766 designations) continues to be the most designated country, followed by the Russian Federation, USA, Switzerland, the European Union and Japan.

The number of designations fell in all designated contracting parties, although a number of countries moved up the list of 40 most designated contracting parties.  For example, Viet Nam moved from 24th to 21st position, Bosnia and Herzegovina from 33rd to 26th position, Azerbaijan from 36th to 32nd position, Georgia (from 35th to 33rd position) and Albania (from 40th to 35th position).  Two countries entered the top 40 most designated countries in 2009, namely, Iran (37th) and Egypt (39th).


Profile and Costs of Registrations Recorded in 2009

In 2009, on average, about seven Madrid Union members were designated per registration by applicants seeking international trademark protection under the Madrid system. More than half (62%) of these registrations sought protection in five or less export markets.

In submitting a trademark application, an applicant has to specify the goods or services to which the trademark will be applied in accordance with an international classification system known as the “Nice Classification”.  The most popular classes of goods and services in international trademark registrations recorded in 2009 were Class 9 (covering, for example, computer hardware and software) representing 8.3% of the total, Class 35 (covering services such as office functions, advertising and business management) which represented 7.1% of the total, Class 42 (covering services provided by for example, scientific, industrial or technological engineers and computer specialists) which represented 5.6% of the total;  Class 5 (covering mainly pharmaceuticals and other preparations for medical purposes), Class 25 (covering clothing, footwear and headgear) and Class 41 (covering services in the area of education, training, entertainment, sporting and cultural activities) each represented 4.7% of the total.

In 2009, applicants paid on average 3,408 Swiss francs for an international registration; for 57% of registrations the fees paid were less than 3,000 Swiss francs.

The Madrid system allows for the central administration of an international trademark portfolio, as it provides for procedures which enable trademark holders to record modifications to international registrations (for example, changes of ownership, changes in name or address of the holder or changes in the appointment of the representative of the holder) through the submission of a single request to WIPO.  Modifications recorded in 2009 totaled 90,136 representing a 1.3% decrease over 2008.


Active International Registrations

Over half a million (515,562) international registrations were active in the International Register at the end of 2009, containing some 5.6 million active designations and representing a 2.4% increase relative to 2008.  These registrations belong to 169,939 right holders who are mostly small and medium-sized enterprises.

Membership of the Madrid System

The total number of member states of the Madrid system (governed by the Madrid Agreement (1891) and the Madrid Protocol (1989)) remains 84. After the ratification of the Madrid Protocol by Egypt, and the accession to the Protocol by Liberia and Sudan, the number of contracting parties of the Protocol has risen to 81.  This means that now only three countries are bound by the Madrid Agreement only.  An expanding membership and an ever wider geographical spread of the system make it a more attractive option for businesses operating in international markets.

Of the total number of international applications filed in 2009, 35.7% were transmitted to WIPO electronically;  the transmitting trademark offices were those of Australia, Benelux, EU, Republic of Korea, Switzerland and the USA.

Background

The WIPO-administered Madrid System for the International Registration of Marks offers a trademark owner the possibility of having a mark protected in up to 84 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).  Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.  If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office.  Thereafter, the international registration can be maintained and renewed through a single procedure.  Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.

The first international trademark registration dates from 1893 and belonged at that time to Swiss chocolate producer Russ Suchard et Cie, but is no longer in effect.  The oldest international trademark registration which is still in effect as a result of multiple renewals, belongs to Swiss watchmaker Longines. This trademark was also first registered in 1893.   The international register is located at WIPO’s Geneva headquarters.

Trademarks are a key component of any successful business marketing strategy as they allow companies to identify, promote and license their goods or services in the marketplace and to distinguish them from those of their competitors, and cement customer loyalty. A trademark symbolizes the promise of a quality product and in today’s global and increasingly electronic marketplace, a trademark is often the only way for customers to identify a company’s products and services. Trademark protection hinders moves to “free ride” on the goodwill of a company by using similar distinctive signs to market inferior or similar products or services. Loss, dilution or infringement of a high-value trademark could prove devastating to a business.



Court of Justice of the European Union

Judgment in Case C-386/08 Brita GmbH v Hauptzollamt Hamburg-Hafen

Products originating in the West Bank do not qualify for preferential customs treatment under the EC-Israel Agreement

The assertion made by the Israeli authorities that products manufactured in the occupied territories qualify for the preferential treatment granted for Israeli goods is not binding upon the customs authorities of the European Union.

The European Community concluded two Euro-Mediterranean Association Agreements with Israel (1) and with the Palestinian Liberation Organisation (2) acting for the benefit of the Palestinian Authority of the West Bank and the Gaza Strip. Those agreements provide inter alia that the importation into the European Union of industrial products originating in Israel or the Palestinian territories is to be exempt from customs duties and that the competent authorities of the parties are to cooperate with a view to determining the precise origin of the products receiving preferential treatment.

Brita is a German company which imports drink-makers for sparkling water, as well as accessories and syrups, all of which are produced by an Israeli supplier, Soda-Club Ltd, at a manufacturing site at Mishor Adumin in the West Bank, to the east of Jerusalem. Brita sought to import goods supplied by Soda-Club into Germany. It informed the German customs authorities that the goods originated in Israel and, on that basis, it hoped to be granted the preferential treatment provided for under the EC-Israel Agreement. Suspecting that the products originated in the occupied territories, the German authorities asked the Israeli customs authorities to confirm that the products had not been manufactured in those territories. Although the Israeli authorities confirmed that the goods in question originated in an area that is under their responsibility, they did not reply to the question whether the goods had been manufactured in the occupied territories. For that reason, the German authorities refused in the end to grant Brita the preferential treatment, on the ground that it could not be established conclusively that the imported goods fell within the scope of the EC-Israel Agreement.

Brita contested that decision before the courts and the Finanzgericht Hamburg (Finance Court, Hamburg) asked the Court of Justice whether the preferential treatment provided for under the EC-Israel Agreement may be granted in respect of goods which have been manufactured in the occupied Palestinian territories and which the Israeli authorities have confirmed as being of Israeli origin.

In the judgment, the Court holds that each of the two association agreements has its own territorial scope: the EC-Israel Agreement applies to the territory of the State of Israel, whereas the EC-PLO Agreement applies to the territory of the West Bank and the Gaza Strip. The Court points out that, under general international law, an obligation cannot be imposed upon a third party – such as the Palestinian Authority of the West Bank and the Gaza Strip – without its consent. As a consequence, the EC-Israel Agreement may not be interpreted in such a way as to compel the Palestinian Authorities to waive their right to exercise the competence conferred upon them by virtue of the EC-PLO Agreement and, in particular, to refrain from exercising the right to issue customs documents providing proof of origin for goods manufactured in the West Bank and the Gaza Strip. In those circumstances, the Court holds that products originating in the West Bank do not fall within the territorial scope of the EC-Israel Agreement and do not therefore qualify for preferential treatment under that agreement. It follows that the German customs authorities could refuse to grant, in respect of the goods at issue, preferential treatment as provided for in that agreement, on the ground that those goods originated in the West Bank.

The Court also rejects the argument that preferential treatment ought, in any event, to be granted to Israeli manufacturers based in the occupied territories, whether under the EC-Israel Agreement or under the EC-PLO Agreement. The Court states that goods certified by the Israeli authorities as originating in Israel can receive preferential treatment only under the EC-Israel Agreement, and provided that they have been manufactured in Israel. As regards the assertion made by the Israeli authorities that the goods in question originated in Israel, the Court points out that the origin of products is determined by the authorities of the exporting State. In fact, the authorities of the exporting State are those best placed to verify directly the facts which determine origin. Accordingly, in cases of subsequent verification by the customs authorities of the exporting State, the customs authorities of the importing State are generally bound by the results of that verification.

However, in the present case, the subsequent verification did not concern the question whether the imported products were wholly obtained in a certain location or whether they had undergone sufficient working and processing there for them to be considered to be products originating in that location. The aim of the subsequent verification was to establish the precise place of manufacture of the imported products, for the purposes of determining whether those products fell within the territorial scope of the EC-Israel Agreement. The European Union takes the view that products obtained in locations which have been placed under Israeli administration since 1967 do not qualify for the preferential treatment provided for under that agreement. As it is, despite a specific request from the German authorities, the Israeli authorities did not reply to the question whether the products had been manufactured in Israeli-occupied settlements in Palestinian territory. The Court notes in this respect that, under the EC-Israel Agreement, the Israeli authorities are obliged to provide sufficient information to enable the real origin of products to be determined. Given that the Israeli authorities failed to fulfil that obligation, the assertion made by those authorities that the products at issue qualify for the preferential treatment reserved for Israeli goods is not binding upon the German customs authorities.

(1) Euro-Mediterranean Agreement establishing an association between the European Communities and their Member States, of the one part, and the State of Israel, of the other part, signed in Brussels on 20 November 1995 (OJ 2000 L 147, p. 3).
(2) Euro-Mediterranean Interim Association Agreement on trade and cooperation between the European Community, of the one part, and the Palestine Liberation Organisation (PLO) for the benefit of the Palestinian Authority of the West Bank and the Gaza Strip, of the other part, signed in Brussels on 24 February 1997 (OJ 1997 L 187, p. 3).

Source: PRESS RELEASE No 14/10 - Luxembourg, 25 February 2010


Court of Justice of the European Union
PRESS RELEASE No 07/10
Luxembourg, 21 January 2010

Judgment in Case C-546/07 Commission v Germany

Germany has infringed Community law by restricting to its own undertakings alone the possibility of entering into contracts with Polish undertakings in respect of work to be carried out within its territory
Such a restriction is discriminatory and cannot be justified

In order to address serious disturbances on its labour market, Germany may, in accordance with the 2003 Act of Accession1, after notifying the Commission, limit, in the context of the provision of services, the movement of workers posted by companies established in Poland. This restriction may be maintained so long as Germany applies national measures or measures resulting from bilateral agreements to the free movement of Polish workers. However, the application of such a restriction may not result in conditions for the temporary movement of workers, in the context of the transnational provision of services between Germany and Poland, which are more restrictive than those in force on the date on which the Treaty of Accession was signed (‘standstill’ clause).

Under the 1990 German-Polish Agreement2, work permits are, in principle, to be issued to Polish workers who are detached for temporary employment on a works contract between a Polish employer and an undertaking ‘from the other side’ (contractual workers) regardless of the situation and trends of the labour market.
Pursuant to instructions adopted by the German Federal Employment Agency concerning employment of foreign workers from the new Member States of the European Union, works contracts authorising the recruitment of foreign workers may not be entered into where the work is to be carried out in districts in which the average unemployment rate for the previous six months has been at least 30% higher than the unemployment rate for Germany as a whole. The list of the districts to which that prohibition applies is updated every quarter.

The Commission takes the view that, by preventing undertakings from Member States other than Germany which wish to carry out work in Germany from concluding contracts with a Polish contractor, unless the undertakings from those other Member States establish a subsidiary in Germany, the latter Member State has failed to fulfil its obligations in respect of the freedom to provide services. In its action for failure to fulfil obligations, the Commission, supported by Poland, also alleges that Germany has infringed the ‘standstill’ clause laid down in the 2003 Treaty of Accession by extending the regional restrictions on access to the labour market.
The restriction on the conclusion of works contracts

The Court first points out that the freedom to provide services implies, in particular, the abolition of any discrimination against a service provider by reason of its nationality or the fact that it is established in a Member State other than that in which the service is to be provided.

1 Act concerning the conditions of accession of the Czech Republic, the Republic of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Republic of Hungary, the Republic of Malta, the Republic of Poland, the Republic of Slovenia and the Slovak Republic and the adjustments to the Treaties on which the European Union is founded (OJ 2003 L 236, p. 33).

2 Agreement of 31 January 1990 between the Government of the Federal Republic of Germany and the Government of the Republic of Poland on the posting of workers from Polish undertakings to carry out works contracts, as amended on 1 March and 30 April 1993 (BGBl. 1993 II, p. 1125).
Consequently, the requirement that an undertaking must set up a permanent establishment or branch in the Member State in which the service is provided runs directly counter to the freedom to provide services as it renders impossible the provision of services, in that Member State, by undertakings established in other Member States.

Next, the Court finds that, by interpreting the term ‘undertaking from the other side’ in the German-Polish Agreement as referring only to German undertakings, Germany creates direct discrimination, contrary to the EC Treaty, against service providers established in Member States other than Germany which wish to enter into a works contract with a Polish undertaking and thereby benefit, through providing services in Germany, from the quota for Polish workers guaranteed under that agreement.

The Court notes that, since the accession of Poland to the Union, the German-Polish Agreement concerns two Member States, with the result that the provisions of that agreement can apply to relations between those Member States only in compliance with Community law, in particular with the Treaty rules on the free provision of services.

The Court points out that discriminatory rules may be justified on grounds of public policy, public security or public health. Recourse to such justification, however, presupposes the existence of a genuine and sufficiently serious threat affecting one of the fundamental interests of society.
By arguing in particular that it is necessary to ensure efficient monitoring of the proper application of the German-Polish Agreement, Germany has failed to adduce any convincing argument capable of justifying restrictions on a fundamental freedom.

The ‘standstill’ clause

The Court finds that the fact that, after the date of signature of the Treaty of Accession, new districts3 were added to the list of those in which works contracts under the German-Polish Agreement are not authorised does not amount to contravention of the ‘standstill’ clause.

More restrictive conditions are not created in the case where the reduction in the number of Polish workers liable to be posted in the context of the provision of services in Germany is simply the consequence of the application, after that date, of a clause, the terms of which have remained identical, to a factual situation which has developed within the labour market. Consequently, the list – updated every quarter – of districts which are subject to the prohibition is, in that context, purely declaratory, since there has not been any deterioration in the legal situation or any unfavourable change in German administrative practice.
The Court observes that this interpretation is confirmed by the purpose of such ‘standstill’ clauses, which is generally to prohibit the introduction of any new measure by a Member State having the purpose or effect of creating more restrictive conditions than those which applied before the date from which those clauses take effect.

NOTE: An action for failure to fulfil obligations directed against a Member State which has failed to comply with its obligations under European Union law may be brought by the Commission or by another Member State. If the Court of Justice finds that there has been a failure to fulfil obligations, the Member State concerned must comply with the Court’s judgment without delay.

Where the Commission considers that the Member State has not complied with the judgment, it may bring a further action seeking financial penalties. However, if measures transposing a directive have not been notified to the Commission, the Court of Justice can, on a proposal from the Commission, impose penalties at the stage of the initial judgment.

3 These are, inter alia, Bremerhaven, Bochum, Dortmund, Duisburg, Essen, Wuppertal, Dresden, Cologne, Oberhausen and Recklinghausen.


 
Judgment of the European Court of Justice of 14 January 2010 in Case C-304/08 

Allowing customers to take part in a lottery free of charge following a certain number of purchases does not automatically constitute an unfair commercial practice
National law may not prohibit such a promotional campaign without taking into account the specific circumstances of individual cases

The European Unfair Commercial Practices Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (OJ 2005 L 149, p. 22) is intended to contribute to the proper functioning of the internal market and to achieve a high level of consumer protection. It establishes a general prohibition of unfair commercial practices that are likely to distort consumers’ economic behaviour. It also lays down rules on misleading and aggressive commercial practices. Furthermore, Annex I to the Directive contains a list of commercial practices which are unfair in all circumstances.

A German retailer launched the promotional campaign ‘Ihre Millionenchance’ (‘Your chance to win millions’) in which the public was invited to purchase goods sold in its shops in order to collect points. By collecting 20 points, customers could take part free of charge in certain draws held by the Deutscher Lottoblock (national association of 16 lottery undertakings). The German association founded to combat unfair competition considered that practice to be unfair within the terms of the German Law on unfair competition (the UWG), which lays down a general prohibition of combining a prize competition and lottery with the obligation to purchase goods. On application by the association, the retailer was ordered at first and second instances to discontinue that practice. The German Bundesgerichtshof (Federal Court of Justice), which must decide on this case at final instance, is asking the Court of Justice whether the Directive precludes a prohibition such as that laid down by the UWG.

In its judgment the Court holds that the Directive precludes national legislation, such as that contained in the UWG, which, without taking account of the specific circumstances of individual cases, provides for a prohibition in principle of commercial practices under which the participation of consumers in a prize competition or lottery is made conditional on the purchase of goods or the use of services.

As a preliminary point, the Court observes that promotional campaigns which enable consumers to take part free of charge in a lottery subject to their purchasing a certain quantity of goods or services constitute commercial acts which clearly form part of an operator’s commercial strategy and relate directly to the promotion thereof and to its sales development. It follows that they do indeed constitute commercial practices within the meaning of the Directive and, consequently, come within its scope.

The Court goes on to point out that the Directive fully harmonises at Community level the rules relating to unfair business to-consumer commercial practices. Accordingly, as the Directive expressly provides, Member States may not adopt stricter rules than those provided for in that directive, even in order to achieve a higher level of consumer protection.

With regard to the practice at issue in the present case, the Court notes that it is not listed in Annex I to the Directive, which exhaustively lists the only commercial practices which can be prohibited without a case-by-case assessment. Accordingly, that practice cannot be prohibited without an assessment, having regard to the facts of each particular case, as to whether it is ‘unfair’ in the light of the criteria set out in the Directive. Those criteria include the question whether the practice materially distorts, or is likely materially to distort, the economic behaviour of the average consumer with regard to the product concerned.

Source: Pressrelease of 14 January 2010

 

The registration of the trade mark ‘CANNABIS’ for beverages potentially containing hemp is not permitted
Court of First Instance of the European Communities
PRESS RELEASE No 103/09
Luxembourg, 19 November 2009

Judgment in Case T-234/06 of  Giampietro Torresan v OHIM

The trade mark is purely descriptive of the fact that the average consumer who is reasonably circumspect may think that it constitutes a description of the characteristics of the product

In 2003, Mr Giampietro Torresan obtained from OHIM, the Community Trade Marks Office, the registration as a Community trade mark of the word sign CANNABIS in respect of beers, wine and spirits. Following an application filed by Klosterbrauerei Weissenohe GmbH & Co. KG, established in Germany, the mark was declared invalid by OHIM, which found that it was descriptive. It found that the word ‘cannabis’ designated, in everyday language, a textile plant or a narcotic substance and that it was, for the average consumer, a clear and direct indication of the characteristics of the goods for which it had been registered.

Mr Torresan disputes that decision and maintains that the trade mark CANNABIS has distinctive character, given that it is both a common name and a purely fanciful mark and has no connection, even indirect, with beer and beverages in general. As a common name, the word ‘cannabis’ constitutes the scientific name of a flowering plant from which certain drugs are extracted and from which certain therapeutic substances may be obtained. The sign CANNABIS has been present on the Italian market as a trade mark since 1996. It has, since 1999, acquired a high degree of renown as a Community trade mark for beers, wine and spirits. In any event, the word ‘cannabis’ does not constitute the normal way of designating beers or alcoholic beverages.

The Court points out, first, that the word ‘cannabis’, also referred to as ‘hemp’, has three possible meanings, namely:

• a textile plant the common organisation of the market in which is regulated within the Community framework and the production of which is subject to very strict legislation as regards the content of it active ingredient (tetrahydrocannabinol: THC),
• a narcotic which is prohibited by a great number of Member States,
• a substance the therapeutic use of which is under discussion.

The Court also points out that cannabis is used in the food sector in different forms (oils, herbal teas) and in different preparations (teas, pasta, bakery and biscuits, alcoholic or non-alcoholic beverages, etc.), all of which contain a very low concentration of THC and therefore have no psychotropic effects.

The Court also states that the Regulation on the Community Trade Mark prohibits the registration of descriptive signs and indications which may, in trade, designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production and may serve, in normal usage from the point of view of the target public, to designate, either directly or by reference to one of their essential characteristics, the product. Those descriptive signs are incapable of fulfilling the indication-of-origin function which forms an integral part of the trade mark. A mark’s descriptive character must be assessed in relation to the goods for which the mark was registered and in the
light of the presumed perception of an average consumer of those goods, who is reasonably well informed and reasonably observant and circumspect.

The Court therefore establishes whether the average consumer may think, merely on seeing a beverage bearing the trade mark CANNABIS, that that mark describes the characteristics of the goods in question.

First, it states that there is a material link between the sign CANNABIS and certain characteristics of the goods in question as cannabis is used in the manufacture of numerous foodstuffs, including beer and certain beverages. Secondly, the Court states that the word ‘cannabis’ is a Latin scientific term which is well known, is present in a number of European Community languages and has had a lot of media coverage, rendering it comprehensible to the target consumer throughout the Community. Consequently, the average consumer will perceive the trade mark CANNABIS as a description of one of the characteristics of those goods. The Court points out that that characteristic is a determining factor for the consumer when he makes his purchase because he will be attracted by the possibility of obtaining similar sensations to those he obtains from the consumption of cannabis.

On those grounds, the Court dismisses Mr Torresan’s action and upholds OHIM’s decision to declare the registration of the trade mark CANNABIS to be invalid in respect of beverages potentially containing hemp.


WIPO Launches Enhanced Patent Information Service

WIPO has launched an enhanced online patent information service that will improve public access to information on patents filed and granted around the world. WIPO’s PATENTSCOPE®, which currently hosts data on more than 1.6 million international patent applications filed under the Patent Cooperation Treaty (PCT), has been extended to include several collections of national and regional patent information.

In this first phase, WIPO’s PATENTSCOPE® includes the patent data collections of eight patent offices: African Regional Intellectual Property Organization (ARIPO), Cuba, Israel, Republic of Korea, Mexico, Singapore, South Africa and Vietnam. WIPO has been working closely with these patent offices to ensure the data collections are fully searchable.

The expansion of WIPO’s PATENTSCOPE® data collection makes it possible to conduct high-quality, detailed and free-of-charge searches of the patent information of the participating offices. Many of these collections had previously not been digitized and were not easily searchable. This initiative is taking place within the context of WIPO’s commitment to supporting the development of a fully integrated global IP infrastructure and to increasing participation by developing and least developed countries in the benefits of the knowledge economy.

The availability of good quality patent information which contains detailed technical specifications of new technologies is an important step towards narrowing the knowledge gap in technological information. WIPO’s PATENTSCOPE®, which facilitates the search and retrieval of patent information, is designed to enhance access to the wealth of technical information contained in patent documents and thereby to promote the broad dissemination of this knowledge. Patent information is of significant practical value to businesses when planning product development, marketing strategies or when seeking partnership opportunities for joint ventures.
In addition to technical information, patent documents offer an indication of who is active in a given field of technology and the legal status of the patents granted to those actors. This information can also be of value to researchers and others seeking information on state-of-the-art technologies, particularly in developing countries, as it can help optimize R&D investment by reducing the chances of unnecessarily duplicating R&D efforts.

WIPO’s expanded PATENTSCOPE® platform offers tools that enable a high-level analysis of technology trends, as well as country and company-level patenting trends. The new service is the result of cooperation agreements between WIPO and the participating national and regional patent offices. WIPO provides technical assistance to offices to assist them in the digitization and dissemination of their patent data. Similar agreements are underway with several additional offices, and others will be added over time

International Applications (PCT)
This search tool allows you to search around 1.6 million published International Patent Applications and to view the latest information and documents available to the International Bureau. This facility features: full-text search in Descriptions and Claims; search using unlimited keywords; bibliographic search; Boolean operators; and graphical results.

National & PCT Collections
This new search tool, now available for public testing, allows you not only to search the PCT database of about 1.6 million International Applications but also the patent collections of ARIPO, Cuba, Israel, Korea, Mexico, Singapore, South Africa and Vietnam. This search facility features: flexible search syntax; automatic word stemming and relevance ranking; as well as graphical results.

External Databases
Links to the searchable patent databases of over 25 National Offices are provided..

Patent Analysis
This patent analysis page features a service providing, through technology reports as well as pre-defined searches of the latest published PCT international patent applications, a quick visualization of developments in selected technologies. The technologies have been selected on the basis of public interest or relevance to prominent areas of public policy.

Glossary
This Glossary is intended as a user friendly tool for searchers to understand the terminology used when searching the PATENTSCOPE® database, and most terms are explained in that context. For complete information and legal definitions please refer to the indicated Standards, Sections, Articles, Rules, and Regulations under the PCT and WIPO.

Source: WIPO press release of 13 November 2009  WIPO - link


No likelihood of  confusion between the marks SpagO and SPA

The European Court of First Instance (Eighth Chamber) decided by judgment of 12 November 2009 in case T-438/07 that the application for a community word mark SpagO did not damage the reputation of an earlier national mark SPA and was consequently not confusingly similar, because the marks are only slightly similar.

The Court noted that it is necessary to take account of the nature of the goods in question and that it is possible as result of the alcohol content of the beverages to distinguish them from water and non‑alcoholic drinks having different characteristics. Whereas alcoholic drinks are usually consumed on special and convivial occasions, water and non-alcoholic drinks are consumed on a daily basis. Moreover, the consumption of water satisfies a vital need. The average consumer, deemed to be reasonably well informed and reasonably observant and circumspect, is aware of that distinction between alcoholic and non‑alcoholic drinks, which is, moreover, necessary, since some consumers do not wish to or cannot consume alcohol. Furthermore, the price of alcoholic drinks is generally much higher than that of non‑alcoholic drinks and the marketing of alcohol is, in a number of respects, more regulated, it being necessary, inter alia, to obtain a licence to sell alcohol and a minimum age restriction being imposed for the purchase of alcoholic drinks. The fact that the drinks at issue may be consumed in the same places and in a complementary fashion, in that they can be mixed or served together, and that they are often consumed by the same people and sold at similar points of sale does not affect this finding.

Iin the light of the difference in the nature of the goods covered by the marks at issue, the element ‘spa’ in the trade mark applied for – Spago – will not be perceived by the average consumer in the Benelux countries as referring to the mineral waters marketed under the earlier mark. The mark applied for  is not SPA GO or SPA‑GO but SpagO  as a single word, namely a neologism in which the element ‘spa’ is lost in the overall impression created by the younger application.


JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
29 October 2009 

Likelihood of Confusing similarity between word/figurative mark Agile and word mark Aygill’s

In Case T‑386/07 the European Court of First Instance (Fifth Chamber) decided on 29 October 2009 that likelihood of confusion between the aforementioned signs were visually and phonetically similar. OHIM denied incorrectly a likelihood of confusion because of  the manner in which the goods in question are marketed, the visual aspect of the marks was decisive and to find that there was only a low degree of vvisual similarity between the signs and that there is no likelihood of confusion in territories, where the word ‘agile’ has a conceptual content.

The Court held that it is not certain that the visual aspect plays a greater role, since the goods in question are marketed in such a way that, when making their purchase, the relevant public’s perception of the mark designating those goods is visual. In that regard, it should be noted that the goods in question in the case are not all of the same nature as those in question in the case-law cited by the Board of Appeals, namely Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, and Case T-194/03 Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II-445). Therefore the Board of Appeal was wrong to describe the visual similarity between the signs at issue as being of a low degree.

Although the signs were globally similar only to a low degree, the Board of Appeal was still wrong to exclude a likelihood of confusion on the part of the relevant public, between the two marks, because  the identity of  goods set off  a low degree of similarity between the conflicting signs.

Comparing the two signs, the Court held that according to established case-law, two trade marks are similar when, from the point of view of the relevant public, there is an at least partial correspondence between them with regard to one or more relevant aspects. With regard to the visual comparison of the signs at issue, the Court held noted that the first four letters of the mark applied for, namely ‘a’, ‘g’, ‘i’ and ‘l’ are included in that order amongst the first five letters of the earlier mark, namely ‘a’, ‘y’, ‘g’, ‘i’ and ‘l’. Furthermore the mark applied for has only five letters and that the earlier mark has only seven and that they have in common a majority of the letters of which they are constituted. It can be deduced from those elements that the consumer will perceive the signs at issue as being visually similar despite their different ending, namely the letter ‘e’ for the mark applied for and the letter ‘l’ followed by an apostrophe and the letter ‘s’ for the earlier mark. In that regard the Court recalled that according to established case-law the consumer generally pays greater attention to the beginning of a mark than to the end.

The difference owing to the fact that the letter ‘y’ is present only in the earlier mark, is not sufficiently significant to put that similarity in question. Perception of that difference by the average consumer would require a detailed comparison of the signs at issue. However, that consumer is deemed only rarely to have a chance to make a direct comparison between the different marks, and must place his trust in the imperfect picture of them that he has kept in his mind.

Furthermore, the Court held wrong to take into account the particular font used by the mark applied for in its comparison of the signs at issue. It was therefore correct to note, since the earlier mark is a word mark, its proprietor has the right to use it in different scripts, such as, for example, a form comparable to that used by the mark applied for. It was therefor incorrect to conclude that there was only a low degree of similarity instead of an average degree of visual similarity between both signs.

Regarding the phonetic comparison of the signs the Board of Appeal found that they were similar in French, but different in English applying the phonetic rules of both languages to the earlier mark. As far as  the average French-speaking consumer is likely to associate the use of the apostrophe followed by the letter ‘s’ in the earlier mark with the English language, it cannot be deducted that the French-speaking would be able to pronounce the earlier mark in accordance with the rules of English pronunciation. Therefore it was correct to compare the two marks at issue by applying the rules of French pronunciation to both of them, and was able to deduct the existence of a phonetic similarity.

Regarding the conceptual comparison of the signs the Board of Appeal held that there was no similarity between them. The Board was correct to point out, that the word ‘agile’ has a clear meaning in several Community languages, including French, in which it means ‘physically or mentally quick’, whereas the same consumer would see in the earlier mark, which is entirely devoid of meaning, reference either to a family name or a place name. It necessarily follows that the signs at issue are conceptually different, but conceptually different, even if  conceptual differences can in certain circumstances counteract the visual and phonetic similarities. Such counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately. The Court held that the conceptual difference between the signs at issue is not, in the circumstances of the present case, such as to neutralise the similarities found to exist.

Whereas the goods at issue were sports equipment and clothing and whereas the word ‘agile’ clearly has a laudatory character with regard to them, either with regard to the characteristics of the goods themselves or to an element connected with the sporting activity for which they are acquired, and therefore have limited distinctiveness in that regard. However, in light of the visual and phonetic similarities between the marks Aygill’s and Agile, it cannot be excluded that consumers of the goods in question might attribute the same conceptual content to the earlier mark as to the mark applied for. Therefore, in the circumstances of the present case, it is apparent that the effect of the conceptual difference between the signs at issue could attenuate the established visual and phonetic similarities, but not neutralise them. It follows that the signs at issue must be considered to be similar overall, but to a low degree with regard at least to the French-speaking public, which, apart from a visual similarity, will also perceive a phonetic similarity between them.


THE COURT OF JUSTICE INTERPRETS THE EUROPEAN CONVENTION ON THE LAW APPLICABLE TO CONTRACTUAL OBLIGATIONS FOR THE FIRST TIME

Court of Justice of the European Communities Press Release No 87/09 Luxembourg, 6 October 2009 - Press and Information to Judgment in Case C-133/08

Intercontainer Interfrigo (ICF) v Balkenende Oosthuizen BV & Mic Operations BV


The Court specifies the criteria according to which the law applicable to a charter-party is determined

In 1998, in the context of a project for a train connection for freight traffic between Amsterdam (Netherlands) and Frankfurt am Main (Germany), the Belgian company Intercontainer Interfrigo (ICF) entered into a charter party with the Netherlands companies Balkenende and Mic Operations BV (MIC). ICF was to make train wagons available to MIC and would ensure their transport via the rail network. MIC, which had hired out the acquired load capacity to third parties, was responsible for all operational aspects of the transport. The draft contract stating that Belgian law was the law applicable to the contract was not signed by any of the parties. In 2002, ICF brought an action against MIC before a Netherlands court seeking payment of an invoice from 1998. The Netherlands court held that the contract should be categorised as a contract for the carriage of goods, that it was more closely connected with the Netherlands than with Belgium and that, consequently, the right to payment of the invoice was time-barred (which was not the case under Belgian law).

The Hoge Raad der Nederlanden (Supreme Court of the Netherlands), before which the case is now pending, referred a number of questions to the Court of Justice relating to the interpretation of the law applicable to contractual obligations 1 and, in particular on the applicable law in the absence of a choice by the parties. The Court points out, first, that the Convention was concluded in order to continue, in the field of private international law, the work of unification of law set in motion by the Convention on jurisdiction and the enforcement of judgments 2. It seeks to eliminate the inconveniences arising from the diversity of the conflict-of-law rules applied in the various States in the area of contracts and establish uniform rules concerning the law applicable to contractual obligations, irrespective of where the judgment is to be delivered.

Under the Convention, the parties are free to choose the law applicable to the contract that they are concluding, but, in the absence of a choice, connecting criteria are provided for which apply to all categories of contract and are based on ascertaining the country with which that contract is ‘most closely connected’. That general principle is limited by presumptions (such as the place of residence of the party to the contract who effects the performance characteristic of that contract) or special connecting criteria (for example in respect of contracts for immoveable property or contracts of carriage).

1 Convention on the law applicable to contractual obligations, opened for signature in Rome on 19 June 1980 (OJ 1980 L 266, p. 1).
2 Convention of 27 September 1968 on jurisdiction and the enforcement of judgments in civil and commercial matters (OJ 1972 L 299, p. 32).

More specifically as regards the carriage of goods, the law which applies is that of the country in which the carrier has his principal place of business if the place of loading or the place of discharge or the principal place of business of the consignor is situated in that country. The Court also points out that under the Convention other contracts the main purpose of which is the carriage of goods are also to be treated as contracts for the carriage of goods, but, in such circumstances, the law of the country in which the carrier has his principal place of business applies only when the owner/carrier has his principal place of business, at the time the contract is concluded, in the country in which the place of loading or the place of discharge or the principal place of business of the consignor is situated. The Court thus declares that the law of the country in which the carrier has his principal place of business applies to a charter-party only when the main purpose of the contract is not merely to make available a means of transport, but the actual carriage of goods. The court must always determine the applicable law on the basis of the presumptions provided by the Convention, but where it is clear from the circumstances as a whole that the contract is more closely connected with a country other than that determined on the basis of the presumptions, the court may disregard them and apply the law of the country with which the contract is most closely connected.

The Court points out that under the Convention 1 the law applicable to a contract governs in particular the prescription of obligations. Lastly, it holds that – for the purposes of determining the law applicable – the court may separate a contract into a number of parts; a part of a contract may, by way of exception, be governed by a law other than that which applies to the rest of the contract, but only where the object of that part is independent.


Member States Simplify International Design Registration System

Geneva, September 25, 2009
WIPO Pressw Release PR/2009/610

Member states moved on September 24, 2009 to simplify the international design registration system by suspending the earliest of the three Acts that govern the Hague Agreement concerning the International Deposit of Industrial Designs. This decision will streamline the administration of the Treaty which offers the possibility to protect designs in several countries by filing one single application (in one language with one set of fees in one currency - Swiss francs). The Hague system also simplifies the subsequent management of industrial design rights.

The decision was taken at an Extraordinary Meeting of the Contracting Parties to the 1934 (London) Act of the Hague Agreement on the sidelines of the WIPO Assemblies’ meetings from September 22 to October 1, 2009.
 
The Hague Agreement concerning the International Deposit of Industrial Designs of November 1925 consists of three different Acts, namely the London Act of 1934, the Hague Act of 1960 and the Geneva Act of 1999. At a meeting this week, the 15 signatories of the obsolete 1934 London Act decided to freeze that Act from January 1, 2010.
 
This decision will reduce the complexity of the system and will focus greater attention on the 1999 Geneva Act which enhances the existing system by making it more compatible with registration systems in countries where protection of industrial designs is contingent on examination to determine the acceptability of an application. The Geneva Act also introduces a modified fee system, the possibility of deferring publication of a design for up to 30 months and the ability to file samples of the design rather than photographs or other graphic reproductions. The latter features are of particular interest to the textile and fashion industries.
 
Under this decision, as from January 1, 2010, no new designations under the 1934 (London) Act may be recorded in the International Design Register. Designations under that Act made before that date will not be affected.  It was unanimously agreed that the next step would be to terminate the 1934 (London) Act.
 
The Hague Union Assembly, which will meet early next week, will discuss and amend the Common Regulations under the Hague Agreement to reflect this decision.
 


COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES
Press and Information
PRESS RELEASE No 75/09

22 September 2009


Advocate General’s Opinion in Joined Cases C-236/08, C-237/08 and C-238/08

Google France & Google Inc. v Louis Vuitton Malletier, Google France v Viaticum & Luteciel and Google France v CNRRH, Pierre-Alexis Thonet, Bruno Raboin & Tiger, franchisée Unicis

ADVOCATE GENERAL POIARES MADURO CONSIDERS THAT GOOGLE HAS NOT INFRINGED TRADE MARK RIGHTS BY ALLOWING ADVERTISERS TO BUY KEYWORDS CORRESPONDING TO REGISTERED TRADE MARKS

However, Google's liability may be engaged for featuring content in AdWords that involves trade mark infringement.
Under Community trade mark rules (First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) and Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), the owner of a trade mark can prohibit others from using the sign in advertising.

The E-Commerce Directive (Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) (OJ 2000 L 178, p. 1) exempts, under certain conditions information society service providers from liability for the information stored at the request of a recipient of the service. (This exemption applies where: (i) there is an information society service; (ii) that service consists in the storage of information, provided by the recipient of the service, at the request of that recipient; and (iii) the provider of the service has no actual knowledge of the illegal nature of the information, or of facts which would make such illegality apparent, and duly acts to remove it upon becoming aware of its illegality.)

Google allows internet users free access to the Google search engine. On entering keywords into that search engine, users are presented with a list of natural results selected and ranked according to their relevance to the keywords, determined by objective criteria. Google also operates an advertising system called 'AdWords', which enables ads to be displayed, alongside natural results, in response to keywords. These ads typically consist of a short commercial message and a link to the advertiser's site; they are differentiated from natural results by their placement and design. Through AdWords, Google allows advertisers, in return for payment, to select keywords so that their ads are displayed to internet users in response to the entry of those keywords in Google’s search engine. Google supports its search engine with its income from AdWords.

In France, legal proceedings have been initiated by trade mark owners against Google as to the legality of the use, in the Adwords advertising system, of keywords corresponding to trade marks. It has been established in those proceedings that entering certain trade marks into Google's search engine triggered the display of ads for sites offering counterfeit versions of the products covered by the trade mark or identical or similar products of competitors.

The Cour de cassation, called upon to settle the issue at last instance, has asked the Court of Justice whether Google has committed a trade mark infringement by making available such keywords to advertisers and if the company can be held liable for the content featured in AdWords.

In his Opinion delivered today, Advocate General Poiares Maduro suggests that Google has not committed a trade mark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trade marks. He highlights that the use of the trade marks is limited to the selection of keywords which is internal to AdWords and concerns only Google and the advertisers. When selecting keywords, there is thus no product or service sold to the general public. Such a use cannot therefore be considered as being a use made in relation to goods or services identical or similar to those covered by the trade marks. Similarly, advertisers themselves do not commit a trade mark infringement by selecting in Adwords keywords corresponding to trade marks.

By contrast, the Advocate General finds that Google, by displaying ads in response to keywords corresponding to trade marks, establishes a link between those keywords and the sites advertised which sell products identical or similar to those covered by the trade marks. The very same link is established between keywords which correspond to trade marks, and the sites displayed as natural results.

However, in the view of the Advocate General, such a link also does not constitute a trade mark infringement. In effect, the mere display of relevant sites in response to keywords is not enough to establish a risk of confusion on the part of consumers as to the origin of goods or services. Internet users are aware that not only the site of the trade mark owner will appear as a result of a search in Google's search engine and sometimes they may not even be looking for that site. These users will only make an assessment as to the origin of the goods or services advertised on the basis of the content of the ad and by visiting the advertised sites; no assessment will be based solely on the fact that the ads are displayed following the entry of keywords corresponding to trade marks.

The Advocate General then recalls that trade mark rights cannot be construed as classical property rights enabling the trade mark owner to exclude any other use. Accordingly, internet users' access to information concerning the trade mark should not be limited to or by the trade mark owner even if it involves a trade mark which has a reputation. He notes that many of the sites reached by internet users by entering keywords are perfectly legitimate and lawful even if they are not the sites of the trade mark owner.

Mr. Poiares Maduro also rejects the notion that Google's actual or potential contribution to a trade mark infringement by a third party should constitute an infringement in itself. He opines that instead of being able to prevent, through trade mark protection, any possible use – including many lawful and even desirable uses –, trade mark owners would have to point to specific instances giving rise to Google’s liability in the context of illegal damage to their trade marks.

In this context, the Advocate General finds that both Google's search engine and AdWords constitute information society services. He adds that service providers seeking to benefit from a liability exemption under the E-Commerce Directive should remain neutral as regards the information they carry or host.

However, whilst the search engine is a neutral information vehicle applying objective criteria in order to generate the most relevant sites to the keywords entered, that is not the case with Adwords where Google has a direct pecuniary interest in internet users clicking on the ads' links.

Accordingly, the liability exemption for hosts provided for in the E-Commerce Directive should not apply to the content featured in AdWords.


COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES
PRESS RELEASE No 71/09
8 September 2009
Judgment of the Court of Justice in Case C-478/07
Budĕjovický Budvar v Rudolf Ammersin GmbH

THE DESIGNATION ‘BUD’ CANNOT BE PROTECTED AS A DESIGNATION OF ORIGIN OUTSIDE THE COMMUNITY SYSTEM OF PROTECTION

If, however, the designation ‘Bud’ were to be recognised, in the Czech Republic, as a simple geographical indication of provenance, its protection in Austria would require that it be capable of informing the Czech consumer that the product which bears it originates from a region or location in the territory of the Czech Republic

In the European Union, the Regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs - Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ 2006 L 93, p. 12) -  is intended to assure consumers that agricultural products bearing a geographical indication registered under that regulation have, because of their provenance from a particular geographical area, certain specific characteristics and, accordingly, offer a guarantee of quality due to their geographical provenance.

Provided that they meet the conditions laid down in the Regulation, designations of origin and ‘qualified’ geographical indications are protected. However, the Regulation does not apply to ‘simple’ geographical indications, that is to say, those which do not require products to have any special characteristics or element of renown deriving from the place from which they come. Nevertheless, protection of such a simple indication of geographical provenance by a Member State, likely to constitute a restriction on the free movement of goods, may, on certain conditions, be justified under Community law.

The Commercial Court of Vienna (Austria) asks the Court of Justice to clarify on what conditions the designation ‘Bud’ may be protected, under a bilateral agreement, for beer produced in the Czech Republic. Proceedings commenced by the Czech brewery Budĕjovický Budvar in 1999 before the Commercial Court of Vienna seek to prohibit the Viennese drinks distributor Rudolf Ammersin GmbH from marketing beer produced by the brewery Anheuser-Busch Inc under the trade mark American Bud.

Budvar asserts that the use of the designation American Bud for a beer from a State other than the Czech Republic is contrary to the provisions of a bilateral agreement concluded in 1976 between Austria and the Czechoslovak Socialist Republic. The designation Bud is a protected designation under that agreement and is therefore reserved exclusively for Czech products.

In order to ascertain whether Community law authorises the protection conferred by the bilateral agreement on the designation ‘Bud’, the Commercial Court seeks clarification on the basis of two divergent premises regarding the classification of the designation ‘Bud’. In that regard, the Court points out that the designation ‘Bud’ may constitute a simple and indirect indication of geographical provenance, that is to say, a name in respect of which there is no direct link between a specific quality, reputation or other characteristic of the product and its specific geographical origin, and which, moreover, is not in itself a geographical name but is at least capable of informing the consumer that the product bearing that indication comes from a particular place, region or country.

If the Commercial Court were to classify the designation ‘Bud’ as a simple indication of geographical provenance, it would have to ascertain whether, according to factual circumstances and perceptions prevailing in the Czech Republic, the designation ‘Bud’ is at least capable of informing the consumer that the product bearing that indication comes from a particular place or region of that Member State and has not become generic in that Member State. In those circumstances, Community law does not preclude national protection of such a simple indication of geographical source, nor, moreover, the extension of that protection by way of a bilateral agreement to the territory of another Member State.

Nevertheless, in the view of the Commercial Court, the designation ‘Bud’ must rather be classified as a designation of origin covering goods whose specific features can be attributed to natural or human factors inherent in their place of provenance. On that basis, the Commercial Court seeks to ascertain whether the Community Regulation on the protection of geographical indications precludes protection of the designation of origin ‘Bud’, registration of which was not sought in accordance with that regulation. At the time of its accession to the European Union, the Czech Republic sought Community protection for only three indications of provenance concerning beer produced in the town of Česke Budĕjovice, namely ‘Budějovické pivo’, ‘Českobudějovické pivo’ and ‘Budějovický měšťanský’, designating a strong beer called ‘Bud Super Strong’.

In its judgment the Court rules that the Regulation on the protection of geographical indications and designations of origin is exhaustive in nature, with the result that it precludes the application of a system of protection laid down by agreements between two Member States, such as the bilateral instruments at issue, which confers on a designation, recognised under the law of a Member State as constituting a designation of origin, protection in another Member State where that protection is actually claimed despite the fact that no application for registration of that designation of origin has been made in accordance with that regulation.


Source: PRESS RELEASE No 47/09
4 June 2009
Judgment of the Court of Justice in Case C-8/08
T-Mobile Netherlands BV and Others v Raad van bestuur van der Nederlandse Mededingingsautoriteit

A SINGLE MEETING BETWEEN COMPANIES MAY CONSTITUTE A CONCERTED PRACTICE IN BREACH OF COMMUNITY COMPETITION LAW

The presumption of a causal connection between the concerted practice and the market conduct of the participating undertakings established in the Court’s case-law must be applied by the national court

Community law prohibits agreements and concerted practices between undertakings. Under Netherlands legislation, ‘concerted practice’ means any concerted practice within the meaning of Community law.

In 2001, five operators in the Netherlands had their own mobile telephone network, namely Ben Nederland BV (now T-Mobile), KPN, Dutchtone NV (now Orange), Libertel-Vodafone NV (now Vodafone) and Telfort Mobile BV (subsequently O2 (Netherlands) BV and now Telfort). Representatives of the five operators held a meeting on 13 June 2001. At that meeting they discussed, inter alia, the reduction of standard dealer remunerations for postpaid subscriptions, which was to take effect on or about 1 September 2001.

By decision of 30 December 2002, the Raad van bestuur van der Nederlandse Mededingingsautoriteit (the Netherlands competition authority) found that the five operators had concluded an agreement with each other or had entered into a concerted practice. Taking the view that such conduct restricted competition to an appreciable extent and was thus prohibited under national law, the Raad van bestuur van der Nederlandse Mededingingsautoriteit imposed fines on those undertakings. The latter challenged that decision.

The case went to appeal before the College van Bereop voor het bedrijfsleven (the Administrative Court for Trade and Industry), which has asked the Court of Justice to clarify the concept of concerted practice, indicating in particular the criteria to be applied when assessing whether a concerted practice pursues an anti-competitive object, to state whether the national court considering whether there is a concerted practice is obliged to apply the presumption of a causal connection established in the Court’s case-law on that matter, and to determine whether that presumption is applicable even where the concerted practice has its roots in participation by the undertakings concerned at a single meeting.
The criteria to be applied in determining whether a concerted practice pursues an anti-competitive object

First, the Court observes that the criteria laid down in the Court’s case law for the purpose of determining whether conduct has as its object or effect the prevention, restriction or distortion of competition are applicable irrespective of whether the case entails an agreement, a decision or a concerted practice. With regard to the definition of a concerted practice, the Court states that such a practice is a form of coordination between undertakings by which, without it having been taken to the stage where an agreement properly so-called has been concluded, practical cooperation between them is knowingly substituted for the risks of competition.

Next, the Court points out that it has already provided a number of criteria on the basis of which it is possible to ascertain whether a concerted practice is anti-competitive, which include, in particular, the details of the arrangements on which it is based, the objectives which it is intended to attain and its economic and legal context. In order for a concerted practice to be regarded as having an anti-competitive object, it is sufficient that it has the potential to have a negative impact on competition. In other words, it must simply be capable in an individual case, having regard to the specific legal and economic context, of resulting in the prevention, restriction or distortion of competition within the common market.

Moreover, the Court states that a concerted practice may be regarded as having an anti-competitive object even though the practice has no direct effect on the price paid by end users but relates simply to the remuneration paid to dealers for concluding postpaid subscription agreements.

Lastly, the Court points out that any exchange of information between competitors pursues an anti-competitive object if it is capable of removing uncertainties as to the anticipated conduct of the participating undertakings, including where, as in the present case, the conduct relates to the reduction in the standard commission paid to dealers. It is for the referring court to determine whether the information exchanged at the meeting held on 13 June 2001 was capable of removing such uncertainties.
Whether the national court is under an obligation to apply the presumption of a causal connection established in the Court’s case-law

The Court states that the concept of a concerted practice implies, in addition to the participating undertakings concerting with each other, subsequent conduct on the market and a relationship of cause and effect between the two. In that context, the Court has established in its case-law a presumption of a causal connection, according to which, subject to proof to the contrary, which the operators concerned must adduce, the undertakings taking part in the concerted action and remaining active on the market are presumed to take account of the information exchanged with their competitors in determining their conduct on that market.

Since any interpretation of Community law provided by the Court is binding on all the national courts and tribunals of the Member States, the national court is obliged to apply that presumption of a causal connection.

Whether the presumption of a causal connection is to be applied in cases in which the concerted action is the result of a meeting on a single occasion,  the Court points out that, depending on the structure of the market, the possibility cannot be ruled out that a meeting on a single occasion between competitors may, in principle, constitute a sufficient basis for the participating undertakings to concert their market conduct. If the undertakings concerned establish a cartel with a complex system of concerted actions in relation to a multiplicity of aspects of their market conduct, regular meetings over a long period may be necessary. If, on the other hand, as in the present case, the objective of the exercise is only to concert action on a selective basis with reference simply to one parameter of competition, a single meeting between competitors may constitute a sufficient basis on which to implement the anti-competitive object which the participating undertakings aim to achieve.

In those circumstances, what matters is not so much the number of meetings held between the participating undertakings as whether the meeting or meetings which took place afforded them the opportunity to take account of the information exchanged with their competitors in order to determine their conduct on the market in question and knowingly substitute practical cooperation between them for the risks of competition. Where it can be established that such undertakings successfully concerted with one another and remained active on the market, they may justifiably be called upon to adduce evidence that that concerted action did not have any effect on their conduct on the market in question.

Accordingly, in so far as the undertaking participating in the concerted action remains active on the market in question, there is a presumption of a causal connection between the concerted practice and the conduct of the undertaking on that market, even if the concerted action is the result of a meeting held by the participating undertakings on a single occasion.



Federal Constitutional Court - Press office - Press release no. 72/2009 of 30 June 2009

Judgment of 30 June 2009 – 2 BvE 2/08, 2 BvE 5/08, 2 BvR 1010/08, 2 BvR 1022/08, 2 BvR 1259/08 und 2 BvR 182/09 –

Act Approving the Treaty of Lisbon compatible with the Basic Law; accompanying law unconstitutional to the extent that legislative bodies have not been accorded sufficient rights of participation

The Second Senate of the Federal Constitutional Court has decided today that the Act Approving the Treaty of Lisbon (Zustimmungsgesetz zum Vertrag von Lissabon) is compatible with the Basic Law. In contrast, the Act Extending and Strengthening the Rights of the Bundestag and the Bundesrat in European Union Matters (Gesetz über die Ausweitung und Stärkung der Rechte des Bundestages und des Bundesrates in Angelegenheiten der Europäischen Union) infringes Article 38.1 in conjunction with Article 23.1 of the Basic Law (Grundgesetz - GG) insofar as the Bundestag and the Bundesrat have not been accorded sufficient rights of participation in European lawmaking procedures and treaty amendment procedures. The Federal Republic of Germany’s instrument of ratification of the Treaty of Lisbon may not be deposited as long as the constitutionally required legal elaboration of the parliamentary rights of participation has not entered into force. The decision was reached unanimously as regards the result, by seven votes to one as regards the reasoning (for the facts see German press releases no. 2/2009 of 16 January 2009 and no. 9/2009 of 29 January 2009).

In essence, the decision is based on the following considerations:

1. Overview of the central aspects of the judgment

The judgment focuses on the connection between the democratic system prescribed by the Basic Law on the level of the Federation and the level of independent rule which has been reached on the European level. The structural problem of the European Union is at the centre of the review of constitutionality. The extent of the Union’s freedom of action has steadily and considerably increased, not least by the Treaty of Lisbon, so that meanwhile in some fields of policy, the European Union has a shape that corresponds to that of a federal state, i.e. is analogous to that of a state. In contrast, the internal decision-making and appointment procedures remain predominantly committed to the pattern of
an international organisation, i.e. are analogous to international law; as before, the structure of the European Union essentially follows the principle of the equality of states.

As long as, consequently, no uniform European people, as the subject of legitimisation, can express its majority will in a politically effective manner that takes due account of equality in the context of the foundation of a European federal state, the peoples of the European Union, which are constituted in their Member States, remain the decisive holders of public authority, including Union authority. In Germany, accession to a European federal state would require the creation of a new constitution, which would go along with the declared waiver of the sovereign statehood safeguarded by the Basic Law. There is no such act here. The European Union continues to constitute a union of rule
(Herrschaftsverband) founded on international law, a union which is permanently supported by the intention of the sovereign Member States. The primary responsibility for integration is in the hands of the national constitutional bodies which act on behalf of the peoples. With increasing competences and further independence of the institutions of the Union, safeguards that keep up with this development are necessary in order to preserve the fundamental principle of conferral exercised in a restricted and controlled manner by the Member States. With progressing integration, fields of action which are essential for the development of the Member States’ democratic opinion-formation must be
retained. In particular, it must be guaranteed that the responsibility for integration can be exercised by the state bodies of representation of the peoples.
The further development of the competences of the European Parliament can reduce, but not completely fill, the gap between the extent of the decision-making power of the Union’s institutions and the citizens’ democratic power of action in the Member States. Neither as regards its composition nor its position in the European competence structure is the European Parliament sufficiently prepared to take representative and assignable majority decisions as uniform decisions on political direction. Measured against requirements placed on democracy in states, its election does not take due account of equality, and it is not competent to take authoritative decisions on political direction in the
context of the supranational balancing of interest between the states.

It therefore cannot support a parliamentary government and organise itself with regard to party politics in the system of government and opposition in such a way that a decision on political direction taken by the European electorate could have a politically decisive effect. Due to this structural democratic deficit, which cannot be resolved in a Staatenverbund, further steps of integration that go beyond the status quo may undermine neither the States’ political power of action nor the principle of conferral.

The peoples of the Member States are the holders of the constituent power. The Basic Law does not permit the special bodies of the legislative, executive and judicial power to dispose of the essential elements of the constitution, i.e. of the constitutional identity (Article 23.1 sentence 3, Article 79.3 GG). The constitutional identity is an inalienable element of the democratic self-determination of a people. To ensure the effectiveness of the right to vote and to preserve democratic self-determination, it is necessary for the Federal
Constitutional Court to watch, within the boundaries of its competences over the Community or Union authority’s not violating the constitutional identity by its acts and not evidently transgressing the competences conferred on it. The transfer of competences, which has been increased once again by the Treaty of Lisbon, and the independence of decision-making procedures therefore require an effective ultra vires review and an identity review of instruments of European origin in the area of application of the Federal Republic of Germany.

2. The standard of review

a) The Act Approving the Treaty of Lisbon is measured by the Federal Constitutional Court against the standard of the right to vote. As a right that is equivalent to fundamental right, a violation of the right to vote can be challenged by a constitutional complaint (Article 38.1 sentence 1 in conjunction with Article 93.1 no. 4a GG). The right to vote specifies the right to democratic self-determination, to free and equal participation in the state authority exercised in Germany and to compliance with the principle of democracy including the respect of the constituent power of the people. The review of a violation of the right to vote also comprises encroachments on the principles which are codified in Article 79.3 of the Basic Law as the identity of the constitution. The citizens’ right to determine, in equality and freedom, public authority affecting them with regard to persons and subject-matters through elections and other votes is anchored in human dignity and is the fundamental element of the principle of democracy. The principle of democracy is not amenable to weighing with other legal  interests. Amendments of the Basic Law affecting the principles laid down in Article 1 and Article 20 of the Basic Law shall be inadmissible (Article 79.3 of the Basic Law). The so-called eternity guarantee takes the disposal of the identity of the free constitutional order even out of the hands of the constitution-amending legislature. The constituent power has not granted the representatives and bodies of the people a mandate to change the constitutional principles which are fundamental pursuant to Article 79.3 GG.

b) At the same time, the elaboration of the principle of democracy by the Basic Law is open to the objective of integrating Germany into an international and European peaceful order. The German constitution is oriented towards opening the state system of rule to the peaceful cooperation of the nations and towards European integration. Neither the integration pari passu into the European Union nor the integration into peacekeeping systems such as the United Nations necessarily lead to a change in the system of exercise of public authority in the Federal Republic of Germany. Instead, it is a voluntary, mutual commitment pari passu, which secures peace and strengthens the possibilities of shaping
policy by joint coordinated action. The constitutional mandate to realise a united Europe which follows from Article 23.1 of the Basic Law and its Preamble means with regard to the German constitutional bodies that participation in European integration is not left to their political discretion. The Basic Law wants European integration and an international peaceful order. Therefore not only the principle of openness towards international law (Völkerrechtsfreundlichkeit), but also the principle of openness towards European law
(Europarechtsfreundlichkeit) applies.

c) The authorisation to transfer sovereign powers to the European Union pursuant to Article 23.1 GG is, however, granted under the condition that the sovereign statehood of a constitutional state is maintained on the basis of a responsible integration programme according to the principle of conferral and respecting the Member States’ constitutional identity, and that at the same time the Federal Republic of Germany does not lose its ability to politically and socially shape the living conditions on its own responsibility. Article 23.1 GG and the Preamble do not say anything about the final character of the political organisation of Europe. With its Article 23, the Basic Law grants powers to participate and develop a European Union which is designed as an association of sovereign national states (Staatenverbund). The concept of Verbund covers a close long-term association of states which remain sovereign, an association which exercises public authority on the basis of a treaty, whose fundamental order is, however, subject to the disposal of the Member States alone and in which the peoples of their Member States, i.e. the citizens of the states, remain the subjects of democratic legitimisation. The European Union must comply with democratic principles as regards its nature and extent and also as regards its own organisational and procedural elaboration (Article 23.1, Article 20.1 and 20.2 in conjunction with Article 79.3 of the Basic Law). This means firstly that European integration may not result in the system of democratic rule in Germany being undermined. This does not mean that a number of sovereign powers which can be determined from the outset or specific types of sovereign powers must remain in the hands of the state. European unification on the basis of a union of sovereign states under the Treaties may, however, not be realised in such a way that the Member States do not retain sufficient room for the political formation of the economic, cultural and social circumstances of life. This applies in particular to areas which shape the citizens’ circumstances of life, in particular the private space of their own responsibility and of political and social security, which is protected by the fundamental rights, and to political decisions that particularly depend on previous understanding as regards culture, history and language and which unfold in discourses in the space of a political public that is organised by party politics and Parliament. To the extent that in these areas, which are of particular importance for democracy, a transfer of sovereign powers is permitted at all, a narrow interpretation is required. This concerns in particular the administration of criminal law, the civil and the military monopoly on the use of force, fundamental fiscal decisions on revenue and expenditure, the shaping of the circumstances of life by social policy and important decisions on cultural issues such as the school and education system, the provisions governing the media, and dealing with religious communities.

d) The Basic Law does not grant the German state bodies powers to transfer sovereign powers in such a way that their exercise can independently establish other competences for the European Union. It prohibits the transfer of competence to decide on its own competence (Kompetenz-Kompetenz). The principle of conferral is therefore not only a principle of European law (Article 5.1 of the Treaty on European Union ; Article 5.1 sentence 1 and 5.12 of the Treaty on European Union in its version of the Treaty of Lisbon ), but, just like the European Union’s obligation to respect the Member States’ national identity (Article 6.3 TEU; Article 4.2 sentence 1 TEU Lisbon), it takes up constitutional principles from the Member States. The integration programme of the European Union must therefore be sufficiently precise. To the extent that the Member States elaborate the law laid down in the Treaties in such a way that, with the principle of conferral fundamentally continuing to apply, an amendment of the law laid down in the Treaties can be brought about without a ratification procedure, a special responsibility is incumbent on the legislative bodies, apart from the Federal Government, as regards participation, which, in Germany, must, on the national level, comply with the requirements under Article 23.1 of the Basic Law (responsibility for integration). The act approving a treaty amending a European Treaty and the national accompanying laws must therefore be such that European integration continues to take place according to the principle of conferral without the possibility for the European Union of taking possession of Kompetenz-Kompetenz or to violate the Member States’ constitutional identity which is not amenable to integration, in this case, that of the Basic Law. For borderline cases of what is still constitutionally admissible, the German legislature must, if necessary, make arrangements with its laws that accompany approval to ensure that the responsibility for integration of the legislative bodies can sufficiently develop.

e) The Federal Constitutional Court reviews whether legal instruments of the European institutions and bodies, adhering to the principle of subsidiarity under Community and Union law (Article 5.2 ECT; Article 5.1 sentence 2 and 5.3 TEU Lisbon), keep within the boundaries of the sovereign powers accorded to them by way of conferred power (ultra vires review). Furthermore, the Federal Constitutional Court reviews whether the inviolable core content of the constitutional identity of the Basic Law pursuant to Article 23.1 sentence 3 in conjunction with Article 79.3 of the Basic Law is respected (identity review). The exercise of these competences of review, which are constitutionally required, safeguards the fundamental political and constitutional structures of sovereign Member States, which are recognised by Article 4.2 sentence 1 TEU Lisbon, even with progressing integration. Its application in a given case follows the principle of the Basic Law’s openness towards European Law.

3. The subsumption

a) There are no decisive constitutional objections to the Act Approving the Treaty of Lisbon.

aa) With the present status of integration, the European Union does, even upon the entry into force of the Treaty of Lisbon, not yet attain a shape that corresponds to the level of legitimisation of a democracy constituted as a state. It is not a federal state but remains an association of sovereign states to which the principle of conferral applies.

The European Parliament is not a body of representation of a sovereign European people but a supranational body of representation of the peoples of the Member States, so that the principle of electoral election, which is common to all European states, is not applicable with regard to the European Parliament. Other provisions of the Treaty of Lisbon, such as the double qualified majority in the Council (Article 16.4 TEU Lisbon, Article 238.2 of the Treaty on the Functioning of the European Union ), the elements of participative, associative and direct democracy (Art. 11 TEU Lisbon) as well as the institutional recognition of the national Parliaments (Article 12 TEU Lisbon) cannot  compensate the deficit of European public authority that exists when measured against requirements on democracy in states, but can nevertheless increase the level of legitimisation of the Staatenverbund.

bb) With the entry into force of the Treaty of Lisbon, the Federal Republic of Germany will remain a sovereign state. In particular, the substance of German state authority is protected. The distribution of  the European Union’s competences, and their delimitation from those of the Member States, takes place according to the principle of conferral and according to other mechanisms of protection, in particular according to provisions concerning the exercise of competences. The transfer of sovereign powers to the European Union, which is thus performed in a controlled and responsible manner, is not called into question by individual provisions of the Treaty of Lisbon. This applies first of all
to the simplified amendment procedure (see in particular Article 48.6 TEU Lisbon). The “approval” of the Federal Republic of Germany in simplified revision procedures requires a law within the meaning of Article 23.1 sentence 2 of the Basic Law as a lex specialis with regard to Article 59.2.

cc) To the extent that the general bridging clause under Article 48.7 TEU Lisbon makes possible the transition from the principle of unanimity to the principle of qualified majority in the decision-making of the Council, or the transition from the special to the ordinary legislative procedure, this is also a Treaty amendment under primary law, which is to be assessed pursuant to Article 23.1 sentence 2 of the Basic Law. The national parliaments’ right to make known their opposition (Article 48.7(3) TEU Lisbon) is not a sufficient equivalent to the requirement of ratification. The representative of the German government in the European Council may only consent to a Treaty amendment brought about by
the application of the general bridging clause if the German Bundestag and the Bundesrat have adopted within a period yet to be determined a law pursuant to Article 23.1 of the Basic Law, which takes the purpose of Article 48.7(3) TEU Lisbon as an orientation. This also applies in case of the special bridging clause pursuant to Article 81.3(2) TFEU being used.

dd) A law within the meaning of Article 23.1 sentence 2 of the Basic Law is not required to the extent that special bridging clauses are restricted to areas which are already sufficiently determined by the Treaty of Lisbon, and which do not provide for a right for national Parliaments to make known their opposition. Also in these cases, however, it is incumbent on the Bundestag and, to the extent that the legislative competences of the Länder are affected, on the Bundesrat, to comply with their responsibility for integration in another suitable manner. The veto right in the Council may not be waived without the participation of the competent legislative bodies even as regards subject-matters which have already been factually determined in the Treaties. The representative of the German government in the European Council or in the Council may therefore only consent to an amendment of primary legislation through the application of one of the special bridging clauses on behalf of the Federal Republic of Germany if the German Bundestag and, to the extent that this is required by the provisions on legislation, the Bundesrat, have approved this decision within a period yet to be determined, which takes the purpose of Article
48.7(3) TEU Lisbon as an orientation.

ee) Also the flexibility clause under Article 352 TFEU can be construed in such a way that the integration programme envisaged in the provisions can still be predicted and determined by the German legislative bodies. With a view to the undetermined nature of possible cases of application, the use of the flexibility clause constitutionally requires ratification by the German Bundestag and the Bundesrat on the basis of Article 23.1 sentences 2 and 3 of the Basic Law.

ff) The Federal Constitutional Court’s competence of review is not affected by Declaration no. 17 on Primacy annexed to the Final Act of the Treaty of Lisbon. The foundation and the limit of the applicability of European Union law in the Federal Republic of Germany is the order to apply the law which is contained in the Act Approving the Treaty of Lisbon, which can only be given within the limits of the current constitutional order. In this respect, it is insignificant whether the primacy of application, which the Federal Constitutional Court has already essentially recognised for Community law, is provided for in the Treaties themselves or in Declaration no. 17 annexed to the Final Act of the Treaty of Lisbon.

gg) The competences that have been newly established or deepened by the Treaty of Lisbon in the areas of judicial cooperation in criminal and civil matters, external trade relations, common defence and with regard to social concerns can, within the meaning of an interpretation of the Treaty that does justice to its purpose, and must, in order to avoid imminent unconstitutionality, be exercised by the institutions of the European Union in such a way that on the level of the Member States, tasks of sufficient weight as to their extent as well as their substance remain which legally and practically are the precondition of a living democracy. In this context, the following aspects must be given particular attention:

- Due to the fact that democratic self-determination is affected in an especially sensitive manner by provisions of criminal law and law of criminal procedure, the corresponding foundations of competence in the Treaties must be interpreted strictly - on no account extensively -, and their use requires particular justification.
- The use of the dynamic blanket authorisation pursuant to Article 83.1(3) TFEU to extend the list of particularly serious crimes with a cross-border dimension “on the basis of developments in crime” is factually tantamount to an extension of the competences of the European Union and is therefore subject to the requirement of the enactment of a specific statute under Article 23.1 sentence 2 GG.

- In the area of judicial cooperation in criminal matters, particular requirements must additionally be placed on the provisions which accord a Member State special rights in the legislative procedure (Article 82.3, Article 83.3 TFEU: so-called emergency brake procedure). From the perspective of German constitutional law, the necessary measure of democratic legitimisation via the national parliaments can only be safeguarded by the German representative in the Council exercising the Member State’s rights set out in Article 82.3 and Article 83.3 TFEU only on the instruction of the Bundestag and, to the extent that this  is required by the provisions on legislation, of the Bundesrat.

- The mandatory requirement of parliamentary approval for the deployment of the armed forces abroad will continue to exist upon the entry into force of the Treaty of Lisbon. The Treaty of Lisbon does not confer on the European Union the competence to use the Member States’ armed forces without the approval of the respective Member State affected or of its parliament. It also does not restrict the possibilities of action of the German Bundestag in the area of social policy to such an extent that this would impair the principle of the social state (Article 23.1 sentence 3 in conjunction with Article 79.3 GG) in a constitutionally objectionable manner and inadmissibly curtail the democratic scope for decision-making that is required in this context.

b) There are also no decisive constitutional objections against the Act Amending the Basic Law (Articles 23, 45 and 93) (Gesetz zur Änderung des  Grundgesetzes ). A violation of democratic principles pursuant to Article 79.3 GG occurs neither by Article 23.1a GG, new version, which elaborates the right to bring a subsidiarity action as a minority right and sets the quorum at one fourth of the Members, nor by Article 45 sentence 3 GG, new version.

c) In contrast, the Act Extending and Strengthening the Rights of the Bundestag and the Bundesrat in European Union Matters infringes Article 38.1 in conjunction with Article 23.1 of the Basic Law insofar as rights of participation of the German Bundestag and the Bundesrat have not been elaborated to the constitutionally required extent. If the Member States elaborate the European law laid down in the Treaties on the basis of the principle of conferral in such a way that an amendment of the Treaty law can be brought about solely or decisively by the institutions of the European Union - albeit under the requirement of unanimity in the Council -, a special responsibility is incumbent on the national constitutional bodies in the context of participation. In Germany, this responsibility for integration must on the national level comply with the constitutional requirements made in particular under Article 23.1 GG.



COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES

PRESS RELEASE No 47/09
4 June 2009

Judgment of the Court of Justice in Case C-8/08
T-Mobile Netherlands BV and Others v Raad van bestuur van der Nederlandse Mededingingsautoriteit

A SINGLE MEETING BETWEEN COMPANIES MAY CONSTITUTE A CONCERTED PRACTICE IN BREACH OF COMMUNITY COMPETITION LAW

The presumption of a causal connection between the concerted practice and the market conduct of the participating undertakings established in the Court’s case-law must be applied by the national court
Community law prohibits agreements and concerted practices between undertakings. Under Netherlands legislation, ‘concerted practice’ means any concerted practice within the meaning of Community law.
In 2001, five operators in the Netherlands had their own mobile telephone network, namely Ben Nederland BV (now T-Mobile), KPN, Dutchtone NV (now Orange), Libertel-Vodafone NV (now Vodafone) and Telfort Mobile BV (subsequently O2 (Netherlands) BV and now Telfort).
Representatives of the five operators held a meeting on 13 June 2001. At that meeting they discussed, inter alia, the reduction of standard dealer remunerations for postpaid subscriptions, which was to take effect on or about 1 September 2001.
By decision of 30 December 2002, the Raad van bestuur van der Nederlandse Mededingingsautoriteit (the Netherlands competition authority) found that the five operators had concluded an agreement with each other or had entered into a concerted practice. Taking the view that such conduct restricted competition to an appreciable extent and was thus prohibited under national law, the Raad van bestuur van der Nederlandse Mededingingsautoriteit imposed fines on those undertakings. The latter challenged that decision.
The case went to appeal before the College van Bereop voor het bedrijfsleven (the Administrative Court for Trade and Industry), which has asked the Court of Justice to clarify the concept of concerted practice, indicating in particular the criteria to be applied when assessing whether a concerted practice pursues an anti-competitive object, to state whether the national court considering whether there is a concerted practice is obliged to apply the presumption of a causal connection established in the Court’s case-law on that matter, and to determine whether that presumption is applicable even where the concerted practice has its roots in participation by the undertakings concerned at a single meeting.
The criteria to be applied in determining whether a concerted practice pursues an anti-competitive object
First, the Court observes that the criteria laid down in the Court’s case law for the purpose of determining whether conduct has as its object or effect the prevention, restriction or distortion of competition are applicable irrespective of whether the case entails an agreement, a decision or a concerted practice. With regard to the definition of a concerted practice, the Court states that such a practice is a form of coordination between undertakings by which, without it having been taken to the stage where an agreement properly so-called has been concluded, practical cooperation between them is knowingly substituted for the risks of competition.
Next, the Court points out that it has already provided a number of criteria on the basis of which it is possible to ascertain whether a concerted practice is anti-competitive, which include, in particular, the details of the arrangements on which it is based, the objectives which it is intended to attain and its economic and legal context. In order for a concerted practice to be regarded as having an anti-competitive object, it is sufficient that it has the potential to have a negative impact on competition. In other words, it must simply be capable in an individual case, having regard to the specific legal and economic context, of resulting in the prevention, restriction or distortion of competition within the common market.
Moreover, the Court states that a concerted practice may be regarded as having an anti-competitive object even though the practice has no direct effect on the price paid by end users but relates simply to the remuneration paid to dealers for concluding postpaid subscription agreements.
Lastly, the Court points out that any exchange of information between competitors pursues an anti-competitive object if it is capable of removing uncertainties as to the anticipated conduct of the participating undertakings, including where, as in the present case, the conduct relates to the reduction in the standard commission paid to dealers. It is for the referring court to determine whether the information exchanged at the meeting held on 13 June 2001 was capable of removing such uncertainties.
Whether the national court is under an obligation to apply the presumption of a causal connection established in the Court’s case-law
The Court states that the concept of a concerted practice implies, in addition to the participating undertakings concerting with each other, subsequent conduct on the market and a relationship of cause and effect between the two. In that context, the Court has established in its case-law a presumption of a causal connection, according to which, subject to proof to the contrary, which the operators concerned must adduce, the undertakings taking part in the concerted action and remaining active on the market are presumed to take account of the information exchanged with their competitors in determining their conduct on that market.
Since any interpretation of Community law provided by the Court is binding on all the national courts and tribunals of the Member States, the national court is obliged to apply that presumption of a causal connection.
Whether the presumption of a causal connection is to be applied in cases in which the concerted action is the result of a meeting on a single occasion
The Court points out that, depending on the structure of the market, the possibility cannot be ruled out that a meeting on a single occasion between competitors may, in principle, constitute a
sufficient basis for the participating undertakings to concert their market conduct. If the undertakings concerned establish a cartel with a complex system of concerted actions in relation to a multiplicity of aspects of their market conduct, regular meetings over a long period may be necessary. If, on the other hand, as in the present case, the objective of the exercise is only to concert action on a selective basis with reference simply to one parameter of competition, a single meeting between competitors may constitute a sufficient basis on which to implement the anti-competitive object which the participating undertakings aim to achieve.
In those circumstances, what matters is not so much the number of meetings held between the participating undertakings as whether the meeting or meetings which took place afforded them the opportunity to take account of the information exchanged with their competitors in order to determine their conduct on the market in question and knowingly substitute practical cooperation between them for the risks of competition. Where it can be established that such undertakings successfully concerted with one another and remained active on the market, they may justifiably be called upon to adduce evidence that that concerted action did not have any effect on their conduct on the market in question.
Accordingly, in so far as the undertaking participating in the concerted action remains active on the market in question, there is a presumption of a causal connection between the concerted practice and the conduct of the undertaking on that market, even if the concerted action is the result of a meeting held by the participating undertakings on a single occasion.



PRESS RELEASE No 49/09
4 June 2009
Judgment of the Court of First Instance in Case T-185/07
Calvin Klein Trademark Trust v OHIM

CK CREACIONES KENNYA  unsimilar to CK CALVIN KLEIN

The absence of similarity between the conflicting signs precludes a likelihood of confusion on the part of consumers
In October 2003, the Spanish company Zafra Marroquineros, SL, filed an application for registration of the mark CK CREACIONES KENNYA at the Office for Harmonisation in the Internal Market (OHIM). Calvin Klein Trademark Trust filed a notice of opposition to registration of the mark in question on the ground that there was a likelihood that consumers would confuse it with its own trade mark.
OHIM dismissed the opposition and found that there were sufficient differences between the conflicting signs to preclude a likelihood of confusion on the part of the relevant public.
First of all, the Court points out that under the Community trade mark Regulation, upon opposition by the proprietor of an earlier trade mark, a trade mark must not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public. The more distinctive the earlier mark, the greater will be the likelihood of confusion. In the present case, it is not disputed that the goods at issue – inter alia clothing, footwear, trunks and travelling bags – are identical.
Secondly, the Court analyses the similarity of the signs in order to assess whether there is a likelihood of confusion. It finds that the figurative signs covered by the earlier registrations consist of the group of letters ‘ck’, written in upper case printed characters and also contain the words ‘calvin klein’. As for the mark applied for, it is a word mark consisting of three elements, namely the group of letters ‘ck’ followed by the words ‘creaciones’ and ‘kennya’. The Court takes the view that, because of their size, the words ‘creaciones kennya’ occupy a much more significant position than the group of letters ‘ck’ and form a syntactical and conceptual unit which dominates the whole of the mark applied for. Furthermore, the element ‘ck’ corresponds to the initial letters of the words ‘creaciones’ and ‘kennya’, thus establishing the origin of that element and explaining its presence. Owing to the way in which it is presented, that element occupies an ancillary position in relation to the element ‘creaciones kennya’.
The mark applied is dominated visually by the element ‘creaciones kennya’. The mere visual resemblance of the sole or dominant figurative element ‘ck’ in the earlier marks and the element ‘ck’ in the mark applied for does not serve to create a visual similarity between the marks at issue.
The marks are not similar phonetically since the earlier mark will be referred to by means of the group of letters ‘ck’ whereas only the words ‘creaciones kennya’ alone or the whole of the expression ‘ck creaciones kennya’ will be used to refer to the mark applied for.
Conceptually, the group of letters ‘ck’ in the mark applied for derives from the words ‘creaciones kennya’ but as regards the earlier mark that group of letters constitutes a reference to the manufacturer and designer of fashion items Calvin Klein.
The Court takes the view that the visual, phonetic and conceptual examination of the marks shows that the overall impression created by the earlier marks is dominated by the element ‘ck’ whereas that created by the trade mark applied for is dominated by the element ‘creaciones kennya’.
The Court holds that there is no similarity between the conflicting signs and that there is no likelihood of confusion between the marks at issue. Accordingly, it dismisses the action brought by Calvin Klein.




COURT OF JUSTICE OF THE EUROPEAN COMMUNITIES
PRESS RELEASE No 35/09
23 April 2009
Judgment of the Court of Justice in Case C-59/08
Copad SA v Christian Dior couture SA, Société industrielle lingerie (SIL)

THE PROPRIETOR OF A TRADE MARK CAN OPPOSE THE RESALE OF HIS LUXURY GOODS BY DISCOUNT STORES

This is particularly the case where the discount store received the goods from a licensee in contravention of a licence agreement and where that contravention damages the allure and prestigious image which bestows on them an aura of luxury
In 2000, Dior concluded a trade mark licence agreement with Société industrielle lingerie (SIL) in respect of the manufacture and distribution of luxury corsetry goods bearing the Christian Dior trade mark. That agreement states that in order to maintain the repute and prestige of the Dior trade mark SIL agrees not to sell, in particular, to discount stores outside the selective distribution network, without written agreement from Dior, and that the licensee must make all necessary provision to ensure that that rule is complied with by its distributors or retailers.
However, since it was faced with economic difficulties, SIL sold goods bearing the Dior trade mark to Copad, a company operating a discount store business. Taking the view that that resale was prohibited by the agreement, Dior brought an action against SIL and Copad for trade-mark infringement. However, the resellers pleaded exhaustion of Dior’s trade mark rights, because the goods had been put on the market in the EEA (European Economic Area) with Dior’s consent.
The French Cour de Cassation, as the court of last instance, referred questions to the Court of Justice concerning the interpretation of the Trade Mark Directive1 particularly since the licensee disregarded a provision in the licence agreement prohibiting, on grounds of the trade mark’s prestige, sale to discount stores outside the selective distribution network.
The Court holds, first, that the proprietor of a trade mark can invoke the rights conferred by that trade mark against a licensee who contravenes a provision in a licence agreement prohibiting, on grounds of the trade mark’s prestige, sales to discount stores, provided it has been established that that contravention, by reason of the situation prevailing in the case, damages the allure and prestigious image which bestows on those goods an aura of luxury.
1 Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), as amended by the Agreement on the European Economic Area of 2 May 1992 (OJ 1994 L 1, p. 3)
The directive entitles the proprietor of a trade mark to invoke the rights that the trade mark confers on him in respect of a licensee where the licensee contravenes certain provisions in the licence agreement listed in Article 8(2) of the directive, including in particular those concerning the quality of the goods. The quality of luxury goods is not only the result of their material characteristics, but also of the allure and prestigious image which bestows on them an aura of luxury. In this respect, a selective distribution system such as that at issue, which seeks to ensure that the goods are displayed in sales outlets in a manner that enhances their value, especially as regards positioning, advertising, packaging as well as business policy, contributes to the reputation of the goods at issue and therefore to sustaining the aura of luxury surrounding them.
Consequently, it is conceivable that the sale of luxury goods by the licensee to third parties outside the selective distribution network might affect the quality itself of those goods, so that, in such circumstances, a contractual provision prohibiting such sale must be considered to be falling within the scope of the trade mark directive. It is for the national court to examine whether, taking into account the circumstances of the case before it, contravention by the licensee of a provision such as the one at issue in the main proceedings damages the aura of luxury of the luxury goods, thus affecting their quality.
Next, the Court holds that a sale that takes place in disregard of a provision prohibiting resale to discount stores outside the selective distribution network may, for the purposes of the directive, be considered to have taken place without the consent of the proprietor of the trade mark where it is established that such a breach contravenes one of the provisions listed in the directive.
Even though, as a general rule, it must be considered that goods bearing the trade mark are put on the market by a licensee with the consent of the proprietor of the trade mark, the fact remains that a licence agreement does not constitute the absolute and unconditional consent of the proprietor of the trade mark to the licensee putting the marked goods on the market.
The directive expressly enables the proprietor of the mark to invoke the rights the trade mark confers on him against a licensee where the latter contravenes certain provisions in the licence agreement.
Therefore, the directive must be interpreted as meaning that where a licensee puts goods on the market in disregard of a provision in a licence agreement, this precludes exhaustion of the rights conferred by the trade mark on its proprietor for the purposes of the directive if it can be established that that provision is included in those listed in Article 8(2) of the directive.
Finally, the Court holds that damage done to the reputation of a trade mark may, in principle, be a legitimate reason, within the meaning of the directive, allowing the proprietor to oppose the use of his trade mark for further marketing of luxury goods put on the market in the EEA by him or with his consent.


From 1 May 2009 onwards trade mark protection in the EU gets cheaper and easier to obtain

On 31 March 2009 the European Commission and EU Member States have decided to lower further the fees payable to the Community agency responsible for granting EU-wide trade mark rights, OHIM (Office for the Harmonization in the Internal Market, located in Alicante, Spain), and to simplify the registration procedure. This measure, which follows an initial reduction in 2005 (IP/05/1289), will make trade mark protection much cheaper and easier to obtain for businesses operating in the EU single market, saving them some €60 million a year. It will come into force on 1 May 2009.

The fee reduction and simplification of procedure essentially consist in setting the registration fee for Community trade marks to zero. Businesses will therefore pay only an application fee, and will no longer have to pay a separate fee for registration. As a result, the processing time for the registration of a Community trade mark will also become significantly shorter. In practice this means that, instead of paying the amount of € 1750 for the application and registration of a Community trade mark, businesses will be charged only an application fee of € 1050 in future. Those who file their applications via the Internet will benefit from a greater reduction and will be charged merely an application fee of € 900 in place of the total amount of € 1600 to be paid at present. These fee reductions imply that in future businesses will pay 40% less for obtaining a Community trade mark – and as much as 44% less when using electronic means. Moreover, the individual fee for international trade mark applications and registrations designating the European Community under the Madrid Protocol will go down from € 1450 to € 870, which also corresponds to a 40% decrease.

 
 
Judgment of the Court of First Instance in Case T-191/07 (Anheuser-Busch, Inc. v OHIM)

THE COURT OF FIRST INSTANCE UPHOLDS OHIM'S DECISION NOT TO REGISTER THE WORD 'BUDWEISER' AS A COMMUNITY TRADE MARK, INTER ALIA FOR BEER, FOR THE AMERICAN BREWER, ANHEUSER-BUSCH

The right commercially to use the word ‘Budweiser’ for beer is already held in Germany and Austria by the Czech brewery, Budějovický Budvar.
In 1996, the American brewery Anheuser-Busch applied to the Office for Harmonisation in the Internal Market (OHIM) for registration of the word sign ‘BUDWEISER’ as a Community trade mark for the following goods: ‘Beer, ale, porter, malted alcoholic and non-alcoholic beverages’. The Czech brewery Budějovický Budvar brought opposition proceedings against such registration in respect of the all goods applied for. In support of its opposition, Budějovický Budvar relied on earlier international trade marks and appellations of origin including the word ‘Budweiser’, registered for beer.

OHIM rejected Anheuser-Busch’s application for a Community trade mark on the ground that the trade mark applied for was identical to the earlier international word mark BUDWEISER, protected in particular in Germany and Austria. OHIM found that the goods indicated in the American brewery’s application were essentially identical to the goods ‘beer of any kind’ covered by the earlier trade mark. OHIM also upheld the Czech brewery’s opposition for malted non-alcoholic beverages, in view of the identity of the marks and the obvious similarities of the goods concerned. Anheuser-Busch brought an action before the Court of First Instance against the OHIM decision.

The Court of First Instance finds, first, that Anheuser-Busch was in a position to put forward its observations on the validity of the earlier trade mark during the proceedings before OHIM and that, accordingly, its right to be heard was not infringed. It notes in that regard that Budějovický Budvar duly proved the validity of that trade mark during the proceedings before OHIM.
In addition, the Court of First Instance rejects Anheuser-Busch’s argument that OHIM should not have taken account of documents furnished late by Budějovický Budvar in support of its opposition. OHIM has a wide discretion to decide whether or not to take such documents into consideration. Next, the Court of First Instance points out that Budějovický Budvar submitted advertisements and invoices bearing the earlier trade mark, addressed to customers in Germany and Austria, with a view to marketing the beer during the five years preceding the publication of Anheuser-Busch’s application for a Community trade mark.

The Court of First Instance states that those advertisements and invoices constitute proof of genuine use by the Czech brewery of the earlier trade mark. Accordingly, Budějovický Budvar was entitled to rely on that trade mark for the purpose of opposing registration, inter alia for beer, of the trade mark applied for by Anheuser-Busch. Lastly, in respect of malted non-alcoholic beverages, the Court of First Instance states that, as those beverages are similar to the goods ‘beer of any kind’ covered by the earlier trade mark, Anheuser-Busch’s application for registration must also be rejected in their regard. In that context, the Court of First Instance points out that ‘beer of any kind’ includes non-alcoholic beer, which is, by definition, a malted non-alcoholic beverage.

Such similarity gives rise to a likelihood of confusion on the part of German and Austrian consumers, since they may believe that malted non-alcoholic beverages sold under the trade mark BUDWEISER come from the same source as beer sold under the trade mark BUDWEISER.

For all these reasons, the Court dismisses Anheuser-Busch’s action in its entirety. An appeal, limited to points of law only, may be brought before the Court of Justice of the European Communities against a decision of the Court of First Instance, within two months of its notification.

Pressrelease No° 25/09 of  25 March 2009

New Record for International Trademark Registrations in 2008 but Signs of Slowdown at Year End

Geneva, March 10, 2009
Press Release PR/2009/584

International trademark activity remained robust overall in 2008 with WIPO receiving a record 42,075 applications under the 84-member Madrid system for the international registration of trademarks (“the Madrid system”), representing a 5.3% rate of growth. Filing activity was stronger in the first six months of the year (+6.9% compared to the same period in 2007) than in the second half of 2008 (+3.9%) mirroring a slowdown in global economic conditions.

Applicants from Germany topped the list of top filers for the 16th consecutive year, followed by users in France, the United States of America (USA), the European Community (EC), Switzerland, Italy, Benelux, China, Japan and Austria. China remained the most designated country in international trademark applications followed by the Russian Federation, reflecting sustained interest by foreign companies in trading in those countries.

Mr. Francis Gurry, WIPO Director General, said that the continued growth in the use of the international trademark system underlines the pivotal importance of trademarks to business, particularly within challenging economic times. “Trademarks play a key role in engendering consumer confidence, an important factor for businesses facing the challenges of the current economic slowdown.” Trademarks enable companies to build and maintain their reputation in the market place and to add value to their commercial operations. “Even in economically difficult times, businesses continue to recognize that a trademark is a smart investment in a company’s reputation and long-term sustainability,” Mr. Gurry added. 

Regional and National Filing Trends

The 27 countries of the European Union accounted for over half of the international applications received – some 27,242 – in 2008. This figure includes both the international applications filed through the national trademark offices of the countries concerned and those filed through OHIM which rose to 3,600 international applications representing an increase of 6.8 per cent over 2007. Since October 2004, applicants from the EC have the option to file their international applications either through their national trademark office or through the EC’s regional trademark office (OHIM) in Alicante.

Users in Germany filed 6,214 international applications representing 14.8% of the total and a growth rate of 2%. Applicants in France accounted for 10% of the total filing 4,218 international applications representing 7.3% increase on figures for 2007. Businesses in the United States of America (USA) filed the third largest number of applications – 3,684 or 8,8% of the total number showing a slight decrease (-1.5%) over 2007. OHIM ranked fourth with 3,600 international applications marking an increase of 6.8% over 2007. Switzerland moved into 5th position with an 8.6 % growth rate (2,885 international applications), overtaking Italy which fell to 6th position with 2,763 international applications or 3.7% growth.

A number of countries demonstrated significant growth rates in 2008 and improved their rankings. Japan, with 29.9% growth and 1,278 international applications moved up to 9th place from 12th in 2007. The Russian Federation (+33.9%) ranked 11, up two places from 13th in 2007. Spain retained its 14th place with 14.2 % growth and Turkey its 15th position with a 24.1% rate of growth. The Czech Republic, with a growth rate of 12% moved up to 16th from 17th place. Poland with a 41.5% rate of growth moved up 5 places to rank 19. Slovenia enjoyed a rate of growth of 62.6 % to move up seven places to 23rd position. Latvia moved into 31st position with a 48.7% growth rate, followed by Liechtenstein in 32nd position with 14.2% growth; and Singapore in 33rd position with 13.7% growth. Greece saw a growth rate of 46.3% moving up from 39th to 34th; and Lithuania moved into 38th position with a 19.2% growth rate.

Developing countries accounted for 2,133 filings in 2008, representing 5.1% of total filings. The developing country with the highest growth rate in 2008 was Viet Nam with a 51.6% growth rate.

The total number of international registrations in force reached 503,650 (this includes the record figure of 40,985 registrations made in 2008, representing a 6.5 per cent increase on 2007). These registrations belong to 166,398 right holders who are mostly small and medium-sized enterprises.

Top Holders and Top Applicants

With 216 international trademark applications, Lidl from Germany was the largest filer in 2008, followed by Nestlé (Switzerland), Henkel (Germany), Boehringer Ingelheim (Germany), Novartis (Switzerland), Janssen Pharmaceutica (Belgium), BSH Bosch und Siemens (Germany), Zhejiang Medicine Company (China), L’Oréal (France), Deutsche Telekom (Germany), AstraZeneca (Sweden), KRKA (Slovenia), Glaxo Group (UK), Beiersdorf (Germany), MIP Metro (Germany), Hofer Kommanditgesellschaft (Austria), 3 Suisses International (France), ITM Enterprises (France), Egis Gyógyszergyár (Hungary), Actavis Group PTC (Iceland). In 2008, a Chinese firm, Zheijiang Medicine Company, broke into the top 10 ranking for the first time.

Henkel (Germany), with a total of 2,731, holds the largest number of international trademark registrations under the Madrid system. The top twenty holders by the end of 2008 were: Henkel (Germany), Janssen Pharmaceutica (Belgium), Novartis (Switzerland), L’Oréal (France), Nestlé (Switzerland), Unilever (Netherlands), Sanofi-Aventis (France), ITM Enterprises (France), Siemens (Germany), BASF (Germany), Lidl (Germany), Biofarma (France), Richter Gideon (Hungary), Boehringer Ingelheim (Germany), Syngenta (Switzerland), Philips (Netherlands), Kraft Foods (Switzerland), Ecolab (Germany), Merck (Germany) and Deutsche Post Immobilienservice (Germany).

Top Designated Countries

A record 378,894 new designations (made in international registrations or as subsequent designations) of Madrid Union members were notified in 2008, representing a 2.3% increase over 2007. When submitting an international trademark application, applicants must designate those member countries in which they want their mark to be protected. Applicants can also extend the effects of an international registration to other members at a later date by filing a subsequent designation. In this way, the holder of an international registration can expand the geographical scope of the protection of a mark in line with evolving business needs.

For the fourth consecutive year, China was the most designated country. With 17,829 designations, it accounted for 4.7% of the total number of new designations and enjoyed a 6.9% increase in such designations over 2007. The second most designated country was the Russian Federation with 16,768 designations (+8.5%), followed by the USA with 15,715 designations (+7.5%), Switzerland with 14,907 designations (+2.6%), the European Community with 14, 502 (+13.8%) and Japan with 12,748 designations (+3.7%).

The EC continues to be a favorite target market for designations. Having received 14,502 designations in 2008 (+13.8%), the EC confirms its 5th position in the ranking of most designated members of the Madrid Union.

Some of the countries that have moved up in the ranking of most designated countries compared to 2007 are Ukraine (from 8th to 7th place), Singapore (from 14th to 12th place), Belarus (from 19th to 15th place), Serbia (from 21st to 16th place), Montenegro (from 35th to 23rd place) and Viet Nam (from 29th to 24th place).

Profile and Costs of Registrations Recorded in 2008

In 2008, on average, 8 Madrid Union members were designated per registration by applicants seeking international trademark protection under the Madrid system and 59% of the registrations recorded in 2008 contained one to five designations.

In submitting a trademark application, an applicant has to specify the goods or services to which the trademark will be applied in accordance with an international classification system known as the “Nice Classification.” The most popular classes of goods and services in international trademark registrations recorded in 2008 were Class 9 (which covers, e.g., computer hardware and software) representing 8.5% of the total, Class 35 (which covers services such as office functions, advertising and business management) which represented 7.1% of the total, Class 42 (which covers services provided by e.g., scientific, industrial or technological engineers and computer specialists) which represented 5.6% of the total, Class 25 (which covers clothing, footwear and headgear) representing 4.9% of the total and Class 41 (which covers services in the area of education, training, entertainment, sporting and cultural activities) representing 4.5% of the total.

In 2008, applicants paid on average 3,734 Swiss francs for an international registration; for 80% of the registrations the fees paid were less than 5,000 Swiss francs.

The number of trademark renewals went up by 11.4 per cent to reach a total of 19,472. The Madrid system allows for the central administration of an international trademark portfolio, as it provides for procedures which enable trademark holders to record modifications to international registrations (for example, changes of ownership, changes in name or address of the holder or changes in the appointment of the representative of the holder) through the submission of a single request at WIPO. Modifications recorded in 2008 totaled 91,300 representing a 7.1% increase over 2007.

Development of the Madrid System

Membership of the Madrid Union expanded from 81 to 84 members in 2008 with the accession of Ghana, Madagascar and Sao Tome and Principe. An expanding membership and an ever wider geographical spread of the system make it a more attractive option for businesses operating in international markets.

Madrid system operations became fully trilingual (English, French and Spanish) in 2008 meaning that an international application can now be filed in any of these, irrespective of which treaty or treaties governs the application. The Madrid Assembly also commissioned a study on the implications of introducing additional filing languages to the system.

On the legal side, users saw the repeal of the “safeguard clause”. This means that for states bound by both the Madrid Agreement and the Madrid Protocol - the two treaties which govern the Madrid system - only the provisions of the Protocol, the most recent and flexible of the two treaties, will apply. The Madrid Protocol relaxes certain provisions of the Agreement, in order to allow adherence by states and intergovernmental organizations (IGOs) whose trademark registration systems do not match with the provisions of the Agreement, in particular in respect of the fees to be paid by applicants and the applicable time-limits.

An IT modernization program was launched in 2008 which will further enhance the services available under the Madrid system. This will allow WIPO and national/regional trademark offices to improve and expand electronic communication of international applications and notifications under the procedures of the Madrid system, as well as to upgrade the web-based information products and other services available on the WIPO website, such as the ROMARIN database and the WIPO Gazette of International Marks. New features allow users to track their international registrations in designated countries.



2008年国际商标注册创下新记录年底出现放缓迹象
日内瓦, 10-03-2009
PR/2009/584

2008年的国际商标活动总体仍然十分活跃，世界知 识产权组织（WIPO）有84个成员的商标国际注册马德里体系（“马德里体系”）收到了创记录的42,075件申请，增长率为 5.3%。当年前6个月的申请情况（与2007年同期相比+6.9%）好于下半年（+3.9%），反映了全球经济形势的放缓。

来自德国的申请人连续第16年名列申请量榜首，随后是法国、美利坚合众国（美国）、欧洲共同体（欧共体）、瑞士、意大利、比荷卢、中国、日本和奥地利的用户。中国仍是国际商标申请指定最多的国家，其次是俄罗斯联邦，这反映了外国企业在这些国家开展业务的长期兴趣。

WIPO总干事弗朗西斯•加利先生说，国际商标体系使用量的持续增长，反映了商标在商业中的核心意义，特别是在充满挑战的商业时期的重要性。 “商标在培养消费者信心方面具有重要作用，这对面临目前经济减缓局面的企业是一个重要因素。”商标让企业能够在市场中建立并维持 声誉，为商业活动增加价值。加利先生还说：“即使在经济困难时期，企业仍然认识到商标是一项在企业声誉和长期可持续性上的明智投资。 ”

地区与国家申请趋势
2008年，欧洲联盟27个国家在收到的国际申请中占了一半以上，约有27,242件。这一数字包括经由有关国家的国家商标局提交的国际申请和通过 OHIM提交的国际申请。通过OHIM提交的国际申请增至3,600件，比2007年增加6.8％。自2004年10月开始，欧共体的申请人在提交国际申 请时，既可以通过本国商标局，也可以通过欧共体设在阿利坎特的地区商标局（OHIM）。

德国用户提交了6,214件国际申请，占总数的14.8%，增长率为2%。法国申请人占总数的10%，有4,218件国际申请，比2007年的数字增长了 7.3%。美利坚合众国（美国）企业的申请量名列第三位，有3,684件，占总数的8.8%，与2007年相比略有减少（-1.5%）。OHIM名列第 四，有3,600件国际申请，比2007年增长6.8%。瑞士进至第五位，增长8.6%(2,885件国际申请)，超过了意大利。意大利退至第六位，有 2,763件国际申请，增长3.7%。

一些国家在2008年出现了显著增长，提高了排名。日本增长了29.9%，有1,278件国际申请，从2007年的第十二位进至第九位。俄罗斯联邦（+ 33.9%）排名第十一，比2007年的第十三位前进了两位。西班牙保持了第十四位，增长14.2%，土耳其保持在第十五位，增长24.1%。捷克共和国 增长率为12%，从第十七位进至第十六位。波兰增长率41.5%，前进了五位，排名十九。斯洛文尼亚的增长率达到62.6%，前移七位至第二十三。拉脱维 亚增长率48.7%，移至第三十一位，随后是第三十二位的列支敦士登，增长14.2%，以及第三十三位的新加坡，增长13.7%。希腊增长率46.3%， 从第三十九位进至第三十四位，立陶宛移至第三十八位，增长率19.2%。

发展中国家2008年有2,133件申请，占总申请的5.1%。发展中国家2008年增长率最高的是越南，增长率为51.6%。

有效国际注册总量达到503,650件(其中包括2008年创记录的40,985件注册，比2007年增长6.5％)。这些注册属于166,398个权利人，其中多数是中小型企业。

排名在前的注册人和申请人
德国的利得是2008年国际商标申请量排在第一位的申请人，有216件申请。其次是雀巢（瑞士）、汉高（德国）、勃林格殷格翰（德国）、诺华（瑞士）、杨 森制药（比利时）、博世和西门子（德国）、浙江医药公司（中国）、欧莱雅（法国）、德国电信（德国）、阿斯利康（瑞典）、KRKA（斯洛文尼亚）、葛兰素 集团（英国）、拜尔斯道夫（德国）、MIP Metro（德国）、赫佛公司（奥地利）、3 Suisses International （法国）、ITM企业（法国）、Egis制药（匈牙利）、阿特维斯集团（冰岛）。2008年，中国企业首次进入排名前十，该企业是浙江医药公司。

汉高公司（德国）是持有马德里体系国际商标注册最多的注册人，共有2,731件注册。到2008年底，排在前20位的注册人是：汉高（德国）、杨森制药 （比利时）、诺华（瑞士）、欧莱雅（法国）、雀巢（瑞士）、联合利华（荷兰）、赛诺菲–安万特（法国）、ITM企业（法国）、西门子（德 国）、巴斯夫（德国）、利得（德国）、　Biofarma（法国）、吉瑞大药厂（匈牙利）、勃林格殷格翰（德国）、先正达（瑞士）、飞利浦（荷兰）、卡夫 食品（瑞士）、Ecolab（德国）、默克（德国）和德国邮政不动产服务（德国）。

被指定最多的国家
2008年发出通知的对马德里联盟成员的新指定（在国际注册中指定或后期指定）为378,894件，比2007年增长2.3%。提交国际商标申请时，申请 人必须指定其要求对商标进行保护的成员国。申请人还可以在以后通过后期指定，将国际注册的效力延伸至其他成员。这样，国际注册的注册人可以根据不断变化的 商业需求，扩大商标保护的地理范围。

中国连续第四年成为被指定最多的国家，共被指定17,829次，占新增指定总数的4.7%，比2007年新增指定多6.9%。被指定最多的国家其次是俄罗 斯联邦，共有16,768件指定（+8.5%），接下来是美国（15,715件指定，+7.5%）、瑞士（14,907件指定，+2.6%）、欧洲共同体 （14,502件指定，+13.8%）和日本（12,748件指定，+3.7%）。

欧共体仍然是被指定较多的目标市场，2008年共收到14,502件指定（+13.8%），巩固了其在马德里联盟被指定最多的成员排名中第五的位置。

与2007年相比，一些国家在被指定最多的国家排名中有所上升：乌克兰（由第八位升至第七位）、新加坡（由第十四位升至第十二位）、白俄罗斯（由第十九位 升至第十五位）、塞尔维亚（由第二十一位升至第十六位）、黑山（由第三十五位升至第二十三位）和越南（由第二十九位升至第二十四位）。

2008年新登记国际注册的概况和费用
2008年，通过马德里体系申请国际商标保护的申请人平均每件注册指定8个马德里成员。2008年登记的注册中，有59%包含一项至五项指定。

申请人在提交商标申请时，必须根据一种称为“尼斯分类”的国际分类制度指明商标将用于的商品或服务。2008年登记的国际商标注 册中，最受欢迎的商品和服务分类是第9类（包括计算机硬件和软件等），占总量的8.5%；第35类（包括办公事务、广告和商业管理等服务），占总量的 7.1%；第42类（包括科学、工业或技术工程师和计算机专业人员提供的各种服务），占总量的5.6%；第25类（包括服装、鞋、帽），占总量的 4.9%；以及第41类（包括教育、培训、娱乐、文体活动领域的各种服务），占总量的4.5%。

2008年，申请人平均为每件国际注册支付3,734瑞士法郎；有80%的注册支付的费用少于5,000瑞士法郎，商标续展量增长了11.4%，共计 19,472件。通过马德里体系，可以对国际商标组合进行集中管理。它规定了多种程序，让商标注册人可以提交一份申请，在WIPO登记国际注册的各种变更 （如注册人变更、注册人名称或地址变更、注册人指定代理人的变更）。2008年登记的变更总数为91,300件，比2007年增加7.1%。

马德里体系的发展
2008年，随着加纳、马达加斯加及圣多美和普林西比的加入，马德里联盟的成员从81个增至84个。成员数量的增加，体系地理覆盖面的进一步扩大，提高了其对在国际市场开展经营的企业的吸引力。
马德里体系在2008年全面实行了三语制度（英语、法语和西班牙语）。也就是说，国际申请不论受哪部条约约束，现在均可以用其中任何一种语言提交。马德里大会还决定，进行一项关于在该体系增加其他申请语言有哪些影响的研究。

法律方面，“维护条款”被废止。以后，对于同受《马德里协定》和《马德里议定书》（马德里体系所适用的两部条约）约束的国家，只 适用《议定书》的规定――《议定书》是两部条约中最新、最灵活的一部。《马德里议定书》放松了《协定》的某些规定，以便让那些商标注册制度与《协定》的规 定衔接不好，特别是在申请人应付费用和应适用时限方面衔接不好的国家和政府间组织（IGO）能够加入。
2008年启动了一项信息技术现代化计划，将进一步加强马德里体系提供的服务。这将让WIPO和各个国家/地区商标局完善并扩大国际申请及马德里体系各种 程序通知的电子通信，并升级WIPO网站上提供的网页信息产品和其他服务，如ROMARIN数据库和《WIPO国际商标公告》。新功能允许用户跟踪其国际 注册在被指定国家的情况。


THE MERE APPROVAL BY ONE MEMBER STATE OF A QUALIFICATION AWARDED BY ANOTHER MEMBER STATE DOES NOT CONSTITUTE A ‘DIPLOMA’ GIVING ACCESS TO A REGULATED PROFESSION IN THE LATTER STATE

By judgment of the Court of Justice in Case C-311/06 of 29 January 2009 (Consiglio degli Ingegneri v. Ministero della Giustizia, Marco Cavallera) it was decided that the Member States remain competent to fix the level of qualification necessary to guarantee the quality of professional services provided within their territory.

The Directive (1) on the system for the recognition of diplomas gives any applicant who holds a ‘diploma’ allowing him to pursue a regulated profession in a Member State the right to pursue that profession in any other Member State. The pursuit of the profession of engineer in both Italy and Spain is however conditional on possession of a university diploma and registration in the register of the relevant professional body. In addition, the Italian system, unlike that in Spain, provides for a State examination which a candidate must pass in order to be entitled to pursue the profession.

Mr Cavallera, an Italian national, is the holder of a mechanical engineering qualification awarded in 1999 by the University of Turin (Italy) after three years’ education and training. In 2001 he applied for, and obtained, homologation in Spain of his Italian qualification, that is to say, approval of his Italian qualification allowing him to accede to the regulated profession. On the basis of the certificate of homologation, Mr Cavallera enrolled in the register of one of the ‘colegios de ingenieros técnicos industriales’ in Catalonia, in order to be entitled to pursue in Spain the regulated profession of industrial technical engineer, specialising in mechanical engineering. Mr Cavallera has not worked professionally outside Italy and has not followed any course of study or taken any examinations under the Spanish education system. Likewise, he has not taken the State examination provided for under Italian legislation for the purpose of being entitled to pursue the profession of engineer.

In 2002, on application by Mr Cavallera, the Italian Ministero della Giustizia (Ministry of Justice) recognised the validity of the Spanish certificate for the purpose of his enrolment in the register of engineers in Italy. The Consiglio Nazionale degli Ingegneri (National Council of Engineers) challenged that decision, arguing that, under the Directive and the relevant national legislation, the Italian authorities could not recognise Mr Cavallera’s Spanish certificate, since such recognition would have the effect of dispensing him from the State examination required under Italian law. The Consiglio di Stato, before which, as the court of final instance, the case has now come, asks the Court of Justice whether Directive 89/48 may be relied on by Mr Cavallera for the purpose of gaining access to the profession of engineer in Italy.

The Court declares that, according to the actual definition in the Directive itself, a ‘diploma’ does not include a certificate issued by a Member State which does not attest any education or training covered by the education system of that Member State and is not based on either an examination taken or professional experience acquired in that Member State. The application of the Directive in such circumstances would be tantamount to allowing a person who has merely obtained a qualification in the Member State in which he studied, which does not in itself provide access to that regulated profession, nonetheless to gain access to that profession, even though the homologation certificate obtained elsewhere provides no evidence that the holder has acquired an additional qualification or professional experience. That would be contrary to the principle, enshrined in the Directive, that Member States reserve the option of fixing the minimum level of qualification necessary to guarantee the quality of services provided within their territory.

(1) Council Directive 89/48/EEC of 21 December 1988 on a general system for the recognition of higher-education diplomas awarded on completion of professional education and training of at least three years’ duration (OJ 1989 L 19, p. 16).

Source: Press Release No 06/09 of 29 January 2009


Figurative Word and Device Marks with identical word not confusingly similar

By judgement of the Court of First Instance in Luxembourg of 18 December 2008  - Case T‑287/06 - the court confirmed that under Article 8(1)(b) of Regulation No 40/94, a  trade mark cannot be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two trade marks, a likelihood of confusion on the part of the public does exist in the territory of the earlier protected trade mark. According to established case-law, the risk that the relevant public might believe that the goods or services covered by the marks come from the same undertaking or  from economically-linked undertakings, constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally on the basis of the perception that the relevant public has of the signs and the goods or services in question and taking into account all factors relevant to the circumstances of the case ([Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819 and Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821]). That global assessment takes account, in particular, of awareness of the mark on the market, and of the degree of similarity between the marks and between the goods or services covered. In that respect, it implies some interdependence between the factors taken into account, so that a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507 and Lloyd Schuhfabrik Meyer). Further, the perception of the marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. For the purposes of that global assessment, the average consumer of the goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should also be taken of the fact that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Lloyd Schuhfabrik Meyer). In the present case, the relevant public comprised the average consumers of the Member States in which the earlier sign is protected. It is clear from the case-law that the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (see judgment of 11 July 2006 in Case T‑247/03 Torres v OHIM – Bodegas Muga (Torre Muga), and case-law cited). Further, according to established case-law, a compound trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the compound mark, unless that component forms the dominant element within the overall impression created by the compound mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it. .

However, that approach does not amount to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole. In the present case, the earlier mark consists of the word ‘torres’, written in capital letters and positioned above a coat of arms on which are represented three towers, whereas the mark applied for consists of the representation of one tower under which appears the phrase ‘torre albéniz’, written in italics and in a particular letter font. For the purposes of comparison of the signs at issue, the applicant has put forward various arguments designed to establish that the word ‘torre’ constitutes the dominant element in the mark applied for. In light of the relevance of that factor to the assessment of the signs’ similarity, those arguments must be examined before a comparison of the signs at issue is undertaken. In relation to the effect which recognition of the fact that the TORRES sign is well known might have on identification of the dominant element in the mark applied for and, consequently, on the similarity of the marks at issue, the fact that an earlier mark is well known may strengthen the distinctiveness of the identical or similar element in a compound mark with the result that such element becomes the dominant element.

However, that does not apply in the present case, because in view of the applicant’s claim tha  the earlier TORRES marks being well known throughout the European Union and  the word ‘torre’ being placed in younger mark, the relevant consumer will pay particular attention to that word and disregard the other components of the younger  mark,  it must be stated that, while, in order to assess the dominant character of one or more components of a complex trade mark, account may, accessorily, be taken of the relative position of the various components within the arrangement of such a mark (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335), the relative position does not in all circumstances make one element of a mark dominant while removing all significance in the overall impression from other elements being components of that mark. In the present case, the fact that the word ‘torre’ is placed first in the mark applied for does not mean that the word placed second, namely ‘albéniz’, is insignificant in the overall impression produced by that mark, in particular phonetically and conceptually. On the contrary, the decisive factor in the distinctiveness of the mark applied for is the combination of the words ‘torre’ and ‘albéniz’, which form, together, a unique logical and conceptual unit. Consequently, even if the earlier mark was well known, the existence of the other components of the mark applied for cannot be ignored. There is no basis for the proposition that the average consumer who is reasonably well informed and reasonably observant and circumspect will systematically disregard the second part of the word element of a mark to the point of remembering only the first part, as claimed by the applicant. That is more particularly true in the alcoholic beverages sector, where consumers are accustomed to the practice of goods being designated by marks which include several word elements. In the present case, the earlier well known TORRES sign is not identical to the element ‘torre’ in the mark applied for, since that element does not end with the letter ‘s’. Further it must be noted that, first, the word element ‘torre’ in the mark applied for is commonly used to designate the goods concerned and, secondly, that word is combined with the element ‘albéniz’ in such a way that they form together a logical and conceptual unit which has a decisive effect on the capacity of the mark applied for to distinguish the goods which it designates. Given those factors, it cannot be held that the word ‘torre’ renders the other components of the compound mark insignificant in the overall impression produced by the mark, even though that element has some degree of similarity with the highly distinctive TORRES sign.

Regarding the alleged inconsistency between  the Board of Appeal’s finding that the expression contained in the younger mark  forms a unique logical and conceptual unit and the Board’s finding that the word ‘albéniz’ occupies a dominant and distinctive position in the younnger mark  it must be held that the relevant public will perceive the younger  mark as a syntactic unit, irrespective of the understanding of that term. For that part of that public, more particularly Spanish, Portuguese or Italian, which understands the meaning of those words or expression, it is probable that the word ‘torre’ is less important and that the second part of the mark applied for, which introduces a specific feature and evokes a place or a person, is more dominant. In light of the foregoing, it must be held, for the purposes of the comparison of the signs at issue, that the Board of Appeal did not err in law by declining to hold that the word ‘torre’ was the dominant element in the impression produced by the mark applied for.

Visually, while comparison of the signs at issue reveals a coincidence of the first five letters of the single element in the TORRES sign and the element ‘torre’ in the mark applied for, the Board of Appeal was correct to find that the overall visual impression produced by each of the signs at issue was different. First, the element ‘torre’ in the mark applied for is not identical to the TORRES sign, since the latter ends with the letter ‘s’ indicating a plural. Next, while the earlier mark is composed of the word ‘torres’, written in capital letters and positioned above a coat of arms on which are represented three towers, the mark applied for consists of the representation of one tower beneath which appears the expression ‘torre albéniz’, written in italics and in a particular letter font. While it may be considered, as is claimed by the applicant, that in the mark applied for the figurative element is of secondary importance as compared with the word element, which is much more likely to differentiate the designated goods and to attract the consumer’s attention, it is clear that in the mark applied for the word element ‘torre albéniz’ alone is, on any view of the matter, sufficiently distinct from the TORRES sign to ensure that, visually, the differences as perceived by the consumer are greater than the similarities. That conclusion is not affected by the fact, relied on by the applicant, that the public’s attention will focus as least as intensely on the first part of the word element of the mark applied for as on its second part.

Phonetically, the earlier sign consists of a single word, composed of two syllables ‘to’ and ‘rres’, whereas the mark applied for comprises two words representing a total of five syllables, namely ‘to’, ‘rre’, ‘al’, ‘bé’ and ‘niz’. That being the case, the fact that the mark applied for contains almost all of the earlier mark, except for the last letter ‘s’, cannot outweigh the phonetic differences between the signs when each is considered as a whole. It must therefore be held that the Board of Appeal was correct to decide that the signs at issue were, phonetically, clearly different. That assessment cannot be invalidated by the applicant’s other arguments on this point. Even though it cannot be denied that one part of the two marks at issue is clearly similar, it remains the case that that fact is cancelled out by manifest phonetic differences between the two signs, whether in the number of syllables to be pronounced or in the presence of the word ‘albéniz’. The Court must therefore reject the applicant’s argument that the coincidence of the syllables ‘to’ and ‘rre(s)’, allegedly accentuated by their being placed first in the two marks at issue, gives them a greater attractiveness, further enhanced by the fact that the syllables ‘to’ and ‘rre(s)’ are more difficult to pronounce than the other word which is a component of the mark applied for. As stated in paragraph 55 above, the words ‘torre’ and ‘albéniz’ form a unique logical and conceptual unit. No evidence has been produced to support the conclusion that that unit is likely to have significantly less strength when it is pronounced. Further, the applicant has in no way substantiated the argument that the syllables ‘to’ and ‘rre(s)’ are those which are the more difficult, for the relevant consumer, to pronounce, because of the double ‘r’. On that point, it must be stated that words containing a double ‘r’ are found in the majority of the relevant countries and, consequently, it has not been established that pronunciation of that sound is difficult. In addition, pronunciation of the syllable ‘bé’, in the word ‘albéniz’, is clearly stressed and could not go unnoticed in the phonetic whole produced by pronunciation of the mark applied for. The same is true of the last syllable ‘niz’.

Regarding the conceptual similarity a distinction must be made between the impression produced by the signs at issue in countries where consumers know the meaning of the word ‘torre’, namely in Spain, Italy and Portugal, and the impression produced in other countries.  For countries where consumers know the meaning of the word ‘torre’, the Board of Appeal did not err by holding that the ideas suggested by the word ‘torres’ and the expression ‘torre albéniz’ are different. Whereas the word ‘torres’ evokes the idea of towers in the plural the second word of the mark is associated with the famous Spanish musician. While there is some degree of similarity the frequent use of the word ‘torre’ to designate the goods in Spain, Italy and Portugal will cause consumers in those countries not to overlook the element ‘albéniz’ in the mark applied for and, consequently, to be more alert to the conceptual difference between the signs. In countries where the meaning of the word ‘torre’ is unknown the conceptual similarity is of limited relevance. In that regard, the applicant claims that the majority of European consumers do not understand the meaning of the word ‘torre’ and that it is impossible to hold, on the basis of the perception of a minority of the intended public, that there are conceptual differences between the signs at issue. It must however be observed that the fact that the conceptual comparison of the signs at issue is of limited relevance in the majority of European Union countries does not preclude account being taken of the conceptual differences between the signs at issue in countries where the meaning of that word is known by the public.

Therefor it must be held that the Board of Appeal was right to conclude that the differences between the signs at issue prevailed, visually and phonetically, for all the consumers concerned, and, conceptually, for the Spanish, Italian and Portuguese public. It is clear from the comparison of the signs at issue that the overall impression produced by them is different. The mere coincidence of the first five letters of the earlier sign and the element ‘torre’ in the mark applied for does not alter the finding that, in the overall impression, the differences between the signs are greater than the weak points of similarity. In light of the differences between the signs at issue, the Board of Appeal was correct to hold that there was no likelihood of confusion between them, notwithstanding the fact that the goods concerned were identical. When making an overall assessment of the marks at issue, the visual, aural and possible conceptual differences between the signs at issue are sufficient, in spite of the identity of the goods designated and the fact that they belong to the same sector of production and marketing, to preclude the resemblances between the signs at issue from giving rise to a likelihood of confusion in the mind of the average consumer (see, to that effect, Torre Muga and case-law cited). The fact that the TORRES sign is well known in all the relevant countries cannot call in question that conclusion. While there is established case-law that the more distinctive the earlier mark, the greater will be the likelihood of confusion, it must be emphasised that a likelihood of confusion presupposes that the signs are identical or similar. The fact that a mark is well known is one factor which, far from giving rise, in itself, to a likelihood of confusion, must be taken into account when determining whether the similarity between the signs or between the goods and services is sufficient to give rise to a likelihood of confusion. In the present case, although the Board of Appeal recognised that the TORRES sign was well known in Spain, or even in the other Member States where it is protected, the comparison of the signs at issue none the less revealed that the overall impression produced by the mark applied for was very different from that produced by the earlier mark. That being the case, the high distinctiveness of the earlier sign resulting from the public’s knowledge of it on the market cannot, by itself, disturb the conclusion that there is no likelihood of confusion.

That conclusion is also not affected by the applicant’s argument referring to the appellation of origin containing the expression ‘torres vedras’, to the effect that the Community legislature more specifically recognised that a name made up of the words ‘torres’ and ‘vedras’ could be confused with the TORRES marks, in spite of the presence of the second word, ‘vedras’, and accordingly inserted Article 23a in Commission Regulation (EEC) No 3201/90 of 16 October 1990 laying down detailed rules for the description and presentation of wines and grape musts (OJ 1990 L 309, p. 1) in order to avoid that possibility. In that regard, the legislation to which the applicant refers deals with provisions relating to quality wines produced in specific regions (‘quality wines p.s.r.’) and provisions on the description and presentation of wines, more particularly labelling. However, while it is true that the Community legislature recognised a possible risk of confusion with a number of well known marks when a new quality wine in the ‘quality wines p.s.r.’ category appears and therefore states how the name of the specific region must be specified on the label, the applicant’s reference to that fact is, all the same, not a serious argument that there was a likelihood of confusion in the present case and that, therefore, a mark applied for containing the word ‘torre’ was not to be registered.

As regards the applicant’s argument that its earlier marks constitute a ‘family of marks’ or a ‘series of marks’, which can increase the likelihood of confusion with the mark applied for, such a possibility was recognised in BAINBRIDGE and confirmed in Case C‑234/06 P Il Ponte Finanziaria [2007] ECR I‑7333. According to that case-law, there can be said to be a ‘series or a ‘family’ of marks when either those earlier marks reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of the same prefix or suffix taken from an original mark . In such circumstances, a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the series where the trade mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered  by it have the same commercial origin as those covered by the earlier marks, or a related origin. Such a likelihood of association between the trade mark applied for and the earlier marks in a series, which could give rise to confusion as to the commercial origin of the goods identified by the signs at issue, may exist even where the comparison between the trade mark applied for and the earlier marks, each taken individually, does not prove the existence of a likelihood of direct confusion. When there is a ‘family’ or a ‘series’ of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for and considers erroneously that that trade mark is part of that family or series of marks. However according to the cited case-law  likelihood of confusion based on the existence of a family of earlier marks can be pleaded only, if  two conditions are satisfied. The earlier marks forming part of the ‘family’ or ‘series’ must be present on the market  and the younger trade mark must - aside of being similar to the marks belonging to the series - display characteristics capable of associating it with the series. That might not be the case, where the element common to the earlier serial marks is used in the younger trade mark in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content. In the present case the common element of the earlier word and figurative marks comprises the word ‘torres’ and/or the representation, in various forms, of a three towers. It follows that the constant element in the earlier marks, both in word form and figuratively, is the presence of three  towers. Apart from the word torres and/or the representation of three towers the earlier marks do not show in a particular and unvarying form any characteristics capable of leading the relevant consumer to associate the younger mark  with all of the earlier marks conceived as a ‘family’ or ‘series’ of marks, and to be mistaken as to the provenance or origin of the goods covered by that mark. In fact  in its word form and figuratively the Torre Albéniz sign can be distinguished from the earlier marks by its individuality  and in particular by the distinctive addition of the element ‘albéniz’. Consequently, since the second condition is not satisfied, the applicant’s argument based on a family of earlier marks must be rejected and that it is unnecessary to determine whether the earlier marks are present on the market. It follows that the Board of Appeal was right to hold that it could not be considered that the word ‘torre’ might be perceived by the relevant consumer as being connected with the family of TORRES marks.

Tax deductions for interstate transborder charity gifts between member states of the European Union.

By judgment of the Court of Justice in Luxembourg of  27 January 2009 in Case C-318/07  v Hein Persche v Finanzamt Lüdenscheid it was decided that tax deductions for interstate charity gifts between member states of the European Union are legal as long as the donor’s Member State verifies compliance with the conditions imposed on national charitable bodies.

German law provides for the deduction for tax purposes of gifts to charitable bodies in Germany which satisfy certain requirements, whilst excluding that tax advantage for gifts to bodies established and recognised as charitable in another Member State.

In his tax return for 2003, Mr Hein Persche, a German national, nonetheless claimed a tax deduction in respect of a gift in kind, valued at about EUR 18,180, to the Centre Popular de Lagoa, in Portugal (a retirement home to which a children’s home is attached). The Finanzamt (District Tax Office) refused the deduction sought on the ground that the beneficiary of the gift was not established in Germany and that Mr Persche had not provided a donation certificate in proper form.

The Bundesfinanzhof (the highest German court with jurisdiction in tax matters), sitting as the Court of final appeal in the case, asks the Court of Justice whether a Member State may make a deduction for tax purposes subject to the condition that the beneficiary is established in that State.

In its judgment of today, the Court of Justice examines the question whether a tax deduction for cross-border gifts comes within the compass of the free movement of capital guaranteed by Community law. In that respect, it points out that, where a taxpayer claims, in a Member State, the deduction for tax purposes of gifts to bodies established and recognised as charitable in another Member State, such gifts come within the compass of the Treaty provisions on the free movement of capital, even if they are made in kind in the form of everyday consumer goods.

Since the possibility of obtaining a tax deduction can have a significant influence on the donor’s attitude, the inability in Germany to deduct gifts to bodies recognised as charitable if they are established in other Member States is likely to affect the willingness of German taxpayers to make gifts to such bodies. Such legislation constitutes, therefore, a restriction on the free movement of capital which is, as a rule, prohibited.

In the Court’s view, that restriction is not justified. The Court observes that a Member State may, as part of its legislation on the deduction for tax purposes of gifts, apply a difference in treatment between national bodies recognised as charitable and those established in other Member States if the latter bodies pursue objectives other than those advocated by its own legislation. Indeed, Community law does not require the Member States to provide that foreign bodies recognised as charitable in their Member State of origin benefit automatically from the same recognition in their own territory.

The fact remains that, where a body recognised as charitable in one Member State satisfies the requirements imposed for that purpose by the law of another Member State and where its object is the promotion of the very same general public interests, so that it would be likely to be recognised as charitable in the latter Member State, the authorities of the latter Member State cannot deny that body the right to equal treatment solely on the ground that it is not established in its territory.

Moreover, the contested legislation is not justified by the need to safeguard the effectiveness of fiscal supervision. Indeed, nothing would prevent the tax authorities concerned from requiring the taxpayer to provide such proof as they may consider necessary to determine whether the conditions for deducting expenditure provided for in the legislation at issue have been met and, consequently, whether or not it is appropriate to allow the deduction claimed. The Court considers that it is not contrary to the principle of proportionality to constrain the donor’s Member State, when a taxpayer claims the benefit of a tax deduction for gifts which he has made to bodies established in another Member State, to verify, or to have verified, whether the conditions imposed on national charitable bodies are respected.

Consequently, the Court rules that the free movement of capital precludes legislation of a Member State by virtue of which, as regards gifts made to bodies recognised as having charitable status, the benefit of a deduction for tax purposes is allowed only in respect of gifts made to bodies established in that Member State, without any possibility for the taxpayer to show that a gift made to a body established in another Member State satisfies the requirements imposed by that legislation for the grant of such a benefit.

Source: Press release of  the Court of 27 January 2009


COMMUNITY LAW DOES NOT PRECLUDE AN ADMINISTRATIVE PENALTY WHICH MAY BE IMPOSED ON PERSONS LIABLE TO VAT

By judgment of the Court of Justice decided in Case C-502/07 K–1 sp. z o.o. v. Dyrektor Izby Skarbowej w Bydgoszczy that an  ‘additional tax’ such as provided for by Polish legislation, and which is imposed in the event of a tax declaration error, does not constitute VAT.

A Polish Law of 2004 (1) provides that, where it is established that a taxable person has indicated, in the tax declaration submitted by that person, an amount of tax difference to be repaid in respect of VAT or input tax to be repaid which is greater than the amount actually due, the head of the tax office or tax inspection authority is to determine the correct amount to be repaid and to fix an ‘additional tax liability’ equivalent to 30% of the amount of the overstatement. By decision of 2005, the Director of the Tax Office in Toruń (Poland), having established, in respect of the company K-1, that the amount of VAT declared as input tax had exceeded output tax for May 2005, fixed an additional tax liability in respect of that month. K-1 considered that measure to be incompatible with Community law and appealed against that decision.

Hearing the appeal on a point of law, the Naczelny Sąd Administracyjny (Polish Supreme Administrative Court) made a preliminary reference to the Court of Justice of the European Communities in which it asked whether the Polish additional tax was compatible with Community law, more specifically with the common system of VAT established by the Sixth VAT Directive (2).

The Court restates the four essential characteristics of VAT: VAT applies generally to transactions relating to goods or services; it is proportional to the price charged by the taxable person in return for the goods and services which he has supplied; it is charged at each stage of the production and distribution process, including that of retail sale, irrespective of the number of transactions which have previously taken place; the amounts paid during the preceding stages of the process are deducted from the tax payable by a taxable person, with the result that the tax applies, at any given stage, only to the value added at that stage and the final burden of the tax rests ultimately on the consumer.
Next, the Court notes that an ‘additional tax’ such as that provided for by the Polish legislation does not have those characteristics, since it arises, not from any transaction, but from a declaration error. In addition, the amount thereof is not proportional to the price charged by the taxable person.

The Court takes the view that it is not a tax but, in fact, an administrative penalty imposed where it is established that the taxable person has indicated an amount of tax difference to be repaid in respect of VAT or input tax to be repaid which is greater than the amount due to that person. The Court rules that the principle of a common system of VAT does not preclude the introduction by the Member States of such measures. On the contrary, it points out that the Member States may, under the Sixth VAT Directive, impose obligations which they deem necessary for the correct levying and collection of VAT.

In addition, the Court states that the Polish additional tax does not constitute ‘a special measure for derogation’ for preventing certain types of tax evasion or avoidance, the adoption of which by a Member State would require the authorisation of the Council, acting unanimously on a proposal from the Commission.

(1) Law of 11 March 2004 on the taxation of goods and services, in the version applicable to the dispute in the main proceedings.
(2) Sixth Council Directive 77/388/EEC of 17 May 1977 on the harmonisation of the laws of the Member States relating to turnover taxes – Common system of value added tax: uniform basis of assessment (OJ 1977 L 145, p. 1).

Source: Press release 2/09 of 15 January 2009




Wordmark FUN - a Community Mark

By Judgment of 2 December 2008 - Case T-67/07 - the Court of First Instance (First Chamber) decided that  a word mark FUN was distinctive enough to serve as a trade mark for goods in international class 12, namely ‘land motor vehicles and parts and fittings thereof’.

The Court found that an application can only be excluded from registration as a trademark, when the word being used as a trademark sign may serve in normal usage from the point of view of the target public to designate directly or by reference to one of their essential characteristics, goods or services. It follows that, for a sign to be caught by the prohibition set out in Article 7(1)(c) of Regulation No 40/94, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to perceive immeadiately without further thought a description of the category of goods and services in question or one of their characteristics. 

The Court confirmed that a sign’s descriptiveness may only be assessed in relation to the goods or services concerned and to the perception of the target public, which is composed of the consumers of those goods or services. In the case ‘land motor vehicles and parts and fittings thereof’a word mark must serve to designate in a specific, precise and objective manner the essential characteristics of the goods and services at issue. The fact that an undertaking wishes to give its goods a positive image, indirectly and in an abstract manner, yet without directly and immediately informing the consumer of one of the qualities or specific characteristics of the goods, is a case of evocation and not of  designation. In connection with land motor vehicles, the sign ‘FUN’ may be understood as indicating that they can be amusing or that they can be a source of amusement. The sign ‘FUN’ can thus be viewed as giving the goods a positive image, like an image for promotional purposes, by giving the relevant consumer the idea that a car can be a source of amusement. None the less, although, in some cases, a land motor vehicle can be a source of amusement for its driver, the sign ‘FUN’ does not go beyond suggestion. Accordingly, it must be held that the link between the word ‘fun’and land motor vehicles is too vague, uncertain and subjective to confer descriptive character on that word in relation to those goods.

Unlike some indications that are descriptive of the characteristics of a vehicle, such as ‘turbo’, ‘ABS’ or ‘4x4’, the sign ‘FUN’ on the back of a vehicle cannot serve to designate directly a land motor vehicle or one of its essential characteristics. If the sign is placed in that position, the relevant consumer will perceive it as designating the commercial origin of the goods. It follows from all the foregoing that the relationship between the sign ‘FUN’ and land motor vehicles is not sufficiently direct and specific to enable the relevant public to immediately perceive, without further thought, a description of the goods or one of their characteristics. Consequently, the sign ‘FUN’ is not caught by the prohibition in Article 7(1)(c) of Regulation No 40/94.

As regards the other goods covered by the application for registration, namely parts and fittings for land motor vehicles, it must be pointed out that the descriptive character of a sign must be assessed separately for each category of goods and/or services covered by the application for registration. Nevertheless, all the goods specified in the trade mark application may be inseparably linked since some of those goods may only be used in connection with the others, and a solution which is common to all the goods should therefore be adopted. In this case, the goods designated in the application for registration as parts and fittings for land motor vehicles are meant to be used exclusively in connection with those vehicles and cannot be used alone. The parts and fittings for land motor vehicles covered by the application for registration are inseparably linked to those vehicles and it is therefore appropriate to adopt a solution in relation to those parts and fittings that is identical to that adopted in relation to land motor vehicles. Therefore, the sign ‘FUN’ must also be regarded as not having a sufficiently direct and specific relationship with the goods in the category ‘parts and fittings thereof’.

Contrary to OHIM’s view, the mere finding by the Board of Appeal that the word ‘fun’ is a banal and basic English word does not suffice to establish that the word FUN has no  distinctive character.

Source: Press release of the court of 2 December 2008


Judgment of the Court of Justice in Case C-191/01 P  of 23 October 2003 - Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v Wm. Wrigley Jr. Company

A SIGN MAY NOT BE REGISTERED AS A COMMUNITY TRADE MARK IF ONE OF ITS POSSIBLE MEANINGS CAN DESIGNATE A CHARACTERISTIC OF THE GOODS CONCERNED

The judgment in which the Court of First Instance held that the word "Doublemint" is not  exclusively descriptive and is registrable as a Community trade mark is set aside. In March 1996, Wrigley applied to OHIM for registration of the word "Doublemint" as a Community trade mark for chewing gum. OHIM refused that application on the ground that the word "Doublemint" was descriptive of certain characteristics of the goods concerned and that it could not be registered as a trade mark under the Community rules.
Wrigley appealed against the decision to the Court of First Instance of the EC. By judgment of 31 January 2001, the Court of First Instance annulled OHIM's decision, holding that the word "Doublemint" was not "exclusively descriptive", inter alia, because the combination of the words "double" and "mint" could have two distinct meanings: "twice the usual amount of mint" or "flavoured with two varieties of mint". The Court of First Instance also found that the word "mint" was a generic term which included a number of different types of mint. The Court therefore held that the numerous meanings of "Doublemint" deprived the sign of any descriptive function and that the word could be registered as a Community trade mark (see judgment in Case T-193/99 Wrigley v OHIM [2001] ECR II-417). The OHIM appealed against that judgment to the Court of Justice. The Court of Justice points out that, by prohibiting the registration as Community trade marks of signs which may serve to designate the characteristics of the goods or services concerned, Community law is pursuing an aim which in the public interest, namely that descriptive signs or indications may be freely used by all. A sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. In holding that "Doublemint" could not be characterised as exclusively descriptive and could therefore be registered as a Community trade mark, the Court of First Instance applied a test based on whether the mark was "exclusively descriptive", which is not the test laid down by the regulation on the Community trade mark. In so doing, it failed to ascertain whether "Doublemint" was capable of being used by other economic operators to designate a characteristic of their goods and services. The Court of Justice accordingly sets aside the judgment of the Court of First Instance and refers the case back to that Court for judgment in accordance with this interpretation of Community law.

Source:  Press Release No 95/03 of  23 October 2003