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FRIDAY, 6 NOVEMBER 2009
Beatles' records on an apple-shaped USB-stick - do I sense a little provocation?
The Beatles have hesitated for a very long time whether to go digital - now they have, in the form of a limited edition apple-shaped USB-stick containing 14 albums for the price of $ 280.
Apple Corps, the Beatles founded holding company of the Beatles's record label Apple Records, has been in a number of well publicized trade mark disputes with Apple Computers. The clash of the companies was once again inevitable when Apple Computers started using the APPLE brand for music players (iPod) and music distribution (iTunes). In 2003, Apple Corps sued Apple Computers for breach of an earlier settlement over the use of APPLE for iTunes before the English High Court. In May 2006, the judge decided in favour of Apple Computers. The parties later settled their disputes. Under the settlement, Apple Computers owns all the trade mark rights in the
APPLE brand and licenses them back to Apple Corps for some uses.
Allegedly, Apple Computer paid $ 500 million for the rights in the
APPLE brand.
Those uses apparently include the distribution of music - I assume Apple Corps is not selling the USB-sticks in violation of the agreement. However, I sense a little provocation. I mean, how many people associate the Beatles with an apple? How many, on the other hand, associate an apple-shape computer peripheral with Apple Computer?
Posted by: Mark Schweizer @ 18.52
Tags: settlement, licensing, |
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FRIDAY, 6 NOVEMBER 2009
Italian law amends Italian IP Code and reinforces protection to IP right holders under Italian Criminal Code.
On the 23 July, Italian legislators enacted Law No 99, which is now in force and affects, amongst others, provisions of the Italian Industrial Property Code as well as provisions of the Italian Criminal Code relating to criminal offences in the intellectual property field.
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In particular, firstly, Law No 99/2009 has made some urgent and targeted CHANGES TO THE ITALIAN IP CODE as well as to some of its implementing regulations. While most amendments are aimed at correcting certain inconsistencies and cosmetic imperfections, a significant change relates to Article 239 IP Code which provides for limits to protection that should be granted under copyright to designs.
This article was subject to intense controversy on a national level and had already been modified in 2007 following the European Commission‘s proceedings against Italy (Case 4088/2005) for its infringement of the EU Design Directive 98/71/EC. Pursuant to the newly revised version of Art. 239, introducing the notion of ‘within the limits of pre-use’, the protection granted to designs in accordance with the Italian Copyright Law now “does not apply to parties which, prior to 19 April 2001, started the fabrication or commercialization of products manufactured in accordance with designs that were in or had entered the public domain. In such case this activity can be continued within the limits of the pre-use. The manufacturing and commercialization rights cannot be transferred separately from the company.”
Two references for a preliminary ruling from the Milan Court (Case C-219/09 and C-168/09) on this provision, in its previous version, are currently pending before the ECJ.
Also, Article 127, (1) IP Code, relating to the manufacture, distribution or sale, and production for profit of products that infringe IP rights, has been deleted. In practice the provision - in a slightly re-worded version – re-appears in the new Article 517-ter of the Italian Criminal Code, which establishes that such activities are now punishable by imprisonment of up to 2 years and/or with a fine of up to Euro 20,000 (compared to the previous limited fine of Euro 1,032 under Art. 127, (1) IP Code).
Further minor amendments to the IP Code may occur in the near future as Article 19 (15) of the law provides the government with power, during the first year from the date of the law coming into force, to adopt corrective or supplementary provisions to the IP Code, including any procedural aspects to improve co-ordination or for simplification purposes or to allow for better harmonisation with EU and international regulations.
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Secondly, the law introduces MORE DETERRENT CRIMINAL PENALTIES for criminal offences IN THE IP FIELD. Most importantly, the penal sanctions foreseen by Arts. 473 (on counterfeiting, alteration or use of trade marks, distinctive signs, designs and patents) and 474 (on introducing in trade products under a false sign) of the Italian Criminal Code (CC) have increased: in particular fines can now amount to a maximum of Euro 25,000 (formerly up to Euro 2,065 only) and for designs and patents even up to 35,000 while in certain cases imprisonment is increased to 4 years (instead of the previous maximum of 3 years imprisonment).
The imprisonment term foreseen for the sale of products under false signs, particularly trade marks that could mislead buyers on the products’ business origin -as established by Art. 517 CC and its restrictive interpretation by consolidated higher case law- has doubled to 2 years. This criminal offence is also punishable with a maximum fine of Euro 20,000.
Two additional criminal offences were added. Besides the above cited Art. 517-ter CC, another new criminal offence was introduced under Art. 517-quater CC, laying down a maximum 2-year’s imprisonment and a fine up to Euro 20,000 for the infringement or alteration of geographical indications and designations of origin on food products. This sanction is also applied for the importation or sale, for profit, of the same. Unlike the Legislative Decree no 297/2004 providing for administrative sanctions on misleading use of protected geographical indications, this new criminal offence only relates to food stuffs, so that indications of origin for products other than food related are excluded. In any event, this provision seems to be an improvement, although the interpretation by case law will better clarify the position here. In fact, this offence may already fall within the scope of above cited Art. 517, but is in practice excluded from its application by the consolidated restrictive interpretation of the Supreme Court. The new Article 517-ter should overcome this obstacle at least by reference to food products.
In addition, more powers are granted to the police forces to tackle counterfeiters with seizure possibilities extended where specific aggravating circumstances exist, i.e. in the event of systematic or organized infringements.
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Finally, the law also paves the way for the creation of a NATIONAL ANTI-COUNTERFEITING BOARD, to continue the work commenced by the Anti-Counterfeiting High Commissioner whose department was closed down at the end of last year.
The text of the Law (in Italian) can be found on : http://www.parlamento.it/parlam/leggi/09099l.htm
Posted by: Edith Van den Eede @ 14.45
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FRIDAY, 6 NOVEMBER 2009
Adwords: the questions passed to the ECJ in Interflora vs M&S
In "another case about Google AdWords and registered trade mark" and as announced on 22 May 2009 by the England and Wales High Court's decision in Interflora, Inc. Interflora British Unit v Marks and Spencer PLC Flowers Direct Online Limited, ([2009] EWHC 1095 (Ch), available from Bailii) Mr Justice Arnold intended to refer some questions to the European Court of Justic e.
The exact terms of the questions passed to the ECJ have now been formulated. They read as follows (case C-323/09):
Where
a trader which is a competitor of the proprietor of a registered trade
mark and which sells goods and provides services identical to those
covered by the trade mark via its website (i) selects a sign which is
identical (in accordance with the Court's ruling in Case C-291/00) with
the trade mark as a keyword for a search engine operator's sponsored
link service, (ii) nominates the sign as a keyword, (iii) associates
the sign with the URL of its website, (iv) sets the cost per click that
it will pay in relation to that keyword, (v) schedules the timing of
the display of the sponsored link and (vi) uses the sign in business
correspondence relating to the invoicing and payment of fees or the
management of its account with the search engine operator, but the
sponsored link does not itself include the sign or any similar sign, do
any or all of these acts constitute "use" of the sign by the competitor
within the meaning of Article 5(l)(a) of First Council Directive
89/104/EEC of 21 December 1988 ("the Trade Marks Directive") and Article 9(l)(a) of Council Regulation 40/94 of 20 December 1993 on the Community trade mark ("the CTM Regulation")?
Is
any such use "in relation to" goods and services identical to those for
which the trade mark is registered within the meaning of Article
5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM
Regulation?
Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b)
(assuming that such use is detrimental to the distinctive character of
the trade mark or takes unfair advantage of the repute of the trade
mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of
the CTM Regulation?
Does it make any difference to the answer to question 3 above if:
(a)
the presentation of the competitor's sponsored link in response to a
search by a user by means of the sign in question is liable to lead
some members of the public to believe that the competitor is a member
of the trade mark proprietor's commercial network contrary to the fact;
or
(b) the search engine operator does
not permit trade mark proprietors in the relevant Member State of the
Community to block the selection of signs identical to their trade
marks as keywords by other parties?
Where
the search engine operator (i) presents a sign which is identical (in
accordance with the Court's ruling in Case C-291/00) with a registered
trade mark to a user within search bars located at the top and bottom
of search pages that contain a sponsored link to the website of the
competitor referred to in question 1 above, (ii) presents the sign to
the user within the summary of the search results, (iii) presents the
sign to the user by way of an alternative suggestion when the user has
entered a similar sign in the search engine, (iv) presents a search
results page to the user containing the competitor's sponsored link in
response to the entering by the user of the sign and (v) adopts the
user's use of the sign by presenting the user with search results pages
containing the competitor's sponsored link, but the sponsored link does
not itself include the sign or any similar sign, do any or all of these
acts constitute "use" of the sign by the search engine operator within
the meaning of Article 5(l)(a) of the Trade Marks Directive and Article
9(l)(a) of the CTM Regulation?
Is any
such use "in relation to" goods and services identical to those for
which the trade mark is registered within the meaning of Article
5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM
Regulation?
Does any such use fall within the scope of either or both of:
(a) Article 5(l)(a) of the Trade Marks Directive and Article 9(l)(a) of the CTM Regulation; and
(b)
(assuming that such use is detrimental to the distinctive character of
the trade mark or takes unfair advantage of the repute of the trade
mark) Article 5(2) of the Trade Marks Directive and Article 9(l)(c) of
the CTM Regulation?
Does it make any difference to the answer to question 7 above if:
(a)
the presentation of the competitor's sponsored link in response to a
search by a user by means of the sign in question is liable to lead
some members of the public to believe that the competitor is a member
of the trade mark proprietor's commercial network contrary to the fact;
or
(b) the search engine operator does
not permit trade mark proprietors in the relevant Member State to block
the selection of signs identical to their trade marks as keywords by
other parties?
If any such use does
fall within the scope of either or both of Article 5(l)(a) of the Trade
Marks Directive/Article 9(l)(a) of the CTM Regulation and Article 5(2)
of the Trade Marks Directive/Article 9(l)(c) of the CTM Regulation:
(a)
does such use consist of or include "the transmission in a
communication network of information provided by a receipt of the
service", and if so does the search engine operator "select or modify
the information", within the meaning of Article 12(1) of European
Parliament and Council Directive 2000/31/EC
of 8 June 2000 on certain legal aspects of information society
services, in particular electronic commerce, in the Internal Market
("the E-commerce Directive")?
(b) does
such use consist of or include "the automatic, intermediate and
temporary storage of information, performed for the sole purpose of
making more efficient the information's onward transmission to other
recipients of the service upon their request" within the meaning of
Article 13(1) of the E-commerce Directive?
(c)
does such use consist of or include "the storage of information
provided by a recipient of the service" within the meaning of Article
14(1) of the E-commerce Directive?
(d)
if the use does not consist exclusively of activities falling within
the scope of one or more of Article 12(1), 13(1) and 14(1) of the
E-Commerce Directive, but includes such activities, is the search
engine operator exempted from liability to the extent that the use
consists of such activities and if so may damages or other financial
remedies be granted in respect of such use to the extent that it is not
exempted from liability?
If the answer
to question 9 above is that the use does not consist exclusively of
activities falling within the scope of one or more of Articles 12-14 of
the Ecommerce Directive, may the competitor be held jointly liable for
the acts of infringement of the search engine operator by virtue of
national law on accessory liability?
This is the fifth series of questions passed to the ECJ on the subject of Adwords. The most recent developpement in this regard consisted in the publication of the Advocate General's conclusions in Louis Vuitton vs Google, back in September 2009 (see Class 46 post here).
Posted by: Frédéric Glaize @ 14.29
Tags: Adwords, ECJ, prelimnary ruling, |
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FRIDAY, 6 NOVEMBER 2009
Poland: jailtime for selling fake croissants
The Polish newspaper Gazeta Wyborcza reports recent Auchan's problems with the Guild of Bakers and Confectioners from Poznań. Class46 previously mentioned the Commission Regulation 1070/2008 of 30 October 2008 entering a name in the register of protected designations of origin and protected geographical indications for ROGAL ŚWIĘTOMARCIŃSKI. Few days ago, the Auchan store located in Swadzim town, put a big banner saying "Welcome for Rogale Świętomarcińskie". Piotr Koperski, a senior from the Guild of Bakers and Confectioners, accused the hipermarket of illegal use of "patented name". Under the Polish law such actions are a subject to a fine or even the penalty of two years imprisonment. The next day, Dorota Patejko, a spokesman for Auchan, apologized:
Stupid thing. At this time, we erase the disputed word "marcińskie".
Tomasz Kayser, the vice president of Poznań City said:
The original is a guarantee of quality. Let us boldly ask bakers, whether they are certified. It may happen that instead of Rogal świętomarciński you get a roll with black poppyseeds. Although I do not support the forgery, it is a little flattering to me: after all the best brands are counterfeited worldwide.
Posted by: Tomasz Rychlicki @ 10.32
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FRIDAY, 6 NOVEMBER 2009
BOOHOO! Interim relief includes disabling of domain name
In application for interim injunctive relief on Wednesday in the High Court (Chancery Division) for England and Wales, Mr Justice Warren summarised the principles on which a trade mark owner could get provisional relief, effectively confirming that they remain the sale where the trade mark owner and the alleged infringers are e-traders as if they were regular bricks-and-mortar businesses. The judge's order included the disabling of the defendant's website which was operating under an allegedly infringing domain name.
This case is Wasabi Frog Ltd v Miss Boo Ltd and Gulfraz Mohammed [2009] EWHC 2767 (Ch). The claimant owned the Community trade marks BOO, BOOHOO and BOOHOO.COM in various classes; the defendants were using the terms MISS BOO and MISSBOO.CO.UK, their domain name being www.missboo.co.uk.
Posted by: Jeremy Phillips @ 09.24
Tags: interim relief, disabling of website, |
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TUESDAY, 3 NOVEMBER 2009
Finland: 2009 in Counterfeits
According to an article in the Finnish daily financial news paper Kauppalehti, the Finnish Customs has seen more counterfeit action in 2009 than in previous few years.
According to Senior Customs Inspector Mr. Ryyttäri, the Finnish Customs has also witnessed the rise of some new ”hit products”. In addition to the traditionally favoured goods in the counterfeiting business such as clothes, shoes, clothing accessories and cosmetics, the Customs has in a number of instances also come across e.g. jacks used in car repair shops.
Not surprisingly, one of the most counterfeited product groups still seem to be medicines, but the Customs officials regularly also come across counterfeit mobile phones, their chargers and DVD players. Rather interestingly, also the trafficking in counterfeit watches has proven to be such that it has even created storage problems for the Finnish Customs.
However, as a positive conclusion, the article goes on to state that counterfeit products appear not to be very popular in Finland. Mr. Ryyttäri believes that Finnish consumers simply do not accept counterfeit products, and above all Finland appears to merely be a transit route to bigger markets, such as the Russian Federation.
Posted by: Mikael Kolehmainen @ 10.34
Tags: Finland, counterfeits, |
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MONDAY, 2 NOVEMBER 2009
OHIM to launch a products/services similarity database in 2010
In a recent presentation, Mr Vincent O Reilly, Director of the Department for Industrial Property Policy at the OHIM, lifted the curtain on a new OHIM project. The Alicante Office plans to edit a database for the comparison of goods and services.
 Data incorporated in the database will be taken from Office decisions, primarily from opposition, decisions of the European Court of Justice, the Court of First Instance and OHIM's Boards of Appeal. The content should be in English language only (source material will be translated into English when necessary).
The content will be compulsory for examiners, but it will not bind Boards of Appeal. Once tested and considered satisfactory the database will be publicly available online, presumably in the first half of 2010.
Posted by: Frédéric Glaize @ 12.32
Tags: OHIM, similarity, |
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