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TUESDAY, 24 AUGUST 2010
"Euro-defences" can't be swept aside by summary judgment, rules appellate court
 In Oracle (formerly Sun Microsystems) v M Tech, the Court of Appeal for England and Wales has held today here that, in a trade mark infringement dispute involving importation of Sun-branded computer hardware from outside the EEA, M Tech was entitled to argue that Arts.28 to 30 and Arts. 81 of the EC Treaty prevented Oracle from obtaining summary judgment for trade mark infringement. This judgment has important ramifications for all trade mark proprietors and parallel traders.
M Tech purchased second-hand Sun hardware from a US dealer, which Oracle (who took Sun over) alleged infringed its registered trade marks. M Tech maintained that Oracle was not entitled to enforce its trade mark rights because it was impossible for independent traders to differentiate between genuine Sun goods first marketed in the EEA by Oracle and those first marketed outside the EEA. Oracle could differentiate such goods by reference to the serial numbers and their own internal database, but deliberately chose not to make such a database available to traders. M Tech maintained that such facts -- combined with an aggressive litigation strategy against independent traders such as M-Tech -- meant that the independent sector was no longer dealing in any second-hand Sun goods regardless whether they were first marketed in the EEA.
M Tech maintained that such conduct by Oracle in enforcing its marks resulted in artificial partitioning of the internal market in Europe, contrary to Arts. 28 to 30 EC (now Arts. 34 to 36 TFEU) and thus in breach of European law. M-Tech added that Oracle's actions were contrary to the emerging European doctrine of abuse of rights and that the distribution agreements between Oracle and its authorized distributors, whereby they were prevented from buying from the independent sector, were anti-competitive and a defence to the trade mark infringement action.
Oracle sought summary judgment on the grounds that the Trade Mark Directive was a complete code and there was no scope for Arts.28 to 30 and that on the facts, there was no nexus between the Art.81 defence and the imports of the goods into the EEA.
The trial judge granted summary judgment, accepting such arguments. However, on appeal, the Court of Appeal accepted that on the basis of the above facts, such could give rise to a defence and ordered that the matter should go to trial. Said the court:
“This case clearly has important financial and economic implications not just for the parties but also for others involved in the grey market in Oracle, and possibly other, computer hardware and goods. The economic function of parallel imports and the grey market is controversial.”
This note was based on a press release from law firm Hill Dickinson LLP, which acted for M-Tech.
Posted by: Jeremy Phillips @ 21.44
Tags: parallel importations, Euro-defences, summary judgment, |
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TUESDAY, 24 AUGUST 2010
More protection for branded booze sold in noisy bars
 In Case R 182/2009-2 Caves Arcos do Rei, Lda v Bodegas Hidalgo - La Gitana, S.A., Second Board of Appeal, 1 July 2010, the OHIM Board dismissed the applicant's appeal against a successful opposition brought by the owner of the earlier GITANA mark against the application to register La Quitana -- both being for alcoholic beverages other than beer. The respective goods being identical and the marks being only moderately similar (no conceptual similarity and only medium visual and aural similarity), the Board was impressed by the degree of noise which consumers might encounter when trying to order one or other of the brands as well as the nature of the glasses in which such drinks might be supplied:
"34 ... the Board of Appeal upholds the finding that
there exists a likelihood of confusion on the part of the relevant public as to the
commercial origin of the goods bearing the conflicting trade marks.
 35 This conclusion is reinforced by the circumstance that a substantial part of the
purchase of the goods in question (alcoholic beverages except beers) is ordered in
a noisy atmosphere, such as in bars and restaurants, where the slight differences
in the sounds of the trade marks would be scarcely noticed. In such places, orders
are made orally and it is only sometimes possible to consult a spirits list before
ordering. Furthermore, in a substantial number of cases, alcoholic beverages
(unlike beers) are served directly in anonymous glasses, without the possibility
for consumers to see the bottles from which they are served."
Posted by: Jeremy Phillips @ 05.42
Tags: likelihood of confusion, |
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MONDAY, 23 AUGUST 2010
Poland: conflict between trade names
 The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 574/10 ruled that Article 8 of the Paris Convention is a "conflicting norm" i.e. a norm/rule in private international law that points to appropriate substantive law that should be applied in a given case. The "trade name" on the basis of Article. 8, 9, 10 bis of the Paris Convention covers both the company name as an indication of business and company name in the subjective meaning. A trade name is the name of an entity being endowed with a right (merchant, trader, businessman – the subject of rights ), under which it is established and is performing its business activity, usually organized as the company/enterprise (the object of rights). It is therefore a designation of a business, which includes distinctive elements, and all these elements that allow for the individualization of economic activity.
The disclosure of company's name in the registry (National Court Register - Polish public register maintained by the selected regional courts and the Ministry of Justice which includes the register of enterprises) has a declaratory nature, therefore the priority of use decides on the priority of right to the company name.
Posted by: Tomasz Rychlicki @ 11.19
Tags: Art. 10bis Paris Convention, Art. 8 Paris Convention, Art. 9 Paris Convention, Paris Convention, Polish Act on Industrial Property Law, Voivodeship Administrative Court, bad faith, firm, personal rights, trade mark invalidation, |
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MONDAY, 23 AUGUST 2010
"Aura of luxury" assists Chanel against 'poor quality' marketing
 After one of Chanel's distributors under a selective distribution agreement went into liquidation, the liquidator auctioned Chanel goods held by the distributor to a business that resold them to French discount store business Caud.
Chanel subsequently sued Caud for trade mark infringement, objecting that its luxury goods were (i) being marketed in a self-service discount store, (ii) displayed in a shed located on a trading estate, (iii) sold with damaged packaging caused by excessive and careless handling and (iv) advertised by poor quality posters advertising a 30% discount.
The French trial court stated that the conditions in which the goods were sold were detrimental to Chanel's reputation. and that infringement had accordingly taken place. This decision has since been upheld on two further appeals.
Source: "Sale of luxury products in poor condition constitutes trademark infringement" by Xavier Buffet Delmas and Laura Morelli (Hogan Lovells), on International Law Office here.
Posted by: Jeremy Phillips @ 09.14
Tags: France, low-quality marketing, |
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MONDAY, 23 AUGUST 2010
Saucisse de Morteau names protected
 Commission Regulation 751/2010 of 20 August 2010 entering a name in the register of protected designations of origin and protected geographical indications (Saucisse de Morteau or Jésus de Morteau (PGI)) has now been published in the online version of the Official Journal of the European Union.
The two names protected by this Regulation relate to a French sausage which, since the 18th century, has been smoked in farm chimneys of the surroundings of Morteau This sausage is made solely with the comtois pig. Easily recognised by its ring and the peg which closes it on one side, the Saucisse de Morteau is smoked using the wood of coniferous trees.
Posted by: Jeremy Phillips @ 08.41
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WEDNESDAY, 18 AUGUST 2010
September ETMR now out
 The September 2010 issue of the European Trade Mark Reports (ETMR) has now been published. This issue leads with the full text of Companie Gervais Danone v Glanbia Foods Society Ltd, an Irish Supreme Court decision in which former European Court of Justice judge and trade mark expert Fidelma Macken distinguishes the case before her from the ECJ ruling in Case 40/01 Ansul. Another case of note in this issue is Omega Engineering v Omega SA, a Chancery Division decision from England and Wales which affirms the binding force of a co-existence agreement and interprets it so as to prevent one party to it from opposing an application made by the other party -- despite the suggestion that Community trade mark law did not provide for such an agreement to be taken into account.
The ETMR is published by Sweet & Maxwell (a Thomson Reuter imprint) which supports MARQUES' annual Lewis Gaze Prize.
Posted by: Jeremy Phillips @ 20.43
Tags: ETMR, |
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TUESDAY, 17 AUGUST 2010
Community Trade Mark Infringements in the Netherlands: how exclusive is the jurisdiction of The Hague District Court?
 In the Netherlands, in first instance proceedings,
only the District Court The Hague, and the Presiding Judge of that Court in
summary proceedings, have exclusive jurisdiction to decide actions governed by
article 96 Community Trade Mark Regulation (CTMR). This exclusive jurisdiction
is laid down in article 3 of the Dutch Implementation Act. Accordingly fighting
a 96 CTMR action before other courts in the Netherlands is commonly regarded as
no good practice. One walks the line and that line leads to The Hague. Well it
seems to lead to The Hague, because it is not as simple as one and one is two.
Especially not if article 103 CTMR is read carefully:
this provision clearly determines that applications for provisional and
protective measures in respect of a CTM or a CTM application (!)
may be made to the courts of a Member State, including Community trade mark
courts, even if, under the CTMR, a Community trade mark court of another Member
State has jurisdiction as to the substance of the matter. Article 103 apparently
reserves juridisction for other courts of a Member State, not being a Community
trade mark court. This observation raises a question of validity with regard to
the Dutch implementation act, because the implementation act could be read as
providing exclusive jurisdiction to the Presiding Judge of the District Court
The Hague in summary proceedings.
In a decision of May 27, 2010 9 (Albanu/Pomerol) in
summary proceedings the Presiding Judge of the District Court of Breda
(Leijten) held that article of the Dutch implementation act is binding and not
contrary to article 103 CTMR: the Presiding Judge considered that article 3
matched with the rationale behind article 95 CTMR to designate only a small as
possible number of Community trade mark courts in the territories of each
Member State. Accordingly the Presiding Judge in Breda decided to have no
jurisdiction.
On January 4, 2007 (Tommy Hilfiger/The Sting) the
Court of Appeal of Amsterdam (Coeterier, Van Lingen en Huijser) - deciding on
an appeal against a decision of the Presiding Judge of the District Court of
Amsterdam - rejected the objection raised by defendant in appeal that the
Presiding Judge had no jurisdiction, in so far as the case concerned an alleged
infringement of a CTM. Only the (Presiding Judge of) District Court of The
Hague would have jurisdiction to deal with that matter. The Presiding Judge had
accepted jurisdiction according to article 99 CTMR (now article 103 CTMR): the
alleged infringements had actually also occurred in Amsterdam, while the
provisional measures applied for - injunction for example - should be enforced
also in Amsterdam. The Court of Appeal held that from the wording of article 99
par. 1 and 2 follows that the Presiding Judge of the District Court of The
Hague has only exclusive jurisdiction if the provisional measures applied for
should have effect in the territories of each Member State. Furthermore it
considered that article 3 of the Implementation Act does not alter this
outcome, since, even if this provision might be contrary to article 99 par. 1
and 2 CTMR, the CTMR has direct effect and national provisions contrary to the
CTMR may not be applied. A decision that might be correct if one considers that
article 103 par. 2 CTMR denies an extraterritorial jurisdiction to a Community
trade mark court that has only jurisdiction because an infringement occured
within its territory.
This week the Presiding Judge of the District Court
Breda (Leijten) once again had to consider this issue: with a decision of
August 12, 2010 (Heerkens/Fergan) the Presiding Judge rejected the defense that
only the Presiding Judge of the District Court The Hague had jurisdiction to
grant permission for the provisional measures applied for (seizure of evidence
and infringing goods) and not the Presiding Judge of the District Court.
Referring to a decision of the Court of Appeal 's-Hertogenbosch that had denied
this viewpoint the Presiding Judge passed the defense (GvR: it is not clear
which one exactly, might the Presiding Judge mean the Amsterdam Court of Appeal
decision?) In an obiter dictum the Presiding Judge states to have considered to
refer the following question to the Court of Justice (ECJ) for a preliminary
ruling: does article 103 CTMR allow the national legislator of a Member State to
provide an exclusive jurisdiction for one specialized court for the community
trade mark, like in the Netherlands the District Court The Hague. However the
Presiding Judge finally decided not to do this to give this opportunity to the
Court of Appeal in case of an appeal.
A real pity that the Presiding Judge did not refer the
question to the ECJ to clarify this issue, because an appeal is not sure and if
the Court of Appeal has already denied the exclusive jurisdiction of the
District Court, it is most probable that this question will not reach the ECJ,
let alone that the question will be formulated.
Posted by: Gino Van Roeyen @ 14.42
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