For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

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Friday, 3 August 2007

Expansive copyright notices; another ECJ dilution reference

FTC complaint over copyright notices

Forbes reports that a coalition of major companies including Microsoft and Google, the Computer and Communications Industry Association, has complained to the US Federal Trade Commission that content providers are placing overextensive copyright notices on their information offerings. The targets of the complaint include Major League Baseball, the National Football League and NBC Universal and Dreamworks Animation Inc. The argument is that the overly wide copyright notices discourage consumers from making legal use of content.

The IPKat wonders if this complaint will really make much difference – do consumers (except for IP lawyers who should know better) ever actually read the copyright notices?


ECJ TM reference

The IPKat notes details of a new reference to the ECJ on the UK-IPO website. The court in PAGO International C-301/07 has asked:

Is a Community trade mark protected in the whole of the Community as a ‘trade mark with a reputation’ for the purposes of Article 9(1)(c) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (Regulation 40/94) if it has a ‘reputation’ only in one Member State?


If the answer to the first question is in the negative: is a mark which has a ‘reputation’ only in one Member State protected in that Member State under Article 9(1)(c) of Regulation 40/94, so that a prohibition limited to that Member State may be issued?
The IPKat reckon that the answer to question 1 is yes. In General Motors v Yplon the ECJ said in connection with national marks


Territorially, the condition [of having a reputation] is fulfilled when, in the terms of Article 5(2) of the Directive, the trade mark has a reputation 'in the Member State‘. In the absence of any definition of the Community provision in this respect, a trade mark cannot be required to have a reputation 'throughout‘ the territory of the Member State. It is sufficient for it to exist in a substantial part of it.


By analogy, a reputation in a substantial part of the EU should satisfy Art.9(1)(c). In other areas of CTM law, a single Member State is considered a substantial part of the EU so QED.

1 comment:

Dev said...

So what does this do for the theory underpinning blurring/tarnishment/unfair advantage actions? If the infringement occurs in the residual area where the mark has no reputation then what is the wrong being committed? Is this a form of 'absolute' protection based on registration alone, which starts looking like a property right in the sign per se?

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