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Monday, 16 February 2009

Forthcoming attractions in the ECJ

On Thursday 5 March, the Court of Justice of the European Communities is giving judgment in Case C-545/07 Apis-Hristovich EOOD v Lakorda AD, a reference for a preliminary ruling from the Sofiyski gradski sad (Bulgaria) which was lodged on 4 December 2007.


Right: suggested reading material for the Court of Justice

The questions referred for a ruling relate to the European Union's sui generis database right:
"1. How are the terms 'permanent transfer' and 'temporary transfer' to be interpreted and to be delimited in relation to each other for the purpose of:
- determining whether extraction within the meaning of Article 7(2)(a) of Directive 96/9 from a database accessible by electronic means has taken place,
- at what point in time is it to be assumed that extraction within the meaning of Article 7(2)(a) of Directive 96/9 from a database accessible by electronic means has taken place,
- what is the significance, for the assessment of extraction, of the fact that the content of a database extracted in this way has served to create a new and amended database?
2. Which criterion is to be applied in interpreting the concept 'extraction of a substantial part, evaluated quantitatively' if the databases are divided into separate subgroups and are used in these subgroups, which are independent commercial products? Is the size of the databases in the entire commercial product or the size of the databases in the relevant subgroup to be used as the criterion?
3. In interpreting the concept 'a substantial part, evaluated qualitatively', is the fact that a certain type of data allegedly extracted was obtained by the database maker from a source which is not generally accessible, so that it was possible to procure the data only by extracting them from the databases of that very database maker, to be used as a criterion?
4. What criteria are to be applied when determining whether extraction from a database accessible by electronic means has taken place? Can it be regarded as an indication that extraction has taken place if the maker's database has a particular structure, notes, references, commands, fields, hyperlinks and editorial text and these elements are also found in the database of the person who has committed the alleged infringement? In the carrying out of this assessment, are the various original organisational structures of the two opposing databases relevant?
5. When determining whether extraction has taken place, is the computer program/the system for database management material if it is not part of the database?
6. Since, according to Directive 96/9 and the case-law of the Court of Justice of the European Communities, 'a substantial part of the database from a quantitative and qualitative point of view' is linked to substantial investment in the obtaining, verification or presentation of a database: how are these concepts to be interpreted in relation to legislative measures, and measures having individual application, which have been adopted by executive State bodies and are publicly accessible, to their official translations and to case-law?
The IPKat wonders whether this is the first intellectual property ruling (i) to be referred from Bulgaria or (ii) for which the language of the proceedings is Bulgarian.  Merpel notes that, although the questions look complicated, the Court has not availed itself of the guidance of an Advocate General, presumably on one of two grounds: (i) the questions are so easy that the Court needs no guidance or (ii) the questions are so difficult that an Advocate General would only confuse the issue even more.


On Thursday 12 March we should be receiving the Advocate General's Opinion in Case C-529/07, Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH. This is a reference for a preliminary ruling from the Oberster Gerichtshof (Austria) which was lodged on 28 November 2007. In this dispute, the questions referred are as follows:
"1. Is Article 51(1)(b) of Council Regulation 40/94 to be interpreted as meaning that an applicant for a Community trade mark is to be regarded as acting in bad faith where he knows, at the time of his application, that a competitor in (at least) one Member State is using the same sign, or one so similar as to be capable of being confused with it, for the same or similar goods or services, and he applies for the trade mark in order to be able to prevent that competitor from continuing to use the sign?

2. If the first question is answered in the negative:

Is the applicant to be regarded as acting in bad faith if he applies for the trade mark in order to be able to prevent a competitor from continuing to use the sign, where, at the time he files his application, he knows or ought to know that by using an identical or similar sign for the same goods or services, or goods or services which are so similar as to be capable of being confused, the competitor has already acquired 'valuable property rights'?

3. If either the first or the second question is answered in the affirmative:
Is bad faith excluded if the applicant's sign has already obtained a reputation with the public and is therefore protected under competition law?"
The IPKat suspects, knowing the parties in question, that this might be yet another round in the Battle of the Bunnies, the chocolate variety at any rate.


Moving with great rapidity, on Thursday 17 March the Court is holding its hearing in Case C-236/08, Google France, Google Inc. v Louis Vuitton Malletier, a reference for a preliminary ruling from the Cour de Cassation (France) lodged on 3 June 2008. The questions referred here are:
"1. Must Article 5(1)(a) and (b) of First Council Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation 40/94 be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering infringing goods is using those trade marks in a manner which their proprietor is entitled to prevent?
2. In the event that the trade marks have a reputation, may the proprietor oppose such use under Article 5(2) of the directive and Article 9(1)(c) of the regulation?
In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or the regulation, may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 [the E-Commerce Directive], so that that provider cannot incur liability until it has been notified by the trade mark proprietor of the unlawful use of the sign by the advertiser?"
The Court's ruling here will be one of the most commercially sensitive it has ever faced: it can make or break the keywords industry in Europe.

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