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Sunday, 8 March 2009

Dawn breaks for ECJ sunrise reference

The IPKat picked this news item up from a tweet from his bon ami Frédéric Glaize (of Le petit Musée des Marques fame). It concerns Case C-569/08 Internetportal und Marketing GmbH v Richard Schlicht, a reference to the European Court of Justice for a preliminary ruling from the Oberster Gerichtshof (Austria) on the application of Commission Regulation 874/2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration.  The questions referred are as follows:

"1. Is Article 21(1)(a) of Commission Regulation ... 874/2004 ... to be interpreted as meaning that a right within the meaning of that provision exists,
(a) if, without any intention to use it for goods or services, a trade mark is acquired only for the purpose of being able to register in the first phase of phased registration a domain corresponding to a German-language generic term?
(b) if the trade mark underlying the domain registration and coinciding with a German-language generic term deviates from the domain in so far as the trade mark contains special characters which were eliminated from the domain name although the special characters were capable of being rewritten and their elimination has the effect that the domain differs from the trade mark in a way which excludes any likelihood of confusion?
2. Is Article 21(1)(a) of Regulation 874/2004 to be interpreted as meaning that a legitimate interest exists only in the cases mentioned in Article 21(2)(a) to (c)?
If that question is answered in the negative:
3. Does a legitimate interest within the meaning of Article 21(1)(a) of Regulation 874/2004 exist if the domain holder intends to use the domain - coinciding with a German-language generic term - for a thematic internet portal?
If questions (1) and (3) are answered in the affirmative:
4. Is Article 21(3) of Regulation 874/2004 to be interpreted as meaning that only the circumstances mentioned in subparagraphs (a) to (e) are capable of establishing bad faith within the meaning of Article 21(1)(b) of Regulation 874/2004?
If that question is answered in the negative:
5. Does bad faith within the meaning of Article 21(1)(b) of Regulation 874/2004 exist if a domain was registered in the first phase of phased registration on the basis of a trade mark, coinciding with a German-language generic term, which the domain holder acquired only for the purpose of being able to register the domain in the first phase of phased registration and thereby to pre-empt other interested parties, including the holders of rights to the mark?"
Since these questions were lodged with Europe's top court on 22 December 2008 but have only just appeared on the Curia website, the IPKat has concluded that it must have taken over two months, even allowing for Christmas holidays, for the court to get the questions translated into a variety of official languages (could there have been any other reason? If so, please let the IPKat know). With luck, says Merpel, we'll have answers within the next two years.  The Kats collectively wonder how influential the ECJ's answers to these questions will be in terms of pan-European and national litigation, if their explanations of "bad faith" and "legitimate interest" are absorbed into dispute resolution proceedings involving entities other than .eu top level domain names.

More on this reference can be found on Class 46 here, with a hat-tip to Cédric Manara.  

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