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Monday, 15 March 2010

Busy times ahead for CJ

Making a new resolution, this member of the IPKat team is determined to break with the habit of a professional lifetime and start to abbreviate what he used to refer to as the 'ECJ' as the 'CJ'. Those letters stand for its real name, the Court of Justice -- the top tier of the Court of Justice of the European Union (CJEU). Apart from being more accurate, CJ and CJEU are less likely to be confused with the European Court of Human Rights than is 'ECJ' (since both started with the words "European Court").


The busy-ness of the CJ is reflected in, but not limited to the following cases that are heading its way:

* Case C-46/10 Viking Gas A/S v BP Gas A/S, a reference for a preliminary ruling from the Højesteret (Denmark), lodged on 28 January 2010. The questions referred for a ruling are these:
"Is Article 5, in conjunction with Article 7, of First Council Directive 89/104 ... to approximate the laws of the Member States relating to trade marks [Naughty Danes! This directive has been repealed and replaced by Directive 2008/95] to be interpreted in such a way that company B is guilty of an infringement of a trade mark if it fills gas bottles which originate from company A with gas which it then sells, where the following circumstances apply:
1. A sells gas in so-called composite bottles with a special shape, which is registered as such, that is to say, as a shape trade mark, under a Danish trade mark and an EC trade mark [ie a Community trade mark]. A is not the proprietor of those shape trade marks but has an exclusive licence to use them in Denmark and has the right to take legal proceedings in respect of infringements in Denmark.
2. On first purchase of a composite bottle filled with gas from one of A's dealers the consumer also pays for the bottle, which thus becomes the consumer's property.
Right: Viking's legal team is enraged to discover how far the CJEU is from the sea ...
3. A refills the composite bottles by a procedure under which the consumer goes to one of A's dealers and, on payment for the gas, has an empty composite bottle exchanged for a similar one filled by A.
4. B's business consists in filling gas into bottles, including composite bottles covered by the shape trade mark referred to in 1., by a procedure under which consumers go to a dealer associated with B and, on payment for the gas, can have an empty composite bottle exchanged for a similar one filled by B.
5. When the composite bottles in question are filled with gas by B, adhesive labels are attached to the bottles indicating that the filling was undertaken by B?
If it may be assumed that consumers will generally receive the impression that there is an association between B and A, is this to be regarded as significant for the purpose of answering Question 1?
If Question 1 is answered in the negative, may the outcome be different if the composite bottles - apart from being covered by the shape trade mark referred to - also feature (are imprinted with) the registered figurative and/or word mark of A, which is still visible irrespective of any adhesive labels affixed by B?
If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if it is assumed that, with regard to other types of bottle which are not covered by the shape trade mark referred to but which feature A's word and/or figurative mark, A has for many years accepted, and continues to accept, the refilling of the bottles by other companies?
If either Question 1 or Question 3 is answered in the affirmative, may the outcome be different if the consumer himself goes to B directly and there:
(a) on payment for the gas, obtains, in exchange for an empty composite bottle, a similar one filled by B, or
(b) on payment, has a composite bottle which he has brought filled with gas?"
The IPKat loves these issues, which he has deployed as IP exam questions over the years and which have been litigated under pre-Directive law both in England and Ireland. If you would like to comment on this case to the policy directorate at the UK's Intellectual Property Office, please e-mail policy@ipo.gsi.gov.uk before 18 March 2010. Your incisive comment might just trigger a decision of the UK government to intervene in the proceedings.


* Case C-552/09 P, Ferrero SpA v Office for Harmonisation in the Internal Market [pompously excessive verbiage deleted], Tirol Milch reg.Gen.mbH Innsbruck, this being an appeal by Ferrero SpA against the judgment of the General Court in Case T-140/08 (noted by the IPKat, predicting an appeal, here). Among the issues raised by Ferrero, which believes that there is a likelihood of confusion of the relevant consumers between its own earlier Italian KINDER mark and the Timi Kinderjoghurt sign, is whether the General Court correctly took into account the fact that KINDER is part of a family of marks.


* Case C-22/10 P REWE-Zentral AG v Office for Harmonisation in the Internal Market [ditto], Aldi Einkauf GmbH & Co. OGH, this being an appeal by REWE-Zentral AG against the judgment of the General Court in Case T-150/08. This Kat is currently unfamiliar with this dispute, in which the General Court has backed the Board of Appeal's decision according that there is a likelihood of confusion between CLINA and the earlier Community word mark CLINAIR.


* Case C-449/09 Canon Kabushiki Kaisha v IPN Bulgaria OOD, this being the re-referred version of last year's mystery case C-181/09 (see IPKat note here), which has actually retained a degree of mystery even now. The UK's IPO explains the question thus:
"How is Article 5(3) (c) of Directive 89/104 [which remains repealed: see note to Case C-46/10 above] to be interpreted: does it relate to importation or exportation of original goods which have been manufactured and put on the market by the proprietor of the right to the protected trade mark, or to importation and exportation of goods which imitate the trade mark of the proprietor of the right to the protected trade mark, that is to say counterfeit goods, which were not manufactured by the proprietor of the right to the protected trade mark?".
Curiously the IPKat has been unable to find this reference on the Curia website by searching the case number or the names of the parties. Still, if you would like to inspire or provoke the IPO to intervene please e-mail policy@ipo.gsi.gov.uk before 22 March 2010.

4 comments:

Anonymous said...

The Danish Supreme Court (Højesteret) has repeatedly confirmed that in IP-related matters it's the law at the date of the IP-related transgression that shall be used to establish if infringement has occured. Later legal developments cannot be taken into account, in this case a novel EU-directive.

Anonymous said...

That's a great reference from the Danes - in fact, I'd give it my 'Reference of the year' award.

First thought: how did the shape get registered in the first place - it must be VERY special.

Second thought: expect the Court's answer to have the words: "essential" and "function" somewhere near the beginning.

Third thought: don't be so harsh with your red pen, Jeremy, some of us like to see and encourage references from countries, other than the 'usual suspects'.

Furthermore, when the Danes referred it, it probably was the 'old' Directive.

patently said...

this member of the IPKat team is determined to break with the habit of a professional lifetime and start to abbreviate what he used to refer to as the 'ECJ' as the 'CJ'.

I can see your logic, but are you not inviting confusion with the International Court of Justice? One of them should get some decent trademark advice. Confusion is never good...

I also cannot help but wonder what other type of Court we might deal with...?

Anonymous said...

Are their Courts which are not concerned with "justice"? Does the use of the abbreviation "CJ" distinguish over the UK courts, perhaps?

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