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Tuesday, 4 May 2010

Two new IP references for CJEU: any news?

The IPKat and his colleagues are buzzing with excitement at the chance to read the questions contained in a fresh reference to the Court of Justice of the European Union for a preliminary ruling from the Hoge Raad der Nederlanden (Netherlands). The case in question is Case C-119/10 Frisdranken Industrie Winters BV v Red Bull GmbH. What the top Dutch appellate court is asking (though the Kats are sure it knows the answers already and is only asking in order to support the position it's going to take) are as follows:

"1a. Is the mere 'filling' of packaging which bears a sign ... to be regarded as using that sign in the course of trade within the meaning of Article 5 of the Trade Mark Directive, even if that filling takes place as a service provided to and on the instructions of another person, for the purposes of distinguishing that person's goods?
1b. Does it make any difference to the answer to question 1a if there is an infringement for the purposes of Article 5(1)(a) [same mark, same goods/services] or (b) [similarity + likelihood of confusion]?
2. If the answer to question 1a is in the affirmative, can using the sign then also be prohibited in the Benelux on the basis of Article 5 of the Trade Mark Directive if the goods bearing the sign are destined exclusively for export to countries outside (a) the Benelux area or (b) the European Union, and they cannot - except in the undertaking where the filling took place - be seen therein by the public?
3. If the answer to question 2 (a or b) is in the affirmative, what criterion must be used when answering the question whether there has been trade mark infringement: should the criterion be the perception of an average consumer who is reasonably well-informed and reasonably observant and circumspect in the Benelux or alternatively in the European Union - who then in the given circumstances can only be determined in a fictional or abstract way - or must a different criterion be used in this case, for example, the perception of the consumer in the country to which the goods are exported?"
There's another reference for a preliminary ruling which has an IP flavour to it, but this one's from Italy, from the Corte di Appello di Torino in Case C-135/10 SCF Consorzio Fonografici v Marco Del Corso. Here the questions, involving copyright, have a deliciously international twist to them:
"1. Are the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations ..., the TRIPs Agreement ... and the WIPO ... Treaty on Performances and Phonograms ... directly applicable within the Community legal order?
2. Are the abovementioned sources of uniform international law also directly effective within the context of private-law relationships?
3. Do the concepts of 'communication to the public' contained in the abovementioned treaty-law texts mirror the Community concepts contained in Directives 92/100 [on rental and lending rights] and 2001/29 [on the Information Society] and, if not, which source should take precedence?
4. Does the broadcasting, free of charge, of phonograms within private dental practices engaged in professional economic activity, for the benefit of patients of those practices and enjoyed by them without any active choice on their part, constitute 'communication to the public' or 'making available to the public' for the purposes of the application of Article 3(2)(b) of Directive 2001/29?
5. Does such an act of transmission entitle the phonogram producers to the payment of remuneration?"
The IPKat had heard rumblings concerning the Red Bull reference but knew nothing of the Italian one. If any readers have useful and/or interesting background information, can they please post it as a Comment below?

Red Bull here
Black Bull here
White Bull here

1 comment:

elisa said...

Dear Jeremy,

I read your post about the referral to the ECJ of the Court of Appeal of Turin concerning the phonogram producers.

As far as I am aware, the SCF (Association of phonogram producers whose members are about 310 companies, majors and independents) sued a dentist who had refused to pay charges for broadcasting phonograms in his waiting room.
It is worth noting that the dentist won the case in the First Instance. I will get back to you all if I am able to find the decision of the Court of Appeal of Turin (city where I am based).

For the Italian members and for anybody who has a command of Italian, it could be interesting to read an article of Professor Luigi Carlo Ubertazzi, published on AIDA, 2005, pag. 292, titled “Spunti sulla comunicazione al pubblico dei fonogrammi” (also published on Quaderno di Aida n. 14 Studio in onore del Prof. Gerhard Schricker, Giuffrè, Milano, 2005, 275) which is very useful to fully understand the subject and foresees almost all the questions the Court of Appeal of Turin referred.

Kind regards,

Elisa Vittone
Law Office Saglietti & Associati

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