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Tuesday, 27 March 2012

Who Rules the Domain of the Belgian Pie?

Dashing around Europe last week, and indeed visiting Brussels, this Kat failed to spot that there was a hearing before the Court of Justice of the European Union in a reference for a preliminary ruling from the Brussels Cour d'appel in Case C-376/22 Pie Optiek v Bureau Gevers, European Registry for Internet Domains.  Checking his records, the Kat has to confess that he never even saw it coming.  His curiosity was piqued not only by the fact that this case seemed to have escaped him altogether but that the first-named defendant is none other than Bureau Gevers.  Now, this name may not be one with all readers are familiar, but it is about as close to being a household name as you can get in European trade mark matters. Also, of the "200+ IP professionals, from 10 different locations in France, Switzerland and the Benelux" to which the firm's website alludes, a good number of them are personal friends of the IPKat and an even larger number of them are readers.

Having no idea what the underlying dispute is about, the Kat now moves on to the questions referred:
"Must Article 12(2) 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 be interpreted as meaning that, in a situation where the prior right concerned is a trade mark right, the words 'licensees of prior rights' may refer to a person who has been authorised by the proprietor of the trade mark solely to register, in his own name but on behalf of the licensor, a domain name identical or similar to the trade mark, but without being authorised to put the trade mark to other uses or to use the sign as a trade mark - for example, for the purpose of marketing of goods or services under the trade mark? 
If that question is answered in the affirmative, must Article 21(1)(a) 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 be interpreted as meaning that 'rights or legitimate interest' exist even if the 'licensee of prior rights' has obtained registration of the .eu domain name in his own name but on behalf of the proprietor of the trade mark where the latter is not eligible in accordance with Article 4(2)(b) of Regulation ... 733/2002 ... on the implementation of the .eu Top Level Domain?"
Although the words "trade mark" appear seven times between the two questions, intellectual property enthusiasts might not have spotted the hearing because it was classed not as "Intellectual Property" but as "Industrial Policy" -- a term which this Kat never uses (except here) because he's not sure what it covers.

Now, will someone please tell the Kat what the underlying dispute is all about? Is someone really suing his friends at Gevers?  Are they in trouble? Do they need his help?  Merpel doubts it: she suspects that this might just be a put-up job -- of which Case C-283/01 Shield Mark BV v Joost Kist H.O.D.N. Memex is the enjoyable epitome, hotly followed by ONEL/OMEL -- in which a bunch of bright IP practitioners who have had a lot of fun discussing the hypotheticals decide that, for the cost of a reference and a bus to Luxembourg, they can ask the Court of Justice to tell them who's right.

3 comments:

Anonymous said...

Not sure what it's about, but looking at the provision and the parties concerned, I would assume that a trade mark holder has instructed ("licensed"?) Bureau Gevers to register a domain name in the .eu Sunrise on its behalf but in its own name.

Next, another party could have contested that Gevers is a "licensee" in the sense of Art. 12(2) because it was only licensed to use the trade mark to apply in the Sunrise and not to do other things?

Thomas Schafft said...

The Czech Arbitration Court's decision in case no. 04045 regarding the domain name "lensworld.eu" (http://eu.adr.eu/adr/decisions/decision.php?dispute_id=4045) might be a good starting point.

Severine Dusollier said...

What happens in that case is that Bureau Gevers has acted on behalf of a US company to register some domain names in .eu during the sunrise period. (it seems that there was a trick used by some non EU companies to register their name or trademark in the domain name .eu, as such registration is by regulation reserved to EU companies). Another company would like to invalidate this registration as it holds a right in the same name "lensworld". Its main argument is that only EU citizens and companies can register such domain names. The Belgian court of first instance has validated the registration by considering that Bureau Gevers was a licensee of the US company for that trademark (licensees based in the European Union are entitled to register in .eu). The question in appeal is whether the notion of "licensee" in the EU regulation of the domain name .eu includes the license given for the sole purpose of registering the trademark as a domain name, which explains the questions referred.

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