TOD'S LAW: THE ECJ RULES

The second major intellectual property ruling from the European Court of Justice today comes in Case C-28/04, Tod's SpA and Tod's France SARL v Heyraud SA; Technisynthèse intervening.

Tod’s, an Italian company,claimed to own the artistic intellectual property rights in shoes sold under the TOD'S and HOGAN trade marks. Tod’s France distributed those shoes in France. On hearing that Heyraud was selling, under its own name, shoes that copied or imitated the principal characteristics of its own designs, Tod’s sued for infringement of its registered design rights in shoes bearing the TOD'S and HOGAN trade marks. Heyraud said this action was inadmissible under Article 2(7) of the Berne Convention in that Tod’s may not claim copyright protection in France for designs that do not qualify for such protection in Italy. Tod’s said that Article 2(7) can't apply since it would constitute discrimination based on the copyright owner's nationality under Article 12 EC.

The Tribunal de Grande Instance de Paris took the view that Article 2(7) of the Berne Convention had the effect of depriving Union nationals who, in the country of origin of their work, enjoyed only the protection granted in respect of designs and models, of the right to bring proceedings based on copyright in the countries of the Union which allowed cumulation of protection. It decided however to stay the proceedings and to refer the following question to the Court for a preliminary ruling:

"Does Article 12 EC, which lays down the general principle of non-discrimination on grounds of nationality, mean that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinction based on the country of origin of the work?"

The ECJ answered this question as follows:

"Article 12 EC, which lays down the general principle of non‑discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work".

The IPKat notes the confidence with which the ECJ applied its earlier non-discrimination case law in Joined Cases C-92/92 and C-326/92 Phil Collins and Others [1993] ECR I-5145, paragraph 27, and Case C-360/00 Ricordi [2002] ECR I-5089. He reminds readers that this decision does not mean that the French have to give Italian claimants in France the benefit of legal rights available to Italian claimants in Italy; it only means that the French can't withhold from Italian claimants in France the enjoyment of rights enforceable by French claimants in France.

Tod's Lore here
Sod's Law here
Rod's Law here
Mod's Law here
God's Law here