TAKING THE DIESEL TO LUX; OHIM DATABASES; ECDRs

1 Another ECJ reference

Last week the Curia website gave notice of a reference that the German Bundesgerichtshof made to the European Court of Justice for a preliminary ruling in Case C-281/05 Montex Holdings Ltd v Diesel S.p.A. The questions concern the interpretation of Articles 5(1) and (53) of Council Directive 89/104 to approximate the laws of the Member States relating to trade marks and Articles 28 to 30 of the EC Treaty:

(a) Does a registered trade mark grant its proprietor the right to prohibit the transit of goods with the sign?

(b) If the answer is in the affirmative: may a particular assessment be based on the fact that the sign enjoys no protection in the country of destination?

(c) If the answer to (a) is in the affirmative and irrespective of the answer to (b), is a distinction to be drawn according to whether the article whose destination is a Member State comes from a Member State, an associated State or a third country? Is it relevant in this regard whether the article has been produced in the country of origin lawfully or in infringement of a right to a sign existing there held by the trade mark proprietor?

The IPKat is starting to get deja-vu from these questions on trade mark rights in goods in transit. Previous cases involving goods in transit include Case C-405/03 Class International (currently awaiting the court's ruling), Case C-115/02 Rioglass and Transremar and Case C-383/98 Polo/Lauren.


2 The OHIM CTM archives

Browsing the pages of the website of the Office for Harmonisation in the Internal Market, the IPKat took a fresh look at the list of cases held by OHIM that involve Community trade marks and which have been dealt with by national CTM Courts. If you look now, you'll find just nine cases, all dated 2005, but there's a link to an archive containing 83 cases, spread over seven countries and going back to 99. Curiously, all the 2005 cases on the "current" list are also on the archive (though not all the 2005 cases are on the "current" list).

The IPKat's pleased that OHIM is keeping this list and appreciates the problems it has in obtaining cases. He does wish, though, that there was some means of ascertaining what the cases are about without having to read each one in turn. Even some key terms like 'infringement', 'comparison of goods', 'similarity of marks', 'cancellation' would be better than nothing at all.

Footnote: OHIM does not yet have an accessible database of Community design right decisions from national Community Design Courts. The IPKat hopes that, when it is set up, it will be more accessible from the beginning than the CTM one was, since it's easier to get it right from the start than to start chopping and changing it in the middle.

OHIM reveals its latest case-search technology (Right)


3 Latest copyright reports

Issue 5 of Sweet & Maxwell's European Copyright and Design Reports for 2005 has just been published. It contains a veritable feast of cases. Apart from the curious case of Oakley Inc v Animal Ltd and others, in which a Deputy High Court judge in the UK questioned whether the late implementation in the UK of derogations contained in EU directives was lawful (thus triggering a reference to the ECJ), the ECDR features three cases that are reported for the first time in English:

* Lopez v Philibert and others (Tribunal de Grande Instance de Paris), the "Etre et Avoir" case, in which a much-loved French village schoolteacher (left) discovers that his contributions to an award-winning film fall short of authorship;

* Bruvik v EMI Norsk AS (Court of Appeals, Norway), on the legal niceties of uploading music for others to download; and

* Papanagiotou v The Greek State (Court of Arios Pagos, Athens), on authorship and ownership of copyright in a cable suspension bridge.

The IPKat always enjoys studying the way different jurisdictions tackle the same copyright problems. The ECDR gives him one small means of indulging himself in this harmless pursuit. If you come across any really good (and preferably recent) European copyright cases that deserve an airing in the ECDR, just let the IPKat know here.