INGRES conference on developments in European IP law - copyright, trade marks, designs

Victor Hugo, founder of ALAI

Continuing the marathon of presentations at the INGRES conference on Monday after the lunch break was IPKat's own Eleonora Rosati, who presented on developments in copyright law. Referring to the CJEU's State of Bavaria v. Verlag Esterbauer decision, Eleonora very handily summarized that "basically everything" can be a database in the sense of the Database Directive. She then tried to clear up the mess that is European linking law, not without criticizing ALAI's Hyperlinking Report and Position on the issue, which would require permission for this link, but not for this link, essentially breaking the internet. After the exposition of the CJEU's "Wilde Weldoener" parody decision, a lively discussion ensued whether a parody exception for trade mark rights was needed, and if the legislator thought so, as Recital 27 ("Use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters. Furthermore, this Directive should be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression") of the new Trade Mark Directive 2015/2436 indicates, then why did such an exception not make it into the operative part of the new Directive?

Christoph Bartos, member of the Boards of Appeals at OHIM, provided an overview of the revision of the Community Trade Mark (soon EU Trade Mark), which he considers a minor update that should not cause great disruptions. One point of note is that disclaimers will no longer be allowed, and since the legal basis for disclaimers evaporates, all existing disclaimers become baseless, too. Nobody seemed to understand why the ground for exclusion of art. 4(1)(e) Directive, the "substantial value" given by the shape of the good, was not deleted as suggested by the report of the Max Planck Institute for Innovation and Competition, but now even includes "other [than shape] characteristics" of the mark that give it substantial value. As Sven Klos remarked, having litigated the same provision of Benelux trade mark law (where the "substantial value" exclusion originates from) for 20 years, he still does not know what it is supposed to mean (and the CJEU's Hauck decision hasn't made this easier, has it). If you have any questions regarding the new regulations coming into force on 23 March, you may send those to newregulation@oami.europa.eu, and they will be answered in a Webinar on 2 February 2016.

Historic Hispano Suiza emblem

Of Christoph's picks of the highlights of the 2015 trade mark decisions, the Hispano Suiza decision of OHIM's 2nd Board of Appeal of 9 July 2015 gave rise to some discussion. Hispano Suiza was a famous brand of cars that has fallen out of use (for vehicles) many years ago, but some registrations in Spain and France persisted.  A person unaffiliated with the owners of the Spanish and French registrations had filed for HISPANO SUIZA for vehicles and clothing. Previously, it had filed cancellation actions for non use of the Spanish HISPANO SUIZA registrations, but not for the French registrations. The 2nd Board of Appeal held that the CTM had to be cancelled for bad faith (Article 52(1)(b) CTMR) because the proprietor had knowledge of the older mark and had only filed its mark after trying to "reach a deal" with the proprietor of the older (partially non used) figurative marks and checking whether those marks were still in use. This struck many as going too far in the protection of the reputation of a historic mark - it essentially abolishes the use requirement for marks that have had a high reputation in the past.

Safety valve - not purely functional, but lacking novelty

Peter Lukacsi then covered design law, pointing out that the "multiplicity of form" test was making a comeback in design law (after being abolished - so Peter - in Lindner Recyclingtech v Franssons Verstäder, Case R 690/2007-3). Peter pointed to R 998/2013-3 Austrotherm v Termo Organika and R 2162/2014-3 Velekey Szerelvénygyártó v Rotovill for his proposition that the alternative form test was alive and well (again) in the practice of the OHIM's (soon EUIPO) Boards of Appeal. He concluded by arguing that the same standard should apply in trade mark law - a sentiment some, but not all of the participants shared and all including Peter were well aware of was rather unrealistic given the CJEU's case law.

English cat not happy

Marianne Grabrucker, former judge at the German Bundespatentgericht, reported on the (unsatisfactory) state of the spare parts exception in European design law and the arduous process of finding a common position on this economically highly important aspect of design law. Referring to C-500/14 - Ford v. Wheeltrim, a reference on the interpretation of the Italian spare parts exception (bizarrely still not available in English, but for example in Estonian), she hinted that rather sooner than later there might be a referral from Italy on the question whether rims were "must match" parts at all - a question answered in the negative by most Member States that know a spare parts exception, but one for which divergent case law exists in Italy.

All in all a very informative day; if anything, it was too informative - this Kat has a hard time remembering all the information received.