Collective societies, rates, monopoly positions and a EU Court decision

The European Court ruled in case C‑177/16 Autortiesību un komunicēšanās konsultāciju aģentūra / Latvijas Autoru apvienība v Konkurences padome. This case concerns the following:

The AKKA/LAA, a collective management organisation handling copyright for musical works, is the only entity authorised in Latvia to issue, for consideration, licences for the public performance of musical works in respect of which it manages the copyright. It collects the fees from which Latvian copyright holders are remunerated as well as, through contracts concluded with foreign collecting societies, those from which foreign copyright holders are remunerated. Holders of its licences include shops and service centres, as users of works protected by copyright and related rights.

By decision of 1 December 2008, the Competition Council imposed a fine on the AKKA/LAA for abuse of a dominant position as a result of the application of excessively high rates. The AKKA/LAA subsequently adopted new rates applicable from 2011. On 31 May 2012, the Competition Council opened a procedure to examine those new rates.

In the context of that procedure, the Competition Council first compared the rates applied in Latvia for the use of musical works in shops and service centres with those applied in Lithuania and Estonia as neighbouring Member States and markets. The Competition Council found that the rates applied in Latvia were higher than those applied in Estonia and, in most cases, higher than those charged in Lithuania. Although, in those three Member States, rates are set according to the surface area of the shop or service centre concerned, the Competition Council observed that, for surface areas of between 81 m² and 201-300 m², the rates applied in Latvia were two to three times higher than those applied in the other two Baltic States.

Secondly, the Competition Council, having recourse to the purchasing power parity index (‘PPP index’), compared the fees in force in approximately 20 other Member States and found in this regard that the rates payable in Latvia exceeded the average level of those charged in those other Member States by 50% to 100%. More specifically, in the case of shops or service centres with surface areas of between 85.5 m² and approximately 140 m², only the rates applied in Romania were higher.

Having taken the view that the fees in force in Latvia, in the segments where they were significantly higher than in Estonia and in Lithuania, were unfair, the Competition Council, by decision of 2 April 2013, imposed a fine of 45 645.83 Latvian lats (LVL) (approximately EUR 32 080) on the AKKA/LAA for abuse of a dominant position pursuant to Article 13(1)(4) of the Law on competition and point (a) of the second paragraph of Article 102 TFEU (‘the contested decision’). The Competition Council calculated the amount of that fine on the basis of the AKKA/LAA’s turnover, considering in this regard that remuneration collected for rightholders constituted an integral part of that organisation’s turnover and had to be taken into account.

The AKKA/LAA brought an action before the Administratīvā apgabaltiesa (Regional Administrative Court, Latvia) seeking the annulment of the contested decision, raising, in essence, four pleas in support of that action. First, it argued, the Competition Council essentially restricted the comparison of the rates applicable in Latvia to those applicable in neighbouring Member States, namely Estonia and Lithuania, whereas, in respect of gross domestic product and price levels, the situation in Latvia is also comparable to those in Bulgaria, Romania, Poland and Hungary. Secondly, it submitted, the Competition Council did not state clearly the method used to calculate the reference rates. Thirdly, in its opinion, the Competition Council erred in taking the view that it was incumbent on the AKKA/LAA to justify the level of its rates. Fourthly, it submitted, the Competition Council should not have taken into account, when calculating the AKKA/LAA’s fine, the sums collected for the remuneration of authors, given that those sums do not form a part of the assets of that organisation.

By judgment of 9 February 2015, the Administratīvā apgabaltiesa (Regional Administrative Court) partially annulled the contested decision. That court held that the Competition Council was right to find that there had been an abuse of a dominant position by the AKKA/LAA. It also took the view that the comparison of rates for the same type of services between Latvia, Estonia and Lithuania was justified and that the AKKA/LAA had provided no explanation for the fact that the rates applicable in Latvia were significantly higher than those applicable in Estonia and Lithuania. However, since it found that the Competition Council had, for the purpose of calculating the fine, improperly taken into account the sums collected for the remuneration of authors, that court ordered the Competition Council to recalculate the amount of the fine within two months following the delivery of its judgment.

The AKKA/LAA appealed in cassation against that judgment to the referring court on the ground that that judgment had not given it full satisfaction. The Competition Council, for its part, also appealed against that judgment on the ground that, by that judgment, the Administratīvā apgabaltiesa (Regional Administrative Court) had annulled the provisions of the contested decision concerning the fine imposed.

According to the AKKA/LAA, the Administratīvā apgabaltiesa (Regional Administrative Court) had not set out objective and verifiable criteria to justify its view that the rates applicable in Latvia were capable of being compared with those in Estonia and Lithuania. Thus, it argued, that court had not based its reasoning on economic criteria, but on criteria relating to the territorial, historical and cultural situation common to those States.

The AKKA/LAA challenges, in particular, the finding that the geographical proximity of the other Baltic States could be a decisive factor.

The Competition Council, for its part, argues that the fine imposed is consistent with the national legislation in force. It emphasises in particular that, in competition law, ‘turnover’ means the total amount of all revenue resulting from the economic activity, which, in the present case, includes the sums collected by the AKKA/LAA for the remuneration of authors.

The Augstākā tiesa, Administratīvo lietu departaments (Supreme Court, Administrative Cases Division, Latvia) is uncertain as to the proper interpretation of point (a) of the second paragraph of Article 102 TFEU. First, that court is unsure whether the AKKA/LAA’s activities have an impact on trade between Member States, and, therefore, whether the case at issue in the main proceedings comes within the scope of that provision. Secondly, that court has doubts as to the method used to determine the unfair nature of the prices. Thirdly, it has reservations concerning the calculation of the fine, in particular as to whether the remuneration collected for the rightholders should have been taken into account for that purpose.

Concerning the first point, the referring court notes that, in the contested decision, the Competition Council stated that the AKKA/LAA had also collected fees in respect of musical works originating in other Member States and that, consequently, unfair prices were liable to deter the use in Latvia of works of authors from other Member States.

As for the second point, concerning the method used to determine the unfair nature of the prices, the referring court takes the view, on the one hand, that, when rates charged in a Member State correspond to a multiple of rates applied in the other Member States, as in the case that led to the judgment of 13 July 1989, Lucazeau and Others (110/88, 241/88 and 242/88, EU:C:1989:326), that circumstance is indicative of an abuse of a dominant position. On the other hand, it draws attention to the fact that uncertainty still persists as to how rates are set in situations different to the one in that case.

In the present case, the question is whether the comparison of the rates applicable in Latvia with the rates applicable in Estonia and Lithuania is sufficient. Such a limited comparison could, however, prove itself counter-productive in the sense that organisations in neighbouring Member States could, in concert, raise their rates without that being perceptible. In the event that such a method of comparison were not to be valid, the referring court is uncertain whether it would be appropriate also to compare the rates in all the Member States adjusted in accordance with the PPP index.

Subsequently, the referring court is uncertain under what conditions rates are to be considered ‘appreciably higher’ within the meaning of paragraph 25 of the judgment of 13 July 1989, Lucazeau and Others (110/88, 241/88 and 242/88, EU:C:1989:326), and the undertaking concerning is under an obligation to ‘justify the difference by reference to objective dissimilarities between the situation in the Member State concerned and the situation prevailing in all the other Member States’, within the meaning of that same paragraph.

As for the third point, concerning the calculation of the amount of the fine, the referring court points out that a situation such as that in the main proceedings, in which a fine has been imposed on a copyright management organisation, has not yet been ruled adjudicated on by the Court. Thus, it is necessary to clarify the question of whether the sums collected as remuneration for copyright holders should be taken into account.

In those circumstances, the Augstākās tiesas, Administratīvo lietu departaments (Supreme Court, Administrative Cases Division) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is [point (a) of the second paragraph of] Article 102 TFEU applicable to a dispute concerning the rates laid down by a national copyright management organisation if that entity also collects remuneration in respect of works of foreign authors and the rates laid down by it may be a deterrent to the use of those works in the Member State in question?

(2) For the purpose of defining the concept of “unfair prices” used in [point (a) of the second paragraph of] Article 102 TFEU, in the context of the management of copyright and related rights, is it appropriate and sufficient —– and in which cases —– to draw a comparison between the prices (rates) in the market in question and the prices (rates) in neighbouring markets?

(3) For the purpose of defining the concept of “unfair prices” used in [point (a) of the second paragraph of] Article 102 TFEU in the context of the management of copyright and related rights, is it appropriate and sufficient to use the PPP index based on gross domestic product?

(4) Must the comparison of rates be made for each separate segment thereof or in relation to the average level of the rates?

(5) When must it be considered that the difference in the rates examined in connection with the concept of “unfair prices [(rates)]” used in [point (a) of the second paragraph of] Article 102 TFEU is appreciable, with the result that it is incumbent upon the economic operator enjoying a dominant position to demonstrate that its rates are fair?

(6) What information can reasonably be expected from an economic operator to prove the fair nature of the rates for works covered by copyright, within the scope of [point (a) of the second paragraph of] Article 102 TFEU, if the cost of those works cannot be determined in the same way as that of products of a material nature? Is it solely a question of the cost of administering the copyright management organisation?

(7) In the event of infringement of competition law, is it appropriate to exclude from the business turnover of a copyright management organisation, for the purposes of determining a fine, the remuneration paid to authors by that economic operator?’

The Court’s decision:

1. Trade between Member States is capable of being affected by the level of rates set by a copyright management organisation that holds a monopoly and also manages the rights of foreign copyright holders, with the result that Article 102 TFEU may be applicable.

2. For the purposes of examining whether a copyright management organisation applies unfair prices within the meaning of point (a) of the second paragraph of Article 102 TFEU, it is appropriate to compare its rates with those applicable in neighbouring Member States as well as with those applicable in other Member States adjusted in accordance with the PPP index, provided that the reference Member States have been selected in accordance with objective, appropriate and verifiable criteria and that the comparisons are made on a consistent basis. It is permissible to compare the rates charged in one or several specific user segments if there are indications that the excessive nature of the fees affects those segments.

3. The difference between the rates compared must be regarded as appreciable if that difference is significant and persistent. Such a difference is indicative of abuse of a dominant position and it is for the copyright management organisation holding a dominant position to show that its prices are fair by reference to objective factors that have an impact on management expenses or the remuneration of rightholders.

4. In the case where the infringement referred to in point (a) of the second paragraph of Article 102 TFEU is established, remuneration intended for rightholders must be included, for the purpose of determining the amount of the fine, in the turnover of the copyright management organisation concerned, provided that that remuneration forms part of the value of the services provided by that organisation and that that inclusion is necessary in order to ensure that the penalty imposed is effective, proportionate and dissuasive. It is for the referring court to verify, in the light of all the circumstances of the case, whether those conditions are met.

 

 

 

PORT CHARLOTTE v Porto – a EU Court decision

The European Court has issued a decision on case C‑56/16 P UIPO срещу Instituto dos Vinhos do Douro e do Porto IP. The case concerns the following:

n 27 October 2006, [Bruichladdich Distillery Co. Ltd, (“Bruichladdich”)] filed an application for registration of an [EU] trade mark with [EUIPO] pursuant to … Regulation [No 207/2009].

Registration as a mark was sought for the word sign PORT CHARLOTTE (“the contested mark”).

The goods in respect of which registration was sought are in Class 33 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: “Alcoholic beverages”.

The contested mark was registered on 18 October 2007 under No 5421474, and published in Community Trade Marks Bulletin No 60/2007 of 29 October 2007.

On 7 April 2011, [IVDP] filed an application with [EUIPO] for a declaration that the contested mark was invalid pursuant to Article 53(1)(c), read in conjunction with Article 8(4), Article 53(2)(d), and Article 52(1)(a), read in conjunction with Article 7(1)(c) and (g) of Regulation No 207/2009, in so far as that mark designated the goods referred to in paragraph 3 above.

In response to the application for a declaration of invalidity, [Bruichladdich] limited the list of goods in respect of which the contested mark was registered to goods corresponding to the following description: “Whisky”.

In support of its application for a declaration of invalidity, [IVDP] relied on the appellations of origin “[P]orto” and “[P]ort”, which it claimed … were protected, in all the Member States, by several provisions of Portuguese law and by Article 118m(2) of … Regulation … No [1234/2007] … .

By decision of 30 April 2013, the Cancellation Division rejected the application for a declaration of invalidity.

On 22 May 2013, [IVDP] filed a notice of appeal with [EUIPO], pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

By [the contested decision], the Fourth Board of Appeal of [EUIPO] dismissed the appeal.

In the first place, the Board of Appeal rejected the argument regarding infringement of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, in essence on the ground that the protection of designations of origin for wines was governed exclusively by Regulation No [234/2007] and, therefore, fell within the exclusive competence of the European Union. …

Furthermore, the Board of Appeal found that those geographical indications were protected only for wines and, therefore, for goods that were neither identical nor comparable to a product denominated “whisky”, namely a spirit drink with a different appearance and degree of alcohol that cannot comply with the product specification for a wine within the meaning of Article 118m(2)(a)(i) of Regulation No [1234/2007]. In so far as [IVDP] relied on the reputation of those designations of origin within the meaning of Article 118m(2)(a)(ii) of that regulation, the Board of Appeal found that the contested mark neither “use[d]” nor “evoke[d]” the geographical indications “porto” or “port”, so that it was not necessary to ascertain whether they had a reputation. … The Portuguese consumer would know that “the geographic term is actually ’Oporto’ or ‘Porto’ and that ‘Port’ is just its shortened form used on wine labels to refer to the type of wine protected under the geographical indication” (paragraphs 19 to 26 of the contested decision).

The Board of Appeal rejected [IVDP’s] argument that the protection under Article 118m(2) of Regulation No [1234/2007] ought to be extended to any sign “that includes” the term “port”. There was also no “evocation” of a port wine within the meaning of Article 118m(2)(b) of that regulation, since whisky was a different product and nothing in the contested mark contained a potentially misleading or confusing statement. Therefore, according to the Board of Appeal, the appeal was without merit under the provisions of EU law protecting geographical origins for wines and there was no need to assess whether the contested mark had a reputation (paragraphs 27 to 29 of the contested decision).

In the second place, the Board of Appeal rejected the argument regarding infringement of Article 53(2)(d) of Regulation No 207/2009, based on the claimed appellations of origin ‘[P]orto’ and ‘[P]ort’, registered with the World Intellectual Property Organisation (WIPO) on 18 March 1983 under No 682, in accordance with the Lisbon Agreement. …

In the third place, the Board of Appeal rejected the arguments regarding infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(c) and (g) thereof. …’

The Court’s decision:

 In the present case, the General Court, following an assessment of facts that is not open to challenge, found, in paragraphs 71 and 76 of the judgment under appeal, that the sign ‘PORT CHARLOTTE’, since it consists of the term ‘port’ and the first name Charlotte, will be perceived by the relevant public as a logical and conceptual unit referring to a harbour, that is to say a place situated on the coast or on a river, with which a first name, which constitutes the most important and most distinctive element in the contested mark, is associated. According to the General Court, the relevant public will not perceive, in that sign, any geographical reference to the port wine covered by the designation of origin in question.

 By its third ground of appeal in the cross-appeal, IVDP submits that the General Court infringed Article 118m(2)(b) of Regulation No 1234/2007 by holding, in paragraph 75 of the judgment under appeal, that the use of the contested mark PORT CHARLOTTE, which is registered in respect of a whisky, did not involve ‘misuse, imitation or evocation’, within the meaning of that provision, of the protected designation of origin ‘Porto’ or ‘Port’.

The General Court, without erring in law, applied the fundamental criterion deriving from that case-law, by holding, in paragraph 76 of the judgment under appeal, that, having regard to the findings set out in paragraph 71 of that same judgment, even though the term ‘port’ forms an integral part of the contested mark, the average consumer, even if he is of Portuguese origin or speaks Portuguese, in reaction to a whisky bearing that mark, will not associate it with a port wine covered by the designation of origin in question.

The General Court added, in paragraph 76 of the judgment under appeal, that that assessment is confirmed by the not insignificant differences between the respective features of a port wine and a whisky in terms of, inter alia, ingredients, alcohol content and taste, of which the average consumer is well aware and to which the Board of Appeal had rightly drawn attention in paragraphs 20 and 34 of the contested decision.

So in that regard:

1.      Sets aside the judgment of the General Court of the European Union of 18 November 2015, Instituto dos Vinhos do Douro e do Porto v OHIM — Bruichladdich Distillery (PORT CHARLOTTE) (T‑659/14, EU:T:2015:863);

2.      Dismisses the action brought by Instituto dos Vinhos do Douro e do Porto IP in Case T‑659/14 against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 8 July 2014 (Case R 946/2013-4);

3.      Orders Instituto dos Vinhos do Douro e do Porto IP to pay the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Bruichladdich Distillery Co. Ltd in both sets of judicial proceedings;

4.      Orders the Portuguese Republic and the European Commission to bear their own respective costs.

The Schweppes case – the EU Court Advocate General’s opinion

The Advocate General of the European Court P. MENGOZZI issued his opinion on case C‑291/16 Schweppes SA v Red Paralela SL, Red Paralela BCN SL. The case concerns the following:

The SCHWEPPES trade mark dates back to 1783, when Jacob Schweppe invented the first industrial process for the carbonisation of water, which resulted in a drink then known as ‘Schweppes’s Soda Water’, and founded the company J. Schweppe & Co. in Geneva (Switzerland). Over the years, the SCHWEPPES trade mark has acquired a worldwide reputation in the market for tonic waters.

In Europe, the sign ‘Schweppes’ is registered as a series of national trade marks, word marks and figurative marks, all of which are identical, or practically identical, in all the EEA States.

For many years, Cadbury Schweppes was the sole proprietor of those registered rights. In 1999, it sold the rights relating to the SCHWEPPES trade mark in 13 States of the EEA to The Coca-Cola Company (‘Coca-Cola’). It retained ownership of the rights in 18 other States. (3) In 2009, Cadbury Schweppes, which had since become Orangina Schweppes Group, was acquired by the Japanese group Suntory.

The SCHWEPPES trade marks registered in Spain are owned by Schweppes International Ltd, the English subsidiary of Orangina Schweppes Holding BV, which is the ultimate parent company of the Orangina group. Schweppes, the Spanish subsidiary of Orangina Schweppes Holding, holds an exclusive licence for the exploitation of the marks in Spain.

On 29 May 2014, Schweppes initiated infringement proceedings against the Red Paralela companies, concerning the importation from the United Kingdom and the sale in Spain of bottles of tonic water bearing the SCHWEPPES trade mark. According to Schweppes, the alleged actions are unlawful, in that the bottles of tonic water were put up and placed on the market not by itself or with its consent, but by Coca-Cola, which has no connection with Orangina Schweppes Group. Schweppes maintains that, in those circumstances, and given the fact that the signs and products in question are identical, consumers will be unable to identify the commercial origin of the goods.

The Red Paralela companies are defending those infringement proceedings, arguing exhaustion of the trade mark rights, in so far as concerns products bearing the SCHWEPPES trade mark originating in Member States of the European Union in which Coca-Cola is the proprietor of the mark, resulting from tacit consent. The Red Paralela companies also assert that there are undeniable legal and economic links between Coca-Cola and Schweppes International in the common exploitation of the sign ‘Schweppes’ as a universal mark. (4)

According to the findings made by the referring court, the relevant facts of the present case are as follows:

–   despite being the proprietor of the parallel marks in only some EEA States, Schweppes International has promoted a global image of the SCHWEPPES trade mark;

–  Coca-Cola, which is the proprietor of the parallel marks registered in the other EEA States, has contributed to maintaining that global trade mark image;

–  that global image is a cause of confusion for the relevant public in Spain regarding the commercial origin of goods bearing the SCHWEPPES trade mark;

–  Schweppes International is responsible for the European website that deals specifically with the SCHWEPPES trade mark (www.schweppes.eu), which not only provides general information about goods bearing that trade mark, but also contains links to various local websites, in particular the United Kingdom website that is managed by Coca-Cola;

–  Schweppes International, which holds no rights in the SCHWEPPES trade mark in the United Kingdom (where the mark is owned by Coca-Cola) refers on its website to the British origins of the mark;

–  Schweppes International and Schweppes use the image of the United Kingdom goods in their advertising;

–  in the United Kingdom, Schweppes International promotes and provides customer information concerning goods bearing the SCHWEPPES trade mark on social media;

–  the presentation of goods bearing the SCHWEPPES trade mark that are sold by Schweppes International is very similar — and in some Member States, such as the Kingdom of Denmark and the Kingdom of the Netherlands, identical — to the presentation of goods bearing the same mark that are of United Kingdom origin;

–  Schweppes International, whose registered office is in the United Kingdom, and Coca-Cola coexist peacefully in the United Kingdom;

–  following the transfer of some of the parallel marks to Coca-Cola in 1999, the two proprietors of the SCHWEPPES trade marks in the EEA have, in their respective territories, applied in parallel for the registration of new, identical or similar SCHWEPPES trade marks with respect to the same goods (such as, inter alia, the SCHWEPPES ZERO trade mark);

–  even though Schweppes International is the proprietor of the parallel marks in the Netherlands, the trade mark is exploited in that country (that is to say, the goods are prepared, bottled and sold) by Coca-Cola in its capacity as licensee;

–  Schweppes International makes no objection to the online sale of trademarked goods of United Kingdom origin in several EEA States in which it is the proprietor of the SCHWEPPES trade mark, such as Germany and France. Moreover, goods bearing that trade mark are sold throughout the territory of the EEA through web portals, with no distinction as to origin;

–  Coca-Cola has made no opposition, on the basis of its trade mark rights, to Schweppes International’s application for registration of an EU trade mark containing the verbal element ‘Schweppes’.

It was in those circumstances that the Juzgado de lo Mercantil No 8 de Barcelona (Commercial Court No 8, Barcelona, Spain) decided to stay the proceedings before it and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is it compatible with Article 36 TFEU and with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive (EU) 2015/2436 for the proprietor of a trade mark in one or more Member States to prevent the parallel importing or marketing of goods coming from another Member State which bear a trade mark that is identical or practically identical and is owned by a third party, when the said proprietor has promoted a global trade mark image that is associated with the Member State from which originate the goods of which it intends to prohibit the importation?

(2) Is it compatible with Article 36 TFEU and with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive 2015/2436 for goods to be sold under a trade mark, which is well known, within the EU when the registered proprietors maintain throughout the EEA a global trade mark image which gives rise to confusion in the minds of average consumers concerning the commercial origin of the goods?

(3) Is it compatible with Article 36 TFEU and with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive 2015/2436 for the proprietor of national trade marks which are identical or similar in various Member States to oppose the importation into a Member State where it owns the trade mark of goods, identified by a trade mark identical or similar to its own, coming from a Member State in which it is not the proprietor, when at least in another Member State where it is not the proprietor of the trade mark it has expressly or tacitly consented to the importation of those same goods?

(4) Is it compatible with Article 7(1) of Directive 2008/95 and Article 15(1) of Directive 2015/2436 and with Article 36 TFEU for the proprietor A of a trade mark X of a Member State to oppose the importation of goods identified by the said trade mark if those goods come from another Member State where a trade mark identical to X (Y) is recorded as registered by another proprietor B which markets the same and:

–  proprietors A and B maintain intense commercial and economic relations, although there is no strict dependency between them regarding the joint exploitation of trade mark X;

–  proprietors A and B maintain a coordinated trade mark strategy deliberately promoting vis-à-vis the relevant public an appearance or image of a single and global trade mark; or

–   proprietors A and B maintain intense commercial and economic relations, although there is no strict dependency between them regarding the joint exploitation of the trade mark X, and in addition they maintain a coordinated trade mark strategy deliberately promoting vis-à-vis the relevant public an appearance or image of a single and global trade mark?’

The Advocate General’s opinion:

Article 36 TFEU and Article 7(1) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks preclude the licensee of the proprietor of a national trade mark from invoking the exclusive rights enjoyed by the latter under the law of the Member State in which the trade mark is registered in order to oppose the importing into and/or marketing in that State of goods bearing an identical trade mark which come from another Member State, one in which that trade mark, which was once owned by the group to which both the proprietor of the mark in the importing State and its licensee belong, is owned by a third party which has acquired the rights to it by assignment where, given the economic links existing between the proprietor of the mark in the importing State and the proprietor of the mark in the exporting State, it is clear that the marks are under unitary control and that the proprietor of the mark in the importing State has the possibility of determining directly or indirectly the goods to which the trade mark in the exporting State may be affixed and of controlling their quality.

What to happen with EU IP rights after Brexit – the EU Commission’s proposal

The European Commission issued a proposal what to happen with the different EU intellectual property rights after Brexit.

In brief the Commission’s proposal is as follow:

The holder of any intellectual property right having unitary character within the Union and granted before the withdrawal date should, after that date, be recognised as the holder of an enforceable intellectual property right in relation to the United Kingdom territory, comparable to the right provided by Union law – if need be on the basis of specific domestic legislation to be introduced.
In the specific case of protected geographical indications, protected designations of origin and other protected terms in relation to agricultural products (traditional specialities guaranteed and traditional terms for wine) protected under Union law before the withdrawal date, this principle should also imply that the United Kingdom puts in place, as of the withdrawal date, the necessary domestic legislation providing for their continued protection. Such protection should be comparable to that provided by Union law.

The implementation of this principle should include, in particular,the automatic recognition of an intellectual property right in the United Kingdom on the basis of the existing intellectual property right having unitary character within the Union.

Where applicable to the relevant right, the implementation of this principle should also
include:

• the determination of the renewal dates;
• the respect of priority and seniority principles;
• the adaptation of ‘genuine use’ requirements and ‘reputation’ rules to the specific situation under consideration.

The implementation of this principle should not result in financial costs for the holders of intellectual property rights having unitary character within the Union. Any related
administrative burden for such holders should be kept to a strict minimum.

Applications for Intellectual property rights having unitary character within the Union. Where an application for an intellectual property right having unitary character within the Union has been submitted before an Union body in accordance with Union law before the withdrawal date and the administrative procedure for the grant of the right concerned is still on-going on that date, the applicant should be entitled to keep the benefit of any priority date in respect of such pending application when applying after the withdrawal date for an equivalent intellectual property right in the United Kingdom.

More Information can be found here.

 

Contracts and why sometimes nobody cares for them

IP Draughts published an interesting article about contracts and some of the reasons why contracting parties don’t follow partly or as a whole the relevant obligations set out in them. This is a problem for companies not only for some particular region but around the world.

Some of the reasons behind this are:

• Operational managers have no capacity or enough information how to implement such contracts which were negotiated by the top managers.
• Nobody in the company cares what the contract says.
• The relevant employees are incapable of following detailed written procedures as set out in the contract because of lack of information or knowledge.
• Team dynamics result in a different way of working.

All of this can lead to unpleasant lawsuits and disputes. To prevent such consequences every company have to implement the contract clauses in their standards and policies for work and to train their personal every now and then.

Brief IP news

1.  European Innovation Scoreboard 2017. For more information here.

2. The ABC of IP strategy for a small R&D company. For more information here.

3. How can universities build their brands? For more information here.

Information from Intellectual Property Center at the UNWE. More information can be found here

Germany joins DesignView

EUIPO reports that Germany has joined the DesignView databases for industrial designs.

In that way, the total number of designs accessible through the database reaches 12 million.

More information here.