BREAKING NEWS – Military reports and copyright – a European Court’s decision

us-army-379036_960_720The European court has issued its decision on the case C‑469/17 Funke Medien NRW GmbH v Bundesrepublik Deutschland. This case concerns whether or not military reports can be subject to copyright protection. The background is as follow:

The Federal Republic of Germany prepares a military status report every week on the deployments of the Bundeswehr (Federal armed forces, Germany) abroad and on developments at the deployment locations. The reports are referred to as ‘Unterrichtung des Parlaments’ (‘Parliament briefings’; ‘UdPs’), and are sent to selected members of the Bundestag (Federal Parliament, Germany), to sections of the Bundesministerium der Verteidigung (Federal Ministry of Defence, Germany) and other federal ministries, and to certain bodies subordinate to the Federal Ministry of Defence. UdPs are categorised as ‘Classified Documents — Restricted’, which is the lowest of the four levels of confidentiality laid down under German law. At the same time, the Federal Republic of Germany publishes summaries of UdPs known as ‘Unterrichtung der Öffentlichkeit’ (‘public briefings’), which are available to the public without any restrictions.

Funke Medien operates the website of the German daily newspaper Westdeutsche Allgemeine Zeitung. On 27 September 2012, it applied for access to all UdPs drawn up between 1 September 2001 and 26 September 2012. That application was refused by the competent authorities on the ground that disclosure of the information in those UdPs could have adverse effects on security-sensitive interests of the Federal armed forces. In that context, the competent authorities referred to the regularly published public briefings, which are versions of UdPs that do not affect those interests. Funke Medien nevertheless obtained, by unknown means, a large proportion of the UdPs, which it published in part as the ‘Afghanistan Papiere’ (‘the Afghanistan papers’) and could be read online as individually scanned pages accompanied by an introductory note, further links and a space for comments.

The Federal Republic of Germany, which takes the view that Funke Medien thereby infringed its copyright over the UdPs, brought an action for an injunction against Funke Medien, which was upheld by the Landgericht Köln (Regional Court, Cologne, Germany). The appeal brought by Funke Medien was dismissed by the Oberlandesgericht Köln (Higher Regional Court, Cologne, Germany). In its appeal on a point of law (Revision), brought before the referring court, Funke Medien maintained its contention that the action for an injunction should be dismissed.

The referring court notes that the reasoning of the Oberlandesgericht Köln (Higher Regional Court, Cologne) is based on the premiss that UdPs may be protected under copyright as ‘literary works’ and that they are not official texts excluded from the protection emanating from that right. It nevertheless states that that court has not made any finding of fact from which it can be concluded that UdPs are original creations.

However, the referring court considers that it is not possible to dismiss the judgment of the Oberlandesgericht Köln (Higher Regional Court, Cologne) and to remit the case to that court to allow it to make findings to that effect a posteriori, if copyright infringement of UdPs, which must be presumed for the purposes of an appeal on a point of law (Revision), is, in any event, covered by the derogation relating to reporting current events or quotations, laid down in Paragraphs 50 and 51 of the UrhG, or if such an infringement is justified by freedom of information or the freedom of the press, laid down respectively in the first and second sentences of Article 5(1) of the Grundgesetz für die Bundesrepublik Deutschland (Basic Law for the Federal Republic of Germany) of 23 May 1949 (BGBl. 1949 I, p. 1; ‘the GG’) and in Article 11 of the Charter of Fundamental Rights of the European Union (‘the Charter’). According to the referring court, if that is the case, then judgment could be given in the case to the effect that the referring court would be required to amend the judgment of the Landgericht Köln (Regional Court, Cologne) and dismiss the action for an injunction which the Federal Republic of Germany brought before it.

The referring court considers, in that regard, that the interpretation of Article 2(a), Article 3(1) and Article 5(3)(c) and (d) of Directive 2001/29 read in the light of fundamental rights, in particular of freedom of information and of freedom of the press, is not obvious. It asks inter alia whether those provisions allow any discretion for the purposes of their transposition into national law. It notes in that regard that, according to the case-law of the Bundesverfassungsgericht (Federal Constitutional Court, Germany), national legislation which transposes an EU directive must be measured, as a rule, not against the fundamental rights guaranteed by the GG, but solely against the fundamental rights guaranteed by EU law, where that directive does not allow the Member States any discretion in its transposition.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Do the provisions of Union law on the exclusive right of authors to reproduce (Article 2(a) of Directive 2001/29) and publicly communicate their works, including the right to make works available to the public (Article 3(1) of Directive 2001/29), and the exceptions or limitations to these rights (Article 5(2) and (3) of Directive 2001/29) allow any latitude in terms of implementation in national law?

(2) In which way are the fundamental rights of the [Charter] to be taken into account when ascertaining the scope of the exceptions or limitations provided for in Article 5(2) and (3) of Directive 2001/29 to the exclusive right of authors to reproduce (Article 2(a) of Directive 2001/29) and publicly communicate their works, including the right to make works available to the public (Article 3(1) of Directive 2001/29)?

(3) Can the fundamental rights of freedom of information (second sentence of Article 11(1) of the Charter) or freedom of the media (Article 11(2) of the Charter) justify exceptions or limitations to the exclusive rights of authors to reproduce (Article 2(a) of Directive 2001/29) and publicly communicate their works, including the right to make works available to the public (Article 3(1) Directive 2001/29), beyond the exceptions or limitations provided for in Article 5(2) and (3) of Directive 2001/29?’

The Court’s decision:

1.  Article 2(a) and Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as constituting measures of full harmonisation of the scope of the exceptions or limitations which they contain. Article 5(3)(c), second case, and (d) of Directive 2001/29 must be interpreted as not constituting measures of full harmonisation of the scope of the relevant exceptions or limitations.

2. Freedom of information and freedom of the press, enshrined in Article 11 of the Charter of Fundamental Rights of the European Union, are not capable of justifying, beyond the exceptions or limitations provided for in Article 5(2) and (3) of Directive 2001/29, a derogation from the author’s exclusive rights of reproduction and of communication to the public, referred to in Article 2(a) and Article 3(1) of that directive respectively.

3.  In striking the balance which is incumbent on a national court between the exclusive rights of the author referred to in Article 2(a) and in Article 3(1) of Directive 2001/29 on the one hand, and, on the other, the rights of the users of protected subject matter referred to in Article 5(3)(c), second case, and (d) of that directive, the latter of which derogate from the former, a national court must, having regard to all the circumstances of the case before it, rely on an interpretation of those provisions which, whilst consistent with their wording and safeguarding their effectiveness, fully adheres to the fundamental rights enshrined in the Charter of Fundamental Rights of the European Union.

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Breaking news – Can clinical trials constitute a genuine trademark use according to the ECJ?

fish-oil-1915423_960_720The European Court has ruled in case C–668/17 P, Viridis Pharmaceutical Ltd v EUIPO, Hecht-Pharma GmbH. The case concerns:

On 30 September 2003, Viridis filed an EU trademark application to the EUIPO for registration of the word sign ‘Boswelan’ for ‘pharmaceuticals and health care products’ in Class 5.

On 18 November 2013, Hecht-Pharma requested revocation of that mark for all goods in pursuant to Article 51 (1) (a) of Regulation No 207/2009 because it was not genuinely used.

By decision of 26 September 2014, the Cancellation Division of EUIPO revoked Viridis’ trademark for all goods.

On 6 November 2014, Viridis brought an appeal before the Board of Appeal of EUIPO against the decision of the Cancellation Division. However, the Fifth Appeal Chamber of EUIPO dismissed that appeal.

The Board of Appeal held that the evidence produced by Viridis was not capable of proving the genuine use of the mark at issue for the goods mentioned in the application. The provided evidence regarded only acts of a purely internal nature which relate to a clinical trial. These acts don’t concern any activities that are of commercial nature or that are visible for the market. In addition, they are not a direct preparatory action or an action contributing to the forthcoming real market use of the mark at hand.

Secondly, referring in particular to the definition of a reasonable cause for non-use which follows from the text of the TRIPs Agreement, the Board of Appeal found that, in the present case, the conduct of a clinical trial in itself was not independent of Viridis’s will, to justify the non-use of the disputed mark. Since the duration of the clinical trial depends on the funds the proprietor of the mark decides to use, that circumstance does not fall within the category of obstacles beyond his control. Liability for the length of proceedings can be assumed to have been transferred to an external body only from the time when an official application for a market distribution was made. The protection of European Union marks by Regulation No 207/2009 does not appear to be necessary before such an application is made and if a pharmaceutical company nevertheless decides to register a European Union trademark many years before that application, it would be responsible for the delay associated with the clinical trial.

The European Court of Justice confirmed this EUIPO decision. According to the court, the fact that clinical trials are carried out can not be a ground for non-use of the mark. Preparatory actions can only be considered as a reason for non-use only if they have a commercial nature and are visible to the market. In this case, clinical tests do not guarantee that the product will enter the market, there is no request for commercialization of the product. Furthermore, these tests were started a long after the trademark had been filed. In summary, this can not be an objective reason for the non-use of the trademark because this use depends entirely on the applicant’s strategy and financial capacity.

Audiovisual archives and transfer of copyrights

set-3884399_960_720.jpgThe Advocate General of the European Court G. HOGAN has issued it opinion in case C‑484/18 Société de perception et de distribution des droits des artistes-interprètes de la musique et de la danse (Spedidam), PG, GF v Institut national de l’audiovisuel.

The case concerns the following:

The INA is a commercial State body established by law in 1974. It is responsible for conserving and promoting the national audiovisual heritage. It keeps the audiovisual archives of ‘national broadcasting companies’ (national radio and television stations) and helps with their exploitation.

As I have already observed, PG and GF are the two sons and successors in title of ZV, a world-famous jazz drummer. They allege that the INA marketed on its website without their authorisation 26 video recordings and a phonogram reproducing performances by their late father. They brought an action based on Article L. 212-3 of the Intellectual Property Code, under which a written authorisation of the performer is required for the fixation of its performance, its reproduction and its communication to the public.

The INA pleads in response that Article 49(II) of the Law on freedom of communication allows it to exploit the archives in return for paying performers royalties set by collective agreements concluded with their representative trade unions. PG and GF counter in turn, inter alia, that these statutory provisions which derogate from the protection of performers conflict with the provisions of Directive 2001/29.

By judgment of 24 January 2013, the tribunal de grande instance de Paris (Regional Court, Paris, France) ordered the INA to pay PG and GF the sum of EUR 15 000 in compensation for the damage suffered as a result of the unauthorised exploitation of the interpretations in question. By a judgment of 11 June 2014, the cour d’appel de Paris (Court of Appeal, Paris, France) confirmed in substance the judgment delivered at first instance.

In particular, these two courts considered that the application of Article 49(II) of the Law on freedom of communication was subject to the prior authorisation of the performer, whereas proof of such authorisation would not have been provided by the INA.

However, by judgment of 14 October 2015, the Cour de Cassation (Court of Cassation) overturned the judgment of the cour d’appel (Court of Appeal). It ruled that the cour d’appel (Court of Appeal) erred in holding that the application of the derogating regime was subject to proof that the performer had authorised the first exploitation of his performance, thus adding to the law a condition that it did not include. Following this judgment, the cour d’appel de Versailles (Court of Appeal, Versailles, France), at the request of the INA, dismissed the claims for compensation which had been brought against it.

Having heard the appeal brought by the successors in title against the latter judgment, the Cour de Cassation (Court of Cassation) entertained doubts about the compatibility with EU Law of the French legislation and the interpretation of various provisions of Directive 2001/29.

According to the Cour de Cassation (Court of Cassation), the special regime enjoyed by the INA does not fall within any of the exceptions and limitations to the rights referred to in Articles 2 and 3 of Directive 2001/29, provided for in Article 5 of the directive. The Cour de Cassation (Court of Cassation) is also of the opinion that the solution adopted by the Court in Soulier and Doke (3) is not applicable to the present case. That latter case concerned the reproduction of out of print books. While it is true that the legislation on out of print books at issue in Soulier and Doke had derogated from the protection guaranteed to authors by Directive 2001/29, the scheme introduced for the benefit of the INA in the general interest is intended to reconcile the rights of performers with those of producers as being of equal value within the system of that directive.

In those circumstances, the Cour de cassation (Court of Cassation) decided to stay the proceedings and refer the following question to the Court for a preliminary ruling:

‘Must Article 2(b), Article 3(2)(a) and Article 5 of Directive 2001/29 … be interpreted as not precluding national rules, such as those laid down in Article 49(II) of [the Law on freedom of communication], as amended by Article 44 of Law No 2006-961 of 1 August 2006, from establishing, for the benefit of the [INA], the beneficiary of the exploitation rights of national broadcasting companies in the audiovisual archives, derogating provisions under which the terms on which performers’ works can be exploited and the remuneration for that exploitation are governed by agreements concluded between the performers themselves or the employee organisations representing performers and that institute, which must specify, inter alia, the scale of remuneration and the arrangements for payment of that remuneration?’

The Advocate’s opinion:

Article 2(b), Article 3(2)(a) and Article 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as precluding a national rule, insofar as it provides for a transfer to the Institut national de l’audiovisuel (French National Audiovisual Institute) of the performers’ rights.

To love Y is not as to fly

heart-shape-1714807_960_720.jpgThe European Court ruled in case C‑99/18 P, FTI Touristik GmbH v Harald Prantner и Daniel Giersch, which in brief concerns an attempt by both individuals to register the following European trademark:

download.pngIts classes of goods and services are as follow:

– Class 16: “Printed matter; photographs; stationery; wrapping materials; printed publications; books; handbooks [manuals]; pamphlets; newsletters; albums; newspapers; magazines and periodicals; tickets; vouchers; coupons and travel documents; passes; tags and labels; posters; postcards; calendars; diaries; instructional material”;

–  Class 39: “Transport; travel arrangement; travel information; provision of car parking facilities; transportation of goods, passengers and travelers by air, land, sea and rail; airline and shipping services; airport check-in services; arranging of transportation for passengers, goods and trips by land and sea; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; aircraft chartering; rental and hire of aircraft, cars and boats; taxi services; bus services; chauffeuring; coach services; train services; airport transfer services; airport parking services; aircraft parking services; escorting of travellers; travel agency services; advisory, consultancy and information services relating to all the aforesaid services; providing information regarding transportation services; providing travel information online; travel booking via computer databases or the Internet”;

–  Class 43: “Services for providing food and drink, temporary accommodation; restaurant and bar services; food and drink catering; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotels and/or restaurants; reservations in connection with running hotels.”

Against this application, an opposition was filed by FTI Touristik on the ground of the following early registered European trademark for classes 16, 39, 41, 43:

download (1).png

EUIPO ruled that there is no significant similarity between the signs at hand, stating that:

“Phonetically, it found, in essence, that for the public that did not know the English term “fly”, the signs at issue bore no similarity. For consumers that did know the English word “fly”, there was a phonetic similarity provided that the mark applied for was associated with the word “fly”. However, this seemed rather unlikely since, first, there was a great difference between the letter “y” and the stylised heart in the mark applied for and, secondly, it was unusual to replace the letter “y” with a heart symbol. Conceptually, it found, that, for the public that did not know the English term “fly”, the signs at issue bore no similarity. For consumers that did know and understand the English word “fly”, there was a conceptual similarity provided that the word “fly” was identified in the mark applied for. However, this seemed unlikely for the same reasons as those set out in the context of the assessment of the phonetic similarity.”

The decision was appealed.

The European court agreed with EUIPO dismissing the appeal. Most consumers will not understand an image of the heart in the later mark as Y letter. Even in case that this is possible the additional element .de in the earlier mark is sufficient to make the necessary distinction between the signs.

How important trademark disclaimers are?

midsummer-2263200_960_720.jpgThe European Court has ruled in case C‑705/17 Patent- och registreringsverket v Mats Hansson.

In nutshell, this case concerns whether disclaimers regarding the trademark scope of protection have to be taken into consideration for the purpose of trademark assessment. What exactly happened?

Swedish company Norrtelje Brenneri Aktiebolag registered in 2007 the following trademark in Class 33 of the Nice Agreement:

That registration was accompanied by a disclaimer stating that ‘registration does not give an exclusive right over the word RoslagsPunsch’. The disclaimer was required by the Swedish Patent Office as a condition of registration of the trademark because the term ‘Roslags’ refers to a region of Sweden and the term ‘Punsch’ describes one of the goods covered by the registration.

Mr Hansson, as an individual, applied in 2015 for registration of the word mark ‘ROSLAGSÖL’ in Sweden for goods in Class 32, in particular non-alcoholic beverages and beers.

The Swedish Patent Office rejected the application for registration because of the likelihood of confusion between the new application and the earlier trademark. The problem was that the term ‘Roslags’ is descriptive. The fact that both signs also included other words or figurative elements did not reduce the similarity. Moreover, the signs referred to identical or similar products which address the same customers.

Mr Hansson appealed this decision before the Patents and Market Court, arguing that there was no likelihood of confusion between the signs in question. As regards the effect of the disclaimer relating to the earlier trademark on the outcome of the action, the Patent Office argued before that court that an element of a trademark which has been excluded from protection by means of a disclaimer must in principle be regarded as not distinctive. In the present case, registration of the earlier trade mark had been granted with such a disclaimer because the trademark included a term that was descriptive of a geographical region, ‘Roslags’.

However, The Patent Office’s practice concerning the non-distinctive character of geographical names had developed in the meantime, putting into practice the conclusions in paragraphs 31 and 32 of the judgment of 4 May 1999, Windsurfing Chiemsee(C‑108/97 and C‑109/97, EU:C:1999:230). The term ‘Roslags’ was now capable of registration in itself as a trademark and was distinctive for the goods at issue in the present case so that it could even dominate the overall impression given by the earlier trade mark. It thus followed from a global assessment of the signs at issue that because of the common element ‘Roslags’ the relevant public could have the impression that the goods referred to by those signs had the same commercial origin.

The Patents and Market Court allowed Mr Hansson’s application and approved the registration of his sign as a trademark, finding that there was no likelihood of confusion. The court also stated that, despite the disclaimer, the terms to which it related had to be taken into account in the assessment of that likelihood, in so far as they could have an effect on the overall impression created by the earlier trade mark, and hence on the extent of protection of that mark. According to the court, the purpose of the disclaimer was to make it clear that the exclusive right deriving from registration of the earlier trade mark did not relate to the terms referred to as such.

The Patent Office appealed against the judgment of the court to the Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden.

That court explains that in its view Directive 2008/95 and the associated case-law confirm that the substantive rules on the protection of a national trade mark are in principle fully harmonized at the level of EU law, while the procedural rules are within the competence of the Member States. It therefore asks whether a national rule allowing a disclaimer to be made may be categorised as a procedural rule, even though it has the effect of changing the criteria on which is based the global assessment to be carried out in order to examine the likelihood of confusion within the meaning of Article 4(1)(b) of that directive.

That court is uncertain whether that provision, having regard in particular to the settled case-law of the Court according to which the assessment of the likelihood of confusion must be based on an overall impression and the perceptions of consumers play a dominant part in the global assessment of that likelihood, may be interpreted as meaning that a disclaimer can affect that assessment because an element of the earlier trade mark was, at the time of registration, expressly excluded from protection by means of that disclaimer, so that that element must be given less importance in the analysis of the overall impression than it would have had in the absence of the disclaimer.

So the Svea Court of Appeal, Patents and Market Court of Appeal decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Must Article 4(1)(b) of [Directive 2008/95] be interpreted as meaning that the global assessment of all relevant factors which is to be made in an assessment of the likelihood of confusion may be affected by the fact that an element of the trade mark has expressly been excluded from protection on registration, that is to say, that a so-called disclaimer has been entered on registration?

(2) If the answer to the first question is in the affirmative, can the disclaimer in such a case affect the global assessment in such a way that the competent authority has regard to the element in question but gives it a more limited importance so that it is not regarded as being distinctive, even if the element would de facto be distinctive and prominent in the earlier trade mark?

(3) If the answer to the first question is in the affirmative and the answer to the second question in the negative, can the disclaimer even so affect the global assessment in any other way?’

The European Court’s decision:

Article 4(1)(b) 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 must be interpreted as precluding national legislation making provision for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion within the meaning of that provision, or to attribute to such an element, in advance and permanently, limited importance in that analysis.

When and where Facebook has to remove illegal information – an EU perspective

pexels-photo-1471752.jpegThe Advocate General of the European Court   has given its position on case C‑18/18 Eva Glawischnig-Piesczek срещу Facebook Ireland Limited, which concerns the following:

Ms Eva Glawischnig-Piesczek was a member of the Nationalrat (National Council, Austria), chair of the parliamentary party die Grünen (‘the Greens’) and the federal spokesperson of that party.

Facebook Ireland Limited, a company registered in Ireland having its headquarters in Dublin, is a subsidiary of the United States corporation Facebook Inc. Facebook Ireland operates, for users outside the United States and Canada, an online social network platform accessible at the address http://www.facebook.com. That platform enables users to create profile pages and to publish comments.

On 3 April 2016 a user of that platform shared on their personal page an article from the Austrian online news magazine oe24.at entitled ‘Greens: Minimum income for refugees should stay’. That publication had the effect of generating on the platform a ‘thumbnail’ of the original site, containing the title and a brief summary of the article, and a photograph of the applicant. That user also published, in connection with that article, an accompanying disparaging comment about the applicant accusing her of being a ‘lousy traitor of the people’, a ‘corrupt oaf’ and a member of a ‘fascist party’. The content placed online by that user could be consulted by any user of the platform in question.

By letter of 7 July 2016, the applicant, inter alia, asked Facebook Ireland to delete that comment.

As Facebook Ireland did not remove the comment in question, the applicant brought an action before the Handelsgericht Wien (Commercial Court, Vienna, Austria) and requested that court to issue an injunction ordering Facebook Ireland to cease publication and/or dissemination of the photographs of the applicant if the accompanying message disseminated the same allegations and/or ‘equivalent content’, namely that the applicant was a ‘lousy traitor of the people’ and/or a ‘corrupt oaf’ and/or a member of a ‘fascist party’.

On 7 December 2016 the Handelsgericht Wien (Commercial Court, Vienna) made the interlocutory order applied for.

Facebook Ireland subsequently disabled access in Austria to the content initially published.

On appeal, the Oberlandesgericht Wien (Higher Regional Court, Vienna, Austria) upheld the order made at first instance as regards the identical allegations. In doing so, it did not grant Facebook Ireland’s request that the interlocutory order be limited to the Republic of Austria. On the other hand, it held that the obligation to cease the dissemination of allegations of equivalent content related only to those brought to the knowledge of Facebook Ireland by the applicant in the main proceedings, by third parties or otherwise.

The courts of first and second instance based their decisions on Paragraph 78 of the UrhG and Paragraph 1330 of the ABGB, and took the view, in particular, that the public comment contained statements which were excessively harmful to the applicant’s reputation and gave the impression that she was involved in unlawful conduct, without providing the slightest evidence in that regard. Nor, according to those courts, was it permissible to rely on the right to freedom of expression for statements relating to a politician if there was no connection with a political debate or a debate that was in the public interest.

The two parties to the main proceedings brought actions before the Oberster Gerichtshof (Supreme Court, Austria), which considered that the statements at issue were intended to damage the applicant’s reputation, to insult her and to defame her.

The referring court is required to adjudicate on the question whether the cease and desist order made against a host provider which operates a social network with a large number of users may also be extended, worldwide, to statements with identical wording and/or having equivalent content of which it is not aware.

In that regard, the Oberster Gerichtshof (Supreme Court) states that, according to its own case-law, such an obligation must be considered to be proportionate where the service provider was already aware that the interests of the person concerned had been harmed on at least one occasion as a result of the contribution of a recipient of the service and where the risk that other infringements would be committed is thus demonstrated.

It was in those circumstances that the Oberster Gerichtshof (Supreme Court), by decision of 25 October 2017, received at the Court on 10 January 2018, decided to stay proceedings and to refer the following questions to the Court:

‘(1) Does Article 15(1) of Directive [2000/31] generally preclude any of the obligations listed below of a host provider which has not expeditiously removed illegal information, specifically not just this illegal information within the meaning of Article 14(1)(a) of [that] directive, but also other identically worded items of information:

(a)  worldwide?

(b)  in the relevant Member State?

(c)  of the relevant user worldwide?

(d)  of the relevant user in the relevant Member State?

(2)  In so far as Question 1 is answered in the negative: Does this also apply in each case for information with an equivalent meaning?

(3)   Does this also apply for information with an equivalent meaning as soon as the operator has become aware of this circumstance?’

The Advocate’s opinion:

(1) Article 15(1) of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘the Directive on electronic commerce’) must be interpreted as meaning that it does not preclude a host provider which operates a social network platform from being ordered, in the context of an injunction, to seek and identify, among all the information disseminated by users of that platform, the information identical to the information that has been characterised as illegal by a court that issued that injunction. In the context of such an injunction, a host provider may be ordered to seek and identify the information equivalent to that characterised as illegal only among the information disseminated by the user that disseminated that illegal information. A court adjudicating on the removal of such equivalent information must ensure that the effects of its injunction are clear, precise and foreseeable. In doing so, it must weigh up the fundamental rights involved and take account of the principle of proportionality.

(2) As regards the territorial scope of a removal obligation imposed on a host provider in the context of an injunction, it should be considered that that obligation is not regulated either by Article 15(1) of Directive 2000/31 or by any other provision of that directive and that that provision therefore does not preclude that host provider from being ordered to remove worldwide information disseminated via a social network platform. Nor is that territorial scope regulated by EU law, since in the present case the applicant’s action is not based on EU law.

(3)  Article 15(1) of Directive 2000/31 must be interpreted as meaning that it does not preclude a host provider from being ordered to remove information equivalent to the information characterised as illegal, provided that a removal obligation does not entail general monitoring of the information stored, and is the consequence of awareness resulting from the notification made by the person concerned, third parties or another source.

Neymar won a dispute about his name in EU

brazil-germany-1201762_960_720.jpgThe well-known Brazilian footballer Neymar has won a trademark dispute before the General Court of the European Union.

The case concerns a registered in 2012 European trademark NEYMAR in class 25  – Clothing, footwear, headgear, owned by Carlos Moreira.

The footballer filed a request for invalidation of this mark based on a claim that it is filed in bad faith.

The EUIPO invalidated the mark because of which Moreira appealed the decision.

The General Court confirmed the EUIPO conclusions that this sign has been filed in a bad faith.

According to the court, there were sufficient pieces of evidence that clearly showed the celebrity status of Neymar at the time when the application was filed. Because of his rising career, many football clubs have interest in him at that time. This generated serious media coverage.

In that regard, the Moreira’s claims that he didn’t know who Neymar was were dismissed.

Another negative point for Moreira was that at the moment when he filed an application for this trademark he did the same for another mark Iker Casillas which is the name of the former Real Madrid goalkeeper.

Source: WIPR.