Helena Rubinstein SNC and L’Oréal SA v OHIM (AG Mengozzi for the CJ; C-100/11; 16.02.12)
AG Mengozzi concluded that the CJ should dismiss the appeal of Helena Rubinstein and L’Oréal against the judgment of the GC to dismiss the appeals from the BoA’s decisions to invalidate the marks BOTOLIST and BOTOCYL.
Helena Rubinstein and L’Oréal had respectively registered BOTOLIST and BOTOCYL (the “Contested Marks”) in Class 3 for various toiletries. Following registration Allergan applied to invalidate these marks on the basis of various national and Community trade marks for BOTOX for goods primarily in Class 5, including pharmaceutical preparations for the treatment of wrinkles.
Helena Rubinstein and L’Oréal appealed against the GC’s finding that the BOTOX trade mark had a reputation and that use of the Contested Marks without due cause took unfair advantage of, or was detrimental to, the distinctive character or repute of the earlier marks.
The BoA’s assessment of Allergan’s BOTOX marks had not been limited to Allergan’s CTM application and had clearly referred to all rights relied on by Allergan. On that basis, the GC had not erred in basing its appraisal of reputation on two UK trade marks.
The GC had correctly assessed the reputation of the BOTOX marks separately in relation to the relevant consumers which included both the general public and health professionals, even though a separate assessment was not necessary as the category of health professional was covered by the general public category.
The GC had correctly assessed the relevant territory in respect of which the reputation of the earlier marks was assessed which was the UK, as that was the territory for which Allergan had produced most evidence of reputation.
In dismissing Helena Rubenstein’s and L’Oréal’s criticisms of the alleged errors made by the GC in assessing Allergan’s evidence of reputation, AG Mengozzi noted that in the absence of a distortion of the evidence, the CJEU did not have jurisdiction to re-examine the evidence. Any such distortion must be obvious from the documents in the case file without any need to carry out a new assessment of the facts and the evidence. This was not substantiated in the appeal.
Furthermore, the GC had not erred in taking into account relevant findings contained in a UK IPO decision in relation to a third party application for a mark beginning with ‘BOTO’. The GC was not bound by the decision of a national court but was free to consider such decisions where relevant.
Helena Rubinstein’s and L’Oréal’s appeal contesting the GC’s findings that there was a link pursuant to Article 8(5) were also inadmissible as they required the CJEU to assess the facts.
In AG Mengozzi’s opinion, it was clear that evidence of parasitic intent by Helena Rubinstein and L’Oréal was inferred from a number of findings concerning use of a prefix in the Contested Marks which reproduced almost all of the earlier mark. This could not be justified by the intention to refer to the botulinium toxin as it was not part of the goods covered by the Contested Marks. Further, the earlier mark had a strong distinctive character owing to its uniqueness and widespread reputation. The GC had made an overall assessment in line with CJEU case law and the factual findings on which the determination was based were not amenable to review by the CJEU.
The AG opined that the GC had not exceeded the limits of its jurisdiction to review decisions of the BoA by interpreting Article 74(2) in such a way as to decide that as the BoA did not expressly declare evidence submitted out of time as inadmissible it implicitly but necessarily found that the evidence was admissible. However, in AG Mengozzi’s opinion this interpretation of Article 74(2) was at odds with the CJEU which has stated that OHIM is required to give reasons for its decisions either way. However, as there was no allegation of infringement of Article 74(2) in the appeal, no objection could be raised in respect of the error of interpretation of the GC.
Jurisdiction for trade mark infringements via the internet
Wintersteiger AG v Products 4U Sondermaschinenbau GmbH (AG Cruz Villalón for the CJ; Case C-523/10; 16.02.12)
The AG concluded that where conduct which is liable to infringe a trade mark registered in a Member State occurs via the internet, Article 5(3) of the Brussels I Regulation (EC No 44/2001) must be interpreted as meaning that it attributes jurisdiction to (i) the courts of the Member State in which the trade mark is registered; and (ii) the courts of the Member State where the means necessary to produce an actual infringement of a trade mark registered in another Member State are used.
Wintersteiger, an Austrian manufacturer and distributor of ski and snowboard servicing tools, replacement parts and accessories, owned the Austrian trade mark WINTERSTEIGER. Products 4U, established in Germany, developed and distributed worldwide ski and snowboard servicing tools, including accessories for the tools manufactured by Wintersteiger. Wintersteiger neither supplied its products to, nor authorised the sale of its products by, Products 4U. Products 4U registered “Wintersteiger” as a Google AdWord, although it limited the registration to searches carried out via the Germany top-level domain (“.de”). When “Wintersteiger” was entered into Google search engine for the .de top-level domain, an advertisement appeared with a link to a section of the Products 4U website entitled “Wintersteiger accessories”.
Wintersteiger brought an action for an injunction in Austrian Courts. At first instance the application was ruled inadmissible since the AdWord was limited to google.de and there was not a significant connection with the Austrian territory. This finding was overturned on appeal. On further appeal, the Oberster Gerichtshof was unclear as to whether it had jurisdiction and referred questions to the CJ on the interpretation of Article 5(3) of the Brussels I Regulation which provides that a person domiciled in a Member State may be sued in another Member State in the courts for the place where the harmful event occurred or may occur.
The AG noted that Article 5(3) is qualified when the damage is caused in one State but actually occurs in another. In which case, following Mines de potasse d’Alsace SA Case 21/76, the claimant is entitled to choose between the courts for the place where the damage actually occurred and the courts for the place of the event giving rise to that damage. That approach became problematic when the harmful conduct is carried out via the internet. The AG made the following comments in relation to trade mark infringements via the internet:
• The place where the damage actually occurred will always be the State of registration of the trade mark. However, the presence of harmful information on the internet is not sufficient to attribute jurisdiction to the courts of the State of registration; it is necessary for the disputed information to be capable of occasioning an actual infringement.
• The place of the event giving rise to the damage is the place where the means necessary to produce an actual infringement of a mark were used.
• The fundamental factor is whether the information disseminated on the internet is really likely to have an effect in the territory where the trade mark is registered. There must be objective elements which enable the identification of conduct intended to have an extraterritorial dimension. Criterion such as the language of the information, the accessibility of the information and whether the defendant has a commercial presence on the market where the mark is protected may be useful.
• It is necessary to establish the territorial scope of the market on which the defendant operated and from which the information was disseminated on the internet. An assessment must be made of facts such as the top-level domain, the address or other location data supplied on the website and place of business of the person responsible for the information.
Applying the facts of the case to these principles, the AG opined that the registration of an AdWord limited to the .de top-level domain, which used the German language and was accessible in Austria, a country bordering Germany, was liable to occasion, a priori, an actual infringement of the Austrian trade mark. The fact that the registration of the AdWord was intended to cover a geographical area limited to Germany did not come close to precluding Wintersteiger customers from using the google.de search engine. Accordingly, Products 4U used the necessary means which were likely to occasion an actual infringement of the Austrian trade mark. Thus both the courts for the place in which the event giving rise to the damage took place (Germany) and the courts of the territory where the mark was protected (Austria) had jurisdiction.
CJEU considers general filtering obligation for social media network
Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (“Sabam”) v Netlog NV (“Netlog”) (CJ (Third Chamber); C 360/10; 16.02.12)
The CJ held that imposing an injunction against Netlog (a social media site) which would require the installation of a filtering system to process virtually all data held on their servers, amounted to a general monitoring obligation and was therefore prohibited by Article 15(1) of Directive 2000/31.
Netlog, a hosting service provider and online social media network, allowed users to upload and broadcast photos and video clips via an online profile. Sabam represented Belgian authors, composers and publishers of musical works. Sabam believed that materials uploaded onto Netlogs’ profiles were infringing their clients’ copyright and brought an action against Netlog seeking an injunction that would prevent any further infringement.
Sabam requested an injunction that required Netlog to implement a filtering regime to prevent copyright materials in Sabam’s repertoire being made available to the public via users’ Netlog profiles and for Netlog to pay a fine of €1000 per day for each day it delayed in complying with the order.
The CJ made its judgment without an opinion from the AG but referred heavily to their recent ruling in Scarlet Extended C-70/10 (reported in CIPA Journal, December 2011), where Sabam had sought a similar injunction against an internet service provider.
The CJ interpreted the referred question as asking whether Directives 2000/31, 2001/29, 2004/48, 95/46 and 2002/58, when read together, precluded the Belgium Court from ordering an injunction against a hosting service provider which would require the installation of a system preventatively filtered information stored on servers and uploaded by all users at its own expense.
The CJ held that, as with Scarlet, an injunction of the kind requested would amount to general monitoring obligation of information, which would be prohibited under Article 15(1) of Directive 2000/31. A general monitoring obligation of this kind would not be compatible with Article 3 of Directive 2004/48 as it would not be fair and proportionate, and would be excessively costly.
Although intellectual property rights were considered fundamental rights under Article 17(2) of the Charter of Fundamental Rights of the European Union there was no statute or case-law to suggest that the right required absolute protection above all other rights. The national courts must strike a balance between the protection of one party’s intellectual property right and the other party’s freedom to conduct a business.
Furthermore, the requested injunction would also affect Netlog users’ right to protection of their personal data and the freedom to receive or impart information, which were protected by Articles 8 and 11 of the Charter of Fundamental Rights of the European Union.
Stephen Slater v Per Wimmer* (Judge Birss;  EWPCC 7; 16.02.12)
Judge Birss held that the parties were principal director and producer of the film footage in issue. As such, they were joint authors of the footage and had each reproduced the footage without the other’s consent.
Mr Slater (a cameraman) shot footage of Mr Wimmer (a financier and Danish celebrity) skydiving over Mount Everest. There was no written contract dealing with the event. Mr Wimmer subsequently used some of Mr Slater’s footage in a television programme about the event. Mr Slater sued Mr Wimmer for copyright infringement and Mr Wimmer counterclaimed for a declaration that he was entitled to reproduce and licence reproduction of the work. The counterclaim also included a claim for copyright infringement against Mr Slater in respect of Ms Slater’s inclusion of the footage in a film which he published on YouTube.
Judge Birss found that although there was an oral contract for services between the parties, it did not contain an express term addressing copyright, nor was it necessary to imply any such terms into the agreement. Mr Slater, as the person who decided what to film and how to do it, was found to be the director of the footage. Mr Wimmer was the producer of the footage under Section 178, as he had not simply financed the project but was the person by whom the arrangements necessary for making the film had been undertaken; he had decided to undertake the project and had arranged for it to be filmed. Mr Slater and Mr Wimmer were therefore joint authors of the work and, as such, were co-owners of the copyright under Section 10(3) CDPA. Both parties had therefore reproduced the footage without the consent of the other.
Screening of broadcasts of football matches to the public
Football Association Premier League Ltd (“FAPL”) & Ots v QC Leisure & Ots; Secretary of State for Business, Innovation and Skills* (Kitchin LJ;  EWHC 108 (Ch); 03.02.12)
Following the preliminary ruling of the CJ in Joined Cases C-403/08 and C-429/08 (reported in CIPA Journal, December 2011), Kitchin LJ held that the defendants had infringed the copyright in broadcasts of Premier League football matches because, by screening them to customers in their public houses, they had communicated them to the public by way of electronic transmission, contrary to Section 20 CDPA, which effectively transposed Directive 2001/29/EC (the “Copyright Directive”). However, the defendants had a defence under Section 72(1)(c), which allowed films included in broadcasts to be shown in public houses without the copyright owner’s consent where the members of the public had not paid for admission.
In light of the CJ’s reasoning, and in interpreting Section 20 in accordance with the wording and purpose of the Copyright Directive, the Judge held that the defendants were transmitting FAPL’s relevant copyright works, including its artistic works, to a “new public”. By using televisions and speakers, they were doing so by electronic means. Although Article 3 of the Copyright Directive did not permit a defence in the terms of Section 72(1)(c), there were limits to the doctrine which required the court to depart from the unambiguous meaning of statute.
The Judge refused to revisit his earlier decision that QC Leisure and AV Station plc had authorised the infringing acts of some of the defendants and other members of the public to whom they had supplied the decoder cards in question.
Kitchin LJ agreed to make a declaration of copyright infringement, but indicated that this should be limited to acts of infringement of specific works established against each defendant. The Judge refused to grant an injunction against the defendants, on the basis that some were no longer in business, and those that were, were entitled to carry on their businesses in a way which avoided infringement of FAPL’s copyrights. The Judge was prepared to accept specific undertakings in lieu of an injunction. The Judge also found it appropriate to grant a declaration that the relevant obligations in contracts between FAPL and its licensees and sub-licensees constituted a restriction on competition prohibited by Article 81.
Karen Murphy v Media Protection Services Ltd* (Stanley Burton LJ;  EWHC 466 (Admin); 24.02.12)
Stanley Burton LJ allowed Ms Murphy’s appeal following the preliminary ruling of the CJ in Joined Cases C-403/08 and C-429/08 (reported in CIPA Journal, December 2011).
Ms Murphy had obtained a decoding device from a Greek television programme provider, which enabled her to screen live Premier League football matches in her public house without obtaining a subscription with BSkyB Ltd, the licensee in the UK.
The Court confirmed that Ms Murphy’s decoder was not an “illicit device” within the meaning of Article 2E of Directive 98/94/EC, and by virtue of Article 56 of the Treaty on the Functioning of the European Union, Section 297(1) CDPA could not be applied to Ms Murphy’s use of the decoder. As the territorial restrictions imposed on the use of the decoder had been unlawful, it followed that Ms Murphy had been wrongly convicted. Her appeal would therefore be allowed and her convictions quashed.
Infringement of a RCD by a later RCD
Celaya Emparanza y Galdos Internacional SA (“Cegasa”) v Proyectos Integrales de Balizamiento SL (“PROIN”) (CJ (First Chamber); Case C-488/10; 16.02.12)
The CJ held that the exclusive right conferred by a RCD under Article 19(1) of the Community Designs Regulation to prevent use by third parties of a design that does not produce a different overall impression on the informed user, included third party holders of later RCDs.
Cegasa, the proprietor of a RCD consisting of a beacon-like marker used for traffic signalling, served a cease-and-desist demand on PROIN for the marketing of a marker which Cegasa deemed did not give an overall impression different from its RCD. PROIN denied infringement but did provide undertakings to change the design of its marker. PROIN subsequently filed an application for a RCD for a beacon-like marker used for traffic signalling. Cegasa commenced infringement proceedings in Spain, but did not apply to invalidate PROIN’s RCD. PROIN submitted that Cegasa lacked locus standi to bring infringement proceedings because, until such time as PROIN’s RCD was cancelled, PROIN enjoyed a right of use of its RCD such that the exercise of that right could not be deemed an infringement. The Spanish Court sought guidance on whether a third party who uses a later RCD registered in his name is excluded from infringement proceedings of an earlier RCD under Article 19(1) until such time as that later design is declared invalid. The Spanish Court also queried whether the answer to that question could vary according to the intention and conduct of the third party holder of the later RCD.
In reaching its conclusion that Article 19(1) extended to third party holders of later RCDs, the CJ noted that the wording of the Community Designs Regulation did not preclude the owner of a RCD from bringing infringement proceedings to prevent the use of a later RCD. Furthermore, the CJ held that the provisions of the Regulation must be interpreted in light of the priority principle under which an earlier RCD takes precedence over later RCDs. The CJ also noted that, since the RCD examination procedure does not allow for the holder of an earlier RCD to oppose registration, only an interpretation of the term “any third party” as encompassing the third party holder of a later RCD is capable of ensuring attainment of the objective of effective protection of RCDs, as well as the effectiveness of infringement proceedings.
This answer was unconnected with the intention or conduct of the third party. The scope of the rights conferred by the Regulation must be determined objectively and cannot vary according to the circumstances pertaining to the conduct of the person applying for registration of a Community design.
BREACH OF CONFIDENCE
Steven John Coogan v News Group Newspapers Ltd & Ots / Nicola Phillips v News Group Newspapers Ltd (“NGN”) & Ots* (Lord Judge LCJ, Lord Neuberger MR & Maurice Kay LJ;  EWCA Civ 48; 01.02.12)
The Court of Appeal (Lord Neuberger MR giving the lead judgment) dismissed the second defendant’s appeals against the earlier decisions of Mann and Vos JJ, holding that Section 72 of the Senior Courts Act 1981 prevented a private investigator claiming privilege against self-incrimination in relation to information sought in proceedings concerning phone hacking, as the definition of “intellectual property” for the purposes of Section 72 included confidential information which was technical or commercial in character and non-commercial confidential information.
Mr Coogan (the well known comedian) and Ms Phillips (former assistant to PR consultant Max Clifford) alleged that the voice messages on their mobile telephones had been unlawfully intercepted by, or on the instructions of NGN or the second defendant, Glen Mulcaire, who was a private investigator engaged by NGN. The claimants claimed that they had a cause of action in breach of confidence and in misuse of private information. In order to avoid swearing an affidavit concerning the alleged interceptions, Mr Mulcaire sought to rely on the privilege against self-incrimination, on the basis that phone hacking was an offence under the Regulation of Investigatory Powers Act 2000.
The Court of Appeal held that the information intercepted constituted “intellectual property” as defined in Section 72(5) of the Senior Courts Act 1981. “Commercial information” in Section 72(5) meant confidential information of a commercial nature, and non-commercial information was within the definition of “other intellectual property” covered by the Act. Even where there were a significant number of plainly non-confidential messages among those intercepted, they were more than outweighed by the greater importance of the confidential messages.
Courts do not have the power to declare domain names non-abusive
Michael Toth v Emirates; Nominet* (Mann J;  EWHC 517 (Ch); 07.03.12)
Holding that the Court did not have jurisdiction to grant a declaration that a domain name was not an abusive registration, Mann J allowed Emirates’ appeal from Judge Birss’ refusal to strike out (reported in CIPA Journal, November 2011).
Mr Toth had registered the domain name “emirates.co.uk”. The defendant ran the well known airline commonly referred to as “Emirates”. Emirates used the Nominet Dispute Resolution Scheme (“DRS”) to contend that the domain name was an abusive registration and sought to have it transferred to Emirates from Mr Toth. Nominet’s appeal panel decided that the domain name should be transferred to Emirates. Mr Toth sought declarations from the Patents County Court that, among other things, the domain name was not an abusive registration. Judge Birss found in favour of Mr Toth. Emirates, supported by Nominet as an Intervener, appealed.
Acknowledging that he had had the benefit of much fuller and more detailed submissions, as well as the assistance of Nominet, Mann J found that Judge Birss had erred in dismissing Emirates’ application to strike out Mr Toth’s claims. The DRS had put in place a regime in which the question of abusive registration was one for, and only for, the appointed Expert. Among other things, the DRS scheme was intended to create a self-contained dispute resolution mechanism which was closely regulated, cheap, quick and efficient. To add a parallel route of applying to court would be inimical to the apparent intention of the parties. Accordingly, the appeal was allowed.
Contempt of court
Dame Vivienne Westwood OBE v Anthony Knight* (Judge Birss;  EWPCC 6; 06.02.12)
Judge Birss refused Mr Knight’s application to adjourn the hearing of an application to commit him for contempt of court, but allowed Ms Westwood’s application for an adjournment on the basis that it could lead to a cost saving.
Following the Court’s findings of trade mark infringement, copyright infringement and passing off (reported in CIPA Journal, April 2011), various orders had been made against the defendant, with which the claimant contended Mr Knight had not complied.
Judge Birss held that Mr Knight had no good reason not to attend the hearing and had consistently shown himself to be unwilling to engage with the Court process in a meaningful way. However, in order to give Mr Knight ample time to make an urgent appeal to the Court of Appeal, and to make an urgent application for a stay of any orders pending appeal if he so wished, the Judge granted Ms Westwood’s application to adjourn the hearing. Adjourning the matter allowed for the prospect that the matter could be dealt with in one go, which was likely to lead to a saving on costs for Ms Westwood.