Bringing you regular news of key developments in European intellectual property law.

CONFIDENTIALITY

Vestergaard Frandsen et al v Bestnet Europe Ltd et al [2016] EWCA Civ 541 

The Court of Appeal upheld a decision of the High Court regarding the assessment of damages in a breach of confidence action.  

The court was asked to consider what approach to assessing damages is appropriate when a defendant’s products are not manufactured using the confidential information directly, but are products that are derived from the confidential information but have been the subject of substantial further development.  

In such cases, the correct approach is not to assess lost profits based on a notional royalty, but to assess damages for the period of accelerated entry into the market and to estimate a quasi-consultancy fee.  

For the full text of the decision, please click here.

COPYRIGHT

Entidad de Gestion de Derechos de los Productores Audiovisuales (EGEDA) and others Administracion del Estado and others, Case C-470/14, 9 June 2016

In response to a request for a preliminary ruling from the Spanish Supreme Court, the CJEU has provided further guidance on the interpretation of the private copying exception and corresponding fair compensation requirement under Art.5(2)(b) of Directive 2001/29/EC (commonly referred to as the InfoSoc Directive).    

The CJEU held that the Spanish fair compensation system, which is financed from the General State Budget, was incompatible with Art.5(2)(b) as it was not possible under the scheme to ensure the cost of compensation is borne by the actual users of private copies.  

For the full text of the decision, please click here.

Reha Training Gesellschaft für Sport- und Unfallrehabilitation mbH v Gesellschaft für musikalische Aufführungs- und mechanische Vervielfältigungsrechte (GEMA), Case C-117/15, 31 May 2016

The CJEU confirmed that “communication to the public” had one meaning for the purposes of copyright law.  They distinguished between two apparently contradictory cases under the different copyright directives by highlighting the role of targeting and also whether or not the copyright material has an economic benefit to the person infringing.  

For the full text of the decision, please click here

DESIGNS

Thomas Philipps GmbH & Co. KG v Grüne Welle Vertriebs GmbH, CJEU, 22 June 2016

The CJEU has ruled that the licensee of a Community design can (i) bring proceedings for infringement of the design even though the licence has not been registered; and (ii) claim damages for its own loss in proceedings for infringement of a Community design.  

For the full text of the decision, please click here.

TRADE MARKS AND PASSING OFF

Nikolajeva v OÜ Multi Project, Case C-280/15, 22 June 2016

CJEU considered three questions referred to it by the Estonian court regarding the interpretation of Article 9(3) (now Article 9(b), as amended) of the EU Trade Mark Regulation (207/2009/EC) relating to the date from which a proprietor's rights in an EU trade mark prevail and the types of compensation that can be sought under Article 9(3) for non-material harm.    

The CJEU held that a proprietor of an EU trade mark can claim compensation in respect of acts of third parties occurring after the publication of the application for registration of an EU trade mark, but not before.   

Therefore Member States cannot provide under their national law that legal protection of an EU trade mark can begin on the date of the filing of the application for registration.   

The CJEU also held that the concept of reasonable compensation rules out compensation for non-material harm, such as moral prejudice, during the period between the publication of the application of the mark concerned and the publication of its registration.  

For the full text of the decision, please click here

Nissan Jidosha KK v EUIPO Case C-207/15 P

The Court of Justice of the European Union has annulled a decision of the General Court which had found that trade mark proprietors were not entitled to make successive partial renewals of the same mark. This means that a renewal during the six month grace period following the expiry of a mark will be permissible even if a partial renewal request was submitted during the six month period preceding the expiry.  

For the full text of the decision, please click here.