Intellectual Property

CJEU ruling details exceptions for reproducing and communicating intellectual property 

The Court of Justice of the European Union (“CJEU”) has recently ruled that libraries have the right to digitize books and distribute them to dedicated reading terminals, without permission from the publisher. The preliminary ruling (C 117/13) fleshes out the scope of the exception set out in Article 5 (3) of the InfoSoc Directive (2001/29/EC).

The case itself relates to a dispute between the Technical University of Darmstadt and publisher Eugen Ulmer KG brought before the Regional Court of Frankfurt in 2009. The case eventually proceeded to the German Federal Court of Justice, which ordered a stay in proceedings and referred three questions to the CJEU.

Firstly, the CJEU ruled that the concept of “purchase or licensing terms” requires that the right holder and an establishment (i.e. public library) must have concluded a licensing agreement in respect of the work in question that sets out how the work may be used.

Secondly, CJEU held that Article 5(3)(n) together with Article 5(2)(c) of the Directive does not preclude Member States from granting the right to digitize the works contained in their collections to public libraries, if such act of reproduction is necessary for the purpose of making those works available to users, by means of dedicated terminals, within those establishments.

Lastly, according to CJEU, Article 5(3)(n) does not extend to acts such as the printing works on paper or their storage on a USB stick, carried out by users from dedicated terminals installed in publicly accessible libraries.

It should be noted that national legislation, such as the Finnish Copyright Act, provides for a right to make copies for private use. Thus, future library users could be able to search through a wide amount of digitized works and pinpoint the necessary parts for copying or storing, for private use. From the publishers’ perspective, although the digitization of the work does not, as such, present an obligation to provide compensation, the subsequent making available of that work in digital format on dedicated terminals, gives rise to a duty to make payment of adequate remuneration.

The CJEU rules on the absolute grounds for refusal or invalidity of a 3-D mark 

Last month the Court of Justice of the European Union (“CJEU”) clarified the criteria for registering three-dimensional product shapes as a trademark in its Tripp Trapp decision (Case C-205/13) last month. The decision concerns the interpretation of Article 3(1)(e) of Trademarks Directive (89/104/EEC).

The case is a dispute between German company Hauck GmbH & Co. KG (“Hauck”) and Dutch companyStokke A/S and others (“Stokke”). It was brought to the Dutch Supreme Court, which referred questions to the CJEU for preliminary ruling.

The case concerned Tripp Trapp children’s chair and whether its shape, and the “value” of the shape, could be protected. The litigation started when Stokke brought a lawsuit against Hauck claiming that Hauck had, by launching two chairs called Alpha and Beta, infringed copyright in, and trademarks on the shape of, Tripp Trapp chair. Following that, Hauck filed a counterclaim to invalidate the trademark.

The CJEU ruled that “shapes with essential characteristics which are inherent to the generic function or functions” of such goods must be denied registration. Moreover, when the ground for refusal is based on the substantial value of the goods, the criteria should not be limited purely to the shape of products having only artistic or ornamental value.

The Court stated that the grounds for refusal of registration provided for by the Trademarks Directive operate independently of one another. Therefore, if any of the criteria is satisfied, the grounds for refusal of registering a sign, consisting exclusively of the shape of the product or of a graphic representation of that shape, as a trademark exist. Consequently, this kind of a sign cannot be registered as a three-dimensional trademark.

The CJEU’s ruling is an interpretation of EU law, and hence, a final ruling on the case will be decided by the Dutch courts. 

New Common Practice regarding trademark registration in European Union

The trademark offices of the European Union have recently agreed on a Common Practice with regard to the impact of non-distinctive or weak components of marks in the examination of likelihood of confusion. The objective of the Common Practice is to standardize the impact given to such components in the assessment of likelihood of confusion in the implementing countries. Under the new Practice, a common component that is weak or of low capacity to identify the goods or services for which it has been registered does not cause confusing similarity of marks, unless the overall impression of the marks is very similar or identical.

OHIM will incorporate the Common Practice into its Guidelines. This Common Practice is the fifth project launched under the Convergence Program through the European Trade Mark and Design Network. The Swedish Patent and Registration Office is one of the 28 implementing offices. The Finnish Patent and Registration Office will not implement it. 

The fourth project of the Convergence program, the Common Practice of the Scope of Protection of Black and White Marks, was published earlier this year. Under this new Common Practice, a black and white trademark will be considered identical to a sign in color only if the differences between the signs are so insignificant that they will go unnoticed by the average consumer. The use of a mark in color will support a registration for a black and white trademark only if the color does not alter the distinctive character of the mark. Accordingly, black and white marks that have been registered for over five years could be at a risk of revocation because their use in color may not be regarded as use of the mark.

The Swedish national office, within the framework of cooperation between the OHIM and EU national trademark authorities, has participated in the project but it opted out of implementation of the Common Practice regarding black and white trademarks due to legal constrains. The Swedish national office therefore continues to recognize black and white marks same scope of protection as previously. Finland did not participate in the project.