Intellectual Property

CJEU: During the First Five Years of Registration, EUTM May Be Enforced without Having to Demonstrate Genuine Use

In its judgement Länsförsäkringar AB v. Matek A/S (C-654/15) of 21 December 2016 the Court of Justice of the European Union (CJEU) ruled on the interpretation of Article 9(1)(b), which relates to the rights conferred by a trade mark, of Regulation No 207/2009 on the Community trade mark. The judgement handled the situation when the mentioned Article is read in conjunction with Articles 15(1) and 51(1)(a) of the same Regulation on the use and revocation of trademarks.

The outcome was that during the first five years that follow the registration of an EU trademark, in situations where likelihood of confusion exists, the proprietor of a EU trademark may prevent third parties from using identical or similar marks in the course of business in regards to all the goods and services that are identical or similar to those for which the proprietor has registered its mark. Essential is that during this five year period, proprietors of EU trademarks do not need to demonstrate the genuine use of their mark.

Thus, during the first five years of registration, the evaluation in enforcement situations is based on the goods and services as they stand on the registration and not on the actual use in the market.

The Helsinki Court of Appeal Accepted Alko Oy's Claims in a Trademark Dispute Relating to Estonian Super Alko

In the judgment (S 16/395, Alko v. Aldar) of 7 December 2016, the Helsinki Court of Appeal assessed whether Osaühing Aldar Eesti (Aldar), which operates an alcohol shop called Super Alko in Estonia, has infringed the trademark rights of Alko Oy in Finland.

The District Court had held that Aldar had used trademarks that could be confused with Alko's marks but Alko had not interfered the use within a reasonable time. The Court of Appeal evaluated especially whether Aldar had used the mark "Super Alko" in Finland and whether the mark was confusingly similar with Alko's marks. The Court of Appeal also evaluated whether Aldar's mark "Super Alko" was established through use in Finland.

Alko Oy claimed that Aldar has infringed Alko's registered trademarks No. 245540 (word mark Alko) and No. 240341 (figurative mark Alko) as well as its trade name Alko Oy. The infringement was committed by using the domain name superalko.ee and the sign "Super Alko" in Aldar's marketing and sale of alcohol drinks directed to Finland. Further, Alko claimed that Aldar should be prohibited from continuing the said infringement.

The Court of Appeal held that Aldar had used the mark "Super Alko" in its business activities in Finland since it had used it on its Finnish language website and marketing materials distributed in Finland. This was the case despite the fact that Super Alko's clients had to collect the products they had purchased from the website from Super Alko's store located in Tallinn. Further the Court of Appeal held that the mark "Super Alko" was not established through use in Finland and that Aldar's mark is confusingly similar with Alko's marks. Therefore, the Court of Appeal accepted Alko's claims for confirming the trademark infringement and prohibiting the use of the trademark and returned the matter to the District Court for the handling of compensation and damages. Now Aldar needs to amend its marketing materials, which are e.g. in electronic format, so that it no longer infringes Alko's trademarks.

It is worth to note also that Alko has a special role in Finland as it enjoys a monopoly of the retail sale of beverages containing more than 4.7 percent alcohol by volume. The decision is not final. 

Two Cases on the Registrability of Trademarks from the Finnish Supreme Administrative Court

On 15 November 2016 the Finnish Supreme Administrative Court gave two decisions on cases concerning the interpretation of the registrability of trademarks.

In case KHO:2016:191 the applicant Kespro Oy had applied to register a figurative trademark entailing the word “MENU”. However an earlier similar figurative EU trademark (No. 388462) containing also the word "MENU" was cited by the Finnish Patent and Registration Office against the application. Kespro Oy claimed that its own earlier national figurative "MENU" trademark No. 122412, which proceeded to registration without the office citing the mentioned EU trademark No. 388462, should be taken into evaluation when assessing the likelihood of confusion between the trademarks. The Supreme Administrative Court stated, contrary to the Market Court, that also the applicant's own trademark, that is prior compared to the cited trademark, can affect the evaluation between the marks.

In this case it contributed to further weaken the already weak distinctiveness of the cited mark. However, despite of the above mentioned, the similarities of the marks were so substantial that the marks were considered confusingly similar. In case HDF:2016:192 the Finnish Patent and Registration office had first dismissed Twentieth Century Fox Film Corporations' application for registration of a trademark for the word “FOX” in several classes based on likelihood of confusion with twelve prior EU trademark registrations, an international trademark registration and two trade names. All the cited prior rights contained the word "fox" and had priority to the applied mark. The Supreme Administrative Court, along the lines with the Market Court decision, stated that the applicant’s own prior trademarks entailing the word "fox" with even an earlier priority date did not remove the likelihood of confusion. The Court observed that the applicant’s prior registrations are taken into consideration when assessing a possible trademark infringement, but not when assessing the requirements for a trademark to obtain registration. 

The Swedish Patent and Market Court rules that Samsung must account for computers and tablets imported to Sweden and pay a private copying levy to Copyswede

The Patent and Market Appeal Court ruled on 22 December 2016 in the case between Samsung and Copyswede (PMT10135-15), that Samsung must account for the import of computers and tablets to Sweden and pay a private copying levy to Copyswede.

The dispute concerned the question whether computers and tablets are especially suitable for private copying and whether Samsung, an importer of such products, is obliged to pay remuneration to rights holders. In reaching its conclusion, the Patent and Market Appeal Court referred to statements made by the Swedish Supreme Court in its decision (T 2760-15) of 10 June 2016 in the case between Telia Company and Copyswede. In that case, it was held that iPhones are highly suitable for private copying and it can be presumed that the devices will be used for such purposes to an extent that cannot be regarded as insignificant (further comment on this case is provided in IP & Technology Review, 20 September 2016). The Patent and Market Appeal Court held that the same reasoning applies in relation to computers and tablets, upholding the judgment of Solna District Court on 20 October 2015 (T 5537-14).

Life Science

Amendments to Finnish Health Insurance Legislation

A set of amendments have been introduced in the Finnish Health Insurance Act (1224/2004) on the basis of government proposal HE 184/2016. The majority of the amendments, mainly intended to create savings to public medical costs in Finland, entered into force on 1 January 2017.

As examples of the amendments, under the new Health Insurance Act, a wholesale price of a medicinal product that is higher than the previously confirmed price can only be confirmed in exceptional circumstances. Furthermore, upon entry onto the market of a first generic product or a biosimilar, the Pharmaceutical Pricing Board is required to commence a procedure for reconsideration of confirmed wholesale price of the original product, with the possibility of suspension of the reimbursement status and the wholesale price of the product if the wholesale price could no longer be considered reasonable.

The New Health Insurance Act also involves price regulation concerning biosimilars. In order to increase the use of and price competition between such products, the suggested price for the first biosimilar entering the reimbursement system must be at least 30 percent lower than the price of the original biologic medicinal product.

While reference price groups are currently only formed upon entry into the market of a generic product, as of 1 April 2017 reference price groups may be formed on the basis of the market entry of a parallel import or a parallel distribution product. The reference prices based on which substitution and reimbursement take place have also been lowered from 1,50/2 EUR to 0,50 added to the price of the cheapest product in the reference price group.

The new Health Insurance Act also introduces special reference price groups in situations where the reference price group includes a medicinal product for which the authorities have approved an indication that significantly differs from those of the generic products. In practice, formation of a special reference price group is based on differences in indications resulting from exclusive rights pertaining to second medical use patents. The products included within the special reference price group are subject to the reference price group legislation only to a limited extent.

As a final example of the amendments, a system of risk distribution concerning pricing and reimbursement of new medicinal products has been established. Under the risk distribution model, the Pharmaceutical Pricing Board may, based on an agreement with the marketing authorization holder, conditionally confirm reimbursement status and reasonable wholesale prices of products that have a high price and a small number of potential patients.

Marketing & Consumer

CJEU Rules on the Interpretation of the Concept of Credit Intermediary under the Directive on Credit Agreements for Consumers

In a recent judgment of 15 December 2016 (C-127/15) the Court of Justice of the European Union (CJEU) specified the meaning of concepts “credit intermediary” and “free of charge” under the Directive on credit agreements for consumers (2008/48/EC).

INKO, Inkasso GmbH is a debt collection agency that acts on a professional basis. Besides actual recovery of claims, it offers the debtors contracts for postponing or rescheduling the payment and charges a fee for this service. Konsumenteninformation (an association protecting consumers' interests) requested that INKO should be prohibited from making such contracts with consumers on behalf of the creditors. The Supreme Court of Austria (Oberster Gerichtshof) referred two questions to the CJEU: whether a debt collection agency that offers such services is a credit intermediary, and whether an agreement is made “free of charge”, if the debtor agrees to pay interest and costs, which he should have paid anyway, according to the law, based on the delayed payment.

The CJEU stated that a debt collection agency that offers such contracts on the side of its main services, which is left for the referring court to determine, is regarded as a credit intermediary. The contracts were not made free of charge in the context of the Directive.

CJEU: A Commercial Practice Can Be a Pyramid Promotional Scheme Even If There Is Only an Indirect Financial Link between the Contributions Paid In and the Compensation Paid Out

In the judgment Nationale Loterij (C-667/15) of 15 December 2016 the Court of Justice of the European Union (CJEU) assessed the interpretation of point 14 of Annex I to Directive 2005/29/EC concerning unfair business-to-consumer commercial practices (Unfair Business Practices Directive).

The ruling was given in proceedings between Loterie Nationale – Nationale Loterij NV van publiek recht and on the other hand Paul Adriaensen, Werner De Kesel and The Right Frequency VZW. The dispute concerned the establishment and promotion of a scheme of collective participation in the public lotteries in Belgium under the name ‘Lucky4All’. Loterie Nationale, which is a limited company responsible for organizing public lotteries in Belgium, sought a declaration that the Lucky4All scheme is a pyramid scheme or at least a misleading commercial practice prohibited by the Unfair Business Practices Directive.

Antwerp Court of Appeal referred the matter to the CJEU for a preliminary ruling on whether the application of point 14, headed ‘Commercial practices which are in all circumstances considered unfair’, of Annex I of the Unfair Business Practices Directive, requires that a prohibited pyramid promotional scheme exists only if the realization of the financial promise to existing members depends primarily or mostly on the direct transfer of the contributions of the new members or whether an indirect financial link suffices.

In its ruling, the CJEU reminded that the prohibition of pyramid promotional schemes is based on three cumulative conditions and referred to its earlier case law (4finance, C-515/12). Further, the CJEU held that it cannot be deduced from the wording of the provision in question that the required financial link must necessarily be direct and that a contrary interpretation could deprive the provision of effectiveness. Therefore, the CJEU ruled that the Unfair Business Practices Directive must be interpreted as allowing a commercial practice to be classified as a pyramid promotional scheme even if there is only an indirect link between the contributions paid by new member of the scheme and compensation paid to existing members.

In Brief

Finnish Patent and Registration Office Begins Monitoring Copyright Organizations

The Finnish Patent and Registration Office (PRH) began monitoring copyright organizations' compliance with the new Copyright Collective Management Act (1494/2016) as at 1 January 2017. The monitoring is based on the same Act, which was approved by the Finnish Parliament on 8 December 2016 and entered into force on 1 January 2017. The new Act implements Directive 2014/26/EU on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market.

The monitoring is mainly of ex-post nature based on information PRH has received, such as requests for measures. New copyright organizations have to file a notification to PRH before they start operating, while already active organizations have to file a notification within one month of the entry into force of the Act. 

The Swedish Supreme Administrative Court rules on the Public Access to Information and Secrecy Act

A private person requested to obtain a copy of a document which had been submitted to the Jönköping Administrative Court of Appeal ("Court of Appeal"). In a decision from 7 July 2016, the Court of Appeal found that the concerned document was not a public document within the meaning of the Swedish Freedom of the Press Act and thus, was not to be disclosed to the public. According to the Court of Appeal, the document was to be classified as confidential under the Public Access to Information and Secrecy Act, since it consisted of a copyrighted work that had not been published, and had been submitted to the Court of Appeal without the consent of the rights holder. In its judgment 3906-16 on 1 November 2016, Swedish Supreme Administrative Court overturned the decision from the Court of Appeal, and ruled that the concerned document was not protected by copyright and thus, it was a public document which could be disclosed to the public.