This month we report on the decision of the ECJ in Silberquelle v Maselli-Strickmode in which the court held that use of a trade mark on promotional goods is not “genuine use”; the CFI's decision in Heinrich Deichmann-Schuhe v OHIM also considered genuine use; and the decision of the High Court in the unregistered design right case relating to Virgin’s flat-bed seat. <top>
To be taken to your case of interest within the table please click on the below:
|Application (and where applicable, earlier mark)
- management consultancy; consultancy in setting up businesses; consultancy in launching products and marketing (35)
- training and further education; translations (41)
- services of an intellectual property advisor; establishment of technical and legal expertise; legal services, advice in relation to the development of products; advice on legal protection of products and services (42)
The CFI upheld the BoA’s decision that the mark was descriptive under Article 7(1)(c).
The services in relation to Class 35 and some of the services in relation to Class 42 were essentially directed to a specialist public. The services in Class 41 and the more general services in Class 42 were directed to the wider public. As these were not common consumer services, the attention of the average English speaking consumer would be relatively high.
The CFI agreed with the BoA that the relevant consumer, and in particular the specialist consumer, would identify the two elements of the mark as designating consultations in the field of patents, regardless of the incorrect grammatical order of the two terms.
The mark was descriptive of all the targeted services. The majority of the services in Class 42 represented activities relating to IP advice and thus also patent advice. Legal related services in Class 42 and ‘translations’ in Class 41 were closely linked to the mark applied for as they were relevant to patent applications and litigation. The services in Class 35 and those relating to the development of products in Class 42 enabled companies to define their IP strategy. Finally, the training services of Class 41 may relate to IP and patents.
|Application (and where applicable, earlier mark)
- data processing equipment and computer programs (including for banks/other financial service providers, in particular for application in the fields of legal registration, trading in monetary, securities and financial derivatives, commerce, payment transactions, asset management, document and workflow management) (9)
- various services relating to financial affairs (36)
The CFI upheld the BoA’s decision that the mark was descriptive under Article 7(1)(c) for the goods and services applied for.
Giropay did not dispute the fact that the word ‘giro’ was commonly used in the field of financial services to describe a specific procedure whereby funds are transferred between financial institutions in a wire form.
Neither did Giropay dispute the fact that ‘pay’ was used in the English language, both as a verb and as a noun, and when used in the context of financial services it referred to a transfer of money to another party in exchange for a completed service.
The CFI held that the combination of ‘giro’ followed by ‘pay’ in the English language was neither unusual in its structure nor contrary to linguistic customs. On the contrary, the mark had been correctly composed from a grammatical point of view and it did not create an impression sufficiently remote from the simple juxtaposition of the two words and thus did not change the meaning of the words.
|Application (and where applicable, earlier mark)
- biological material namely plant tissue genes and gene-sequences for agricultural purposes (1)
The CFI upheld the BoA’s decision rejecting the application under Article 7(1)(b).
The BoA was correct in finding that OPTIMUM was a banal and widespread laudatory term which could be used by any undertaking to advertise its goods or services, including the relevant goods in Class 1.
Although the sign did not enable the consumer to imagine the type of goods in Class 1, because of its common use in everyday language as a generic laudatory term, it could not be regarded as performing the essential function of a trade mark. This assessment was not altered by the fact that the goods were intended for a specialised public; the level of attention of such a public, which is generally high, is relatively low when it comes to promotional indicators.
The Applicant’s pleas in relation to Articles 7(1)(c), 73(1) and 74 were rejected as unfounded.
|Application (and where applicable, earlier mark)
- electrical and electronic apparatus and instruments for testing various parameters of goods; electrical and electronic apparatus and instruments for weighing, measuring and testing (inspection) (9)
The CFI dismissed the action, upholding the BoA’s decision that the mark was descriptive under Article 7(1)(c).
The relevant public was composed of English and German speaking professionals and specialist consumers of the goods listed in the specification. The CFI observed that such goods could be used in relation to pharmaceutical products.
Each element of the sign was descriptive (the ‘pharma’ element would be understood as a reference to pharmaceuticals, being a prefix referring directly to that word; the ‘check’ element would be understood as meaning to control, inspect, or test). Further, the combined word itself was not unusual and resulted from a simple juxtaposition of these elements. It did not produce an impression sufficiently far away from that given by the mere combination of its elements.
The analysis was unaffected by (i) the capital ‘C’ for ‘Check’; (ii) the fact that the mark would only be descriptive in relation to pharmaceutical products; or (iii) the Applicant’s success in registering the mark in Germany in Class 42.
|Application (and where applicable, earlier mark)
- shower systems and cubicals; preassembled multifunctional showers; showers; shower heads, etc. (9)
The CFI dismissed the action, upholding the BoA’s decision that the mark was descriptive under Article 7(1)(c). The relevant public was composed of English speaking members of the general public. Both elements ‘air’ and ‘shower’ were normal English words and were descriptive of the relevant goods (the ‘air’ element referred to the shower’s ability to project water mixed with air). Though the public may not have current knowledge of this technology, it was reasonable to envisage this could be the case in the future. The BoA was right to rely on an Australian press release in assessing the future evolution of the relevant public’s perception of the mark. Further, the combined word itself was not unusual and resulted from a simple juxtaposition of these elements.
The analysis was unaffected by (i) the mark’s spelling and typeface; (ii) the fact that the press release had also used the term ‘aerated showerheads’ and put ‘air shower’ in quotes; (iii) the absence of the word ‘airshower’ from the dictionary; or (iv) the Applicant’s success in registering the mark in Germany and the USA.
Miguel Torres, SA v OHIM (5 decisions) (CFI (Sixth Chamber); T-285/06; T-286/06; T-2287/06; T-8/07; T-16/07; 18.12.08) (Decisions not yet in English except for T-287/06)
Various parties applied to register the marks reproduced in the table (together the ‘marks applied for’) for goods in Class 33 relating to alcoholic beverages (except beers) (T-285/06, T-286/06 and T-8/07) or wines (T-287/06 and T-16/07).
Miguel Torres opposed these applications under Article 8(1)(b) relying on a number of earlier Community, Spanish, international and other national registrations including those reproduced in the table below.
||Marks Applied For
|| Earlier Marks
TORRE DE FRIAS
TORRE DE GAZATE
| 32 earlier marks
including the following
on which the Opposition
Division based its decision:
(‘TG Torre Galatea’)
57 earlier marks including
the following on which the
Opposition Division based
||TORRE DE BENĺTEZ
Following hearings on the same day before the same panel of judges, the CFI upheld the BoA’s decisions that there was no likelihood of confusion between any of the marks applied for and the relevant earlier marks.
The CFI held that the BoA had been correct in finding that the word ‘torre’ was not the dominant element of the marks applied for. As the distinctiveness of the marks applied for was due to the combination of the words which formed unique logical and conceptual units, even if the earlier marks were well known, the existence of the other components in the marks applied for could not be ignored. The average consumer would perceive the marks applied for as syntactic units, irrespective of their understanding of those terms. In particular for the Spanish, Portuguese or Italian public which would understand the meaning of those words or expressions, it was likely that the word ‘torre’ would be considered less dominant than the other elements of the marks applied for as the latter introduced specific features and evoked places or people.
Visually, the element ‘torre’ in the marks applied for was not identical to the element ‘torres’ in the earlier marks due to the addition of the letter ‘s’. The word marks applied for (T-285/06, T-286/06 and T-16/07), produced a different overall impression than the relevant earlier marks (which entirely consisted of the element ‘torres’ or the elements ‘las’ and ‘torres’) because the word marks applied for consisted of longer signs containing a combination of three word elements. The word elements of the figurative marks applied for (T-287/06 and T-8/07), (‘torre albéniz’ and ‘torre galatea’) were sufficiently distinct from their respective earlier marks to ensure that, visually, the differences were greater than the similarities.
The marks applied for and their respective earlier marks also differed phonetically. Despite the fact that parts of the earlier marks and the marks applied for were similar, this was outweighed by the differences in the greater number of syllables and in the presence of additional terms in the marks applied for.
The conceptual similarity was of limited relevance in countries where the meaning of the word ‘torre’ was not known. In relation to Spain, Portugal and Italy, the BoA was correct in finding that the marks applied for were conceptually different from the earlier marks. Whilst ‘torres’ evoked, at least for the Spanish public, the idea of towers, the word marks applied for (T-285/06, T-286/06 and T-16/07) referred to the idea of a specific tower, while ‘albéniz’ (T-287/06) was associated with a famous Spanish musician and ‘torre galatea’ referred to the house of the painter Salvador Dalí (T-8/07).
The BoA had not erred in finding that there was no likelihood of confusion between the marks applied for and their respective earlier marks. Miguel’s submission that ‘torres vedras’ was protected by being an appellation of origin was dismissed as it was only intended to protect the quality and labelling of wines produced in specific regions. Miguel’s submission that the earlier marks relied on in T-287/06, T-8/07 and T-16/07 constituted a family or series of marks (which would increase the likelihood of confusion with the marks applied for) was also rejected. Apart from the word ‘torres’ and/or the representation of three towers, the earlier marks did not have any characteristics capable of leading the average consumer to associate the marks applied for as being connected with the ‘family’ of TORRES marks, in particular as the marks applied for could be distinguished from the earlier marks by the distinctive addition of the elements ‘albéniz’, ‘galatea’ and ‘de benítez’.
Miguel Torres, SA v OHIM; Navisa Industrial Vinícola Española, SA (CFI (Third Chamber); T-259/06; 16.12.08) (Decision not yet in English)
In an application unrelated to the five oppositions described above, Miguel Torres sought to register the mark MANSO DE VELASCO for goods in Class 33 (alcoholic beverages (except beers).
Navisa Industrial Vinícola Española opposed this application under Article 8(1)(b) relying on its earlier Spanish registration VELASCO for Classes 30, 32 and 33 (oenology, wines, wort, beers, vinegars, and in particular cinchona wines and vermouths). The CFI concurred with the BoA’s conclusion that there was a likelihood of confusion between the two marks.
Although the BoA was correct in concluding that the products covered by the conflicting marks were quasi-identical, it had not carried out a detailed analysis of the similarities of the products. The CFI found that ‘wines, cinchona wines and vermouths’ were identical to the goods covered by the application. As ‘beer’ was expressly excluded by the mark applied for, ‘wort’ did not necessarily contain alcohol and ‘vinegar’ was not a drink, those goods were at most faintly similar to the goods covered by the application. There could be a complementary relationship between ‘oenology’ (the science and study of wine and winemaking) and wines and hence there was a certain degree of similarity between these products and services, although this did not necessarily extend to any other products designated by the mark applied for.
The BoA had not erred by failing to consider that the term ‘velasco’ would have lost a significant part of its distinctive character so that the average Spanish consumer would place less importance on it compared to the term ‘manso’. Miguel Torres had not provided any evidence to support its submission that the term ‘velasco’ was commonly used to designate wines and other alcoholic beverages. In addition, the BoA had not erred by not concluding that ‘manso’ would be the dominant and distinctive element of the mark applied for.
Visually, the addition of the elements ‘manso’ and ‘de’ in the mark applied for provided the consumer with a different overall impression from the earlier mark and, phonetically, the syllable structure and sound rhythm of the marks differed from one another. However, as the earlier mark was reproduced in its entirety in the mark applied for, the BoA had not erred in finding that there was a 50% visual and phonetic similarity between the marks.
The BoA was also correct in holding that there was a conceptual similarity between the marks. The presence of the term ‘velasco’ in both marks, which the average Spanish consumer of wines and alcohol would understand to be a family name, was sufficient to allow the consumer to establish a conceptual link between the marks. The addition of the term ‘manso’ in the mark applied for did not render the conflicting marks sufficiently different on a conceptual basis regardless of whether the term ‘manso’ was considered by the Spanish average consumer as being a generic Spanish term for a plot of land or as a family name.
The CFI concluded that there was a likelihood of confusion between the conflicting marks. It was conceivable that due to the presence of the term ‘velasco’ in both marks, the average consumer would perceive the addition of the term ‘manso’ in the mark applied for as a way to distinguish a range of wines stemming from the company related to the holder of the earlier mark or at least economically linked to it.
No likelihood of confusion due to dissimilar goods
Commercy AG v OHIM easyGroup IP Licensing Ltd (CFI (Fifth Chamber); T-316/07; 22.01.09)
EasyGroup registered mark the mark easyHotel in relation to various goods and services including ‘information services relating to transportation services; including information services provided on-line from a computer database or the internet; travel reservation and travel booking services provided by means of the world wide web’ in Class 39 and ‘computerised hotel reservation services’ in Class 42.
Commercy applied to invalidate the mark under Articles 52(1)(a) and 8(1)(b) on the basis of its earlier German registration for EASYHOTEL for ‘computer software for the production of platform independent internet shops and internet authoring systems chiefly for the reservation, booking and payment of accommodation’ in Class 9 and ‘development and design of computer software, namely for internet shops and internet authoring systems, especially for the reservation, booking and payment of accommodation’ in Class 42.
The Cancellation Division rejected the application and the BoA dismissed the appeal. The CFI upheld the BoA’s decision, concluding that there was no similarity between the relevant goods/services and therefore no likelihood of confusion.
The CFI’s reasons for its decision were as follows:
(i) the goods/services covered by the earlier mark were computer related, whereas information, booking and reservations services of the mark at issue used computer technology only to support the transmission of information or make it possible to reserve hotel accommodation or travel;
(ii) the goods/services of the earlier mark were especially intended for businesses in the hotel/travel sector whereas the services covered by the mark at issue were intended for the public at large;
(iii) the goods/services of the earlier mark were used to enable a software system or internet shops to function, whereas the services of the mark at issue were used to reserve hotel accommodation/travel;
(iv) the fact that the services covered by the mark at issue were exclusively provided by the internet (and therefore required software) did not remove the essential differences between the goods in terms of their nature, intended purpose and method of use;
(v) the fact that computer goods/services are used in nearly all sectors and may be used for very different purposes did not mean that they become different or distinct goods/services. Conversely, travel agency services did not become something else (in terms of their nature, intended purpose or method of use), solely because they are provided via the internet;
(vi) the goods and services were not substitutable (since they were intended for different publics) and therefore were not in competition; and
(vii) the goods and services were not complementary. Case law implies that complementary goods and services can be used together, which presupposes that they are intended for the same public. There can be no complementary connection between goods/services which are necessary for the running of a commercial undertaking, and goods and services produced or supplied by that industry.
The CFI also dismissed Commercy’s application for legal aid.
No likelihood of confusion due to dissimilar marks
Bambino Mio Ltd v Cazitex N.V. (Judge Pelling QC, sitting as a Judge of the High Court;  EWHC 2796 (Ch); 13.11.08)
In 2006, Cazitex, the Defendant, began manufacturing and marketing reusable nappies made of bamboo fibre under the sign ‘Bambineo’. Bambino Mio Ltd, the Claimant, brought a claim for trade mark infringement under Section 10(2)(b), relying on the word mark BAMBINO MIO registered in respect of reusable cotton nappies and related goods in Classes 3, 16, 21 and 25.
Judge Pelling held that, on a global appreciation, there was no likelihood of confusion as to the origin of the goods. Given the cost of purchasing a set of reusable nappies (which involved a one-off expenditure of a significant sum for most parents), the average consumer was likely to carry out at least some pre-purchase research and may also experiment with trial packs before reaching a final decision. All this suggested that the risk of confusion was likely to be relatively low unless the mark and sign were substantially similar.
The mark and the sign were plainly visually dissimilar: the Defendant’s sign was a made up word with no recognisable meaning whereas the Claimant’s mark consisted of two words, not one, with a specific meaning that was recognisable to UK consumers. The Claimant was wrong to place significance on the fact that the first six letters of its mark were the same as for the Defendant’s sign: this analysis led away from, not towards, a global appreciation. Although there was no agreed pronunciation of the Defendant’s sign, the Judge found that the sign and mark were pronounced significantly differently. Even if this was wrong, any aural similarity was overcome by the lack of visual similarity. There was no conceptual similarity: the Claimant’s mark had a literal meaning (‘my baby’) whereas the Defendant’s sign had no meaning at all.
Finally, the Judge considered evidence adduced to show actual confusion, which consisted of material from eBay, an internet product review and chat room exchanges. In each case the alleged confusion could be ascribed to a typing or some other error and/or did not demonstrate potential confusion by an average purchaser.
Accordingly there was no infringement of Section 10(2)(b) and the claim was dismissed.
Heinrich Deichmann-Schuhe GmbH & Co. KG v OHIM; Design for Women SA (CFI (First Chamber); T-86/07; 16.12.08) (Decision not yet in English)
Design for Women, the Applicant, applied to register the mark DEITECH (reproduced below) as a CTM for ‘goods of leather and imitations of leather; goods made from these materials, not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ (in Class 18) and ‘clothing, footwear, headgear’ (in Class 25).
Heinrich Deichmann-Schuhe, the Opponent, opposed the application with regards to the goods in Class 25 on the grounds that there was a likelihood of confusion under Article 8(1)(b) with its earlier DEI-tex mark:
The DEI-tex mark had been registered in Germany, as well as in Austria, the UK and the Benelux in relation to ‘clothes, shoes, hats’ in Class 25. The Applicant requested that the Opponent furnish proof of genuine use in the relevant territories under Articles 43(2) and (3). The Opposition Division rejected the opposition on the basis that the Opponent had failed to provide (i) any evidence of genuine use in the UK and the Benelux; and (ii) insufficient evidence of genuine use in Austria. The Opposition Division did not consider potential use of the earlier mark in Germany as it held that the right itself did not exist. The Opposition Division further held that even if the Opponent had been able to furnish proof of evidence of genuine use, the opposition would have failed as there was no likelihood of confusion under Article 8(1)(b).
The Opponent appealed to the BoA which upheld the Opposition Division’s decision in so far as it related to (i) and (ii) above. However, the BoA considered that the earlier German registration had been documented (and on this basis quashed this part of the decision of the Opposition Division) although it considered that the Opponent had not demonstrated sufficient genuine use in Germany.
The Opponent appealed to the CFI. In support of its alleged use of the earlier mark in Germany and Austria, the Opponent put forward two statutory declarations given by its German and Austrian associates and copies of six promotional brochures (three of which were German and dated October 2000, November 2001 and October 2003 and three of which were Austrian and dated November 1999, October 2000 and November 2003).
In evaluating whether the evidence put forward would amount to establishing genuine use in the relevant territories, the CFI noted that regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark was real, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.
According to the statutory declarations, 1,950,000 pairs of shoes bearing the earlier trade mark were sold between 2000 and 2004 in Germany, and 170,000 pairs of shoes bearing the earlier mark were sold in Austria during the same period. The CFI held that the brochures corroborated the statutory declarations with regards to location of use of the earlier mark, duration of use of the earlier mark, and nature of the product in question. Factors that the CFI held to be indicative of this included (i) the fact that the brochures were in German; (ii) the prices were listed in German marks and Austrian shillings; and (iii) the brochures contained photos of the shoes bearing the earlier mark.
The CFI therefore held that the Opponent had provided sufficient evidence of genuine use of the earlier mark in relation to ‘shoes’ and quashed part of the BoA decision. The CFI did not consider it appropriate to examine the Opponent’s second plea regarding likelihood of confusion, as this was a question for OHIM.
Use of a trade mark on promotional goods not genuine use
Silberquelle GmbH v Maselli-Strickmode GmbH (ECJ (First Chamber); C-495/07; 15.01.09)
Maselli manufactured and sold clothing and was the owner of an Austrian trade mark for WELLNESS registered in Classes 16, 25 (clothing) and 32 (alcohol-free drinks). The company gave bottles containing an alcohol-free drink labelled ‘Wellness-Drink’ to customers who bought its clothing. Maselli did not use the mark for drinks sold separately. Silberquelle, who sold alcohol-free drinks, applied to revoke the WELLNESS mark in Class 32 on the grounds of non-use. The Austrian court made a reference to the ECJ asking whether Articles 10(1) and 12(1) of Directive 89/104 should be interpreted as meaning that a mark is being put to genuine use if it is used for goods given free of charge to purchasers of other goods after conclusion of the purchase contract.
The ECJ, agreeing with the Advocate General’s opinion, concluded that a proprietor who affixes a mark to items that it gives, free of charge, to purchasers of its goods, does not make genuine use of that mark in respect of the class covering those items. The ECJ noted that the reference concerned a different case from one where a proprietor ‘sells promotional items in the form of souvenirs or other derivative products’.
Case law has established that genuine use must be understood to denote actual use, consistent with the essential function of a trade mark which is to guarantee the origin of the goods to the consumer by enabling the consumer to distinguish, without confusion, the goods of one undertaking from another (Ansul C-40/01). The ECJ concluded that it follows that within the concept of genuine use, the protection the mark confers cannot continue to operate if the mark loses its ‘commercial raison d’être’, which is to create or preserve an outlet for the goods or services with the mark as being distinct from the goods and services of other undertakings. It was essential in light of the number of marks registered and likely conflicts, that only marks which have been used on the market for goods and services in a class be maintained.
Where a trade mark owner does not place goods bearing the mark on the relevant market for those goods (here, the non-alcoholic drinks market) the goods do not compete on that market and would not be distinguishable from other undertaking’s goods. The consumer received a free gift (the non-alcoholic drink) when purchasing clothing and did not perform any conscious act in acquiring the bottled drink. The promotional goods bearing the mark were a reward or an advertisement to promote the sales of another product bearing the same mark. Such use is not genuine use as the promotional goods were not distributed with the aim of penetrating the market for goods in the same class. Under those circumstances, affixing the mark to the promotional items does not contribute to creating an outlet for those items or to distinguishing those items from the goods of other undertakings.
UNREGISTERED DESIGN RIGHT
Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd & Premium Aircraft Interiors UK Ltd* (Lewison J;  EWHC 26 (Pat); 21.01.09)
Virgin alleged that in working up the detailed design for flat-bed seats known as ‘Rock’ and ‘Solar Eclipse’, Premium Aircraft Interiors (known as Contour) and its external designers, Acumen, had infringed unregistered design right in parts of Virgin’s own flat-bed seat system. Lewison J rejected Virgin’s claim for unregistered design right infringement, holding that Rock and Solar Eclipse were independently designed.
Virgin also alleged infringement of EP (UK) 1,495,908. This report does not deal with the patent infringement claim, except to note that the patent was found valid but not infringed.
Virgin appointed Contour to design engineer and manufacturer its new flat-bed seat, known as the Upper Class Suit (UCS), in June 2002. The UCS was put into full service in November 2003 and it won numerous design awards. It was praised among other things for its inward-facing herringbone pattern, its flip-over seat and size of the resulting bed, and the angle of installation of the seats (which was greater than permitted by the regulations without additional passenger safety features; Virgin overcame this problem by using an airbag). Below is an example of an inward and outward herringbone layout.
Cathay Pacific approached Contour about the development of the Rock in January 2004. Although this project was not taken forward, a seat called the Solar Eclipse, which was based on the Rock, was eventually used by Air Canada.
During the design process for the Rock, Cathay Pacific generated a Layout of Passenger Area (LOPA) in-house, which was plainly based on Virgin’s inward facing herringbone layout, and sent it to Contour on 10 May 2004. Acumen produced its own LOPAs on 13 and 14 May, which became the basis for the development of the Rock and subsequently the Solar Eclipse.
The central thrust of Virgin’s case was that due to pressure of time, Acumen copied the Cathay Pacific representation of the UCS into their own LOPA of 13 May; and thence (directly or indirectly) copied it into their LOPA of 14 May. Thus the Solar Eclipse was indirectly copied from UCS.
The expert witnesses on design
Lewison J gave helpful guidance on the use of experts in design cases, highlighting that, in considering the question of copying, the function of the experts was to point out similarities and difference between the design and the alleged infringing article and the significance of these, not to evaluate the factual evidence.
Lewison J levelled some criticism at Virgin’s expert witness, Dr Moreno, noting that his practical knowledge of the design of aircraft seating was not equal to that of the Contour’s expert, and that his approach was flawed in several respects. Dr Moreno pointed out the similarities between the UCS and Solar Eclipse and disregarded any differences, which was a misunderstanding of his role as an expert. Further, he discounted any design constraints imposed by the client’s brief, and when, as here, it was not suggested that the concept of an inward facing herringbone was protectable, he was wrong to consider that reproduction of such a layout was itself evidence of copying. Finally, Dr Moreno set the bar too high in considering that a conventional design choice was, again, evidence of copying.
Lewison J rejected the claim of wholesale copying of the UCS. The Judge started with a detailed analysis of the respective design processes and highlighted a number of differences between the resulting seats. He noted that what was being compared in this case was the real life version of the UCS with the real life version of Solar Eclipse; this was important because the plans, elevations and isometric drawings being only two dimensional, could give a distorted picture of reality. The Judge also noted the warning given in Farmers Build Ltd v Carier Bulk Handling Materials Ltd ( RPC 461, 480) that in the field of designs of functional articles one design may be very similar, or even identical, to another design and yet not be copied. In this case, aircraft cabin design was a very intricate balancing act with many regulatory and functional constraints.
In relation to the allegation that Acumen had copied the UCS while working on the Rock, the Judge found that Cathay Pacific had specifically asked for a “Virgin-style fishbone concept” for their seat. However they had not asked for a copy of the UCS, just the same concept. At most what Acumen took from that was the idea of the inward facing herringbone. The significant differences between the Cathay Pacific LOPA and those produced by Acumen on 13 and 14 May did not lead to the inference that any one of the LOPAs was copied from the other. In addition, the in-house LOPA produced by Cathay Pacific was far too crude and inaccurate to form a basis for copying.
Lastly, Lewison J considered allegations of unregistered design right infringement in relation to numerous individual aspects of the UCS, in each case concluding that the comparable design elements had not been copied but were the result of independent design choice.
Sony Music Entertainment (Germany) GmbH v Falcon Neue Medien Vertrieb GmbH (ECJ (Grand Chamber); C-240/07; 20.01.09)
Falcon was the distributor of CD albums containing Bob Dylan songs which were originally on Sony Music LPs. Sony brought an action against Falcon for copyright infringement. According to Sony, the LPs were released in the United States during 1964/1965; an American record company obtained the rights to the original recordings of Bob Dylan’s records in Germany and assigned these to Sony. Falcon claimed that the Bob Dylan recordings took place prior to 1 January 1966 (the date on which the German law on copyright and neighbouring rights came into force) and were not protected under German law.
The German court (the Bundesgerichtshof) stayed the proceedings and made a reference to the ECJ on the basis that the outcome of the decision was dependent on the interpretation of Article 10(2) of Directive 2006/116 on the term of protection of copyright and certain related rights. Article 10(2) states that the term of protection provided for shall apply to all works and subject matter which were protected in at least one Member State on 1 July 1995 pursuant to national provisions on copyright or related rights, or which met the criteria for protection under Directive 92/100 on rental right and lending right and on certain rights related to copyright in the field of intellectual property.
The Bundesgerichtshof queried whether the term of protection granted by Article 10(2) should be applied to subject matter that has never been protected in the Member State in which protection is sought (in this case, the original Bob Dylan recordings in Germany). The ECJ concurred with the Advocate General and answered this question in the affirmative. Article 10(2) does not require the Member State to be the State in which the protection for which Directive 2006/116 is sought. Furthermore, the purpose of the Directive was to harmonise the terms of protection. It would be against that purpose to interpret Article 10(2) as meaning that the provision is conditional on the prior existence of protection under the national legislation of the Member State in which the protection is sought.
The Bundesgerichtshof also queried whether (i) national provisions governing the protection of right holders who are not Community nationals would constitute ‘national provisions’ within the meaning of Article 10(2); and (ii) the term of protection would also apply to subject matter that, on 1 July 1995, fulfilled the criteria set out in Directive 92/100 but whose right holder was not a Community national.
In response to (i), the ECJ concluded that Article 10(2) should be interpreted as meaning that the terms of protection provided for apply in a situation where the work or subject matter at issue was, on 1 July 1995, protected as such in at least one Member State under that Member State’s national legislation and where the holder of such rights, who was a national of a non-Member State, benefited, at that date, from the protection provided for by those national provisions. It was not apparent from the wording of Article 10(2) that it concerns only national provisions on copyright or related rights for the protection of holders who are Community nationals. This was not inconsistent with Article 7(2) of the Directive which regulates the protection of copyright-related rights with regard to non-Community national holders of such rights (Article 7(2) states that the terms of protection indicated in the Directive apply to such right holders, provided that Member States grant them protection). The objective of Article 10(2) is to specify the conditions in which the terms of protection of copyright-related rights laid down by that Directive are to apply, on a transitional basis, to existing situations. It did not rule out the solution laid down by Article 7(2) in cases where the term of protection provided for by the Directive are sought by non-Community national holders in relation to a work which does not satisfy the conditions set out in Article 10(2).
The albums at issue in the main proceedings benefited from protection under UK legislation on 1 July 1995, and therefore Article 7(2) did not apply.
In view of its answer in respect of (i), the ECJ concluded that it was not necessary to answer (ii).
Katharine Stephens, Zoe Fuller & Alice Sculthorpe
Reporter’s note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Emilia Linde, Nick Aries, Rachel Fetches, Taliah Davis and Tim Harris
Profiles of all of our contributors above can be found on the "our people" page of our site.
ECJ and CFI decisions can be found at http://curia.eu.int/en/content/juris/index_form.htm and the reported cases marked * can be found at http://www.bailii.org/databases.html#ew