This month we report on the CJ's decision in relation to copyright in the context of reception and use of broadcasts in Football Association Premier League v QC Leisure/Karen Murphy v Media Protection Services, we report on the AG's opinion on the legitimacy of OHIM's "class headings cover all goods and services" approach to the registration and scope of protection of CTMs in the IP Translator case, and we report on the questions referred to the CJ in ITV Broadcasting v TV Catch Up concerning live streaming over the internet.



Decisions of the GC (formerly CFI)

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Case    GC
COR Sitzmöbel Helmut Lübke GmbH & Co. KG v OHIM; El Corte Inglés SA
(20.10. 11)
Application (and where applicable, earlier mark)  

- furniture, couches, beds and tables (20)
- carpets (27)

- furniture, mirrors, picture frames, goods (not included in other classes) of wood, cork, reed and substitutes for all these materials, or of plastics (20)

(Spanish mark) 


 The GC upheld the BoA’s finding that there was a likelihood of confusion under Art 8(1)(b).

Carpets and furniture form part of the fixtures and fittings of a dwelling and have the same intended purpose since they were intended to fit out a home. Further they were complementary in aesthetic terms as they were often sold in the same shops. As such the BoA was correct to conclude that there was a similarity between carpets and furniture.

The word element “cadena” in Spanish commonly designates a commercial distribution system or chain whereas the element “cor” is fanciful. Therefore the BoA rightly held that the more distinctive element of the earlier mark was the word element “cor”. Although visually and phonetically the trade marks were of a different length and consisted of a different number of words, the overall impression produced by the marks meant that they were similar.


Case    GC
Stephanie Scatizza v OHIM; Manuel Jacinto, Lda
Application (and where applicable, earlier mark)  

- goods made of leather and imitations of leather, trunks and travelling bags (18)

- handbags, travelling bags, umbrellas, sunshades, whips, horse-trappings and saddlery (18)

(Portuguese mark)


 The GC upheld the BoA’s finding that there was a likelihood of confusion between the marks under Art 8(1)(b).

The representation of the horse in the mark applied for was at least as dominant and as distinctive as the word element ‘horse’ and the word element ‘couture’ and the light grey oval background were not negligible.

There was a degree of visual similarity between the marks, although the similarity was weak given the differences due to the stylisation of the horse, the direction in which the horse was facing, the typeface used and the additional ornamental details in the mark applied for.

Phonetically the marks were similar; the word element ‘couture’ in the mark applied for only caused a marginal difference as the first element of both marks were phonetically identical.

The marks were identical conceptually. The GC noted that the word ‘couture’ would not be understood by the relevant Portuguese public.

Given the identity or similarity of the goods, the BoA was correct to conclude that there was a likelihood of confusion. This was the case irrespective of whether or not the visual comparison was more important than the other aspects.


Bayerische Asphaltmischwerke GmbH & Co KG für Straßenbaustoffe v OHIM; Koninklijke BAM Groep NV

Application (and where applicable, earlier mark)

 - building materials, not of metal, non-metallic rigid piping for building, asphalt, pitch and bitumen, non-metallic transportable structures and monuments, not of metal (19)

-  building construction, repairs, repair and maintenance (37)

- planning and consultancy for building and construction, design of buildings and structures, technical consultancy (42)

(Community mark)

 - asphalt and building materials derived from asphalt and for the production of asphalt (19)

(German mark)

Comment  The GC upheld the BoA’s finding that there was no likelihood of confusion under Art 8(1)(b). The goods at issue were not similar so it was not necessary to consider the similarity of the marks.

Although the BoA had erroneously limited the scope of protection as evidenced by proof of use of the earlier mark this did not affect the validity of the BoA’s decision.

The GC upheld the BoA’s finding that ‘non-metallic rigid piping for building’ was not similar to asphalt. Although it is not unusual that when road construction work is begun for piping to be laid, the purpose of laying that piping is not the construction of the road itself but rather that of extending public utilities. The distribution networks, purposes and method of production were all different. Furthermore the relevant public was composed of specialists with a high level of attention to these differences.

The BoA was correct to find that ‘non-metallic transportable structures’ and ‘monuments, not of metal’ were not similar to asphalt. The fact that Bayerische’s goods might have been used to manufacture such goods was not sufficient for them to be considered similar

In relation to ‘building construction, repairs and repair and maintenance services’ an undertaking that supplies building construction, repairs or repair and maintenance services was not similar to an undertaking that manufacturers asphalt.


Three-N-Products Private Ltd v OHIM; Sheilesh and Akhil Shah

Application (and where applicable, earlier mark)

- soaps, perfumery, essential oils, cosmetics, hair care products, dentifrices and beauty products (3)
- ayurvedic preparations, herbal health preparations and health food supplements (5)


- cosmetics and non medicated toiletries (3)
- herbal preparations for skin treatment, mineral and vitamin preparations (5)

(Community marks)


 The GC annulled the BoA’s finding that there was no likelihood of confusion between the marks in question under Art 8(1)(b).

The element ‘ayuuri’ was the dominant component of the mark applied for.

The GC held that the two word marks had a high degree of visual similarity, whereas the figurative mark exhibited an average degree of visual similarity. There was an average degree of phonetic similarity.

Conceptually the GC held that the general public would not readily link the marks to Ayurveda, a traditional Hindu medicine. Only the part of the relevant public made up of professionals in the field of beauty products and health treatments and those interested in Indian culture and alternative forms of medicine would have recognised a certain degree of conceptual similarity.

AYUR had a weakly distinctive character for the relevant part of the public who would understand this term as being derived from “Ayurveda”.

The finding of weak distinctive character of the earlier mark did not prevent a finding that there is a likelihood of confusion. Accordingly, on a global assessment, the similarities justified the conclusion that there was a likelihood of confusion between the marks.


Václav Hrbek v OHIM; The Outdoor Group Ltd

Application (and where applicable, earlier mark)

- rucksacks, bags, umbrellas, umbrella covers and backpacks, (18)
- sleeping bags and sleeping sacks (24)
- clothing, footwear, headgear (25)
- sporting articles (28)

- backpacks, haversacks, rucksacks, knapsacks, suitcases and holdalls (18)
- ski footwear and headgear, skiwear (25)

(Community mark)


 The GC upheld the BoA’s finding that there was a likelihood of confusion between the two marks under Art 8(1)(b).

The attention of the relevant public would be higher than average in relation to ski goods but in relation to backpacks the attention of the relevant public would be average.

The BoA was correct to conclude that the goods applied for were similar or identical to those in the specification of the earlier mark. Sporting articles and skiwear were complementary and would be sold in the same outlets and were therefore similar.

The signs were visually, phonetically and conceptually similar. The dominant element in both marks was the term “alpine” and the different word and figurative elements of the two marks were not sufficient to differentiate between them.

The alleged weak distinctive character of the term “alpine” in the earlier mark did not prevent the likelihood of confusion between the two marks.


Dorma GmbH & Co KG v OHIM; Puertos Doorsa SL

Application (and where applicable, earlier mark)

- security doors made of steel,  manual and automatic tilting and rolling blind doors and door accessories (6)
- alarms and signalling equipment for automatic doors (9)
- non-metal doors, door frames and windows (19)


- door locks, keys, hinges and other door accessories (6)
- mechanical, pneumatic and hydraulic devices for moving doors or gates (7)
- security doors and products (9)
- glazed doors (19)

(German and UK marks)

Comment  The GC upheld the BoA’s finding that there was no likelihood of confusion between the later mark and the earlier marks under Art 8(1)(b).

The signs at issue were aurally similar as they had the same number of syllables and the first syllable of both signs was very similar. It was unlikely that consumers would also pronounce the phrase “fábrica de puertas automáticas”.

Although the term “doorsa” was similar in length to “dorma” and contained four of the same letters, the graphic elements in the later mark could not be disregarded. On that basis, the signs were overall visually dissimilar.

Although the goods and services were identical with or similar to the specification of the earlier marks there was no likelihood of confusion.

Case  GC

Buffalo Milke Automotive Polishing Products Inc. v OHIM; Werner & Mertz GmbH

Application(and where applicable, earlier mark)  

- waxes, polishing creams, cleaning preparations, creams for leather, preservatives for leather and washing preparations all for the automotive vehicle care (3)

- shoe care products, polishing cream and leather conditioner (3)

(German mark)

 The GC upheld the BoA’s decision that it could take into account evidence of genuine use of the earlier mark produced for the first time before the BoA. The GC also upheld the BoA’s decision that the new evidence corroborated the earlier evidence and was sufficient to show that the earlier mark had been put to genuine use under Arts 42(2) and (3).

Under Art 76(2) submission of facts and evidence remains possible after the expiry of the time-limits. The BoA was justified in exercising its discretion to allow the new material (nine invoices) as they confirmed or supported documentary evidence filed within time. Werner & Mertz had not intended to prolong the proceedings nor was it negligent in failing to present the evidence at first instance.

The invoices demonstrated that the sales were genuine and covered a 13 month period which was a long enough period to establish genuine use. 

Case  GC
mPAY24 GmbH v OHIM; Ultra d.o.o. Proizvodnja elektronskih naprav
Application(and where applicable, earlier mark)

- hardware and software (9)
- printed matter (16)
- advertising (35)
- financial affairs (36)
- telecommunication (38)

(absolute grounds)

Comment  The GC annulled the decision of the BoA and upheld the registration of the mark under Art 7(1)(c).

An earlier decision holding that the mark was distinctive was not a bar to an invalidity action being brought on the same grounds.

The BoA was correct to find that the mark was descriptive and could be understood as referring to a system which made it possible to pay bills by mobile telephone around the clock.

However, the BoA had failed to carry out a specific analysis of the descriptive character of the sign in connection with the goods and services covered by the mark applied for and had not complied with the obligation under Art 75 to state the reasons on which its decision was based.

The GC added that general reasoning for a group or category of goods could be sufficient, but in this case the goods and services covered by the mark did not form a homogenous category which would allow reliance on a general statement of reasons. 
Case  GC

LG Electronics Inc v OHIM

Application(and where applicable, earlier mark)  DIRECT DRIVE

- electric washing machines, electric vacuum cleaners and automatic dishwashers (7)
- electric laundry dryers and air conditioners (11)

Comment  The GC upheld the BoA’s decision that the mark was descriptive under Art 7(1)(c).

The BoA was correct to find that the expression “direct-drive” had the meaning in English of “driven directly by the motor, without an intervening belt”. Since all of the goods were electric household appliances which could be operated by a “direct-drive” system, the BoA was correct to conclude that the mark would be understood by the English-speaking public as a description of the technical features of those goods.

The GC was not bound by decisions given in Canada to register identical or similar marks.
Case GC

The Pukka Luggage Company Ltd v OHIM; Jesús Miguel Azpiroz Arruti

Application(and where applicable, earlier mark)  PUKKA

- articles made of leather or imitation leather, bags, handbags, holdalls, travelling bags, luggage, key-cases, wallets, purses, briefcases, belts, carriers (luggage) for suits and for dresses, attaché cases, cheque-book holders, passport-holders and credit-card holders (18)

- clothing and belts (25)

(Community  mark)

The GC upheld the decision of the BoA that there was a likelihood of confusion under Art 8(1)(b).

The BoA was correct to hold that there was a degree of similarity between belts and luggage and travelling bags. The goods were all made of leather and used by consumers as accessories. Major clothing brands also produced luggage and travel bags and specialised luggage manufacturers made accessories such as belts. The goods in question were often sold in the same retail environment including online and specialist retail outlets, which would facilitate the perception that the same undertaking was responsible for the production of the goods.

The GC further held that use of different distribution channels for the goods was not relevant. The BoA had also not erred by not taking into account the different subcategories within the category of ‘luggage’ for the purpose of assessing similarity of the goods as it was not under an obligation to do so.

The GC agreed with the BoA that there was visual and phonetic similarity between the two Community marks.  The word element, “pukas” was the dominant visual element in the figurative mark.

Given the similarity of the goods and the marks, overall there was a likelihood of confusion under Art 8(1)(b).
Case  GC

Monster Cable Products Inc v OHIM; Live Nation (Music) UK Ltd

Application(and where applicable, earlier mark)


- electrical and electromagnetic signal transmitting, amplifying, receiving and converting devices, namely, cables, wires, connectors, and control devices for use with electrical, electronic and computer devices, loudspeakers, stereo amplifiers, audio equipment and accessories (9)


- apparatus for the recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs (9)

(UK mark)
Comment  The GC upheld the decision of the BoA that there was a likelihood of confusion under Art 8(1)(b).

The GC held that loudspeakers, stereo amplifiers and audio equipment were devices that enable the strength of the signal to be increased and were therefore identical to apparatus for the recording, transmission or reproduction of sound. Furthermore, cables, wires, connectors and control devices determine the quality of a recording and were similar to apparatus for the recording, transmission or reproduction of sound and images.

The GC also agreed with the BoA that the marks showed a high degree of visual, phonetic and conceptual similarity with the differences between the marks being negligiable.

As the goods covered by the two marks were either identical or similar and marks highly similar, the GC held that the BoA was correct in not referring to the distinctive character of the earlier mark in its overall assessment of likelihood of confusion. Even in the event that the earlier mark was found to have weak distinctive character, given the similarities, it would not rule out any likelihood of confusion.
Case  GC

Geemarc Telecom International Ltd (“Geemarc”) v OHIM; Audioline GmbH

Application(and where applicable, earlier mark)  AMPLIDECT

- telecommunications apparatus and instruments, telephones and telephone answering machines, parts and fittings included in Class 9 for all the aforesaid goods (9)

Comment  The GC upheld the BoA’s decision that mark was descriptive and lacked distinctive character pursuant to Art 7(1)(b) and (c) and had not acquired distinctiveness under Art 7(3).

‘DECT’ was understood by the general public in France as being an acronym for ‘Digital Enhanced Cordless Telecommunications’ and technology containing this feature was primarily used by people who had hearing impairments. The term ‘ampli’ was an abbreviation of the French words ‘amplification’ (amplifier) which was part of everyday use.

The BoA was correct that French-speaking consumers would understand that the term ‘amplidect’ as describing the essential characteristics of the goods i.e., an amplificatory function incorporating a telephone with DECT technology. The descriptiveness of the mark was increased from the point of view of consumers with hearing impairments, given degree of attention they would pay to technical specifications. 

On the basis that Geemarc had not provided any substantiation for the sales figures they claimed, the GC held that mark had not acquired distinctiveness through use under Art 7(3).

 Decisions not yet in English

Case    GC

Esprit International LP v OHIM; Marc O’Polo International GmbH

Application (and where applicable, earlier mark)  

- leather products, suitcases, umbrellas and horse harnesses, saddlery and whips (18)
- clothing, footwear and headgear (25)

- goods relating to leather, bags, umbrellas and horse harnesses, saddlery and whips (18)
- various types clothing, footwear and headgear (25)


 The GC upheld the BoA’s finding that there was a likelihood of confusion between the two marks under Art 8(1)(b).



Sports Warehouse GmbH v OHIM

Application (and where applicable, earlier mark)  


- clothing, footwear and headgear, especially for sports (25)
- toys, various types of gym, sports and tennis equipment, bags for sports goods and pads (28)


The GC upheld the BoA’s decision that the mark was descriptive under Art 7(1)(c).



Ben-Ri Electrónica SA v OHIM; Sacopa SAU

Application (and where applicable, earlier mark)  

  - optical fibres, connectors, lighting control devices (9)
- various types of lighting devices (11)

- various types of technical devices and instruments, e.g. electrical devices (especially to control light), nautical devices and cash registers (11)

(Spanish marks registered for goods in classes 9 and 11)


 The GC annulled the BoA’s decision and found that there was a likelihood of confusion between the two marks under Art 8(1)(b).



 CJ (Seventh Chamber)
LG Electronics Inc v OHIM

Application (and where applicable, earlier mark)


- electric washing machines, vacuum cleaners and electric dishwashers for household use (7)


 The CJ upheld the GC’s decision that the BoA was correct to refuse registration of KOMPRESSOR PLUS as it was descriptive in respect of vacuum cleaners under Art 7(1)(c).

LG had applied to register KOMPRESSOR PLUS in respect of washing machines, vacuum cleaners and dishwashers. The application was accepted in relation to washing machines and dishwashers, but refused in respect of vacuum cleaners.

Although the GC referred in its judgment to a document which had only been introduced for the first time before the GC, this was for the legitimate purpose of substantiating a fact considered by the BoA as ‘notorious’. LG could equally have sought to contest such supposed notoriety, but did not so.

There had been no manifest distortion by the GC of the facts or evidence. In addition, the allegation by LG that OHIM had distorted the meaning of a particular document before the GC amounted to an inadmissible invitation to the CJ to engage in factual assessments. As LG’s submission that the GC had incorrectly applied Article 7(1)(c) was based solely on the rejected grounds of appeal, this submission also failed.


Rory McLoughney v OHIM; Ernst Kern

Application (and where applicable, earlier mark)


- orthopaedic articles for medicinal purposes (10)
- clothing, footwear and headgear (25)
- gymnastic and sports equipment (28)


(unregistered mark)


 The GC upheld the BoA’s decision that Mr McLoughney had failed to provide sufficient evidence to support his claims under Art 8(3) and Art 8(4).


Chickmouza Chabou v OHIM; Chalou Kleiderfabrik GmbH

Application (and where applicable, earlier mark)


- various types of sportswear (except swimwear), casual clothing, footwear and headgear for boys and young men (25)


- outer and inner garments, hosiery, underwear, swimwear and beachwear (25)


The GC upheld the BoA’s decision that there was a likelihood of confusion between the two marks under Art 8(1)(b) and that Mr Chabou was not being prohibited from using his name in the course of trade under Art 12(a).

Case  GC

El Coto De Rioja SA v OHIM; María Álvarez Serrano

Application (and where applicable, earlier mark)


- wines (33)


- wines, spirits and liqueur (33)


- alcoholic beverages (except beer) (33)

(Spanish marks)


The GC annulled the BoA’s decision and found that there was similarity between the marks under Art 8(1)(b). The case was referred back to OHIM for further consideration.


Abbott Laboratories v OHIM

Application (and where applicable, earlier mark)  


- medical and surgical devices and instruments, stents,  catheters and insertion guides (10)


The GC upheld the BoA’s decision that the mark was descriptive and devoid of distinctive character under Art 7(1)(c) and 7(1)(b) respectively.


 The Chartered Institute of Patent Attorneys (“CIPA”) v Registrar of Trade Marks (AG Bot for the CJ (Grand Chamber)); C-307/10; 29.11.11)

AG Bot held that the CJ should adopt a uniform interpretation of the requirements relating to the identity of the goods or services such that the description was clear and precise to trade mark offices and third parties. Such clarity and precision required that the descriptions used in trade mark applications be intelligible and unambiguous. Although an applicant could possibly meet this criteria by using the general class headings, this was not the case in relation to all such class headings. As such Communication No. 4/03 of the President of OHIM stating that use of the general class heading was a claim to all goods or services within that class did not make it possible to determine the substantive scope of protection sought with the necessary accuracy.


CIPA applied for registration of the trade mark “IP TRANSLATOR” for “Education; providing of training, entertainment, sporting and cultural activities” in Class 41 of the Nice Classification. The UK IPO extended the examination of the application to all the goods and services included in class 41, including, translation services and refused the application on the grounds of descriptiveness. CIPA appealed the decision on the basis that the specification of the application did not cover or refer to translation services.

The AP stayed the proceedings and referred three questions which queried the degree of clarity and precision required for the identification of the various goods or services covered by the trade mark application. The AP queried whether it was permissible to use the class headings of the Nice Classification to identify such goods and services and if so, could the use of the class headings be construed as covering all goods or services in that class in accordance with Communication No. 4/03.

Identification of the goods and services in a trade mark application

AG Bot was of the opinion that it was essential to define a common approach regarding the identification of goods or services irrespective of whether the registration was a national or community mark. Although the community and national regimes were independent they interacted through opposition and invalidity proceedings such that clarity of the scope of protection is essential.

The Nice Classification has no legal scope, it fulfils practical and administrative roles in the classifications of goods and services. However, to be registered, a trade mark must fulfil the origin indicating function of a mark such that the scope of that protection, i.e., the goods or services, must be identifiable. OHIM and national trade mark offices are required to conduct a strict and thorough examination of trade mark applications to determine distinctive character that must be assessed in light of the goods or services applied for. Additionally third parties must be able to be able to determine with clarity and precision the scope of registrations owned by their actual or potential competitors.

In AG Bot’s opinion to fulfil such requirements, applicants could either exhaustively list each of the goods or services for which they sought protection or identify the basic goods and services that identify the essential objective characteristics and properties of the goods or services covered. AG Bot acknowledged the potential limitations of requiring an exhaustive list which risked limiting to the protection afforded to the trade mark proprietor. In the opinion of AG Bot, the second option was preferable but he noted that the clarity and precision required must be assessed on a case-by-case basis.

Use of the class headings of the Nice Classification

In the opinion of AG Bot, nothing precluded the use of the class headings, provided that they satisfied the requirements of clarity and precision. This had to be determined on a case-by-case basis and AG Bot observed that some class headings, e.g., ‘soaps’ or ‘cutlery’ did meet such requirements but that others, such as ‘personal and social services rendered by others to meet the needs of individuals’ did not.

Communication No. 4/03

The ‘class-heading-covers-all’ approach adopted by the President of OHIM in Communication No. 4/03 in AG Bot’s opinion contradicted the principles laid down in the Regulation. Such an approach was tantamount to affording the applicant almost unlimited exclusive rights over the goods or services in a class. A class may cover many services that do not share common characteristics and such a broad scope of protection was detrimental to the principles of the free movement of goods and freedom to provide services. Such an approach would ultimately lead to an increase in the number of trade marks registered and the conflicts between them which would distort competition on the market. 

On that basis AG Bot was of the opinion that trade mark applications must satisfy requirements of clarity and precision such that trade mark offices and third parties could accurately determine the scope of protection of the trade mark. Such criteria could be fulfilled by using the class headings, provided the requirements of clarity and precision were met. Communication No. 4/03 did not guarantee the clarity and precision required.


Patents County Court makes order in STALKER case

Fox International Group Ltd (“Fox”) v Jay Folly* (Judge Birss; [2011] EWPCC 38; 21.11.11)

In his judgment in Fox v Folly [2011] EWPCC 30 (reported in CIPA Journal, November 2011), having found in favour of Fox, Judge Birss directed that consequential orders be dealt with in writing. 

Judge Birss rejected Mr Folly’s submission that the judgment only concerned the use of STALKER and not STALKER TACKLE or STALKER CLOTHING. The Judge had found that both signs would give rise to a likelihood of confusion under Article 9(1)(b) when used as an indication of origin. Accordingly, the Judge ordered My Folly to assign the domain names and to Fox. He also ordered Mr Folly to pay Fox’s costs, giving him liberty to apply in relation to the period over which a payment on account should be made.

The Judge also made an order that the judgment be publicised, and Mr Folly was ordered to give disclosure on the Island Records v Tring principle within 42 days; Mr Folly’s proposal of 60 days, which had been submitted without detailed reasons, was rejected. 

Judge Birss went on to consider an allegation of contempt of court raised by Mr Folly against a representative of Fox, Mr Reeves. The Judge considered that it would have been wise for Mr Reeves to have waited until after the Judgment had been handed down in approved form before submitting VeRo requests to eBay for the removal of Mr Folly’s goods. The timing of the request had made it inevitable that Mr Folly would consider that the embargo attaching to the confidential draft judgment had been breached. However, the VeRO requests had made no mention of the court proceedings and Mr Reeves had therefore not breached the confidentiality embargo. Nevertheless, that the issue had arisen at all was entirely the fault of Mr Reeves and Mr Folly was fully entitled to raise it and the Judge directed that Fox should not recover any of its costs related to the issue.



Football Association Premier League Ltd (FAP L) & Ots v QC Leisure & Ots/Karen Murphy v Media Protection Services Ltd (CJ Grand Chamber); Joined Cases C-403/08 and C-429/08; 04.10.11)

The CJ gave a ruling in response to a number of questions referred to it by the High Court in the context of the reception and use of broadcasts. In doing so, the CJ broadly followed the AG’s opinion, which recommended the application of the EU free movement of services and competition rules so as to prohibit national legislation and contractual restrictions preventing the importation of foreign decoder devices from another member state to enable decryption and viewing of a satellite TV service in the member state of importation. The CJ also found that the screening in a public house involves a transmission to a new and distinct public, which falls within the rights holders’ rights. 

The judgment concerned: (A) rules relating to the reception of an encrypted broadcast from other member states; and (B) rules relating to the use of the broadcast once it is received. 


The FAPL runs the Premier League in England and its activities include organising the filming of the Premier League matches and licensing the broadcasting rights for live transmission on a territorial basis. To protect this territoriality the broadcasters undertake to prevent the public outside their territory from decrypting the broadcasts by purchasing the relevant decoding device.

The defendants had all obtained decoding devices from another territory which allowed them to receive a satellite channel broadcast of the Premier League matches from another Member State on the less expensive subscription that offered by BSkyB Ltd, the licensee in the UK.

(A) Rules concerning reception of an encrypted broadcast from other member states

Foreign decoders are not “illicit devices”

The CJ held that foreign decoding devices are not “illicit devices” within the meaning of the Conditional Access Directive (98/84/EC) merely because they have been procured by means of a false name and address or in breach of a contractual requirement of use only for private purposes. All such devices had been manufactured and placed on the market with the authorisation of the service provider and did not allow free access to protected services or enabled the circumvention of technological measures, therefore their importation could not be excluded. 

The EU free movement rules

As regards provisions of national law preventing the importation of foreign decoder devices, the CJ stated that the free movement of services rules (i.e. Article 56 of the Treaty on the Functioning of the European Union (“TFEU”)) rather than the free movement of goods rules were applicable, because although the decoding devices are goods, their use is secondary to the reception of the encrypted broadcasting services. 

The CJ stated that sporting events cannot themselves be protected under copyright and cannot be classified as works eligible for protection within the meaning of the EU Copyright Directive (2001/29/EC). It is permissible for a member state to protect sporting events, where appropriate by means of IP, or by recognising protection conferred on those events by agreements concerning the making available of audiovisual content of such events, but it is for the national court to establish whether the relevant national legislation confers such protection. Such legislation, where it applies, was capable in principle of justifying a restriction on the free movement of services. However, where a premium was paid to rights holders to guarantee absolute territorial exclusivity such as to result in artificial price differences between partitioned national markets, such results were irreconcilable with EU internal market requirements. The CJ therefore concluded that prohibitions on using foreign decoding devices could not be justified by reference to the protection of IP rights. 

The CJ also concluded that the “closed period” rule preventing live football transmissions on Saturday afternoons, did not justify a prohibition on imports of decoder devices. This was because the “closed period” rule could be respected by means of contractual limitations in broadcasting licence agreements that prevented broadcasting of Premier League matches during the closed periods. 

Territorial restrictions in licence agreements: EU competition law

The CJ concluded that territorial restrictions in broadcasting licence agreements that required the broadcaster not to supply decoding devices outside of the contract territory, constitute absolute territorial restrictions which are inconsistent with Article 101(1) TFEU (the prohibition on restrictive agreements) as being a restriction by object. By their nature such absolute territorial restrictions were stated by the CJ not to be capable of benefitting from the exceptions criteria in Article 101(3) TFEU

(B) Rules relating to the use of the broadcasts once received

The CJ’s examination focussed on the FAPL’s copyright in certain works exploited within the broadcasts, in particular the opening video sequence, the FAPL anthem, pre-recorded highlights films and various graphics.

Exemption from need for rights holders’ authorisation

First, the CJ held that acts of reproduction performed within the memory of a satellite decoder and on a television screen can be carried out without the authorisation of the copyright holders concerned, pursuant to the Copyright Directive. This is on the basis of a defence to the reproduction right in Article 5(1) of that Directive, which allows a reproduction which is temporary, transient or incidental, an integral part of a technological process, is a lawful use of a work, and has no independent economic significance. On the latter point, since the temporary acts of reproduction were not capable of generating an additional economic advantage beyond that derived from the reception of the broadcast, the criterion was satisfied and the exemption applied.

“Communication to the public”

The CJ decided that screenings to customers of public houses amounted to a “communication to the public” within the meaning of the Copyright Directive (Article 3(1)). This was the opposite conclusion to that reached by the AG, and was based partly on the fact that the customers present in the public house were an additional public to those considered by the authors when they authorised the broadcast of the works. This was also stated to be in accordance with authors’ rights to appropriate reward for the use of their works.


Airfield NV and Anr v Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (Sabam) and Airfield NV v Agicoa Belgium BVBA (CJ (Third Chamber); Joined Cases C-431/09 and C-432/09; 13.10.11)

The CJ held that a satellite package provider had to obtain authorisation from the relevant rights holders in television programmes for its intervention in the indirect or direct transmission of those programmes via satellite to its subscribers. 

The Court of Appeal of Brussels made references to the CJ in the two cases for a preliminary ruling on matters of interpretation of Article 1(2)(a) to (c) of Directive 93/83 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission. The questions referred to the CJ were whether Directive 93/83 precludes a requirement that a supplier of digital satellite television must obtain the consent of copyright holders in two scenarios:

Scenario 1: Where a broadcasting organisation had transmitted its programme-carrying signals, either by a fixed link or by an encrypted satellite signal, to an independent supplier of digital satellite television. The supplier had then encrypted the signals and beamed them to a satellite through a company associated with it and those signals were beamed back down bundled as part of a satellite television package to subscribers.

Scenario 2: Where a broadcasting organisation had transmitted its programme signals to a satellite in accordance with the instructions of an independent digital satellite television supplier and those signals were beamed back down bundled as part of a satellite television package to subscribers.


Airfield was a Belgian satellite television provider, who had offered the public a package of satellite channels that could be viewed using a satellite decoder. Canal Digitaal was a Dutch company that was part of the same group as Airfield that had leased capacity for digital radio and television on a satellite system and subsequently subleased the capacity to Airfield. Canal provided the technical services including multiplexing, compressing, scrambling and data transmission, which were required for the broadcasts to Belgium and Luxembourg.

Airfield had entered into a number of agreements with broadcasting organisations whose channels were included in the satellite package. The content was either sent by direct or indirect transmission. When using indirect transmission there were two possible methods of transmission. First, the signals carrying the programmes could be sent via a fixed link, to Canal’s equipment installed in Belgium, where they would be compressed and scrambled and then sent by broadband to the Netherlands where they would be beamed to the satellite. Second, the signals carrying the programmes could be sent directly to the satellite by the broadcaster, where Canal received them in encrypted form.  Canal then decoded the signals, possibly rescrambled them and beamed them back to the satellite. Canal provided Airfield with the key for decoder cards for subscribers that allowed subscribers to decrypt the signals.

When using direct transmission, the broadcasters scrambled the signals themselves and sent them from the country of origin directly to the satellite. Airfield’s and Canal’s role was limited to the supply of access keys to the broadcasting organisations, so that the correct codes were applied to the programmes and Airfield’s subscribers could decode them using their decoder cards.

The CJ was satisfied that indirect transmission and direct transmission each comprised a single communication to the public by satellite. In both indirect and direct transmission, the broadcasting organisations introduced the programme-carrying signals and had the power to control the act of introduction. The satellite formed a central, essential and irreplaceable element of both indirect and direct transmission and the intervention of Airfield and Canal fell within customary technical activities and did not constitute an interruption in the chain of communication leading to the satellite and down towards earth. Such signals were addressed to the public in possession of a decoder card supplied by Airfield which were supplied with the consent of the broadcasting organisation. On that basis, both indirect and direct transmission of the television programmes were under Article 1(2)(a) and (c) of Directive 98/83 a single indivisible communication to the public by satellite.

The CJ held that Airfield and Canal’s intervention went beyond mere provision of physical facilities and they had provided the protected works to a new public. Their intervention made it possible for subscribers to access the works which were broadcast. Furthermore, these subscribers were a public targeted by the satellite package provider, which was additional to the public targeted by the broadcasting organisation concerned.  The satellite service provider was also performing the service with the aim of making profit through the subscription fees paid by the subscribers and that it enabled its subscribers to have access to channels from more than one broadcasting organisation.

In light of the above, the CJ held that Article 2 of Directive 93/83 must be interpreted as requiring a satellite package provider to obtain authorisation from the copyright holder for its intervention in direct and indirect transmission. The exception to this was where the right holders had agreed with the broadcasting organisation concerned that the protected works would also be communicated to the public through that satellite package provider on the condition that this did not make those works accessible to a new public.


General requirement to filter and block copyright infringement held to be inconsistent with EU law

Scarlet Extended SA (“Scarlet”) v Société belge des auteurs, compositeurs et éditeurs SCRL (“Sabam”) (CJ (Third Chamber); C‑70/10; 24.10.11)

The CJ held that an injunction imposed on a Belgian Internet Service Provider (“ISP”), Scarlet, requiring it to install a blocking and filtering system amounted to a general obligation to monitor communications on Scarlet’s network, which was prohibited by Article 15(1) of the E-Commerce Directive.

The Court of Appeal had sought a preliminary ruling from the CJ and in essence asked whether it was consistent with EU legislation as well as with the fundamental rights of privacy and freedom of expression, to require an ISP to implement traffic-filtering mechanisms and, if such an injunction was consistent with EU law, was it proportionate to require an ISP to implement traffic-filtering mechanisms?


In 2004, Sabam a rights management company who represented authors, composers and editors of musical works, sought an injunction against Scarlet to prevent its customers from committing copyright infringement using peer-to-peer software. The injunction required the provider to adopt proactive measures to prevent the unauthorized exchange of protected material. In practice, this required the implementation of a general filtering and blocking solution on its network.

This request was based on Article 87 of the Belgian Copyright Act - which implements into Belgian law EU Directive 2001/29 - according to which the Belgian Court may, to prevent copyright infringement, order injunctions against intermediaries whose services are used by third parties to perpetrate such infringement.

The Brussels Court of First Instance ordered Scarlet to prevent, in its entirety, the unauthorised exchange of copyrighted files through peer-to-peer software on its network.

The CJ held that such an injunction did not strike a fair balance between the protection of intellectual property rights and the protection of the fundamental rights of individuals who are affected by such measures. The CJ held that such an injunction would result in a serious infringement of the freedom of the ISP to conduct its business and would infringe the fundamental rights of the ISP’s customers, namely their freedom to receive or impart information and their right to protection of their personal data, which included those users’ IP addresses are protected personal data.


ISP ordered to block website used to distribute infringing copies of films

Twentieth Century Fox Film Corporation & Ots (the “Studios”) v British Telecommunications plc * (Arnold J; [2011] EWHC 2714 (Ch); 26.10.11)

Arnold J ruled on the terms of the injunction he had granted under Section 97A CDPA in July 2011 requiring BT to block access to the Newzbin website (reported in CIPA Journal, August 2011). 

Terms of the injunction

The Judge ordered BT to block access to Newzbin within 14 days, and ruled on other terms of the injunction. The order would refer to IP address re-routing rather than blocking, as IP address blocking could lead to “overblocking” of sites or pages that ought not to be blocked. Arnold J held that it was not appropriate to grant an injunction against BT’s access services and upstream divisions, but it was proportionate for the injunction to apply to all BT’s services which incorporated the Cleanfeed technology, whether that was imposed on the customer or taken as an option. 

Newzbin had, since the decision was handed down in July 2011, made available client software designed to allow users to circumvent any block imposed by BT by accessing Newzbin from, for example, an installed web browser. To address this, the following wording, proposed by the Studios, was adopted: “any other IP address or URL whose sole or predominant purpose is to enable or facilitate access to the Newzbin [2] website” which would permit the Studios to notify additional IP addresses and/or URLs to BT to be re-routed.    

Arnold J refused to give permission to BT to apply to set aside or vary the order in the event that the Studios failed, within a reasonable time, to apply for and obtain an equivalent injunction against other UK ISPs. Such an order would be fraught with uncertainty and there was no justification for such a provision; as with any other legal remedy, the Studios were entitled to decide against whom to seek the remedy. 

Temporary shutdown

BT would not be in breach of the order if it temporarily suspended the operation of either Cleanfeed or the addition of IP addresses or URLs with the written consent of the Studios or the prior permission of the Court. However, BT’s suggested approach of ‘shut down first and explain to the court later’ was inappropriate. 

Costs of implementing the order

BT had not committed any legal wrong, and analogies could be drawn between orders made under Article 8(3) Information Society Directive/Section 97A and Norwich Pharmacal orders. However, in this case, the costs of implementing the order were to be borne by BT, as the costs could be regarded as a cost of carrying on its business of providing services which operators and users of Newzbin had used to infringe the Studios’ copyright. 

Cross-undertaking or indemnity

There was no reason to require the Studios to give a cross-undertaking in damages.  There was no analogy between an order under Article 8(3) and an interim or freezing injunction or the court’s Norwich Pharmacal jurisdiction. 

As regards an indemnity, although BT was concerned it may suffer consequential losses, such as damaged sustained from hackers for complying with the order, there was little evidence that this was likely to occur. Granting such an indemnity would encourage the very mischief sought to be remedied. In relation to possible legal claims brought against BT either by subscribers or third parties, the Judge did not consider that a BT subscriber could bring such a claim as a result of BT’s compliance with the order, as BT’s terms of use contained appropriate limitations and exclusions. As for third parties who were not subscribers, the Judge found it very difficult to see the basis on which a claim in tort could be brought against BT. 


ITV Broadcasting Ltd & Ots v TV Catch Up Ltd (“TVC”) (defendant) and Secretary of State for Business, Innovation and Skills (intervenor) (Floyd J; [2011] EWHC 2977 (Pat); 14.11.11)

In his earlier judgment in this case (reported in CIPA Journal, August 2011), Floyd J expressed provisional views on certain issues but decided to refer questions to the CJ or to defer giving judgment until the decision of the CJEU in Football Association Premier League v QC Leisure [2008] EWHC 1411 (Ch) (“FAPL”). At this further hearing, Floyd J ruled on the form of order and the questions to be referred. 

TVC operated an internet-based live streaming service of television broadcasts and films in which seven commercial broadcasters owned the copyright. The service allowed viewers to access content online which they were legally entitled to view as a result of payment of the television licence fees. ITV alleged infringement of its copyright in the films and broadcasts by communication of the works to the public under Section 20 CDPA and by making transient copies of the works in TVC’s servers and in the screens of the users under Section 17. TVC argued that it had not communicated the works to the public and that the transient copies did not constitute a substantial part of the films and broadcasts.  It also argued that Section 20 was ultra vires as it went beyond the provisions in Directive 2001/29/EC on harmonising copyright in the information society (“InfoSoc Directive”) and relied on the Section 28A defence which allows temporary copying where the copies have no independent economic significance.

Reference on communication to the public

Floyd J’s provisional view had been that making films and broadcasts available online through live-streaming could constitute a communication to the public by TVC. However, he had decided to refer this question to the CJEU and would do so, as although his opinion was consistent with the recent decision of the CJEU in Joined Cases C-431/09 and C-432/09 Airfield NV and Canaal Digital NV & Ots and Airfield NV v Agicoa Belgium BVBA, the Judge was not persuaded that the principle of law engaged in the present case was rendered acte claire by Airfield. 

On that basis, Floyd J referred a question to the CJ that, in summary, asked whether the right to authorise or prohibit a communication to the public of a copyright work under Article 3.1 of the InfoSoc Directive extended to authorisation of the inclusion of the work in a terrestrial free-to-air television broadcast intended for reception in a Member State where a third party provided services allowing individuals who could lawfully receive the broadcast via television to receive that content by means of an internet stream. The Court also asked would it make any difference to the answer if the third party server only allows a one-to-one connection for each subscriber or if the third party’s service is funded by either pre-roll advertising or within the frame of the viewing software but such that the advertisements from the original broadcast are retained. Further, would it make a difference if the third party was a competitor in terms of attracting both viewers and advertising revenues.

Reference on reproduction of a substantial part of broadcasts in buffers and on screens

In relation to the broadcasts, Floyd J’s provisional view had been that a substantial part of these works had not been reproduced.  Relying on the AG’s opinion in FAPL, Floyd J had distinguished broadcasts from films, in which there could be intellectual creation in every frame and where reproduction of a single frame could constitute a substantial reproduction. His preliminary decision had therefore been that the copyright in broadcasts had not been infringed, but the copyright in the films may have been. As already stated in his preliminary opinion, it could not be argued that there had been a reproduction of a substantial part of a broadcast, except on a rolling basis, and the “rolling basis” should not be applied to broadcasts. It was therefore not right to refer this question. 

Reproduction of substantial part of films in memory buffers and on screens

The CJEU had followed the AG’s opinion in FAPL, confirming that the substantial reproduction test for films must be applied in relation to transient fragments and not on a “rolling basis”. In line with this, Floyd J held that a substantial part of the films had been reproduced by TVC in the memory buffers during the streaming process.

Defence under Article 5(1)

Floyd J also declined to refer a question as to the applicability of the Article 5(1) defence under the InfoSoc Directive and upheld his preliminary decision that the copies made by TVC did not have independent economic significance.



Case  GC

Peter Reisenthel v OHIM; Dynamic Promotion Co Ltd

Application (and where applicable, earlier mark)


 The GC dismissed Peter Reisenthel’s evidence that it had not received the fax transmission of the decision under appeal. Where a party indicates that it will accept communications by fax or other method, it is up to that party to take appropriate precautions in order to establish, where appropriate, the contents of the documents actually received by that method of communication.

The GC upheld the BoA’s decision that Peter Reisenthel’s appeal was inadmissible because the grounds of appeal had been filed out of time notwithstanding that the BoA had erred in the choice of the applicable legal basis for making its decision.

The BoA had rendered a decision before the end of the time period given to make observations on the inadmissibility of the appeal. This was a breach of Peter Reisenthal’s rights of defence under Art 62. Art 39 was not an appropriate mechanism by which to remedy such an error, which did not fall within the category of obvious mistakes. However, there was no evidence that the content of the decision was affected by the incorrect choice of legal basis.


Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL (AG Mengozzi for the CJ (First Chamber); C-488/10; 08.11.11) (Decision not yet in English)

AG Mengozzi gave his opinion on two questions referred to the CJ by the Spanish Juzgado de lo Mercantil. The Spanish Court asked, in summary, whether use of a subsequent registered Community design is a defence to infringement of an earlier Registered Community Design under Article 19(1), with the effect that successful invalidity proceedings would have to be brought against the subsequent Registered Community Design before a claim for infringement of the earlier Registered Community Design could succeed. The Court further asked whether this question was connected with the intention or conduct of the alleged infringer, in particular where that person applied for and registered the later Community design after receiving a demand from the proprietor of the earlier Community design to cease marketing the product on the ground that it infringed rights deriving from that earlier design.

In relation to the first question, AG Mengozzi considered that such a defence should not be available in respect of Community Registered Designs. In particular, the ease of registration of Community Registered Designs would open the system to abuse; subsequent defensive registrations could be used as a delaying tactic for the purpose of avoiding infringement proceedings, and this would weaken the de facto protection offered by a Registered Community Design. The AG also noted that no express provision for such a defence is provided in the Community Design Regulation.

In relation to the second question, the AG considered that the issue should not be connected with the intention or conduct of the alleged infringer. In the opinion of AG Mengozzi this would introduce significant complexity into the Registered Community Designs system, which had been expressly developed as a simple and efficient system.



High Court awards summary judgment for breach of confidence, trade mark infringement and infringement of database rights

British Sky Broadcasting Group plc (“BSkyB”) & Ots v Digital Satellite Warranty Cover Ltd (In Liquidation) (“DSWCL”) & Ots* (Arnold J; [2011] EWHC 2662 (Ch); 27.10.11)

Arnold J granted summary judgment in favour of BSkyB in respect of the alleged acts of DSWCL and the second defendant company, Nationwide (collectively referred to as the “Corporate Defendants”) for breach of confidence, infringement of BSkyB’s database rights, trade mark infringement and passing off but declined to grant summary judgment against Mr Freeman, Mr Sullivan and Mr Harrow (collectively referred to as “Personal Defendants”) for joint liability in respect of those acts. 

BSkyB was the well-known pay television satellite broadcaster and communications service provider. Satellite television equipment provided by BSkyB came with a standard 12 month warranty and its authorised provider marketed “extended warranty” service plans to cover BSkyB equipment once the standard warranty expired. The Corporate Defendants traded in the provision of service plans for BSkyB satellite television equipment in competition with the authorised provider. In November 2010 the Corporate Defendants were placed in provisional liquidation and proceedings stayed.

BSkyB claimed that the Corporate Defendants together with Satellite Services, a business trading partnership of Mr Freeman and Mr Sullivan (collectively referred to as the “Businesses”) had unlawfully obtained and used substantial quantities of customer data from BSkyB’s customer databases and in doing so had acted in breach of confidence and infringed BSkyB’s database rights. BSkyB also claimed that, in the course of marketing their service plans, the Corporate Defendants had infringed BSkyB’s registered trade marks and passed themselves off as connected with, or authorised by, BSkyB.

Breach of confidence

In light of the overwhelming weight of the evidence, the Personal Defendants conceded that the Businesses were liable for breach of confidence as large quantities of confidential customer data used by the Businesses emanated from BSkyB’s customer databases. 

Infringement of database rights

The Judge rejected the Personal Defendants’ request for Summary Judgment of the database infringement claims on the basis that BSkyB’s investment in the development of its databases and in obtaining and verifying the data was the wrong sort of investment. The ‘wrong’ sort of investment as found in British Horseracing Board (Case c-203/02) and Football Data Co Ltd ([2010 EWCH 841 (ch)) was the investment in creating new information, namely the lists of horses in races and the lists of football fixtures, that did not count for the purposes of subsistence or infringement of database rights. By contrast, BSkyB’s database, which held all current BSkyB’s subscribers’ account details, including details of their BSkyB equipment and installation date, did not for the most part create new information, they simply recorded pre-existing information in a new way. To suggest such investment was of the ‘wrong sort’ would substantially deprive the contents of many databases of protection, contrary to the whole purpose of the Database Directive.

Trade mark infringement and passing off

BSkyB owned a UK Trade Mark for SKY registered in respect of various goods and services, including “the provision of warranties, extended warranties and assistance in relation to broadcast reception apparatus and instruments and parts and fittings therefore including cable, satellite, and digital reception” in class 36. 

The Businesses had sent BSkyB customers various items of misleading marketing literature which were calculated to lead the average consumer to believe that the letter either emanated from BSkyB or from an organisation authorised by BSkyB. The Businesses had also made oral use of the sign SKY in the course of telephone marking, making misleading statements calculated to convey the impression that the caller was either from BSkyB or an organisation authorised by BSkyB. On that basis Arnold J held that a likelihood of confusion was inescapable and there was no prospect that a trial would lead to any different conclusion. It was common ground that BSkyB’s claims for passing off stood or fell with its claims for trade mark infringement therefore, its passing off claim also succeeded. 

Liability of the Personal Defendants

Arnold J refused to grant summary judgment on the issue of whether the Personal Defendants were jointly liable for the wrongful acts of the Corporate Defendants. It could not be proved at this stage whether any of the Personal Defendants had personally carried out any particular wrongful acts, and it was possible that the three individuals stood in different positions. The personal defendants were entitled to have BSkyB’s claims that they had procured or participated in a common design to commit the wrongful acts tested through the normal procedure of a trial.


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Abby Minns, Amy Williams, Devika Khopkar, Erika Coccia, Holly Greenhow, Nick Aries, Mark Livsey, Nick Boydell, Tasmina Goraya, Tom Darvill, Will Warne and Zoe Fuller.

The reported cases marked * can be found at and the CJ’s decision can be found at