Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Stefania Baldazzi and Annalaura Avanzi  (Milan)

In 1967, the well-known Italian fashion designer Elio Fiorucci founded the fashion brand Fiorucci S.p.A.  After more than two decades of success in Italy and around the world, Mr. Fiorucci sold the company and all of its creative assets to the Tokyo Company Edwin Co. Ltd in 1990.  The sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”

In 1999, Edwin Co. registered the mark “ELIO FIORUCCI,” by filing an application with the Office for Harmonization for the Internal Market (OHIM), which is a body of the European Commission, for a broad category of goods, including cosmetics, apparel, footwear and leather products. 


Continue Reading Edwin Co. v. Elio Fiorucci: Designer and Company Share a Name?

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)

“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 

In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  


Continue Reading The Debate for AdWords Ownership in Cyberspace Continues

By Siân Croxon, Partner, DLA Piper UK

The CJEU has provided some clarification of the law on when EU customs officials can seize counterfeit goods that are merely in transit through the EU. 

The story began in 2008 when a consignment of Nokia branded mobile phones arrived in Heathrow in transit from China to Colombia.  The customs officer was suspicious and sent a sample to Nokia for inspection which duly revealed that the phones were indeed counterfeit.


Continue Reading “Just passing through sir or really stopping off?” – the CJEU rules on counterfeit goods in transit

Reprinted from La A La Mode, DLA Piper’s Fashion, Retail and Design E-zine

by Louis Puts (Brussels)

Online marketplaces such as auction sites are often used as platforms for selling unlawful fashion products. On 12 July, 2011, the CJEU rendered an important decision concerning the unlawful offers of cosmetic products with L’Oréal’s trademarks on eBay. For the first time, the decision has clarified the circumstances under which online marketplace operators may be held responsible for unlawful trade-marked products offered for sale on their platform site, under trade-mark law, the E-Commerce and the IP Enforcement Directives.


Continue Reading ONLINE MARKET PLACES RESPONSIBLE FOR TRADEMARK INFRINGEMENTS

DLA PIPER IPT ALERT

By Ruth Hoy and Claire Bennett

Advocate General Bot delivered his Opinion in SAS Institute Inc. -v- World Programming Ltd on 29 November 2011.  The judgment of the full Chamber of the CJEU is not expected until sometime in 2012, and it is not yet known whether the Court will follow his Opinion.  In the meantime, the Opinion gives some useful insight for programmers who are trying to create computer programs that are interoperable with programs of others and studying and testing the functionality of programs.

Advocate General Bot delivered his Opinion in SAS Institute Inc. -v- World Programming Ltd on 29 November 2011.  The judgment of the full Chamber of the CJEU is not expected until sometime in 2012, and it is not yet known whether the Court will follow his Opinion.  In the meantime, the Opinion gives some useful insight for programmers who are trying to create computer programs that are interoperable with programs of others and studying and testing the functionality of programs.


Continue Reading SAS Institute Inc. -v- World Programming Ltd

DLA PIPER IPT ALERT

By Ruth Hoy and Patrick Van Eecke

As was the case in Newzbin 2, a national court, in deciding whether to order an ISP to implement technical measures to deal with copyright infringement on the part of the ISP’s customers, will need to consider whether the proposed measures are proportionate.  In doing so, it will need to strike a fair balance between the protection of intellectual property and that of a freedom to conduct a business enjoyed by ISPs.
On 24 November 2011, the CJEU gave its judgment in a case brought by SABAM, a Belgian collecting society, against Scarlet Extended SA (formerly Tiscali SA).  
In the national court proceedings, SABAM, which represents the interests of copyright owners in musical compositions had brought action to address the problem of P2P file sharing of digital musical files by Scarlet’s customers.  The Court of First Instance in Brussels accepted that the activities on Scarlet’s customers inevitably involved copyright infringement of  works within SABAM’s repertoire, and that it had jurisdiction to order the prevention of such activities.  It appointed an expert to look into the feasibility of certain technical measures which could be implemented by Scarlet.
Following the report of the Court appointed expert, and in accordance with its powers under Article 87(1) of the Belgian Law of 30th June 1994 on Copyright and Rights, as amended by the Law of 10 May 2007, the Belgian court ordered that Scarlet should bring an end to the infringements by making it impossible for its customers to send or receive files containing a musical work in SABAM’s repertoire by means of P2P software, in particular by using Copysense by Audible Magic.
The decision was appealed by Scarlet, who argued that: 
The decision was contrary to EU laws on privacy and freedom of expression; 
The decision was contrary to Article 12 of the E-Commerce Directive (which provides immunity to service providers who assist transmission within a communications network); and 
The decision was contrary to Article 15 of the E-Commerce Directive (which provides that “Member States shall not impose a general obligation on providers to monitor the information that they transmit or store nor a general obligation actively to seek factors or circumstances indicating legal liability”).
In considering the case, the Brussels Cour d-Appel referred two questions to the CJEU, questioning whether it was contrary to EU law to require an ISP to introduce such a wide-ranging injunction.
In its judgment, the CJEU has confirmed that the injunction in the SABAM case went too far and that it would be contrary to EU law for a national court to order such a wide-ranging injunction which was not limited by (i) time; (ii) cost;  (iii) technical effectiveness of the measure proposed; (iv) type of communication, without distinguishing between lawful and unlawful content.  In particular, the Order must not go so far as to actively require ISPs to monitor the data of each of its customers in order to prevent any future infringement of IP rights. 

As was the case in Newzbin 2, a national court, in deciding whether to order an ISP to implement technical measures to deal with copyright infringement on the part of the ISP’s customers, will need to consider whether the proposed measures are proportionate.  In doing so, it will need to strike a fair balance between the protection of intellectual property and that of a freedom to conduct a business enjoyed by ISPs.

On 24 November 2011, the CJEU gave its judgment in a case brought by SABAM, a Belgian collecting society, against Scarlet Extended SA (formerly Tiscali SA).


Continue Reading CJEU decision in SABAM -v- Scarlet

Date:               Thursday 14 July 2011

Time:              14:00-16:15

Location:        Vrije Universiteit Amsterdam, Gebouw Initium, De Boelelaan 1077.

Language:      English

Admission:      Free

Information

On 14 July 2011 the Trademark Law Institute organizes a seminar on the ruling L’Oreal v. eBay (case C-324/09). This ruling of the European Court of Justice is expected on 12 July 2011. This seminar will discuss the liability of operators of electronic marketplaces, such as eBay, etc. Apart from this recent ruling of the European Court of Justice, the seminar will also touch upon the legal landscape in the US and elsewhere in Europe.

The seminar is organised by the Trademark Law Institute (TLI), a cooperation of the universities of Groningen, Leiden and the Radboud Universiteit Nijmegen.

The seminar is open to the public and intended for lawyers, company lawyers, trade mark attorneys, students, lecturers and others who are interested in the legal aspects surrounding trade mark law and the internet.


Continue Reading EVENT in Amsterdam: Trademark use in the online market place: L’Oreal v. eBay