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IP cases to look out for in Europe in 2018



James Nurton, London


Hip hop music, the Louboutin red sole shoes and copyright protection for food are among the subjects of disputes pending before the European courts. Managing IP provides a guide to some of the more significant cases coming up this year

The New Year at the Court of Justice of the EU (CJEU) starts properly on January 11, with the hearing in the Synthon case (C-694/16), referred from the Netherlands. This concerns an important practical question about whether claimants in IP cases can seek exhibits from third parties as well as alleged infringers under Article 6 of the EU Enforcement Directive, and what criteria should apply to third parties. A judgment in the case can be expected later in 2018 or early in 2019.

Also on January 11 is the Advocate General’s Opinion in Bundesverband Souvenir v EUIPO (C-488/16), concerning whether or not “Neuschwanstein” is an indication of geographical origin. (In the decision being appealed, the General Court found that it was not.) The hearing in the case was in November last year.

There are a number of judgments due in appeals from EUIPO before the General Court during January, including the Sun Media case on the METABOX trade mark, the Starbucks case concerning an application to register a figurative mark including the words “COFFEE ROCKS” and LG Electronics’ application for the word mark Dual Edge.

Copyright conundrums

Looking ahead, many of the most interesting IP cases pending at the CJEU involve copyright and in particular issues raised by digital technology.

Trans-Europe Express KraftwerkOne that is certain to attract attention is C-476/16 Pelham GmbH, Moses Pelham, Martin Haas v Ralf Hütter, Florian Schneider-Esleben, which concerns hip hop samples of the Kraftwerk track “Metal auf metal”. The Bundesgerichtshof has referred several questions asking essentially if a phonogram producer’s right is infringed “if very short audio snatches are taken from its phonogram and transferred to another phonogram”.

The questions also cover the meaning of the quotation exception in the Copyright Directive, and the scope of the EU Charter of Fundamental Rights. The sample, which lasts about two seconds, has generated some two decades of litigation so far.

The German courts have referred questions in several other copyright cases which are pending before the Court. These include Bastei Lübbe GmbH & Co KG v Michael Strotzer (C-149/17) on the liability of internet users in file-sharing cases, Land Nordrhein-Westfalen v Dirk Renckhoff (C-161/17) on whether copying a work on to a server and then uploading it constitutes “making available” and Spiegel Online GmbH v Volker Beck (C-516/17) on the scope of the exceptions and limitations in the Copyright Directive.

SEE ALSO: FURTHER DEBATE ‘LIKELY’ AFTER HAT-TRICK OF CJEU JUDGMENTS

A long-standing Dutch tradition of testing the boundaries of IP protection is continued in case C-310/17, which asks whether the taste of a food product can be granted copyright protection. Incidentally, the Dutch courts have previously (in a case involving Lancôme) held that perfume smells can be protected by copyright.

Riksåklagaren v Imran Syed (C-572/17), referred from Sweden, concerns whether goods held in storage infringe the right of distribution in the Copyright Directive, and if so whether it matters where the goods are held.

Trade mark troubles

There are about 40 trade mark cases pending at the CJEU, and the registration of colours and shapes as trade marks is again set to vex the judges in Luxembourg. A judgment in the Louboutin red sole case (C-163/16) can be expected before the end of this year, as the CJEU Grand Chamber re-heard the case in November 2017, six months after the Advocate General’s Opinion was published. One of the questions they need to decide is whether the famous red sole shoe trade mark is a shape, colour or position mark.

Red Bull contested markMeanwhile, Red Bull is expected to appeal its case over an application to register the blue/silver colour combination as a trade mark. The General Court decided against the drinks maker in a judgment last year, which many observers saw as unduly restrictive for trade mark applicants. However, the Court of Justice has not yet listed the appeal.

SEE ALSO: PRECISION NEEDED FOR COLOUR TMS FOLLOWING RED BULL RULING: LAWYERS

No roundup would be complete without a mention of chocolate bars, and both Nestlé and Mondelez have cases pending at the CJEU. Case C-84/17 is Nestlé’s appeal against the General Court finding that it had to show acquired distinctiveness in all the relevant EU member states for its application for the shape of a four-finger chocolate bar.

The most eagerly awaited designs judgment is probably DOCERAM v CeramTec (C-395/16), a referral from Germany concerning the definition of “technical function”. The Advocate General’s Opinion, published in October last year, rejected the so-called “multiplicity of forms” theory, and said that in assessing technical functionality courts should consider all the relevant circumstances, rather than taking the viewpoint of a hypothetical observer.

National cases

In the UK, there will be much interest in how the Supreme Court approaches IP cases following the retirement of Lord Neuberger last year. We will get our first insight later this month, when the Court hears the Cartier v BT case on internet blocking orders.

The question before the Court in that case is whether internet service providers (ISPs) should be required to bear the costs of orders requiring them to block access to websites selling counterfeit goods. The ISPs had lost this argument before the lower courts.

There is a one-day hearing on January 30 and the panel comprises Lords Mance, Kerr, Sumption, Reed and Hodge.

Soon after, during the week of February 12, the Court will hear a patent case Warner Lambert v Generics, which concerns the drug pregabalin and the question of plausibility. This is an issue that has generated lots of discussion, and the Supreme Court should definitively provide an answer as to whether plausibility can be a reason to hold a patent insufficient. It may also shed light on issues relating to evidence and abuse of process.

This high-profile case is scheduled for a three-day hearing before Lords Mance, Sumption, Reed, Hodge and Briggs.

The Court of Appeal will also be busy, with a week-long hearing in May in the Unwired Planet v Huawei litigation. This is an appeal from the ruling of Mr Justice Birss setting out FRAND terms and rates for SEP licensing. The full High Court judgment in the case remains confidential due to commercial sensitivity, but a redacted version has been published.

Also at the Court of Appeal, in March, is the Samsung Bioepsis v Abbvie case on so-called Fujifilm declarations, one of several cases involving biosimilars that are winding their way through the courts. In the first instance decision, Mr Justice Carr criticised the conduct of Abbvie and granted the declarations sought by the other parties.

In the Patents Court, trials are scheduled in the Apple v Nokia and Philips v HTC cases, as well as several life sciences disputes, including Generics v Yeda in April, the fourth battle in the war over glatiramer acetate patents.


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