TRADEMARK – INFRINGEMENT AND DEFENCES

Intellectual Property 5th Edition by Cornish & Llewelyn

in particular: pages: 10 to 25, 43 to 52, 279 to 282, 297 to 304, 327-8,555 to 566, 600, 611, 693 to 706, 929 to 944

Intellectual Property Law 2nd Edition by Bently and Sherman:

In particular: # 1-01 to 1-58, 6-09 to 6-17, 7-32, 12-14, 12-34, 12-59, 15-01 to 15-18, 18-01 to 18-17

TMA 94 = Trade Marks Act 1994

TM Directive = Trade Mark Directive 89/104

TM Reg = Council Regulation 40/94

CTMR 96 = Community Trade Mark Regulations 1996 (SI 1996/1908)

PART 3

  1. As a generalization, Arts 28 to 30 directed primarily at what Member States do while Arts 81 and 82 directed at what individuals do.
  2. Art 81: 4 requirements; (a) undertakings who have entered into (b) some form of agreement or concerted practice, (c) which may affect trade between Member States and (d) which have the object or effect of restricting competition.

(a)What are undertakings? Hofner &Elser v Macrotran GmbH C-41/90 [1991] ECRI – 1979, Becu c-22/98 [1999] ECRI -5665; Hydrotherm v Andreoli c-170/83, [1984] ECR 299.

(b)What is anagreement or concerted practice?SandozC-228/82 [1984] CMLR 1129, Bayer Case c-2/01, ICI v. Commission – c-48/69 [1972] ECR 619 – “concerted practices” brings within the scope of Art 81- “A form of co-ordination between undertakings which, without having reached the stage where an agreement properly so-called has been concluded, knowingly substitutes practical co-operation between them for the risk of competition”.

(c)May effect trade between Member States: put widely: Etablissements Consten and Grundig-Verkaufs v Commission [1966] ECR

(d)Object or effect – note the “or”.

  1. Art 81(3) lets agreements out of the bag if benefits outstrip disadvantages. Exemption.
  2. Art 82 – Abuse of Dominant Position. What is a dominant position? United Brands – c-27/76 [1978] ECR 207. Geographical spread – must cover a substantial part of the EU: GenoaPort case C-179/90 [1991] ECR .And depends on defining the market: Hilti v Commission C-53/92P [1994] ECRI – 666.
  3. Abuse: Set out in Art 82.

(a)Refusal to supply spares can be offensive : Hugin c-76/78 [1968] 1 CMLR D19

(b)or raw material: Commercial Solvents v Commission C-6/73; United Brands C-27/76 [1978] ECR 207.

(c)Or access to Essential facilities Oscar Bronner v. Mediaprint c-7/97 [1998] ECR-I 7817

  1. In view of existence of Art 295, can Arts 28-30 and Arts 81/82 have any impact on how you exploit IP rights? Yes Consten and Grundig v Commission [1966] ECR 299 (TM – Art 81/2 case), Parke Davis v. Probel [1968] ECR 55 (Pat – Art 81/2 case), Deutsche Grammophon v Metro[1971] ECR 487 (Copyright) – the Existence/exercise dichotomy.
  2. Therefore had to determine what was “specific subject matter” of IP rights – core rights. In all cases, one core right is to be able to put goods on the market for the first time:Eg Case 15/74 Centrafarm v Sterling Drug [1974] ECR 1147 (Patents),Case 16/74 Centrafarm v Winthrop[1974] ECR 1183, Case 3/78 (Trade marks)
  3. But TMs go further:Centrafarm v American Home Products [1978] ECR 1823, Hoffmann-La Roche v Centrafarm Case 102/77 [1978] ECR 1139
  4. Consider first exhaustion of rights: It involves the concept of first placing on the market: Case 78/70 Deutsche Grammophon v Metro [1971] ECR 487
  5. What is placing on the market?:

(a)Case C–16/03 Peak Holding v Axolin-Elinor [2004] ECR I–11313,

(b)Case C–281/05 Montex Holdings v Diesel (9 Nov 2006, not yet reported)

  1. Consent – if none, no question of exhaustion?: EMI Electrola v. Patricia Case 341/87 [1989] ECR 79
  2. What is relevant consent? –

(a)Must be consent to placing actual goods on the market: Sebago v. GB Unic [1999] ECR I–4103

(b)Must be real consent: Case C–9/93 IHT Internationale Heiztechnik v Ideal Standard [1994] ECR I–2789:

(c)What about compulsory licences?:Pharmon v Hoechst Case 19/84 [1985] ECR 2281

(d)Moral compulsion and lack of reward for inventiveness.Merck & Co v Stephar Case 187/80 [1981] ECR 2063: Merck & Co v Primecrown Joined Cases C–267/95 and 268/95 [1996] ECR I–6285.

  1. 2 Questions:(i) Once products are on market with consent – does IP rights owner lose all rights to control subsequent commercial exploitation?(ii) Can he manipulate ownership of IP rights so as to benefit from different national law?
  2. Question (i) – Is placing on market the end of the story? For most IP rights, probably – e.g. can’t complain about resale of patented goods. BUT note the definition of specific subject matter of TMs in Centrafarm v. AHP and in Hoffman La Roche v. Centrafarm (supra). So Trade Marks are different.
  3. Art 30 now added to by Art 7 of TM Directive: Consistent with each other. See:Bristol Myers Squibb v. Paranova c-427/93 [1996] ECRI – 3457
  4. Advertising: In principle, the defendant can advertise parallel imported goods, but must act “fairly” in doing so.Christian Dior v. Evora c-337/95 [1997] ECRI – 6013 BMW v Deenick Case C–63/97 [1999] ECR I–905:
  5. Can defendant go further and do anything which may be said to “alter” the goods or their packaging?See TM Directive Art 7: covers alterations to products – BUT not limited to that. Particularly in pharmaceutical cases:

(a)Hoffman La Roche v. Centrafarm,

(b)Bristol Myers Squibb v Paranova (Supra) – clearly tipped balance in favour of originator pharma companies.

(c)Glaxo Group v Dowelhurst (No 1) Case C–143/00 [2002] ECR I–3759

(d)Glaxo Group v Dowelhurst (No 2) – Opinion of AG Sharpston has been given. Appears that moving backwards.

(e)Loendesloot v Ballantine -349/95 [1997] ECRI – 6227.

  1. Question 2:

(a)What about differences in quality of the goods in different Member States?IHT Internationale Heiztechnik v Ideal Standard Case C–9/93 [1994] ECR I–2789

(b)What about changing mark? (note, this is nothing to do with Art 7 of the TMDirective – only under Arts 28 -30)Pharmacia & Upjohn v Paranova Case C–379/97 [1999] ECR I–6927

  1. The effect of Arts 81 and 82.

(a)Art 81:

  1. Etablissements Consten and Grundig-Verkaufs v Commission Joined Cases 56/64 and 58/64 [1966] ECR 299,
  2. Béguelin Import v GL Import Export Case 22/71 [1971] ECR 949,
  3. Tepea v Commission Case 28/77 [1978] ECR 1391

(b)Art 82:

  1. Volvo v. Veng C-238/87 [1988] ECR 6211;
  2. Magill: Joined Cases C–241/91P and 242/91P Radio Telefis Eireann v Commission [1995] ECR I–743,
  3. Consider also: Microsoft v Commission Case T–201/04 R [2004] ECR II–4463.
  1. International exhaustion: Silhouette International Schmied v Hartlauer Case C–355/96 [1998] ECR I–4799, Zino Davidoff v A&G Imports [2000] Ch 127, Zino Davidoff v A&G Imports Joined Cases C–414/99 to 416/99 [2001] ECR I–8691
  2. But only applies to IP rights which have equivalent To Art 7 of the TMD.

HL

March 2007