QMJIP

Queen Mary Journal of Intellectual Property

Month: April, 2017

Right (not) to be forgotten in the companies register – an update from the CJEU

by Alina Trapova

Although strictly speaking not an IP matter, the right to be forgotten has entertained IP “cousin” blogs, journals and academics. Hence, a little update from the data protection sector would not harm.

Mr Salvatore Manni (IT) was the sole director of the company Italiana Costruzioni Srl, responsible for the construction of a tourist complex in Italy. He brought an action against the Lecce Chamber of Commerce since the companies register revealed that he had been the administrator of another company (Immobiliare e Finanziaria Salentina Srl) which went bankrupt back in 1992. Mr Manni believed that this publicly available information was the reason why properties in the newly built tourist complex were not selling. Therefore, it should be deleted, anonymised or blocked from the register.

Basis for his claim was the so-called Google Spain case [1], which in essence says that individuals have the right under certain conditions to request search engines to remove links with personal information about them. For the right to be forgotten to kick in, that information should be inaccurate, inadequate, irrelevant or excessive, which was the case of Mr González where press articles discussed debt recovery proceedings in which he had been involved 16 years ago. Nevertheless, the right to be forgotten is far from absolute – it must be appropriately balanced with other fundamental interests such as freedom of speech. Inevitably, each case is assessed on its own merits.

Mr Manni was successful before the Court of Lecce (Tribunale di Lecce), which ordered the said information to be anonymised and compensation for the damage to be paid. The Lecce Chamber of Commerce was however unhappy with this outcome and appealed the case before the Court of Cassation (Corte suprema di cassazione), which in turn referred several questions to the CJEU. In essence it asked whether the Directive on protection of personal data [2] and the Directive on disclosure of company documents [3] preclude the public from accessing, without any time limit, data relating to natural persons set out in the companies register.

In a judgment of 9 March 2017 (C-987/15) the CJEU was less sympathetic to Mr Manni than the Tribunale di Lecce. It outlined the important role of the public companies register, i.e. safeguarding interests of third parties in relation to joint stock companies and limited liability companies. The Court also emphasised that it was not possible to specify the period after which the retention of this personal information would no longer be necessary.

It acknowledged that such retention of personal information long after the dissolution of a company interferes with fundamental rights, i.e. the respect for private life and the right to protection of personal data, both enshrined in the Charter of Fundamental Rights of the European Union. Yet such interference is not disproportionate as only limited data is entered on the company register and is nevertheless justified since natural persons who choose to set up joint stock company or limited liability company are to disclose data relating to their identity and functions within that entity.

However, there is a caveat – in specific situations after a sufficiently long period following the dissolution of the company in question there might be overriding and legitimate reasons justifying the limitation of access to that personal data (of course, relating to the specific case at hand). As usual, this limitation is applied on a case-by-case approach and it is up to each Member State to decide whether to adopt it.

In the present case, the legitimate interest of third parties in having access to the information in the companies register was vital and the mere fact that properties of a tourist complex do not sell as potential purchasers have access to Mr Manni’s data in the companies register was insufficient to outweigh it.

 Comment

Italy is a beautiful country (proof here, here, here, etc.), so the blame-shifting attempt about not selling the properties did not play to Mr Manni’s benefit on this occasion. Every time expressions such as “balancing against other fundamental rights”, “a case-by-case assessment” and “specific situations” crop up, one has the feeling that legal certainty quietly leaves the room. Well, it is safe to say that in the 65 paragraphs of this CJEU preliminary ruling no such ambiguity was left. After all, the companies register is not equivalent to Google Search.

Full judgment can be found here.

Alina Trapova LL.M. (QMUL)

[1] Google Spain SL, Google Inc. v Agencia Española de Protección de Datos, Mario Costeja González, Case C-131/12.

[2] Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995, L 281, p.31).

[3] First Council Directive 68/151/EEC of 9 March 1968 (OJ 1968, L 65, p.8), as amended by Directive 2003/58/EC of the European Parliament and the Council of 15 July 2003 (OJ 2003, L 221, p. 13).

An apple a day…keeps competitors away

by Alina Trapova

Pear Technologies Limited applied to register  Pear Technologies as an EUTM for computers, software, maintenance of computer software, etc. in Classes 9, 35 and 42. Apple Inc. opposed the application based on, inter alia, EUTM No. 9 784 299 Apple , registered for the unsurprisingly long list of goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45. Importantly, reputation was claimed for, among others, goods/services in the here contested Classes 9, 35 and 42. The grounds of opposition were those laid down in Articles 8(1)(b), 8(4) and 8(5) EUTMR, whereby Article 8(5) was the focal point of analysis for both EUIPO instances.

EUIPO’s Opposition Division upheld the opposition based on Article 8(5) EUTMR. Apple’s reputation, the identity/similarity of the goods and services and the potential harm in the form of unfair advantage were far from problematic to prove here. What is more intriguing is the signs’ comparison analysis.

comparison of signs

One must be recalled that for an Article 8(5) reputation-based opposition the threshold for signs’ similarity is lower than the one required for confusing similarity oppositions under Article 8(1)(b). In the present case, similarity leading to association is sufficient. In those lines, according to the Opposition Division, the signs were similar for the purpose of Article 8(5) as “the figurative element of the pear in the contested sign has graphical features which are similar to those of the earlier mark, and it will be associated with the concept of a pear, which is related to the concept of an apple.”

The 5th Board of Appeal in a decision of 18 January 2017 (R 860/2016-5) was not sympathetic to Pear Technology Limited and dismissed its appeal action. Apple’s overwhelming reputation is indisputable, so the numerous exhibits substantiating its strong market position are rather uninteresting from a trade mark perspective. The same goes for the comparison of the goods and services as it was rather straightforward for the Board to establish identity/similarity.

It was the comparison of signs which was rather more noteworthy.

Having reinstated the principles related to Article 8(5) the Board emphasised once more that “where there is no similarity between the marks at issue, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient grounds for finding that there is a likelihood of confusion between the marks at issue or that the relevant public will make a link between them”. So, key here was to determine whether some similarity existed between the two signs.

In the Board’s view, visually the two signs depict a piece of fruit including a stalk/leaf. The differences are acknowledged, namely the word ‘PEAR’, the missing ‘bite’ taken out of the contested sign and the various black rectangular shapes within the contested sign. However, the following similarities hinted to the outcome the Board was headed for:

  • A leaf, even though different in shape, is placed in a similar position on both signs and is in fact in both signs oriented right at 45% and clearly detached from the fruit.
  • The figurative elements in the contested sign, positioned centrally, are dominant as the word “PEAR” is smaller, in a faded font and therefore considered secondary. Besides, it reinforces the figurative elements and creates a semantic unit.
  • Both signs depict sleek rounded silhouettes of a fruit, whereby “the abstract stylisations of the silhouettes are similar.”

Conceptually, a pear and an apple even though two distinguishable fruits, will be associated to one another.

Eventually, the Board acknowledged that the marks are only slightly similar and that “admittedly, there are some mental steps involved in the perception of the consumer”, but “because of the uniqueness and high reputation of the earlier mark the contested sign’s allusive, somewhat mocking image of the ‘pear’ will trigger and establish a mental ‘link’ with the earlier ‘Apple’ logo”

As a result, the contested sign can be associated with the earlier mark and in view of the identity of the goods and services it is capable of taking unfair advantage of Apple’s well-established reputation and the considerable investment undertaken by Apple to achieve that reputation.

Comment

Reputation, reputation, reputation. These are the words that echo even when one reads parts of the decision on entirely different norms, such as the comparison of signs. The decision should be approached with caution and in that sense looked at with the following peculiarity in mind – the opponent was not just anyone, but Apple Inc. and that should not be taken lightly by competitors.

Alina Trapova LL.M. (QMUL)

QMJIP – Volume 7 – Issue 1 (April 2017)

by Giancarlo Moretti

The last issue of QMJIP has been released (Volume 7 – Issue 1). The table of content reads as follows:

  • Editorial – J Gibson
  • Making patents work: of IP duties and deficient disclosures – S Basheer
  • Whither China’s protection of geographical indications? A case study of Qinzhouhuang Millet – Z Xiaoping
  • Protection of ‘handicraft’ as geographical indications under municipal law, TRIPS and BTAs vis-à-vis CETA: ‘Bangladeshi Jamdani’ as case study – M A Karim & M E Karim
  • Control or promote? China’s cultural censorship system and its influence on copyright protection – T He
  • Minutes of Evidence of the Select Committee on the Letters Patent for Invention Act 1835 – P Johnson
  • Metall auf Metall’ – the German Federal Constitutional Court discusses the permissibility of sampling music tracks Bunderverfassungsgericht BVerfG 1 BvR 1585/13 – ‘Metall auf Metall’ – M D Mimler
  • Book Review – M Iljadica
  • Book Review – R Sciaudone

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

April 2017 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in April 2017. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

UNITED KINGDOM & IRELAND

  • 6-7 April – London – QMUL – CCLS – More than just a Game – Link.
  • 3-7 April – London – UCL IBIL – IP Transactions – Link.
  • 5 April – London – Osborne Clarke – Digital disruptors: the latest developments in digital media – Link.
  • 6 April – Bournemouth – CIPPM – Carlos Correa: The TRIPS Agreement: what impact after 20 years of adoption? Link.
  • 6 April – London – Competition Law Association – How should “geo-blocking” practices be assessed from a Competition law and IP perspective in light of the European Commission’s e-commerce sector inquiry and Paramount Studios commitments decision, and what are the proposals for reform? Link.
  • 6 April – York – CIPA – York Meeting Link.
  • 6 April – London – LES Britain & Ireland – IP Strategy & Management in Healthcare – Link.
  • 6 April – Birningham – CITMA – Recent developments in design law and the impact Brexit may have on design protection and enforcement Link.
  • 7 April – London – CILIP – CILIP Copyright Conference – Link.
  • 11 April – London – MBL – Intellectual Property Rights in Software – Link.
  • 12 April – London – QMUL CCLS – UPC Event Link.
  • 20 April – London – MBL – A to Z of Intellectual Property Rights – Link.
  • 21 April – London – MBL – Taking Security over Intellectual Property – Link.
  • 24 April – Southampton – iCLIC – Copyright, linking and the CJEU decision in GS Media, C-160/15 Link.
  • 24 April – London – SCL – Software Patent Disputes: what can be protected and what are the challenges in enforcement Link.
  • 25 April – London – Bird&Bird – The Unified Patent Court Breakfast Seminar Series – Link.
  • 25 April – London – Competition Law Association – Trade marks and Designs – where next when the UK leaves the EU Link.
  • 25 April – Rotherham – IPO – Everyone Owns IP….What do you own? Link.
  • 25 April – London – CITMA –Parallel Imports – now and in a Post Brexit World – Link.
  • 25 April – London – KCL – Art and Law Seminar with David Tovey – Link.
  • 25-27 April – London – IPO – IP Masterclass – Link.
  • 26 April – London – MIP – MIP IP Strategy Forum 2017 Link.
  • 26-27 April – Manchester – MBL – A to Z of Negotiating & Drafting IT ContractsLink.
  • 27 April – London – MBL – IP Licensing & Competition Law – A Workshop – Link.
  • 27 April – London – Osborne Clarke – IP key issues and practical tips for protection and exploitation – Link.
  • 27 April – London – SCL – Big Data and IoT Link.
  • 27 April – Manchester – MBL – Intellectual Property Law Update – Link.
  • 27 April – Oxford – University of Oxford – The Judicial Expansion of Trade Mark Tarnishment in IndiaLink.
  • 28 April – London – Fashion Law & Business – Fashion Law Masterclass – Link.

 

CONTINENTAL EUROPE

  • 4-5 April – Budapest, Hungary – WIPO – Subregional on Copyright in the Digital Age Link.
  • 4-5 April – Amsterdam, the Netherlands – FORUM – IP Agreements – Link.
  • 5 April – Alicante, Spain – ICALI – Aspectos Prácticos de la entrada en vigor de la nueva Ley de Patentes Link.
  • 5 April – Alicante, Spain – EUIPO – IP in eduction – Link.
  • 5 April – Madrid – LES Espana & Portugal – Preparación de un litigio por infracción de patente: las diligencias de comprobación de hechos Link.
  • 6 April – Paris, France – QMUL – CCLS – Brexit and the UPC – Link.
  • 6 April – Alicante, Spain – Magister Lucentinus- Alicante – New Patent Law 24/2015 Seminar – Link.
  • 6-7 April – Vienna, Austria – EPO – East meets West 2017 Link.
  • 7 April – Eindhoven, the Netherlands – The Netherlands Institute of Patent Attorneys – The Netherlands Institute of Patent Attorneys Annual Conference – Link.
  • 7 April – Milano, Italy – Ordine Consulenti Proprietá Industriale – Domini: Diritto e pratica – Link.
  • 11-12 April – Copenaghen, Denmark – IQTC – Nordic IPR Conference Link.
  • 11-13 April – Jurmala, Latvia – AIPPI – 12th AIPPI Baltic Conference – Link.
  • 18 April – Milan, Italy – INTA – Five Years of Opposition Proceedings in Italy: Developments, Differences, and Alignment to EU Practice and Case Law Link.
  • 20 April – Madrid, Spain – FIDE – La objetividad y veracidad de la publicidad comparativa Link.
  • 20 April – Helsinki, Finland – IPR University Centre – Exclusive rights and liability of internet platforms. Dead end or key to a fair balance? – Link.
  • 23-25 April – Paris, France – LES International – LESI International Annual Conference 2017 Link.
  • 25 April – Munich, Germany – MARQUES – Mastering the Hague Agreement: From Asia to the USA, through the EU Link.
  • 24-26 April – Alicante, Spain – EUIPO – IP Course for Paralegal – Link.
  • 25-26 April – Alicante, Spain – EUIPO – 17 LM Trade Marks – Link.
  • 26-28 April – Nice, France – Management Forum – Biotechnology for the Non-BiotechnologistLink.
  • 27 – 28 April – Prague, Czech Republic – NCP – NCP Academy Training on Intellectual Property Rights Academy – Link.
  • 28-29 April – Firenze, Italy – European University Institute – European Copyright – Quo Vadis Link.
  • 28 April – Geneva, Switzerland – WIPO – International Conference on Artist’s Resale Right Link.

 

USA & CANADA

  • 3 April – New York, NY, USA – Columbia Law School – Toward a Global Copyright Law? Link.
  • 4-6 April – Arlington, VA, USA – ABA – 32nd Annual Intellectual Property Law Conference Link.
  • 5 April – Chicago, IL, USA – DePaul University – 2017 Edward D. Manzo Scholars in Patent Law Series IV: Erik Hovenkamp – Link.
  • 6 April – Chicago, IL, USA – DePaul University – IP Theory and Practice – Session 6 Patent II Link.
  • 6 April – Berkeley, CA, USA – CLA – Legal Issues for the Sale and Use of Photography Link.
  • 6 April – New York, NY, USA – MIP – MIP Luxury Brand and Retail Forum 2017 Link.
  • 6 April – Seattle, WA, USA – Copyright Society USA – The Entrenched Irrationality of Statutory Damages in Copyright Law – Link.
  • 7 April – Toronto, ON, Canada – LES USA & Canada – IP & Licensing Basics – Link.
  • 7 April – San Jose, CA, USA – USPTO – Trademark Basics: What Every Small Business Should Know Now, Not Later – Link.
  • 8-9 April – Boston, MA, USA – Boston College Law School – PATCON Link.
  • 10-12 April – St Louis, MO, USA – NTCA – IP Vision – Link.
  • 12 April – Dallas, TX, USA – Dentons – Best Practices in Battling the New IPR Trolls Link.
  • 13 April – Boston, MA, USA – Copyright Society USA – Mind The Gap: IP Protection for Software After Alice Corp. v. CLS Bank InternationalLink.
  • 13 April – Washington DC, USA – George Washington University School of Law – IP Speaker series: Patent Clutter Link.
  • 18 April – Alexandria, VA, USA – USPTO – Consumer Messaging in Connection with Online Transactions Involving Copyrighted Works Link.
  • 18 April – Los Angeles, CA, USA – LAIPLA – LAIPLA Annual Meeting and Patent Litigation Dinner & Young Lawyers Event – Link.
  • 19 April – Sacramento, CA, USA – CLA – Getting Out There: Promote, develop, and market your art and your brand Link.
  • 19 April – Toronto, ON, Canada – LES USA & Canada – Navigating your IP in the United StatesLink.
  • 20 April – Alexandra, VA, USA – AIPLA – AIPLA Law Students Committee Program – Link.
  • 20-21 April – New York, NY, USA – Fordham University – 25th Annual Fordham IP Conference Link.
  • 20-21 April – Berkeley, CA, USA – University of Berkeley – The 21st Annual BCLT/BTLJ Symposium – Link.
  • 20-21 April – St Paul, MN, USA – Mitchell Hamline School of Law – The New Era of Trade Secret Law: The DTSA and other Developments Link.
  • 21 April – Los Angeles, CA, USA – LAIPLA – LAIPLA Digital Piracy LuncheonLink.
  • 24 April – New York, NY, USA – Copyright Society USA – Copyright, Dance & Choreography – Link.
  • 25 April – Palo Alto, CA, USA – MIP – MIP Global Patent Roadshow 2017 – Link.
  • 26 April – Palo Alto, CA, USA – LES USA & Canada – Do Patents still matter? Link.
  • 27 April – New York, NY, USA – Centerforce – IP Defence Summit – Link.
  • 27 April – Chicago, IL, USA – MIP – MIP Global Patent Roadshow 2017 – Link.
  • 27 April – San Jose, CA, USA – USPTO – Hands-of Patent Search Workshop – Link.
  • 29 April – Venice, CA, USA – CLA – Entertainment & The Law: The Stairway Into a Blurry 2017Link.

 

AFRICA, ASIA & OCEANIA

  • 4 April – Melbourne, VIC, Australia – IP Australia – Trade marks 101 for start-ups – Melbourne CBD – Link.
  • 6 April – Sydney, NSW, Australia – IP Australia – Trade marks 101 for start-ups – Melbourne CBD – Link.
  • 12 April – Melbourne, VIC, Australia – University of Melbourne – Website blocking injunctions: lessons from the UK and EU – Link.
  • 12-20 April – Tokyo, Japan – WIPO – Training Course on the Enforcement of Intellectual Property RightsLink
  • 21-23 April – Manila, Philippine – Asean IP Association – 21st ASEAN Intellectual Property Association Annual Meeting & ConferenceLink.
  • 24-25 April –Manila, Philippine – WIPO – Workshop on Collective Management of Related RightsLink.
  • 24-26 April – Matsapha, Swaziland – SATA – Annual Conference Link.
  • 25 April – Beijing, China – IAM – IPBC – Maximising IP Value in China – Link.
  • 25 April – Brisbane, QLD, Australia – IP Australia – Patents 101 for start-ups – Melbourne CBD – Link.
  • 25-28 April – Jakarta, Indonesia – WIPO – Workshop on Access to Technology for Innovation and Establishing a Technology and Innovation Support Center (TISC)Link.
  • 26-28 April – Bengaluru, India – World Intellectual Property Forum – World Intellectual Property Forum 2017 Link.
  • 27 April – Melbourne, VIC, Australia – ACC Australia – IT contracting trends and challenges in the age of disruption – Link.
  • 27 April – Kuala Lumpur, Malaysia – INTA – Trademark Administrators Mini-Seminar in Malaysia Link.
  • 28 April – Seoul, South Korea – IPBC Korea – Corporate IP Best Practice – Link.
  • 29 April – Perth, WA, Australia – IPTA – IPTA 2017 Annual conference – Link.
  • 29 April – 1 May – Tel Aviv, Israel – AIPPI – 3rd International Convention on the Economy of Innovation – Link.

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti