The scope of protection of a letter “B” as a mark cannot exclude from registration every other mark which contains that letter

By two twins-decision of 16 December 2014 (full text here) the OHIM Fourth Board of Appeal rejected oppositions against applications for registering two figurative marks consisting in a letter “B” inscribed in the shape of a bottle cap or placed in the centre of a wax seal, both for beers and alcoholic beverages. The grounds for the opposition were those laid down in art. 8(1)(b) CTMR: as the opponent was holder of a community figurative trade mark shaped by a letter “B” in the form of a rhombus, he claimed a likelihood of confusion between the signs. The Board argued that the distinctive character of a single letter on a rather simple geometrical shape is below and not enough to justify a likelihood of confusion. In principle, the public will not associate a single letter with an indication of origin. As a consequence, the scope of protection of a single letter as a mark cannot be such that it excludes from registration every other mark that contains that letter. The Board’s reasoning takes into account, at least implicitly, the public interest in keeping alphabetical letters free from private exclusive appropriation and gives a positive outcome in the direction of a public domain’s recognition and protection against misappropriation in trademark law.

Jacopo Ciani

Fourth Board of Appeal, 16 December 2014, R 1007/2014-4, Dibevit Import S.r.l. v. Berentzen-Gruppe Aktiengesellschaft

The ECJ delimit the scope of the human embryos’ uses unpatentability

Corte-di-Giustizia-Unione-Europea-CGUE-2In International Stem Cell Corp., 18 December 2014, C-364/13 (full text here), the ECJ returns on the meaning of “human embryo” for the purpose of their uses’ unpatentability laid down in art. 6(2)(c) of Dir. 98/44/EC on the legal protection of biotechnological inventions. The Court was asked to clarify the scope of its previous ruling in Brüstle, 18 October 2011, C-34/10, where that concept was interpreted in a wide sense as including not only embryos created by ovum’s fertilization, but also non-fertilized one, if such ova are capable of commencing the process of a human being’s development.

The Court established that it is correct to infer from the absence of such a capacity that human cells generated through parthenogenesis (a form of asexual reproduction in which growth of embryos  occurs without fertilization) do not constitute ‘human embryo’. Organisms which are not capable of developing into a human being can not be considered “human embryos” and therefore are not eligible for patent protection. It is for the referring Court to determine whether or not. The decision apparently centers two objectives: to be coherent with the Directive’s aim to exclude patentability where respect for human dignity could be affected and to delimit this exclusion, allowing the Member States no discretionality.

Jacopo Ciani

ECJ (Grand Chamber), 18 December 2014, C-364/13, International Stem Cell Corporation v. Comptroller General of Patents, Designs and Trade Marks

The Principality of Monaco fails to register its own name as a community trademark

By its judgment of 15 January 2015, T‑197/13 (full text in French here) the General Court of the European Union rejected the opposition against the decision of the OHIM Fourth Board of Appeal of 29 January 2013 (Case R 113/2012 4), refusing the international registration (designating the EC) of the word mark MONACO, for lack of distinctive character. The decision confirms the previous ruling in Windsurfing Chiemsee (C-108/97) and Cloppenburg (T‑379/03): there is a general interest in keeping geographical names free from any exclusive appropriation as trademarks, provided that they have the ability to reveal products or services’ qualities and other characteristics and to influence consumer preferences by associating them with a geographical place which can elicit positive feelings. On this basis, Article 7(1)(b) and (c) Reg. No. 207/2009 on the Community trade mark should preclude the registration of geographical names which designate geographical locations, already famous or known for the category of goods or services in question, and which, therefore, have a meaningful connection with them. In these circumstances, the word ‘Monaco’ was supposed to designate, in the eyes of the public, the geographical origin of the category of services at issue and must remain available to other undertakings’ free and non-exclusive use. Another step forwards the recognition and safeguarding of a public domain’s space in trademark law.

Jacopo Ciani

 General Court (Grand Chamber), 15 January 2015, T‑197/13, Marques de l’État de Monaco (MEM) v. OHIM

ECJ: the Owner of an Online Database not Protected by Copyright or Sui Generis Right May Limit its Use by Contract

On January 15, 2015 the Court of Justice of the European Union (ECJ), in Ryanair Ltd v PR Aviation BV, C-30/14, handed down a decision concerning the interpretation of Directive 96/9/EC on the legal protection of databases (full text here). The case concerned the unauthorized extraction of flight data (so called ‘screen scraping’) from Ryanair’s website by the PR Aviation, which operates a price comparison website where users can also book a flight on payment of commissions. Access to Ryanair’s website requires acceptance of the air company’s T&Cs, by ticking a box, which prohibit unauthorized ‘screen scraping’ practices.

Ryanair brought proceedings against PR Aviation before Dutch courts for infringement of copyright and sui generis right on its database as well as breach of contract. Upon preliminary ruling requested by the Dutch Supreme Court, the ECJ ruled that the Directive 96/9/EC is not applicable to databases which are not protected either by copyright or by the so-called sui generis database right granted to the maker of the database (whether Ryanair’s website may be entitled to such protection shall be determined by the competent national court).

Therefore, according to the ECJ, mandatory exceptions to restricted acts laid down by Articles 6 and 8 of the Directive (allowing the ‘lawful user’ of the same to use the protected database without the author’s or maker’s consent, in certain cases and if certain conditions are met) do not prevent the database owner from laying down contractual limitations on its use by third parties, while the same contractual limitations are null and void vis-à-vis lawful users of those databases which benefit from copyright and/or sui generis right protections.

While the interpretative principle outlined by the ECJ is actually not very striking (insofar as it is rather clear from the literal text of the Database Directive that the legal regime implemented by it – including the mandatory rights of ‘lawful users’ – only apply to those databases which can be protected with copyright or the sui generis right), it is important to highlight that, according to general principles of contract law, any contractual provisions governing the use of unprotected databases may only be binding on third parties who accepted those provisions (and that, accordingly, should be deemed to be already aware of their content) and, conversely, cannot bind any third parties extraneous to the contractual relationship with the website owner. In the Ryanair case discussed above, the ECJ makes clear that the company that had ‘scraped’ Ryanair’s flight data without authorization had previously accepted Ryanair’s general T&Cs by ticking a box to that effect. What about if ones were to take the disputed flight data not from Ryanair’s website but from the price comparison’s website? In this scenario, Ryanair’s T&Cs, notably the ‘screen scraping’ prohibition, should not be deemed to apply.

Federica De Santis

Court of Justice, 15 January 2015, C-30/, Ryanair Ltd v PR Aviation BV, C-30/14

ECJ: the “supplementary protection certificate” for protein D in Synflorix. A tough interpretation of Regulation (EC) No.469/2009

On January 15, 2015, the Court of Justice of the European Union (ECJ), in Arne Forsgren v. Österreichisches Patentamt C-631/13, issued a decision regarding the granting of a Supplementary Protection Certificate (SPC), requested by Arne Forsgren, for Protein D used in Synflorix, a vaccine authorized in European Union to protect from diseases caused by the bacterium S.Pneumoniae (full text here). As per the Regulation (EC) No.469/2009, the SPC covers the cost of research leading to the discovery of new “products” in order to ensure sufficient protection to encourage pharmaceutical research, which plays a decisive role in the continuing improvement in public health. In the present case, the Protein D contained in Synflorix is bond to some polysaccharides as a “carrier” and not associated to any pharmacological effect on its own. Based on the concepts provided in Regulation (EC) No.469/2009, can a SPC be attributed to the Protein D, even if this substance is not considered an active ingredient? The commission rejected the request, based on the interpretation of Regulation (EC) No.469/2009 article 1, lett.b and article 3, lett.a and b. according to which the “carrier” protein could be protected by a SPC. Otherwise, in respect of the article 3, lett.b the SPC protection is granted only if Protein D may be categorised as an “active ingredient” and if this action is covered by the therapeutic indications of the marketing authorization. The decision to provide the SPC protection should be carefully taken: potential misapplications may result in risk to monopolize the market, viceversa the refusal to grant supplementary protection might take the interested company in a disadvantageous position in relation to market competitors.

Grazia Maria Gaspari

Court of Justice, 15 January 2015, C-631/13,  Arne Forsgren v. Österreichisches Patentamt

Evergreening allegations and the orphan medicinal products Regulation: fresh guidance from the GC. A victory for originators in the war against generic manufacturers?

An interesting decision from the General Court (full text here) on the exclusivity regime of orphan medicinal products authorised for marketing under Article 8/3 of EC Regulation 141/2000. As is well known, regardless of their patentability/patent protection, Art. 8/1 provides for 10-year market exclusivity for orphan medicinal products complying with the Regulation requirements. This exclusivity prevents the EU and Member States from granting authorisations “for the same therapeutic indication, in respect of a similar product”. By way of derogation from the said provision, Art. 8/3 permits authorisation for a similar medicinal product with the same therapeutic indication to be granted even during the market exclusivity period, provided that certain conditions (inter alia, the consent of the holder of the marketing authorisation for the original orphan medicinal product: Art. 8/3/a) are met. But does an authorisation granted under Art. 8/3, where the similar medicinal product is also orphan, give rise to market exclusivity? And, if so, is such exclusivity independent of the one already granted to the original orphan medicinal product, even though they concern similar products with the same therapeutic indication?

According to the applicant (giant generic manufacturer Teva), both answers should be negative. Granting market exclusivity to similar medicinal products authorised under Art. 8/3 could lead to evergreening the 10-year market exclusivity of the first orphan medicinal product. All the more so where, as in the case at hand, the holder of the original marketing authorisation is the same company as the one which obtained the “second” marketing authorisation under Art. 8/3/a. The GC did not share the applicant’s view. It stated, on the one hand, that market exclusivity “must be granted in all cases in which an orphan product has been given marketing authorisation”, Art. 8/3 cases included (p. 80); and, on the other, that “the fact that the therapeutic indications for which both orphan medicinal products received marketing authorisation are similar cannot undermine the market exclusivity enjoyed by each of those medicinal products” (p. 79). As a result, the GC dismissed Teva’s action, stressing that the interpretation maintained by the applicant “would jeopardise the objective of the regulation … and run counter to its spirit” (p. 80). Whether this is a real victory for the “spirit” of EC Regulation 141/2000 evoked by the GC, rather than a victory for originators in their war against generic manufacturers, is at least debatable.

Riccardo Perotti

General Court (Sixth Chamber), 22 January 2015, T‑140/12, Teva Pharma BV, Teva Pharmaceutical Europe BV v. European Medicines Agency (EMA), supported by European Commission

The Court of Appeal of Milan declares Yahoo! video-sharing platform a passive hosting provider under the E-Commerce Directive

In its recent decision on a debated case (full text in Italian here), the Court of Appeal of Milan clarified that Yahoo! video-sharing platform (no longer active) shall be considered a passive hosting provider and may benefit of the ISP limited liability regime under the E-Commerce Directive.

The Court overruled the first instance decision and extended the safe harbour provisions also to “evolved” hosting services: adopting advanced automated functionalities for hosting third parties’ contents is not enough to be qualified as an “active” provider. Additionally, ISPs may be held liable exclusively if they do not activate after receiving a detailed take down notice. Finally, the decision excluded the possibility to impose general filtering obligations on ISPs.

The Court stressed the need to adopt a reasonable interpretation of these principles with the aim of preserving areas of freedom on Internet and updating legal definitions to technological developments. As affirmed by the ECJ (see decisions Telekabel, Netlog, Scarlett, etc.), the ISP discipline must seek a fair balance among opposite interests: provision of new online services, copyright protection, and individual fundamental rights (e.g., privacy and freedom of expression). Copyright protection is not an absolute right and its enforcement shall be measured in light of a “proportionality” principle.

Thus, this decision further aligns the Italian case law to the ECJ interpretation. A step forward for the harmonization of the EU national courts’ case-law.

Francesco Banterle

Court of Appeal of Milan, decision No. 29/2015, 7 January 2015, Yahoo! Italia S.r.l. and Yahoo! Inc. v. RTI (Reti Televisive Italiane) S.p.a.