Intellectual Property
Under the Database Directive (Directive 96/9/EC on the legal protection of databases) a database can be understood to be a collection of pieces of information having autonomous informative value (“independent materials“) arranged in a systematic way. Recently, the Court of Justice of the European Union (“CJEU”) defined what the key concept of “independent materials” that constitute a database, may encompass, by giving a preliminary ruling on the interpretation of Article 1(2) of the Database Directive in case Freistaat Bayern v. Verlag Esterbauer GmbH (C 490/14).
The factual question brought before the CJEU was how geographical information extracted from topographic maps should be treated under the articles of the Database Directive. The topographic maps in question were originally published by the Land of Bavaria. Verlag Esterbauer, a commercial map-maker, extracted and used the geographical data presented in the Bavarian maps in its own maps without Bavaria’s permission. The Land of Bavaria asserted that such use of information siphoned off from its maps was illegal, and brought proceedings before a Regional Court in Munich. Afterwards, on appeal, the German Federal Court of Justice referred to the CJEU the question if geographical data extracted from a topographic map could be held as “independent materials“, which under the Database Directive can be understood to be “building blocks” of a protected database, and thus protected by the database’s creator’s rights.
According to applicable CJEU case law, the term “database” used in the Database Directive has a wide scope since it aims to protect databases “in any form“. The CJEU also stated also that it was clear on the basis of the preamble of the Database Directive that the aim of the Database Directive is to stimulate the development of an information market. Further, under CJEU’s precedents, a database consists of “independent materials“, which may be separated from the original collection of pieces of data without affecting their autonomous informative value. The CJEU had also previously ruled that the informative value of data should be evaluated from the perspective of a third party who is interested in using the extracted material – not the typical user of the original database.
For the above reasons, The CJEU ruled that information from a collection of data, which is utilized for financial gain and in an autonomous manner constitutes “independent materials” from a “database” within the meaning of the Database Directive, since it provides the customers of the extractor with relevant information, and consequently held that the data extracted from the topographic maps of Bavaria contained this kind of valuable and relevant information. Therefore, geographical data presented in maps can be deemed to be “independent material” within the meaning of Article 1(2) of the Database Directive, and it enjoys protection under the Database Directive.
The CJEU Rules on Likelihood of Confusion between Letter Sequence Trademarks
The Court of Justice of the European Union (”CJEU”) has recently given a preliminary ruling on the likelihood of confusion between two trademarks, where the earlier mark consisted of a distinctive sequence of letters and the later mark consisted of the same letter sequence supplemented by a combination of words explaining the letter sequence as an abbreviation. In its ruling in BGW Beratungs-Gesellschaft Wirtschaft mbH v. Bodo Scholz (C-20/14), the CJEU interpreted Article 4(1)(b) of the Trade Marks Directive (2008/95/EC) and stated that there may be a likelihood of confusion between the trademarks at hand.
The word mark “BGW Bundesverband der Deutschen Gesundheitswirtschaft” had been registered in 2006 at the German Patent and Trade Mark Office, inter alia for goods and services relating to the health care sector. BGW Beratungs-Gesellschaft Wirtschaft mbH (“BGW“) challenged the registration on the basis of a word and figurative mark consisting of the letters “BGW” inside a black box, a mark that had been registered in 2004 that covered similar goods and services. The German Patent and Trade Mark Office had upheld the opposition partly, but later on overturned the decision on the grounds thatBGW had not demonstrated sufficient use of its mark. BGW brought the matter before the German Bundespatentgericht, which then referred a question regarding the likelihood of confusion between the mentioned marks to the CJEU for a preliminary ruling.
The CJEU stated that the judgement in Stringl and Securvita (C-90/11 and C-91/11) referred to by the Bundespatentgericht should not be regarded as a general rule for assessing the ancillary nature of a sequence of letters which reproduces the first letter of each of the words in the word combination with which it is compared, and held that the judgement was not applicable to the facts of this case. The CJEU left it to the national court to ascertain the overall impression made on the relevant public by the later mark, but concluded that in case of similar goods and services, there may be a likelihood of confusion between an earlier mark of average distinctiveness consisting of a distinctive and dominant letter sequence, and a later mark consisting of the same letter sequence supplemented by a descriptive combination of words, the initial letters of which correspond to the letters of that sequence, with the result that that sequence is perceived by the public as the acronym of that combination of words.
The Finnish Market Court (decision MAO:678/15) imposed a precautionary measure prohibiting Arla Oyfrom using, offering, marketing, importing, exporting or storing dairy products with the sign SKYR with the threat of a conditional fine of EUR 500,000 on 6 October 2015. The Market Court also held that Arla Oy is likely to infringe the applicants’, Mjólkursamsalan ehf‘s and Skyr Finland Oy‘s, registered trademarks. The applicants had further demanded the Market Court to order Arla Oy to immediately recall the trademark-infringing products from the market and to remove the sign SKYR from all such products, or to dispose of said products. The Market Court dismissed these latter demands that had been sought for.
The applicants demanded a precautionary measure on the grounds of the applicants’ registered rights to the wordmark and device mark SKYR, on the fact that said trademarks had been established through use, on the registered business name Skyr Finland Oy, and claimed that a confusing similarity between the applicants’ and the counterparty’s product package existed. The Market Court held that the national wordmark registration provided protection against imitation despite of the fact that the registration decision of the Finnish Patent and Registration Office had not yet become legally binding. The Market Court noted that the legal prerequisites for a trademark registration were met as presented evidence affirmed that the Finnish Patent and Registration Office had de facto decided to register the trademark.
However, the Market Court found that the applicants had not presented sufficient proof that trademarks had been established, the confusing similarity of the packages, or infringement of the business name. The Market Court concluded that the applicants had not proven the existence of the aforesaid claims with a sufficient degree of probability in the present summary procedure of an application for a precautionary measure. The Market Court decided that ordering Arla Oy to immediately recall all products from the market and to remove the sign SKYR from its products would cause unreasonable inconvenience and dismissed the applicants’ claims in this respect
The CJEU Stated on Exceptions to the Reproduction Right of the InfoSoc Directive
The Court of Justice of the European Union (“CJEU“) has on 12 November 2015 in its decision Hewlett-Packard Belgium SPRL v. Reprobel SCRL, Epson Europe BV intervening (C-572/13) ruled on the interpretation of Articles 5(2)(a) and 5(2)(b) of the “InfoSoc” Directive (2001/29/EC), which concern certain exceptions or limitations that the member states may provide to the reproduction right provided by Article 2 of the Directive.
The dispute first initiated in 2004 when Reprobel, a management company entrusted with collecting and distributing sums corresponding to fair compensation under the reprography exception, contactedHewlett-Packard informing them that a levy of EUR 49.20 per printer should, in principle, be entailed in the “multifunction” printers sold by Hewlett-Packard in Belgium. Eventually, the Belgian Court referred several questions to the CJEU regarding the interpretation of the above mentioned Articles.
First, CJEU confirmed that for the principle of fair compensation, which is included in both Article 5(2)(a) (the reprographic exception) and 5(2)(b) (the private copy exception) of the InfoSoc Directive, a distinction must be drawn depending on “whether the reproduction on paper or a similar medium effected by the use of any kind of photographic technique or by some other process having similar effects is carried out by any user or by a natural person for private use and for ends that are neither directly nor indirectly commercial“. The amount of fair compensation must be calculated based on the harm suffered by the authors of the protected works – depending on which situation is present.
CJEU also confirmed that publishers cannot receive compensation under the two exceptions, as they (i) do not suffer harm meant by the exceptions and (ii) them receiving compensation would deprive the reproduction right holders of their above mentioned fair compensation right.
In addition, CJEU came into the conclusion that, subject to exceptions, Articles 5(2)(a) and 5(2)(b) prohibit the national legislations from introducing an undifferentiated system for recovering fair compensation which also covers the copying of sheet music and from introducing an undifferentiated system for recovering fair compensation which also covers counterfeit reproductions made from unlawful sources.
Finally, Article 5(2)(a) and Article 5(2)(b) prohibit national legislations from introducing a system that combines, for financing the fair compensation payable to right holders, certain two forms of remuneration. First being a lump-sum remuneration that would be paid prior to the reproduction operation by the manufacturer, importer or intra-Community acquirer of devices enabling protected works to be copied, when such devices are put into circulation on national territory. Second being proportional remuneration that would be paid after that reproduction operation and determined solely by means of a unit price multiplied by the number of copies produced, which is payable by the natural or legal persons who make those copies. These prohibitions apply in certain circumstances, for example for the lump-sum remuneration when remuneration paid in advance is calculated solely by reference to the speed at which the device concerned is capable of producing copies.
On 13 November 2015, the Swedish Supreme Court issued its judgment regarding Swedish jurisdiction in a trademark dispute (Ö 3223-13). The ruling confirmed that Swedish courts have jurisdiction in respect of claims for injunctions to prohibit trademark use. Vivamondo Limited (“Vivamondo“) appealed to the Supreme Court, where the counterparties were Deramore Stockholm AB (“Deramore“) and Skin Concept i Stockholm AB (“Skin Concept“).
In the District Court, Deramore and Skin Care had claimed that Vivamondo should be prohibited from commercially marketing, importing and making available certain products on the Swedish market through the website “vivamondo.se” under the trademarks that Deramore and Skin Care were authorized to use in Sweden, on the grounds that Vivamondo‘s actions constituted an unlawful parallel import and, thus, trademark infringement.
Vivamondo contended that their business is conducted in Hong Kong, since the server for the website is located in Hong Kong and the domain name is owned by Vivamondo in Hong Kong, not by the Swedish branch. Consequently, the company argued that the Swedish courts did not have jurisdiction in the case. Since the company has its domicile in Hong Kong, the matter was not governed by the Brussels I regulation or other similar rules.
The Supreme Court stated that since the exclusive rights to use a trademark are essentially limited to rights on a national level, there is an interest in ensuring that Swedish courts have jurisdiction when protection is sought against an infringement in a case of exclusivity based on the Swedish Trademark Act. Swedish Courts also have jurisdiction if infringement of a community trademark is carried out in Sweden. The Supreme Court concluded that Swedish courts have jurisdiction to consider the licensees’ claim for a prohibitory injunction.
Marketing Consumer
Alternative Dispute Resolution for Consumers to be Reinforced in Finland
A Government Bill to implement the Directive on Alternative Dispute Resolution for Consumers has been issued. Among the major changes is the expedited handling of disputes at the Consumer Disputes Board, which is in the future to issue its recommendations within 90 days from the commencement of the procedure. This proposal leads to a clear change to the present situation, where no time limits have been set for the duration of the procedure.
The Consumer Disputes Board will also be given the power to dismiss a complaint if the consumer has not first contacted the Consumer Advisor Service. The reason for this proposal concerning dismissal rights is to streamline the processing of consumer disputes by filtering out cases that can be resolved by advisement or where settlement is possible. If these methods do not lead to the resolution of the matter, the dispute can be taken to the Consumer Disputes Board in the current manner.
The Government Bill will also implement an EU-wide online dispute resolution platform operated by the European Commission for online consumers buying goods from another EU country. The platform will allow the consumer to file a complaint to an alternative disputes resolution body located in another EU country in their own language. The dispute resolution platform is set to be launched in January 2016.
New Swedish Bill Reining In Aggressive Marketing
The European Commission has notified Sweden’s government that the provisions of the Marketing Act (2008:486) are in breach of the Unfair Commercial Practices (Directive 2005/29/EC). As a result, a bill that will amend the current Marketing Act has been presented.
For example, harassment, compulsion, threats and other aggressive means of duress are already regarded as aggressive practices under Section 7 of the current Marketing Act. A new provision, Section 7(a), setting out the circumstances that should be taken into consideration when assessing whether a particular commercial practice should be regarded as aggressive will be incorporated into the new Marketing Act.
The circumstances of interest include: The type of actions taken by the trader and the timing of such actions as well as the duration and location of the traders’ actions. Further, a trader’s use of threatening or abusive language or actions, or the use of misfortune or circumstances of the consumer impairing the consumer’s good judgment, are to be paid attention to. Also, if a trader sets onerous or disproportionate impediments, which are not set in accordance with the terms of the agreement concluded, to a consumer asserting her legal rights, said impediments may constitute circumstances of particular interest in the assessment. Finally, new Section 7(a) of the Act sets out that if a trader claims that he/she will take an action which is not legal, this should be considered in the overall assessment of acceptability.
An overall assessment of said circumstances in the case should be made to determine whether marketing practices are aggressive. The change of the Marketing Act is intended to enter into force on 1 March 2016.
Note: In Finland, the Unfair Commercial Practices Directive was implemented through an amendment to the Finnish Consumer Protection Act (38/1978) that entered into force on 29 August 2008 as well as through a Government Decree (601/2008), which specifies the relevant provisions of the Finnish Consumer Protection Act. Since the mentioned amendments, Chapter 2, Section 9, Subsection 3 of the Finnish Consumer Protection Act has featured a list of guidelines that corresponds to the newly proposed Section 7(a) of the Swedish Marketing Act.
Oatly is Prohibited by the Swedish Market Court from Using Certain Marketing Statements
On 19 November 2015, the Swedish Market Court (the “Court“) issued its judgment regarding the marketing of oat-based products such as oat drinks (MD 2015:18). In the judgment, Oatly AB (“Oatly“) was prohibited from continuing to use certain statements such as “No milk, No soy. Just goodness“, “It looks like milk but isn’t milk. It’s made for humans (not calves)“, “full of goodness” when marketing their products. The plaintiff was Svensk Mjölk Ekonomisk Förening (“Svensk Mjölk“), an association that is owned by several major companies operating in the dairy industry.
The Court focused on three issues: whether Oatly‘s marketing was misleading and thus in breach of section 10 of the Marketing Act (2008:486) (the “Act“), whether the marketing was degrading dairy products and, as a result, breached good marketing practice (section 5 of the Act), and, finally, whether the marketing was in compliance with EU law on nutrition and health statements, or if the marketing was in breach of any other law and thus in breach of good marketing practice.
The Court stated that particularly stringent requirements are imposed to ensure that the marketing of food is not false or misleading, since it is of great importance that a consumer can rely on the information provided in connection of marketing activities. Additionally, the Court referred to the ICC’s Code of Advertising and Marketing to determine the more precise meaning of good marketing practice. Since Oatly stated in its marketing that its products were a substitute for dairy products, the target group for the marketing was (at the least) consumers that used either dairy products or alternatives to dairy products (such as oat products). However the fact that the marketing related to food, which are generally bought on a regular basis, the relevant target group was defined as the consumer collective as a whole.
The Court held that some of the statements were likely to be perceived as information about Oatly‘s products and that the products did not contain any unnecessary ingredients. Since this could not be proven to be the case, the statements were misleading and disregarding. However, the statements “No milk, so soy, no way“, “old school” or “back in the day” were regarded by the Court as neither misleading nor disregarding towards dairy products.
Oatly had labeled some of its products with statements such as “full of goodness” and “liquid goodness“. EU Regulation no. 1924/2006 specifies when and how a product can be labelled with nutrition and health statements. The health claims that are permitted are stated in the annex to EU Regulation 432/2012, most recently amended by EU Regulation 2015/539. The Court concluded that since these statements by Oatly were health statements, and since they were general statements, they must be followed by authorized health statements that are listed in the EU Regulations referred to above. Since this was not the case, the statements were in breach of good marketing practice.
To summarize, it is of particular importance to be accurate when making statements used in the marketing of food. Additionally, it is also important to ensure that specified health and nutrition statements, authorized by EU law, are used.
Media Entertainment
On 21 October 2015, the European Court of Justice (“CJEU“) issued a preliminary ruling in the caseNew Media Online GmbH v. Bundeskommunikationssenat (C-347/2014) concerning the question on whether short videos available on-demand on online newspapers’ website fall under the scope of application of the Audiovisual Media Services Directive 2010/13/EU (“the Directive“).
In its ruling, the CJEU first acknowledged that the length of the video is irrelevant for the applicability of the Directive. Second, the Court noted that the Directive may be applicable if the videos are aimed at a mass audience and are likely to have a clear impact on the general public, and therefore compete for the same audience as television broadcasts. Furthermore, in order for the Directive to be applicable, the Court established that the content and form of the audiovisual service has to be independent from the operator’s journalistic activity on the website. The provisions of the Directive are therefore not applied to videos which complement journalistic content and when there is a strong link between the audiovisual offer and the offer in text form. However, the Court concluded that it is up to the courts of the Member States to assess the existence of such sufficient link between journalistic and audiovisual content.
The ruling may have implications for Finnish publishers of online newspapers and magazines. Videos published on newspapers’ websites do not currently have to comply with the requirements for video-on-demand audiovisual services stipulated in the Finnish Information Society Code (917/2014, as amended). Applying the principles set out in the ruling C-347/2014 might however invoke the rules on audiovisual media services. Therefore, Finnish publishers offering independent videos may be subject to the provisions concerning audiovisual services of the Information Society Code and thus be obligated to, inter alia, make an electronic notification to the Finnish Communications Regulatory Authority before commencing and discontinuing the operations and to notify of changes in the service. The publisher may also have to comply with regulations concerning e.g. the sponsorship and product placement for video-on-demand audiovisual services.