Friday, 31 July 2015

The Database Directive “contracting out” bar: does it apply to unprotected databases?

Authors: Indranath Gupta and Vishwas H. Devaiah (Jindal Global Law School, O.P. Jindal Global University)

Ryanair v P R Aviation, Court of Justice of the European Union, C-30/14, ECLI:EU:C:2015:10

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv127, first published online: July 28, 2015

The Court of Justice of the European Union has held that Article 15 of the Database Directive, which bars contract clauses that limit users' rights, is not applicable when a database is protected under neither copyright nor database right.

Legal context

The enactment of the Database Directive (96/9) saw a two-tier legal framework offered under Articles 3 and 7 for the protection of databases. Under Article 3, copyright protection extended to databases and was harmonised in Europe. The threshold for such protection was tied to the requirement of ‘author's own intellectual creation’ by virtue of selection or arrangement of the contents in a database. Article 7 then introduced a new database right that safeguarded investments in databases that fell short of the original work standard which met the threshold of copyright protection under Article 3.

Protection under the Directive exists only if the data set falls within the ambit of Article 1(2), which defines database as ‘a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means’. While in Fixtures Marketing Ltd v Organismos Prognostikon Agnon Podosfairou (C-444/02, ECLI:EU:C:2004:697) the CJEU previously held that the definition of database enjoyed a broad scope under the Directive. It is difficult to ascertain precisely what may come under this definition, although the use of the words ‘any form’ in Article 1(1) suggests that electronic and non-electronic databases are covered by it. Recital 14 of the Directive in clear terms extends the definition to databases in non-electronic forms.

Further, the scope of the Directive seeks to protect databases under either copyright or sui generis right. To extend copyright protection the creator must demonstrate his own intellectual creation towards the production of a database. Thus the originality criterion plays a vital role to ensure copyright protection for databases; the threshold for such originality is largely based on selection and arrangement of the data rather than the resources deployed to gather the data. In order to enjoy sui generis database right the creator must show that there has been ‘qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database’. The scope of the two-tier protection under Articles 3 and 7 was elucidated in British Horse Racing Board Ltd and Others v William Hill Organization Ltd (C-203/02, ECLI:EU:C:2004:695) (‘BHB’) and Football Dataco Ltd v Yahoo! UK Ltd (C-604/10, ECLI:EU:C:2012:115). In BHB, with respect to the words ‘obtaining’ and ‘verification’, the Court of Justice of the European Union (CJEU) concluded that the protection offered under Article 7 is limited to investment made towards obtaining and verification of existing materials, but not investment in the creation of such materials. Said the CJEU, investment must be understood within the context of creation of databases, ie from the perspective of using existing material as opposed to creation of independent materials. The purpose of the Directive is largely to protect qualitative and quantitative resources used for the storage and processing of existing information. In Football Dataco, the CJEU affirmed that the intellectual effort that goes into creation of data is not counted, while deciding on the issue of overall creativity, which is required under Article 3 to protect a database under copyright.

Facts

This dispute related to use by PR Aviation of a dataset available from the website of Ryanair. PR Aviation provided online services to customers about air travel and airfares, which involved comparison of flight data relating to low cost airlines. This enabled customers to compare flight data of various airlines and also to book flight tickets. A small commission was paid to PR Aviation upon the booking of a flight through their website.

Ryanair alleged that the services provided by PR Aviation resulted in automated ‘screen scraping’ of the dataset from its website whenever an individual initiated an online query on PR Aviation's website. According to Ryanair, this breached the terms and conditions specified on its website, which clearly stated that Ryanair was the exclusive distributor of its services and that other websites were not authorized to sell its flight tickets. The terms and conditions listed on the Ryanair website restricted use of the dataset to private non-commercial use alone. Ryanair alleged that PR Aviation acted in breach of the terms and conditions they had accepted, claiming that the unauthorized use of the dataset infringed its rights.

The local court in Utrecht dismissed Ryanair's claim to dataset infringement, since the claim related to infringement under Directive 96/9 and national database law. However, PR Aviation was ordered to refrain from infringing Ryanair's copyright in flight data and to pay compensation for the harm caused due to unauthorized use of the data.

On appeal, the Court of Appeal, Amsterdam set aside the decision of the Utrecht local court, holding that PR Aviation had not infringed any rights as its use of Ryanair's flight data came under the purview of legitimate use under the Dutch Copyright Act. As for breach of the terms and conditions specified on the Ryanair website, which sought to exclude third parties from using the flight data, their effect was contrary to the legitimate use exception provided under Articles 24(a)(1) and (2) of the Dutch Copyright Act. The court added that Ryanair had not established the existence of ‘substantial investment’ in the creation of a dataset, so protection under the sui generis database right could not be claimed.

Ryanair appealed to the Supreme Court of Netherlands on the ground that the dataset on its website did not come within the purview of works protected by copyright. Alternatively, the Court of Appeal had wrongly decided the issue relating to enforcement the terms and conditions specified on its website since the dataset used by PR Aviation did not come within the purview of either copyright or sui generis right under the Database Directive 96/9. The Supreme Court of Netherlands asked the CJEU whether Directive 96/9 also applied to online databases that were not protected by copyright or sui generis rights, and whether freedom to use such databases can be limited contractually.

The decision

The CJEU ruled that PR Aviation's argument that the dataset fell within the definition of database in Article 1(2) of the Directive could only be satisfied if it that database was either protected by copyright or by sui generis database right. In the context of copyright protection offered under Article 3, Article 5 authorizes the author of the database to carry out certain restricted acts. However, Article 6(1) provides the conditions under which a lawful user can perform the restricted acts stated under Article 5 so as to have access to the content of a database without the authorization of its author. In the context of databases protected by the sui generis database right, Article 8(1) under certain conditions allows the lawful user of a database to make insubstantial use of the contents.

As a prohibitory measure, a database producer under Article 15 cannot by contract deprive a lawful user of the rights granted under either Article 6(1) or Article 8(1); such terms were null and void. The purpose of the Directive was to protect the creator of the database either under copyright or sui generis rights. However, in order to ensure that there is a balance between the creator of database and its lawful user, the Directive seeks to create exceptions to the rights provided to creator of database. Any effort by the creator of database to circumvent these exceptions through contractual provisions is disregarded.

In this case, the CJEU said, the application of Article 15 depends on whether the database in question is either protected by Article 3 or 7 and it is limited for the ‘purposes of this Directive’. Accordingly, the use of a database may be restricted through contractual means when it is protected neither by copyright nor by sui generis database right.

Analysis

Since its inception, the Database Directive has not been free from controversies surrounding its utility and effectiveness. It was evaluated after nearly 10 years from its passage. The Commission of the European Communities' evaluation report assessed whether the policy goals pertaining to the enactment of the Directive had been fulfilled especially in the context of enacting the novel sui generis database right (‘First evaluation of Directive 96/9 on the legal protection of databases’, December 2005). This assessment was in furtherance to the overall idea of creating a legal framework with the objective of protecting a wide range of databases in the information age. Besides the unproven economic impact, the report suggested that the sui generis part of the Directive should either be repealed or amended. This suggestion was based not solely on the claim of economic impact but also on the inherent ambiguities present in the Directive. Specific concern was raised in relation to the expectations surrounding the meaning of the words ‘substantial investment’, which is one of the foremost requirements under Article 7. The concerns have been exacerbated by the fact that there is no comparable jurisdiction where sui generis right has been used as a legal instrument. Further, BHB meant that the scope of the Directive as envisaged at the time of enactment might have been curtailed. The evaluation report indicates that there are possible difficulties when it comes to balancing the Directive. This is more so with the sui generis part. The exceptions contained in the Directive are there to balance any eventualities.

Given that there is ambiguity in terms of determining whether a database is protected by copyright or sui generis right, there may be an unfair situation in which its creator will in most instances use contractual terms to restrict the use of the data by third-party users. This could encourage all creators of databases to deliberately use restrictive contractual terms to prevent users from utilizing and extracting data. Excessive reliance on contractual terms would defeat the purpose of the database Directive and tilt the balance in favour of database creators. Going by the previous experiences of BHB and Football Dataco, database producers might already have a slight edge when it comes to protecting single source databases.

Practical significance

Websites that provide price comparison services may be deterred by this decision from providing such services. Such websites tend to scrape information from various data-rich websites and their business model relies largely on unpaid scraping of content, which is relied upon by its customers. This practice may have to stop if website operators use restrictive contractual terms instead of relying on database protection. The burden of proving that databases fall within the scope of the Directive would be upon the unauthorized data user, since the creator in all likelihood would prefer to show that the data is neither copyright-protected nor protected under sui generis rights.

Tuesday, 28 July 2015

Looking for IP bargains? Try the OUP Summer Sale

JIPLP's publisher, Oxford University Press, has a Summer Sale at the moment which finishes tomorrow, Wednesday 29 July.  Among the very large number of titles on offer are a small quantity of intellectual property law titles, which we list below.  You can check out the OUP sales for all categories of books by clicking here.

Many of the books below have been reviewed in JIPLP. If you're a subscriber to the online version of the journal and want to see if they're been reviewed, just go to the JIPLP website here and search.


Fifth Edition
Amanda Michaels, Andrew Norris
978-0-19-870203-0
Paperback
20 March 2014
£75.00 £56.25



Law and Practice
Second Edition
Phillip Johnson
978-0-19-969645-1
Hardback
17 November 2011
£162.50 £81.25



Intellectual Property in Mandate Palestine
Michael D. Birnhack
978-0-19-966113-8
Hardback
04 October 2012
£69.00 £34.50




Joseph W. Doherty, Robert T. Reville...
978-0-19-991433-3
Hardback
31 May 2012
£81.00 £40.50





K.C. Kankanala, A.K. Narasani...
978-0-19-808960-5
Paperback
06 September 2012
£14.99 £7.49




Srividhya Ragavan
978-0-19-984067-0
Hardback
06 September 2012
£62.00 £31.00





Ruth L. Okediji, Margo A. Bagley
978-0-19-933427-8
Hardback
17 April 2014
£97.00 £72.75



Raymond Wacks
978-0-19-966866-3
Paperback
06 June 2013
£31.99 £15.99





Ilanah Simon Fhima
978-0-19-956320-3
Hardback
03 November 2011
£142.50 £71.25

Wednesday, 22 July 2015

JIPLP features in new OUP eZine

How things change in the world of IP publishing!
Oxford University Press, publisher of JIPLP, excitedly announces the launch of a new Intellectual Property law eZine. This eZine offers more than 50 pages of free content, videos, podcasts and blogs.

You can sample its delights by clicking here.

Tuesday, 14 July 2015

Broad claim construction leads to invalidity of Novartis's patent for EXELON Alzheimer's patch

Authors: Sebastian Moore and Grace Pead: Herbert Smith Freehills LLP

Novartis AG, LTS Lohmann Therapie-Systeme AG, Novartis Pharmaceuticals UK Limited v Focus Pharmaceuticals Ltd, Actavis Group PTC EHF, Actavis UK Limited, Teva UK Ltd [2015] EWHC 1068 (Pat), Patents Court, England and Wales, 27 April 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv119, first published online: July 9, 2015

The Patents Court has held that Novartis's patent, covering its EXELON rivastigmine transdermal patch to treat Alzheimer's disease, is invalid. The broad claim construction that Novartis proposed in order to establish infringement meant that the patent included added matter over the application as filed and was obvious over a prior US patent.

Legal context

Patentees bringing infringement actions in England and Wales frequently face difficulties putting forward claim constructions broad enough to cover the allegedly infringing activities, but not so broad that the claims are invalid on grounds including added matter, obviousness, and insufficiency. Where patentees do not get this right, or cannot get this right because of the wording of their application as filed, they risk the alleged infringer successfully running a ‘squeeze argument’, as the generics did in this case, essentially saying that ‘if we infringe on that construction, the patent must be invalid’.

Another challenge that Novartis faced here, common to patentees litigating European patents in England and Wales, is the possibility of inconsistent findings when proceedings are heard in different jurisdictions across Europe. Particularly when deciding on infringement, courts in different jurisdictions can take markedly different approaches.

Facts

Novartis's patent EP (UK) No 2 292 219, titled ‘Transdermal therapeutic system for the administration of rivastigmine’, is a divisional patent derived from international patent application No WO 2007/064407. Before the introduction of transdermal therapeutic systems, which most commonly come in the form of patches, rivastigmine was administered orally, which led to side effects such as nausea, vomiting and diarrhoea. Patients would be prescribed a starting dose of oral rivastigmine, which was sub-therapeutic, and then increased to a therapeutically effective dose as they got used to the side effects. According to the patent, the use of a transdermal patch meant that patients could take a much higher starting dose with greater tolerability, so that their treatment was simplified.

Rivastigmine
Novartis brought infringement proceedings in the Patents Court against Focus, Actavis and Teva, who denied infringement and counterclaimed for revocation of the patent. Before the matter was heard, equivalent patents had been litigated in 11 European countries. Although most of the proceedings to date had involved only interim injunction applications, requiring a lower standard of proof, some of those courts had found that generics had infringed and others found they had not, on the same facts. Although the Patents Court was the first to give a final determination on validity, the European Patent Office (EPO) and courts in The Netherlands and Germany had expressed opinions that the patent was invalid.

Analysis

Skilled team and common general knowledge

Before Arnold J, the parties agreed that the patent was addressed to a skilled team interested in developing a new formulation for rivastigmine. The team would consist of a formulator skilled in transdermal administration, and a clinician and/or neuroscientist in the field of dementia. There was, however, substantial dispute as to the skilled clinician's common general knowledge of how tolerability of rivastigmine could be increased. Arnold J agreed with the generic parties that it was generally accepted at the priority date that rivastigmine should be administered with food, and that it was a reasonable hypothesis that this increased tolerability because it reduced peak plasma concentration of rivastigmine and increased the time at which peak plasma concentration was reached. This was widely stated in reviewed papers put into evidence by the generics.

Novartis's broad claim construction accepted

Arnold J accepted Novartis's construction that the single claim of the patent involved three components:
  • rivastigmine for use in treating dementia or Alzheimer's;
  • rivastigmine administered via a patch; and
  • a ‘starting dose’ of rivastigmine that ‘is that of’ a reference patch with a structure and composition specified in three final integers of the claim.
Because of the wording ‘the starting dose is that of’, the claimed patch could have any structure or composition provided it could deliver the same starting dose as the reference patch. It was not correct to restrict the claim to a rivastigmine patch with the precise structure and composition specified in the final integers of the claim. These features merely described the reference patch.

Invalidity for added matter

The generics' primary objection to validity was that the claim involved added matter in that the patent presented information about the invention which was not directly and unambiguously derivable from the application on which it was based. Although the application disclosed a patch with the same structure and composition as the reference patch in the patent claim, it did not suggest that this should be used as a starting dose. In contrast, the patent explicitly disclosed a rivastigmine patch with a starting dose the same as that of the reference patch. Arnold J accepted that, if the claim was construed as Novartis contended, the amendments to the application made during prosecution amounted to disclosure of a new invention over the application as filed so that the patent was invalid for added matter.

Invalidity for obviousness

In their obviousness attack, the generics relied only on United States patent No 6 335 031, co-owned by Novartis. There was no dispute that the US patent disclosed administration of rivastigmine by a transdermal patch with a structure and composition the same as that of the reference patch in the patent in suit. The essential difference was that the US patent did not disclose a starting dose of that released by a reference patch. The key area of disagreement between the parties was the starting dose the skilled team would select when administering rivastigmine using patches of the kind disclosed in the US patent.

Although it did not disclose a starting dose, the US patent stated that the size of the patch could be determined using tests which involved observing blood levels of rivastigmine ‘after oral administration of a therapeutically effective dose of the compound’. Novartis submitted that this would lead the skilled team to administer as a starting dose a patch of a dose equivalent to that of the starting dose in the oral rivastigmine regimen, that is the sub-therapeutic dose. This would mean the starting dose would be half that released by the reference patch disclosed in the patent. The generics on the other hand said that this statement in the US patent would lead the skilled team to do exactly what the statement said, and administer the lowest therapeutic oral dose of rivastigmine as a starting dose. This would mean the starting dose would be that released by the reference patch in the patent in suit. Arnold J accepted the generics' position and found the patent obvious in light of the US patent.

Patent not insufficient

On the basis of the expert evidence, Arnold J did not agree with the generics that the claim in Novartis's patent was insufficient. In particular:
The claim was not overly broad. Even though the benefit of tolerability was not obtained for any patch within the claim (with the starting dose of the reference patch), a skilled person would know to use a formulation that would have that benefit.
The claim was not ambiguous. Even though the specification did not provide a method for determining whether any other patch delivers ‘the same’ starting dose as the reference patch, the skilled team would be able to select an appropriate statistical test.

Generics would have infringed

Arnold J found that, had the patent been valid, the generics would have infringed. There was no dispute that the generics' patches were identical to Novartis's Exelon patches (save for the branding), were made by the same manufacturer, and would be used for the claimed indication to administer rivastigmine with the claimed starting dose.

Practical significance

Arnold J's decision highlights a number of considerations for patentees bringing infringement actions in England and Wales today. First, patentees need to take care that where possible the claim construction they propose to cover the alleged infringement is not so broad as to lead to a finding that the patent is invalid. Patent applicants should also consider the breadth of the claims from an infringement and a validity point of view at the time the patent application is drafted.

Secondly, patentees involved in pan-European litigation seeking to restrain generic entry to the market should have a strategic co-ordination plan in place from the outset, given the possibility of strikingly diverse findings in different jurisdictions. Despite the divergent views on infringement when this case was heard across Europe, the case indicates that courts in different jurisdictions may be more likely to make the same findings as to validity of a respective national designation of a European patent.

Arnold J has granted Novartis permission to appeal, stating that the appeal from the finding of added matter has a real prospect of success, but he is only narrowly persuaded that the same is true of the appeal from the finding obviousness ([2015] EWHC 1553). It remains to be seen whether the Court of Appeal will uphold Arnold J's findings. In the meantime, Novartis's European patent remains under opposition at the EPO by 13 opponents and the Opposition Division has already issued a provisional opinion that the patent is invalid for added matter and insufficiency. Oral proceedings are scheduled for 15–17 December 2015.

Friday, 10 July 2015

A second bite of the apple leaves a sour taste

Authors: Maeve Lynch and John Colbourn (Redd Solicitors LLP, London, UK)

Apple and Pear Australia Ltd., Star Fruits Diffusion v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Carolus C. BVBA, General Court (Fourth Chamber), Case T-378/13, EU:T:2015:186, 25 March 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv112, first published online: July 9, 2015

The General Court has decided that, in the context of opposition proceedings, although the Office for Harmonisation in the Internal Market has a duty to consider the decisions of Community trade mark courts in parallel infringement proceedings concerning the same parties and the same marks, it is not bound to follow them.

Legal context

Council Regulation 207/2009 on the Community trade mark (CTM) stipulates which decision-making bodies have jurisdiction to decide various matters relating to CTMs. In particular, Article 96 of the Regulation provides that CTM courts are to have exclusive jurisdiction for, inter alia, infringement actions and counterclaims for revocation of CTMs. However, under the Regulation, the Office for Harmonisation in the Internal Market (OHIM) has jurisdiction to adjudicate upon applications for registration of a CTM. Consequently, it is possible for opposition and infringement proceedings to proceed in parallel even though they concern the same parties and the same marks.

Facts

Carolus, a Belgian tree nursery specializing in apple trees, applied in October 2009 to register the word mark ENGLISH PINK as a CTM for goods in class 31, including agricultural products and fresh fruits. An application for an identical Benelux mark, filed by Carolus on the same date, was subsequently granted.

Apple and Pear Australia Ltd. and Star Fruits Diffusion (the opponents) used PINK LADY in connection with the sale of a particular variety of apple, called Cripps Pink. In April 2010, the opponents opposed Carolus' application to register ENGLISH PINK as a CTM on the basis of three earlier CTMs which were registered for goods that were largely identical to the goods for which ENGLISH PINK was proposed to be registered. These CTMs were:
The word PINK LADY; 
Two separate figurative marks featuring the words ‘Pink Lady’ (shown below).
Shortly thereafter, in June 2010, the opponents commenced infringement and revocation proceedings against Carolus before the Tribunal de commerce de Bruxelles (the ‘Brussels Commercial Court’). Two years later the Brussels Commercial Court delivered its judgment. As regards the strength of the opponents' mark, the court took the view that PINK LADY was not descriptive since apples are not pink and, on the basis of evidence adduced by the opponents and common knowledge, PINK LADY had a substantial reputation. Holding that; there was a likelihood of confusion between ENGLISH PINK and PINK LADY, it ordered Carolus to refrain from infringing the opponents' CTMs throughout the European Union and invalidated Carolus' Benelux ENGLISH PINK mark.


Following this decision, the opponents wrote to OHIM a number of times to draw its attention to the ruling of the Brussels Commercial Court and in August 2012, the opponents informed OHIM that Carolus had acquiesced in the judgment, which was therefore final.

However, in May 2013, the Fourth Board of Appeal rejected the opposition. Surprisingly, the Board of Appeal made no mention of the decision of the Brussels Commercial Court, despite having been made aware of it on a number of occasions. Further, its analysis of the likelihood of confusion between the two marks was very different from that of the Brussels Commercial Court. For example, the Board of Appeal observed that the ‘pink’ element of PINK LADY was non-distinctive because apples ‘may oscillate into shades of pink’ and it took the view that the opponents had not adduced sufficient evidence in support of their argument that PINK LADY had a reputation.

The opponents appealed to the General Court on the basis that the Board of Appeal should have considered the decision of the Brussels Commercial Court and delivered a ruling that was compatible with that decision.

Analysis

Should the Board of Appeal have taken the Brussels decision into account?

The General Court noted that the decision of the Brussels Commercial Court was, prima facie, ‘a relevant factual element for resolving the case at hand’ and added that The Board of Appeal could not fail to recognise that there were essential common points between the factual aspects at issue in the infringement proceedings initiated and the opposition proceedings brought to contest the registration of the mark sought. Not only were the parties to both sets of proceedings identical, but also the earlier word mark relied on in support of the infringement proceedings before the Brussels Commercial Court was the same as the one relied on in support of the opposition proceedings before the various departments of OHIM. Moreover, the Benelux mark ENGLISH PINK, annulment of which was ordered by that court, and the mark sought were highly similar.

It was also relevant that the decision had been made by a CTM court established under the Regulation and that the Regulation was intended to guarantee uniform protection of CTMs throughout the European Union.

Accordingly, the General Court held that the Board of Appeal should have assessed the impact of the Brussels Commercial Court's decision in the present case. Further, the Board of Appeal had infringed Article 75 of the Regulation for failing to state reasons for the inferences to be drawn from that decision. The General Court held that these failures constituted grounds for annulment of the Board of Appeal's decision.

Res judicata

The General Court also considered whether, under the principle of res judicata, the Board of Appeal was bound by the decision of the Brussels Commercial Court. In this respect, the General Court made the following points:

  • Board of Appeal decisions must be assessed solely on the basis of the Regulation and not on the basis of earlier judicial decisions; 

  • While the Regulation does explicitly deal with the application of res judicata in some specific scenarios, the Regulation does not contain any provision by which OHIM is bound by a decision of a CTM court delivered in an action for infringement when it exercises its exclusive jurisdiction over the registration of CTMs in the context of CTM opposition proceedings; 

  • The requirement of unitary character of the CTM does not mean that res judicata applied to the situation in question; 

  • The subject matter and causes of action of the proceedings were different. The action for infringement before the Brussels Commercial Court concerned the validity of the Benelux mark ENGLISH PINK (under Benelux law) and a request for a pan-European injunction on the basis of the opponents' CTMs (under Articles 9(1)(b) and 9(1)(c) of the Regulation). However, the proceedings before OHIM concerned opposition to the registration of ENGLISH PINK as a CTM (under Articles 8(1)(b) and 8(5) of the Regulation); and 

  • Carolus' Benelux mark and the CTM it applied for were two legally distinct marks. The judgment of the Brussels Commercial Court had the effect of protecting the opponents' earlier word mark only against the effects of the Benelux mark ENGLISH PINK.
For these reasons, the General Court held that the principle of res judicata did not attach to the judgment of the Brussels Commercial Court in the context of the OHIM opposition proceedings.

Practical significance

This decision is unsatisfactory for brand owners who rely on an earlier CTM in order to prevent a third party from using and registering as a CTM a later identical or similar sign. The Board of Appeal's decision illustrates how it is possible for a trade mark proprietor to enforce its CTM and obtain from a CTM court a pan-European injunction against a third party infringer but leaves that same proprietor powerless if OHIM does not consider itself bound by that decision and proceeds to register as a CTM the ‘infringing’ sign. The relevant infringer is left with a registered CTM which it cannot use and which presumably will be vulnerable to revocation after a period of five years of non-use due to the effect of the injunction.

The one positive aspect of this decision is that OHIM has at least a duty to consider and set out the inferences that it draws from such decisions of CTM courts. However, this case constitutes an excellent example of how OHIM and national courts can take very different approaches to the same factual circumstances and essentially the same legal tests that apply to infringement and opposition scenarios. Unfortunately, there is no guarantee that parties to parallel infringement and opposition proceedings will not be subject to similar conflicting decisions in the future.