References to the Court of Justice of the European Union: 2016

Question 1

Case: C-681/16

Accepted Answer

The Landgericht Düsseldorf requests a preliminary ruling from the Court of Justice of the European Union on the following questions:

Can the holder of a supplementary protection certificate that was issued to it for the Federal Republic of Germany rely on the specific mechanism to prevent the importation of products into the Federal Republic of Germany from the accession States the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Slovenia, Slovakia, Bulgaria, Romania … and Croatia (Annex IV to the 2003 Act of Accession, OJ 2003 L 236, p. 797, as amended in OJ 2004 L 126, p. 4, for Estonia, Latvia, Lithuania, Poland, Slovenia, Hungary, Slovakia, the Czech Republic; Part I of Annex V to the 2005 Act of Accession, OJ 2005 L 157, p. 268, for Romania and Bulgaria; Annex IV to the 2011 Act of Accession, OJ 2012 L 112, p. 60, for Croatia) if the supplementary protection certificate was applied for in the Federal Republic of Germany at a point in time at which the laws for obtaining such a supplementary protection certificate already existed in the respective accession States but could not be applied for by, or issued to, the holder of the supplementary protection certificate issued for the Federal Republic of Germany because the basic patent required for the issuing of the supplementary protection certificate did not exist in the accession State?
Does it make any difference to the answer to Question 1 if it was merely at the time of the filing of the application for the basic patent issued for the Federal Republic of Germany that such protection through a basic patent could not be obtained in the accession State but, by the time of publication of the application on which the basic patent issued for the Federal Republic of Germany was based, it could be so obtained?
Can the holder of a supplementary protection certificate that was issued to it for the Federal Republic of Germany rely on the specific mechanism to prevent the importation of products into the Federal Republic of Germany from the accession States the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Slovenia, Slovakia, Bulgaria, Romania… and Croatia if those products are imported after the expiry of the term of the supplementary protection certificate stipulated in the original decision to grant the patent but before the expiry of the six-month extension of the term of the supplementary protection certificate that was granted to it on the basis of Regulation (EC) No 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use and amending Regulation (EEC) No 1768/92, Directive 2001/20/EC, Directive 2001/83/EC and Regulation (EC) No 726/2004?
Does it make any difference to the answer to Question 3, in the case of Croatia, that, on account of the accession of Croatia in 2013, the specific mechanism did not come into force until after the entry into force of Regulation (EC) No 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use and amending Regulation (EEC) No 1768/92, Directive 2001/20/EC, Directive 2001/83/EC and Regulation (EC) No 726/2004 on 26 January 2007 – unlike in the other Member States which acceded prior to 26 January 2007, namely the Czech Republic, Estonia, Latvia, Lithuania, Hungary, Poland, Slovenia, Slovakia, Bulgaria [and] Romania …?

Question 2

Case:C-644/16

Accepted Answer

The Hoge Raad will refer that question of interpretation, not as yet decided by the CJEU, to the CJEU for a preliminary ruling:

(a) Must Article 6 of the Enforcement Directive be interpreted as meaning that, when adopting a criterion for granting a claim for the production of exhibits, a distinction must be made according to whether the party from whom the exhibits are sought is an (alleged) infringer or a third party?

(b) If the answer to that question is in the affirmative, in what respect do those criteria then differ?
(a) If a defence is raised against a claim for the production of exhibits contending that the intellectual property right on the basis of which the exhibits are sought is void (or no longer exists), should the merits of that defence be assessed on the basis of the same criterion as that which applies to the question of the plausibility of the alleged infringement (assuming that the intellectual property right invoked actually exists)?

(b) If the answer to that question is in the negative, in what respect do the criteria differ?

(c) In answering questions 2(a) and 2(b), should a distinction be made according to whether the intellectual property right concerned was granted after its validity had been investigated (as in the case of a European patent), or whether it arose by operation of law (as in the case of copyright)?’

Question 3

Case:C-642/16

Accepted Answer

The following question on the interpretation of Article 13(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, 24.3.2009) is referred to the Court of Justice of the European Union for a preliminary ruling:

Must Article 13(2) of Regulation (EC) No 207/2009 be interpreted as meaning that the proprietor of the mark can oppose further commercialisation of a medical device imported from another Member State in its original internal and external packaging, to which the importer has affixed an additional external label, unless

it is established that reliance on trade-mark rights by the proprietor in order to oppose the marketing of the overstickered product under that trade mark would contribute to an artificial partitioning of the markets between Member States;
it is shown that the new labelling cannot adversely affect the original condition of the product inside the packaging
the packaging states clearly who overstickered the product and the name of the manufacturer
the presentation of the overstickered product is not such as to be liable to damage the reputation of the trade mark and of its proprietor; thus, the label must not be defective, of poor quality, or untidy; and
the importer gives notice to the trade mark proprietor before the overstickered product is placed on the market, and, on demand, provides him with a specimen of that product

Question 4

Case: C-567/16

Accepted Answer

The High Court of Justice, Chancery Division, Patents Court refers the following questions to the C1EU:

Is an End of Procedure Notice issued by the reference member state under Article 28(4) of European Parliament and Council Directive 2001l83/EC of 6 November 2001 on the Community code relating to medicinal products for human use before expiry of the basic patent to be treated as equivalent to a granted marketing authorisation for the purposes of Article 3(b) of European Parliament and Council Regulation 469/2009/EC of 6 May 2009 concerning the supplementary protection certificate for medicinal products (codified version) (the “SPC Regulation”), such that an applicant for an SPC in the Member State in question is entitled to apply for and be granted an SPC on the basis of the End of Procedure Notice?
If the answer to question (1) is no; in the circumstances in question 1, is the absence of a granted marketing authorisation in the Member State in question at the date of the application for an SPC in that member state an irregularity that can be cured under Article 10(3) of the SPC Regulation once the marketing authorisation has been granted?

Question 5

Case:C-492/16

Accepted Answer

The referring court requests a preliminary ruling from the Court of Justice and will await the Court’s response to the following questions:

Must Article 17(2) of Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products be interpreted as meaning that the ‘date of the first authorisation to place the product on the market in the Community’ is incorrect in an application for a supplementary protection certificate, within the meaning of that regulation and Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products, where that date was determined without taking account of the Court of Justice’s interpretation of the law in the judgment in Seattle Genetics (C-471/14), with the result that it is appropriate to rectify the date of expiry of the supplementary protection certificate even if the decision to grant that certificate was made prior to that judgment and the time limit for appealing against that decision has already expired?
Is the industrial property authority of a Member State which is entitled to grant a supplementary protection certificate required to rectify, of its own motion, the date of expiry of a supplementary protection certificate in order to ensure that that complies with the interpretation of the law set out in Case C-471/14?

Question 6

Case: C-435/16

Accepted Answer

The Bundesgerichtshof (Germany) refers the following question to the Court of Justice of the European Union for a preliminary ruling:

Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited to fixed shape parts, namely those parts whose shape is in principle immutably determined by the appearance of the product as a whole and cannot therefore be freely selected by the customer, such as rims for motor vehicles?
If Question 1 is answered in the negative: Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited only to the supply of products of an identical design, which thus correspond also in colour and size to the original products?
If Question 1 is answered in the negative: Does the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 apply in favour of the supplier of a product that fundamentally infringes the design at issue only if this supplier objectively ensures that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole?
If Question 3 is answered in the affirmative: Which measures must the supplier of a product that fundamentally infringes the design at issue take in order to objectively ensure that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole? Is it enough:

(a) that the supplier includes a note in the sales brochure to the effect that any sale takes place exclusively for repair purposes so as to restore the original appearance of the product as a whole; or

(b) is it necessary that the supplier make delivery conditional on the customer (traders and consumers) declaring in writing that the product supplied is to be used for repair purposes only?

Question 7

Case: C-433/16

Accepted Answer

The Corte suprema di cassazione refers the following questions to the Court of Justice of the European Union for a preliminary ruling:

Under Article 24 of Regulation No 44/2001, can an action to contest the jurisdiction of the national court seised that is brought before that court as a preliminary matter but in the alternative to other preliminary procedural objections and nevertheless before issues of substance are raised be interpreted as acceptance of the jurisdiction of that court?

Must the absence of provision in Article 82[(5)] of Regulation No 6/2002 for alternative jurisdictions to that of the defendant as stipulated in Article 82(1) of that regulation for cases relating to negative declarations be interpreted as implying the attribution of exclusive jurisdiction for such cases?

Is it also necessary, in order to resolve the question posed in paragraph 65 above, to take account of the interpretation of the rules on exclusive jurisdiction in Regulation No 44/2001, and in particular in Article 22, which provides for such jurisdiction, inter alia in proceedings concerned with the registration or validity of patents, trade marks and designs but not in cases regarding negative declarations, and in Article 24, which provides for the possibility that the defendant may accept a different jurisdiction, except where jurisdiction is derived from other provisions of the regulation, thereby establishing the jurisdiction of the court seised by the applicant?

Is the approach adopted by the Court of Justice in the judgment of 25 October 2012 in Folien Fischer and Fofitec, C-133/11, EU:C:2012:664, with regard to the applicability of Article 5(3) of Regulation No 44/2001 of a general and absolute nature applicable to every action for a negative declaration seeking to establish the absence of liability in tort, delict, or quasi-delict, including those for a declaration of non-infringement of Community designs, and hence in the present case is it the court referred to in Article 81 of Regulation No 6/2002 or that referred to in Article 5(3) of Regulation No 44/2001 that has jurisdiction, or may the applicant opt for one or other of the possible jurisdictions?

If actions for abuse of a dominant position and unfair competition are brought in the context of a case concerning Community designs with which they are connected, in that their admissibility presupposes prior admissibility of the application for a negative declaration, can they be heard together with that case by the same court in accordance with a broad interpretation of Article 28(3) of Regulation No 44/2001?

Do the two actions referred to in paragraph 68 above constitute a case of tort, delict or quasi-delict, and, if so, may they affect the applicability of Regulation No 44/2001 (Article 5(3)) or of Regulation No [6/2002] to the present case as regards jurisdiction?

Question 8

Case: C-425/16

Accepted Answer

The Oberster Gerichtshof (Austria) refers the following question to the Court of Justice of the European Union for a preliminary ruling pursuant to Article 267 TFEU:

May an action for infringement of an EU trade mark (Article 96(a) of Regulation (EC) No 207/2009, as amended by Regulation (EU) 2015/2424) be dismissed on the ground of an objection that the trademark application was filed in bad faith (Article 52(1)(b) of Regulation (EC) No 207/2009, as amended by Regulation (EU) 2015/2424) if, despite the defendant having brought a well-founded counterclaim for a declaration of invalidity of the EU trade mark (Article 99(1) of Regulation (EC) No 207/2009, as amended by Regulation (EU) 2015/2424), the court has not yet ruled on that counterclaim?
If the answer is in the negative: May the court dismiss an action for infringement on the ground of an objection that the trademark application was filed in bad faith, if the court at least simultaneously upholds the counterclaim for a declaration of invalidity, or must the court delay the decision on the action for infringement in any event until the decision on the counterclaim is res judicata?

Question 9

Case: C-397/16

Accepted Answer

The Corte d’appello di Milano, Sezione Prima Civile, Specializzata in materia di impresa (Civil Court, Milan, First Civil Division, Specialised Section for Business Law) refers the following questions to the Court of Justice of the European Union for a preliminary ruling:

Do (a) the principles of the free movement of goods and of the freedom to provide services within the internal market, (b) the principle of the effectiveness of EU competition law and of the liberalisation of the internal market, (c) the principles of effet utile and of the uniform application within the European Union of EU law and (d) the provisions of secondary EU law, such as Directive 98/71, and in particular Article 14 thereof, Article 1 of Regulation No 461/2010 and UNECE Regulation No. 124, preclude an interpretation of Article 110 of Regulation No 6/2002, which contains the repair clause, that excludes replica wheels that are aesthetically identical to original equipment wheels and have been approved on the basis of UNECE Regulation No. 124 from the definition of a ‘component part of a complex product’ (that complex product being a motor vehicle) for the purposes of the repair of that complex product and the restoration of its original appearance?
In the event that the first question is answered in the negative, do the rules on exclusive industrial rights in respect of registered designs, regard being had to the balancing of the interests referred to in the first question, preclude the application of the repair clause to replica complementary products that may be selected freely by the customer, on the basis that the repair clause is to be interpreted restrictively and may be relied upon only with respect to spare parts that come in one particular form only, that is to say, component parts the form of which has been determined in practically immutable fashion with respect to the external appearance of the complex product, to the exclusion of component parts that may be regarded as interchangeable and that may be applied freely, in accordance with the customer wishes?
In the event that the second question is answered in the negative, what steps must a manufacturer of replica wheels take in order to ensure the free movement of products the intended use of which is the repair of a complex product and the restoration of its original appearance?

Question 10

Case: C-395/16

Accepted Answer

The Oberlandesgericht Düsseldorf refers the following questions to the Court of Justice of the European Union for a preliminary ruling:

Does a technical function that precludes protection within the meaning of Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) also exist if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?
If the Court answers Question 1 in the affirmative:
From which point of view is it to be assessed whether the individual design features of a product have been chosen solely on the basis of considerations of functionality? Is an ‘objective observer’ required and, if so, how is such an observer to be defined?

Question 11

Case: C-381/16

Accepted Answer

The Tribunal Supremo (Spain) refers the following question to the Court of Justice of the European Union for a preliminary ruling:

Is the claim for the recovery of ownership of a Community trade mark on grounds other than those set out in Article 18 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark and, in particular, in accordance with the cases provided for in Article 2(2) of Spanish Law 17 of 7 December 2001 on Trade Marks (BOE No 294 of 8 December 2001), compatible with EU law and in particular with that regulation?

Question 12

Case: C-341/16

Accepted Answer

The Oberlandesgericht Düsseldorf refers the following question to the Court of Justice of the European Union for a preliminary ruling:

Does the notion of proceedings which are ‘concerned with the registration or validity of … trade marks’, within the meaning of Article 22.4 of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, also cover a claim, brought against the formal proprietor of a Benelux trade mark registered in the Benelux trade mark register, which seeks an order requiring that defendant to make a declaration to the Benelux trade mark office that she has no entitlement to the contested mark and that she waives registration as the proprietor of that mark?

Question 13

Case:C-291/16

Accepted Answer

Questions referred for a preliminary ruling

Is it compatible with Article 36 of the Treaty on the Functioning of the European Union and with Article 7(1) of Directive 2008/95/EC and Article 15(1) of Directive 2015/2436 for the proprietor of a trade mark in one or more Member States to prevent the parallel import or marketing of products coming from another Member State, bearing a trade mark which is identical or practically identical, owned by a third party, when the said proprietor has promoted a global trade mark image associated with the Member State from which the products that it intends to prohibit come?
Is it compatible with Article 36 of the Treaty on the Functioning of the European Union and with Article 7(1) of Directive 2008/95/EC and Article 15(1) of Directive 2015/2436 for a product to be sold under a trade mark, which is well known, within the EU, the registered proprietors maintaining a global trade mark image throughout the EEA which gives rise to confusion in the mind of an average consumer concerning the commercial origin of the product?
Is it compatible with Article 36 of the Treaty on the Functioning of the European Union and with Article 7(1) of Directive 2008/95/EC and Article 15(1) of Directive 2015/2436 for the proprietor of national trade marks which are identical or similar in various Member States to oppose the import into a Member State where it owns the trade mark of products, identified by a trade mark identical or similar to its own, coming from a Member State in which it is not the proprietor, when at least in another Member State where it is not the proprietor of the trade mark it has expressly or tacitly consented to the import of those same products?
Is it compatible with Article 7(1) of Directive 2008/95/EC and Article 15(1) of Directive 2015/2436 and with Article 36 of the Treaty on the Functioning of the European Union for the proprietor A of a trade mark X of a Member State to oppose the import of products identified by the said trade mark if those products come from another Member State where a trade mark identical to X (Y) is recorded as registered by another proprietor B which markets the same and: - both proprietors A and B maintain intense commercial and economic relations, although there is no strict dependency regarding the joint exploitation of trade mark X - both proprietors A and B maintain a co-ordinated trade mark strategy deliberately promoting vis-à-vis the relevant public an appearance or image of a single and global trade mark; or - both proprietors A and B maintain intense commercial and economic relations, although there is no strict dependency regarding the joint exploitation of the trade mark X and in addition they maintain a coordinated trade mark strategy deliberately promoting vis-à-vis the relevant public an appearance or image of a single and global trade mark?

Question 14

Case:C-231/16

Accepted Answer

The following question is referred to the CJEU:

Must the term ‘same cause of action’ in Article 109(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark be interpreted as applying to the maintenance and use of a worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, on account of which actions for infringement between the same parties have been brought before the courts of different Member States, one action being for infringement of an EU trade mark and the other being for infringement of a national trade mark?
Must the term ‘same cause of action’ in Article 109(1)(a) of Regulation No 207/2009 be interpreted as applying to the maintenance and use of worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, in each case – as regards the relevant domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, on account of which actions for infringement between the same parties have been brought before the courts of different Member States, one action being for infringement of an EU trade mark and the other being for infringement of a national trade mark?
Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that when a ‘court other than the court first seised’ of a Member State is seised of an ‘action for infringement’ of an EU trade mark through the maintenance of a worldwide, and therefore also EU-wide, identical online website under the same domain name, and claims have been put forward to it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States, it must decline jurisdiction under Article 109(1)(a) of Regulation No 207/2009 only for the territory of the other Member State in which a court had been ‘first’ seised of a claim for infringement of a national trade mark (which is identical to and covers identical goods as the EU trade mark asserted before the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, to the extent that both the marks themselves and the goods and services covered are identical, or, in such a situation, must the ‘court other than the court first seised’, to the extent that both the marks themselves and the goods and services covered are identical, decline jurisdiction with regard to all claims put forward before it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States and therefore in relation to EU-wide claims?
Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that when a ‘court other than the court first seised’ of a Member State is seised of an ‘action for infringement’ of an EU trade mark on account of the maintenance of worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names of ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, and claims have been put forward to it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States, it must decline jurisdiction under Article 109(1)(a) of Regulation No 207/2009 only for the territory of the other Member State in which a court was ‘first’ seised of a claim for infringement of a national trade mark (which is identical to and covers identical goods as the EU trade mark asserted before the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, to the extent that both the marks themselves and the goods and services covered are identical, or in such a situation must the ‘court other than the court first seised’, to the extent that the marks themselves and the goods and services covered are identical, decline jurisdiction with regard to all claims put before it under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to the acts of infringement committed or threatened within the territory of any of the Member States and therefore in relation to EU-wide claims?
Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that the withdrawal of an action –– brought before the ‘court other than the court first seised’ of a Member State, for infringement of an EU trade mark infringement through the maintenance of a worldwide, and therefore also an EU-wide, identical online internet presence under the same domain name, in which claims had initially been put forward under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States –– in relation to the territory of the other Member State in which a court was ‘first seised’ of a claim for infringement of a national trade mark (that is identical to and covers identical goods as an EU trade mark asserted at the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online internet presence under the same domain name, precludes a declining of jurisdiction by the ‘court other than the court first seised’ under Article 109(1)(a) of Regulation No 207/2009 to the extent that the marks themselves and the goods and services covered by the marks are identical?
Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that the withdrawal of an action –– brought before a ‘court other than the court first seised’ of a Member State, on account of infringement of an EU trade mark through the maintenance of worldwide, and therefore also EU-wide, identical online content of the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, with which claims had initially been made under Article 97(2) and Article 98(1)(a) of Regulation No 207/2009 in relation to acts of infringement committed or threatened within the territory of any of the Member States –– in relation to the territory of the other Member State in which a court was first seised of a claim for infringement of a national mark (that is identical to and covers identical goods as an EU trade mark asserted at the ‘court other than the court first seised’) through the maintenance and use of the same worldwide, and therefore also EU-wide, identical online content on the internet domain names ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’, each – as regards the relevant domain names of ‘facebook.com’ and/or ‘youtube.com’ and/or ‘twitter.com’ – under the same username, precludes a declining of jurisdiction by the ‘court other than the court first seised’ under Article 109(1)(a) of Regulation No 207/2009 to the extent that the marks themselves and the goods and services covered by the marks are identical?
Must Article 109(1)(a) of Regulation No 207/2009 be interpreted as meaning that it follows from the wording ‘where the trade marks concerned are identical and valid for identical goods or services’ that, in a situation where the marks are identical, the ‘court other than the court first seised’ is without jurisdiction only in so far as the EU trade mark and the earlier national trade mark are registered for the same goods and/or services, or is the ‘court other than the court first seised’ entirely without jurisdiction, even when the EU trade mark asserted before that court also protects additional goods and/or services that are not protected by the other national mark, for which the contested acts may be identical or similar?

Question 15

Case:C-163/16

Accepted Answer

The following question is referred to the CJEU:

Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive 2008/95/EC to approximate the laws of other Member States relating to Trade Marks limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties, such as their colour?

Question 16

Case:C-139/16

Accepted Answer

Questions referred for a preliminary ruling:

May the prohibitions in Article 3(1)(c) of Directive 2008/95 include the use of a sign referring to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality?
May a sign with these characteristics be regarded as a sign of geographical origin in so far as the product or service will always be concentrated in a specific physical area?

Question 17

Case:C-138/16

Accepted Answer

Questions referred for a preliminary ruling:

Are Article 3(1) or Article 5 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society and Article 11bis(1)(ii) of the Berne Convention for the Protection of Literary and Artistic Works, as revised in Stockholm/Paris in 1967/1971, to be interpreted as meaning that a rule according to which the transmission of broadcasts by ‘communal antenna installations’ such as those of the defendant in the main proceedings

a. does not constitute a new broadcast when no more than 500 participants are connected to the installation and/or

b. constitutes part of the original broadcast when it involves the simultaneous, full and unaltered transmission of broadcasts of the Österreichischer Rundfunk (Austrian Broadcasting Corporation) using services within the country (Austria), and these uses are also not covered by any other exclusive right of communication to the public at a distance within the meaning of Article 3(1) of Directive 2001/29/EC, and are therefore not subject to the author’s consent and are also not subject to a fee, is contrary to EU law or to the law of the Berne Convention as an international agreement which forms part of EU law?

2. [Staying of proceedings]

Question 18

Case:C-93/16

Accepted Answer

Questions referred for a preliminary ruling:

Concerning the dismissal of the infringement action based on Article 9(1)(b) CTMR, there are two grounds of appeal: (1) that the court did not compare the signs at issue from the point of view of the average European consumer but did so by adopting a test relating to the perception of only a minority of the relevant public: that of Irish and United Kingdom consumers; (2) the court misapplied the case-law relating to the peaceful coexistence of trade marks.
In terms of identifying the relevant consumer, it is an undisputed fact that as the trade mark is a Community trade mark, this means that: (1) the perception of the trade marks at issue which must be taken into account is that of the European consumer; (2) the relevant consumer of the goods covered by the appellant’s trade marks is the average European consumer; (3) the relevant territory is the territory of the European Union.
It is acknowledged that the KERRYGOLD and KERRYMAID trade marks coexist only in Ireland and the United Kingdom: ‘For historical, cultural and commercial reasons, the appellant acquiesced in the presence of the KERRYMAID trade mark in the aforementioned markets but it did so only in terms of the perception of the trade marks in question by the consumers of those two countries …’ ‘… the appellant did not at any time give the respondent reason to believe that it would tolerate the KERRYMAID brand being launched outside those territories’.
With regard to the conflict between the signs at issue, the appellant argues that the court applied the perception test taking account of the perception of a minority of the public to whom the products were directed: Irish and the United Kingdom consumers. It argues that, from the standpoint of other European Union consumers (particularly those who are not English speaking), the alleged differences referred to in the judgment under appeal are irrelevant when determining the similarity or otherwise of the signs at issue.
The reasoning on the peaceful coexistence of the trade marks at issue is contested [reiteration of the arguments made] … The court’s reasoning is disputed, the appellant submitting that the principle of unity of the Community trade mark means that the coexistence of trade marks in an EU Member State cannot be regarded as a determining factor which precludes the existence of a likelihood of confusion in the European Union as a whole; thus the coexistence of the trade marks in the United Kingdom and Ireland does not exclude the likelihood of confusion in the other EU countries.
[The application requests that] two questions be referred to the Court of Justice of the European Union for a preliminary ruling:
[Similar to the first question referred for a preliminary ruling in the operative part] …
[Third question referred in the operative part] … …

Question 19

Case:C-24/16 and C-25/16

Accepted Answer

The Oberlandesgericht Düsseldorf refers the following questions concerning the interpretation of EU law to the Court of Justice of the European Union for a preliminary ruling:

In connection with a trial to enforce claims under a Community design, can the court of a Member State whose jurisdiction with respect to a defendant is based solely on Article 79(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs in conjunction with Article 6(1) of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, on the basis that this defendant, which is domiciled in another Member State, supplied the defendant domiciled in the pertinent Member State with goods that may infringe intellectual property rights, adopt measures against the first mentioned defendant that are applicable throughout the EU and extend beyond the supply relationships on which jurisdiction is based?
Is Regulation No 6/2002, particularly Article 20(1)(c), to be interpreted as meaning that a third party may depict a Community design for commercial purposes if it intends to sell accessory items for the right holder’s goods corresponding to the Community design? If so, what criteria apply to this?
For the purposes of Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to noncontractual obligations, how is the place ‘in which the act of infringement was committed’ to be determined in cases in which the infringer

a. offers goods that infringe a Community design on a website and that website is also directed at Member States other than the one in which the person damaged by the infringement is domiciled, and/or

b. has goods that infringe a Community design shipped to a Member State other than the one in which it is domiciled?

Is Article 15(a) and (g) of Regulation No 864/2007 to be interpreted as meaning that the law determined in this manner is also applicable to participatory acts of other persons?

Case and subject	Parties	Legislation	Pre-hearing
C-681/16 A request for a preliminary ruling in a case which concerns supplementary protection certificates. Questions referred to the Court of Justice of the European Union	Pfizer Ireland Pharmaceuticals, Operations Support Group Orifarm GmbH	Regulation (EC) No 1901/2006 Regulation (EEC) No 1768/92 Directive 2001/20/EC Directive 2001/83/EC Regulation (EC) No 726/2004	Comments by 16 February 2017 The time for submitting written observations expires on 12 April 2017 (including extension of time on account of distance)
C-678/16 P European Trade Marks: appeal against the decision of the General Court in cases T-407/15.	European Union Intellectual Property Office (EUIPO) & Monster Energy Company	Article 8(1)(b) EUTMR Article 8(5) EUTMR	Comments by 24 May 2017 Deadline for UK to apply to intervene 19 June 2016
C-675/16 P European Trade Marks: appeal against the decision of the General Court in cases T-461/15.	European Union Intellectual Property Office (EUIPO) & Guccio Gucci SpA	Articles 8(1)(b) and 8(5) of Council Regulation (EC) No. 207/2009	Comments by 24 May 2017 Deadline for UK to apply to intervene 19 June 2016
C-674/16 P European Trade Marks: appeal against the decision of the General Court in cases T-753/15.	European Union Intellectual Property Office (EUIPO) & Guccio Gucci SpA	Articles 8(1)(b) and 8(5) of Council Regulation (EC) No. 207/2009	Comments by 24 May 2017 Deadline for UK to apply to intervene 19 June 2016
C-644/16 A request for a preliminary ruling in a case which concerns enforcement of intellectual property rights. Questions referred to the Court of Justice of the European Union	Sython BV Astellas Pharma Inc.	Article 392 Rv Article 843a Rv Article 1019a Rv	Comments by 13 February 2017 The time for submitting written observations expires on 10 April 2017 (including extension of time on account of distance)
C-642/16 A request for a preliminary ruling in a case which concerns the affixing of additional labels by an importer. Questions referred to the Court of Justice of the European Union	Junek Europ-Vertrieb GmbH Lohmann & Rauscher International GmbH & Co. KG	Article 13(2) of Council Regulation (EC) No 207/2009	Comments by 9 February 2017 The time for submitting written observations expires on 5 April 2017 (including extension of time on account of distance)
C-611/16 P Appeal against the judgement of the General Court in Case T-471/13.	Xellia Pharmaceuticals ApS, Alpharma, LLC, formerly Zoetis Products LLC European Commission	Article 23(3) of Regulation 1/2003	Comments by 15 February 2017 Our time for making the formal application to intervene expires on 10 March 2017. This date includes the extension on account of distance
C-588/16 P Appeal against the judgement of the General Court in Case T-469/13	Generics (UK) Ltd European Commission	Article 101(3) TFEU Article 101(1) TFEU Article 23(2) of Council Regulation (EC)	Comments by 15 February 2017 Since the UK did not take part in the proceedings before the General Court, an application to intervene in the appeal proceedings may be made before the expiry of one month from the Official Journal entry. Accordingly our time for applying to intervene expires on 10 March 2017
C-586/16 P Appeal against the judgement of the General Court in Case T-460/13	Sun Pharmaceutical Industries Ltd and Ranbaxy (Uk) Ltd European Commission	Article 101(1) TFEU and Article 53 EEA	Comments by 15 February 2017 Since the UK did not take part in the proceedings before the General Court, an application to intervene in the appeal proceedings may be made before the expiry of one month from the Official Journal entry. Accordingly our time for applying to intervene expires on 10 March 2017
C-567/16 A request for a preliminary ruling in a case which concerns the supplementary protection certificate for medicinal products for human use Questions referred to the Court of Justice of the European Union	Merck Sharp and Dohme Corporation	Article 28(4) of European Parliament and Council Directive 2001l83/EC Article 3(b) of European Parliament and Council Regulation 469/2009/EC	Comments by 6 January 2017 Deadline for UK to lodge observations with the CJ 22 February 2017
C-492/16 A request for a preliminary ruling in a case which concerns the correction of a supplementary protection certificate. Questions referred to the Court of Justice of the European Union	Incyte Corporation & Szellemi Tulajdon Nemzeti Hivatala (National Intellectual Property Office)	Article 17(2) of Regulation (EC) No 1610/96 Regulation (EC) No 469/2009	Comments by 25 January 2017 The time for submitting written observations expires on 21 March 2017
C-488/16P European Trade Marks: appeal against the decision of the General Court in cases T-167/15	Bundesverband Souvenir - Geschenke - Ehrenpreise e.V. v EUIPO	Articles 7(1)(c), 7(1)(b) and 52(1)(b) of Council Regulation (EC) No 207/2009	Comments by 25 January 2017 Deadline for UK to apply to intervene 02 February 2017
C-478/16P European Trade Marks: appeal against the decision of the General Court in cases T-567/14	European Union Intellectual Property Office (EUIPO) v ‘Group’ OOD, Kosta Iliev	Article 76(2) of Regulation No 207/2009 Rule 50(1) of Regulation No 2868/95 Article 8(4) of Regulation No 207/ 2009 Rule 19(2)(d) of Regulation No 2868/95	Comments by 29 March 2017 Deadline for UK to apply to intervene 24 April 2017
C-435/16 A request for a preliminary ruling in a case which concerns Community Designs and replacement parts exception Questions referred to the Court of Justice of the European Union	Acacia Srl, Rolando D’Amato & Dr.Ing. h.c. F. Porsche AG	Article 110(1) of Regulation (EC) No 6/2002	Comments by 28 September 2016 Deadline for UK to lodge observations with the CJ 24 November 2016
C-433/16 A request for a preliminary ruling in a case which concerns jurisdiction framework in matters concerning intellectual property, in particular in negative declaration matters Questions referred to the Court of Justice of the European Union	Bayerische Motoren Werke AG & Acacia S.r.l.	Article 5(3), 22, 24 and 28(3) of Regulation No 44/2001 & Article 81 and 82[(5)] of Regulation No 6/200	Comments by 28 September 2016 Deadline for UK to lodge observations with the CJ 24 November 2016
C-425/16 A request for a preliminary ruling in a case which concerns an action for infringement of an EU trade mark where there is an objection that the trade mark application was filed in bad faith and a counterclaim for a declaration of invalidity where the court has not yet ruled. Questions referred to the Court of Justice of the European Union	Hansruedi Raimund & Michaela Aigner	Article 96(a), Article 52(1)(b) and Article 99(1) of Regulation (EC) No 207/2009, as amended by Regulation (EU) 2015/2424	Comments by 21 September 2016 Deadline for UK to lodge observations with the CJ 15 November 2016
C-418/16 European Trade Marks: appeal against the decision of the General Court in cases T-322/14 & T-325/14	Mobile.de GmbH (formerly Mobile.International) v EUIPO	Article 57(2), 64(1) & 76(2)of Regulation (EC) No 207/2009 & Rules 22(2) and 40(6) of Regulation (EC) No 2868/95	Comments by 30 November 2016 Deadline for UK to apply to intervene 27 December 2016
C-417/16 European Trade Marks: appeal against the decision of the General Court in case T-806/14	August Storck KG v EUIPO	Article 7(1)(b) of Regulation No. 207/2009	Comments by 7 December 2016 Deadline for UK to apply to intervene 2 January 2017
C-397/16 A request for a preliminary ruling in a case which concerns replica wheels in the context of free movement of goods and services and registered designs. Questions referred to the Court of Justice of the European Union	Acacia Srl & Pneusgarda Srl and Audi AG	Article 110(1) of Council Regulation (EC) No 6/2002	Comments by 15 September 2016 Deadline for UK to lodge observations with the CJ 9 November 2016
C-395/16 A request for a preliminary ruling in a case which concerns the technical function of Community designs. Questions referred to the Court of Justice of the European Union	DOCERAM GmbH & CeramTec GmbH	Article 8(1) of Council Regulation (EC) No 6/2002	Comments by 1 September 2016 Deadline for UK to lodge observations with the CJ 26 October 2016
C-386/16P European Trade Marks: appeal against the decision of the General Court in cases T-749/14	BSH Hausgeräte GmbH, anciennement BSH Bosch und Siemens Hausgeräte GmbH v European Union Intellectual Property Office (EUIPO)	Article 7(1)(b) and 7(3) of Regulation No 207/2009 Articles 58 to 64 of Regulation No 207/2009	Comments by 29 March 2017 Deadline for UK to apply to intervene 24 April 2017
C-381/16 A request for a preliminary ruling in a case which concerns an action for the recovery of ownership of a trademark. Questions referred to the Court of Justice of the European Union	Esteban Torras Ferrazzuolo & Benjumea Bravo de Laguna	Article 18 of Council Regulation (EC) No 207/2009	Comments by 25 August 2016 Deadline for UK to lodge observations with the CJ 21 October 2016
C-341/16 A request for a preliminary ruling in a reference from a German court concerning the ownership of a registered trade mark. Questions referred to the Court of Justice of the European Union	Hanssen Beleggingen	Article 22.4 of Regulation 44/2001	Comments by 3 August 2016 Deadline for UK to lodge observations with the CJ 30 September 2016
C-291/16 A request for a preliminary ruling in a case which concerns the exhaustion of the trademark “Schweppes”. The case is a challenge against Spanish importers of UK manufactured Schweppes tonic water, where the trademark “Schweppes” is owned by different corporate entities in Spain and in the UK. Questions referred to the Court of Justice of the European Union	Schweppes	Article 7(1) and Article 36 of Directive 2008/95/EC, and Article 15(1) of Directive 2015/2436	Comments by 21 July 2016 Deadline for UK to lodge observations with the CJ 15 September 2016
C-231/16 A request for a preliminary ruling in a case which concerns the jurisdiction of the infringement of a number of UK-registered and international trade marks containing the word MERCK Questions referred to the Court of Justice of the European Union	Merck	Regulation No 207/2009	Comments by 15 June 2016 Deadline for UK to lodge observations with the CJ 11 August 2016
C-182/16 P European Trade Marks: appeal against the decision of the General Court in case T-247/14	Meica Ammerländische Fleiscwarenfabrik Fritz Meinen Gmbh & Co. KG	Article 8 (1) (b) of Council Regulation No. 207/2009 (1) on the Community trade mark and Art. 296 (2) TFEU	Comments by 1 September 2016 Deadline for UK to apply to intervene 26 September 2016
C-163/16 A request for a preliminary ruling in a case which concerns a reference from the Netherlands regarding a dispute between shoe makers and whether, by imitating the red soles of Louboutin’s shoes, an infringement of a registered trade mark has occurred Questions referred to the Court of Justice of the European Union	Louboutin et Christian Louboutin	Article 3(1)(e)(iii) of Directive 2008/95/EC	Comments by 14 June 2016 Deadline for UK to lodge observations with the CJ 10 August 2016
C-139/16 A Spanish preliminary reference regarding the criteria for determining whether a sign constitutes an indication of geographic origin (and hence what signs are incapable of registration or liable to be declared invalid under Article 3(1)(c) of Directive 2008/95 Questions referred to the Court of Justice of the European Union	Moreno Marin E.A.	Article 3(1)(c) of Directive 2008/95	Comments by 25 April 2016 Deadline for UK to lodge observations with the CJ 21 June 2016
C-138/16 A request for a preliminary ruling from Austria regarding the interpretation of Articles 3(1) and 5 of Directive 2001/29/EC on the harmonisation of certain aspects of copyright etc (“the Directive”). Questions referred to the Court of Justice of the European Union	AKM	Articles 3(1) and 5 of Directive 2001/29/EC	Comments by 3 May 2016 Deadline for UK to lodge observations with the CJ 29 June 2016
C-94/16 P European Trade Marks: appeal against the decision of the General Court in case T-186/12	LTJ Diffusion v EUIPO	Article 76, 41 and 42 of Regulation No. 207/2009 and Rule 6(4) of Regulation No. 2868/95	Comments by 21 September 2016 Deadline for UK to apply to intervene 17 October 2016
C-93/16 A preliminary reference on the need for likelihood of confusion under Art. 9(1)(b) in Regulation 207/2009 Questions referred to the Court of Justice of the European Union	The Irish Dairy Board	Art. 9(1)(b) in Regulation 207/2009 on the Community trade mark	Comments by 31 March 2016 Deadline for UK to lodge observations with the CJ 27 May 2016
C-86/16 P European Trade Marks: appeal against the decision of the General Court in case T-522/13	Kenzo Tsujimoto v EUIPO	Article 8(5) of Council Regulation No. 207/2009 on the Community trade mark	Comments by 28 September 2016 Deadline for UK to apply to intervene 24 October 2016
C-85/16 P European Trade Marks: appeal against the decision of the General Court in case T-414/13	Kenzo Tsujimoto v EUIPO	Article 8(5) of Council Regulation No. 207/2009 on the Community trade mark	Comments by 28 September 2016 Deadline for UK to apply to intervene 24 October 2016
C-84/16P An appeal against the judgment in case T-525/14, on the grounds that the General Court erred in its assessment of the distinctiveness of the contested application, and was based on a distortion of the facts.	COMPAGNIE GÉNÉRALE DES ÉTABLISSEMENTS MICHELIN v EUIPO	Article 41 of Regulation No 207/2009 on the Community Trade Mark	Comments by 29 June 2016 Deadline for UK to lodge observations with the CJ 25 July 2016
C-71/16P An appeal against the decision of the General Court in case T-354/14 concerning an objection brought by the appellant against an application for a Community Trade Mark	Comercializadora Eloro v OHIM	Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark	Comments by 15 June 2016 Deadline for UK to lodge observations with the CJ 11 July 2016
C-56/16P An appeal to the Court of Justice against the judgment of the General Court in case T-659/14 on the grounds that the General Court infringed Article 53(1)(c) of Regulation (EC) No. 207/2009	OHIM v Instituto Dos Vinhos Do Douro E Do Porto	Article 53(1)(c) of Regulation (EC) No. 207/2009, in conjunction with Articles 8(4) and 53(2)(d) of that same regulation	Comments by 2 June 2016 Deadline for UK to lodge observations with the CJ 27 June 2016
C-24/16 and C-25/16 A request for a preliminary ruling in joined cases which concern the selling of accessories to the Wii games console that allegedly infringe intellectual property rights by one a company domiciled in France and another in Germany Questions referred to the Court of Justice of the European Union	NINTENDO and others	Article 79(1) of Council Regulation (EC) No. 6/2002 on Community designs, in conjunction with Article 6(1) of Council Regulation (EC) No. 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters	Comments by 3 March 2016 Deadline for UK to lodge observations with the CJ 28 April 2016

References to the Court of Justice of the European Union: 2016

Table of cases

Case: C-681/16

Case:C-644/16

Case:C-642/16

Case: C-567/16

Case:C-492/16

Case: C-435/16

Case: C-433/16

Case: C-425/16

Case: C-397/16

Case: C-395/16

Case: C-381/16

Case: C-341/16

Case:C-291/16

Case:C-231/16

Case:C-163/16

Case:C-139/16

Case:C-138/16

Case:C-93/16

Case:C-24/16 and C-25/16

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Table of cases

Case: C-681/16

Case:C-644/16

Case:C-642/16

Case: C-567/16

Case:C-492/16

Case: C-435/16

Case: C-433/16

Case: C-425/16

Case: C-397/16

Case: C-395/16

Case: C-381/16

Case: C-341/16

Case:C-291/16

Case:C-231/16

Case:C-163/16

Case:C-139/16

Case:C-138/16

Case:C-93/16

Case:C-24/16 and C-25/16

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