Notice

References to the Court of Justice of the European Union: 2021

Updated 31 January 2022

Table of cases

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Cases are sorted numerically.

Case and subject	Parties	Legislation	Pre-hearing
C-290/21 Copyright Questions referred to the Court of Justice of the European Union	AKM v Canal+ Luxembourg Sàrl	Article 1(2)(b) of Council Directive 93/83/EEC of 27 September 1993	Comments by 28 June 2021 Deadline for UK to lodge observations with the CJEU 22 September 2021
C-263/21 Copyright Request for preliminary ruling pursuant to Article 98(1) of the Rules of Procedure of the Court of Justice Questions referred to the Court of Justice of the European Union	AMETIC v Administración General del Estado, EGEDA, ADEPI, AIE, AISGE, Digital One-Stop Shop, DAMA, CEDRO, AGEDI, SGAE	Article 98(1) of the Rules of Procedure of the Court of Justice	Comments by 21 June 2021 Deadline for UK to lodge observations with the CJEU 15 September 2021
C-256/21 Trade Marks request for a preliminary ruling pursuant to Article 98(1) of the Rules of Procedure of the Court of Justice Questions referred to the Court of Justice of the European Union	KP v TV, Gemeinde Bodman-Ludwigshafen	Regulation (EU) 2017/1001 of the European Parliament and of the Council on the EU trade mark, Articles 59, 60, 124, 127-129, 133 (in particular: Article 124 and 128)	Comments by 21 June 2021 Deadline for UK to lodge observations with the CJEU 15 September 2021
C-197/21 Trademarks – concerns the right of a company that refills and distributes CO2 cylinders put on the market in a Member State by the trade mark proprietor Questions referred to the Court of Justice of the European Union	Soda-Club (CO2) et SodaStream International	Article 13(2) of Council Regulation EC)	Comments by 2 June 2021 Deadline for UK to lodge observations with the CJEU 27 August 2021
C-183/21 Request for preliminary ruling pursuant to Article 98(1) of the Rules of Procedure of the Court of Justice Questions referred to the Court of Justice of the European Union	Maxxus Group GmbH & Co. KG v Globus Holding GmbH & Co. KG	Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (‘Trade Mark Directive’), in particular Articles 16, 17, 19, 44 and 46	Comments by 24 May 2021 Deadline for UK to lodge observations with the CJEU 18 August 2021
C-182/21 - plea of abuse of a dominant position to dismiss a patent infringement action for a prohibitive injunction brought by the proprietor of a patent essential to a standard established by a standardisation body - clarification Questions referred to the Court of Justice of the European Union	Nokia Technologies Oy v Daimler AG	Article 267 TFEU	Comments by 18 May 2021 Deadline for UK to lodge observations with the CJEU 12 August 2021
C-175/21 Article 36 TFEU and Article 15(1) of Regulation (EU) 2017/1001 on the European Union trade mark Questions referred to the Court of Justice of the European Union	Harman International Industries, Inc v AB SA	Article 36 TFEU and Article 15(1) of Regulation (EU) 2017/1001	Comments by 19 May 2021 Deadline for UK to lodge observations with the CJEU 13 August 2021
C-148/21 Trade Marks Regulation 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark Questions referred to the Court of Justice of the European Union	Louboutin v Amazon	Regulation 2017/1001	Comments by 18 May 2021 Deadline for UK to lodge observations with the CJEU 12 August 2021
C-112/21 Request for preliminary ruling on ‘earlier right’ of a third party as referred to in Article 6(2) of the repealed Directive 2008/95/EC Questions referred to the Court of Justice of the European Union	X BV v Classic Coach Company vof	Article 6(2) of the repealed Directive 2008/95/EC	Comments by 12 April 2021 Deadline for UK to lodge observations with the CJEU 7 July 2021
C-62/21 request for a preliminary ruling pursuant to Article 98(1) of the Rules of Procedure of the Court of Justice	Leinfelder Uhren München GmbH & Co. KG v E. Leinfelder GmbH TL SW WL	- Article 56(1)(a) of Regulation (EC) No 207/2009 - Article 63(1)(a) of Regulation (EU) 2017/1001	Comments by 1 April 2021 Deadline for UK to lodge observations with the CJEU 25 June 2021
C-44/21 Patent request for preliminary ruling on question on the interpretation of Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (‘Directive 2004/48/EC’) is referred to the Court of Justice of the European Union for a preliminary ruling under Article 267 TFEU:	Phoenix Contact GmbH & Co. KG v HARTING Deutschland GmbH & Co. KG Harting Electric GmbH & Co. KG	Article 9(1) of Directive 2004/48/EC	Comments by 24 March 2021 Deadline for UK to lodge observations with the CJEU 18 June 2021

Case: C-290/21

1. Is Article 1(2)(b) of Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (OJ 1993 L 248, p.15) to be interpreted as meaning that not only the broadcasting organisation, but also a satellite package provider intervening in the indivisible and single act of broadcasting, carries out an act of use – which in any case requires consent – solely in the State where, under the control and responsibility of the broadcasting organisation, the programme-carrying signals are introduced into an uninterrupted chain of communication leading to the satellite and down towards the earth, with the consequence that the intervention of the satellite package provider in the act of broadcasting cannot lead to an infringement of copyright in the receiving State?

2. If Question 1 is answered in the negative:
Is the concept of ‘communication to the public’ in Article 1(2)(a) and (c) of Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (OJ 1993 L 248, p.15) and in Article 3(1) 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 (OJ 2001 L 167, p.10) to be interpreted as meaning that the satellite package provider, which intervenes as another operator during a communication to the public by satellite, bundles several encrypted high definition signals of free-to-air and pay-TV programmes of various broadcasting organisations into a package of its own composition and offers the independent audiovisual product created in this way to its customers in return for payment, requires separate authorisation from the right holders concerned even in respect of the protected content in the free-to-air TV programmes contained in the package of programmes, although in this respect it is merely providing its customers with access to works which are already freely accessible - albeit in poorer standard definition quality - to everyone in the broadcasting area?

Case: C-263/21

Questions referred for a preliminary ruling

1. Is the form of composition of the legal person provided for in paragraph 10 of the new Article 25 of the Ley de Propiedad Intelectual (Law on Intellectual Property) compatible with Directive 2001/29/EC or, more generally, with the general principles of EU law?

2. Is it compatible with Directive 2001/29/EC or with the general principles of EU law for national legislation to confer on the aforementioned legal person powers to request information, including accounting information, from those applying for a certificate of exemption from the obligation to pay compensation for private copying?

Case: C-256/21

Question referred for a preliminary ruling

Must Article 124(d) and Article 128 of Regulation 2017/1001 be interpreted as meaning that the EU trade mark court has jurisdiction to rule on the invalidity of an EU trade mark asserted by a counterclaim within the meaning of Article 128 of Regulation 2017/1001 even after the action for infringement based on that EU trade mark for the purposes of Article 124(a) has been validly withdrawn?

Case: C-197/21

After affording the parties the opportunity to comment on the content of the request for a preliminary ruling, the Korkein oikeus (Supreme Court) has decided to stay the proceedings and to refer the following questions to the Court of Justice of the European Union for a preliminary ruling:

1. Do the so-called Bristol-Myers Squibb criteria developed in the Court of Justice’s case-law on repackaging and relabelling in cases of parallel imports, REQUEST FOR A PRELIMINARY RULING OF 9 March 2021 – CASE C-197/21 10 and in particular the so-called condition of necessity, also apply in the case of repackaging [Or. 18] or relabelling of goods, which had been put on the market in a Member State by the trade mark proprietor or with its consent, for the purposes of resale in the same Member State?

2. Where the trade mark proprietor has affixed its trade mark to the cylinder, both on the label and engraved on the neck of the cylinder, when putting a cylinder containing carbon dioxide on the market, do the Bristol-Myers Squibb criteria referred to above, and in particular the so-called condition of necessity, also apply when a third party refills the cylinder with carbon dioxide for the purposes of resale, removes the original label and replaces it with a label bearing that third party’s own trade mark, while at the same time the trade mark of the person that put the cylinder on the market continues to be visible in the engraving on the neck of the cylinder?

3. In the situation described above, can the view be taken that the removal and replacement of the label bearing the trade mark jeopardises, in principle, the function of the trade mark as a guarantee of the origin of the cylinder, or is it of significance, with regard to the applicability of the conditions for repackaging and relabelling, that * it is to be assumed that the target public will perceive the label as referring exclusively to the origin of the carbon dioxide (and thus to the company that refills the cylinder); or * it is to be assumed that the target public will perceive the label as also referring, at least in part, to the origin of the cylinder? [Or. 19]

4. If the removal and replacement of the label on CO2 cylinders is to be assessed on the basis of the condition of necessity, can the fact that the labels affixed to the cylinders put on the market by the trade mark proprietor have been accidentally damaged or become detached or have been removed and replaced by a previous refilling company constitute a [Or. 20] circumstance on the basis of which the replacement of the labels by a label of the refilling company, a process regularly carried out by the latter, is to be regarded as being necessary for putting the refilled cylinders on the market?

Case: C-183/21

Is EU law, in particular with regard to the Trade Mark Directive(s), that is to say, Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ L 299, 8.11.2008, p.25), in particular in Article 12, and Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 16), in particular in Articles 16, 17 and 19, to be interpreted as meaning that the effet utile of those provisions prohibits an interpretation of national procedural law which

1. Imposes on the applicant in civil proceedings for cancellation of a national registered trade mark on grounds of revocation for non-use a burden of raising and presenting an issue, as distinguished from the burden of proof; and

2. Requires the applicant, in the context of that burden of raising and presenting an issue,

(a) to make, in such proceedings, substantiated submissions regarding the defendant’s non-use of the trade mark, to the extent that it is possible for the applicant to do so; and

(b) to carry out, for that purpose, its own research into the market, in a manner which is appropriate to the request for cancellation and to the specific nature of the trade mark concerned.

Case: C-182/21

A. Is there an obligation to license suppliers on a priority basis?

1. Can an undertaking at a downstream stage in the economic process rely on the plea of abuse of a dominant position within the meaning of Article 102 TFEU to dismiss a patent infringement action for a prohibitive injunction brought by the proprietor of a patent essential to a standard established by a standardisation body (‘SEP’) who has irrevocably undertaken to that body to grant a licence to any third party on FRAND terms, where the standard for which the patent at issue is essential, or parts thereof, are already implemented in an upstream product procured by the defendant in the patent infringement action, whose suppliers which are willing to obtain a licence are refused, by the patent proprietor, their own unrestricted licence for all [Or. 4] types of use relevant under patent law on FRAND terms in respect of products implementing the standard?

(a) Is this the case in particular if it is customary practice in the relevant industry of the final product distributor for the intellectual property right situation in respect of the patents used by the supplier part to be clarified by way of licensing through the suppliers?

(b) Is there licensing priority for suppliers at every stage of the supply chain or only for the supplier immediately upstream of the distributor of the final product at the end of the value chain? Do customary trading practices also play a decisive role in that regard?

2. Does the prohibition of abuse under antitrust law require that the supplier be granted its own, unrestricted licence for all types of use relevant under patent law on FRAND terms for products implementing the standard in the sense that the end distributors (and, where relevant, the upstream customers) in turn no longer require their own, separate licence from the SEP holder in order to avoid patent infringement in the case of use of the supplier part concerned in accordance with its intended purpose?

3. If Question 1 is answered in the affirmative: Does Article 102 TFEU lay down specific qualitative, quantitative and/or other requirements for the criteria according to which the proprietor of a standard-essential patent decides the potential patent infringers at different levels of the same production and value chain against which it is to bring an action for a prohibitory injunction?

B. More precise clarification of the requirements established by the decision of the Court of Justice in the Huawei v ZTE case (judgment of 16 July 2015, C-170/13):

1. Irrespective of the fact that the [Or. 5] obligations to act (notice of infringement, licensing request, FRAND licence offer; licence offer to the supplier to be licensed on a priority basis) to be reciprocally complied with by the SEP holder and the SEP user must be discharged prior to any litigation, is it possible for obligations to act not fulfilled prior to any litigation to be discharged subsequently in the course of court proceedings in a manner that preserves the rights of the party concerned?

2. Can a meaningful licensing request by the patent user be assumed only if, on the basis of a comprehensive assessment of all the circumstances surrounding the matter, it is clearly and unequivocally apparent that the SEP user is willing and prepared to enter into a licensing agreement with the SEP holder on FRAND terms, irrespective of what form such FRAND terms (which, in the absence of a licence offer drawn up at that time, are not at all foreseeable yet) may take?

(a) Is it generally the case that an infringer that remains silent on a notice of infringement for several months thereby indicates that it is not interested in obtaining a licence, such that – despite the existence of a licence request expressed orally – there is no such request, with the consequence that the SEP holder’s action for a prohibitory injunction must be allowed?

(b) Can a lack of a licence request be inferred from licence terms presented by the SEP user by way of a counter-offer, with the result that the action for a prohibitory injunction brought by the SEP holder is subsequently allowed without first assessing whether the SEP holder’s own licence offer (which preceded the SEP user’s counter-offer) complies with FRAND terms in the first place?

(c) Is such an inference precluded in any event if the licence terms of the counter-offer from which a lack of a licence request is to be inferred are terms in respect of which it is neither manifestly apparent nor established at the highest judicial level that they are incompatible with FRAND terms? [Or. 6]

Case: C-175/21

Must the second sentence of Article 36 TFEU, read in conjunction with Article 15(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, and in conjunction with the second sentence of Article 19(1) of the Treaty on European Union, be interpreted as precluding the practice of the national courts of the Member States, which is that the courts:

• when upholding claims by right holders to prohibit the importation, putting on the market, offering, advertising of goods bearing the EU trade mark, to order their withdrawal from the market or to order their destruction;
• when ruling, in proceedings to secure claims, on the seizure of goods bearing the EU trade mark, refer in their rulings to ‘goods which have not been put on the market within the European Economic Area by the right holder or with his consent’, with the result that it is left to the enforcement authority, in view of the general wording of the ruling, to determine which items bearing the EU trade mark are subject to the injunctions and prohibitions granted (that is to say, which items have not been put on the market within the European Economic Area by the right holder or with his consent), while the possibility of challenging the aforementioned findings of the enforcement authority before a court in declaratory proceedings is excluded or limited by the nature of the legal remedies available to the defendant in proceedings to secure claims and in enforcement proceedings?

Case: C-148/21

1. Must Article 9(2) of Regulation 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark be interpreted as meaning that the use of a sign identical with a trade mark in an advertisement displayed on a website is, in principle, attributable to its operator if, in the perception of a reasonably well informed and reasonably observant internet user, that operator has played an active part in the preparation of that advertisement or if that advertisement may be perceived by such an internet user as forming part of that operator’s own commercial communication?

Will such perception be influenced:

• by the fact that that operator is a well-known distributor of a wide range of goods, including goods in the category of those featured in the advertisement; or
• by the fact that the advertisement thus displayed presents a heading in which the service mark of that operator is reproduced, that mark being well known as a distributor’s trade mark; or
• furthermore, by the fact that, as well as displaying that advertisement, that operator offers services traditionally offered by distributors of goods in the same category as that to which the goods featured in the advertisement belong?

2. Must Article 9(2) of Regulation 2017/1001 on the European Union trade mark be interpreted as meaning that the shipment, in the course of trade and without the consent of the proprietor of a trade mark, to the final consumer of goods bearing a sign identical with the mark constitutes a use attributable to the shipper only if the shipper has actual knowledge that that sign has been affixed to those goods?

Is such a shipper the user of the sign concerned if the shipper itself or an economically linked entity has informed the final consumer that it will undertake that shipment after it or an economically linked entity has stocked the goods for that purpose? Is such a shipper the user of the sign concerned if the shipper itself or an economically linked entity has previously made an active contribution to the display, in the course of trade, of an advertisement for the goods bearing that sign or has taken the final consumer’s order on the basis of that advertisement?

Case: C-112/21

1. For the purposes of determining whether there is an ‘earlier right’ of a third party as referred to in Article 6(2) of the repealed Directive 2008/95/EC
   
   a) is it sufficient that, prior to the filing of the trade mark, that third party had made use in the course of trade of a right which is recognised by the laws of the Member State in question; or
   
   b) is there a requirement that that third party, on the basis of that earlier right, under the applicable national legislation, is entitled to prohibit the use of the trade mark by the trade mark holder?

2. In answering Question 1, is it also relevant whether the trade mark holder has an even earlier right (recognised by the laws of the Member State in question) in relation to the sign registered as a trade mark and, if so, is it relevant whether the trade mark holder may, on the basis of that even earlier recognised right, prohibit the use by the third party of the alleged ‘earlier right’?