Dreyfus

It is a truism to say bluntly that Internet was a peculiar incentive to forum shopping issues. Given the international nature of the Internet, many forums may have jurisdiction over the very same dispute. However, such a view was framed and curtailed thanks to case law of Member States. In the wake of the Google AdWords saga, the opinion released by the advocate general is of high relevance. The opinion tackles a tricky question. When Private International Law issues blend with Google AdWords, the result cannot but be hazardous. Nonetheless, the advocate general rides out the intricacies of the case.

The plaintiff was an Austrian company which was the owner of the trademark WINTERSTEIGER registered both in Germany and in Austria for ski and snowboard service machines. Its main competitor, Products 4U, provided it with products for its service machines. Products 4U registered as a commercial link through Google.de the WINTERSTEIGER trademark. The commercial link was available through Google.de and was written in German. The advertisement encompasses the following terms: “ski workshop accessories”, “ski and snowboard tools,” maintenance and repair”. When Internet users click on the commercial link they were redirected towards the German Company’s website whose layout bears the title “Wintersteiger Accessories”.

The Austrian company launched a lawsuit before the Austrian Court. Notwithstanding, The Court of first instance averts that it does not have jurisdiction over the dispute on the ground that Google.de was targeting German web users only. Wintersteiger lodged an appeal and this time the Appeal Court availed itself to have jurisdiction over the matter. It is the language of the commercial link which triggers its jurisdiction as it was written in German, a language commonly spoken either in Germany and Austria. Nevertheless, the Appeal Court dismissed the case on the merits. Austrian judges contended that the commercial link does not imply that there is a commercial link between both parties. The Austrian ski and snowboard company went before the Supreme Court which decided to ask miscellaneous preliminary questions on the interpretation of the article 5(3) of the Brussels I Regulation to the European Court of Justice:

1.1              Does the Austrian Court have jurisdiction over the dispute to the extent that a trademark was registered as a commercial link through Google.de?

1.2              As the commercial link is available through Google.at, is this link sufficient enough to trigger the jurisdiction of the Austrian Court?

1.3              Is the jurisdiction of a Court triggered in the light of a combo of evidence and notably a combo of criteria which come in addition to the availability of the website on the territory of the Court?

The underpinning question was to know which Court can have jurisdiction when a tort is committed in another Member State while taking into account the sacrosanct territoriality principle which is at the cornerstone of trademark law.

The advocate general gave the following interpretation of the article 5(3) of the Brussels I Regulation:

-The Court which has jurisdiction may be those of the Member State where the trademark was registered. In this case, the WINTERSTEIGER trademark was registered in Austria since 1993 and also in Germany.

-The Court which has jurisdiction may also be the one where the necessary means were used to produce the tort to the registered trademark in another Member State. This interpretation may trigger the jurisdiction of German Courts in that case as the commercial link was registered under the umbrella of Google.de.

The European Court of Justice is on the verge to rule over the matter in the light of the advocate general’s opinion, which is consultative in nature but which is rarely disregarded. This decision is an additional case law to the pointillist Babel tower which is constituted by Google AdWords.

On the 8 of March 2011, the Max Planck Institute urged for the delineation of the concept of exploitation of a trademark in order to be qualified as being a well-known trademark. The concept of well-known trademark can have pretty narrow definition depending of the European country where you stand. The question has certain acuity as it is important to take into account the juridical environment of a case before launching a dispute in an alien juridical system. Some adjacent countries bordering the French hexagon developed a peculiar concept of the well-known trademark. It is juridical security which fuelled the creation of the principle of well-known trademark.  If trademark rights do not exist ab initio but are obtained thanks to registration, in addition of the registration the well-known trademark must satisfy a myriad of criteria.

Swiss Law and law of the Liechtenstein protect heavily well-known trademarks, however there is no such thing as an article which states the criteria which must be fulfilled. The criteria are praetorian in nature. To give a glimpse of the strictness of these criteria one can tell that the trademark must have been intensively used in Switzerland thanks to an intensive commercial campaign. The plaintiff must enclosed relevant records evidencing its radiation on the said territory. Additionally, the plaintiff must prove that its trademark has a positive impact on citizens, which is highly difficult to demonstrate as one can imagine. Each and every trademark must go through crisis period, as a result it is as easy as a pie to find proofs showing the derogatory character of a trademark, it is more tricky to prove the converse.

We cannot but think at SMOBY which was not recognized as a well-known trademark under Swiss law. Notwithstanding a Swiss Court acknowledged the well-known character of the trademark VOGUE on the 31^st of January 2012. As case law recognizing the well-known character of a trademark is scarce, this case law seems to be an oddity in the Swiss landscape. The Swiss Court was very prosaic in its rationale. It assessed the trademark regarding its “penetration in the collective awareness” and disregarded the number of subscribers to the magazine in Switzerland. Undoubtedly, it is superfluous to take into account the number of subscribers of a magazine in order to retain its well-known character. The luxurious market being drive by the principle “small is beautiful” the number of owners of an object does not imply that the trademark is well-known. The Swiss Court gave a telling example. As owners of cars bearing luxurious brands are scarce, it cannot be a proof of the well-known character of a trademark.

As far as extrajudicial proceedings are concerned, up to this day only four disputes have been tackled by the WIPO bearing on the “.li” extension and only eight on the “.ch” one.

Needless to say that launching an extrajudicial or judicial dispute in Switzerland or in Liechtenstein deserves an upstream research. It is sometimes better to abstain rather than spending heavy costs for a doubtful success.

The Russian company Royalty was willing to register the trademark « Volodya i Medvedi » for alcoholic beverages, juices and sparkling waters. However, this registration was not a plain sailing as the Rospatent, the Russian trademark and patents Office did not give its endorsement to such a registration. The meaning of the trademark was far too controversial for the Rospatent. Actually, the trademark was a combo of the nickname of Vladimir, which is Volodya, and the nickname of Dimitry Medvedev, Medvedi. The word medvedi also happens to be the root of the Russian word bear. The bear being the symbol of the pro-Kremlin United Russia Party of the former President Vladimir Putin. The 10^th of October 2011, the Rospatent refused to register the said trademark as it said bluntly the trademark was derogatory and was going against the state and the public interest. The Company Royalty decided to lodge an appeal against the decision before the Commercial Court of Moscow which gave its endorsement to the beverages company. Royalty argued that the trademark “Volodya I Medvedi” was inspired of the most widespread male name in Russia and of fairy tales. According to the Commercial Court, the decision of refusal issued by the Rospatent was illegal. The Russian trademarks Office made an appeal of the decision which was issued on the 12^th of September 2011.

Vodka bearing the trademark “Volodya and the bears” is available on the Russian market and is marketed by a Ukrainian Company which happens to be a competitor of Royalty, namely Vineksim. The aforementioned Ukrainian company obtained successfully the registration of the trademark before the Ukrainian trademark Office. In a near future we can guess that Royalty will bring a lawsuit before the Court in order to obtain damages as this registration is highly detrimental for the beverages company. In 2003, a vodka trademark “Putinkavodka” was registered and in less than one year became the vodka number one sold in the Russian Federation.

In the Russian Federation, the registrations of alcoholic beverages which conjure up political characters are legion. Recently, the Alexandrovy Pogreba Company filed a trademark on the name of the former Libyan dictator Muammar Gaddafi  before the Rospatent. The said Company has already registered the trademark Commandatore for beverages which reproduces a picture of the leader of the Cuban Revolution, Che Guevara.

The Australian Senate gave its endorsement to the law introducing plain-packaging for cigarettes. Consequently, cigarettes packaging will no longer bears bright colors and logos. The trademark will be reproduced according to a particular typography on an olive green background, warnings pertaining to cigarettes consumptions risks will take the larger part of the packaging. Needless to say that the said law has been fiercely debated among scholars and economic actors. Plain-packaging will be introduced definitively on December 2012, but it is already at the cornerstone of several lawsuits initiated by the magna of the tobacco industry. The hatching of miscellaneous lawsuits on the Australian continent jeopardizes or at least postpones the implementation of similar laws in other countries which belong to the Commonwealth as well as the European Community.

We cannot but underline the action brought by Philip Morris against the legislation which claimed several billions of dollars of damages. Imperial Tobacco, Philip Morris and British American Tobacco portrayed said law as a plague which is highly detrimental to their businesses, that is the reason why they launch lawsuits independently in order to question the constitutionality of said law before Australian Courts. Nevertheless, Australia seems to be a guinea pig and drives the attention of other countries such as New-Zealand and Canada which embrace the will to implement a similar legislation on their territory. The latters will wait and draw conclusions on the ins and outs of the law in order to be the most efficient as possible and to implement the best legislation. Protection of IPR’s and the respect of international commercial treaties were of high importance for the drafters of the Australian law. Many European MP’s work today hands in hands with the Australian government in order to draft a directive.

Arguably, the opponents to plain-packaging said bluntly that this law is infringing international treaties ratified by Australia. Moreover, plain-packaging will lead to a skyrocketing of black market and counterfeiting which prevents the tobacco industry to spread its products. In Australia plain-packaging is introduced concomitantly with a raise of taxes on tobacco products. The Australian government dwells on the fact that plain-packaging will have a positive outcome on health and will lead to a decrease of tobacco consumption on the continent. Notwithstanding, the introduction of plain-packaging raises some intricacies as far as trademarks are concerned. Without any trademark, it will be hard to prevent the risk of confusion which was the sacrosanct principle which lies at the roots of trademark law. The essence of trademark is to avoid the risk of confusion between the products and services of different companies. Some scholars urge to reshape the juridical landscape. In addition, the concept of use of trademark faded away. Habitually, the use of a trademark is framed in a peculiar way, the use of the trademark must match with the trademark which was registered. If there is a discrepancy between the registration and the use, a lawsuit could be brought before the Courts for non-use. With plain-packaging trademarks which were registered in bright colors with logos will now be in a black typography on an olive green background. Many well-known trademarks will be at risk and the thriving of lawsuits will probably help to point out the loopholes of this legislation.

Within European Parliament, a White Book gave the incentive in order to introduce plain-packaging in Europe there is some years ago. The Australian experience is of high relevance and can inspire European legislators in order to draft a similar legislation. The health European Commissioner, John Dalli from Malta stands up for such a step to be taken in a near future. He already underlines that it will be a proposition which will be at the cornerstone of the conference which will assess the impact of the directive 2001/37/EC on tobacco products which will be held this year. The tobacco lobby already warned the European Parliament that it will not remain apathetic before such a legislation. This lobby already gathered in Brussels in order to set a common strategy against plain-packaging as this legislation will represent a heavy economical loss for those lobbies.

A Court which has jurisdiction over Intellectual Property issues will come to light in the Federation of Russia by the 1^st of February 2013. The aforementioned Court’s will work according to the following blueprint:

-The first instance will tackle issues pertaining to the validity of Intellectual Property rights. The Court will have jurisdiction over the appeals of decisions issued by the Rospatent, Russian Trademarks and Patents Office. The goal of this Court is to tackle principally the patents, trademarks and designs registrations which were refused and the decisions which pronounced the nullity of trademarks and patents. In addition, the Court will be the appeal Court for the decisions of the Antitrust Federal Service for unfair competition infringements.

-There is no possibility to lodge an appeal against the decisions issued by the said Court. The decisions issued at the first instance will be implemented immediately.

The legal actions which raise the question of the validity of trademark for lack of use will be tackled by the Arbitral Court of Moscow during the transitional period. It seems that it is more telling to speak about a Court dedicated to industrial property as Copyright is not within the realm of competence of the Court. At the inception, the Court is the result of the growing awareness of the loopholes of Russian Courts and magistrates which are not specialized in IP matters. The Courts’ decisions are issued after long years of work and the Courts were completely overloaded by complaints which were highly technical. 30 magistrates will work hand in hand in order to alleviate the hurdle of the technical nature of IP issues. They will be specialized in IP and could be assisted by independent experts. Each and every case will be examined cautiously by several magistrates or a sole president.

The location of the aforementioned Court remains unknown up till now. Notwithstanding, there are some hints that the Court will be built in Skolkovo, a hectic hub near to the capital. The incentive of the creation of this Court took its place within a wider framework and evidences the strong willingness of the Russian Federation to protect adequately and efficiently IPR’s. Arguably, the Russian Federation ratified an international treaty which has for underlying goal to pave the way for uniform principles which will embody a shield protecting IPR’s in the Federation of Russia, in Belorussia and Kazakhstan. The construction of this Court is a relevant answer to the impediments which gangrene the Russian judicial system. Miscellaneous commentators were calling for an aggiornamento in order to ease the treatment of decisions as cases involving IP matters were skyrocketing dramatically.

The Russian Federation belongs to the BRIC’s countries, the aforementioned hallmark making the country an attractive market for investors. The building of this Court will help to disentangle the situation which was highly detrimental to the IPR’s owners who were not prone to defend their rights in this country. This IP Court is a relief for IPR’s owners who will bring lawsuits before it, thing which was an oddity in the past. The question remains if the Court will really be put in place. It could embody a real benefit, notwithstanding, in the light of the political turmoil which broke into the country recently, it is likely that the Court will remain an “arlésienne”. The postponement of the creation of the Court is rather plausible. Moreover, this Court is not a possible arena for tackling domain names disputes which is highly regrettable. It would have been wise to create concomitantly an extra-judicial procedure in order to solve the problem related to cybersquatting. As for the future, no one really knows what it’s really hold in store.

Astoundingly, the ICANN released the number of registrants which apply for the new gTLD’s on the 14^th of February 2012. The aforementioned US organization was eager to unravel the number of registrants, this step being quite fuzzy as the organization said bluntly the 19^th of January that it will keep secret the ”number of applications received”[1] until May. It seems that the institution located in California gave way and displays precociously the symbolic number of registrants which is as high as 100. If this surreptitious change sounds incongruous, it deserves attention and shows up the success of this new window of opportunity for companies. Another explanation may be that there is a discrepancy between the number of registrants and the number of applications already in process, which could explain such a turnaround. We cannot but highlight that the wishful can still file for an application until the 12th of April, and we can expect that the number will increase dramatically as this press release will pull the candidates.

A brand new feature for domain names with the extension in <.fr> is running. Allowing the registration of IDNs (Internationalized Domain Names), the AFNIC increases the number of allowed characters for the creation of domain names with the six extensions administered by said association (<.fr>, <.re>, <.tf>, <.wf>, <.pm> and <.yt>). Indeed, it will soon be able to count on 30 additional letters such as, à, á, â, ã, ä, å, æ, ç, è, é, ê, ë, ì, í, î, ï, ñ, ò, ó, ô, õ, ö, ù, ú, û, ü, ý, ÿ.

In order to overcome “cybersquatting” to which this development could give rise, the AFNIC has taken some steps. On last February 3, 2012, the AFNIC published on its website, a document which details, in addition to technical specifications, how to register IDNs (http://www.afnic.fr/medias/documents/afnic-idn-technical-specifications.pdf). The essential to retain:

–          on next May 3, 2012, a period called “sunrise” will offer to domain names’ holders, the possibility of registering in priority, their equivalents with the new allowed characters.

–          at the end of this first period on July 3, 2012, anyone will be able to register an IDN since it is consistent with the Charter of AFNIC. The rule “first come, first served” will prevail.

Notice to domain names’ holders who are invited to come forward within the “sunrise” period.

On October 6, 2010, the French constitutional Council sounded the death knell of section L.45 of the Code of the Postal and Electronic Communications which set up rules for the allocation and management of domain names with an extension in <.fr>[1]. By declaring this latter unconstitutional because it did not efficiently guarantee fundamental rights, the Council left domain names’ holders, without an alternative French extrajudicial procedure. Indeed, the old PARL (alternative disputes resolution procedure concerning domain names with an extension in <.fr> and <.re>) administered by the WIPO and the PREDEC (resolution procedure of clear infringement of the Decree dated of February 6, 2007) managed by the AFNIC, needed to be replaced. Those latter were respectively suspended on April 15 and May 15, 2011.

In this context, the AFNIC announced on its website, on last November 3, 2011, that its new system of dispute resolution called SYRELI, had been approved by the Minister for Electronic Communications[2]. After the complainant demonstrated a cause of action to require that a domain name managed by AFNIC be cancelled or transferred, the office will decide within two months of receipt of the complaint[3].

After being launched on November 21, 2011, SYRELI first decision was pronounced less than a month later.

A conflict opposed a company to its manager. When this latter was dismissed, he retained the domain name <infragenius.fr> which he previously booked and used to manage so far, thus depriving the company to any access to its various mail accounts hosted on said domain name. To the support of company’s request regarding that this latter be transferred, the company claimed that its intellectual property and personality rights were infringed. Indeed, the company name which was registered on August 16, 2010, is Infragenius and the two French trademark registrations “INFRAGENIUS” and “INFRAGENIUS, inventeur de solutions”, respectfully registered on August 17 and 18, 2011, were its own. “In view of the parts supplied, the Panel of [AFNIC] considered that the Complainant [actually] had a cause of action”[4]. Therein lies the issue. Indeed, the reservation of the domain name in dispute is dated of June 25, 2010, that is to say long before both the registrations of the company name and the trademarks. Therefore, the Complainant didn’t seem to have prior right and consequently no cause of action; even though under section 31 of the French Code of Civil Procedure, a cause of action, is the first condition to make an action admissible. Fundamental though this condition is, the AFNIC seems to have completely ignored this latter on the occasion of its first SYRELI decision. Fortunately, this mistake won’t have any effect, since the Respondent gave his consent to transfer the domain name to the Complainant; the AFNIC had only to endorse the agreement between the parties.

If the first SYRELI decision is lacking of clarity in the chronology of events[5], this new system must be practiced. However, this situation urges caution.

Each and every creator has a right on his or her work which is a combo between, on the one hand, a pecuniary right, namely the right of reproduction and the right of  representation, and on the other hand a non-pecuniary right. In spite of the existence of the right of reproduction, some limits remain in order to allow the spread of culture for the social well-being. Some authors speak about limitation while others prefer the terminology of exception. If we push the door beyond this epistemological debate, there is no denying that private copying remuneration is an exception according to article L122-5 of the French Code of Intellectual Property. The rationale of this exception is to allow consumers to copy for private use on a device such as blank CD’s. Thought as a modus vivendi between the rights holders, the industry and the consumers, the private copying remuneration was, to say it bluntly, outdated in the light of European[1] as well as national precedents[2]. The long standing calls for an aggiornamento[3] in order to reshape the Lang Statute of July 3, 1985 led to the drafting of a new statute which is transitory in nature. The new Statute n°2011-1898 enforced since December 21, 2011 was finally adopted by the Senate on the 19^th of December and we can infer from the presence of the Culture Ministry that the debates were vivid.

Private copying remuneration is before all a “levy fiscal in nature” [4] from which 25% are allocated to the promotion of culture within the French territory.  In 2010, this amounted to 189 millions of euro without taxes. The digital era paved the way for a sharp increase of the devices on which this levy was supposed to be raised. USB keys, hard drives, DVD’s memory cards are some glimpses of the equipment on which the levy applies. Notwithstanding, the draft of a statute on this matter must take into account the triptych industrials, right holders and public.

The statute, which amendments were all rejected, is innovative on miscellaneous stakes:

1. Liceity-(Article 1)- The levy applies provided the content which is subject to the copy is licit. This principle derives its strength from the rationale of the decision Simavalec issued on July 11, 2008 by French Administrative Supreme Court.
2. Surveys of use-(Article 2)-The Commission on private copying, which was erected in the aftermath of the Lang Statute, has been empowered to define the amount of the levy and the devices which were subject to it. In order to assess if a new device or equipment will be within the realm of the levy the Commission is now bound to made surveys of use.
3. Professional’s exemption-The new statute introduces an exemption for professionals which is the result of the decision Canal+ Distribution et a. issued on June 2011 by French Administrative Supreme Court.
4. Consumers information-(Article 3)-In fine, it is consumers while purchasing devices who pay the levy. Notwithstanding, consumers hardly know that they are paying such a levy while purchasing a blank DVD that is the reason why the new statute introduced a new set of rules which make it mandatory for industrials to inform consumers through packaging for instance of the amount of the levy and its use.

If the former draft of the article L311-1 of the French Intellectual property Code was clearly obsolete in the light of the increase of numerical devices, the new statute does not tackle the issue of touchpad. This loophole is problematic as the market is currently skyrocketing. This legal vacuum is nonetheless temporary as the President of the Commission on private copying highlighted. Lionel Tardy, a French MP, is afraid that this statute will be tackled by the Constitutional Court through a plea of unconstitutionality in a near future. As we already underlined, this statute is mainly transitory and precedes a further reshaping of the  juridical landscape in order to take into account concepts which pops up in the digital era such as cloud computing. The question must be raised if this statute is not stillborn. Arguably, the statute does not propose to reform the Commission on private copying, which institutional hurdles were pointed out by consumers associations as well as by lawyers.

Public order is a concept which has miscellaneous meanings which depends on the juridical culture where you stand. In France, few trademarks are cancelled on the ground that they are conflicting with public order. A salient example which took place in Indonesia is of high relevance in order to grasp the importance of public order when registering a trademark in a culture which is unknown. The Georges V Company was willing to create a lounge bar franchise which mixed up luxury and entertainment. At the inception, the project of the Buddha Bar was launched in Paris and spread itself in several urban countries such as Kiev and Dubai. In 2008, the Company decided to open a new franchise in Jakarta, in so doing said Company filed a trademark, “Buddha Bar” designating services in class 43 and especially bars and restaurant, before the Indonesian Trademark Office. The decorum of the bar was highly problematic as it was constituted by a Buddha sculpture of 15 meters high overhanging the main area of the bar. The discrepancy which resulted from the juxtaposition of Buddhist iconography and the activities of the bar was deemed to be blasphemous. Manifestations against the opening of said bar were tense and took place before the French embassy. The movement was so widespread and the controversy surrounding the opening of the bar so fierce that a website was created entitled: the Forum Anti-Buddha Bar also known under the acronym FABB. In the aftermath of this social turmoil, the Indonesian trademark Office pronounced the cancellation of the controversial trademark on the 15^th of April 2009. On the 8^th of January 2010, the FABB filed a petition before the Central Jakarta District Court against the licensor of the Georges V Company, the Governor of Jakarta and the Official Tourism Office of Jakarta. The association claimed damages as high as 50 000$ and asked for the closing of the bar. The Court compelled the plaintiffs to the payment of 110 000$ of damages and contended that the name of the bar had to be changed. According to the very words of the Court the business permit granted by the Governor of Jakarta and the Tourism Office was infringing commercial laws. Actually, commercial law in the restoration sector states, bottom line, that a restaurant can be opened provided it does not contravene with social welfare. In granting the business permit to the licensor, the Governor of Jakarta and the Tourism Office were infringing aforementioned laws as they did not take into account the manifestations against the bar which were vivid. Obviously, the use of Buddhist iconography did not match with Buddhists dogmas.

Consequently, the bar adopted a new name, which was actually its former name at the time of colonialism: the Bataviasche Kunstkring but the decorum remained unchanged. The Buddha Bar trademark was not at the roots of other manifestations elsewhere. Surprisingly, the Buddhist community is not so wide as one can imagine, in Indonesia, the bulk of believers belongs to the Muslim Community. The sign Bataviasche Kunstkring is from now on the trade name of the bar and has not been registered before any Trademark Office in Indonesia. This example shows up that the registration of a trademark which is duly made is not as easy as a pie and can be circumvented by public order. As a result economic success is not ineluctable. We cannot but highlight the fact that the trademark should not have been granted in the first place by the Trademark Office. The latter could have use the concept of public order in order to disregard the registration of the controversial trademark. Such a rationale has been used in 2010 by the Swiss administrative Court which refused to grant protection to the trademark Buddha Bar filed in classes 9 and 41 on the ground that it was likely to hurt the religious faith of Swiss citizens who belong to the Buddhist community (Decision B-438/2010).