THE ADVOCATE GENERAL ADVISES ON THE SCOPE OF APPLICATION OF THE PRINCIPLES OF THE IP TRANSLATOR JUDGMENT – THE CASE “Lambretta” – C 577/14 P
29/09/2016

Is the burden of precise indication of protected products and services confined to the trade mark application or does it also concern marks that have already been registered at the time of the famous judgment of the Court of Justice? In the context of a dispute concerning forfeiture for a five year period of non-use of the Community mark “Lambretta”, rigid application of the above mentioned principles was requested and not only with respect to trade mark applications but also for marks already registered at the time of the aforesaid decision. Within case C-577/14, the Advocate General has now expressed his doubts as to the applicability of the principles in the described context.


 

With decision dated 24 September 2010, the Cancellation Division of the EUIPO declared partial forfeiture for a five year period of non-use of the mark “Lambretta” for products falling within, among other things, class 12 of the Niece classification. The title of this class includes, according to the Niece Classification, «Vehicles; terrestrial, aerial and nautical locomotion devices» and does not expressly include spare parts for these products. The petition against said decision was not successful (with reference to products falling within class 12): the Petition Commission considered actual use of the “Lambretta” mark for products of class 12 to be insufficiently proved and held the proffered evidence for use of the mark with respect to spare parts (for products falling within said class) to be irrelevant. This was because the spare parts, not expressly claimed with the trade mark application, would not fall within the objective scope of protection on the basis of the principles of IP Translator judgment.

The decision of the Petition Commission was appealed with a cancellation petition before the Tribunal: it was said that the Commission wrongly included the spare parts in the forfeiture declaration, where said spare parts would fall within the scope of protection in accordance with the so-called “inclusive criterion”. Based on such criterion, if a trade mark application for registration mentions – as was the case here – without distinction, the goods indicated in the title of a class, protection concerns all products of the alphabetical list of goods and services falling within such class.

The decision of the Petition Commission was overruled by the Tribunal which had excluded the applicability of the principles deriving from the IP Translator decision. Also the decision of the Tribunal was appealed by the party who had interest in the forfeiture of the mark and the proceedings are now pending before the Court of Justice (C-577/14). The Advocate General, who recently filed his conclusions, believes that it is not possible to transpose sic et simpliciter  the IP Translator judgment, which concerned a trade mark application, to the case of a situation in which the mark was already registered and therefore proposes to reject the petition. Correctly, the EUIPO applied the “inclusive criterion” for imperative needs of legal certainty, a principle integrated in the legal system of the European Union.

The proposal of the Advocate General seems to have been determined by the new art. 28, para. 8, of the European Union trade mark regulation that granted owner of already registered EU trade mark the option of presenting a declaration to the EUIPO by 24 September 2016 in order to specify definitevly the scope of protection.


DECISION OF THE EURUPEAN COURT OF JUSTICE: THE SALE OF COMPUTERS WITH PRE-INSTALLED SOFTWARE DOES NOT OF ITSELF CONSTITUTE AN UNFAIR COMMERCIAL PRACTICE

20/09/2016

The CJEU, with judgment C-310/15 filed on 7 September 2016, has decided that the sale of a pc that comes with a pre-installed operative system does not contravene the norms on professional ethics and, especially, does not distort the economic behavior of consumers. Additionally, the Court held that omitting the price of each of the pre-installed programs does not amount to an unfair commercial practice.


 

With the above mentioned judgment the Court put an end to a sequence of events that started in France in 2008, when a consumer purchased a Sony computer that came with a Windows Vista operating system: upon using the software for the first time, the purchaser refused to enter into the software license agreement, requesting that Sony refund the price of the pre-installed program. Sony rejected the request of the client, and instead proposed to annul the complete purchase and refund the entire price. The dispute reached the French Supreme Court, which decided to remand the issue to the EU judges, in order to obtain clarifications concerning directive 2005/29 on unfair commercial practices of corporations in their relations with consumers of the internal market.

The European judges held that the sale of a computer having pre-installed computer programs does not, of itself, amount to an unfair commercial practice, considering that an offer of this type does not contravene the norms on professional diligence and does not distort the economic behavior of consumers. In the case at hand, the Court observed that “as noted by the connected market survey, the sale by Sony of computers having pre-installed computer programs meets the expectations of the vast majority of consumers, who prefer the purchase of a computer having such software pre-installed and immediately utilizable as opposed to purchasing separately the computer and the programs”. The judges of the Court of Justice stated that, in any case, it is the duty of the national judge to evaluate whether the consumer has been properly informed, before the purchase, of the fact that a given model of computer is sold with pre-installed programs. In the case under scrutiny, Sony had conformed to the norms on professional diligence, having provided the consumer with the option of receding from the sale.

As concerns the second question, the Court held that the omission of the prices of the pre-installed programs does not prevent the consumer from making an informed commercial decision nor does it provoke him or her to make a commercial decision that he or she would not have taken otherwise. Indeed, considering that the price of these programs does constitute relevant information which the vendor is obliged to give to the purchaser, the failure to indicate the price of each of the pre-installed computer programs cannot be considered an unfair commercial practice.


SIMONA LAVAGNINI AT THE SEMINAR ON VALORIZING, MANAGING AND DEFENDING INTELLECTUAL PROPERTY

19/09/2016

Next 27 September 2016 Ms. Simona Lavagnini will participate at the round table discussion “Valorizing, managing and defending Intellectual Property” organized by “The ruling companies association”. The event will be held at the Lombardy Industrial Association Congress in Milan.


 

The meeting is intended to provide small and medium sized Italian companies, known to be highly creative and innovative, with the necessary information and instruments to valorize and protect their ideas. Ms. Lavagnini will engage with the other participants and will speak of her own extensive professional experience in assisting technology companies, providing support in the development phase of ideas as well as in the stage involving registration and protection of IP assets.

Information and registrations at http://rulingcompanies.org/incontro/valorizzare-gestire-difendere-la-proprieta-intellettuale/


CRITERION OF INTERPRETATION OF CORPORATE BYLAWS

13/09/2016

The clause of a public limited company’s bylaws requiring a wide majority for the resolution having as object the issues concerning certain matters is aimed at protecting minorities in order to allow the latter to have the opposition power to preserve the balance existing inside the company. Therefore, an interpretation of this clause which allows its amendment through a most limited majority seems contradictory, in the light of the good faith criterion and on the basis of the common intention of the parties, with the consequent annulment of the relevant resolution. The clause of the bylaws protecting the minorities imposing a wide majority for the resolution concerning certain issues cannot be modified through a limited majority.


 

The First Civil Section of the Supreme Court, with decision no. 4967 of March 14, 2016, returned to the controversial matter of interpretation of the bylaws.

The lawsuit concerned the challenge by certain shareholders of a Public Limited Company (hereinafter the “Company”) of a resolution of the extraordinary shareholders meeting adopted in September 2001, which modified article 17 of the relevant bylaws. Article 17 of the bylaws required a wide majority — equal to 60% of the share capital — in case of a shareholders meeting that, in the first and second call, resolves upon certain items on the agenda, expressly listed, among which the amendment of article 17 of the bylaws did not appear.

The extra-ordinary shareholders meeting of the Company proceeded therefore with the amendment of article 17 of the bylaws according to the majority provided by art. 2369 of Italian Civil Code (in its former provision before the relevant amendment occurred by Legislative Decree 6/2003) and, therefore, through a majority equal to over one third, lower than that provided in the same article 17.

The shareholders challenged the resolution before the Court and the Court of Appeal in order to obtain the relevant annulment for the lack of observance of the majorities provided herein.

The Court of Appeal rejected the appeal submitted by the minority shareholders of the Company, while the Supreme Court recalled the laws regarding the interpretation of a contract (art. 1362 and following of Italian Civil Code) in order to annul both the challenged decision and, resolving on the merit, the part of the resolution of the Company which amended article 17 of the bylaws without observing the majority provided hereto.

The Supreme Court deemed that the interpretation of the bylaws pursuant to  good faith, in accordance with the provisions of articles 1369 and 1366 of Italian Civil Code determines that, in presence of a clause of the bylaws which protects the minority of the shareholders providing for a wide majority of votes in case of resolution of the shareholders regarding certain matters, even the resolutions aiming at amending the clauses in which the wider majorities are provided must be subject to the same wide majorities. As a consequence, a non-qualified majority of the shareholders cannot on its own, even in case of lack of provision of the bylaws, modify the clause governing such wide majorities.

This decision of the Supreme Court has crucial value since it refers to the debate regarding the applicability to the bylaws of the “subjective” interpretative criterion provided by the general discipline of contract law (articles 1362-1366 of Italian Civil Code), aimed at giving more value to the purpose followed by the parties and to the behaviors of the latter after the execution of the contract, instead of the objective criterion provided for the interpretation of the law in general (article 12 preliminary disposition of Italian Civil Code), based, above all, on the literal meaning of the single provisions.


PRIVACY – ON OCTOBER 1, 2016, THE NEW CODE OF CONDUCT FOR THE PROCESSING OF PERSONAL DATA CARRIED OUT FOR COMMERCIAL INFORMATION PURPOSES WILL ENTER INTO FORCE

06/09/2016

From October 1, 2016, the measures called for by the “Code of conduct for the use of personal data carried out for commercial information purposes” will be applicable. The Code of Conduct (available in full at the following link: http://www.garanteprivacy.it/web/guest/home/docweb/-/docweb-display/docweb/4298343) has been promoted by the Italian Data Protection Authority and prepared in cooperation with various associations concerned to the field. 

The new Code is directed to companies that provide information on the commercial reliability of entrepreneurs and managers, and aims at regulating the activities of those entities through a balance between their freedom of economic initiative, on one hand, and the security, individual freedom and dignity of the people whose data are processed, on the other hand. In fact, the data collected and processed by those companies are particularly sensitive, as they refer to the economic and financial position of entrepreneurs. It follows that the incorrect use of databases and invasive analysis tools can cause serious damages to the dignity and privacy of all the people involved.


 

Here are the most significant rules introduced by the Data Protection Authority in the Code of Conduct:

  • Scope: the new Code of Conduct will only apply to commercial information relating to individuals. The Code, in fact, takes over the definition of “personal data” provided for by Article. 4 of the Legislative Decree 196/2003 (“Privacy Code”), which refers to “any information concerning a natural person, identified or identifiable“. It follows that all the commercial information that do not make reference to individuals are freely usable (point 3 of Preamble);
  • Data traceability: in order to create a business information dossier on a manager or an entrepreneur, only the personal data referring to that person – or to people or entities that have or have had legal and/or economical connections with it – can be used (the mentioned connection exists, for instance, when the data subject owns a company through a direct or indirect control of shares) ( 2, par. 3 and 4);
  • Usable data and consent: only the following data can be used: i) data coming from public sources, cognizable by anyone (and thus the information contained in the companies’ register and within balance sheets, real estate deeds, detrimental acts); ii) data extracted from publicly available sources and generally accessible by anyone (such as newspapers, telephone directories, government or control and surveillance agencies’ websites); iii) personal data that the data subject freely decided to communicate to the commercial information provider ( 3, par. 1 and 2). In the cases refered to in points i) and ii) the data may be processed without the consent of the data subject (art. 5);
  • Data processing arrangements: when they collect and keep personal data, the commercial information providers are required to: i) ensure that the acquired information are correct and pertaining to the pursued purpose; ii) take note of the source of the data; iii) keep the data up-to-date ( 3, par. 4);
  • Information to data subjects: for the processing of the above mentioned data the commercial information providers give to the data subject a non-individual information which is released in accordance with simplified modalities compared to than the ordinary ones provided for by art. 13 of Privacy Code. In particular, the information must be released within a portal specifically created by the commercial information providers, in case they have an annual turnover of more than € 300,000.00; within the website of the single commercial information provider, in case its annual turnover is lower than the above mentioned amount ( 4);
  • Time-limits for use and keeping of data: the personal data collected for commercial information purposes may only be kept until they remain knowable and/or published in the public sources where they come from ( 8). As far as concerns detrimental information (such as bankruptcies, insolvency proceedings, mortgages, etc.), Art. 7, par. 4, introduces stricter deadlines (for instance, the information relating to insolvency proceedings normally cannot be used for more than 10 years from the date of opening of the insolvency proceedings itself);
  • Security: all commercial information providers are required to implement appropriate measures in order to ensure the security, integrity and confidentiality of the collected and processed information ( 10);

Entry into force: the new Code of Conduct shall enter into force on October 1, 2016. Therefore, from said date, any processing of personal data with commercial information purposes shall be considered as illicit if it is not compliant to the Code.