In its judgment of 17 December 2020, issued at the end of case C-490/19 (“Syndicat interprofessionnel de défense du fromage Morbier v. Société Fromagère du Livradois SAS”), the European Union Court of Justice was called upon to rule on the protection of the Protected Designation of Origin (PDO), clarifying that under EU law it is possible to prohibit also the imitation of the shape and appearance of a PDO product, if the imitated elements may cause confusion to the consumer.


IThe case
“Morbier” is a cheese produced in the Jura mountains (France) which has been registered as a PDO under European legislation since 22nd December 2000. Société Fromagère du Livradois (hereinafter ‘SFL’) is not located in the geographical area designated for the name “Morbier”, which is why it produces cheese under the different name “Montboissié du Haut Livradois”. Although the two cheeses have different names, they both share the same aesthetic feature, namely a horizontal black stripe encircling the whole of the cheese, which is explicitly identified in the description of the PDO “Morbier” product.

The dispute in question stems from the proceedings brought in 2013 by the Syndicat interprofessionel de défense du fromage Morbier (Morbier Cheese Protection Consortium) against SFL, seeking an order that SFL cease all direct or indirect commercial use of the name ‘Morbier’ PDO for products not protected by it, all misuse of the name, any usurpation, imitation or evocation of the PDO, any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product likely to mislead the consumer as to the true origin of the product, any other practice likely to mislead the consumer as to the true origin of the product, and in particular any use of a black stripe separating two parts of the cheese. The application for an injunction thus formulated was, however, not granted at first instance. In particular, in a decision of 2017, the Cour d’Appel de Paris stated that PDO registration was not intended to protect the appearance or characteristics of a product, but was limited to protecting its name, and that the manufacture of different products using the same working techniques was not per se prohibited.
The consortium, after its claims for protection were not upheld, appealed the decision of the Court of Appeal to the French Court of Cassation. On this occasion, the Cassation, by way of a preliminary reference, asked the European Union Court of Justice for clarification not only on the rules concerning the use by third parties of a registered name, but also on the possibility of prohibiting, on the basis of EU legislation, the reproduction of shapes and characteristics of a product with a designation of origin.

The CJEU decision
The Court of Justice is thus called upon to rule on this practice and, in particular, to clarify whether the reproduction of the shapes and characteristics of a product bearing the PDO mark is likely to mislead consumers as to the real origin of the product. The CJEU first of all clarifies the interpretation of both Article 13(1) of Council Regulation No 510/2006 of 20 March 2006, in force at the time of the facts, and Article 13(1) of Regulation No 1151/2012 of the European Parliament and of the Council, which replaced the first regulation on quality policy for agricultural products and foodstuffs, stating that “registered names shall be protected against […] any other practice liable to mislead the consumer as to the true origin of the products”. According to the Court, both rules must be interpreted broadly so as not only to prohibit the use by third parties of the registered name, but also to preclude them from reproducing the characteristic shape or appearance of the PDO product, where such a practice is liable to mislead the consumer into believing that the product in question is covered by the registered name. Therefore, although the protection provided for by Regulations Nos 510/2006 and 1151/2012 relates expressly to the registered name and not to the product to be protected and, more specifically, to its shape or appearance, PDOs are protected precisely because of those particular characteristics which distinguish the product. For this reason, according to the CJEU, it is not possible to exclude a priori that the reproduction of such characteristics attributable to a product covered by a registered name, without that name appearing on the product, may fall within the scope of the rules in question. Lastly, the judgment states that it is necessary to ascertain on a case-by-case basis whether that reproduction is likely to mislead the European consumer – who tends to be well-informed and circumspect –, having regard not only to the relevance and distinctive character of the elements being imitated, but also to all the factors in the case (i.e. the manner in which the product is presented to the public and marketed) which are likely to mislead the consumer.

Federica Gattillo



In the proceedings that Nokia Technologies Oy brought against Daimler AG for infringement of the German part of a European patent, the Court of Düsseldorf (Germany) announced last week that it would not issue an injunction against Daimler. Instead, the Court addressed the Court of Justice with a series of questions concerning the scope of application of the so-called FRAND exception: the patent concerns a method for sending data in a telecommunication system, being essential for the LTE (4G) standard. The battle between Nokia (and other owners of patents essential for the standard) against Daimler has already seen several decisions of the courts in Mannheim and Munich that excluded referral to the Court of Justice.


The patent litigation concerns the German portion of patent EP 2 087 629 B1. Its owner, Nokia Technologies Oy, has applied for an injunction against the car manufacturer Daimler AG. This patent is essential for the LTE (4G) standard, which requires the use of LTE-enabled modules from various suppliers, which are installed in Daimler machines. These modules allow services such as music streaming or ether updates. As early as September 2014, the actress’s predecessor declared that he considered his patent essential to the LTE standard and issued a FRAND declaration, undertaking to grant licenses to third parties on fair, reasonable and non-discriminatory terms. However, not only the defendant Daimler but also many of its suppliers had so far used the standard (and thus also the patent in question) without having obtained a license. In the proceedings before the court in Düsseldorf, the defendant Daimler points out that, on the basis of the EU internal market rules and the FRAND declaration of September 2014, the plaintiff must grant a license to each applicant. In terms of scope, the license should be unlimited for all types of use that the standard allows.
The standard procedure in the automotive industry would require suppliers to obtain licenses. A central aspect of the dispute between Nokia and Daimler is, in fact, the granting of licenses in articulated supply chains, composed of various levels. It should be noted that there are different practices in different sectors: In the mobile communications sector, licenses are traditionally negotiated at the level of the manufacturer of the final product. In the automotive industry, on the other hand, licenses are traditionally granted to suppliers, leading to the exhaustion of licensing rights downstream along the supply chain. On the contrary, the actress Nokia argues that the choice of supplier within a business chain to which to grant a license is solely up to her as the owner of the patent essential to the standard. In the automotive industry, on the other hand, licenses are traditionally granted to suppliers, leading to the exhaustion of licensing rights downstream along the supply chain. On the contrary, the actress Nokia argues that the choice of supplier within a business chain to whom a license is granted is up to itself as the owner of the patent that is essential to the standard.

The Court did not reject the defendant Daimler’s argument and raised the question whether Nokia’s initiative could be considered an abuse of a dominant position. The questions submitted to the Court of Justice belong to two macro-themes. The first concerns the question whether there is an obligation of the holder of a patent essential standard to grant licenses to suppliers in priority. The second concerns specifications of the obligations formulated in the judgment of 16 July 2015 of the Court of Justice in the Huawei case. ZTE (C-170/13).
With regard to the possible obligation to grant licenses, in priority, to suppliers (intended as upstream in the commercial chain), the Court specified the question as follows: can a company that is downstream in the commercial chain invoke the abuse of a dominant position within the meaning of Article 102 TFEU if the patent holder has refused to grant a license to suppliers that are upstream in the commercial chain?

The Court of Düsseldorf – perhaps having in mind what factor could be decisive for the answer – then formulated a further question: is it relevant for the answer the existence of a commercial practice – in the field of the final product – according to which it is the supplier to take action to obtain the necessary licenses for the components supplied? Is there such a priority to grant a license to suppliers at every level of the commercial chain or only to the last supplier? Is the practice of trade decisive in this case too?
Even in the latter case, the formulation of the questions suggests a clear trend of the German court.
Regarding the second macro-theme, the Court of Düsseldorf also referred more general questions relating to FRAND’s defense to the Court of Justice: First, the Court of Düsseldorf asks whether the impending circumstances of the judgment in the Huawei case. ZTE for both parties can be fulfilled even after the initiation of legal proceedings. Secondly, the court asks what the prerequisites are for qualifying a proposal as sufficient by those who intend to use a standard essential patent within the mechanism of the decision.

The decision of the Court of Düsseldorf to make a request for referral to the Court of Justice on the one hand increases the hope of achieving greater clarity and uniformity of application in the future. However, in view of the proceedings already in progress and/or established before a final decision is made, the mere pending before the Court of Justice entails the risk of further suspension decisions, which is why one can only hope for a speedy final decision.

Tankred Thiem



By decision of 8 September 2020 in case C-265/19, the Court of Justice of the European Union clarified the subjective scope of application of Article 8 of Directive 2006/115/EC on rental right and lending right and on certain rights related to copyright in favour of performers of works fixed in phonograms and communicated to the public by producers. In particular, the Court specified that the territorial origin of the rightholder may not be a determining factor with respect to the emergence of the right to obtain the fair compensation provided for by the Directive in favour of performers for broadcasting or for any communication to the public of protected musical works within the territory of the Union.


The case
The case that has reached the Court of Justice of the European Union originates from a dispute between two Irish collective management societies of copyright and related rights in relation to the enforceability of the right to fair compensation by performers from countries outside the EEA (in particular the United States of America) for broadcasting or for any communication to the public of protected musical works within the Irish territory.
In detail, the Recorded Artists Actors Performers Ltd (“RAAP”) – which manages the rights of performers in Ireland – and Phonographic Performance (Ireland) Ltd (“PPI”) – which manages the rights of phonogram producers in Ireland – entered into a contract to regulate the way in which the rights to fair compensation payable by RAAP members in respect of the exploitation of protected works by PPI members are divided.
However, a dispute arose about the enforceability of these rights by persons from outside the EU because, according to the PPI phonographic producers’ collection, the Irish national legislation on copyright and related rights would only make the right to fair compensation enforceable in favour of an Irish citizen coming from or domiciled in a state of the European Economic Area (EEA) or, finally, of a country included in the list of states with conditions of reciprocity. On the contrary, the RAAP Performers’ Collections considered that also subjects coming from non-EEA territories (such as the United States of America) would have accrued the rights deriving from the fair compensation for the exploitation of the protected works because in EU law (nor in any international treaty signed by Ireland) there would be no limitation with respect to the territorial origin of the performers.

The decision of the Court
First, the Court specified that the definition of ‘performers’ in Article 8(2) of Directive 2006/115 must be interpreted uniformly throughout the Union in the absence of any reference to national rights as regards the scope of this definition. Since this provision does not expressly specify whether the term ‘performers’ refers only to performers who are nationals of a State in whose territory this Directive applies, or whether it also refers to performers who are nationals of another State, any limitation of territorial origin should be considered excluded.
The right to fair compensation is in fact, according to the Court, a right of a compensatory nature whose causal factor is the communication to the public of the interpretation or performance of the work fixed on a phonogram published for commercial purposes. It follows that each Member State of the Union should ensure, on the one hand, that a single equitable remuneration is paid by the user when a phonogram published for commercial purposes, or a reproduction thereof, is used for broadcasting or for any communication to the public and, on the other hand, that such remuneration is shared between the performer and the producer of the phonogram.

There is therefore no limitation on the territorial origin of the person who may claim such compensation.
This conclusion would also be confirmed by the international treaties signed by European States, including the Rome Convention of 26 October 1961 in relation to the protection of performers, according to which any performer who is a national of a Contracting State to that Convention must benefit from the national treatment accorded by the other Contracting States to their own nationals if the performance is recorded on a phonogram protected under that Convention.
According to the Court, the right to a single equitable remuneration, recognised by Article 8 of Directive 2006/115, cannot be reserved by the national legislature to nationals of EEA Member States alone, with the consequent disapplication of any national legislation (in the present case the Irish legislation) which conflicts with that harmonised definition.

Alessandro Bura



By judgment of October 28, 2020, the Court of Justice ruled in a dispute (Case C- 637/19) concerning the potential use of a copyright protected work as evidence in judicial proceedings between individuals. The Court, balancing copyright with the right to an effective remedy granted by the Charter of Fundamental Rights, underlined that the criterion of “public” communication does not apply in case of use for defensive purposes.


The fact and the judgment of first instance:
The case herein concerns two individuals resident in Sweden, who both run their own websites. In the main proceedings originally initiated before the Swedish civil court, the defendant was held liable for the infringement of the plaintiff’s copyright on a photograph: the transmission to the court seised of a copy of a page of a text extracted from the plaintiff’s website and involving a photograph would qualify as unauthorised communication to the public.
The transfer of such content by electronic means was functional to its use as evidence in the judgement. The applicant had argued that such behaviour, claiming ownership of his copyright on the photograph at issue, seeking an order for damages for copyright infringement and also claiming infringement of the special legislation conferred on photographs by Swedish copyright law. On this point, since the photograph in question had been transmitted to a court as a procedural document, the court of first instance had first found that anyone could request its communication. The court had also qualified the action brought by the defendant as a genuine ‘distribution to the public’ of that photograph under Swedish law. In conclusion, however, the court rejected the plaintiff’s request, finding that the damage suffered was not proven.

The uncertainties in the appeal proceedings:
In light of this ruling, the appellant filed an appeal before the Stockholm Court of Appeal. In this case, many doubts were raised about the correct interpretation, within the framework of European Union law, of the concepts of “communication to the public” and “distribution to the public” in case of transmission of a work protected by copyright to a competent Court. The main question was whether a court could be considered as falling, for all intents and purposes, within the concept of “public” within the meaning of Directive 2001/29 and whether the term “public” had the same meaning for the purposes of applying Articles 3(1) [1] and 4(1) [2] of that directive. The Swedish Court of Appeal referred the questions to the Court of Justice.

The CJEU’s decision:
The Court of Justice has underlined that the concept of “communication to the public” includes two criteria The first one, i.e. communication, understood as “any act by which a user gives access to protected works, in full knowledge of the consequences of his or her behaviour” occurs in the present case, where the transmission of a protected work to a court by e-mail has occurred.
The same cannot be said for the second criteria that requires protected works to be effectively communicated to the so-called “people in general”, i.e. to an indeterminate number of recipients, a rather considerable number of people in their amount: the communication was intended for a defined and limited group of professionals exercising their functions to satisfy a public interest. It would not, therefore, be a communication to a generalised and indefinite audience, but to well-defined individuals. In this context, the national rules allowing access to public documents are irrelevant since such access is not granted by the user who has transmitted the work to the court, but by the latter to individuals who request it.
The Court also stressed that this interpretation ensures a fair balance between the interests of copyright holders and the protection of the interests of all those who use protected material in the digital and electronic environment. In conclusion, therefore, the Court of Justice of the European Union ruled out that the transmission by electronic means of a protected work to a court of law as evidence in judicial proceedings between individuals could not be included within the notion of “communication to the public”, considering also the fundamental right to an effective remedy before a court guaranteed by Article 47 of the Charter of Fundamental Rights of the European Union.

[1] Article 3(1) of Directive 2001/29 states that “Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them”;
[2] Article 3(1) of Directive 2001/29 states that “Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise”.

Paolo Rovera



On 15 October 2020, the Intellectual Property Offices of the Member States of the European Union published the Common Practice on the use of trademarks in a form different from the one in which they were registered, drafted by the European Union Intellectual Property Network (EUIPN).


The issue
The problem concerning the use of trademarks in a form other than the registered one is relevant with regard to the decadence for non-use of the trademark. National legislation (Articles 24 and 26 CPI) and European legislation (Articles 18 and 54 EU Regulation 2017/1001), in fact, establishes that a trademark is subject to revocation if it is not effectively used by the owner during the 5 years following registration or if its use is suspended for an uninterrupted period of 5 years.
Moreover, the above mentioned law provides that the use of the trademark in a modified or different form from the registered one is considered relevant unless the distinctive character as registered is altered.
The Common Practice intervenes on this aspect and aims at providing useful indications to assess whether the use of the trademark in a modified form alters its distinctive character, causing as a consequence the irrelevance of its use for the purposes of revocation. The importance of this publication is due to the fact that often in company practice changes, revisions or updates are made to registered trademarks over time.
The Common Practice
The published text is the result of a process of consultation with the national intellectual property offices of the EU, EUIPO and international partners that started in October 2017 and, as anticipated, aims to identify a set of homogeneous principles and canons to assess when changes to a sign lead to the alteration of the distinctive character of the trademark actually registered. In particular, the Common Practice assesses the impact that additions, omissions and changes in characteristics have on the distinctive character of a word, figurative or mixed mark.
The EUIPN identifies two key steps to make this assessment. First, the registered trademark must be considered with reference to its distinctive and visually dominant elements in order to determine which of them contribute to the distinctive character of the sign. Secondly, once these elements have been identified, it is necessary to establish whether these elements exist in the use of the sign which is made in practice through direct comparison between the two signs and by assessing in practice both the differences and the effect they have on the original mark.
In order to make it easier to understand, the Office proceeds with the listing of some examples, including:

In this first case, the Office maintains that the added figurative element does not interact with the trademark as registered and is perceived by the public regardless of the sign used. For this reason, the introduction of the figurative part (the fish) does not affect the distinctive character of the sign, which remains unchanged.

In the second example, on the other hand, a second figurative element is added to the registered trademark which, in the opinion of the Office, alters its distinctive character. In particular, the addition of the second figurative element implies the creation of a new concept (big fish eats small fish).
As far as the application of the Common Practice in administrative judgements is concerned, each Member State has indicated both the date of implementation and which procedures will be applied. As far as Italy is concerned, the Common Practice will only become applicable in proceedings instituted after 15 January 2021. Consequently, all proceedings that are pending but were introduced prior to that date are excluded.
Although the assessment of the actual use of a trademark is to be considered on a case-by-case basis, we believe that the Common Practice is a useful guide to facilitate and homogenise the decisions of national intellectual property offices and individual Courts.
The full text of the Common Practice is available at the following address: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_euipo/who_we_are/common_communication/common_communication_cp8_en.pdf

Paolo Passadori