Case C-231/16, Merck KGaA – a murky issue of jurisdiction

When a company starts to sue a group of companies for infringing its trade mark in one Member State but then sees them infringing its mark in a second Member State, can the company commence proceedings in the second state too? Or is the court in the second Member State stopped from hearing the case by dint of the barring phrase, ‘the same cause of action’, which is in Article 109(1)(a) of the EU’s ‘trade mark’ Regulation 207/2009? More

Case C-642/16, Junek Europ-Vertrieb – can its sticky label stop the artificial partitioning of the internal market?

A German company sells a trademark medical dressing. Having exported some of its stock to Austria, it was surprised to see this subsequently turn up in a German pharmacy. Unsurprisingly, the German company wants to stop its German prices from being undercut. Consequently, it has invoked the EU’s ‘trade mark’ Regulation 207/2009. This is because Article 13(2) allows it to prohibit the further commercialisation of its goods ‘in particular’ where these have been changed or their quality impaired. In that context, the German company is objecting to the Austrian importer-exporter having applied a sticky label to the packaging. However, the legal question is: does Article 13(2) bite at all because the sticky label was only on an otherwise blank part of the outer-packaging so there has been no change to the goods or impairment of their quality. More

Case C-644/16, Synthon – resisting its impounded documents being inspected by a rival

How can you prove your case when the other party has in its possession the evidence you need? Perhaps you will need to instigate a search-and-seize raid on the other party? In this case, a Japanese pharmaceutical firm did just that. It organised Dutch court bailiffs to raid a Dutch firm suspected of making patent-infringing drugs. However, once the materials had been seized, the Japanese firm then asked the Dutch court for access to inspect them. This stumped the Dutch judges. What rules and standards should they apply to determine that request in light of the ‘evidence’ rule in Article 6 of the EU’s ‘enforcement’ Directive 2004/48? More

Case C-425/16, Raimund – mulling over infringement before invalidity in trade mark procedural law

The procedural law problem in this trade mark spice-mix case is whether the Austrian courts can simply cut a corner and consider in the context of an infringement-action whether a trade mark has been invalidly applied for rather than first considering whether the trade mark has been infringed and then its validity. More

Case C-395/16, DOCERAM – they DoCeram-ics but technical functionality dictates their design

One way for a company to stop a rival from selling a similar product is to protect in intellectual property law, the design(s) behind the product. EU law has a special regime for so-called registered Community designs. However, the regime will not protect designs which are ‘solely dictated’ by function. The problem in this case is determining what that phrase in the EU’s designs Regulation (EC) No 6/2002 actually means, in circumstances where the product is merely being used to hold two objects in place during a welding process. More