6th edition

2016 Yearbook of Case Law

The 6th edition of the Yearbook of European Case Law on Industrial and Intellectual Property brings together 39 cases from 2016 involving trademarks, copyright, patents, designs, plant varieties, piracy, appellations of origin, unfair competition, and personal data, analyzed from a practical perspective.

About This Edition

The 6th edition of the Yearbook of European Case Law on Industrial and Intellectual Property features 39 cases from 2016, primarily from the Court of Justice of the European Union, along with decisions from the Spanish Supreme Court and the Spanish Court for European Union Trademarks and Designs.

Among other topics, it analyzes the scope of trademark exclusivity, parallel imports, Internet links, the private copying levy, the unitary patent, supplementary protection certificates, liability for counterfeit products, and the treatment of IP addresses.

The rulings are explained using a common structure consisting of Facts, Rulings, and Commentary, designed to facilitate understanding of the dispute and its practical implications.

This edition thus provides a broad overview of the main issues that have occupied European and Spanish courts throughout 2016.

Notable Rulings

Chapter 1

Brands

The trademark's exclusive right covers all products listed in the registration for the first five years, regardless of their use.
Parallel imports: repackaging a product in new packaging bearing the trademark. Conditions for opposition by the trademark owner.
The Rubik's Cube: Technical Achievement or Distinctive Mark?

Chapter 2

Harmonizing the term of copyright protection in the EU does not have the effect of bringing works that are in the public domain back under copyright protection.
A private copying levy system must include effective exemption mechanisms for cases not subject to the levy.
Awareness of the unlawful nature of a link as a determining factor in whether it is considered an act of public communication.

Chapter 3

Patents

The Problem of Toxic Priorities at the EPO.
Validity period of a CCP for a product for which the first marketing authorization was granted in a Member State prior to its accession to the EU.
Broad Scope of the Claim for Litigation Costs.

Chapter 4

Designs

The right of the licensee of a Community design to bring infringement actions without having registered the license.
The suspension of the statute of limitations for civil actions involving industrial property.

Chapter 5

Plant varieties

Infringement of Plant Varieties: Nature of Damages and Criteria for Their Calculation

Chapter 6

Piracy

Criminal conviction for a link-sharing website.
The landlord of a commercial space acting as an intermediary in the sale of counterfeit goods.

Chapter 7

Designations of Origin

Evocation. Relevant criteria for determining whether a geographical indication is evoked.

Chapter 8

Unfair Competition

Directive on Unfair Commercial Practices: Tie-in Sales; Misleading Omissions.

Chapter 9

Personal Information

European law does not permit national regulations that collect traffic and location data indiscriminately.
A dynamic IP address can also be considered personal information.
Right to be forgotten.

Chapter 1	Brands	The trademark's exclusive right covers all products listed in the registration for the first five years, regardless of their use. Parallel imports: repackaging a product in new packaging bearing the trademark. Conditions for opposition by the trademark owner. The Rubik's Cube: Technical Achievement or Distinctive Mark?
Chapter 2	Copyright	Harmonizing the term of copyright protection in the EU does not have the effect of bringing works that are in the public domain back under copyright protection. A private copying levy system must include effective exemption mechanisms for cases not subject to the levy. Awareness of the unlawful nature of a link as a determining factor in whether it is considered an act of public communication.
Chapter 3	Patents	The Problem of Toxic Priorities at the EPO. Validity period of a CCP for a product for which the first marketing authorization was granted in a Member State prior to its accession to the EU. Broad Scope of the Claim for Litigation Costs.
Chapter 4	Designs	The right of the licensee of a Community design to bring infringement actions without having registered the license. The suspension of the statute of limitations for civil actions involving industrial property.
Chapter 5	Plant varieties	Infringement of Plant Varieties: Nature of Damages and Criteria for Their Calculation
Chapter 6	Piracy	Criminal conviction for a link-sharing website. The landlord of a commercial space acting as an intermediary in the sale of counterfeit goods.
Chapter 7	Designations of Origin	Evocation. Relevant criteria for determining whether a geographical indication is evoked.
Chapter 8	Unfair Competition	Directive on Unfair Commercial Practices: Tie-in Sales; Misleading Omissions.
Chapter 9	Personal Information	European law does not permit national regulations that collect traffic and location data indiscriminately. A dynamic IP address can also be considered personal information. Right to be forgotten.