IP Report - 2017-2

The Inteo IP Report is a newsletter reporting on noteworthy developments in Belgian and EU intellectual property law. To receive these updates by e-mail, you can subscribe here.

Patents - preliminary injunctions & the requirement of urgency – On 21 February 2017, the Brussels Court of Appeal issued a judgment in preliminary injunction proceedings between medical imaging company Guerbet and Bayer (2016/KR/18). Guerbet sought a preliminary injunction to prevent the marketing of a generic version of its product, a contrast agent, on the basis of a European patent for a process for preparing such agent. The court denied Guerbet’s appeal against the first instance dismissal because the requirement of urgency to obtain a preliminary injunction in Article 584 of the Belgian Judicial Code was no longer met. This requirement entails inter alia that regular proceedings cannot provide timely relief for the party seeking a preliminary injunction. This implies that the claimant must act diligently and without delay to obtain relief in a main action. While Guerbet was aware of the alleged patent infringement since at least January 2016 and it had sought interim relief both in preliminary injunction proceedings and a saisie-contrefaçon, it had not followed up on these actions by initiating main proceedings. Such proceedings had still not been filed on the trial date for the appeal in the preliminary injunction proceedings in late October 2016. In result, the Court of Appeal dismissed the action because it no longer met the statutory requirement of urgency. The Court also held that the action by the co-claimant, the local subsidiary of Guerbet and the holder of a non-exclusive licence that was not notified to the Belgian patent office, was inadmissible.

Copyright – On 17 February 2017, the Cour de Cassation dismissed a point-of-law appeal against a judgment of the Ghent Court of Appeal in Longchamp / Calem (C.15.0144.N). Longchamp unsuccessfully sought an injunction against a handbag marketed by Calem on the basis of its copyright in the classic Le Pliage bag. The Cour de Cassation confirmed the appeal court’s finding that a combination of design features in a handbag that corresponds to a fashion trend is not, as such, a work eligible for copyright protection. Since the subject matter claimed was, according to the court, not a work eligible for protection, the originality test did not need to be applied to dismiss the infringement action. It is worth noting that the Ghent Court of Appeal’s judgment had been the subject of substantial criticism in legal doctrine, not in the least because the Brussels Court of Appeal had confirmed in several decisions that the Le Pliage bag was protected by copyright.

Trade marks & debranding – The Brussels Court of Appeal issued a reference for a preliminary ruling to the EU Court of Justice (CJEU) in Mitsubishi / Duma Forklifts (2010/AR/2007) on 7 February 2017. In a lengthy judgment, the Court of Appeal awarded substantial provisional damages for trade mark infringement by importing and marketing Mitsubishi forklifts originating from outside the European Economic Area. In relation to a batch of such forklifts, Duma argued that there was no trade mark infringement because it had removed all Mitsubishi trade marks and serial numbers from the products prior to clearing them in the EEA. The Court of Appeal decided to ask the CJEU whether the trade mark owner is entitled to oppose debranding of products that were not put into circulation in the EEA and whether it is relevant that the products are then marketed in the EEA under the third party’s own trade mark (rebranding). The referral also asks the CJEU to consider the relevancy of the fact that the average consumer could still identify the commercial origin of the products on the basis of their appearance or design.

Design rights & copyright – On 17 January 2017, the President of the Brussels Commercial Court (Dutch language division) issued an injunction against the claimant in Neoz / Imagilights (A/16/03552). Neoz sought an injunction against Imagilights on the basis of registered Community designs (RCD) for cordless table lamps. The claim became a boomerang. The defendant relied upon documents establishing that its own product designs predated the RCDs, counterclaiming for invalidity of the designs and an injunction on the basis of its earlier copyrights in the product design. The court revoked the designs on the basis of Article 25, 1), f) of Regulation (EC) No 6/2002 on Community Designs, providing that a design can be declared invalid if it constitutes an unauthorized use of a work protected under the copyright law of a Member State. The court did not accept the claimant’s defense that its own designs had been independently created, noting that there is no such exception in Article 25, 1), f) and that Neoz failed to establish its own original creation in view of the striking similarities between the designs. Neoz did not provide any information in regard to its own design process. The defendant also disclosed its designs on trade fairs before the application date of the RCDs, making Neoz’s statement that it could not have known of those designs implausible in the eyes of the court. 

Domain names - In ADR proceedings under Section 10 of the Terms and conditions of DNS.be (the .be registry operator), the third party decider rejected a complaint to obtain the transfer of the domain name kingsize.be (Case No 44415). One of the 3 requirements to obtain the transfer of a .be domain name is that it was either registered or is being used in bad faith. Kingsize.be was registered by a domainer almost a year before the complainant was incorporated under the name Kingsize. The complainant offered to purchase the domain name for 500 EUR, to which the holder made a counteroffer of 4.900 EUR. An offer to sell a domain name at a high price can be, and often is, evidence of use in bad faith. In this particular case, the third party decider was not convinced. The decision notes that the domain name is a generic term in the English language and that it was registered prior to the complainant's use of the name. Because the domain name holder did not initiate the contact regarding the sale and no other evidence of bad faith was put forward by the complainant, his asking for a higher price was not sufficient to establish bad faith in this case.