The Court of Appeal has decided to refer three questions to the European Court of Justice in relation to a case involving a a series of TV, radio and press advertisements by ‘3’ during summer 2004 which compared the pre-pay products of ‘3’ with those of O2. The The High Court had previously dismissed O2`s case that the comparison was misleading and that the advertisements infringed its registered trade marks in respect of `O2` and its signature blue bubbles. The Court will now ask the ECJ to decide on where, in the course of trade, a company uses a sign in a context purely for the purpose of comparing the relative merits of his goods or services with those of the trade mark owner; and in such a way that it cannot be suggested that the essential function of the trade mark to guarantee the trade mark as an indication of origin is in any way jeopardised, can his use fall within either (a) or (b) of Article 5(1) of the Trade Mark Directive 1984.
The Court of Appeal has also dismissed an appeal by InterDigital against a High Court ruling, which refused to set aside proceedings brought by Nokia. Nokia is seeking declarations that some of InterDigital’s patents, licensed to Nokia, were not essential for compliance with the internationally-agreed 3G standard for mobile phones. The Court of Appeal ruled that Nokia had a clear claim of right to seek a declaratory judgment since it has a manifest and real commercial interest in a decision of the kind sought, and because it is “technically infringing” if it is wrong.
Meanwhile, the European Court of Justice has ruled that whilst the mere installation of television sets in hotel rooms does not constitute an act of communication to the public within the meaning of Article 3(1) of the Copyright Directive, that communication by means of television sets to which is fed a signal initially received by the hotel constitutes ‘communication to the public’ within the meaning of Article 3(1) of the Directive. The Court was asked to rule on these questions by the Provincial High Court of Barcelona, to help it reach a decision in a case brought by Sociedad General de Autores y Editores de España (‘SGAE’), an intellectual property rights management society, against Rafael Hoteles SL (‘Rafael’), the owner of Hotel Rafael, for infringement of intellectual property rights managed by SGAE.