More questions on Google and Transparency

29 April 2010

By Michael Coyle

Mr Justice Arnold recently ( July 2009) referred 10 questions to the Court of Justice of the European Union under Article 234 EC, now Article 267 TFEU. Recent decisions from the ECJ and in particular the Google France case has made 5-10 largely redundant and counsel for the parties were helpful in responding to 1-4. However his Lordship was critical of the response of the ECJ and sought further clarification of 3(b)

He was critical for the following reasons "

  • If I may say so, I regard the request for clarification as a helpful step in the dialogue between the Court of Justice and the national courts. As the request indicates, it is appropriate for this Court to take stock in the light of the Court of Justice's judgment in Google France. Furthermore, if the questions referred do not sufficiently clearly articulate the points on which this Court needs assistance from the Court of Justice, then this Court should endeavour to make them clearer.

     He sought clarification on 3(b)

  • (3) Does any such use fall within the scope of either or both of:

    • [(a) Article 5(1)(a) of the Trade Marks Directive and Article 9(1)(a) of the CTM Regulation;] and

    (b) (assuming that such use is detrimental to the distinctive character of the trade mark or takes unfair advantage of the repute of the trade mark) Article 5(2) of the Trade Marks Directive and Article 9(1)(c) of the CTM Regulation?

    The Judgment can be found here:

    http://www.bailii.org/ew/cases/EWHC/Ch/2010/925.html

     

     

     

     

    Michael can be contacted via email on michael@trademarkroom.com.