INTA’s Europe Amicus Subcommittee Marks Unprecedented Number of Submissions

Published: March 9, 2022

INTA’s International Amicus Committee, Europe Amicus Subcommittee was busier than ever during the 2020‒2021 Committee Term, filing an unprecedented number of submissions with European authorities. The Subcommittee submitted a total of 12 briefs, working as a team under the leadership of Marina Perraki (Tsibanoulis & Partners Law Firm, Athens, Greece).

Among the submissions, INTA filed seven briefs before the Court of Justice of the European Union (CJEU)—all the more noteworthy since there is no official amicus process before the CJEU. In addition, and for the first time, the Association filed five briefs with the Grand Board of Appeal (GBoA) of the European Intellectual Property Office, taking advantage of the recently introduced process for interested groups to intervene in GBoA proceedings.

Before the CJEU, INTA intervened in cases involving both trademark and design law matters.

On trademark law, the Association filed a brief on the co-existence of trademarks and earlier non-registered rights, in a preliminary case referred by the Dutch Supreme Court (Case C-112/21). INTA intervened in support of the validity and enforceability of non-challenge agreements in a preliminary ruling case referred by the German Federal Supreme Court (Case C-62/21).

In addition, in cooperation with INTA’s Parallel Imports Committee, the Association submitted two briefs involving parallel imports of pharmaceutical products. The cases emerged after the coming into force of the Falsified Medicine Directive (FMD) and the respective Commission Delegated Regulation. The Europe Amicus Subcommittee acknowledged the lack of any CJEU case law on the issues involved; that is, 1) whether branding parallel import generic pharmaceutical products with the name of the original product infringed the rights of the trademark owner; and 2) whether the FMD and the Delegated Regulation affected the existing CJEU case law on pharmaceuticals’ exhaustion. In the first case, INTA argued that an original trademark is not exhausted when a brand owner makes generic versions of its pharmaceuticals which later appear as branded parallel imports (Joint Cases C-253/20 and C-254/20); in the second case, the Association argued that repackaging is not “objectively necessary” within the meaning of the five conditions for exhaustion with respect to repackaging (Joint cases C-147/20 and C-224/20).

Further, INTA intervened in another case concerning the exhaustion of trademark rights in parallel import cases, in a preliminary ruling referred by the Regional Court in Warsaw, Poland, to the CJEU (Case C-175/21).

In cooperation with the Designs Committee, INTA filed a brief on the design protection of components of complex products (the underside of a saddle for bicycles or motorcycles, in this case). INTA took the position that visibility criteria should be interpreted in an objective manner, applicable to any kind of complex product and independent of the subjective qualities of a specific user or angle (Case C-472/21).

Around design law, INTA filed an amicus brief in an infringement case concerning a registered Community design (RCD). The case, a preliminary ruling referred by the Higher Regional Court Düsseldorf, Germany, focused on the law that should apply, from a private international law perspective to the supplementary claims and remedies in an RCD infringement action (Case C-421/20).

At the GBoA, the first brief INTA filed concerned the genuine use of collective trademarks in the European Union and the possible overlap between collective and certification marks.

Subsequently, INTA filed two amicus briefs in three parallel cases —one in cases R 1719/2019-5 and R 1922/2019-5, and one in case R 2248/2019-5. The cases addressed whether famous names and titles (in this instance, trademark applications for GEORGE ORWELL, ANIMAL FARM, and 1984) could be registered as trademarks for books and films, or entertainment, cultural, or educational services.

Additionally, the Association intervened in a case concerning country names, arguing that they should be registrable inasmuch as they constitute signs “capable of distinguishing the goods or services of one undertaking from those of other undertakings” (Case R 1613/2019).

Finally, INTA intervened on the similarity of non-alcoholic and alcoholic beverages to determine likelihood of confusion (Case R 964/2020-4).

In an interview published in the 2020 INTA Annual Report, Ms. Perraki shared her view on what contributed to the higher-than-usual number of amicus submissions in Europe last term, noting: “We had coordinated actions from day one, starting from raising awareness and engaging in new procedures to monitor possible cases, to effectively working on the drafting of briefs under very tight deadlines. All this was made possible due to the aspiration of our members, their brilliant legal minds, and excellent teamwork.”

In light of this exceptional term, the International Amicus Committee will host a session during INTA’s 2022 Annual Meeting Live+ to present the Association’s policy positions in amicus briefs recently filed in Europe and the United States. The session, INTA’s Role as Friend of the Court—Review of Amicus Briefs Since 2020, will take place on April 30, from 2:30 pm to 3:30 pm EDT, in person at the Walter E. Washington Convention Center in Washington, D.C.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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