2015 has seen the heavily contested introduction of standardised packaging for tobacco products, the first ever court mandated graduated response scheme to copyright infringements, and brought clarification to the scope of injunctions in comparative advertising campaigns.
Ireland First EU Country to Introduce Legislation for Standardised Packaging of Tobacco Products
In early 2015, Ireland became the first EU Member State to introduce plain or standardised packaging for tobacco products. The Public Health (Standardised Packaging of Tobacco) Act 2015 was signed into law on 10 March 2015, grounded on measures contemplated, but not mandated, by the new EU Tobacco Products Directive (2014/40/EU). The measures mandated by the act will come into effect on a phased basis between May 2016 and May 2017.
This legislation and similar legislation enacted in the UK has been heavily criticised by commentators and, predictably, by the tobacco companies, as the effective invalidation of trade marks for tobacco products.
A preliminary reference challenging the validity of the new EU Directive was the subject of a preliminary opinion issued by Advocate General Juliane Kokott ("AG") of the Court of Justice of the European Union ("CJEU") on 23 December 2015. The AG concluded that the Directive of 2014 was lawfully adopted. While the AG’s Opinion is not binding, the CJEU rarely departs from the underlying opinion of the AG in its decisions so it would seem standardised packaging is here to stay.
Commercial Court Grants Injunction Against ISP to Adopt Graduated Response Scheme
In the most significant Irish copyright decision of the year, the Commercial Court granted an injunction against an Internet service provider ("ISP") to adopt a graduated response scheme ("GRS").
In March 2015, Mr Justice Cregan held that an Irish Court could grant an injunction imposing a GRS against an innocent intermediary to prevent copyright infringement under Article 8(3) of the Copyright in the Information Society Directive (2001/29/EC). The action was brought by music companies Sony, Warner and Universal against one of Ireland’s largest internet service providers UPC - now Virgin Media.
The Court held that the injunction, which ordered UPC to engage with its subscribers by issuing letters following complaints from rightsholders on a systematic basis, was “fair and equitable”. It was also found to comply with the requirements for injunctions under various EU Directives including requirements that it not be “unnecessarily complicated or costly” and must be effective, proportionate and inhibitive.
While the terms of the injunction are not as stringent as those initially sought by the music companies, this is a significant development in copyright law as it represents the first court ordered GRS to be imposed in Europe or indeed further afield. The order anticipates the building of a system over a period of 12 to 18 months at a significant capital expenditure of the part of UPC.
The matter is currently on appeal to the Court of Appeal and an appeal hearing is expected to commence in the first half of 2016.
Injunction Entitlement Granted for Trade mark Infringement in a Comparative Advertising Campaign
In a significant comparative advertising decision in June 2015, the Commercial Court held that Dunnes Stores, one of Ireland’s largest retailers, had infringed the Irish comparative advertising regulations by its use of a comparative advertising campaign with leading global discount supermarket chain Aldi in 2013.
In granting the injuction against Dunnes Stores, Mr Justice Cregan made particular reference to the “cavalier attitude” Dunnes had displayed towards Aldi’s complaints. The failure on the part of Dunnes to reply to basic correspondence was considered to be “beyond mere discourtesy”. This disregard for Aldi’s rights informed the Judge’s decision to grant the injunction, even though the campaign had ceased.
While the decision does not make comparative advertising campaigns unlawful, it highlights that a high level of care should be taken to ensure that any advertisements do not infringe comparative advertising regulations and / or trade mark rights.
Trade mark owners can also now be more confident in their ability to obtain an injunction on foot of trade mark infringement in respect of potential future infringements in circumstances where a disregard for the trademark owner’s rights is evident.
What’s on the Horizon for 2016?
It is envisaged that 2016 will bring clarification on the compatibility between GRS and EU directives. A final decision is awaited from the CJEU on standardised tobacco packaging. Elsewhere, in the Intellectual Property sphere, a referendum on the ratification of the International Agreement on a Unified Patent Court ("UPC") is anticipated which will pave the way for the establishment of a local division of the Court of First Instance of the UPC. Further, the EU Directive on trade secrets, which was preliminary agreed by the European Parliament and the Council, in December 2015, is also anticipated.
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