Changing competition law restraints on trademark licences vertical restraints selective distribution abuse of IP rights 5th TLI SYMPOSIUM Rotterdam 31 October 1st November ID: 424735
Download Presentation The PPT/PDF document "Giovanni Guglielmetti" is the property of its rightful owner. Permission is granted to download and print the materials on this web site for personal, non-commercial use only, and to display it on your personal computer provided you do not modify the materials and that you retain all copyright notices contained in the materials. By downloading content from our website, you accept the terms of this agreement.
Slide1
Giovanni Guglielmetti
Changing competition law restraints on trademark licences (vertical restraints,
selective
distribution, abuse of IP
rights)
5th TLI
SYMPOSIUM
-
Rotterdam 31
October
– 1st
November
2014Slide2
Antitrust rules
applying
to Trademark Licenses
Artt. 101-102 TFEU
Not
generally
block
exempted
under Reg. 19/65/EEC,
but
:
VABER (Reg.
330/2010)
art. 2.3 TM
license
ancillary
to VA
TTBER (Reg. 316/2014), art. 2.3 TM
license
part of TT (
mixed
agreements
)
EC case law:
old
and
scarce
no ECG
decisions
Commission
decisions
: Campari (1977)
Moosehad
/ Whitbread (1990)Slide3
Art. 101
pro competitive
built
-in
principles
(
doctrine
of
separability
of trademark from
product
,
descriptive
TM, free
uses
, etc.)
but
protection
of
well
known
trademark
as
property
rights
beyond
confusion
may
create market
power
Ownership of trademark per se
does
not
confer
market
power
:
other
parties are free to sell the
same
goods
under
different
trademarks
,
but
well
known
trademark
may
confer
an
important
advange
in
entering
or
competing
in a
certain
market (
Moosehead
/Whitbread 15)
Branding
tends
to
increase
product
differentiation
and reduce
substitutability
(VA
Guidelines
104)
In
principle
Commission
does
not
apply
the
same
principles
developed
in TTBER to trademark
licensing
(TT
Guidelines
50)
If
the
aim
of the
agreement
is
to
decentralise
manufacture
and
rationalise
distribution
to
promote
the sales, non compete
obligation
on
licensees
have
efficiency
effects
similar
to
exclusive
dealings
agreements
and
not
restrictive
effects
as
in
patent
or
other
creativity
results
protecting
IP (Campari III.2)Slide4
Art. 101
Campari (1977):
Restrictive
but
exempted
(
improve
production and
distribution
,
protect
investment
)
-
exclusivity
-
Restriction
on
active
sales
outside
allocated
territory
(passive
not
exempted
)
Non compete (
different
from
patent
licensing
agreement
/
similar
to
exclusive
dealing
agreement
)
Obligation
to
supply
the
Italian
product
to
certain
group
of
customers
(
diplomatic
corps
,
foreign
armed
forces
etc.)
promote
brand
loyalty
Not
restrictive
:
Export
ban
outside
the common market
where
reimportation
unlikely
(
taxes
,
duties
,
trade
margins
)
Quality
control (
restrictions
in the use of
plants
)
Quality
control (
supply
of secret
raw
material
/
supply
of non secret
raw
material
not
exempted
)
Confidentiality
Minimum
spending
adv
non
assignment
obligations
on
licenseesSlide5
Art. 101
Moosehad
/ Whitbread (1990)
Restrictive
but
exempted
Exclusivity
Prohibition
of
active
sales
outside
the
territory
Non compete
Not
restrictive
:
Limitation
on the use of know-how
Confidentiality
of
know
how
Qualitative
standards
(
including
purchasing
obligation
)
no-
challenge
:
Ownership or relative
ground
of
refusal
–
not
restrictive
(
since
«
any
other
party
is
prevented
in
any
event
»)
Absolute
ground
the
restriction
is
appreciable
only
for «
well
known
trademarks
»
which
represent
«an
important
advantage
»Slide6
Per se unlawful
Price fixing (VABER, 4(a) TTBER artt. 4.1(a) 4.2(a)) with the
exception
of maximum sale
price
and
recommended
sale
price
between
non competitors (in US
also
minimum RSP under
rule
of
reason
Leegin
/PSKS
S.Ct
2007)
Absolute
territorial
protection
(C 258/78
Nungesser
, 29, Campari , IB) and
other
contractual
provision
impairing
the
effect
of the
exhaustions
of
rights
(
labelling
to monitor the
parallel
market,
monitoring
etc.
see
C-244/00 Va
Doren
40,
third
party
realeased
from the
burden
of the
proof
if
real
risk
of
partitioning
of
markets
occurs
),
but
under TTBER
absolute
territorial
protection
possible
if
licensor
reserved
to
itself
a
certain
territory
, and
between
licensor
and
licensee
absolute
ban
on
selling
contract
goods
to end
user
via internet
breaches
the
obligation
not
to
restrict
passive sales in a
selective
distribution
network Pierre
Fabre
C 439/09
Restrictions
on the use of keyword and
other
online
adv
non
related
to
quality
?
See
C 323/09 Interflora, 57-8
it
is
not
the
purpose
of the trademark to
protect
its
proprietor
against
practice
inherent
in
competition
, internet
adv
on the
basis
of
keywords
corresponding
to
trademarks
costitutes
such
practice
in
that
its
aims
is
merely
to
offer
alternatives
to the
offer
of the trademark
proprietorSlide7
May in some circumstances be unlawful
Some
no
challenge
(
obiter
Moosehead
Whitebread
, TTBER, 5.1(b)
but
exempted
the
termination
in
exclusive
license
), in trademark
license
mixed
with TT
(
see
C 193/83 Windsurfing, 81,
caught
by art. 101
but
it
did
not
consider
whether
it
can be
exempted
)
Tying
:
obligation
to
buy
from
licensor
certain
non secret
raw
material
(Campari 1B)
unless
needed
for
quality
control
? (
but
see
in US Illinois
Tool
v.
Independent
Ink
, S
Ct
. 2006,
tying
product
patented
is
not
a
presumption
of market
power
)Slide8
Lawful
Limitation
to
certain
goods
/
services
(
see
art. 8
TrDir
)
Quality
control (manufacturing
standards
,
obligation
to
purchase
certain
materials
,
packs
and
product
s
approvals
) (
see
art. 8
TrDir
)
Confidentiality
for
know
how
/
obligation
to
buy
secret
raw
materials
Minimum sales /
adv
expenditures
(
if
no
foreclosure
problem
exists
)
Exclusivity
No
challenge
for
ownership
/ relative
grounds
Enforcement
obligations
Assignment
prohibition
/
change
of controlSlide9
VABER
Negative
effects
of
vertical
restrains
are:
-
Foreclosure
of
suppliers
/ buyers
-
Softening
of
intrabrand
(buyers) or
interbrand
(
suppliers
)
competition
-
Obstascle
to market
integration
Art. 2.3,
apply
to:
a) Vertical
agreement
(
purchase
, sale resale of
goods
/
services
)
b) IP
not
primary
object
c) License to buyer (
not
to
supplier
)
d)
Faciliting
use, sale resale of
goods
/
services
by the buyer
VBER
Covers
:
Franchising
agreement
Distribution
agreement
Selective
Distribution
Doesn’t
apply
to:
Pure
license
agreement
contract
manufacturing with
supplier
Slide10
VABER
Block
exempted
:
if
supplier
market share
does
not
exceed
30%
relevant
market
Franchising
agreement
(VA
Guid
. 45):
Franchisee non compete (
whole
duration
of the
agreement
)
Franchisee
confidentiality
obligations
(
unlimited
in time)
Grant back non
exclusive
know
how
license
to
francisor
Obligation
concerning
the
enforcement
of the IPR by franchisor
Obligation
on franchisee
not
to use IP for
any
other
purposes
Non
assignment
obligation
Individual
Expemption
:
-
importance
of the
transferred
know
how
Non compete
necessary
to the common
idenitity
and
reputation
of the franchisor network (
whole
duration
of the
agreement
)
-
restriction
on
selling
(
contract
territory
and
selective
distribution
) Slide11
VABER
Block
exempted
:
Selective
Distribution (qualitative/quantitative)
Restriction
of
active
/passive sales to
unauthorised
distributors
in the
territory
reserved
by
supplier
to operate
that
system
(C-59/08
Copad
/Dior, 50:
only
contravention
of
provisions
in art. 8(2) the EC Directive
precludes
exhaustion
, trademark
enforcement
against
unauthorised
distributors
to
protect
the aura of
luxury
of the trademark,
as
jeopardsing
it
might
affect
quality
of the
luxury
good
which
includes
aura of
luxury
which
can be
preserved
by
characterists
and
conditions
of a
selective
distribution
system
, 25-30
)
Qualitive
standard
also
for the use of internet and
excluding
pure online sale
shops
(54)
Block
exemepted
:
Exclusive
distribution
:
Restriction
of
active
sales
into
the
exclusive
territory
or
customer
group
allocated
to
supplyer
or
another
buyer (C-244/00 Van
Doren
, 40,
third
party
should
not
be
required
to
disclose
the source of the
trade
marketed
product
provided
by a
member
of an
exclusive
distribution
system
as
this
would
raise
the
risk
of market
partitioning
by trademark
proprietor
)Slide12
TTBER
ART. 2.3
Applies
to
other
IPRs
licenses
(
including
trademarks
):
Contained
in
technology
transfer
agreement
Directly
related
to the production or sale of the
contract
products
Even
if
the
main
interest
of the parties
is
the
exploitation
of the trademark
TTBER
applies
to
mixed
patent
(and/or
know
how
) / trademark
license
with an
obligation
to use the trademark on the
products
exploiting
the
technology
Slide13
Art. 102 TFEU
C 241-242/91
Magill
C-418/01 IMS:
exclusionary
abuse
refusal
to
grant
a
license
not
per se abusive
but
it
may
if
it
Prevents
the
emergence
of a new
product
, for
which
there
is
a
potential
consumer
demand
Is
unjustified
by
objective
consideration
prevents
any
competition
in the
secondary
market
which
is
therefore
reserved
to the
dominant
undertaking
But
see
Trips art. 21 «
compulsory
licensing
shall
not
be
permitted
» (in
contrast
to art. 31 (k)
explicitly
admitting
compulsory
patent
license
as
a
remedy
for
anticompetitive
practice
)
Is
it
applicable
to
trademarks
which
do
not
hinder
the marketing of
products
under
different
trademark ?
Collective
licensing
of
trademarks
sport
leagues
for merchandising (American
Needle
v NTL US
SCt
2010). How to
define
«
relevant
market» and «new
product
» (are
apparel
with
certain
trademarks
new
products
? And videogames or software
which
needs
to use
all
the trademark
together
?).
The market of
spare
part and the
enforcing
of trademark
rights
against
parallel
importers
(
but
see
Oracle v
Mtech
Data Limited UK
S.Ct
2012)Slide14
Art. 102 TFEU
Exploitative
abuses
(102 a)
:
Grune
Punkt
/
Duales
System (
collective
waste
recovery
system
)
Commission
2001/463 / ECG C- 385/07):
-
imposing
trademark
licenses
for
all
products
+
calculating
license
fees
charged
for
certain
services
on
all
products
even
those
for
which
services
are
not
provided
.
See
TTBER
Guidelines
101, for royalties
calculated
also
on sales for
product
non
using
the
licensed
IP
Royalty
discrimination
(102 c)
by
collective
licensing
organizations
(
eg
. League merchandising)