The regular article tracking developments at the national level in key European countries in the...

c o m p u t e r l a w & s e c u r i t y r e p o r t 2 4 ( 2 0 0 8 ) 1 1 8 – 1 2 2

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European national news

The regular article tracking developments at the nationallevel in key European countries in the area of IT andcommunications – Co-ordinated by Herbert Smith LLP andcontributed to by firms across Europe

Mark Turner, Dominic Callaghan

Herbert Smith LLP, London, UK

0267-3649/$ – see front matter ª 2008 Herbedoi:10.1016/j.clsr.2008.01.011

a b s t r a c t

This column provides a concise alerting service of important national developments in key

European countries. Part of its purpose is to compliment the Journal’s feature articles and

Briefing Notes by keeping readers abreast of what is currently happening ‘‘on the ground’’

at a national level in implementing EU level legislation and international conventions and

treaties. Where an item of European National News is of particular significance, CLSR may

also cover it in more detail in the current or a subsequent edition.

ª 2008 Herbert Smith LLP. Published by Elsevier Ltd. All rights reserved.

1. Belgium Topeu.com firstly argued that Eurid’s approval of the appli-

1.1. Brussels Court interprets EU regulation on .eu toplevel domain

In a recently published judgment of 23 February 2007, the

Brussels Court of First Instance interpreted Articles 11 and

20 of EU Regulation 874/2004 of 28 April 2004 concerning the

.eu top level domain.

The case involved Eurid, the Registry for the .eu top level do-

main, and the company Topeu.com S.R.O. During the period in

which holders of prior rights could register domain names prior

to other applicants (the ‘sunrise period’), Topeu.com applied for

several domain names based on its trademarks. However, its

applications were preceded by only 1 h by applications of third

parties, which also based their applications for the domain

names porn.eu, porno.eu, bank.eu, auto.eu, casino.eu, keno.eu

and sex.eu on their trademarks ‘P&ORN’, ‘PORNO’,

‘&B&A&N&K&’, ‘AUTO’, ‘CASINO’, ‘KENO’ and ‘SEX’. Via the lit-

igation, Topeu.com attempted to recover the domain names.

rt Smith LLP. Published b

cations in favour of the other applicants violated Article 11 of

the Regulation. According to Topeu.com, this Article requires

that the prior right relied upon for registration include the

.eu suffix. However, the Court did not agree. It ruled that con-

cluding otherwise would mean that most prior rights would

never be eligible due to the absence of the .eu suffix, whereas

the whole phased registration procedure had specifically been

created to protect prior rights.

Topeu.com secondly argued that Eurid violated Article 11

of the Regulation by not using the specified method of rewrit-

ing for the domain names porn.eu and bank.eu for the trade-

marks ‘P&ORN’ and ‘&B&A&N&K&’. Article II provides three

options for Eurid to remedy special characters in trademarks

when accepting them as domain names, (1) the replacement

by a hyphen, (2) the removal of these special characters or

(3) the rewriting of these special characters. (special charac-

ters and punctuation include: ‘@ #$ % ^ & * 0 þ ¼ <>{} [] 1 / :

; , . ?’). The Court found, however, that this provision does

not create a hierarchy between the different options. Rights

y Elsevier Ltd. All rights reserved.

http://www.compseconline.com/publications/prodclaw.htm

c o m p u t e r l a w & s e c u r i t y r e p o r t 2 4 ( 2 0 0 8 ) 1 1 8 – 1 2 2 119

holders are thus free to choose one of the three options men-

tioned in Article 11.

Topeu.com thirdly argued that that the application by the

holders of the trademarks ‘P&ORN’ and ‘&B&A&N&K&’ was

based on an abusive use of the ampersand sign at the compe-

tent trademark offices to unlawfully obtain the registration of

the trademarks (Article 20). The Court, however, found that an

abuse only exists in the cases outlined in Article 20, i.e. out-

standing or unpaid debts owed to the Registry, the holder’s

non-fulfilment of the general eligibility criteria and the hold-

er’s breach of the terms of registration.

Erik Valgaeren, Partner [email protected] and Stephanie

Schuit, Associate [email protected] from the Brussels of-

fice of Stibbe (Tel.: þ32 2 533 53 51).

2. Denmark

2.1. Inaction results in loss of domain names despiteregistered trademarks

In 2007, the Danish Complaints Board for Domain Names

ruled on a complaint on the use of the domain names ‘‘gulesi-

der.dk’’, ‘‘gulesideronline.dk’’ and ‘‘gulesider-online.dk’’ (in

English ‘‘yellowpages.dk’’, etc.).

The complainant carries on an information services busi-

ness, including contact and telephone books of private per-

sons and enterprises. Since 1985 it has extensively used the

name ‘‘DE GULE SIDER’’ (in English ‘‘THE YELLOW PAGES’’).

The trademark was later incorporated and registered as

a word mark and device mark, and in 1997 the complainant

registered the domain name ‘‘degulesider.dk’’ (in English

‘‘theyellowpages.dk’’).

The respondent, who carries on business with Internet

related services, used the domain names ‘‘gulesider.dk’’,

‘‘gulesideronline.dk’’ and ‘‘gulesider-online.dk’’ (in English

‘‘yellowpages.dk’’, etc.), which all closely resemble the

domain name owned by the respondent ‘‘degulesider.dk’’.

The complainant claimed that the domain names should

be assigned to the complainant. The complainant alleged

that the domain names registered by the respondent closely

resembled the complainant’s trademark, and there was there-

fore an actual risk of confusion with the trademark of the

complainant, which ultimately could result in the dilution of

the complainant’s rights.

The Danish Complaints Board for Domain Names found

that despite the fact that the complainant had known about

the respondent’s use of the disputed domain names for

more than 8 years, the complainant had not during this period

objected or taken any legal steps in order to stop the respon-

dent’s active and continuous use of the domain names. There-

fore the Complaints Board of Domain Names ruled that the

complainant’s lack of action for that period was to be consid-

ered as an implied acceptance of the respondent’s use of the

disputed domain names. The three domain names were

therefore not to be assigned to the complainant.

This ruling illustrates that measures have to be taken

against the use of closely related domain names, in order

not to forfeit the rights to such domain names by implied

acceptance, even though a trademark similar to the domain

name is legitimately incorporated and registered.

Carsten Raasteen, Partner, [email protected] and Daniel

Herman Roejtburg, Assistant Attorney, drb@kromannreu

mert.com from Kromann Reumert, Copenhagen office, Denmark

(Tel.: þ45 70 12 12 11).

3. Germany

3.1. Keyword advertising

The German Federal Court of Justice decided in its ‘‘Impuls’’ De-

cision of 2006 that the use of another company’s trademark as

a meta tag in the HTML code of the user’s web page, which is in-

visible to the common Internet user, constitutes a ‘‘use of trade-

mark in commerce’’ and therefore infringes trademark rights.

In its ‘‘AIDOL’’ Decision, the Federal Court of Justice affirmed

this decision. In ‘‘AIDOL’’, the trademark was positioned as

white text to blend in with the white background. Both deci-

sions are based on thefact that the specific use of the trademark

has a significant effect on search engine results as it provides

the user’s site with a higher ranking. The Federal Court of Jus-

tice did not assign any importance to the issue of whether the

trademark is actually visible to the consumer or not.

Similar cases on keyword advertising have not yet been de-

cided by Germany’s highest court. However, there is currently

a great deal of legal discussion about whether the findings in

‘‘Impuls’’ and ‘‘AIDOL’’ could be applied to keyword advertising.

Keyword advertising is a form of context-sensitive adver-

tising. Search engines charge advertisers for placing an adver-

tisement linked to previously chosen keywords. If a user

searches the keyword, the advertisement will be displayed

next to the regular search results. Problems arise if the adver-

tiser chooses a keyword which is a protected trademark.

There are several decisions of lower courts and regional

courts classifying this use of another’s trademark as a trade-

mark infringement. They argue that when searching for spe-

cific trademarks, the consumer only expects results referring

to offers of the trademark’s owner. Therefore, the advertiser

takes advantage of the trademark’s reputation.

The majority of German courts and the German legal liter-

ature, however, object to this conclusion. They argue that,

unlike in the case of meta tags, the regular search results

are not affected since the advertisements are separate and

clearly marked as such. Therefore, the consumer is provided

with two different platforms, one offering information and

one offering sales promotion relating to the specific keyword.

Consumers are not misled by these ads as they are familiar

with context-sensitive advertisement in other forms of media

(e.g. television, print publications, etc.).

Even though the balance of current opinion is that keyword

advertising is not trademark infringement, this issue will

remain uncertain until the Federal Court of Justice has ruled

it upon.

For further information see:

� BGH, Urteil vom 08/02/2007 – I ZR 77/04 at

http://juris.bundesgerichtshof.de

mailto:[email protected]







� BGH, Urteil vom 18/05/2006 – I ZR 183/03 at http://

juris.bundesgerichtshof.de

Dr. Ann Marie Welker, [email protected] from the

Frankfurt Office of Gleiss Lutz (Tel.: þ49 69 955 140).

4. Italy

4.1. Request for suspension of the assignment of WiMaxlicenses rejected

In October 2007 the Italian company MGM Productions Group

(the ‘‘Company’’) started an action before the regional Admin-

istrative Tribunal of Lazio for the voidance of the Italian Com-

munications Authority’s Regulation on assignment of WiMax

frequencies (the ‘‘Regulation’’) and also to void the subse-

quent Invitation to Bid issued by the Ministry of Communica-

tions. The Company also brought a summary proceeding for

the suspension of the effects of the Regulation (and the rele-

vant Invitation) pending the ordinary proceedings.

The Regulation and the relevant Invitation to Bid dividedthe

assignment of the exploitation rights into three blocks. Two

blocks (a total of 14 licenses) are to be granted for macro-areas

(several regions together) and the third block (21 licenses) is to

be assigned at regional level. To comply with the statutory re-

quirement a block of licenses has been reserved for operators

who are not already assignees of broadband wireless access

(BWA) frequencies (i.e. ‘‘weak operators’’).

The Company’s principal argument was that, if enforced,

the Regulation would create a situation favourable to the estab-

lished large providers (namely the UMTS, i.e. ‘‘3G’’ carriers).

The Company also alleged that the Regulation would create

an obstacle preventing access to the BWA market, as the reser-

vation of just one block for weak operators would not be suffi-

cient to facilitate access to that market by such operators.

On 22 November 2007, at the end of the summary proceed-

ings, the Tribunal rejected the request for suspension on the

basis that the mandatory reservation of one block of rights

to weak operators was prima facie a sufficient guarantee of val-

idity of the Regulation. Furthermore, the Tribunal pointed out

that neither the Regulation nor the Invitation to Bid had pre-

vented the Company participating in the assignment proce-

dure. Therefore the Company had not suffered actual

damages. Nor had it given prima facie evidence of potential

damage which could support the immediate suspension of

the Regulation.

On 20 January 2008 the Ministry of Communications dis-

closed that it has received 29 bids for the 35 available licenses.

Of the bidding companies, only three are large carriers

(Telecom Italia, Wind, and Fastweb) since H3G and Vodafone

(the other two large providers) have not participated. After

January 2008 the bids will be examined.

http://www.pitelefonia.it/p.aspx?i¼2124320.

Salvatore Orlando, Partner, [email protected] and

Stefano Bartoli, Senior Associate, [email protected]

from the Rome office of Macchi di Cellere Gangemi (Tel.: þ 39 06

362141).

5. The Netherlands

5.1. Opta imposes fines totalling one million euro

On 5 November 2007, OPTA (the Dutch telecom watchdog)

fined three Dutch companies and their managing directors

a total of one million euro. The fine was imposed because

the companies illegally installed software on the computers

of approximately 22 million Internet users in and outside

the Netherlands. By installing adware and spyware the com-

panies distributed advertisements and obtained access to

the (personal) data of the Internet users. This is the first

time that OPTA has imposed fines on distributors of unsolic-

ited and unwanted software.

Misleading files were used to entice Internet users to down-

load seemingly harmless files, while actually they were

installing the companies’ adware and spyware. Also by using

so-called botnets over 450 million files were installed illegally

on approximately 22 million computers. The files caused

a downpour of advertisements and installed software which

nestled in the toolbar of Windows XP and Microsoft Internet

Explorer and showed alternative search results.

On the Internet, hundreds of complaints surfaced mostly

because users did not know where the files came from and

how they could be deleted. The software could only be deleted

by an expert.

The fines are based on the Dutch universal service and end

user interest decree (het ‘Besluit universele dienstverlening

en eindgebruikersbelangen’) which is based on the Dutch

Telecommunications Act. Its purpose (among others) is the

promotion of safe usage of the Internet and the protection of

the user’s privacy. OPTA concluded that the companies and

their managing directors knowingly broke the rules laid

down by the decree for over a year. OPTA feels that these fines

are adequate and hopefully a deterrent.

The companies and their managing directors have

appealed the fines.

Link (in Dutch only): http://www.opta.nl/download/

202311þboeteþverspreidingþongewensteþsoftware%2Epdf.

Reinout Rinzema, Partner, [email protected] and Rem-

brandt Brouwer, Associate, [email protected] from

the Amsterdam Office of Stibbe (Tel.: þ31 20 546 01 12).

6. Norway

6.1. Implementation of the Data Retention Directive

There is an ongoing process to implement the Data Retention Di-

rective(Directive2006/24/EC) inNorway.Theprocesshasrevealed

a great deal of opposition to the Directive and its provisions.

The motives behind the Directive are in particular to

strengthen the fight against serious crime. Influential organi-

sations in Norway, including the Data Inspectorate, have

expressed doubt as to the likelihood of achieving this goal by

means of the Directive. It has been argued that criminals –

particularly those involved with organised crime – are likely

to be the first to adjust to the new situation. Further, it has




http://www.pitelefonia.it/p.aspx%3Fi%3D2124320

http://www.pitelefonia.it/p.aspx%3Fi%3D2124320



http://www.opta.nl/download/202311%2Bboete%2Bverspreiding%2Bongewenste%2Bsoftware%2Epdf








c o m p u t e r l a w & s e c u r i t y r e p o r t 2 4 ( 2 0 0 8 ) 1 1 8 – 1 2 2 121

been maintained that a consequence of the Directive would be

that the entire population is treated as potential criminals.

Another important point of criticism has been that the

Directive makes an inroad into the protection of privacy and

that the basic rule that personal data shall not be stored longer

than necessary will be ignored. This also impacts on the

press’s role as ‘‘public watch dog’’ and the freedom of speech,

as anonymous sources and whistle blowers could be tracked

down more easily than today with the provisions set forth in

the Directive. In particular the Norwegian Data Inspectorate

has asserted that the leak of information is not at all unlikely

and that the information that will be stored in accordance

with the Directive has the potential for serious abuse. When

asked about the future in light of the Directive, the Head of

the Norwegian Data Inspectorate said: ‘‘Do I believe protection

of privacy has a future? Surely. Just as much as pandas have

a future at the Zoo’’.

It is still not clear when and how the Data Retention Direc-

tive will be implemented in Norway.

Stein-Erik Jahr Dahl, Associate, [email protected] and Ingvild

Standal Næss, Associate, [email protected] from Thommessen

Krefting Greve Lund AS (Tel.: þ47 23 11 14 94).

7. Spain

7.1. New law to promote the Information Society

The new law 56/2007, dated December 28, on Measures to Pro-

mote the Information Society, ‘‘Ley de Medidas de Impulso de

la Sociedad de la Informacion’’, (‘‘LMPIS’’) has been enacted as

part of the ‘‘Plan Avanza’’. It was approved by the Government

on November 2005 with the aim of promoting the use of infor-

mation technology and communications.

LMPIS includes measures to promote the use of electronic

means in areas such as electronic invoices (in particular in con-

tracts entered into with public bodies) and in relation to con-

tracting in general. In this respect the law imposes on certain

companies providing services to the general public the obliga-

tion to have the means to enable their clients to conduct

contracting activities electronically. It also includes a legal

regime to improve the functioning of electronic auctions. It

provides rules of evidence to clarify the way in which electronic

signatures must be considered by courts, and it makes more

flexible some of the legal requirements for electronic contract-

ing. The previous laws have proven to be impractical or in need

of updates to make them suitable to new technology devices.

The LMPIS covers a broad array of issues, some of which

seem to bear little relationship with the Information Society.

These include

� clarifying that the courts have exclusive competence to

prevent access to web pages or to require content to be

removed when constitutional rights (e.g. freedom of

expression) may be affected;

� requiring the Government to regulate gambling activities

(in particular online gambling);

� reinforcing the rights of users of telecommunication services;

� setting out a legal regime for the provision by non-profit

entities of local TV services; and

� modifying Company Law to speed up the process for

incorporation of new Limited Liability Companies.

Jorge Llevat, Partner ([email protected]), Cuatrecasas

(Tel.: þ34 93 290 55 85).

8. Sweden

8.1. Improved broadband competition throughfunctional separation

On 17 January 2008, the Swedish Government presented a pro-

posal to amend the Electronic Communications Act (ECA). The

purpose of the proposed changes is to improve broadband

competition in Sweden. The proposal is based on a report ‘‘Im-

proved broadband competition through functional separa-

tion’’ by the Swedish National Post and Telecom Agency

(PTS), which was presented to the Government on 14 June 2007.

The Government proposes to include a new regulatory tool in

the ECA to give the PTS the power to require the functional sep-

aration of a vertically integrated operator with SMP (significant

market power) on the markets for LLUB (local loop unbundling)

and bitstream access. This would require the separation of ser-

vices relating to administration, operations, provision of net-

work and necessary accessories for access from other services.

The proposal anticipates that the functional separation of such

vertically integrated operators will ensure non-discrimination

and transparency on the markets for LLUB and bitstream access.

As an alternative to the mandatory requirements for func-

tional separation, the Government proposes to include powers

in the ECA to enable the PTS to accept a voluntary commit-

ment to secure non-discrimination and transparency from

the vertically integrated operator. A decision to accept such

a voluntary commitment may in certain circumstances be

revoked. However, as long as the PTS’ decision to accept a vol-

untary commitment is in force, no mandatory requirements

for functional separation may be imposed on the operator.

According to the Government, the proposed legislation will

improve the competition on the Swedish broadband market

which, in the long-term, will enable end-consumers to benefit

from better and cheaper broadband services. The Government

also predicts that the proposal will contribute to the develop-

ment of a more dynamic market which will benefit consumers.

Thenewlegislationisproposedtocomeintoforceon1July2008.

Bjorn Gustavsson Partner, [email protected] and Eva

Fredrikson Associate [email protected] from Advokatfirman

Vinge KB (Tel.: þ46 8 614 30 00).

9. United Kingdom

9.1. Employees’ rights protected on an offshoreoutsourcing

The UK’s Employment Appeal Tribunal (EAT) has for the first

time clearly indicated that the rights of UK workers in an







outsourcing may be protected by statute even where the out-

sourcing provider is outside the EU. As the relevant UK legisla-

tion (‘‘TUPE’’) implements the EU’s Acquired Rights Directive

2001/23/EC, courts in other EU countries may reach a similar

conclusion. The decision will be particularly relevant for the

IT sector as IT dependent business functions (e.g. call centres,

data processing and software design, support and mainte-

nance) are commonly outsourced to non-EU destinations.

In the UK, the Transfer of Undertakings (Protection of Em-

ployment) Regulations 2006 (‘‘TUPE’’) applies to the transfer of

an ‘‘economic entity’’ (whether it is the whole or part of a busi-

ness) and also ‘‘service provision changes’’. ‘‘Service provision

changes’’ encompasses not just the initial outsourcing but

also second generation transfers to new providers and also

the outsourcing customer bringing the services back in-house.

If TUPE applies to an offshore outsourcing the following

three requirements will apply:

(i) both the customer and the provider must inform and

consult with the representatives of affected employees;

(ii) the provider will inherit all rights, liabilities and obliga-

tions in relation to the transferring employees; and

(iii) transfer-connected dismissals may be automatically unfair.

TUPE may therefore impact on the timing of the outsourc-

ing (due to the consultation periods) and also require the

parties to factor the financial costs of compliance into the final

contract price.

The law in the UK, however, is still far from settled. The

judge’s comments in relation to outsourcing were not essen-

tial for deciding the facts before him. Consequently although

they are highly influential they will not be binding on future

courts. In the interim, however, further clarity may be pro-

vided by the EU. In mid-2007 the EU Commission published

a report on the Acquired Rights Directive which identified

the need for the EU to clarify the applicability of the Directive

to offshore outsourcing.

Holis Metal Industries Ltd v (1) GMB (2) Newell Ltd UK EAT

0171/07.

http://www.employmentappeals.gov.uk/Public/Upload/07_

0171ResfhCNCEA.doc.

Mark Turner, Report Correspondent, Partner, mark.

[email protected] and Dominic Callaghan, Consultant

(Australian qualified) [email protected]

from the London Office of Herbert Smith LLP (Tel.: þ44 20 7374

8000).

http://www.employmentappeals.gov.uk/Public/Upload/07_0171ResfhCNCEA.doc

http://www.employmentappeals.gov.uk/Public/Upload/07_0171ResfhCNCEA.doc




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