ECTA European Communities Trade Mark Association

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1 ECTA European Communities Trade Mark Association Summary Report on the ERA seminar Significant Developments in Community Trade Marks and Designs Law, held in Alicante, November 2005 The Academy of European Law (Europäische Rechtsakademie, ERA) organized a seminar under the title Significant Developments in Community Trade Marks and Designs Law in Alicante (Spain) on November 2005, that was held at the seat of the Office for Harmonization in the Internal Market (OHIM). ECTA's First Vice-President was kindly invited to attend. ERA also offered a special registration fee for ECTA members. Welcome Words Mrs. Kerstin Sundström, Chairperson and Acting President of the Boards of Appeal, OHIM Mrs. Florence Hartmann-Vareilles, Course Director, ERA Mr. Jean-Philippe Rageade, Director of Programmes, ERA Part I: Opening Session The Interaction between International, National and EC Legal Orders Mr. José Ramón Ferrándiz Gabriel, Judge at the Supreme Court of Spain Mr. Ferrándiz explained the different steps taken to confer on trade mark owners the opportunity to protect their signs at an international level, without being compelled to register the trade marks on a country-by-country basis. Mr. Ferrándiz summarized the aims and the contents of the most important treaties concluded with the purpose to create a global protection system for trade marks, in particular the Paris Convention for the Protection of Industrial Property, the Madrid Agreement Concerning the International Protection of Marks, the Protocol Relating to the Madrid Agreement Concerning the International Protection of Marks and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Mr. Ferrándiz also referred to the link between Community trade marks and international registrations, and to the contents of the Council Regulation (EC) No. 1992/2003 of 27 October 2003, amending the Regulation on the Community Trade Mark to give effect to the accession of the European Community to the Madrid Protocol. In his speech, Mr. Ferrándiz detailed the problems originated by the coexistence of different systems of trade mark protection, and he especially referred to the direct applicability of the rules of the above-mentioned treaties in the contracting parties. The Relationship between Trade marks and other Intellectual Property Rights Dr. Annette Kur, Head of Nordic Countries Unit, Max Planck Institute

2 Dr. Kur explained that the European Community has managed to create a harmonized system for trade marks and designs, but there exist other intellectual property rights which, despite being regulated only at a national basis, usually create some overlaps and conflicts with trade marks and designs: trade names, non-registered marks, personal names, copyright, etc. Dr. Kur then focused on non-registered trade marks and, in particular, on trade names, and she summarized how these rights are protected throughout the European Union. Dr. Kur also examined several recent judgements dealing with conflicts between trade names and trade marks (COMPASS vs. COMPASS Ltd., ROBECO vs. ROBELCO, ANHEUSER BUSCH vs. BUDWEISER BUDVAR). Variable Marks: Forms and Shapes as Trade marks Prof. Karl-Heinz Fezer, University of Konstanz Firstly, Prof. Fezer summarized his theory of trade mark communication. He explained that trade marks are signs which serve to individualize and identify products on the market, and they act as a communication tool between business agents and consumers. In this respect, all commercial signs of communication must be admitted as trade marks, be they visual, aural, olfactory, gustatory or haptic. Afterwards, Prof. Fezer set out his theory of the variable trade mark, according to which trade marks are dynamic and not static and, therefore, the concept of trade mark must comprise non-conventional forms of marks, which are already present on the market. The speaker mentioned several decisions of the European Court of Justice accepting (or refusing) non-conventional forms of marks, such as Philips/Remington, Sieckmann, Libertel, Heidelberger Bauchemie or Shield Mark. The speaker s final thesis was that all forms of trade marks should be accepted, as long as they are able of being represented graphically. Thus, the infrastructure of the trade mark Registries should be technically adapted so as to accept innovative forms of marks. Part II: New Forms of Trade marks Graphical Aspects of New Forms of Marks Mr. Achim Bender, Member of the Second Board of Appeal, OHIM Mr. Bender summarized the formal requirements set forth in the Regulation on the Community Trade Mark with regard to three-dimensional trade marks, colour marks and sound marks. Mr. Bender underlined the two legal reasons that must justify the acceptance or the refusal of new forms of marks: the principle of registrability and the principle of legal certainty. The trade marks applied for must be able to be represented graphically in a self-contained, easily accessible, intelligible and durable way, so that the competent authorities and the economic operators know the precise subject of the protection afforded to the proprietor. Mr. Bender reviewed some decisions and judgements of the OHIM s Boards of Appeal and of the European Court of Justice (The smell of ripe raspberries, Linde, Sieckmann, Shield Mark, etc.), in order to explain which trade marks (and on the basis of which criteria) are being accepted for registration. The speaker pleaded for a broad an open definition of trade marks, which must bear in mind the necessities of the market and of the consumers. Finally, Mr. Bender affirmed that the legal requirement of graphic representability of the trade mark is not a substantial obstacle to the acceptance of new

3 forms of marks, but a technical frame that, nowadays, can be overcome to make available innovative forms of registration. Slogans as Trade Marks Mr. David Keeling, Member of the Second Board of Appeal, OHIM Mr. Keeling stated that slogans can function as trade marks, as long as they are capable of distinguishing the goods or services of one undertaking from those of its competitors (e.g., Nike s Just Do It! ). Nevertheless, slogans are not ordinary word marks, since they are normally used as secondary marks, in connection with other trade marks. Although the case-law of the European Court of Justice seems to indicate that all trade marks are subject to the same criteria of registrability and distinctiveness, trade marks are different, as is the attitude of consumers towards them (word marks, sound marks, colour marks, etc.). Mr. Keeling stated that the marketing experts do not regard slogans as conventional trade marks and cited the following interesting sentence of David A. Aaker (from his book Building Strong Brands, The Free Press, 1996, at p. 58): "A slogan can capture the essence of a brand and become an important part of the brand equity, If a brand is "packaged meaning", a slogan can be the ribbon that ties the package together and provides an extra touch." Mr. Keeling commented several judgements rendered by the European Court of Justice (DAS PRINZIP DER BEQUEMLICHKEIT, HAVE A BREAK, ) and by the Court of First Instance (MEHR FÜR IHR GELD, BEST BUY, ) in connection with slogans, and he mentioned some slogans that have been accepted or refused by the OHIM s Boards of Appeal. The speaker defended an approach towards slogans based on four issues: i) How descriptive is the slogan?; ii) Is the slogan presented in an unusual language?; iii) What would be the effects of registration for other traders? Would it limit the competitors freedom to promote their own goods?; and iv) The principle of equal treatment (non discrimination) must be taken into account in decisions concerning the acceptance or the refusal of slogans. Part III: National Perspectives Several Components of a Trade Mark and Risk of Confusion: A German Experience Prof. Franz Hacker, Presiding Judge, Federal Patent Court, Munich Prof. Hacker explained the approach of the Federal Patent Court in order to evaluate the risk of confusion between marks that coincide only in some of their components. He summarized the case-law of the Federal Patent Court from the case LUCKY WHIP vs. SCHÖLLER-NUCKI (which were considered to be similar in 1973) until nowadays. In the first judgements, the Federal Patent Court concluded that when a complex trade mark contained the prior sign there existed a risk of confusion, since the new mark evoked the earlier one. In 1986, the Court changed its approach and focused the comparison on the dominant element of the composite trade mark, taking into account the distinctive character of such element. If none of the elements of the complex mark is dominant, the overall impression of the compared signs will differ and, thus, they will be able to coexist (e.g. ALKA-SELTZER vs. TOGAL-SELTZER, SALI TOFT vs. SALMI, ECCO vs. EKKO BLEIFREI). The dominance theory was not applied when the earlier trade mark enjoyed a reputation (e.g., CITY PLUS vs. D2 BEST CITY PLUS, ELLA MAY vs. MEY, PUBLIC vs. PUBLIC NATION).

4 Lastly, Prof. Hacker mentioned the judgement of the European Court of Justice of (LIFE vs. THOMSON LIFE), which established that where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein. The Role Conferred to the National Judge by Directive 2004/48/EC Mr. Marcus Norrgård, Swedish School of Economics and Business Administration Mr. Norrgård detailed the role conferred on the national judge by Directive 2004/48/EC ( the Enforcement Directive ). The speaker affirmed that, depending on the Directive s interpretation, its enforcement could be either too aggressive or too lax. Traditionally, the enforcement of intellectual property law has been a national issue. This changed with the TRIPS Agreement, which contains detailed provisions on enforcement procedures, sanctions and measures. The roots of the Enforcement Directive are to be found in the approach of the TRIPS Agreement. The Directive tends to approximate legislative systems in order to ensure a high, equivalent and homogeneous level of protection in the internal market. It covers copyright and industrial property and provides evidence-protecting measures, claims for right of information, provisional measures, corrective measures, final injunctions and damages. The Directive still allows a wide margin of discretion to national courts, since it gives room to different enforcement ideologies. The speaker defended a balanced interpretation of the measures set forth in the Directive, which must be fair, equitable and not unnecessarily complicated or costly. In order to achieve the required balance, Mr. Norrgård affirmed that the Directive must be interpreted in the light of fundamental rights, such as freedom of expression, protection of personal data, etc. Finally, the national judge should apply the measures, procedures and remedies of the Directive taking into consideration the specific characteristics of each case and the different type of infringers. If necessary, he should turn to the comparative legal study in order to fully understand the provisions of the Directive. Grounds of Refusal Based on Public Policy or Accepted Principles of Morality: A Perspective from the UK Mr. Geoffrey Hobbs, QC, Essex Court, London Mr. Hobbs focused on trade marks that are considered to be morally offensive. According to Article 6 quinquies, para. B3 of the Paris Convention and to Article 7(1)(f) of the Regulation on the Community Trade Mark, marks contrary to public policy and morality shall not be registered. However, there are no general rules that may help examiners and courts to decide whether a particular sign is contrary to the accepted principles of morality. A systematic approach is needed in order to avoid arbitrary and subjective decisions. The speaker considered that the standard must be the European Convention on Human Rights (ECHR). Article 10 ECHR protects the right to freedom of expression, which includes the right to freedom of commercial expression. This right must be secured without discrimination (Article 14 ECHR). Therefore, in case of doubt, a trade mark must be accepted for registration. Only anti-social brands should be refused registration. Mr. Hobbs listed some trade marks that have been refused in the USA, UK, Australia and by the OHIM on moral grounds. He also commented that several marks consisting

5 of names of famous persons have been refused registration by the OHIM on the basis of Article 7(1)(f) CTMR (e.g., BILL CLINTON, FIDEL CASTRO). Finally, the speaker stated that, although the goods or services claimed by a particular mark may be of relevance, some trade marks are intrinsically offensive and cannot be redeemed irrespective of the goods or services to which they are to be applied. Part IV: Community Case Law The Invalidity Division of the OHIM 4 Years Experience Dr. Martin Schlötelburg, Designs Department, OHIM Dr. Schlötelburg explained the OHIM s experience with Community designs and, in particular, with invalidity proceedings against registered designs. He stated that the OHIM s Invalidity Division has received 165 applications for a declaration of invalidity of a registered design and has already taken 40 decisions. Dr. Schlötelburg presented some statistics concerning the language of the invalidity proceedings and the nationality of the applicant, and detailed the grounds of invalidity that have been raised before the Invalidity Division. Most of the applications for a declaration of invalidity are grounded on Article 25(1)(c) of the Regulation on Community Designs (CDR), i.e., lack of novelty or individual character. Surprisingly, the OHIM has not yet received any application based on Article 25(1)(a) CDR (i.e., what has been registered does not correspond to the definition of design). Dr. Schlötelburg stated that 42% of the applications have been rejected, whereas 58% have been upheld (and, therefore, the challenged designs have been invalidated). Four decisions of the Invalidity Division have been appealed, but there is no decision yet from the Boards of Appeal. The speaker also affirmed that invalidity proceedings usually last around one year, and that the decision is taken by the same person or department that handled the design application. Finally, Dr. Schlötelburg commented several recent decisions taken by the OHIM s Invalidity Division, which have clarified some of the concepts of the CDR, such as informed user, overall impression or degree of freedom of the designer, as well as the circumstances in which the design is considered to have been made available to the public ( disclosure ). The Experience of the European Court of Justice Mr. Antonio Pérez van Kappel, Legal Secretary, European Court of Justice In the last speech, Mr. Pérez van Kappel summarized the case-law of the European Court of Justice in the intellectual property field. He explained that the European Court of Justice acts as a Supreme Court and must help to harmonize the interpretation and the application of the EU legislation, mainly though preliminary rulings. Mr. Pérez van Kappel stated that the first judgements of the European Court of Justice established the main principles of trade mark law: which is the essential function of a trade mark, who are the relevant consumers, how trade marks must be compared in order to decide whether there exists a risk of confusion, etc. The speaker then referred to the appeal before the European Court of Justice against a judgement rendered by the Court of First Instance. According to Article 58 of the Statute of the Court of Justice, an appeal to the Court of Justice shall be limited to points of law. Therefore, the European Court of Justice should not be asked to assess the facts of the case again, since they have already been evaluated by the Court of

6 First Instance. Nevertheless, there are many appeals in which the European Court of Justice is asked to decide on the facts. This situation is partly due to the fact that the European Court of Justice has decided to evaluate the merits of the case in several decisions (e.g., BABY-DRY), instead of returning the proceedings to the Court of First Instance (as it was correctly done in COMPANYLINE or DOUBLEMINT). The fact that the European Court of Justice keeps deciding on the merits of the case (e.g., SAT-2, BIO-IT) encourages the filing of appeals against the judgements of the Court of First Instance. The speaker defended that the European Court of Justice should focus on essential issues, instead of deciding on whether a particular sign is distinctive. Finally, Mr. Pérez van Kappel pleaded for the creation of a European Court of Trade Marks and Designs, whose decisions should only be subject to appeal before the Court of First Instance. Reported by Mireia Curell and Xavier Fàbrega, Curell Suňoll, ES

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