AIPLA Overview of recent developments in Community trade mark law

Transcription

1 AIPLA Overview of recent developments in Community trade mark law Marie-Aimée de Dampierre, Partner 2 May 2013 IPMT / Paris

2 Overview Trade mark registration general principles Earlier rights Distinctiveness Proposals for a reform of the EU trade mark system 2

3 Trade mark registration general principles 1. Date of filing CJEU, GENESIS v. Boys Toys SA and Administración del Estado, 22 March 2012 The date of filing of a Community trade mark ('CTM') does not require the hour and minute of filing to be taken into account. It follows that EU law precludes the hour and minute of the filing of an application for a CTM from being taken into account under national law for the purposes of establishing that CTM s priority over a national trade mark ('TM') filed on the same day, even though the national legislation governing the registration of national TM considers the hour and minute of filing to be relevant in that regard. 3

4 Trade mark registration general principles 2. Class headings CJEU, Chartered Institute of Patent Attorneys v. Registrar of Trade Marks, "IP Translator", 19 June 2012 A given class heading of the Nice Classification may be used for a trade mark to be protected for all the goods and services included in the alphabetical list of such class, provided that two cumulative requirements are fulfilled: The general indication in the class heading must be sufficiently clear and precise to allow the competent authorities to determine the scope of the protection conferred to the TM. The TM application must reflect the applicant's intention to protect the trade mark for all the goods or services included in the alphabetical list of the class in question. The IP Translator ruling has been incorporated within the Draft proposals for amendments of the EC (207/2009) Community Trade Mark Regulation and the EC (2008/95) Directive to approximate the laws of the Member States relating to trade marks. 4

5 Prior rights trade mark with a reputation (1) 1. Geographical scope of the reputation TEU, Jackson International Trading co Kurt D. Brühl Gmbh & co v. the Royal Shakespeare Company & OHIM, 6 July 2012 The trade mark RSC-ROYAL SHAKESPEARE COMPANY has a "exceptional" reputation in the UK for "theatre productions" Use of a trade mark in one single state may suffice to demonstrate that the said trade mark has a reputation in a substantial part of the European Union. 5

6 Prior rights trade mark with a reputation (2) 2. Family of trade marks TEU, IG communications Ltd v. OHIM & Citigroup Inc., 26 September 2012 Citibank / Citigroup etc.. (earlier TMs) v. CITIGATE (CTM application) The similarity of the signs at issue is such that the relevant public will think that CITIGATE is a new trade mark of the CITI family of trade marks. Indeed, the existence of a family of trade marks increases the distinctive character of the trade marks belonging to that family. Accordingly, not only does the CITIBANK trade mark enjoy a reputation within the EU but its distinctive character is increased as a result of the fact that it is part of a family of trade marks, the distinctive element of which is citi. 6

7 Prior rights low distinctiveness CJEU, Case C-196/11 Formula One Licensing Bv v. OHIM and Global Sports Media Ltd, 24 May 2012 (earlier TM) v. (CTM application) In its decision, the General Court excluded the likelihood of confusion between the signs in question based "on the purely descriptive nature of the common element" of the signs in respect of the products designated (i.e. a newspaper, publication and magazines related to Formula 1). By doing so, the General Court called into question the validity of the earlier trade mark rights invoked in proceedings concerning the registration of a CTM and therefore exceeded the scope of its jurisdiction. 7

8 Distinctiveness three-dimensional sign (1) CJEU, Chocoladefabriken Lindt & Sprüngli AG v. OHIM, 24 May 2012 A valid three-dimensional TM shall "depart significantly from the norm or customs of the industry and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character". Each of the three elements of the trade mark for which registration was sought, namely the shape of a sitting rabbit, the gold foil in which the chocolate rabbit is wrapped and the red ribbon is devoid of any distinctive character. The same applies as regards the overall impression given by the trade mark. 8

9 Distinctiveness three-dimensional sign (2) CJEU, Chocoladefabriken Lindt & Sprüngli AG v. OHIM, 24 May 2012 As regards the acquisition of distinctive character through use of the TM applied for, even if it is true that the acquisition by a TM of distinctive character through use must be proved for the part of the EU in which that trade mark did not, ab initio, have such character, it would be unreasonable to require proof of such acquisition for each individual Member State. 9

10 Proposals to enhance the trade mark system Legislation involved: Council Regulation (EC) No. 207/2009 on CTM Directive (EC) No. 2008/95 approximating the laws of the Member States relating to trade marks The European Commission presented the proposals on 27 March Proposals are expected to be adopted in Spring

11 Proposals to enhance the trade mark system Terminology: "European trade mark" will replace "Community trade mark" The "European Union Trade Marks and Designs Agency" will replace the "Office of Harmonization for the Internal Market" (i.e. OHIM). The new Agency will develop, together with National Offices, a number of tools in order to conduct efficient priority searches and monitor the registry for infringements. 11

12 Joint proposals for the Regulation & the Directive (1) 1. Requirement of "graphic representability" in the definition of a trade mark Under the current legislation, a sign must be capable of being represented graphically in order to be protected as a trade mark. This requirement of "graphic representability" is out of date. Hence, representation by other than graphical means (e.g. by a sound file) may be more appropriate than a graphic representation. Accordingly, the proposals provide a new definition of a trade mark which does not limit the authorized means of representation to graphic or visual representation. New opportunities for right holders to register new types of trade mark. 12

13 Joint proposals for the Regulation & the Directive (2) 2. Rights conferred by a European / national trade mark A. Double identity The recognition of additional trade mark functions under the Directive and the Regulation (e.g "advertisement" and "investment" functions) has created legal uncertainty on how to articulate them with the trade mark function of guarantee of origin of the products and services. The amendment clarifies the definition of TM infringement. Indeed, a use is infringing if it affects or is liable to affect the function of the trade mark to guarantee to consumers the origin of the goods or services. 13

14 Joint proposals for the Regulation & the Directive (3) 2. Rights conferred by a European / national trade mark B. Consignments from commercial suppliers The proposals make clear that the importation of goods into the EU is also prohibited where it is only the consignor who acts for commercial purposes. This new right will enable a TM owner to prevent businesses (located in the EU or not) from importing goods located outside the EU that have been sold, offered, advertised or shipped to private consumers. The proposal aims to discourage the ordering and sale of counterfeit goods (in particular on the internet). 14

15 Joint proposals for the Regulation & the Directive (4) 2. Rights conferred by a European / national trade mark C. Goods in transit (i) Background 'Goods in transit' means goods originating from countries outside the EU and destined for sale in countries outside the EU, without any suspicion that they are intended to be sold in the EU. In the Philips/Nokia case, the CJEU held that: "Goods coming from a non-member State which are imitations of goods protected in the EU by a TM right or copies of goods protected in the EU by copyright, a related right or a design cannot be classified as 'counterfeit goods' or 'pirated goods' within the meaning of [the EU regulations] merely on the basis of the fact that they are brought into the customs territory of the European Union under a suspensive procedure." According to the case, the owner of TM rights in the EU cannot take action against goods in transit in the EU unless he can prove that the goods are intended to be sold in the EU market. 15

16 Joint proposals for the Regulation & the Directive (5) (ii) Proposals The proposals go a step ahead from the Philips/Nokia case: The owner of a registered TM shall also be entitled to prevent all third parties from bringing goods, in the context of commercial activity, into the customs territory of the Member State where the trade mark is registered without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorization a trade mark which is identical to the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark These provisions include a broad prohibition on third parties' use of goods in transit bearing a trade mark without authorization. It will thus be important to follow the adoption of the proposals by the European Parliament and the Council in order to see whether those provisions will be amended. 16

17 Provisions to be implemented by Member States (1) 1. Non-use as defence in opposition proceedings The Draft Directive enable the person applying for registration of a TM to raise the defence of non-use in relation to an opposition filed by the owner of a prior TM where, at the filing date, the period of 5 years within which the earlier trade mark must have been put to genuine use has expired. In France, the non-use defence in opposition proceedings is very limited since the opponent is required to provide evidence of use for only one product or service on which the opposition is based. Following the new provision: The owner of the prior TM will be required to provide evidence for use of each product and service on which the opposition is raised. Accordingly, if the earlier TM has been used in relation to only part of the goods or services for which it is registered, it shall, for the purpose of the examination of the opposition be deemed to be registered in respect only of that part of the goods or services. 17

18 Provisions to be implemented by Member States (2) 2. Revocation and invalidity proceedings The Draft Directive obliges Member States to implement an administrative procedure to challenge the validity of a TM registration before their national trade mark offices. Today, in Member States such as France, trade mark applicants and owners cannot challenge the validity of trade marks, in particular earlier rights relied upon against their trade mark within the frame of opposition proceedings. They need to institute separate proceedings before the competent court to challenge the validity of the trade mark invoked against them. The possibility of challenging the validity/seeking for revocation of a trade mark before a trade mark office will simplify and accelerate the procedure. 18

19 Provisions to be implemented by Member States (3) In which cases would it be possible to apply for those new proceedings? The administrative procedure for revocation provides that the TM may be revoked on the grounds on non-use or loss of distinctiveness or misleading indication. The administrative procedure for invalidity provides that the trade mark may be declared invalid at least on the following grounds: o o the TM should not have been registered because it does not comply with the requirements relating to absolute grounds for refusal or invalidity; the TM should not have been registered because of the existence of an earlier right. 19

20 Provisions to be implemented by Member States (4) Who would be entitled to apply for those new proceedings? The administrative procedure entitles at least the following to file an application for revocation or for a declaration of invalidity: o o in the case of revocation proceedings and invalidity proceedings based on absolute ground for refusal: any natural or legal person; any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity to sue in its own name and to be sued. in the case of invalidity proceedings based on a prior right, the owner of the prior right in question. 20

21 Provisions to be implemented by Member States (5) 3. Non-use as defence in proceedings seeking a declaration of invalidity In administrative proceedings for a declaration of invalidity based on a registered TM with an earlier filing date: (1) if the owner of the later trade mark so requests, the owner of the earlier trade mark shall provide evidence that, during the period of 5 years preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in connection with the goods or services in respect of which the application is filed, or that there are proper reasons for non-use. Such option only applies when the period of 5 years within which the earlier trade mark must have been put to genuine use has expired at the date of the application for a declaration of invalidity. (2) Where, at the filing date of the later trade mark, the period of 5 years within which the earlier trade mark must have been put to genuine use had expired, the owner of the earlier TM shall, in addition to the proof required in (1), furnish proof that the TM has been put to genuine use during the period of 5 years preceding the filing date or date of priority, or that proper reasons for non-use existed. In the absence of such evidence, the application for a declaration of invalidity on the basis of an earlier trade mark shall be rejected or limited to the goods and services for which genuine use has been evidenced. 21

22 Provision to be implemented by Member States (6) 4. Consequences of revocation and invalidity A registered trade mark shall be deemed not to have had, as from the date of the application for revocation, the effects specified in the Directive, to the extent that the rights of the owner have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties. A registered trade mark shall be deemed not to have had, as from the outset, the effects specified in the Directive, to the extent that the trade mark has been declared invalid. 22

23 QUESTIONS? 23

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