European Union. Contributing firm Bureau Casalonga & Josse Casalonga Avocats

European Union Contributing firm Bureau Casalonga & Josse Casalonga Avocats Authors Cristina Bercial-Chaumier Head of Alicante office, Bureau Casalonga & Josse Karina Dimidjian-Lecomte Associate, Casalonga Avocats 93

European Union Bureau Casalonga & Josse/Casalonga Avocats 1. Legal framework 3. Registered marks The principal law establishing the Community trademark is the Community Trademark Regulation (40/94). Council Regulation 2868/95 implementing the Community Trademark Regulation was issued in 1995. Ownership Any natural or legal person, including authorities established under public law, may file and own a Community trademark (Article 5 of the Community Trademark Regulation). Numerous amendments to the Community Trademark Regulation have been passed, all of which may be accessed on the website of the Office for Harmonization in the Internal Market (OHIM) at www.oami.europa.eu. Of particular importance is Council Regulation 1992/2003, which amended the Community Trademark Regulation to give effect to the European Union s accession to the Madrid Protocol. Pursuant to this amendment, Community trademarks may now serve as the basis for international trademarks, and international trademark applications may designate protection as a Community trademark. Commission Regulation 1041/2005 amending Regulation 2868/95 and Commission Regulation 1687/05 amending Regulation 2869/95 significantly changed, among other things, the opposition procedure and the filing fees. These amendments implemented certain of the modifications resulting from Council Regulation 422/2004 amending the Community Trademark Regulation. 2. Unregistered marks Article 6 of the Community Trademark Regulation explicitly states that a Community trademark shall be obtained by registration. Therefore, a mark must be registered as a Community trademark before its owner obtains any rights. Scope of protection According to Article 4 of the Community Trademark Regulation, any sign is eligible for protection as a Community trademark as long as it is: capable of being represented graphically; and capable of distinguishing the goods and services of one undertaking from those of others. The regulation lists as examples of such signs words, including personal names, designs, letters, numerals and the shape of goods or their packaging. However, Article 7 provides that the following will be refused Community trademark protection on absolute grounds: trademarks that are devoid of distinctive character; trademarks consisting exclusively of signs or indications that serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the services, or other characteristics of the goods or services; signs or indications that have become customary in trade; three-dimensional shape marks that result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods; trademarks that are contrary to public policy or principles of morality; deceptive trademarks, in particular as to the 94

Bureau Casalonga & Josse/Casalonga Avocats European Union nature, quality or geographical origin of the goods or services; trademarks that include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention for the Protection of Industrial Property and that are of particular public interest, unless the necessary consents have been granted; and geographical indications for wines or spirits that do not have such origin. The European Court of First Instance (CFI) has issued some interesting decisions on absolute grounds for refusal. In Case T-334/03 the court reversed an OHIM Board of Appeal decision to reject a Community trademark application for EUROPREMIUM on the grounds of descriptiveness, finding that this mark designated the quality and geographical origin of the relevant services, postal transport services. The court held that the mark should be accepted for registration as the term euro is not descriptive, geographical origin is not an essential characteristic of postal transport and the term premium, although laudatory, is not descriptive of the characteristics of the services provided. The court reversed another decision of the Board of Appeal in which the board rejected a Community trademark application for the three-dimensional shape of a mineral water bottle on the basis that it was devoid of distinctive character. The court held that the average consumer is capable of perceiving the shape of packaging as an indication of origin, as long as the shape presents characteristics that are sufficient to hold his or her attention (Case T-305/02). It considered that in this case, the particular shape of the bottle, which evoked the shape of a slim woman, was sufficiently distinctive. This is the first decision of the court on a three-dimensional trademark application for a bottle or the shape of packaging. In Case T-305/04, the CFI upheld the OHIM s refusal to register an olfactory mark described in the application by the words smell of ripe strawberries and the colour image of a strawberry for goods in Classes 3, 16, 18 and 25. The court relied upon the Sieckmann decision (Case C-273/00), which held that a sign that cannot be perceived visually may be protected by a Community trademark provided that it may be represented graphically and that such representation is clear, precise, selfcontained, easily accessible, intelligible, durable and objective. In the case at hand, the court considered that as the smell of ripe strawberries varies from one variety to another, this description was not sufficiently objective, clear and precise. The court further held that the image of the strawberry did not amount to a graphic representation of the olfactory sign since it represented the fruit rather than the smell claimed. The Sieckmann jurisprudence was recently applied in a Fourth Board of Appeal decision (R0445/2003-4) regarding the registration of the scent of a lemon. The board stated that the mere description of a smell in words, although graphic, is inadmissible as a representation of the sign as it is not sufficiently precise and objective. However, a sign that would be refused protection on one of the first three absolute grounds described above may become eligible for registration if the applicant can prove that the sign has acquired distinctiveness through use. The applicant must be able to establish that the mark has been used in the European Union as a whole, or at least in a substantial part thereof, in such a way that a sufficiently large part of the relevant public would recognize the sign as a distinctive mark at the time the Community trademark application is filed. In a decision stemming from Nestlé s attempt to register the slogan Have a Break in the United 95

European Union Bureau Casalonga & Josse/Casalonga Avocats Kingdom, the European Court of Justice (ECJ) ruled on whether, as a result of the use of a principal mark, a part of such mark can also acquire its own distinctive character independently of the distinctiveness of the principal mark. The ECJ held that the distinctive character of a mark may be acquired through use of such mark as part of or in conjunction with a registered trademark. It is necessary, in either case, that the relevant public actually perceives the products or services designated exclusively by the mark applied for as originating from a given undertaking (C-353/03). The Have a Break jurisprudence was followed by the Second Board of Appeal in the colour orange decision (R148/2004-2). In this case, the applicant had claimed protection for the orange colour of Veuve Clicquot champagne labels on the grounds of distinctiveness acquired through use. The fact that the colour was used with other verbal or figurative elements did not exclude the distinctiveness acquired by use of the colour. information identifying the applicant; and a request for registration of the mark. A fee is also payable to the OHIM. Filing fees were significantly reduced as of November 1 2005 pursuant to Commission Regulation 1687/2005. The charge for filing an application in one to three classes currently stands at 900, with an additional charge of 200 for each additional class. The fee is reduced to 750, with an additional charge of 150 per additional class, if the application is filed electronically. The goods and services claimed in the application must be classified in accordance with the Ninth Edition of the Nice Classification. Community trademark applications are examined as to form that is, whether the required information has been provided in the application as set forth above. Further, the OHIM may object to the classification of certain goods and services if they do not comply with the Nice System or the OHIM s practice. 4. Procedures Examination Community trademark applications may be filed with: the OHIM; the national industrial property office of an EU member state, which will transfer the application to the OHIM; or the World Intellectual Property Organization through an international registration claiming protection for the European Union. The application must contain: a representation of the sign; a list of the goods and services claimed; The OHIM will also object to a Community trademark application if there are absolute grounds for refusal (see section 3 above). If the OHIM objects to the registration of a Community trademark for any of these reasons, it will notify the applicant or its counsel, which will have two months to submit a response. The OHIM may either maintain or waive its objection in light of the arguments in response submitted by or on behalf of the applicant. In the event of a refusal, the applicant may file an appeal before the OHIM Board of Appeal and subsequently, if the examiner s decision is confirmed, before the ECJ for breach of law (lack of competence; infringement of a procedural requirement, the EC Treaty or the Community 96

Bureau Casalonga & Josse/Casalonga Avocats European Union Trademark Regulation; or misuse of power). The ECJ has jurisdiction only to annul or to alter the contested decision, and may not decide on the merits of a claim that has not already been considered by the OHIM. Searches The OHIM establishes a search report, citing all prior identical and similar marks, which is transmitted to the applicant as part of the Community trademark registration procedure. The EU member states, excluding Cyprus, Estonia, France, Germany, Italy, Latvia, Lithuania, Malta and Slovenia, also provide national search reports to Community trademark applicants. As of March 10 2008, however, no national search reports will be provided by the EU member states unless the applicant specifically requests such searches in its Community trademark application and pays the corresponding fee. Opposition There is no substantive examination to identify any prior rights that would conflict with the registration of the requested Community trademark. Prior rights may be asserted only by their owners. The opposition procedure allows third parties to oppose Community trademark applications on the basis of certain prior IP rights enumerated in the Community Trademark Regulation. The procedure is governed by: Articles 8, 42 and 43 of the Community Trademark Regulation; Rules 15 to 22 of the Implementing Regulation; and the 1997 OHIM Opposition Guidelines (last version March 2004; a revised version is due to be issued in 2007). In addition, significant case law has been established on the basis of decisions of the Opposition Division, the Board of Appeal and the ECJ, all of which are available on the OHIM website. The grounds for opposing a Community trademark application are set forth in Article 8 of the Community Trademark Regulation, which deals with relative grounds for refusal of registration. There are four principal relative grounds upon which an opposition may be based. The first is ownership of an identical or similar prior trademark that is registered for identical or similar goods or services (Articles 8(1)(a) and (b)). These include: Community trademark registrations or applications (subject to registration); national trademark registrations or applications (subject to registration) in an EU member state; international trademark registrations that have effect in an EU member state; and trademarks that are well known in a member state in the sense of Article 6bis of the Paris Convention. An opposition filed on the basis of Article 8(1)(b) must demonstrate that there is a likelihood of confusion between the two marks. Such likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, including: the similarity between the signs; the similarity between the goods and services; the relevant territory; prior coexistence of the two marks; and the target consumer groups. The existing case law shows that the most important factors are the similarity between the signs and the similarity between the relevant goods and services. However, there is a certain interdependence between these factors, as a lesser degree of similarity between the goods may be offset by a greater similarity between the marks, 97

European Union Bureau Casalonga & Josse/Casalonga Avocats and vice versa (Case C-39/37, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, paragraph 17; Case R 152/2000 the very high degree of similarity between the marks is therefore sufficient to overcome the very low degree of similarity between the goods and services in question ; ENANTON/ENANTONE v ENANTYUM, Case R 222/1999-2, paragraph 47, despite some similarity between the trademarks, the board is satisfied that the distance between the goods is so great as to exclude any likelihood of confusion ). The assessment of the similarity between the signs must be based on the overall impression produced by the two marks, bearing in mind, in particular, their distinctive and dominant components. The visual, phonetic and conceptual similarities between the signs are taken into consideration. In Case T-185/02 the court found that there was no risk of confusion between the signs MOBELIX and OBELIX. Although it held that the signs were similar aurally and slightly similar visually, the CFI considered that the conceptual differences (as Obélix would be readily identified by the average member of the public as a comic strip character) were sufficient to counteract the aural and visual similarities and thereby eliminate any risk of confusion. Along similar lines, in Case C-361/O4P the ECJ upheld the CFI s ruling that there was no risk of confusion between the marks PICASSO and PICARO because their conceptual differences counteracted any phonetic or visual similarity. With respect to goods and services, all relevant factors must be taken into account, including their nature, intended purpose and method of use, and whether they are competing or complementary. For example, in Case T-296/02 the CFI rejected an opposition filed on the grounds of the prior figurative trademark LINDERHOF, protected for sparkling wine in Class 33, against the word mark LINDENHOF for fruit juice and mineral water. The CFI considered that, despite the similarities between the marks, the goods were different. Concerning the issue of prior coexistence, in Case R24/2003-1 the Board of Appeal rejected an opposition concerning the marks VICHY CATALAN and VICHY CELESTINS as the mark owners had entered into a coexistence agreement concerning their use. The board also rejected the opposition brought in Case R132/2002-2 on the basis that the marks at issue had coexisted on the Spanish market for many years. An opposition may also be brought on the basis of an earlier trademark with reputation against a subsequent Community trademark application that designates different goods or services. In order for the opposition to succeed, the following conditions must be satisfied: The marks in question are identical or similar; The prior mark had a reputation in the European Union (in the case of a Community trademark), or the territory in which it is protected (in the case of a national or international mark), as of the date of the contested Community trademark application; The use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the prior trademark; and The applicant is using the contested mark without due cause. In this respect, in Case R0301/2005-2 involving Nike and D Nickers the Second Board of Appeal annulled the Opposition Division s decision to reject an opposition based on Article 8(5) of the Community Trademark Regulation. The board stated that, given the identity, similarity and close connection between the goods and services at issue retailing of footwear as cited in the contested Community trademark and footwear as protected by the prior mark the similarity of the signs and the reputation of the earlier mark, there was no doubt that the applicant had 98

Bureau Casalonga & Josse/Casalonga Avocats European Union exploited the distinctive character and reputation of the earlier mark for the benefit of its own marketing efforts. The third ground is ownership of a nonregistered trademark or other sign used in the course of trade of more than mere local significance if, pursuant to the law of the member state governing the sign, it entitles its owner to prohibit the use of a subsequent trademark (Article 8(4)). Finally, an opposition may be brought if a Community trademark application is filed by the agent or representative of a trademark owner without its consent (Article 8(3)). The same opposition may be brought on the basis of one or more of these relative grounds, and may cite several prior rights for example, several prior trademarks in the case of an opposition brought on the basis of Article 8(1)(a) as long as the opponent owns all of these prior rights. Upon publication of a Community trademark application, a prior right holder has three months in which to file an opposition (Article 1). The opposition must be in writing and must cite the grounds on which it is based. However, it may take the form of a simplified formal opposition, as the opponent will be given a deadline within which to complete its arguments and provide supporting documentation. The opposition is transmitted to the applicant prior to any examination as to its admissibility. Once the opposition is deemed admissible by the OHIM, the two-month cooling-off period will be notified to both the applicant and the opponent, during which the parties may attempt to negotiate a settlement. This period may be extended by the OHIM up to a maximum of 24 months at the joint request of the parties to the opposition procedure. A new practice was introduced by the OHIM on March 1 2006 pursuant to which the parties can no longer indicate the length of time by which to extend the cooling-off period, as it is automatically extended for an additional 22 months. Nevertheless, either party may unilaterally opt out at any time by informing the OHIM, with the result that the adversarial part of the opposition will commence immediately. If the mark upon which the opposition is based has been registered for more than five years as of the date of publication of the contested Community trademark application, the applicant may request proof of the genuine use of the prior mark. Such request must be filed within the deadline set by the OHIM for the applicant to respond to the opposition. If no proof is submitted, or the OHIM considers the proof inadequate, the opposition will be automatically rejected (see Revocation below for more information). Opposition proceedings are often resolved by an amicable agreement between the parties. According to OHIM statistics, more than 75% of oppositions filed are settled amicably. Indeed, as oppositions may be based on prior rights in any of the 27 member states, each party often has prior rights in certain countries. Therefore, an agreement on coexistence is concluded such that both parties may register their marks as Community trademarks for the specific goods or services in which they are interested. Either party may appeal the Opposition Division decision before the Board of Appeal, and subsequently before the ECJ on questions of law. The ECJ has jurisdiction only to annul or alter the contested decision, and may not decide on the merits of a claim that has not already been considered by the OHIM. If the application is refused registration, the applicant has three months within which it may convert the Community trademark application into national applications in any EU member 99

European Union Bureau Casalonga & Josse/Casalonga Avocats state it wishes, other than those in which the opponent has prior rights. Such national applications benefit from the original filing date of the Community trademark application. Registration Once the Community trademark application is accepted for registration, and subject to payment of the registration fee, the Community trademark will be registered. The registration procedure generally takes about 18 months from the date of filing, if there are no objections or oppositions. A Community trademark grants its owner trademark protection in all 27 member states of the European Union. The protection will be automatically extended to new member states upon their accession to the European Union. The owner of a Community trademark is entitled to prevent third parties from using an identical or similar mark for goods and services that are identical or similar to those protected by the Community trademark. Community trademark protection is for an initial 10-year period (Article 46); registration may be renewed indefinitely for additional 10-year periods thereafter. The first Community trademark renewals were due by April 1 2006. The renewal fees are 1,350 if the renewal is filed electronically or 1,500 if filed otherwise for one to three classes. There is an additional fee of 400 for each additional class. Removal from register Surrender: A Community trademark may be surrendered in respect of some or all of the goods or services for which it is registered (Article 49). The owner of the Community trademark must declare the surrender to the OHIM in writing. The surrender is then recorded in the official Community Trademark Register. Revocation: If a Community trademark is not genuinely used in the five years following registration, it may be cancelled for non-use through an action before the OHIM Invalidity Division or in the context of a counterclaim in an infringement action before a national court (Articles 15 and 50). The Community Trademark Implementing Regulation provides further guidance as to how a trademark owner may fulfil the use requirement. According to Rule 22(2), the owner must provide proof of the place, time, nature and extent of the use of its mark. This evidence is normally confined to packaging, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and written statements (Rule 22(3)). Although the standard for use (ie, it must be genuine) and the means of proving use are established in the Community Trademark Regulation and the Implementing Regulation respectively, neither of these pieces of legislation nor any national laws in any of the EU member states specifically define what constitutes genuine use. As this question is commonly encountered by the different national courts, the ECJ has established binding case law setting out the different factors to be considered. These include: whether the use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark; the nature of those goods or services; the characteristics of the market; and the scale and frequency of use of the mark (Case C-40/01, Ansul BV v Ajax Brandbeveiliging BV, paragraph 43). Further, the ECJ, the OHIM Opposition Division and the Board of Appeal have all issued decisions defining genuine use as the opposite of token use that is, use simply for the purpose of maintaining the trademark on the register. 100

Bureau Casalonga & Josse/Casalonga Avocats European Union A Community trademark may be revoked only for those goods or services for which it is not used and maintained for the rest. A Community trademark may also be revoked if: as a result of the owner s actions or inactivity, the mark has become the common name in the trade for a product or service for which it is registered; or as a result of its use by the owner or with its consent, the mark is liable to mislead the public, in particular as to the nature, quality or geographical origin of the relevant goods or services. An invalidation action may also be brought on the basis of other IP rights, such as a right to a name or personal portrayal, a copyright or an industrial property right (Article 52(2)). However, pursuant to Article 53 of the Community Trademark Regulation, if the owner of an earlier Community or national trademark has tolerated the use of a later Community trademark for a period of five successive years, it loses the right to request invalidation on the basis of its prior trademark rights, unless the later mark was applied for in bad faith. Invalidation: A Community trademark may be declared invalid either upon application to the OHIM or on the basis of a counterclaim in infringement proceedings. Invalidation may be based either on relative grounds (Article 52) or on absolute grounds (Article 51). An invalidation action may also be requested if the applicant can prove that the trademark owner acted in bad faith when it filed the Community trademark application (Article 51). In this respect, in Decision 787C the Cancellation Division ruled to annul Community trademark registration 1641828 GALAPAGOS as the proprietor of the mark was acting in bad faith when he filed the application. Both the party requesting cancellation and the community trademark proprietor were based in Ecuador, were members of the same business associations and were located less than three kilometers apart. The party requesting cancellation was the owner of prior GALAPAGOS marks in Ecuador, the United States and Bolivia. In order to ascertain bad faith, all relevant circumstances had to be taken into account, in particular the proprietor s knowledge of the existence of the previous GALAPAGOS trademarks at the time of filing. 5. Enforcement Complexity It is very easy to enforce registered Community trademarks across the whole of the European Union through an infringement action brought before one Community trademark court (one or several courts are designated in each member state). If the court decides that there has been infringement, this judgment will be enforced in all EU member states in which infringement took place. Further, the damages award will be based on all such infringing acts. Finally, an injunction against any further infringement may be obtained for the whole European Union. This is a significant advantage, as it enables a Community trademark holder to bring a single action before one Community trademark court and obtain an order prohibiting and awarding damages for infringement within any of the EU member states. In contrast, the owner of a national or international registration (claiming individual EU member states, not the whole European Union) would have to file a separate action in each country in which the mark had been infringed, and the effects of any judgments would be limited to the country in which each was issued. 101

European Union Bureau Casalonga & Josse/Casalonga Avocats The Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters, now replaced by Council Regulation 44/2001 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, applies to Community trademark infringement proceedings and Community trademark applications (Article 90). product in the European Union, in particular on the Internet; and to abstain from using the term Viagra as a domain name. Since that ruling several important pan-european injunctions have been granted by the Alicante Community Trademark Court of First Instance. Pursuant to the Brussels Convention, infringement actions must be brought before the following Community trademark courts: the courts of the member state in which the defendant is domiciled or has an establishment; if the defendant is not domiciled and has no establishment in the European Union, the courts of the member state in which the plaintiff is domiciled or has an establishment; if neither the defendant nor the plaintiff is domiciled or has an establishment in the European Union, the courts of the member state in which the OHIM has its seat (ie, the Juzgados de lo Mercantil in Alicante, Spain); or the courts of the member state in which the actual or threatened infringement took place. However, in the latter case, the Community trademark court will have limited jurisdiction over actual or threatened infringing acts within the territory of the member state in which the court is situated. In November 2004 the Alicante Juzgado de lo Mercantil, acting as Community Trademark Court of First Instance, issued its first pan-eu injunction in a case of infringement of the Community trademarks VIAGRA and PFIZER by a company selling fake Viagra on the Internet. As the defendant failed to respond to the summons to attend the hearing, the court issued an injunction ex parte and ordered broad measures of protection, including ordering the defendant: to cease all use of the terms Viagra and/or Pfizer in relation to the marketing of any The national law of the member state in which the action is brought will govern the infringement action for all matters not expressly covered by the Community Trademark Regulation (Article 97). Therefore, the question of damages, among other things, will be governed by national law. Decisions of the national Community trademark courts cannot be appealed to the ECJ, although they may be appealed before the designated national Community trademark courts of appeal. The ECJ has jurisdiction only in the case of prejudicial questions (ie, questions referred to it by the Community trademark court concerning the interpretation of a provision of the Community Trademark Regulation). Provisional measures will also be available, based on the national law of the member state in which the action is lodged. A request for provisional measures, including protective measures, may be made to any courts in relevant member states. If the court ordering the provisional measures is the Community trademark court with jurisdiction for the infringement action, it may order provisional measures in the territory of any EU member state. If not, the provisional measures will be limited to the territory of the member state of the court that issues the order. Timeframe The timeframe for an infringement action depends on the national law and judicial practice in the country in which the action is lodged. 102

Bureau Casalonga & Josse/Casalonga Avocats European Union In the case of an invalidation action, however, if the owner of a prior trademark has tolerated the use of a later trademark for five consecutive years and the later registration was not obtained in bad faith, the owner of the prior trademark is precluded from bringing an infringement action on this basis. 6. Ownership changes legalization requirements The assignment of a Community trademark must be evidenced in writing and the documentation must be signed by the parties. However, the documents need not be legalized. A simple request signed by both parties is sufficient to record the assignment with the OHIM. Further, as of July 25 2005, the fee for recording an assignment has been abolished. It is important to record all transfers of ownership as the new owner may not invoke any rights to the Community trademark until the assignment has been officially recorded. 7. Areas of overlap with related rights There are some areas of overlap between trademarks and other rights. In the case of copyright, this overlap depends on the laws in the relevant EU member state. In France, for example, there is cumulative protection for trademarks, including Community trademarks, such that a Community trademark for an original design may also be protected by copyright. One interesting overlap that is beneficial to Community trademark owners concerns Community design registration. The OHIM is generally reluctant to register threedimensional marks as Community trademarks, often holding that such signs are not eligible for registration as they consist of shapes which result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods. Licences may also be recorded in the Community Trademark Register. Such recordal is necessary for the licensee to assert any rights to the Community trademark against third parties. No proof of the licence is necessary if the request is filed or co-signed by the Community trademark owner. If it is filed or signed exclusively by the licensee, however, proof of the licence or the Community trademark owner s consent is necessary. Further, requests to record a licence may specify that the licence should be recorded as one or more of the following: exclusive licence; sub-licence; licence limited to only part of the goods or services; licence limited to only part of the European Union; or temporary licence. It is thus advisable, when filing a Community trademark application for a three-dimensional mark, to file simultaneously a Community design application for the same mark. This way, if trademark registration is refused for lack of distinctiveness, the shape will be protected as a design for up to 25 years. The shape may thus eventually acquire distinctiveness through use within the European Union and its owner may then file a new Community trademark application based on acquired distinctiveness. As a Community design application may be filed for any visual element, any figurative or semi-figurative mark, such as a logo, may be filed both as a Community trademark and as a Community design, provided that it is new. The Community design owner will enjoy protection of the sign against any use, without restriction as to the goods or services claimed. 103

European Union Bureau Casalonga & Josse/Casalonga Avocats 8. Online issues The owner of a Community trademark can prohibit any unauthorized use of the sign, including on the Internet or as a domain name, if there is a likelihood of confusion between the Community trademark registration and the sign as used on the Internet. 104