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II. TRADE MARK LAW: THE COMMUNITY'S THINKING WIDENS AND DEEPENS

Published online by Cambridge University Press:  17 January 2008

Catherine Seville
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Abstract

Trade marks remain hugely important for the economy of the Community. Enlargement has brought a steep increase in filings for the Community Trade Mark, and the new rate of applications seems likely to be maintained. As always, a balance must be struck between the Community's priorities, and those of the trade mark holder. Considerable harmonization of Community trade mark law has already been achieved by legislative means. There is an abundance of new case law, giving detailed and practical guidance for the interpretation of these measures. As a result, those using trade mark systems throughout the Community will benefit from increased consistency and depth of understanding in the application of the regime. The wider international scene will be given welcome recognition by the Community's accession to the Madrid Protocol. The Community's position on international exhaustion remains essentially unchanged, although the matter is still a controversial one.

Type
Articles
Information
International & Comparative Law Quarterly , Volume 53 , Issue 4 , October 2004 , pp. 1013 - 1023
Copyright
Copyright © British Institute of International and Comparative Law 2004

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References

1 The languages of the Office are English, French, German, Italian, and Spanish: Council Regulation 40/94 on the Community trade mark, (OJ 1994 Lll/l), Art 115. The subject is highly contentious. Note in this context the European Court of Justice's recent confirmation that the OHIM language regime is appropriate and proportionate: Case C-361/01P Christina Kik v OHIM [2004] ETMR 30.Google Scholar

2 See <http://www.wipo.int/pressroom/en/releases/2003/p358.htm>. The COREPER (Committee of Permanent Representatives) agreed the text of the necessary measures for the Community's accession to the Madrid Protocol at its meeting on 19 Sept 2003. These were adopted by the Council of Ministers on 27 Oct 2003. On 26 04 2004 the Commission adopted amendments to the Implementing Regulation of the CTM, giving effect to the accession of the European Community to the Madrid Protocol and amendments to EC Regulation 2869/95 on the fees payable to OHIM. See Commission Regulation 781/2004 [2004] OJ LI 23/85 <http://ww.europa.eu.mfeur-lex/pri/en/oj/dat/2004/l_l23/l_l2320040427en00850087.pdf> and Commission Regulation 782/2004 OJ 2004 LI 23/88 <http://www.europa.eu.int/eurlex/pri/en/oj/dat/2004/l_123/l_12320040427en00880097.pdf>. See also WIPO Press Release PR/2003/358.+The+COREPER+(Committee+of+Permanent+Representatives)+agreed+the+text+of+the+necessary+measures+for+the+Community's+accession+to+the+Madrid+Protocol+at+its+meeting+on+19+Sept+2003.+These+were+adopted+by+the+Council+of+Ministers+on+27+Oct+2003.+On+26+04+2004+the+Commission+adopted+amendments+to+the+Implementing+Regulation+of+the+CTM,+giving+effect+to+the+accession+of+the+European+Community+to+the+Madrid+Protocol+and+amendments+to+EC+Regulation+2869/95+on+the+fees+payable+to+OHIM.+See+Commission+Regulation+781/2004+[2004]+OJ+LI+23/85++and+Commission+Regulation+782/2004+OJ+2004+LI+23/88+.+See+also+WIPO+Press+Release+PR/2003/358>Google Scholar

3 Proposals to clarify and supplement the CTM regime are under discussion. See the Presidency compromise text available at <http://www.register.consilium.eu.int.pdf/en/03/st12/st12251enO3.pdf>..>Google Scholar

4 The commendable OHIM website provides, inter alia, general and procedural information regarding the CTM; links to relevant legislation; access to all the decisions of the Boards of Appeal, Opposition and Cancellation Divisions; links to decisions of the CFI and ECJ; searchable databases of pending and registered CTMs. See <http://www.oami.eu.int/en./mark/default.htm>..>Google Scholar

5 Regulation 40/94 (CTM Reg) above n.l. Directive 89/104 to approximate the laws of Member States relating to trade marks, OJ 1989 L40/1 (TM Dir). ‘[T]he presumption is very strong indeed that the two measures are intended to be interpreted in the same way. The fact that they will be applied in different legal and factual circumstances does not detract from that presumption.’ Case C-291/00 LTJDiffusion v Sadas Vertbaudet, Opinion of A-G Jacobs, [2003] FSR 34, paras 21–8, at 26.Google Scholar

6 Art 2 TM Dir and Art 4 CTM Reg.Google Scholar

7 Case R 156/1998-2 Vennootschap onder Firma Senta Aromatic Marketing' Application [1999] ETMR 429. See also Case R 711/99-3 Myles Limited's Application [2003] ETMR 56, where the words ‘the scent of raspberries’ were held to represent the smell completely, clearly, precisely, and objectively (although the sign was nevertheless not registrable, because it lacked distinctive character of the goods applied for).Google Scholar

8 Case C-273/00 [2002] ECR 1-11737. The chemical formula was ‘C6H5–CH=CHCOOCH3’.Google Scholar

9 Case C-104/01 [2003] ETMR 63.Google Scholar

10 Case R 120/2001–2 Eli Lilly and Company's Application [2004] ETMR 4. In addition, the Board of Appeal was concerned that competitors would be unduly restricted, and thought that such a taste was not capable of distinguishing the pharmaceutical preparations of one undertaking from those of another.Google Scholar

11 But see Case R 781/1999-4 Metro-Goldwyn-Mayer Lion Corporation's Application [2004] ETMR 34, where the graphic representation requirement was not fulfilled by a description of the mark as ‘the sound produced by the roar of a lion’ accompanied by a spectrogram which was considered incomplete. The Board of Appeal did indicate, however, that the ‘roar of a lion’ sound was registrable in principle, if accompanied by a suitable sonogram.Google Scholar

12 Case C-283/01 Shield Mark v Joost Kist [2004] ETMR 33. See also Case R 1/98-2 Qlicksmart Pty Ltd's Application [1999] ETMR 335, where registration of the sound described as ’déclic’ was refused.Google Scholar

13 Joined Cases C-53-55/01 Linde and Others [2003] ETMR 78, para 67.Google Scholar

14 Joined Cases C-53-55/01 Linde and Others [2003[ ETMR 78, para 71.Google Scholar

15 Joined Cases C-108 & 109/97 Windsurfing Chiemsee v Huber [1999] ECR1-2779, para 48.Google Scholar

16 Above n 13: ‘When examining the ground for refusing registration in Article 3(l)(c) of the Directive in a concrete case, regard must be had to the public interest underlying the provision, which is that all three-dimensional shape of goods trade marks which consist exclusively of signs or indications which may serve to designate the characteristics of the goods and services within the meaning of that provision should be freely available to all’, para 77.Google Scholar

17 Above n 9, paras 55–6. The Court also noted that if registration was sought for a wide range of goods or services, then the monopoly conferred was likely to be more excessive.Google Scholar

18 Art 3(l)(b) TM Dir and Art 7(l)(b) CTM Reg.Google Scholar

19 Case C-39/97 Canon Kabushiki Kaisha v MGMInc [1998] ECR I-5507, para 28 and Case C-517/99 Merz & Krell [2001] ECR 1-6959, para 22.Google Scholar

20 Case C-342/97 Lloyd Schufabrik Meyer & Co v Klijsen [1999] ECR 3819, para 26 and LTJ Diffusion above n 5, para 52.Google Scholar

21 Art. 3(3) TMD and Art. 7(3) CTM Reg.Google Scholar

22 Case C-104/00 P DKV Deutsche Krankenversicherung [2003] ETMR 20. There are a considerable number of CFI decisions on the subject. See, eg, Case T-87/00 Bank fur Arbeit und Wirtschaft [2001] ECR II-1259 (EASYBANK registrable); Case T-135/99 Taurus-Film [2001] ECR n-379 (CINE ACTION registrable for certain services); Case T-24/00 Sunrider [2001] ETMR 605 (VITALITE registrable for some classes); Case T-345/99 Harbinger [2000] ECR II-03525 (TRUSTEDLINK not registrable); Case T-34/00 Eurocool Logistik [2003] ETMR 4 (EUROCOOL registrable); Case T-331/00 Mitsubishi [2001] ETMR 614 (GIROFORM not registrable); and Case T-79/00 Rewe Zentral AG [2002] ETMR 91 (LITE not registrable); Case T-l 22/01 Best Buy Concepts Inc. v OHIM (BEST BUY sign not registrable) [2004] ETMR 19.Google Scholar

23 Re Nichols Pic [2002] EWHC 1424 (Ch); [2003] ETMR 15.Google Scholar

24 Case C-299/99 Philips Electronics v Remington Consumer Products [2002] ETMR 81; Linde above n 13; Case C-88/00 Mag Instrument [2002] ETMR 61 (the cylindrical shape of torches); Case T-63/01 Proctor & Gamble [2003] ETMR 43 (the shape of a soap bar); Cases T-324/01 & T-l 10/02 Axiom & Christian Belce v OHIM (cigar shape, ingot shape); Case T-128/01 DaimlerChrysler v OHIM (Grille); T-194/01 Unilever v OHIM [2004] ETMR 31 (ovoid tablet); T-305/02 Nestle Water v OHIM [2004] ETMR 41 (shape of bottle distinctive).Google Scholar

25 Case R 122/98-3 Wm Wrigley Jr Co's Application (light green) [1999] ETMR 214.Google Scholar

26 Case T-173/00 KWS Kleinwanzleberwr Saatzucht AG [2003] ETMR 23. The appeal succeeded only in respect of the application for plant cultivation services, where it was held (perhaps surprisingly) that the relevant public might understand a colour's use as an indication of the commercial origin of a service, and that registration of a single shade would not unduly restrict other competitors' choice.Google Scholar

27 See, eg, Case T-316/00 Viking-Umwelttechnick Gmbh [2003] ETMR 17: registration was refused for this combination on gardening equipment as devoid of distinctive character.Google Scholar

28 The Milka lilac colour has been registered as a CTM (no 31336) for chocolate products for Kraft Jacobs Suchard AG on the basis of evidence of acquired distinctiveness. Similarly, magenta for telecommunications products (CTM no 31336), and yellow for anticorrosion products (CTM no 396176). However, cf R 5/1999–3 Ty Nant Spring Water Limited's Application (cobalt blue) [1999] ETMR 974; Wm Wrigley Jr Co's Application (light green) above n 25; and Cases R 342 and 343/99–2. ARAL Aktiengesellschaft's Applications (blue and blue/white).Google Scholar

29 Above n 9, paras 66–7. Note Advocate-General Léger's observation in this case that colour is always the attribute of something, leading him to doubt whether a colour per se could ever be registrable: [2003] ETMR 41, para A.96–7.Google Scholar

30 Art 3(l)(c) TM Dir and Art 7(l)(c) CTM Reg.Google Scholar

31 Case C-383/99 P Proctor & Gamble [2002] ETMR 3.Google Scholar

32 For further comment see Pfieffer, [2002] EIPR 373; Kilbey, [2002] EIPR 493; Griffiths, [2003] IPQ 1 and Keeling, [2003] IPQ 131.Google Scholar

33 Above n 29, paras 42–4.Google Scholar

34 See Windsurfing Chiemsee, above n 15, paras 25–7 and Linde, above n 13, para 71.Google Scholar

35 Case T-193/99 Wm Wrigley Jr Company [2001] ETMR 58, para 20.Google Scholar

36 Case C-191/01 P OHIM v Wm Wrigley Jr [2004] ETMR 9.Google Scholar

37 Earlier decisions include: Case T-359/99 DKV [2001] ECR II-1645 (EuroHealth registrable for financial services); Case T-140/00 Zapf Creation [2002] ETMR 10 (NEW BORN BABY registrable for dolls); Case T-358/00 DaimlerChrysler [2002] ECR II-01993 (TRUCKCARD registrable); Case T-106/00 Streamserve Inc [2002] ECR II-00723 (STREAMSERVE registrable for some classes); and Case T-360/00 Dart Industries [2003] ETMR 32 (ULTRAPLUS registrable).Google Scholar

38 (2001) 50ICLQ 714.Google Scholar

39 Art 3(l)(d) TM Dir and Art 7(l)(d) CTM Reg.Google Scholar

40 Above n 19, paras 31 and 37–9. A sign which is used as a slogan, indication of quality or incitement to purchase is not excluded from registration simply by virtue of such use. It will be for the national court to determine in each case whether the sign has become customary for the relevant goods or services (para 40).Google Scholar

41 Art 3(l)(e) TM Dir and Art 7(l)(e) CTM Reg.Google Scholar

42 The exclusions apply to signs which consist exclusively of: the shape which results from the nature of the goods themselves; the shape of goods which is necessary to obtain a technical result; the shape which gives substantial value to goods. Unlike the other absolute grounds for refusal, they may not be overcome by showing that they have acquired a distinctive character through use.Google Scholar

43 Above n 24.Google Scholar

44 See Suthersanen, , [2003] IPQ 257.Google Scholar

45 Arts 4(4)(a) and 5(2) TM Dir. The use of the competing sign must take unfair advantage of or be detrimental to the distinctive character or the repute of the trade mark, without due cause. The CTM Reg has parallel provisions: Arts 8(5) and 9(l)(c).Google Scholar

46 Case C-292/00 Davidoff & Cie v Gofldd [2003] ETMR 42. See also Morcom, [2003] EIPR 279; Norman, [2003] IPQ 342; Cornwell, [2003] EIPR 538. If the Member State exercises its option to protect such marks, it must offer the same protection both when the competing sign is used on non-similar goods, and when it is used on similar or identical goods: C-408/01 Adidas-Salomon AG & Adidas Benelux BV v Fitness World Trading Ltd [2004] ETMR 10.Google Scholar

47 Although in its judgment the Court repeatedly uses the language of the Paris Convention when it refers to ‘well-known marks’, the Community requirement of ‘reputation’ is less testing than that of Art 6bis.Google Scholar

48 Arsenal Football Club Pic v Reed (No 1) [2001] ETMR 77.Google Scholar

49 Case C-206/01 Arsenal Football Club v Reed [2003] 3 WLR 450; [2003] 1 CMLR 12 (noted [2003] IPQ 229).Google Scholar

50 Arsenal Football Club Pic v Reed (No 2) [2002] EWHC 2695.Google Scholar

51 [2003] EWCA Civ 696.Google Scholar

52 Joined Cases C-427,429 and 436/93, Bristol-Myers Squibb & Others v Paranova A/S [1996] ECR I-3457.Google Scholar

53 C-379/97 Pharmacia & Upjohn v Paranova [1999] ECR I-6927, para 43 and Case C-143/00 Boehringer Ingelheim v Swingward [2002] ETMR 78, para 46.Google Scholar

54 C-355/96 Silhouette International v Hartlauer Handelsgesellschaft [1998] ECR 4799, confirmed in C-173/98 Sebago Inc & Ancienne Maison Dubois v GB-Unic [1999] ETMR 681.Google Scholar

55 Joined Cases C-414/99, C-415, and 416/99 Zino Davidoff v A & G Imports Ltd; Levi Strauss v Tesco Stores [2002] 1 CMLR 1; [2002] ETMR 9; noted Dyrberg, and Petursson, (2002) 27 ELRev 464.Google Scholar

56 The burden of proof question is not unproblematic. If a parallel importer bears the full burden of proving exhaustion, disclosures as to the source of supplies will give the trade mark proprietor considerable assistance in repairing a leaky distribution system. The EC J has held that rules on proof may be qualified if there is a real risk of partitioning of national markets: Case C-244/00 Van Doren and Q v Lifestyle Sports and Sportswear [2003] ETMR 75Google Scholar

57 Possible abuses of trade mark rights within the EU in the context of Community exhaustion SEC (2003) 575. See also Stothers, [2003] EIPR 457.Google Scholar