MIPLC, December 2014 EU Trademark Law: Introduction Prof. Dr. Martin Senftleben VU University...

MIPLC, December 2014

EU Trademark Law: Introduction

Prof. Dr. Martin SenftlebenVU University Amsterdam

Bird & Bird, The Hague

EU Trademark Law

Trade Mark Directive

89/104/EEC (1988) = 2008/95/EC (2008)

TMD

Community Trade Mark Regulation 40/94 (1993) =

207/2009 (2009)

CTMR

National trademark offices

Regional Benelux Office

Office for Harmonization in the Internal Market (OHIM)

CTM = unitary right

‘A Community trade mark shall have a unitary

character. It shall have equal effect throughout the

Community: it shall not be registered, transferred

or surrendered or be the subject of a decision

revoking the rights of the proprietor or declaring it

invalid, nor shall its use be prohibited, save in

respect of the whole Community. This principle

shall apply unless otherwise provided in this

Regulation.’ (Art. 1(2) CTMR)

In practice: coexistence

• CTM not intended to replace national/

regional trademark systems

• equality of rights: CTM and national/

regional trademarks mutually exclusive

• but double protection possible in respect

of the same mark for the same owner

• conversion and seniority to regulate

interface between the CTM and national/

regional trademark rights

Open question: territoriality

• CTM is a unitary right for the entire EU

territory

– EU-wide acquisition of distinctive character?

– EU-wide use required to maintain CTM?

– territorial differences in scope of protection

when it comes to CTM with a reputation?

– territorial limits on prohibition and relief?

• deep impact on attractiveness of

national/regional systems

• Kinds of marks

• Rationale of protection

• Protection requirements

– graphical representation

– distinctiveness

• Need to keep free

Contents

Kinds of marks

‘Any sign, or any combination of signs,

capable of distinguishing the goods or

services of one undertaking from those

of other undertakings, shall be capable

of constituting a trademark.’

Art. 15(1) TRIPS

‘A trade mark may consist of any sign capable

of being represented graphically, particularly

words, including personal names, designs,

letters, numerals, the shape of goods or of

their packaging, provided that such signs are

capable of distinguishing the goods or

services of one undertaking from those of

other undertakings.’

Art. 2 TMD

Visible signs Non-visible signs

words, letters, numerals

drawings, colors, pictures

3D

hologram

motion

position

sound (audio)

smell (olfactory)

capable of being represented graphically?

Overview of potential marks

from the use of signs to distinguish goods

and services

to the development of a unique brand experience

for all senses

Underlying marketing strategy

• “American Express”, “Boss”, “Holiday Inn”,

“Microsoft”, “Pizza Hut”, “Puma”

• “Mars”, “McDonald’s”, “Mercedes Benz”,

“Ralph Lauren”, “Jil Sander”

• “Adidas”, “Kit Kat”, “Kodak”, “Reebok”

• “BMW”, “CNN”, “IBM”, “M&M”, “YSL”

• “A6”, “501”, “No. 5”, “S 500”, “4711”

Words, letters, numerals

Drawings, pictures, colors

Shapes

• the roar of a lion?

• the tune of a mobile phone?

• an engine noise?

• the smell of fresh-cut green grass?

Audio marks, smell marks

Example of a non-mark

‘[t]he mark consists of a

transparent bin or

collection chamber forming

part of the external surface

of a vacuum cleaner as

shown in the

representation.’

(para. 10)

CJEU, 25 January 2007, case C-321/03, Dyson/Registrar of Trade Marks

‘…the holder of a trade mark relating to such a non-

specific subject-matter would obtain an unfair

competitive advantage […], since it would be entitled

to prevent its competitors from marketing vacuum

cleaners having any kind of transparent collecting

bin on their external surface, irrespective of its

shape.’ (para. 38)

• subject matter = mere product property

• no ‘sign’ in the sense of the Directive

CJEU, 25 January 2007, case C-321/03, Dyson/Registrar of Trade Marks

CJEU, 10 July 2014, case C-421/13, Apple Flagship Store

‘the distinctive design and layout of a retail store’ (para. 9)

CJEU, 10 July 2014, case C-421/13, Apple Flagship Store

• in this case: concrete representation

‘...that a representation [...] which depicts the layout of

a retail store by means of an integral collection of

lines, curves and shapes, may constitute a trade mark

provided that it is capable of distinguishing the

products or services of one undertaking from those of

other undertakings.’ (para. 19)

• distinctiveness conceivable if significant

departure from norm in the sector (para. 20)

CJEU, 10 July 2014, case C-421/13, Apple Flagship Store

• therefore: it constitutes a sign

‘Consequently, such a representation satisfies the

first and second conditions [...] without it being

necessary [...] to attribute any relevance to the fact

that the design does not contain any indication as

to the size and proportions of the retail store that it

depicts...’ (para. 19)

• no comparable competition concerns?

• scope of protection as a solution?

Individual and collective marks

• individual marks

– holder: individual enterprise

– identification of an individual enterprise as the

source of goods or services

• collective marks– holder: association– focus on specific product characteristics

• certification marks– holder: control institution– guarantee of a specific product characteristic

Individual and collective marks

Collective marks

Rationale of protection

• origin function

– identification of enterprises as the

commercial source of goods or services

• quality function– expectations of consumers– encouragement to maintain the attained

quality standard

• communication function– additional information: lifestyle, attitudes– trademark image

Trademark functions

• origin

• distinctive

character

• rights of a

defensive

nature

• communication

• reputation/

repute

• rights serve

exploitation

purposes

exclusive link with a sign

creation of a brand image

advertising

quality control

Resulting business strategy

Recognition of origin function

• ECJ, 12 November 2002, case C-206/01,

Arsenal/Reed

‘In that context, the essential function of a trade

mark is to guarantee the identity of origin of the

marked goods or services to the consumer or

end user by enabling him, without any possibility

of confusion, to distinguish the goods or services

from others which have another origin.’ (para. 48)

Recognition of communication function

• CJEU, 18 June 2009, case C-487/07,

L’Oréal/Bellure

‘These functions include not only the essential

function of the trade mark, which is to guarantee

to consumers the origin of the goods or services,

but also its other functions, in particular that of

guaranteeing the quality of the goods or services

in question and those of communication,

investment or advertising.’ (para. 58)

from a description of how trademarks

function

to a sound justification of the grant of protection

Sufficient theoretical groundwork?

Economic theory

• origin function

– regulation of supply and demand

– search cost argument

• communication function

– protection of investment?

– incentive rationale?

– competition on mature markets?

– easier access to foreign markets?

producer competitor

consumer

• ensuring honest commercial practices

• consumer protection

• contribution to a functioning market

Market transparency

EU Charter of Fundamental Rights

• Art. 17(2): right to property

‘Intellectual property shall be protected.’

• Art. 11(1): freedom of expression and information

‘…shall include freedom to hold opinions and to

receive and impart information and ideas…’

• Art. 16: freedom to conduct a business

‘…in accordance with Union law and national

laws and practices is recognised.’

EU Charter of Fundamental Rights

• Art. 52(1): scope and interpretation

‘Any limitation on the exercise of the rights and

freedoms recognised by this Charter must be

provided for by law and respect the essence

of those rights and freedoms.’

‘Subject to the principle of proportionality,

limitations may be made only if they are

necessary and genuinely meet objectives of

general interest recognised by the Union or the

need to protect the rights and freedoms of

others.’

‘Nevertheless, whatever the protection afforded

to innovation and investment, it is never

absolute. It must always be balanced against

other interests, in the same way as trade mark

protection itself is balanced against them. I

believe that the present cases call for such a

balance as regards freedom of expression and

freedom of commerce.’ (para. 102)

CJEU, Google/Louis Vuitton, Opinion AG Poiares Maduro

‘...that the listings uploaded by users to eBay’s

marketplace are communications protected by

the fundamental rights of freedom of expression

and information provided by Article 11 of [the]

Charter of Fundamental Rights of the EU and

Article 10 of the European Convention on Human

Rights.’ (para. 49)

CJEU, L’Oréal/eBay, Opinion AG Jääskinen

‘...not every adverse affect on [communication,

investment or advertising] functions justifies the

application of Article 5(1) of Directive 89/104.

The protection of those functions on the basis of

that provision, first, must not undermine the

requirements of specific protective rules and,

second, must respect overriding other interests.’

(para. 59)

CJEU, Viking Gas/Kosan Gas, Opinion AG Kokott

Protection requirements

‘A trade mark may consist of any sign capable

of being represented graphically, particularly

words, including personal names, designs,

letters, numerals, the shape of goods or of

their packaging, provided that such signs are

capable of distinguishing the goods or

services of one undertaking from those of

other undertakings.’

Art. 2 TMD

Core requirements

procedural:

graphic representation

(register transparancy)

substantial:

distinctive character

(market transparancy)

basic:

constituting a sign

(undistorted competition)

Graphical representation

• at issue: registration of a smell mark

(cinnamic acid methyl ester)

‘...that a trade mark may consist of a sign which is

not in itself capable of being perceived visually,

provided that it can be represented graphically,

particularly by means of images, lines or

characters, and that the representation is clear,

precise, self-contained, easily accessible,

intelligible, durable and objective.’

ECJ, 27 December 2002, case C-273/00, Sieckmann

• in case of an olfactory sign (-)

‘In respect of an olfactory sign, the requirements

of graphic representability are not satisfied by a

chemical formula, by a description in written

words, by the deposit of an odour sample or by

a combination of those elements.’

ECJ, 27 December 2002, case C-273/00, Sieckmann

• at issue: registration of a short melody

• text description:

‘The trademark

consists of the first nine notes of Für Elise.’

‘... at the very least lacks precision and clarity and

therefore does not make it possible to determine the

scope of the protection sought.’ (para. 59)

CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

• sequence of notes:

‘E, D#, E, D#, E, B, D, C, A’

‘...neither clear, nor precise nor self-contained, does

not make it possible, in particular, to determine the

pitch and the duration of the sounds forming the

melody in respect of which registration is sought and

which constitute essential parameters for the

purposes of knowing the melody and, accordingly, of

defining the trade mark itself.’ (para. 61)

CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

• notation:

‘On the other hand, those requirements are

satisfied where the sign is represented by a stave

divided into measures and showing, in particular,

a clef, musical notes and rests whose form

indicates the relative value and, where

necessary, accidentals.’ (para. 62)

CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

• notation:

‘Even if such a representation is not immediately

intelligible, the fact remains that it may be easily

intelligible, thus allowing the competent authorities

and the public, in particular traders, to know

precisely the sign whose registration as a trade

mark is sought.’ (para. 63)

CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

Distinctiveness

Distinctiveness

• trademark = means of distinction

• distinctiveness = basic requirement

• to be determined with regard to specific

goods or services (principle of speciality)

– ‘Ajax’ for a soccer team

– ‘Ajax’ for a cleaning detergent

• depends on social and cultural context

• case-by-case analysis

Distinctive signs?

• indication of product features– ‘makes clean’ for a

cleaning detergent

• use of generic terms– ‘apple’ for apples

– ‘camel’ for camels

– ‘diesel’ for petrol

... (-)

• fanciful signs– ‘persil’ for a cleaning

detergent

• signs adopted arbitrarily with in respect of goods or services– ‘apple’ for computers

– ‘camel’ for cigarettes

– ‘diesel’ for jeans

... (+)

In practice: low threshold

• regardless of recognition of need to keep

descriptive signs free

‘... that all signs or indications which may serve to

designate characteristics of the goods or services

in respect of which registration is sought remain

freely available to all undertakings in order that

they may use them when describing the same

characteristics of their own goods.’

CJEU, 12 February 2004, case C-265/00, Biomild

• A combination of descriptive elements is

itself descriptive, unless

‘...there is a perceptible difference between the

neologism and the mere sum of its parts.’

• decisive: different impression

CJEU, 12 February 2004, case C-265/00, Biomild

In practice: low threshold

‘…that all marks made up of signs or indications

that are also used as advertising slogans,

indications of quality or incitements to purchase

the goods or services covered by those marks

convey by definition, to a greater or lesser extent,

an objective message. It is clear, however, […]

that those marks are not, by virtue of that fact

alone, devoid of distinctive character.’ (para. 56)

CJEU, 21 January 2010, case C-398/08 P, Audi/OHIM

‘…in particular, where those marks are not merely

an ordinary advertising message, but possess a

certain originality or resonance, requiring at least

some interpretation by the relevant public, or

setting off a cognitive process in the minds of that

public.’ (para. 57)

CJEU, 21 January 2010, case C-398/08 P, Audi/OHIM

• may exist from the very beginning

(arbitrarily-chosen, strong trademark)

• can be acquired or become stronger

through use (secondary meaning)

• but may also decrease (dilution)

• may even be lost (trademark becoming

a generic term)

No constant level of distinctiveness

secondary meaning

genericism

dilution

(-)

(+)(-)

Overview of influence factors

‘A trade mark may consist of any sign capable

of being represented graphically, particularly

words, including personal names, designs,

letters, numerals, the shape of goods or of

their packaging, provided that such signs are

capable of distinguishing the goods or

services of one undertaking from those of

other undertakings.’

An inescapable protection automatism?

renewable indefinitely

copyright law: as of creation

70 years post mortem auctoris in the EU

patent law: as of filing date

20 years

trademark law: use or filing date

Even though protection is renewable?

distinctive signs to be protected as long as

they are used as source identifiers

And the system is static?

other IP rights (e.g. copyright and patents) are

protected only for a limited period of time

Instead of supporting cyclic innovation?

Need to keep free

signs excluded from protection

inherently distinctive signs

acquisition of distinctiveness through use (conditional acceptance)

• exclusion of signs

• acceptance on certain conditions

• limitation of the scope of protection

Available balancing tools

Exclusion of Signs

Art. 3(1) TMD

The following shall not be registered or, if

registered, shall be liable to be declared

invalid:

f) trade marks which are contrary to public

policy or to accepted principles of

morality;...

Art. 3(1) TMD

The following shall not be registered or, if

registered, shall be liable to be declared

invalid:

g)trade marks which are of such a nature as

to deceive the public, for instance as to the

nature, quality or geographical origin of the

goods or service;...

Art. 3(1) TMD

The following shall not be registered or, if

registered, shall be liable to be declared

invalid:

h)trade marks which have not been authorised

by the competent authorities and are to be

refused or invalidated pursuant to Article

6ter of the Paris Convention for the

Protection of Industrial Property, hereinafter

referred to as the ‘Paris Convention’.

• exclusion of armorial bearings, flags, and other

State emblems of Union countries

• exclusion of armorial bearings, flags, other

emblems, abbreviations, and names, of

international intergovernmental organizations

Art. 6ter PC

Art. 3(2) TMD

Any Member State may provide that a trade

mark shall not be registered or, if registered,

shall be liable to be declared invalid where

and to the extent that:

c) the trade mark includes badges, emblems

and escutcheons other than those covered

by Article 6ter of the Paris Convention and

which are of public interest...

Extensions possible at the national level

signs consisting of a shape

• resulting from the nature of the goods

themselves

• necessary to obtain a technical result

• giving substantial value to the goods

(Art. 3(1)(e) TMD)

Further exclusions

• fundamental distinction between the

trademark and the product

• freedom of competition (need to keep

product features free)

• preservation of the public domain (no

conflict with cyclic innovation)

Need for shape exclusions

Example technical subject matter

‘… to prevent trade mark protection from granting

its proprietor a monopoly on technical solutions or

functional characteristics of a product which a user

is likely to seek in the products of competitors.’

(para. 78)

• no monopolisation of decisive product features

• safeguarding freedom of competition

CJEU, 18 June 2002, case C-299/99, Philips/Remington

‘In refusing registration of such signs, Article 3(1)

(e), second indent, of the Directive reflects the

legitimate aim of not allowing individuals to use

registration of a mark in order to acquire or

perpetuate exclusive rights relating to technical

solutions.’ (para. 82)

• no artifical extension of the term of patent

protection

CJEU, 18 June 2002, case C-299/99, Philips/Remington

static trademark protection vs. cyclic

innovation in copyright and patent law

Conflict between the protection systems

• patent protection expired

• reappropriation via trademark law?

Example technical solutions

‘…the prohibition on registration as a trade mark of

any sign consisting of the shape of goods which is

necessary to obtain a technical result ensures that

undertakings may not use trade mark law in order

to perpetuate, indefinitely, exclusive rights relating

to technical solutions.’ (para. 45)

• Lego brick qualified as functional

• shape alternatives not decisive (para. 55)

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

• result: technical know-how remains free

after patent expiry

• costs: risk of confusion/unfair free riding?

‘In the present case, it has not been disputed that

the shape of the Lego brick has become distinctive

in consequence of the use which has been made

of it and is therefore a sign capable of

distinguishing the appellant’s goods from others

which have another origin.’ (para. 40)

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

Example industrial design

exclusion of substantial value shapes

relevant:

value due to beauty or

attractiveness

irrelevant:

value due to trademark recognition

Benelux Court of Justice, NJ 1989, 834, Burberrys I

‘…the shape of a product which gives substantial

value to that product cannot constitute a trade mark

[…] where, prior to the application for registration, it

acquired attractiveness as a result of its recognition

as a distinctive sign following advertising campaigns

presenting the specific characteristics of the product

in question.’ (para. 28)

• traditional Benelux distinction overruled?

CJEU, 20 September 2007, case C-371/06, Benetton/G-Star

General Court, 6 October 2011, case T-508/08, Bang & Olufson

General Court, 6 October 2011, case T-508/08, Bang & Olufson

• need to prevent monopoly also in the case

of substantial value shapes

‘Like the ground for refusal to register that applies

to the shapes of goods which are necessary to

obtain a technical result, the ground that concerns

refusal to register signs consisting exclusively of

shapes which give substantial value to the goods

is to prevent the granting of a monopoly on those

shapes.’ (para. 66)

General Court, 6 October 2011, case T-508/08, Bang & Olufson

• this need arises in particular in the case

of specific design

‘Indeed, the shape for which registration was

sought reveals a very specific design and the

applicant itself admits [...] that that design is an

essential element of its branding and increases

the appeal of the product at issue, that is to say,

its value.’ (para. 74)

General Court, 6 October 2011, case T-508/08, Bang & Olufson

• this need arises in particular in the case of

specific design

‘Furthermore, it is apparent [...] that the aesthetic

characteristics of that shape are emphasised first

and that the shape is perceived as a kind of pure,

slender, timeless sculpture for music reproduction,

which makes it an important selling point.’

(para. 75)

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

rationales underlying shape exclusions

competition:

no monopoly on essential product

characteristics

term extension:

no evergreening of rights with limited

period of protection

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

• need to safeguard competition in case of

shape resulting from nature of the goods

• not only when indispensable (natural and

regulated products) but also when inherent

to the generic function

‘…that shapes with essential characteristics which

are inherent to the generic function or functions of

such goods must, in principle, also be denied

registration.’ (para. 25)

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

• no artificial extension of limited protection

in the case of substantial value shapes

• catalogue of essential characteristics

– nature of the category of goods concerned

– artistic value of the shape in question

– dissimilarity from other shapes on the market

– substantial price difference

– promotion strategy accentuating aesthetic

characteristics (para. 35)

• copyright protection limited in time

• term extension via trademark law?

• accumulation of rights possible in many

cases

Example literary and artistic works

difference

justified

because of

substitutability?

Literary and artistic works

Pierre Bourdieu

Conditional Acceptance

(Acquired Distinctiveness)

secondary meaning(-)

(+)

Degrees of distinctiveness

Art. 3(1) TMD

The following shall not be registered or, if

registered, shall be liable to be declared

invalid:

b)trade marks which are devoid of any

distinctive character;...

Art. 3(1) TMD

The following shall not be registered or, if

registered, shall be liable to be declared

invalid:

c) trade marks which consist exclusively of

signs or indications which may serve, in

trade, to designate the kind, quality, quantity,

intended purpose, value, geographical origin,

or the time of production of the goods or of

rendering of the service, or other

characteristics of the goods or services;...

Art. 3(1) TMD

The following shall not be registered or, if

registered, shall be liable to be declared

invalid:

d)trade marks which consist exclusively of

signs or indications which have become

customary in the current language or in the

bona fide and established practices of the

trade;...

Art. 3(3) TMD

• in these cases, the exclusion from trademark

protection is less absolute

• backdoor: acquisition of distinctive character

in consequence of use in trade

‘A trade mark shall not be refused registration or be

declared invalid in accordance with paragraph 1(b),

(c) or (d) if, before the date of application for

registration and following the use which has been

made of it, it has acquired a distinctive character.’

Example geographical indications

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• Windsurfing Chiemsee

– designs and sells sports clothing in the

Chiemsee area (manufactured elsewhere)

– registered ‘Chiemsee’ as a picture trade mark

in the form of various graphic designs

• Huber and Attenberger

– also sell sports clothing in the Chiemsee area

– use the designation ‘Chiemsee’ in different

graphical form

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• distinctive character acquired by

Windsurfing Chiemsee?

‘In determining whether a mark has acquired

distinctive character following the use made of it,

the competent authority must make an overall

assessment of the evidence that the mark has

come to identify the product concerned as

originating from a particular undertaking, and thus

to distinguish that product from goods of other

undertakings.’ (para. 49)

actual situation as a starting

point

goods or services

covered by the mark

expectations of the average consumer of this category

of goods

Concrete assessment needed

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• balancing of collective and individual level

of reputation

‘…regard must be had in particular to the specific

nature of the geographical name in question.

Indeed, where a geographical name is very well

known, it can acquire distinctive character under

Article 3(3) of the Directive only if there has been

long-standing and intensive use of the mark by the

undertaking applying for registration.’ (para. 50)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• particular efforts required if geographical

name already linked with certain goods

‘A fortiori, where a name is already familiar as an

indication of geographical origin in relation to a

certain category of goods, an undertaking applying

for registration of the name in respect of goods in

that category must show that the use of the mark

— both long-standing and intensive — is

particularly well established.’ (para. 50)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• relevant factors (para. 51)

– market share held by the mark

– how intensive, geographically widespread and

long-standing use of the mark has been

– the amount invested by the undertaking in

promoting the mark

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• relevant factors (para. 51)

– the proportion of the relevant class of persons

who, because of the mark, identify goods as

originating from a particular undertaking

– statements from chambers of commerce and

industry or other trade and professional

associations

CJEU, 19 June 2014, cases C-217/13 and 218/13, Oberbank/DSGV

‘contourless colour mark red’

67,9% but still less than

70,0%

Opinion poll as a shortcut?

CJEU, 19 June 2014, cases C-217/13 and 218/13, Oberbank/DSGV

• use of opinion poll as guidance is possible

• but no automatism: use of predetermined percentages is inacceptable (para. 45)

‘...even if a consumer survey may be one of the

factors to be taken into account when assessing

whether such a mark has acquired a distinctive

character through use, the results of a consumer

survey cannot be the only decisive criterion to

support the conclusion that a distinctive character

has been acquired through use.’ (para. 48)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• recognition of need to keep free

‘As regards […] geographical names, it is in the

public interest that they remain available, not least

because they may be an indication of the quality

and other characteristics of the categories of goods

concerned, and may also, in various ways, influence

consumer tastes by, for instance, associating the

goods with a place that may give rise to a

favourable response.’ (para. 26)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• concrete need to keep free not required

‘Article 3(1)(c) of the Directive is not confined to

prohibiting the registration of geographical names

as trade marks solely where they designate

specified geographical locations which are already

famous, or are known for the category of goods

concerned, and which are therefore associated with

those goods in the mind of the relevant class of

persons…’ (para. 29)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee

• potential future need sufficient

‘…the competent authority must assess whether a

geographical name in respect of which application

for registration as a trade mark is made designates

a place which is currently associated in the mind of

the relevant class of persons with the category of

goods concerned, or whether it is reasonable to

assume that such an association may be

established in the future.’ (para. 31)

Collective marks: same reasoning?

Art. 15(2) TMD

• registration as a collective mark possible

‘By way of derogation from Article 3(1)(c), Member

States may provide that signs or indications which

may serve, in trade, to designate the geographical

origin of the goods or services may constitute

collective, guarantee or certification marks.’

• important: regulation ensuring access to the

association holding the collective mark

• individual marks– holder: individual undertaking– risk of monopolisation

• collective marks– holder: association– obligation to accept all enterprises from the

region which meet the required standards?

• certification marks– holder: control institution– obligation to grant licenses for all enterprises

meeting the required standard?

No risk of monopolisation?

Example colour per se

• only in exceptional circumstances, a

colour per se is inherently distinctive

• exceptional circumstances:

number of goods or services very limited

+ relevant market very specific

• in other cases: acquisition of distinctive

character through use

ECJ, 6 May 2003, case C-104/01, Libertel

• background: perception of consumers

‘Consumers are not in the habit of making

assumptions about the origin of goods based on their

colour or the colour of their packaging, in the

absence of any graphic or word element, because as

a rule a colour per se is not, in current commercial

practice, used as a means of identification. A colour

per se is not normally inherently capable of

distinguishing the goods of a particular undertaking.’

(para. 65)

ECJ, 6 May 2003, case C-104/01, Libertel

• also limited capacity to distinguish colours

‘The number of colours which [the average,

reasonably well-informed and reasonably observant

and circumspect consumer] is capable of

distinguishing is limited, because it is rarely in a

position directly to compare products in various

shades of colour. It follows that the number of

different colours that are in fact available as potential

trade marks to distinguish goods or services must be

regarded as limited.’ (para. 47)

ECJ, 6 May 2003, case C-104/01, Libertel

• therefore strong need to keep free

‘...the fact that the number of colours actually

available is limited means that a small number of

trade mark registrations for certain services or

goods could exhaust the entire range of the colours

available. Such an extensive monopoly would be

incompatible with a system of undistorted

competition, in particular because it could have the

effect of creating an unjustified competitive

advantage for a single trader.’ (para. 54)

ECJ, 6 May 2003, case C-104/01, Libertel

• this need is the stronger, the more goods or

services are involved

‘The greater the number of the goods or services

[...], the more excessive the exclusive right which it

may confer is likely to be, and, for that very reason,

the more likely is that right to come into conflict with

the maintenance of a system of undistorted

competition, and with the public interest in not unduly

restricting the availability of colours for the other

traders...’ (para. 56)

ECJ, 6 May 2003, case C-104/01, Libertel

Example shape marks

• difference between traditional types of marks

and shape marks

‘…the perception of the average consumer is not

necessarily the same in the case of a three-

dimensional trade mark, consisting of the packaging

of a product, as it is in the case of a word or

figurative mark which consists of a sign that is

independent from the appearance of the goods it

denotes.’ (para. 52)

ECJ, 12 February 2004, case C-218/01, Henkel

traditional trademarks attached

to the product

shape marks (packaging) form part

of the product

Fundamental distinction between product and trademark

• therefore same assumption as to perception

of consumers

‘Average consumers are not in the habit of making

assumptions about the origin of goods based on the

shape of their packaging, in the absence of any

graphic or word element, and it could therefore prove

more difficult to establish distinctive character in the

case of such a three-dimensional trade mark than in

the case of a word or figurative mark.’ (para. 52)

ECJ, 12 February 2004, case C-218/01, Henkel

• shape marks thus require the acquisition of

distinctiveness though use

• but exceptions conceivable

‘…a simple departure from the norm or customs of

the sector is not sufficient to render inapplicable the

ground for refusal given in Article 3(1)(b) of the

Directive. In contrast, a trade mark which significantly

departs from the norm or customs of the sector […] is

not devoid of distinctive character.’ (para. 49)

ECJ, 12 February 2004, case C-218/01, Henkel

Example cultural heritage

Federal Patent Court of Germany, 25 November 1997, ‘Mona Lisa’

• The Mona Lisa is not

distinctive.

• The Mona Lisa has

become customary in

trade practices.

• But there is no conflict

with morality or public

order.

Guernica for weapons?

• distinctive?

• customary in trade practices?

Solveig’s song for beer?

• distinctive?

• customary in trade practices?

CJEU, C-283/01, Shield Mark/Kist

‘I find it more difficult to accept […] that a creation of the

mind, which forms part of the universal cultural heritage,

should be appropriated indefinitely by a person to be used

on the market in order to distinguish the goods he

produces or the services he provides with an exclusivity

which not even its author's estate enjoys.’

(Opinion A-G Colomer, 3 April 2003, para. 52)

• risk of privatising (re-monopolising) parts

of the cultural heritage

• undesirable redefinition of important

cultural expressions in commerce

• free riding on the status, reputation and

favourable image of cultural expressions

• discouragement of ‘cultural heritage

grabbing’

Cultural grounds for refusal necessary?

Art. 3(2) TMD

Any Member State may provide that a trade

mark shall not be registered or, if registered,

shall be liable to be declared invalid where

and to the extent that:

b)the trade mark covers a sign of high

symbolic value, in particular a religious

symbol;...

• investment in abstract colour marks

desirable?

• acquired distinctive character of shape

marks a result of previous industrial

design protection?

• investment in cultural heritage marks

desirable?

In general: appropriate incentives?

Territoriality

CJEU, 7 September 2006, case C-108/05, ‘Europolis’

• Bovemij Verzekeringen

– wants to register the sign ‘EUROPOLIS’ for

insurance and financial services

– provides evidence of distinctive character

acquired through use in the Netherlands

• Benelux Trademark Office

– refuses registration because distinctive

character not acquired for the entire Benelux

territory

CJEU, 7 September 2006, case C-108/05, ‘Europolis’

• distinctive character must be acquired

throughout the requested territory

‘…only if it is proven that that trade mark has

acquired distinctive character through use

throughout the territory of the Member State or, in

the case of Benelux, throughout the part of the

territory of Benelux where there exists a ground for

refusal.’ (para. 23)

CJEU, 7 September 2006, case C-108/05, ‘Europolis’

• linguistic differences relevant?

‘…if the ground for refusal exists only in one of the

linguistic areas of the Member State or, in the case

of Benelux, in one of its linguistic areas, it must be

established that the mark has acquired distinctive

character through use throughout that linguistic

area.’ (para. 28)

• an appropriate model for CTMs?

The end.

contact: m.r.f.senftleben@vu.nl