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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
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
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?
