News letter Spring 2002 No. 70

STUCK IN THEPIPELINEPrevious annual reviews of Europeantrade mark law have been long onlists of cases but relatively short oncontent. This year is a little different.The number of key cases since lastyear’s review is small but the realinterest on the case-law front can befound in the cases that have not yetbeen decided, yet will soon be. This round-up will look at some of the year’s most valuable decisions,whether from the European Court orfrom the Office for Harmonisation in the Internal Market (OHIM),focusing more on the cases that, for one reason or another, are still onthe horizon.

The number of trade mark cases headingtowards the European Court of Justice (ECJ)and its little sister, the Court of First Instance,just keeps on increasing. Through thisincreased level of casework, the ECJ judiciaryis gradually building up a degree ofexpertise and understanding in trade marklaw that was manifestly absent a decadeago. Guided by some good research on thepart of the Advocates General, the court isnow producing decisions which, whether

you like them or not, are rigorous enoughto withstand serious analysis in terms ofgeneral intellectual property law andcompetition policy.

A major problem which urgently awaitssolution is the slow availability, or non-availability, of texts of ECJ decisions in the 11 working languages of the EuropeanUnion. This problem is likely to beexacerbated when the entrance of the nextgroup of countries to the Union brings in afurther list of languages including somewhich, it appears to this author, do not easilylend themselves to translation. The cost oftranslation is high and the act of translationis slow and labour-intensive. However, theneed for current and accurate informationconcerning the state of trade mark law andits powerful monopolies is paramount.Whether it is the force of bureaucracy or ofthe marketplace, it is apparent that someforce must be applied to this issue if it is tobe first prioritised and then solved.

Main European decisions this year

Zino Davidoff SA v A & G Imports; LeviStrauss v Tesco Stores plc and CostcoWholesale UK Ltd [2002] ETMR 109

Much media coverage was given over tothis battle. On the one side stood the trademark owners, emphasising the need toprotect their investment in establishing newproducts and developing markets; on theother side were ranged the supermarketsand retail stores, arguing that trade marksshould not be allowed to force up theprices of ordinary consumer goods.

The trade mark owners won the legal case,the ECJ ruling that the doctrine of

IN THIS ISSUE

Call for Articles

MARQUES Internet Committee

OHIM Trademarks Group

MARQUES presents owners’ viewsat meeting with EU commission

The copyright etc. and Trademarks(Offences and Enforcement) Bill

OHIM European Enlargement Ad Hoc Trademarks Working Group

Wrestlers to fight in the House of Lords

Europe's fund of trade mark case law keeps on growing. Jeremy Phillips

says that, while some interesting cases have been decided in the past

year, there is much more excitement still to come.

1. The editor is grateful to Euromoney Institutional Investor PLC and to Professor Jeremy Phillips for permission toreproduce this article, which was first published in the April 2002 issue of Managing Intellectual Property. For more information, please see www.managingip.com or e-mail mip@euromoneyplc.com.

continued on page 2

exhaustion of rights did not permit theimportation into the EEA of goods soldoutside that area in situations in which thetrade mark owner had indicated that thegoods should not be sold in the EEA butdid not take all possible steps to resist theirimportation. It was theoretically possible forthe trade mark owner to have consentedimpliedly to the importation of goods firstmarketed outside the EEA, but it is not easyto imagine any circumstances in whichsuch implicit consent would be deemed tohave been given.

But it was the supermarkets that won themedia battle. By portraying themselves aschampions of the consumer they raisedtheir general standing within the economyat large. They also blackened the image ofthe brand owners, alleging that it is thesame companies who exploit cheap thirdworld labour to make products at rock-bottom cost and then exploit trade marklaw in order to make sure those productsare sold with sky-high price tags.

Procter & Gamble Company v OHIM[2002] ETMR 22In the year’s most controversial ECJ decisionin the field of trade marks, the ECJoverturned the position adopted by theOHIM examiner, the appeal board and theCourt of First Instance and ruled that theword mark BABY-DRY did not consistexclusively of signs or indications relating tothe goods for which registration wassought, babies’ nappies (or diapers). In terms of its formal logic the court’sdecision cannot be faulted. No English-speaking consumer would ever need to usethe word combination BABY-DRY as ameans of referring to nappies or theirfunctions; the mark was the fruit of an actof “lexical invention” which itself bestoweda minimal but nonetheless legallysignificant level of distinctiveness on themark and the mere fact that BABY-DRY wasallusive to diapers was not a formalcriterion for dismissal of the application.

The problem with this decision is not that itis legally incorrect, but that it is met withintuitive revulsion by a generation of trademark practitioners raised on the principlethat something greater than a bareminimum of distinctiveness was requiredbefore a powerful legal monopoly could besecured. The fact remains that, after BABY-DRY, a large number of word marks withlittle merit and little distinctive force havenow become registrable without proof ofdistinctiveness acquired through use. It alsoremains the fact that such marks will berelatively weak and that, if BABY-DRY isregistrable, so too are a long list of similarlyallusive terms incorporating the wordsBABY or DRY. It further remains the factthat, outside of France where no foreignlawyer dare guess the outcome of anytrade mark litigation, the use of the wordsBABY and DRY will remain free for alldescriptive and marketing purposes. being the case, why not allow BABY-DRYto be registered? The Registry gets its fees,the attorneys earn their keep, the applicantgets its weak and narrow monopoly andresponsible competitors are scarcelyinconvenienced.

Toshiba Europe GmbH v Katun GermanyGmbH (ECJ, 25 October 2001)This case is not actually a decision on trademark law, though it affects trade marksmost significantly. Toshiba objected toKatun’s use of Toshiba’s name, productserial numbers and spare part identificationnumbers in its catalogue of the prices ofspare parts for photocopiers. Katunmaintained that this was a permissibleactivity, being a responsible form ofcomparative advertising for the benefit ofconsumers; Toshiba insisted that it was anact of unfair competition, since it createdthe apparent suggestion that Katun’s ownproducts were of the same quality as thoseof Toshiba. The Court ruled that the use ofproduct numbers in this way is notinherently objectionable and is indeedpermissible as a form of comparative

advertising; only where the circumstancesare such that a false representation is madewill this use be illicit.

No Ordinary Designer Label Limited vComercial Fenicia de Exportación, SL(OHIM Second Board of Appeal, 11 October 2001 Case R 185/2000-2)In this case an application to register thewords TED BAKER as a Community trademark for clothing was blocked, thesuccessful opponent having securedregistration of the CLAUDIA BAKER trademark for similar goods in Spain. Theapplicant argued in vain that (1) CLAUDIABAKER had coexisted in Spain with other –BAKER clothing marks and had notapparently taken steps to prevent othercompetitors using that surname, and that(2) there was no likelihood of confusion.On the first point the Board of Appealopined that the question whether tooppose a trade mark or seek to prevent itsuse is a decision for the holder of the priorright alone. If the prior right holderconsidered that TED BAKER would confusehis market of CLAUDIA BAKER consumersbut that HENRY BAKER would not, thenthat is for the right holder to decide: if Claudia doesn’t object to Henry, she isnot taken to have acquiesced to Ted. On the second point, while the two markswere held by the Board of Appeal to beclearly distinguishable, there remained therisk that shoppers would still be confusedinto thinking that the two brands were insome way associated.

M&R Marking Systems Inc’s Application(OHIM First Board of Appeal,19 June 2001)The OHIM First Board of Appeal hadpreviously ruled in Harcourt Brace’sapplication [2000] ETMR 382 that theword mark IDEAL was incapable ofregistration as a Community trade marksince the word was, in at least fourEuropean languages, a laudatory termwhich should be available for all traders to

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use. This time, IDEAL was accepted forregistration after the applicant sought tolimit the scope of registration (in respect ofrubber stamps and machines for makingthem) to cover only goods "sold toresellers". The applicants submittedevidence that, through extensiveadvertising in the trade press, the wordIDEAL had become distinctive of theirproducts and that they were accordinglyentitled to registration. While the logic ofthis decision is superficially attractive, it maylead to substantial complications. For example, if a competitor seeks to usethe word IDEAL in respect of the sale ofidentical products to the public, will a courtconsider that rubber stamps for sale to theretail trade and rubber stamps sold by theretail trade are ‘similar goods’ for thepurposes of infringement proceedings?

Josef Rupp Gesellschaft mbH’s TradeMark; application for a Declaration ofInvalidity by the Danish Dairy Board(OHIM, First Cancellation Division,November 19 2001)In this unusual case, the OHIM FirstCancellation Division had to consider atrade mark which was conspicuous by itsabsence: the hole in the middle of acheese. Could it be said that this trademark was anticipated by the use by otherfood manufacturers of a hole as a trademark? No, said the Cancellation Division:although the hole might indeed beidentical in each case, the appearance ofthe products of other manufacturers mightnonetheless be quite different. It was notso much a matter of considering the holeas a trade mark as considering the trademarked product as a whole. In this casethere was no earlier hole which, whenapplied to a cheese, created such anappearance as to convey the impressionthat there was a use of an identical orconfusingly similar mark.

Awaiting final decision

While the Davidoff/Levi Strauss decisionscaught the public eye, most Europeantrade mark practitioners would agree thatthe really important ECJ cases this year arethose that have been considered at lengthbut not yet decided. The prince amongthese decisions is Philips Electronics NV vRemington Consumer Products Ltd, inwhich the Advocate General’s Opinion waspublished as long ago as 23 January 2001but the final decision has not (by lateMarch 2002) even been listed in the ECJ’spublic diary. Why is this case so keenlyawaited? The Swedish courts have heldthat the Philips three-headed electric shaverconfiguration was registrable as a trademark despite its functionality, since thereremained an arbitrary element in itsappearance. In contrast the British courtshave considered the same mark invalidlyregistered: although it could have lookeddifferent while performing the samefunction, the shaver head was nonethelessfunctional and would not have beenregarded by consumers as serving as atrade mark. Both the Advocate General andan OHIM Board of Appeal (in Cabot SafetyIntermediate Corporation’s application[2001] ETMR 949) appear to take a viewcloser to that of the British than that of theSwedes, but the Court only accepts theadvice of the Advocate General in around80% of cases referred to it, so there is still room for speculation as to this case’s outcome.

Other cases awaiting final decisioninclude the following:

Merck, Sharp & Dohme v Paranova andBoehringer Ingelheim v Swingward (ECJ,Advocate General’s Opinion, July 12 2001)and Aventis Pharma Deutschland GmbHv Kohlpharma GmbH and Mtk PharmaVertbriebs-GmbH (ECJ, Advocate General’sopinion March 7 2002)These references all address the applicationof exhaustion doctrine in trade markinfringement law. Once trade markedgoods are marketed in the EEA by or with

the blessing of the trade mark owner,subsequent activities involving those goodsonly infringe the trade mark if they damagethe trade mark owner’s interest in his trademark, for example by selling damaged oroutdated stock. The repackaging ofpharmaceutical products is a hard case.Should repackaging of drugs only bepermitted where there is a legal orcommercial necessity for it, or should otherfactors be allowed to justify it too, such asthe fact that people who take medicinesmay lose confidence in them if they aremanifestly imported from a foreign countryand are covered with little stickers thatprovide necessary information in thatjurisdiction? The Advocate General hasadvised the court that not only legalcompulsion but economic and culturalnecessity may justify the repackaging of goods.

Hölterhoff v Freiesleben (ECJ, AdvocateGeneral’s opinion, 20 September 2001)The question under consideration iswhether an unauthorised use of a trademark must be a ‘trade mark use’ before it isconsidered to be an infringement. The usein this case was an oral use of trade marksregistered in respect of particular cuts ofdiamond, to indicate not so much theorigin of a diamond as the style of the cut.This case should be considered inconjunction with the Arsenal ECJ reference,mentioned below.

Dante Bigi (ECJ, Advocate General’sOpinion, October 9 2001)This case involves a protected designationof origin, PARMIGIANO REGGIANO, inrespect of Parmesan cheese. Italian law notonly prohibits the sale of cheese as‘Parmesan’ if it does not comply withnational regulations but also bans itsmanufacture for export into other EUmember states where it can be lawfullysold as ‘Parmesan’. Does such a prohibitionexceed Italy’s legislative powers under EU

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law? No, suggests the Advocate General.This case should be contrasted with theChocolate cases: Commission v Italy andCommission v Spain (ECJ, AdvocateGeneral’s Opinions, 6 December 2001). In these Opinions the Advocate Generalrecommended that the Court rule thatboth Italy and Spain were in breach ofCommunity law by preventing the labelling as ‘chocolate’ as a product madefor export and that could not be soldnationally as such because of its highvegetable oil content, since the nationallaws of some other EU member statespermitted such sale.

Sieckmann’s Trade Mark Application(ECJ, Advocate General’s Opinion, 6 November 2001)Can a smell be registered as a trade mark inEurope despite the problems of furnishingthe registry with a ‘graphicalrepresentation’? OHIM controversiallyallowed the registration of “the smell offresh-cut grass” in Venootschap onderFirma Senta Aromatic Marketing’sapplication [2001] ETMR 429, but the UKRegistry now refuses to register smells. The Advocate General felt that, as thingsstand at present, there is no appropriatemeans of recording smells as ‘graphicalrepresentations’ and that, accordingly, theyshould not be registrable.

SA Société LTJ Diffusion v SA SADAS(ECJ, Advocate General’s Opinion 17 January 2002)At the heart of this reference is thequestion whether a sign whichencompasses the trade mark owner’sregistered mark can be said to be ‘identical’with it. If, as in this case, ARTHUR ETFELICIE is regarded as being identical toARTHUR, which it includes, or if it isdifferent only in non-essential elements,then the trade mark owner can sue forinfringement without the need to prove alikelihood of confusion (that being the

burden of proof imposed on a trade markproprietor where the marks are merely‘similar’, not ‘identical’. In Asprey & Garrardv WRA (Guns) Ltd (to be reported in ETMR,May 2002) the UK courts have regardedthe name William R Asprey as an identicalsign to ASPREY, but the Advocate Generaldoes not appear to support this view. Intruth, if the word ‘identical’ in theHarmonisation Directive is given its literalmeaning, at least every European trademark court will be able to apply theinfringement test the same way – though some will argue that members ofthe judiciary in Europe should be cleverenough to apply a test of identity evenif it extends beyond the scope of theliterally identical.

Campina Melkunie BV v Benelux-Merkenbureau (ECJ, Advocate General’sOpinion, February 27 2002)In proceedings before the Benelux Court ofJustice ([2001] ETMR 392) a reference wasmade on the extent to which combinationsof non-distinctive words, in this case BIO-and – MILD, were registrable (this issue isone which also underpinned BABY-DRY).Further questions arising from theregistrability of common terms such asPOST-KANTOOR (Post Office) have beenreferred in Koninklijke KPN Nederland NV,formerly known as Koninklijke PTTNederland NV v The Benelux Trade MarksOffice (ECJ, Advocate General’s Opinion,February 27 2002). Benelux references arecomplicated by the fact that the Beneluxregime is a bilingual one, in which a wordmay be distinctive to some but descriptiveto others.

In the pipeline

Shield Mark v Kist (trading as Memex), a Dutch reference reported at first instanceat [2000] ETMR 147This is the first ECJ reference on theregistrability of sounds as trade marks.Sounds can distinguish one business’sgoods or services over those of a

competitor, but are they capable of being‘graphically represented’? Some countries,including the UK, accept musical notationas a graphical representation of the mark.The Swedish Registry has said that taperecordings are acceptable. The Beneluxposition is that musical notation is agraphical representation of itself and not ofthe sound it symbolises. Clearly, while thereare philosophical or legal problems with allpossible answers to the question, it is desirable that one answer – howeverarbitrary – should apply equally in all EU member states if the concept of theapproximation of trade marks is to becomea reality.

Rado Uhren, Linde and WinwardThe German Bundsgerichtshof referredthese three cases to the ECJ on November23 2000, which means that they shouldoccupy a good deal of the Court’s attentionin the coming year. All three address three-dimensional trade marks: the heart of thematter is whether 3D marks demand ahigher degree of distinctive character thanother types of mark. Although there is anoft-repeated mantra that the level ofdistinctiveness is the same for all species ofmarks, anyone who has read the BABY-DRYcase and then gone on to read the series ofcases on the Henkel and Procter & Gamble3D detergent tablets (see for example[2002] ETMR 174) will be tempted to saythat there is all the world of differencebetween them.

Arsenal Football Club v Reed [2001]ETMR 860 and 917As in Hölterhoff (above), the questionrelates to whether an infringing use mustbe a ‘trade mark use’, though the context issomewhat different. The defendantmaintained that his use of the Arsenalfootball club’s trade marks on non-officialmerchandise was to indicate support forthe team, as a badge of loyalty, rather thanto indicate the goods’ source.

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Libertel v Benelux-Merkenbureau(referred on February 23 2001)A series of questions on the correctapproach to be taken to single-colourmarks now awaits the Court’sconsideration. Although in theory all agreethat single colours are registrable, questionsremain unanswered in relation to the actualuse made of the colour in question,whether it must be arbitrary in relation tothe goods or services for which registrationis sought and how issues relating tosecondary meaning of specific coloursshould be tackled.

Two CFI appeals, one lost cause:

Deutsche Krankenversicherung AG (DKV)v OHIMNo-one was surprised when the ECJ’s Courtof First Instance dismissed DKV’sapplication to register COMPANYLINE for

insurance and financial affairs services([2000] ETMR 271). However, in the light ofthe more permissive approach takentowards compound word marks in thewake of the BABY-DRY case, it is nowbecoming increasingly difficult to think of areason why a word like COMPANYLINEshould not be registrable for financial, orindeed almost any other, services.

Zapf Creation AG v OHIM[2002] ETMR 128The Court of First Instance annulled OHIM’srefusal to allow the registration of NEWBORN BABY for dolls. It would however bea wise person who could state with claritywhat the court actually said in this case,since much of the judgment is expressed interms of fuliginous obscurity and some of itreads as though it was written by amachine. OHIM is appealing against this

MARQUES is recognised by the Office for the Harmonisation of

the Internal Market (OHIM) as an accredited Non-Governmental

Organisation (NGO) and enjoys observer status within the

World Intellectual Property Organisation (WIPO) structure.

The views and opinions of MARQUES are regularly sought by

and offered to these and other organisations. Make those

offerings your views and opinions.

The MARQUES Newsletter is an ideal vehicle for

communicating your ideas, your opinions or your vision of

where trade mark law is or should be heading. It will be seen

and read by in-house counsel, trade mark practitioners, IP

lawyers, academics, government officials and other NGOs.

The image and credibility of MARQUES and its representatives

may be enhanced or diminished by the quality of discussion and

debate within the Newsletter pages. Not everyone has the time

available to participate actively in committees or working

groups. Annual general meetings are neither the only nor

perhaps the best way for members to ensure that committee

and working group members have the same priorities and ends

in mind as the general membership.

Are they pursuing the wrong goals? or the right goals but nothard enough?

Do you have the ammunition or evidence which could helpthem do better?

Do you want to win friends and influence MARQUES, IP officials or governments?

Do you simply want to say “Thank you, you’re doing a great job”?

If your answer to any of these is ‘Yes’, then one way is to putyour views and ideas in writing and submit them to the editorfor inclusion the next issue. You may be a trade mark ownerwishing to influence IP Offices or governments, or you may be agovernment official or practitioner wishing to influence trademark owners. Size and format or style is not important. it maybe a fully referenced article or simply a letter to the editor. What is important is the participation of you, the members.

Please send any contribution to:The Editor, MARQUES Newsletter, 840 Melton Road,Thurmaston, Leicester LE4 8BN, United Kingdom.

decision, possibly for the joy of discoveringwhat it actually means.

Scandecor Development AB v ScandecorMarketing AB [2001] ETMR 800Sadly for all trade mark aficionados,particularly those who have ever wonderedabout the legal consequences of grantingbare exclusive licences, this ECJ referencewas withdrawn from the ECJ on 4 September 2001. It may be a long timebefore the right combination of suitablefacts and rich, principled litigants propels asimilar reference in the direction of the Court.

© Jeremy Phillips 2002. The author is an intellectual propertyconsultant with Slaughter and May andeditor of the European Trade Mark Reports

Call for Articles

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MARQUES Internet CommitteeNick Wood

Like a mid-ocean storm that whips up waves that from time to time pound on a distant shore, the

internet and in particular developments to the domain name system cannot be ignored by trade

mark professionals. Domain names might not bestow rights but as, e-commerce, e-mail and the

world wide web grow in importance, they need careful attention.

There's been a great deal going on sincethe start of this year. On the gTLD front,.coop, .museum and .aero came intobeing. As chartered gTLDs targeted atspecific groupings – respectively membersof the international co-operativemovement, museums' associations or theaviation industry – their impact has largelygone unnoticed. Maybe the realsignificance here is that gTLDs focussed onnarrow interest groups can be launchedwithout the self-serving processes andchanges of date that disfigured the arrivalof .info, .biz and to a lesser extent, .name.

As to ccTLD's, the ripples caused by .US'srush to market have yet to be felt. Thetimeline for the .US Sunrise slipped twice asoperator’s NeuStar hoped that furtherapplications would flood in – but wherefrom? Not many European businesses wereattracted and those that were found therequirement to have servers sited in the USan inconvenience at best, a barrier at worst.

Of more interest to MARQUES members isthe .EU. Still a distant line on the horizon,expect it to arrive in the late Summer nowthat the European Parliament has approvedappropriate measures for its establishment.MARQUES has been in touch with theCommission with suggestions on howmeasures to protect intellectual propertycan work avoiding the mistakes made bythe new gTLDs.

Meanwhile ICANN, born an orphan childwith insufficient means to either enforce oradminister the domain name systemeffectively, is facing an uncertain future. InFebruary, CEO Stuart Lynn circulated adiscussion paper that proposed a completerestructuring, narrowing down ICANN'smission, creating financial stability and anew structure that features nationalgovernments in addition to the USA at itsheart. MARQUES, largely through itsmembership of the Intellectual PropertyConstituency of ICANN, has been

Secretary General, Colin Grimes and Panos Malamis (Greece) share a joke duringdinner after the meeting of the Council held in Istanbul in March.

Isabel de Minvielle Devaux (UK) challenges fellow Council Member, Bruce Proctor(USA) to a bout of arm wrestling (the winner to receive a packet of cigarettes ora case of Coca Cola!)

participating in these discussions. A firstreaction to Lynn's paper was to welcome itwhilst indicating that he seemed to havewritten intellectual property interests out ofthe organisation despite hailing the UDRPas one of its major successes! Meantime, a new MARQUES Internet Committee isemerging from the chrysalis of the old sub-committee. Anyone interested inparticipating or with suggestions for areasof activity should contact me at the e-mailaddress below. Amongst the activities thatwe are considering are an annualworkshop or seminar, a study of Europeanregistries and how we disseminateinformation to MARQUES. Meantime weare looking at how we best inter-act withICANN and other matters such as theavailability of whois information and theharmonisation of the gTLD transfer process.

Contact nick.wood@cpaglobal.com if you wish to learn more

about the MARQUES Internet Committee or have suggestions on

issues the Committee should cover.

TURKISH DELIGHTS!

OHIM Trademarks GroupNotes of the OHIM Trademarks Group meeting in Alicante on 8 April 2002

Present for MARQUES: Jane Collins, Vice-President External Relations and Marius H. Knijff

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This was an extraordinary meeting as theEuropean Commission want to presentchanges of the European TrademarkRegulation - CTMR - before the Council ofMinisters in June. OHIM proposes anumber of reforms and improvements ofthe CTM in general. The proposals are of aquite logical nature as they remedydiscrepancies in articles of the Regulation.As a whole, it was felt by the NGO’s thatmost of the proposals were acceptable. The amendments were often of a detailednature and I am only highlighting thesignificant issues:

1. Division of CTM applications andregistrations (articles 44.a and 48.a)This proposal aims at a division of anapplication in particular in ex parte cases(refusals on absolute grounds) and interparte cases (oppositions). The proposal willenable the applicant, on payment of a fee,to split up the application (or a registration)in two parts, namely in a part to which theopposition is being raised and a part whichis not subject to opposition. The part whichis not subject to opposition could thenproceed to registration. This division couldresult in two separate registrations.

MARQUES supports this proposal.

2. Restitutio in integrumThe restitutio of article 87 should also beavailable for the time limit for claimingpriority.

MARQUES supports this.

3. “Further Treatment” A new article should be added permitting arequest for “further treatment”, when atime limit has been missed, in particulartime limits which have been set by theOffice during the procedure.

It would be available for all such time limitssubject to some exceptions, in particularthose which have a specific time limitindicated in the Regulation, e.g. filing date,term for filing opposition, payment of basicapplication fees etc.

The Office would permit an extra time of

one (or two) months, subject to paymentof a fee after the missed deadline. MARQUES is in favour.

4. Streamlining of interlocutoryrevisions which are limited to ex parte cases The proposal includes also inter partescases in order to avoid that the Boards ofAppeal have to deal with appeals insituations where the remedy is obvious.e.g. if documents, which have beensubmitted were not entered into the filewhere a time limit has actually beenobserved etc. MARQUES supports this.

5. Corrections of obviously erroneousdecisions and entries Corrections of obviously erroneousdecisions and entries correspond to thegenerally recognised principal ofadministrative law, viz. that anadministration must have the right tocorrect obvious errors.

Should there be a time limit? Some NGO’s,including MARQUES, feel that there shouldbe no time limit. However, the EuropeanCommission has indicated that they will notaccept an amendment if no time limit isindicated. The Office proposes a time limitof one year. Some NGO’s propose two orfive years.

6. Abolishment of authorisations MARQUES favours the abolishing ofPowers of Attorney, which is already a rulein some Community countries like Germanyand the UK.

7. Conversion ProcedureThe conversion procedure should bestreamlined, in particular between OHIMand the National offices. Some proposalswere made to do so. MARQUES agrees.

8. Filing via National Offices Less than 2% of the applications is filedthrough the National Offices. Sometimesthe Office fails to send the application

timely to OHIM, which may lead tounwanted consequences like loss of rights.OHIM proposes to extend the time limitfrom one to two months.

The Office also proposes that too latearrival should lead to a CTM applicationhaving the arrival date at OHIM as receiptdate, rather than “the application isdeemed not to have been filed”.MARQUES supports this.

9. Some minor issues:� Priority documents

The requirement to submit prioritydocuments in an Office languageshould be abolished. It should be sufficient to file in thelanguage of a member state.MARQUES supports this.

� Acceleration and facilitating offixing of costs in oppositionsThe decision should not only providefor allocation of costs (costs to be paidby full or partly) but also for fixing thecosts. This will accelerate theopposition procedure substantially. MARQUES agrees.

� Inspection of filesOHIM proposes to make theapplications also available to the publicbefore publication. MARQUES agrees.However, it should be possible to keepconfidential any evidence filed insupport of secondary meaning bystamping it “Confidential”.

� BulletinThere is an overwhelming majority forabolishing the paper version of theJournal according to enquiries made byOHIM in the circles of trade. OHIMproposes a dual system, namely an on-line system and a CD-rom in pdf version.

Copies of OHIM’s detailed proposals forreform and improvement of the CTMsystem are available on request fromthe MARQUES Newsletter editor (e-mail: robin_tyler@bat.com) or seenon the MARQUES web-site under“recent developments”.

Marques presents owners’ viewsat meeting with EU commission

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Members are encouraged to providefeedback on their views onconversions. Please use the MARQUESwebsite http://www.marques.org/ We will compile and pass on to theCommission all comments receivednot only on these types of conversionbut also your views on ordinaryconversions. Positive comments arevery valuable as examples of best practice.

1. Conversion of CTMsDrawing attention to the currentuncertainty about the way in whichnational Offices will handle conversion of a CTM with seniority claims when one ofthese is a national registration that mighthave lapsed in the meantime, MARQUESencouraged the Commission to attempt tomake the Offices aware of the need to beable to deal satisfactorily with suchrequests.

2. CTM SearchesMARQUES reiterated the view that searchesof CTM applications should be abolished.Such searches are costly and superfluoussince brand owners will have conductedthe necessary availability searches beforedeciding on the mark and before anyproduction of packaging, etc. The largemajority of owners are not in a position towait for the result of national searches.

In addition, MARQUES does not regard thesearch result as an efficient means ofalerting other owners to the existence ofrights since the applicant would, in any

case, prefer to await an opposition and notwithdraw the application. In any case, thequality range of searches is too diverse, notto say incoherent, and the fact thatimportant countries are missing seriouslychallenges the credibility of the searchprocedures. MARQUES remains committedto the principle that searching prior tochoice of brand – combined with watching– is the strongly preferred way forward forowners.

3. EU EnlargementAbolition of searches is becomingincreasingly urgent in anticipation of EUenlargement in 2004 which wouldinevitably involve a further 8-10 searchresults to be circulated to applicants.

Most of the candidate countries haveimplemented legislation that is incompliance with the EU-legislation. The bigproblem in many countries is the actualenforcement of IPR, which therefore will bea major focus point in the next few years.

The consequences of the enlargement forthe CTM system have been laid down forquite some time and should, by now, befamiliar to all brand owners. TheCommission confirmed that the sameprinciples would apply to the registration ofcommunity designs.

Members seeking further informationshould visit the OHIM/OAMI Web site:http://oami.eu.int/

4. EU Ratification of the ProtocolMARQUES reiterated its strong support for

the Commission's proposal for ratificationof the Protocol.

It would clearly be to the brand owners'advantage if the EU became a member tothe Protocol as soon as possible. Now thatthe last EU Member State has ratified(October 2000), no further obstacles remain.

Members will be aware that the issue of"official languages", which has beenholding up the ratification for many years,seems to be resurrected every time asimplification of registration of IP is beingpromoted in the EU. The CommunityPatent has now stumbled on the sameblock. Together with other IP owners’organisations, MARQUES is advocating thatpublication of International Registrationswith the EU designation in only English andFrench is sufficient. We strongly believe thatthere is no need for further publication byOHIM in the other official languages sincethis would only add to the costs to becovered by the owners.

MARQUES also underlined the importanceof the opting-back clause and spokestrongly in favour of keeping the clauseunchanged. Without the clause, we believe, applicants would be obliged toeither convert the designation of EU tonational applications or, if the CTMdesignation should run into problems, to make a subsequent designation of the countries in question in theInternational Registration.

The former would be far too expensive asan option. The latter would mean loss ofthe original filing date.

A strong team (Knud Wallberg and Marius Knijff together with Chairman of

MARQUES Tove Graulund), met with the EU Commission, DG Markt on 6th March,

2002 to ensure the interests of trade mark owners were strongly represented and

taken fully into account in the development of future policies. Officials were left

with a clear understanding of the owners’ perspective on the following range of

issues raised by MARQUES:

9

With the opting-back clause unchanged,the applicant could convert to designationsand thus remain in the InternationalRegistration system without loss of theapplication date. Without this the realitywould be that many smaller and medium-sized companies would choose todesignate individual countries and not totake their chances with a designation of theEU. In the end the Community Trade Markwould be the loser.

5. Action Plan to combatcounterfeiting and piracy

The Commission is preparing a proposal fora Directive on the enforcement of IP rights.The content will be as previously describedin the (so-called) Action Plan and will seekto harmonise both the civil and the criminalsanctions for IP infringements See:http://europa.eu.int/comm/internal_market/en/indprop/piracy/counterf.htm

6. ExhaustionMuch to the surprise of the Commission(and to most of us!), an attempt willapparently be made to put exhaustion onthe agenda again. The Commission hasbeen charged to produce a new study onthe subject, but they made it clear that they had no intention of proposing anychanges to the present legislation.

It remains unclear what the result of theexercise will be.

MARQUES takes the view that the NeraReport ended the discussion, and that theCommission has far more important andurgent issues to deal with.

7. Unfair CompetitionFinally, MARQUES showed a few examplesof marketplace reality to draw attention toand illustrate the lack of a harmonised EUunfair competition law. Over the past years,industry has been faced with an apparentincrease in look-alike products. The factthat many countries do not have unfaircompetition law is becoming a problem.

Unfortunately, the Commission confirmedthat there are no current plans to startstudies on this topic.

Members are encouraged to make anycomment, support or suggest contraryviews and opinions to those expressed atthis meeting on behalf of owners.Practical examples and illustrations ofpoints made are especially useful andappreciated. If MARQUES is to fulfil itsmission to act as the voice of brandowners in Europe, we rely uponfeedback from those whom we seek torepresent.

Netherlands:MARQUES’Round Table Held at the premises of Sara Lee/DE, Utrecht, The Netherlands on 28th March, 2002.

This was the first MARQUES TrademarkOwners Forum in The Netherlands. It was attended by some twenty persons,representing large Dutch/internationalbrand owners, under the chairmanshipof Paul Steinhauser of SteinhauserHoogenraad, Council member ofMARQUES. Other council members,Anouk von Meyenfeldt, representingTommy Hilfiger/Pepe Jeans, Ingrid deGroot, MARQUES' Vice President andrepresenting Perfetti Van Melle andMarius Knijff of Knijff & Partners were present.

Ingrid de Groot explained the particularactivities of MARQUES as the voice ofEuropean brand owners. Other topicsdiscussed included: outsourcing or inhouse management of the trademarkportfolio; measures againstcounterfeiting and financial aspects ofthe trademark portfolio, in particularbudgeting, central or decentralisedtrademark ownership and intercompanylicensing and intercompany royalty payments.

It was a successful meeting and theDutch council members of MARQUESintend to organise more meetings in the future.

Marius H. Knijff, Knijff & Partners B.V.

Community Industrial Designs:Update

There is now a second modified text of the Implementing Rules

belonging to the European Design Regulation which will be voted on

at the end of May. As it stands now the Office thinks that they can

accept applications to be filed as from 1 January 2003 and the

system would start to run as from 1 April 2003.

10

The Copyright, etc. and Trade Marks(Offences and Enforcement) Bill introducedto the UK Parliament in July 2001 hascompleted its legislative stages in the Houseof Commons and will now pass to theHouse of Lords where it is expected tobecome law either before the summerrecess or in the autumn. Clause 7 providesfor the provisions of the Bill to be broughtinto force by a commencement order. It isenvisaged that this will occur about 12 weeks after the Bill receives Royal Assentto allow the Government time todisseminate information about the effectsof the Bill, particularly amongst publicsector enforcers

The Bill amends the criminal provisions inthe law relating to copyright, rights inperformances, fraudulent reception ofconditional access transmissions by use ofunauthorised decoders and trade marks.The Bill brings about some rationalisationof IP law by removing some of thedifferences between the criminal sanctionsavailable for copyright or for trade markinfringements. The three areas rationalisedby the Bill are maximum penalties for

certain offences in intellectual property law,police search and seizure powers relating tooffences and court orders on forfeiture ofillegal material that may have been seizedduring investigation of offences. The Billdoes not make any changes to the scope ofcriminal offences in intellectual propertylaw so that the type of behaviour that cangive rise to an offence remains the same.

The maximum penalty for conviction onindictment for offences referred to in PartsI, II and VII of the Copyright, Designs andPatents Act 1988 is increased to anunlimited fine and/or up to 10 years inprison to reflect the seriousness of thesecrimes and to bring the penalties into linewith the existing ones for similar trademarks offences. In addition, and for thesame reason of consistency, this clause alsoadds the option of six months in prison tothe penalty for summary conviction insection 297A(2).

Clauses 2 & 6 extend existing provisionswhich allow the police to obtain searchwarrants and Powers of seizure of evidencethat an offence has been or is about to becommitted to all the offences in section

The copyright etc. and Trade Marks(Offences and Enforcement) Bill

107(1) and (2) of the Copyright, Designsand Patents Act 1988, including those onlytriable in the magistrates' courts and for theoffences in section 92 of the Trade MarksAct 1994 relating to counterfeit goods andarticles for making them.

Forfeiture provisions in trade marks lawapply where items have come into thepossession of a person in connection withthe investigation or prosecution of one ofthe offences, or a related offence under theTrade Descriptions Act 1968, or any offenceinvolving dishonesty or deception. Theyallow a court to order forfeiture ofinfringing goods both where a person hasbeen prosecuted for an offence and wherethere is no prosecution, although in bothcases the court must be satisfied that anoffence has been committed in relation tothe goods. Clauses 3, 4 & 5 of the Billreproduce these provisions in theCopyright, Designs and Patents Act 1988specifically to apply in respect of goodsinfringing copyright, ie infringing copies,and articles specifically designed or adaptedfor making such copies.

1. Legal Research Officer, British American Tobacco plc.

This Bill is expected to become law before the end of the year. Robin Tyler reviews its provisions.

Letter from WIPODear Chairman Grauland,

Thank you for your letter of 4 March, 2002 strongly supporting the work of the Standing Committee on the Law of Trademarks,Industrial Designs and Geographical Indications (SCT) in the field of trademark harmonisation.

MARQUES’ dedication and involvement in WIPO’s work on trademark matters is always very much appreciated. It shows that yourOrganisation is a the forefront of international developments in the field of trademarks. Comments of your Organisation aretherefore always welcomed.

I can assure you that your suggestions concerning possible actions by WIPO regarding further harmonisation of formalities in thefield of marks and initiation of work on harmonisation of substantive trademark law will be duly considered when preparing theworking documents for the SCT.

I have particularly noted your proposals to approach trademark definition through the branding concept and your suggestion toalso consider the counterfeiting problem in the context of harmonisation.

Denis Croze, Head of Trademark Law Section

OHIM European Enlargement Ad Hoc Trade Marks Working Group

11

Wrestlersto fight inthe Houseof LordsThe World WrestlingFederation is appealing to theHouse of Lords against aFebruary decision of the UKCourt of Appeal upholding aprevious court order that theWorld Wide Fund for Nature(formerly the World WildlifeFund) was entitled to theexclusive use of the initials'WWF'.

In October 2001 the High Court ruledthat the federation breached a 1994agreement with the World Wildlife Fundby the use of its current logo and theURL 'www.wwf.com' The WorldWrestling Federation argues that thatagreement constitutes a restraint oftrade and is unenforceable.

The charity successfully argued that thefederation’s association with violenceand sleaze was damaging by“insalubrious connotation” the fund’sability to raise money for natureconservation. The federation wasordered to stop using the ‘wwf.com’domain name. However, a stay on thepunishment will remain in force pendingthe federation’s petition to the House ofLords for permission to review the Courtof Appeal’s decision.

MARQUES attended thissecond meeting with OHIMand the European Commissionregarding the enlargement ofthe European Community.

MARQUES was represented by Mrs. EvaSzigeti, MARQUES Council member andpartner of Danubia Budapest for thecandidate country Hungary and Mrs. OlgaSirakova, partner of Interius Sofia for thecandidate country Bulgaria and MariusKnijff, chairman of the MARQUES OHIMTrade Marks Group Committee.

Mr. Maurer of the European Commissioninformed the NGO's that the EC andcandidate countries are working hard onthe accession of ten of these countrieswhich could take place in early 2004.Negotiations regarding Intellectual PropertyRights (Chapter 5) have been finalised.These countries are: Latvia, Lithuania,Estonia, Poland, the Czech Republic, theSlovak Republic, Slovenia, Hungary, Maltaand Cyprus. Romania's and Bulgaria'saccession is scheduled to take place in2007/2008 whilst Turkey’s accession is stilldependent upon further politicaldevelopments within Turkey.

Major problems of the accession in respectof trade mark protection include:

A. LanguagesThe Accession Treaty provides for anaddition of ten new languages.OHIM regards this as a very heavyburden. It would stagnate theprocedures within OHIM. The NGO'sincluding MARQUES favour astreamlining of the procedure and inparticular a reduction in the numberof officially recognised languages.

Pressure is to be brought upon theEuropean Commission to reduce thenumber of languages in the TradeMark Regulation, in order tomaintain a workable Trade MarkSystem.

B. Trade Mark searchesThe NGO’s including MARQUES,urged the Commission to abolish themandatory trade mark searching bynational administrations and OHIM.Additional searching of accessingcountries will complicate theprocedure even more and couldmake it unworkable.

OHIM is in the process of setting upan on-line (identical) searchingfacility in cooperation with some ofthe acceding countries. The websitewould provide information regarding(very) recently filed applications insome five acceding countries.

C. Bad faith applicationsChapter 5 provides for oppositionsby owners of national trademarkapplications/registrations of accedingcountries against Community TradeMark applications, when nationalapplications have been filed within aperiod 6 months before theaccession. This specific provision isnot bilateral, so owners ofCommunity Trade Marks cannotoppose similar national applicationsin the accessing countries. The NGO’s, including MARQUES,feel that this provision could elicitbad faith applications in theacceding countries. The NGO'sincluding MARQUES are callingupon the Commission to urge theacceding countries to provide forworkable remedies against bad faith applications.

Marius H. KnijffKnijff & Partners B.V.

Meeting in Brussels on 10th April, 2002.

840 Melton Road, Thurmaston, Leicester LE4 8BN United Kingdom Tel: +44 116 264 0080 Fax: +44 116 264 0141 Email: info@marques.orgInternet Home Page: http://www.marques.org

MARQUES COUNCIL –2001/2002

President – Vacancy

Chairman – Tove Graulund (Denmark)

Vice-Chairman (Programming) –

Ingrid de Groot van Amelsvoort

(Netherlands)

Vice-Chairman (External Relations) –

Jane Collins (Switzerland)

Vice-Chairman (Marketing) –

Hanne Weywardt (Denmark)

Isabel de Minvielle Devaux (UK)

David Goldring (UK)

Edward J Handler (USA)

Kay-Uwe Jonas (Germany)

Marius Knijff (Netherlands)

Daniele Le Carval (France)

Inger Lundmark (Sweden)

Anouk von Meyenfeldt (Netherlands)

Raffaello Nemni (Italy)

Carles Prat (Spain)

Bruce N Proctor (USA)

Jette Sandel (Denmark)

Shane Smyth (Ireland)

Margaretha Stählberg (Sweden)

Paul Steinhauser (Netherlands)

Massimo Sterpi (Italy)

Eva Szigeti (Hungary)

Nunzia Varricchio (Belgium)

Secretary General – Colin Grimes (UK)

NOTE: Council may be composed of upto 40 members with not more than 6 from any individual European country,not more than 6 drawn from countriesoutside Europe and not more than 14 Special Members.

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