Carl-Richard Haarmann, partner of BOEHMERT & BOEHMERT
Jan Rether, partner of BOEHMERT & BOEHMERT
The very successful EU trademark system consisting of 28 national trademark systems and the Community Trademark System is about to undergo the biggest amendments since its creation. Learn more about the profound changes to come in section 1 of this article.
As everywhere in the world, the trademark law in the European Union is in a constant flow and adapts to the dynamics of the modern business world. Stay up to date with an overview of recent decisions of the General Court of the European Union (GC) and the European Court of Justice (ECJ) in section 1 of this article.
1. The EU Trademark Reform Package
The main pillars of the EU trademark system, the Trademark Directive (TMD) and the Community Trademark Regulation (CTMR), are about the be amended profoundly.
The EU trademark reform package has been proposed by the European Commission in 2013. After thorough discussions within the European Parliament and the European Council the three aforementioned legislative bodies have reached a political agreement on the reform package in April 2015. However, the final texts of the laws have not been communicated to the public yet and all actors in the European trademark field are curious about which of the initial proposals made it to the final text.
The discussed amendments aim to create a more easily accessible and efficient trademark system with “fast-track” applications and online portfolio management. Major improvements in particular for SMEs are realized by lower costs and the introduction of administrative invalidation procedures for all Member States. An improved predictability and legal certainty is achieved by the implementation of recent decisions of the ECJ.
The most important amendments discussed are the following:
? Registrability of modern trademark forms like sound marks, moving trademarks (multiple image marks) and holograms
? Clarity of lists of goods and services (“means what it says”- approach)
? Trademark functions in cases of double identity (advertisement function, the investment function, the image function and the quality function)
? Counterfeit goods in transit
? Harmonization of administrative proceedings (mandatory administrative cancellation proceedings)
? Reduction of fees and single class filings
All actors in the field of European trademark law are very curious about the final wording of the amendments and stand ready to adapt their counseling once the changes come into force.
2. Overview of Recent Case Law
The non-exhaustive overview provided below summarizes recent important and interesting decisions of GC and ECJ:
(1) Genuine Use of Registered Trademarks
ECJ, Judgment of July 17, 2014, C-141/13 - WALZERTRAUM
The CTM was registered for “pastry and confectionary, chocolate goods”. The owner proved genuine use for “handmade pralines”. The ECJ ruled that it is not sufficient to prove use for a special good (here: “handmade pralines”) when the CTM is registered for a general term (“chocolate goods”).
In view of the rather str ict jurisdiction of the ECJ, owners of trademarks which cover general terms should consider the restriction of the trademark to the used special goods if the trademark is subject to an invalidation proceeding.
(2) Border Seizures
ECJ, Judgment of February 6, 2014, C-98/13 - BLOMQVIST/ ROLEX
Mr. Blomqvist, a private person from Denmark, ordered a fake Rolex-watch from a Chinese online webshop. The watch was shipped to Denmark and seized at the Danish border. Mr. Blomquist did not act in the course of trade and, therefore, did not commit a trademark infringement. The question was, however, if the seizure (and the subsequent destruction) of the watch was legitimate, because the seller committed a trademark infringement in Denmark.
The ECJ confirmed a trademark infringement of the seller. The ECJ ruled that there can be an infringement if it is proved that the good was intended to be circulated in the EU. This may be proven by the fact that the good is sold to an EU-citizen or offered or advertised to an EU-citizen.
This decision clearly strengthens the position of rights holders in border seizure proceedings, which are applicable also in cases in which the recipient of infringing goods does not act “in the course of trade” and, therefore, does not commit a trademark infringement itself.
(3) Absolute Grounds for Refusal of 3D-marks (shape of goods)
ECJ, Judgment of September 18, 2014, C-205/13 - TRIPP TRAPP
According to Art.3 (1) (3) TMD and Art. 7 (1) (e) CTMR trademarks consisting exclusively of a) the shape which results from the nature of the goods, b) the shape of goods which is necessary to obtain a technical result and/or c) the shape which gives substantial value to the goods may not be registered. The absolute grounds for refusal may not be overcome by proving that the trademark has acquired distinctiveness through intensive use on the market.
In 2011 the GC already ruled in its Judgment of October 6, 2011, T-508/08 - LOUDSPEAKER that the shape of a loudspeaker (see right side) was not eligible for registration since it consisted exclusively of a shape which gives substantial value to the goods (the applicant itself emphasized the particular design of its loudspeaker in the advertising), notwithstanding the fact that tech-nical features of a loud speaker significantly add to its value as well.
In a similar interpretation of the above mentioned absolute grounds for refusal, the ECJ confirmed this strict approach. Subject to the proceeding was the shape of a children’s seat (see right side). It was asserted that the (unique) shape of the seat conveyed substantial value to it. It was further asserted that the seat had further features relating to security, comfort and quality. Therefore, it was not the design alone which gave substantial value to the good. However, the ECJ ruled that the absolute ground for refusal on the basis of the finding that the shape gives substantial value to the good is applicable even in cases in which this is not the only and exclusive aspect which gives value to the good.
The strict approach of the GC and ECJ makes is very difficult to register 3D-marks of particularly designed goods. In fact, the precondition of a special design in order to overcome the threshold of distinctiveness is often going to haunt the applicant since it may be found that the design gives substantial value to the good. Owners of particularly designed goods will need to rely on the (only temporary) protection of a registered design.
(4) Design of Retail Store as A Trademark
ECJ, Judgment of July 10, 2014, C-421/13 - APPLE STORE
ECJ confirmed that the graphical representation of the layout of a retail store may be registered for “retail services” if (i) the layout does not constitute an integral part of the vending of the goods, (ii) the layout is distinctive for the services concerned and (iii) there are no further absolute grounds for refusal.
ECJ confirmed that the graphical representation of the layout of a retail store may serve as a source identifier. According to constant case law, it is distinctive if it sets itself apart from commonly used layouts of retail stores in the relevant sector (same principles as for 3D-marks consisting of the shape of a good).
(5) Revocation for Becoming A Generic Term
ECJ, Judgment of March 6, 2014, C-409/12 - KORNSPITZ
The trademark KORNSPITZ is registered for “ready-made baking mixtures for bread rolls; bread rolls”. The owner produces “readymade baking mixtures for bread rolls” and sells it to bakeries under the trademark KORNSPITZ. The bakeries produce the “bread rolls” and sell them to end consumers under the designation KORNSPITZ without, however, indicating that KORNSPITZ is a registered trademark. While the bakeries and competitors knew that KORNSPITZ is a trademark is has become generic for “bread rolls” in the eye of the end consumer. According to ECJ, the trademark KORNSPITZ can be revoked on the ground of having become a generic term if only the end consumer perceived it as such, but other parts of the relevant public (here: bakeries) still perceive it as a trademark.
The decision is important for producers of pre-products who have to take care that their trademark is used in a trademark-wise way also by the distributors of the end-product. It is, therefore, recommendable for the producer of the pre-product to have trademark protection also for the end-product and to establish a license-system through which it has control on the use of the trademark for the end-product.
(6) Retail with Services
ECJ, Judgment of July 10, 2014, C-420/13 - NETTO
A German trademark was applied for “The bringing together, for the benefit of others, of a variety of services enabling customers conveniently to purchase those services, in relation to the following services”. The German Patent and Trademark Office refused this application on the ground that the applied for services where not sufficiently precise to distinguish them from other services.
ECJ, however, acknowledged the registrability of a trademark for “retail services with services” (visa- vis the common “retail services with goods”). ECJ acknowledged the commercial custom of undertakings to bring together different services to enable the customer to choose between them (“one-stop-shop”).
