Community Trade Mark Regulation Research Articles

Is a legally distinct subsidiary an “establishment” under Article 97(1) of the Community Trade Mark Regulation?

Is a legally distinct subsidiary an “establishment” under Article 97(1) of the Community Trade Mark Regulation?

Community Trade Mark Regulation: A Commentary by Gordian N. Hasselblatt (ed)

<i>Community Trade Mark Regulation: A Commentary</i> by Gordian N. Hasselblatt (ed)

Use of a Community trade mark in only one Member State does not maintain the right

Community Trade Mark Regulation, Art. 15 (1) The use of a Community trade mark (CTM) in a single Member State is as a rule not sufficient to maintain the right. Such use maintains a CTM only under exceptional circumstances, eg if the market for the goods or services in question is restricted to the territory of a single Member State. Intellectual Property Enterprise Court (IPEC), England and Wales, decision of 29.6.2015 – [2015] EWHC 1773 (IPEC) – Sofa Workshop The Sofa Workshop Ltd sought to prevent Sofaworks Ltd from using the name “Sofaworks”, claiming inter alia infringement of two CTMs consisting of the word “Sofa Workshop”. It was not disputed that the trade marks had been extensively used in the United Kingdom. Sofaworks held both marks to be descriptive and, more significantly, argued that use in the UK alone did not constitute genuine use of the CTMs. The IPEC upheld the action on the grounds of passing-off. One of the decision's many obiter dicta deserves consideration. The court indeed found that the trade marks had not been put to genuine use. It addressed in detail the Court of Justice of the European Union (CJEU) ONEL decision (Leno Merken, C-149/11, ECLI:EU:C:2012:816). In that decision, the trade mark in question had only been used in the Netherlands. The CJEU held that territorial scope is only one of the factors when determining genuine use, a factor which must be included in an overall analysis of the relevant circumstances. It stated that, with a CTM, the overall assessment must take into account that the territory of protection of a CTM is larger than that of a national trade mark. The CJEU referred to Art. 15 (1) of Community Trade Mark Regulation 207/2009 which requires “use in the Community”. From this wording (“Community”), however, the CJEU concluded that national borders per se play no role in determining the size of the territory of use necessary for genuine use (para 44) and that accordingly, if eg the market is confined to the territory of one Member State, the use in only that Member State could be sufficient (para 50).

A Critical Evaluation of Whether the Present Currently Pending Reforms to the 'Trade Marks Directive' and 'Community Trade Mark Regulation' Will Do Little in Improving the Position of the 'Difficulties' Embedded in the Law of Registered Trademark Infringement in the EU

It is no doubt that the law on ‘Trademark infringement’ in the European Union is not only clumsy – thereby making issues surrounding it incoherent; it is also not in-tune with time. The European Commission perceived this and it sure explains the instigation of the ‘move’ to recast the Directive on Trademark (hereinafter referred to as TMD) and revise the Regulation (hereinafter referred to as CTMR). The problem is: the pending collective reforms will do little or almost nothing in clarifying the difficulties ‘trademark infringement’ is clustered with. This paper traces some of the ‘difficulties’ the pending reform should have addressed and clarify once and for all; so as to ‘save’ the ECJ of the various criticisms it receives on its ruling on modern issues. Also, to relieve the CJEU of the role of de facto legislator at the cutting edge of trade mark infringement cases, by incorporating decisions of the courts and views of writers on the alarming issues. However, it seems the pending reforms will not do this. While agreeing that the pending reform will do ‘little’ to alleviate the difficulties; there are still other aspects that need improvements.

Geographical Indications and Their Relationship with Trade Marks in EU Law

Geographical indications (GIs) are, just like trade marks, signs used for the purpose of distinguishing goods. Unlike trade marks, GIs do not identify the commercial origin of a product from a particular undertaking, but its geographical origin from a specific place or region and, connected therewith, in most cases a given quality or other characteristic of the product. In contrast to trade marks, GIs are not individual rights but indications that belong to all local producers of the relevant region. The right to use a GI is a right of all local producers which, in principle, cannot be withdrawn. Exercising this right is, however, subject to the condition of fair competition. The use of a GI by local producers must be fair. With regard to conflicts between GIs and trade marks, Union law guarantees the right to use a GI in the Trade Mark Directive (TMD) and the Community Trade Mark Regulation (CTMR). Article 6 TMD and Art. 12 CTMR provide for a limitation of trade mark protection in favour of use of a GI. According to these provisions the rights conferred by trade marks do not entitle their proprietors to prohibit third parties from using GIs provided the use is “in accordance with honest practices in industrial or commercial matters”. These general principles governing the function and use of GIs in competition apply to the EU system for a sui generis protection of GIs in a modified manner. This article outlines the basic features of this sui generis system for GI protection and its relationship to trade mark protection.

Keywords, case law and the Court of Justice: the need for legislative intervention in modernising European trade mark law

Recent preliminary references to the CJEU on online keyword advertising and registered trade mark infringement have exposed the challenges facing EU registered trade mark law in its response to new technologies. These cases and the challenges they pose provide a timely prism through which to examine the European trade mark law-making process and the role of the CJEU within that process. This article will employ an analysis of the way in which the CJEU has developed certain key new aspects of the law on ‘infringing use’ to explore concerns over the CJEU's role and approach. It will be argued that, driven by policy considerations, the CJEU has acted creatively to develop the law of infringement in ways that cannot be sustained by the TMD and CTMR and which are likely to cause increasing uncertainties going forward. With the European Commission currently considering reform of Trade Marks Directive 2008/95/EC and Community Trade Mark Regulation 207/2009/EC, this paper will argue that there is a need for more comprehensive and forward-looking legislative intervention than has yet been proposed and that such intervention will be essential to restoring balance in the European trade mark law-making process.

Out-of-time requests and likelihood of confusion between marks containing foreign names

The General Court held that requests under Articles 54(2) (acquiescence) and 57(2) and (3) (proof of genuine use) of the Community Trade Mark Regulation (CTMR), made for the first time before the court and the Board of Appeal, were inadmissible, as out of time. Assessing the likelihood of confusion between an earlier national mark and a Community trade mark, the court provided useful guidance on how to assess visual, phonetic and conceptual differences, with particular regard to the relevant public's perception of names of foreign origin.

Harmonization of intellectual property law in Europe: The ECJ trade mark case law 2008–2012

ECJ trade mark case law has been very rich in the past five years that are covered in this survey. While certain fundamental issues, such as the general concept of distinctiveness and descriptive character of marks as well as the assessment of likelihood of confusion were clarified already in the past, more recent decisions have elaborated on more sophisticated issues, such as the impact of trade mark functions on the scope of protection, which became relevant in particular in the context of marks being used in comparative advertisement as well as in keyword advertising. Other topics addressed in ECJ case law were, inter alia, exclusion from protection of product shapes conferring substantial value on the goods, as well as application in bad faith, infringement by goods entering the EU on transit, and the requirements for genuine use of a mark in the Community. The latter topic also figured strongly in political debates accompanying the current preparations for a major legislative overhaul of the European trade mark system. Commission proposals for amendment of the Community Trade Mark Regulation and the Trade Mark Directive were published at the end of March 2013 and will likely trigger more debates before the reform projects are ultimately concluded.

The Study on the Functioning of the European Trade Mark System

As an element in the comprehensive evaluation of European trade mark law currently undertaken by the European Commission, the Max Planck Institute was given the task to carry out a Study on the Overall Functioning of the European Trade Mark System. This article presents a summary report on the contents and findings of the Study. Following a brief introduction (Part A), Part B refers to the programmatic objectives and principles of the European trade mark system. Parts C and D resume the analyses and proposals regarding topical issues of the substantive and procedural law, including the politically contentious issue of what constitutes “genuine use” of a Community Trade Mark. Parts E and F concern the functions currently performed by the Office for Harmonization in the Internal market (OHIM) and their possible improvement as well as the enhancement of coherence and collaboration between OHIM and the national offices; finally, in Part G, proposals for further harmonization are submitted. As a follow-up contribution to the Study the Max Planck Institute has produced synopses of the Trade Mark Directive (TMD) and the Community Trade Mark Regulation (CTMR), showing in which way the current texts would have to be amended if the proposals were accepted. Those amendments (hereinafter p-TMD and p-CTMR) are referenced throughout the text of this article. The Study and the synopses are available on the website of the Max Planck Institute.

The 3D shape dilemma: Refusal to register the three-dimensional shape of a loudspeaker

Janne Glæsel is an attorney and partner at Gorrissen Federspiel. She represented Bang & Olufsen A/S during the oral hearing at the General Court. Louise Stuhr is an attorney at Gorrissen Federspiel and assisted with the case. In this article the authors investigate the absolute ground for refusal stipulated in Article 7(1)(e)(iii) of the Community Trade Mark Regulation (CTMR). This provi-sion prevents the registration of signs consisting exclusively of the shape which gives substantial value to the goods. The General Court referred to this provision for purposes of denying registration of a three-dimensional shape of a loudspeaker as a Community Trade Mark. The authors thus wish to use the decision of the General Court in Case T-508/08 as a platform for further analysis of the scope and justification of Article 7(1)(e)(iii) CTMR since case law from the ECJ regarding Article 7(1)(e) CTMR is sparse and offers little assistance regarding the interpretation of the provision's third indent.

Appellations of origin defeat CTM application for BUD

The CFI considered the application of Article 8(4) of the Community Trade Mark Regulation where an earlier sign used in the course of a trade is a national appellation of origin. Reversing earlier decisions, the CFI held that Budvar's national appellations of origin for ‘bud’ were ‘sign[s] used in the course of trade of more than mere local significance’ which conferred on Budvar ‘the right to prohibit the use of’ the mark BUD by Anheuser-Busch.

Common sense prevails in trade mark transfer dispute

The High Court of Justice has interpreted Article 17(2) of the Community Trade Mark Regulation, which provides that ‘[a] transfer of the whole of the undertaking shall include the transfer of the Community trade mark’, in a commonsense manner that provides that the Community trade mark shall follow the transferred business. The Court gave great weight to facts and circumstances of the relevant transactions in giving effect to the transfer of the trade mark rights.

Trade mark damages for infringement in multiple jurisdictions: a German court rules

A recent decision of the Higher Regional Court of Hamburg in Germany provides useful guidance as to which law applies when trade mark infringements are committed in several EU member states; the Court found an effective and workable solution that enhances Community Trade Mark Regulation enforcement and strengthens its unitary character throughout the Community.

Lincoln Club of Orange County v. City of Irvine, 292 F. 3d 934 (9th Cir. 2002)

Election Law Journal: Rules, Politics, and PolicyVol. 1, No. 4 Recent Election Law DocumentsLincoln Club of Orange County v. City of Irvine, 292 F. 3d 934 (9th Cir. 2002)Published Online:6 Jul 2004https://doi.org/10.1089/153312902760403941AboutSectionsPDF/EPUB Permissions & CitationsPermissionsDownload CitationsTrack CitationsAdd to favorites Back To Publication ShareShare onFacebookTwitterLinked InRedditEmail FiguresReferencesRelatedDetailsCited bySorry, Not Sorry: An Empirical Review of Excessive Force Claims Focusing on Inconsistent Reasonableness Standards and Expressions of SympathySSRN Electronic Journal, Vol. 645Zombie LawsSSRN Electronic Journal, Vol. 182Privacy Class ActionsSSRN Electronic Journal, Vol. 995The Americans with Disabilities Act and the Constitution of the United States (Dissertation)SSRN Electronic JournalRemedies and Respect: Rethinking the Role of Federal Judicial ReliefSSRN Electronic Journal, Vol. 677Abandoning Presidential Administration: A Civic Governance Agenda To Promote Democratic Equality and Guard Against Creeping AuthoritarianismSSRN Electronic JournalBroadening PrecedentSSRN Electronic JournalGoing 'Clear'SSRN Electronic JournalTaking Liberty Decisions Away from 'Imitation Judges'SSRN Electronic JournalIn the Name of Diversity: Why Mandatory Diversity Statements Violate the First Amendment and Reduce Intellectual Diversity in AcademiaSSRN Electronic JournalUp in the Air: The Status & Future of Drone Regulation in HawaiiiSSRN Electronic JournalPrivacy, Property, and PublicitySSRN Electronic JournalRecent Developments in Patent Law (Spring 2017)SSRN Electronic Journal, Vol. 1314The Letter and the Spirit: A Unified Theory of OriginalismSSRN Electronic JournalPraying for an Answer: The Constitutional Inadequacies with Legislative Prayer in Bormuth v. 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City of Irvine, 292 F. 3d 934 (9th Cir. 2002).Election Law Journal: Rules, Politics, and Policy.Dec 2002.591-599.http://doi.org/10.1089/153312902760403941Published in Volume: 1 Issue 4: July 6, 2004PDF download

General Clauses in European Private Law and 'Stricter' National Standards: The Unfair Terms Directive

This article deals with the tension between general clauses in European Private Law and the minimum provision which allows member states to adopt or retain stricter national law. Several private law directives contain general clauses, such as the standard of 'good faith' in the Unfair Terms Directive, which introduce a very broadly defined common standard into the private law of the member States. Further examples are the 'likelihood of confusion' in the Trademark Directive and the Community Trademark Regulation, the 'conformity with the contract' under the Consumer Goods Directive or the definition of misleading advertising in the Directive on Misleading Advertising. The author argues that it is up to the Court of Justice to give a common, european interpretation of such general clauses and to provide the national courts with the respective guidance. The freedom of the member states to adopt or retain stricter national law, does not mean that the national courts are free to develop and apply a different standard from the Court of Justice — even if this leads to 'stricter' results. As a precedent in favour of this approach, the author cites the Nissan case of 1992, where the Court held that a certain slogan could not be qualified as misleading advertising under the directive, even though the referring national court proposed to treat it as such and advocated a stricter solution.

Forum shopping under community trade mark regulation

Taking a state to court for maritime disputes is not necessarily a straightforward issue for a given state under the United Nations Convention on the Law of the Sea (UNCLOS). This article examines state choices under Article 287 when a disagreement has escalated beyond negotiations. To identify and concretise these options, the focus is on an Arctic case, namely the Svalbard Treaty, signed in 1920. The dispute in question is Norway's unilateral decision to establish a 200 mile fishery protection management regime around the archipelago in 1976, and reserve the right to later transform this into a full Exclusive Economic Zone (EEZ). Many states have threatened to take Norway to an international court over this action, but as of yet, no state has taken the step to fulfil this threat. The article explores a future scenario wherein Norway chooses to change the management regime into an EEZ, in light of changing distributions of marine resources under a changing climate, including snow crab, mackerel and other fish species. Court choices are discussed relative to which – if any - may best be suited for this case – both from the perspective of Norway as well as its potential challenger(s).