Community Trade Mark Research Articles

Genuine use and the Court of Justice decision in Leno Merken v Hagelkruis (ONEL/OMEL): a question of fact for the national judge

The decision of the European Court of Justice in Leno Merken vs Hagelkruis (Case C-149/11 Leno Merken BV v Hagelkruis Beheer BV Judgement of 19 December 2012 (not yet published)) concerning the question of whether the use of a Community Trade Mark in the territory of one Member State is considered to be sufficient as ‘genuine use’ all over the European Union has been very controversial. It belongs to a tradition of jurisprudence dating from 1999. The judgment did not produce the expected result and raises new problems.

Switzerland still not part of Germany, even for trade mark purposes

The use of a trade mark in Switzerland may, by its very nature, be deemed to constitute use of that mark in Germany, under the terms of a bilateral treaty between Germany and Switzerland on the reciprocal recognition of use of intellectual property rights, but the effect of that treaty does not extend to such deemed use being use of an earlier mark in Germany under the opposition provisions of the autonomous system for the Community trade mark.

Community trade mark round-up 2013

Arnaud Folliard-Monguiral works in International Cooperation and Legal Affairs, Office of Harmonization for the Internal Market (OHIM), Alicante and David Rogers is a member of the Boards of Appeal, European Patent Office,Munich. The purpose of this article is to provide a quick overview of the most significant trade mark cases decided in 2013 by the Court of Justice of the European Union (CJEU) and the General Court (GC). The article has a practical bias and is aimed at readers who wish rapidly to find the key decisions of 2013. The cases discussed concern the application of Council Regulation 207/2009 of 26 February 2009 on the Community trade mark (which replaced Regulation 40/94 of 20 December 1993) (CTMR), Commission Regulation 2868/95 implementing the CTMR (CTMIR), and Directive 2008/95 of 22 October 2008 to approximate the laws of the Member States relating to trade marks (which replaced Directive 89/104) (‘the Trade Mark Directive’).

Trade Mark Use Explained: Insights from the General Court in “Bud”

The General Court has dismissed the actions brought Budějovický Budvar against the registration of the Community trade mark “Bud” for beer that was sought for by Anheuser-Busch. The main reason is the insignificant use in France and Austria of the appellation of origin “Bud”.

Repeated filings of a European Community trade mark

Karin Stumpf is a partner with Stumpf Patent Attorneys in Stuttgart, Germany, specializing in trade mark law. In order to overcome the strict use requirement for trade marks, trade mark owners whose marks become vulnerable to cancellation based on non-use upon expiration of the grace period have started to file identical applications for the same list of goods, thus obtaining another five-year period of non-use upon registration of the identical trade mark. Repeated filing for the same trade mark has become a widely discussed issue; however, the legal ramifications at the European level remain vague. Currently, the Community Trade Mark Directive does not cover the issue explicitly, thus putting competitors with an interest in the subject at a disadvantage. This article discusses current case law and relevant statutes on the issue of repeated trade marks filing at the European level, and attempts to highlight shortcomings that need to be remedied in order to discuss and adjudicate this issue with more clarity.

Hong Kong media group has no protectable goodwill in the UK; its Community trade mark is 'now' invalid

The Court of Appeal unanimously upheld the High Court's decision that, based on the evidence, the claimant (a Hong Kong-based media group) did not have a valid Community trade mark (CTM) or any goodwill in the UK that would give it the right to prevent BSkyB from using the name ‘NOW TV’ in relation to BSkyB's Internet protocol TV service. The appeal considered the requirement of distinctiveness for a CTM to be valid and whether a reputation established outside the UK could give rise to goodwill in the UK to support a claim for passing off.

Dilution revisited: a heavy handed approach by the CJEU?

The requirement for evidence of a change in the economic behaviour of consumers in establishing dilution in a trade mark opposition under Article 8(5) of Regulation 207/2009 on the Community trade mark.

Keeping it clean: invalidity of a registered Community design based on likelihood of confusion with earlier 3D Community trade mark

Keeping it clean: invalidity of a registered Community design based on likelihood of confusion with earlier 3D Community trade mark

Comparative Analysis of the Community Trademark Registration Activity of Germany, the United States and China

Trademarks are actives having a high value for any company. The fluctuations that can affect the trade marks in time have a determinant influence for the company's journey on the market. The policy related to creating and developing a trade mark is defined by the interest of the owner, judicial borders and political statute. The Single European Market involves a strong challenging environment where the companies compete to win the highest market shares by promoting strong trademarks. The harmonization instruments initiated by the European Commission and managed by the Office for Harmonization in the Internal Market are the ones owned by the Community Trademark and Community Design. At present, there are three trademarks protection systems coexisting on the European Union territory: the national, international and European Community Trade Mark systems. The present is meant to determine the economic interests expressed through the protection of the trade marks on the Single European Market by owners from Germany, United States of America and China. The period up for debate lays between 1996 the year when the European Community system became operational and 2012. The present study includes the analysis of the numeric evolution related to the request registrations submitted by each state, organized by classes of products, the rank of each class, the percent related to the first 10 classes in relation to the total registrations number, as well as comparisons between the analyzed variables.

Legal and organizational specificities of the European Union's office for harmonization in the internal market

The creation of the Community trademark (CTM) in 1993 was a true revolution in legal and economic terms. Given the supranational legal nature of this newly created trademark, it had to be followed by the establishment of a new agency of the European Union: the Office for Harmonization in the Internal Market (OHIM). Notwithstanding the fact that the EU has a remarkable network of various bodies, offices and other entities, the legal status of the newly created Office is not easily comparable with the majority of other agencies at the European level. The international success of the CTM, as well as the legal originality and the economic importance of the OHIM justify the study of its normative and organizational specificities. To this end, this paper will first focus on the legal basis and the practical consequences of Office's institutional position (Chapter 1 - OHIM as an autonomous institutional structure), before entering, in a second stage, in some legal aspects of its internal organization (Chapter 2 - Competencies of the OHIM's bodies).

Exploiting Trademark Records and Matched Data for Innovation Research.

The use of trademark data in innovation studies is in its infancy. Patent statistics and R&D expenses are still preferred as innovation indicators, while the results of the first empirical studies into trademarks are promising. However, since there is no one-to-one relationship between new trademarks and innovation, the use of raw trademark counts has important drawbacks, in particular in firm-level studies. Therefore, in this paper we exploit data recorded in trademark databases and matched data collected with the TIS survey to study the reference of novel Benelux and Community trademarks to product and service innovation. We also take the level of newness of the innovations into account. Overall we conclude that the value of trademark data for studying innovation increases when they are combined with data from other sources. This is particularly true when trademarks are used to study radical versus incremental innovation.

Complementarity of services covered by Community trade marks and the coexistence of conflicting marks

Complementarity of services covered by Community trade marks and the coexistence of conflicting marks

Case law of the Polish Community Trade Mark and Designs Court 2011-2012

Case law of the Polish Community Trade Mark and Designs Court 2011-2012

WIPO panel dismisses objection to Amazon's application for '.tunes' gTLD

In one of the first expert determinations on Legal Rights Objections (LROs) to applications for the Internet Corporation for Assigned Names and Numbers' (ICANN's) new generic top-level domains (gTLDs), WIPO dismissed the objection brought by DotTunes against Amazon's application for the gTLD ‘.tunes’. The panel found that the word ‘tunes’ was generic and descriptive and that DotTunes' registered Community trade mark (CTM) for ‘.TUNES’ was likely to have achieved registration primarily due to the figurative nature of the mark. Further, there was insufficient evidence of use for DotTunes to establish that consumers would recognise their CTM and therefore mistakenly believe Amazon's gTLD to be associated with it.

“F.C.I.”

1. Article 9(1) of Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark must be interpreted as meaning that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand.

EU General Court finds registered design invalid owing to an earlier Community trade mark

EU General Court finds registered design invalid owing to an earlier Community trade mark

Mediation and Community trade marks: new gimmick or real benefit?

Mediation and Community trade marks: new gimmick or real benefit?

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.

Useful guidance on figurative marks

The General Court has upheld a decision of the Office of Harmonisation for the Internal Market (OHIM) Board of Appeal that an application made by Kahru Sport Iberica to register a figurative Community trade mark (CTM) comprising the word sport preceded by an element said to resemble a letter ‘K’ did not infringe a K2 Sports Europe GmbH's prior registered word mark ‘K2 Sports’. The case provides useful guidance to trade mark proprietors looking to enforce trade marks that contain a figurative, stylized element intended to represent a letter of the alphabet, coupled with a less distinctive word.

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.