EU Trade Mark Research Articles

Round-up of non-traditional EU trade mark decisions in 2021

Round-up of non-traditional EU trade mark decisions in 2021

Acquiescence or national rules of limitation? Polish Supreme Court addresses time limit for pursuing EUTM’s continuous infringement

Abstract The Polish Supreme Court has dispelled doubts about the national statute of limitation for non-pecuniary claims arising from continuous infringements. Even though the case involved Audi AG’s frontline EU trade mark (EUTM), the Supreme Court decided on a limitation period under national law, not the EUTM acquiescence.

Robustness Check: Evaluating and Strengthening Artistic Use Defences in EU Trademark Law

AbstractThe 2015 EU trademark law reform introduced a peculiar rule for reconciling trademark rights with freedom of artistic expression. According to Recital 21 EUTMR and Recital 27 TMD, artistic use can be deemed fair as long as the artist ensures compliance with “honest practices in industrial and commercial matters”. The honest practices proviso forges a link with the provisions on limitations of trademark rights. Article 14(1) EUTMR and Art. 14(1) TMD exempt from the control of trademark proprietors several types of use that can allow for artistic use. All these limitations, however, apply only when the use satisfies the test of honest practices. Confirming the obligation to comply with honest practices in industrial and commercial matters, the fairness rule of Recital 21 EUTMR and Recital 27 TMD turns out to be a double-edged sword. Instead of readily immunizing artistic use against trademark claims, it obliges artists to rely on limitations of trademark rights and furnish corresponding proof. Moreover, artists are expected to align their artistic activity with behavioural standards in the field of industry and commerce – a realm that is alien to the artistic community. Evidently, this approach endangers artistic autonomy. To avoid detrimental effects on artistic expression, it is advisable to strengthen the position of artists and develop a legal solution that resembles the measures taken in Art. 9(3)(f) EUTMR and Art. 10(3)(f) TMD with regard to freedom of commercial expression. Drawing inspiration from cultural sciences and case law on both sides of the Atlantic, the analysis explores avenues for achieving this goal.

Do the ‘conventional’ grounds for refusal also apply to EU certification marks? The Fifth Board of Appeal of EUIPO says yes

Abstract Boards of Appeal of EUIPO, Cases R 1410/2019-5, Manuka honey; R 2110/2019-5, Bio-Mineralwasser I and R 2112/2019-5, bio mineralwasser (fig.) II, 27 October 2021 The Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) held that EU certification mark applications are, like any other EU trade mark (EUTM) application, assessed on all general grounds of refusal laid down in Article 7(1) of the EU Trade Mark Regulation 2017/1001 (EUTMR). However, when assessing the general grounds of refusal, the specific function of certification must always be kept in mind. In three different cases, the Fifth Board of EUIPO decided that the certification marks Manuka honey and Bio-Mineralwasser (as word and figurative mark) are non-distinctive and descriptive.

The Procrustean fitting of trade marks under the requirements of clear and precise subject‐matter in the EU trade mark law—A case of position marks

AbstractIn the European Union Trademark law (EUTM), clear and precise subject‐matter of a trade mark is a prerequisite of proper filing and determines the conditions and scope of protection. Registration rules have evolved together with the meaning of this standard. The paper examines the legal status of position marks, which lacked their own registration specifics within initial EUTM, and thus were usually filed through other categories (figurative, colour, three‐dimensional), and contrasts this practice with the registration scheme of the new law. The analysis looks into the effects of Court of Justice's guidance when retroactively applied to trade marks registered upon earlier law. The exemplary case of a blade of grass inside a bottle is used to map the meaning of ‘unaligned’ description and/or indication vis‐à‐vis the prime relevance of (graphic) representation. The final part explores how identifying the subject‐matter of a position mark has an impact on assessing its distinctiveness, engaging within functionality objections and proving genuine use. The paper advocates for refraining from applying a fixed understanding of the requirement of clear and precise subject‐matter, especially with regard to old registrations, and, a fortiori, to flexible subject‐matter, such as position signs.

Geographical Collective Marks in the EU: Should They Be Redefined in the EU Trade Mark Law? Or Should They Be Incorporated into the GIs Regime?

Geographical Collective Marks in the EU: Should They Be Redefined in the EU Trade Mark Law? Or Should They Be Incorporated into the GIs Regime?

Legal aspects of green-branding

Trade mark law reflects economic and social trends. With the shift towards an economy based on sustainable development, the rise of environmental awareness among consumers, and the growing popularity of eco-marketing, marks containing indications such as „green”, „eco” or „bio” appear increasingly on the market. Such labels can inform and assist consumers in purchasing products that comply with the eco-requirements, strengthen the competitiveness of producers by promoting the least environmentally damaging products, offering higher quality products, and consequently encouraging both parties to act in an eco-friendly manner. Their registration is possible, but more difficult than for „classic trade marks” submitted for protection before the patent offices. This text is intended to provide an overview of the registration requirements of so-called „green trade marks”. The study mainly used the formal-dogmatic method. Based on an analysis of the European Union Intellectual Property Office practice and the judgments of the Court of Justice of the European Union, authors indicate the applicable interpretation of EU trade mark law. They analyze binding restrictions taking into account the interests of both individual market players and the public. This issue has not yet been commented on by the doctrine. Eco-labels and symbols, which can be used by entities meeting criteria that are defined by certification bodies are outside the scope of this review.

An Empirical Study of the Basis of Refusal of EU Trade Marks for 3D Marks

An Empirical Study of the Basis of Refusal of EU Trade Marks for 3D Marks

Psychology, Prototypicality and Basic Shapes: The ‘Shape Resulting from the Nature of the Goods’ Exclusion under EU Trade Mark Law

Psychology, Prototypicality and Basic Shapes: The ‘Shape Resulting from the Nature of the Goods’ Exclusion under EU Trade Mark Law

Miley Cyrus ‘came in like a wrecking ball’: the American pop star succeeds in registering her name as an EU trade mark

Abstract General Court, T–368/20, Smiley Miley, Inc. v European Union Intellectual Property Office (EUIPO), EU:T:2021:372 The article analyses the decision in Smiley Miley v EUIPO, in which the General Court held that the American singer-songwriter and actress Miley Cyrus was entitled to use her name as a trade mark. It considers the importance of this ruling in relation to the protection afforded to public figures of international recognition through trade marks in the EU.

The hiss produced by the opening of a drink can cannot be registered as EUTM

Abstract T-668/19, Ardagh Metal Beverage Holdings GmbH & Co KG v EUIPO, EU:T:2021:420 (not available in English), 7 July 2021 The General Court clarifies its approach to sound marks and Article 7(1)(b) of the EU Trade Mark Regulation 2017/1001 (EUTMR).

Protecting Trade Mark Proprietors Against Unfair Competition in EU Trade Mark Law

With aims of protecting trade mark proprietors against commercial practices of third parties that could hinder the use of the trade mark in informing and attracting customers, negatively influence its selling power, or exploit its attractive force, the EU legislator and the Court of Justice of the EU (CJEU) have broadened the protection afforded under trade mark law to cover such acts. At the same time, the CJEU has sought appropriate balance between the exclusive rights of trade mark proprietors and the interests of third parties, in allowing those practices that can be deemed acceptable as part of fair competition. The author argues that, in consequence, EU trade mark law is becoming ever more an EU law of unfair competition with regard to practices that involve the use of trade marks. The article represents an attempt to explain these developments by looking at specific policy choices and decisions of the CJEU on the protection of trade marks, alongside the wider context of EU law dealing with unfair competition. A key conclusion is that, in light of the lack of harmonisation of unfair competition law in the EU (at least pertaining to practices that affect businesses), the widening of the scope of protection under trade mark law helps to ensure the necessary degree of harmonisation while avoiding a parallel system of protection. When compared to pre-existing EU instruments of unfair competition law that prohibit certain uses of trade marks, this approach provides trade mark proprietors with a more efficient mechanism for enforcing their rights. In the course of elucidating this finding, the article gives the reader an understanding of how EU law addresses the protection of the commercial value of trade marks.

Revocation of an EUTM: the relevant time for determining the five-year period of non-use is the filing date of the counterclaim

Abstract Court of Justice of the European Union, Husqvarna AB v Lidl Digital International GmbH & Co. KG, C-607/19, 17 December 2020 ECLI:EU:C:2020:1044 In case of a counterclaim for revocation of an EU trade mark, the relevant date for assessing the five-year period of use is the date on which the counterclaim was filed.

Is Article 8(3) EUTMR applicable only to identical marks and identical goods? ‘No’, says the Court of Justice

Abstract Court of Justice of the European Union, MINERAL MAGIC/MAGIC MINERALS BY JEROME ALEXANDER et al, C-809/18 P, EU: C:2020:902, 11/11/2020 The Court of Justice provides clear guidance on the test to be applied under Article 8(3) of the EU Trade Mark Regulation 2017/1001 (‘EUTMR).

Seeing Red: representing a mark consisting of a colour combination

Abstract General Court, T-193/18, Andreas Stihl v EUIPO, EU:T:2021:163, 24 March 2021 In its first judgment since the decision of the Court of Justice of the European Union (‘CJEU’) in the Red Bull case (C-124/18 P), the General Court has clarified its approach to colour marks and Article 4 of the EU Trade Mark Regulation 2017/1001 (‘EUTMR’).

Jog on: General Court finds no likelihood of confusion between DECATHLON and ATHLON

Decathlon v EUIPO, Case T-349/19, EU: T:2020:488, General Court of the European Union, 15 October 2020 Although the goods in question were identical, the EU General Court has upheld a EUIPO Board of Appeal decision finding no likelihood of confusion between the figurative mark ATHLON and the earlier word mark DECATHLON. As the word element ‘athlon’, which was common to the marks at issue, was weak, the court found that the visual differences would dominate in the overall impression on the relevant public created by the signs at issue. Those differences would counteract the phonetic similarity and, for part of the public, the conceptual similarity resulting from the common word element ‘athlon’ and the concept to which it referred. In 2016, the Greek company Athlon Custom Sportswear PC (‘Athlon’) applied to register the figurative EU trade mark (EUTM) shown below for services in Class 25 corresponding to...

Preclusion due to tolerance: conditions for applying the acquiescence rule in trade mark law

EU trade mark law provides for a specific rule according to which, if the proprietor of a trade mark tolerates the use by a third party of a later trade mark, the possibility of invalidating the latter may be excluded. Indeed, pursuant to Article 9(1) of Directive 2015/24361 and Article 61(1) of Regulation 2017/10012, where the proprietor of an earlier trade mark has acquiesced, for a period of 5 successive years, in the use of a later registered mark, while being aware of such use, that proprietor shall no longer be entitled to apply for invalidation of that later mark in respect of the goods or services for which the later mark has been used, unless registration of the later mark was applied for in bad faith. According to Article 9(2) of Directive 2015/2436 and Article 61(2) of Regulation 2017/1001, this rule may also apply to...

Round-up of EU trade mark decisions in 2020

This article provides an analysis of the following EU trade mark decisions issued in 2020 (listed in reverse chronological order): These decisions are discussed below and are divided by area: I. Absolute grounds for refusal (Articles 4 EUTMD1 and 7 EUTMR2) Distinctiveness/descriptiveness Public policy/morality Deceptiveness and bad faith Conflict with protected designations of origin (PDOs) and protected geographical indications (PGIs); II. Relative grounds for refusal (Art 8 EUTMR) Trade marks with a reputation The analysis of each decision is presented in accordance with the following template: Distinctiveness/descriptiveness Teva: whether slogans are capable of indicating the commercial origin of goods Case T-697/19, Teva Pharmaceutical Industries Ltd v European Union Intellectual Property Office (EUIPO) The General Court held that a slogan can indicate the commercial origin of the goods or services in question, when that sign is not merely an ordinary advertising message, but possesses instead a certain degree of originality or resonance.

The Role of Trademarks on Online Retail Platforms: An EU Trademark Law Perspective

Abstract This article analyses the possible implications of the application of AI on online retail platforms for the role of EU trademarks and in particular their functions in this digital environment. It comes to the conclusion that the influence of AI on the importance of functions of origin and quality may differ from that on the accessory functions. Also, to a certain extent, this influence may vary depending on the parameters under which AI is set to function. Nevertheless, regardless of the parameters, it seems likely that the importance of the origin and quality functions may be diminished. In contrast, the significance of the accessory trademark functions may depend on the parameters under which AI is set to operate. If the goal of an AI implemented by a platform is to satisfy the needs of a consumer whose main preference is to acquire products with a specific trademark then ideally such an AI should seek to achieve this goal and, as a result, that mark may become a criterion for offering a product or service or acquiring it on behalf of the user. In this case, accessory functions may gain importance on online retail platforms, in turn encouraging trademark owners to invest more in the goodwill and attractiveness of their marks. However, if the parameters of the AI are such that it offers or makes purchases based on criteria that only serve the commercial interests of online retail platforms or their clients, and the trademarks preferred by consumers are not among such criteria, the importance of accessory functions may be weakened.

More flexibility for EU trade mark owners in choice of jurisdiction

Until now, the case law of the Court of Justice of the European Union (Court of Justice) concerning the determination of the competent jurisdiction in proceedings for infringement of a national trade mark has consistently rejected a choice of court based on the linking factor of the target location of the online message that constituted the offer to sell the goods bearing the protected trade mark. The AMS Neve and Others judgment holds that the territory in which the right to an EU trade mark has been infringed is the territory of the Member State in which the addressees either of advertisements posted on the internet or of targeted offers to sell are present, and that the right holder may bring an action for infringement before a court based in the territory of the country of such targeting. This judgment not only constitutes a breakthrough in the case law of the Court of Justice, but also represents an attempt to approximate the rules for determining the jurisdiction applicable to both national and EU trade marks.