Conclusions from previous meetings
Leiden, University of Leiden, 2017
1. The test for determining whether a sign has acquired distinctiveness through use
The CJEU was asked to determine whether, in order to establish distinctiveness acquired through use to the standard required by Art 3(3) of the TM Directive 2008 (Art 7(3) EUTMR), it is sufficient for the applicant to prove that the sign put forward for registration is recognised and associated with his goods (a familiarity test) or necessary for him to prove that a significant proportion of the relevant class of persons rely upon the sign (as opposed to any other trade marks which may also be present) as indicating the origin of the goods (a reliance test). We think that the Judgment in Case C-215/14 – relating to the shape of the Kit Kat four-finger chocolate bar – still leaves room for different courts to diverge in their approach to assessment of a claim for distinctiveness acquired through use.
2. The burden of proof in proceedings for revocation on the ground of non-use
It is a fundamental proposition of EU trade mark law that genuine commercial use is necessary (absent proper reasons for non-use) in order to retain the rights conferred by registration of a trade mark. However, there are disparities of practice and procedure between the Member States with regard to the operation of the burden of proof in proceedings for revocation of the registration of a trade mark on the ground of non-use.
In some Member States it is incumbent on the proprietor of the registration to prove, in response to a claim for revocation, that the trade mark has been used. In other Member States it is, in varying degrees, necessary for the person claiming revocation to prove that the trade mark has not been used. These disparities are liable to hinder or prevent full and effective application of the requirement for genuine commercial use.
We think that there should be a uniform rule, applicable throughout the EU, establishing
that the proprietor of a registered trade mark always has the burden of proving commercial use sufficient to justify retention of the rights conferred by registration in properly constituted proceedings for revocation on the ground of non-use.
3. Nature of the exclusive right conferred by registration of a trade mark
Art 17(2) of the EU Charter states that ‘Intellectual property shall be protected’ in the context of Art 17(1) which provides that ‘Everyone has the right to … use … his or her lawfully acquired possessions’ within the parameters of Art 52. In Case C-280/15 Nikolajeva EU:C:2016:467 at paras 39 to 43 the CJEU confirmed that an application for registration of a trade mark provides the proprietor with various economic rights from the date of application. This leaves room for the possibility that under Art 17 of the EU Charter the ‘exclusive right’ conferred by registration of a trade mark is not a purely negative right to prevent others from using the protected trade mark, but may also include a right of exploitation (although not, of course, an absolute right of exploitation).
We see this as a matter which ought to be resolved for the purpose of ensuring that trade marks (and other intellectual property rights) do in substance and reality receive the level of protection guaranteed by the EU Charter when regulatory measures are introduced and applied to the marketing of lawful products with respect to which there may be health or safety concerns.
4. Obtaining trade mark protection for the visual appearance of works of art in the public domain
This question was raised for consideration in relation to the public domain works of the famous Norwegian sculptor GUSTAV VIGELAND (11 April 1869 to 12 March 1943) on reference to the EFTA Court.
We are aware that there is an ongoing discussion as to whether it is, or should be, possible to obtain registered trade mark protection for the visual appearance of works of art in the public domain, particularly when they are works of major historical or cultural significance.
The Judgment of the EFTA Court in Case E-5/16 Municipality of Oslo (06 April 2017) appears to have added a new dimension to the interpretation of Art 3(1)(f) of the TM Directive 2008 (Art 7(1)(f) EUTMR) first, by regarding ‘public policy’ and ‘accepted principles of morality’ as ‘two alternatives, which may each serve as a ground for refusal’ (para 84) and then second, by regarding it as possible in exceptional circumstances for the ‘public policy’ limb of the objection to justify refusal of registration where no other grounds for refusal are available ‘if the sign consists exclusively of a work pertaining to the public domain and if registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society’ (paras 96 to 102).
We think it remains necessary for more specific criteria to be identified (in terms designed to reduce the scope for subjective and discretionary decision taking) for the purpose of determining whether and when such a ‘threat to a fundamental interest of society’ may actually be found to exist. It can be appreciated from the Judgment of the Gerichtshof Den Haag in the ‘Nightwatch’ case, which concerned an application to register Rembrandt’s famous “Nightwatch” painting as a trade mark for use in relation to strontium, that this will not be an easy task to accomplish (NL:GHDA:2017:2446).
5. Breadth of protection on the basis of conceptual similarity
We see a tendency in the case law for the analysis of ‘conceptual’ similarity (sometimes referred to as ‘semantic’ similarity) to be mishandled. See, for example, the breadth of protection envisaged in: Case C-498/07P Aceites del Sur-Coosur SA (PASTORAL SCENES) EU:C:2009:503; Case C-655/11P Seven for all mankind LLC (SEVEN) EU:C:2013:94; Case C-581/13P Intra-Presse v Golden Balls (BALLON D’OR) EU:C:2014:2387; Case C-84/16P Continental Reifen Deutschland GmbH (FIGURATIVE PRESENTATION OF THE LETTER X) EU:C:2017:596.
On the basis that a ‘concept’ is not a sign capable of being protected by registration as a trade mark (e.g. Case C-321/03 Dyson) we regard it as important to emphasise that the rights conferred by registration are centred on the registered representation of the protected mark and do not enable the ‘concept’ of a mark to be protected without regard to the distinctive character of it in the particular form in which it has actually been registered.
There is a related difficulty in trying to give effect in trade mark law to the requirement (Art 22 of the EU Charter) that the Union shall respect cultural and linguistic diversity. It would be unrealistic for trade marks to be automatically assessed for descriptiveness, distinctiveness or deceptiveness with reference to their ‘foreign equivalents’ in all of the languages spoken or understood within the EU. At present, the meaning of a sign in one language may be regarded as ‘conceptually’ similar to its meaning in another language, but only if there is a sufficient reason for attributing the required degree of understanding of that other language to the relevant average consumer.
We do not think it is sufficient for the attainment of internal market objectives to make consumer perception and ‘conceptual’ similarity the ultimate test for taking account of ‘foreign’ meanings. Since ignorance of meaning is not the same thing as absence of meaning, we think it would be better to adopt a proportionality test: the meaning of a sign in another language should be taken into account when it would be disproportionate to allow ignorance of its meaning in that other language to operate as an obstacle to cross-border trade in the relevant sector of trade.
6. The difference between use of a word as a metaphor and use of it as a trade mark
A trade mark may come to be used in everyday speech as a condensed way of referring metaphorically to general conceptions such as virtues, values, status, standards, ethos and principles, as in the situation recently considered by the Italian Supreme Court with regard to use of the trade mark OSCAR in everyday speech as a metaphor for excellence for all products or services (e.g. „wine–oscar“) beside those related to film-industry, for which it is registered (Cass. 21.7.2016, n. 15027). We do not think this type of use should, in and of itself, be taken to result in loss of distinctiveness. In our view, consumers who are reasonably well informed and reasonably observant and circumspect can be expected to recognise the difference between this type of use and use of the protected trade mark for the purpose of individualising goods or services to a single economic undertaking.
7. Differentiating between individual marks, certification marks and collective marks
In two recent Judgments, the CJEU seems to have adopted: (i) a strict requirement for separate categorisation of ‘individual marks’ and ‘certification marks’ (with use for the purpose of certifying composition or quality not being sufficient, in and of itself, to satisfy the requirement for use of an ‘individual mark’: Case C-689/15 W.F. Gözze Frottierweberei GmbH EU:C:2017:434 at paras 41 to 46); and (ii) a strict requirement for separate categorisation of ‘collective marks’ and ‘geographical indications’ (with use for the purpose of guaranteeing collective commercial origin being necessary – and use for the purpose of guaranteeing collective geographical origin not being sufficient – to satisfy the requirement for use of a ‘collective mark’: Joined Cases C-673/15P to C-676/15P The Tea Board EU:C:2017:702 at paras 49 to 63).
These Judgments have the capacity to create significant legal and administrative difficulties for economic entities and economic operators whose actual arrangements for ownership and exploitation of trade marks cannot easily or with complete certainty be placed within one rather than another of these separate categories. We think that there is likely to be a need for more flexibility in the categorisation of marks than the reasoning of the Judgments may, at first sight, suggest. As part of that approach it might be regarded as fair and reasonable for the competent authorities to provide an opportunity for the registration of an existing ‘individual’ or ‘collective’ mark to serve as the basis for a claim to seniority in respect of a subsequent ‘certification’ mark registration in appropriate circumstances.
Trier, Academy of European Law, 2016
1. Combit / Commit
We consider that the Judgment of the CJEU in Case C-223/15 Combit Software GmbH (COMBIT) increases the concern we expressed in our conclusions in 2015 concerning case C-125/14 (IMPULSE) (“…no criteria or standards have been identified or prescribed for the purpose of determining if, when or how the conditions can actually be satisfied in relation to a territory where a mark has not acquired a reputation with the relevant public and is, at least from that perspective, even ‘unknown to the relevant national consumer’”, GRUR 2016, 357) The Judgment in Case C-223/15 confirms and reinforces the principle established in Case C-255/09 (DHL) that, where the defendant shows that the conditions for infringement of a EU trademark are not satisfied in part of the EU, an injunction to restrain future infringement must be limited to those parts of the EU where the conditions for infringement are satisfied. A particular difficulty in reconciling the case law is that Case C-125/14 appears to say that there can be infringement of a EU trademark pursuant to Art. 9 (1) (c) EUTMR in a part of the EU where one of the necessary conditions for infringement, namely reputation of the trademark among the relevant public, is not satisfied.
2. Linguistic points
We wish to comment on two aspects of the terminology found in Judgments of the supervising courts in Luxembourg.
(1) We think that statements to the effect that something ‚cannot be excluded‘ should be avoided. They tend to reverse the burden of proof with regard to contested matters. At the same time they tend to reduce the standard of proof for one party and increase it for the opposite party in relation to the matter with respect to which the statement is made.
(2) We think that the word ‚banal‘ and references to the concept of ‚banality‘ are being used in the determination of objections to registration under Article 7(1)(b) EUTMR without clear and sufficient explanation of the criteria that are actually being invoked and applied for the purpose of determining the presence or absence of distinctiveness.
3. Bad Faith
There are a number of points we wish to emphasise with regard to bad faith. The basic proposition is that the right to apply for registration of a trademark cannot validly be exercised in bad faith. The invalidity of the application on the ground of bad faith is independent of the question whether the trademark itself is registrable or unregistrable in relation to any goods or services of the kind specified. The objection is absolute in the sense that it is intended to prevent abusive use of the system for acquiring title to a trademark by registration. It is not intended to operate as a substitute for other substantive grounds of rejection. The focus of attention is whether the claim of protection has been made for an improper purpose or an improper manner. As we noted in our conclusions in 2014 (GRUR 2015, 242) the assessment should be in substance objective.
4. Acceptability of certain Objects of Art for Registration as Trademarks
CET-J notes that there is a reference to the EFTA Court (E-5/16) on the following point. Can article 3 (1) (f) of Directive 2008/95 (signs contrary to public policy or principles of morality) apply to works of art for which the copyright has expired so as to exclude them from protection by registration as trademarks. The important issue is whether the scope of article 3 (1) (f) can and should be extended beyond the concept of antisocial branding for the purpose of ensuring that a part of the cultural heritage is not withheld from the public domain. CET-J suggests to keep in mind the desirability of avoiding such monopolies.
5. Equal treatment
CET-J notes an important new decision of the Swiss Federal Administrative Court (B-6068/2014 of Feb. 1st 2016) concerning equal treatment between different applicants relating to the ECJ decision C-43/08. There are some significant differences in the approaches in different national jurisprudence; suggesting a need for a deeper academic evaluation in general administrative law and constitutional law. The obligation on the administrative authorities to balance all different interests is of high importance. On the one hand the public interest not to register trademarks contra legem and on the other hand the constitutional right on equal treatment should be considered. A solution is needed that takes into account the fact that these interests are not in direct contradiction, but have to be evaluated and balanced.
As regards the liability of traders for trademark infringements on online marketplaces it remains to be determined whether, and how, the strict application of the German liability concept of “Störerhaftung” (German Federal Court of Justice, Judgment of March 3, 2016, I ZR 140/14, GRUR 2016, 926 -TRIFOO) can be fully reconciled with the position of the European Court of Justice in the “Együd Garage” – case (C-179/15, GRUR 2016, 375 para. 36), that there is, in principle, no liability for actions of independent third parties.
Florence, European University Institute, 2015
1. On the point of extended protection for marks with a reputation
We think that the answer given by the CJEU to Question 4 of the Order for Reference in Case C-125/14 Iron & Smith kft (IMPULSE) EU:C:2015:539 proposes a basis for protection of marks with a reputation which does not satisfy the need for legal certainty.
That Question specifically addressed the situation where ‘a mark used intensively in a substantial part of the European Union’ was ‘unknown to the relevant national consumer’. Paragraph  of the Judgment of the Court proposes that the mark can be protected, even though it has not acquired a reputation with the relevant public, if ‘a commercially significant part of that public’ is ‘familiar’ with it and ‘makes a connection between it and the later … mark’ with the result that there is actual and present ‘injury’ to the ‘mark’ or a ‘serious risk’ that such ‘injury’ may occur in the future.
These particular conditions are presumably intended to set a uniform standard for the application of an autonomous principle of EU law. However, no criteria or standards have been identified or prescribed for the purpose of determining if, when or how the conditions can actually be satisfied in relation to a territory where a mark has not acquired a reputation with the relevant public and is, at least from that perspective, even ‘unknown to the relevant national consumer’.
2. On the point of use / non-use
We think it is essential for the CJEU to resolve the uncertainty created by paragraphs  to  of its Judgment in Case C-149/11 Leno Merken BV (ONEL) EU:C:2012:816 and its later Judgment in Case C-141/13P Reber Holding GmbH & Co. KG (WALTZER TRAUM) EU:C:2014:2089.
In order to do so, the Court should either: (i) emphasise that there may exceptionally be cases (such as WALTZER TRAUM) where the use in question is on such a small scale that it cannot realistically be said to constitute building or maintaining a market share; or (ii) rule unequivocally on the question whether and, if so, when a registered trademark may cease to qualify for the protection conferred by registration because it has been used in commerce only to a limited geographical extent.
The different language versions of Council Regulation (EC) No. 207/2009 (‘the Regulation’) and Directive 2008/95 (‘the Directive’) describe the nature of the required use in terms which, even though they are not synonymous, do not appear to envisage any minimum geographical extent of use for marks registered either at the EU level or at the national level, for example: ‘ernsthaft’ (DE); ‘genuine’ (EN); ‘efectivo’ (ES); ‘serieux’ (FR) ‘effettivo’ (IT); ‘normaal’ (NL); ‘seriamente’ (PT).
However, Arts 8(4) and 111 of the Regulation and Art 6(2) of the Directive might indicate that the protection conferred by registration should cease to be available where the use of the registered mark is of ‘mere local significance’ and applies only to ‘a particular locality’.
Courts and tribunals, competent authorities and economic operators participating in the trademark system all need to know whether the protection of trademarks by registration within the EU is subject to that or any minimum geographical extent of use requirement.
This is an important question. The answer to it is not revealed by the proposition that a ‘holistic’ examination of all relevant facts and circumstances must be carried out, such that ‘it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule … cannot therefore be laid down …’: Case C-149/11 Leno Merken BV (above) at paragraph . Indeed the problem resides precisely in the difficulty of deciding ‘what territorial scope should be chosen’.
3. On the point of visualising representations of non-verbal device marks as physical features of objects in three-dimensional form.
We do not think that the process of visualising representations of non-verbal device marks as physical features of objects in three-dimensional form, in accordance with the approach adopted by the CJEU in Joined Cases C-337/12P to C-340/12P Pi-Design AG EU:C:2014:129 at paragraphs  to , can properly be taken to require all such marks to be conceptualised and defined simply as shape marks for the purposes of examination under Art 7(1)(e) (i) to (iii) of the Regulation (Art 3(1)(e)(i) to (iii) of the Directive).
4. On the point of liability for keyword advertising as a form of commercial communication
We think it should be made clear that the line of Judgments running forward from Joined Cases C-236/08 to C-238/08 Google and Google France EU:C:2010:159 through to Case C-323/09 Interflora EU:C:2011:604 proceeds on the basis of reasoning which is not only specific to the methods and circumstances of keyword advertising, but also merges the criteria for determining liability under Art 9(1)(a) of the Regulation [Art. 5(1)(a) of the Directive] with the criteria for determining liability under Art 9(1)(b) of the Regulation [Art 5(1)(b) of the Directive] in a way which is not universally applicable to the determination of liability for infringement in relation to all other forms of commercial communication.
5. On the point of parody as an aspect of fair use
We think it should be made clear that parody is an aspect of fair use which does not adversely affect the functions for which a trademark is protected by registration when it takes place within the latitude allowed by Art 11 of the EU Charter of Fundamental Rights and Art 10 of the European Convention on Human Rights for freedom of expression (including freedom of commercial expression). It should not matter for that purpose whether the claim for infringement is based on a mandatory EU legislative provision, such as Art 9(1)(c) of the Regulation, or the national implementation of an optional EU legislative provision, such as Art 5(2) of the Directive. Art 11 of the EU Charter and Art 10 ECHR are equally applicable to both situations.
6. On the point of defining the scope of rights and liabilities by reference to the protection of trademark functions
We do not think it satisfies the need for legal certainty to define the scope of rights and liabilities under the Regulation and the Directive by reference to general, non-finite conceptions of the functions for which a trademark is protected by registration.
Since the rules for the protection of trademarks do not seek to provide trademark owners with unlimited rights to control the use of their trademarks, we think it would be more appropriate for the concept of interference with trademark functions to be developed by the CJEU into coherent principles designed to ensure that the rights conferred by registration are moderated by balancing considerations (such as those mentioned in Art 3 of the Enforcement Directive, Directive 2004/48/EC).
Bellinzona, Switzerland, 2014
1. On the point of bad faith
We think it should be clear to the effect that the subjective aspect of the assessment of bad faith relates only to what the applicant for a trademark may realistically be taken to have intended, with the test for bad faith being objective and focused upon the question whether the behaviour in question was abusive or otherwise improper.
2. On the point of acquired distinctiveness by use
We think it should be clearly understood in all Member States that proof of acquired distinctiveness does not always or necessarily require survey evidence to be put forward and that even when survey evidence is put forward, it should not be regarded as conclusive one way or the other simply by reference to specified numerical percentages.
3. On the point of retail services
We think that the criteria for determining whether, when and to what degree ‘retail services’ in Class 35 are ‘similar’ to goods remain unclear for lack of a real and effective definition of retail services as such according to principles of marketing in retail. This is an unsatisfactory position. It creates significant difficulty with regard to the implementation and operation of an important aspect of EU trademark law.
We regret that the CJEU in its judgment in C-420/13, Netto Marken Discount, EU:C:2014:2069 , did not extend the requirement for ‘clarity and precision’ as established in the IP TRANSLATOR case (C-307/10 Chartered Institute of Patent Attorneys, EU:C:2012:361) to identification of the ‘retail services’ as such for which protection by registration is requested in Class 35.
It appears from C-420/13, Netto Marken Discount, EU:C:2014:2069 at points  and  (with reference to the retailing of services) and from C-421/13 Apple Inc, EU:C:2014:2070 at points  and  (with reference to the retailing of goods) that a trademark for ‘retail services’ to be provided in relation to an assortment of goods should be registered without regard to whether the retail service provider is or will continue to be the producer of all or any of the goods which may from time to time be included in the assortment. We think that, if this is correct, then it must follow that no assumptions should be made as to the identity of any branding which might or might not be applied to any of the goods from time to time included in the assortment when assessing ‘similarity’ and the ‘likelihood of confusion’ as between, on the one hand, a mark used for goods and, on the other hand, a mark used for retail services. The distinction between dealing in goods and providing retail services is in that way realistically and properly maintained.
4. On the use of black-and-white trademarks
We think that in accordance with the requirement for legal certainty and] contrary to what the CJEU seems to suggest in its judgment C-252/12, Specsavers, EU:C:2013:497, the colour or colours in which a trademark registered in black-and-white may have been used should not be taken into consideration as if they formed part of the mark as registered in the assessment of a likelihood of confusion or the assessment of detriment to the distinctive character of the earlier trademark.
5. On other topics
The judges present discussed several further cases which are currently pending before the CJEU, in particular Case C-125/14 Iron & Smith Kft v Unilever NV (with implications for the application of the Judgment of the Court in ONEL / OMEL) and Case C-215/14 Nestle SA v Cadbury UK Ltd. However, they refrain from publishing any common position on the issues raised in those cases in order not to unduly influence the deliberations of the Court.
Villa Vigoni, Lake Como, 2010
The participants started with a short representation of the different court-systems and the prozedural law in trademarks proceedings in their Member States.
Five questions arouse:
Is there a need for harmonizing:
1. Oral Hearings:
Result: Harmonization is necessary. Oral hearings are seen as useful.
2. Allow argueing on new grounds during the appeal proceeding:
Result: It should be distinguished between „new facts“ and „new points of law“; refusal could be foreseen, if the parties could have brought the reasoning to the proceedings at an earlier stage.
3. Preliminary Procedure:
Result: It is already introduced in most of the courts dealing with infringements. There is no specific interest to focus on this point.
4. The bench with lay judges (as in Denmark):
Result: Lay judges even if they are experts are not seen as necessary as long as there is the possibility that the court may request for outside experts opinions.
5. The status of the trademark office as a regular party:
Result It is seen as useful and necessary that the trademark office should regularly take part in both procedures concerning registration and nullification, but not in cases of unfair competition.
Picture of Florence by Steve Hersey – http://flickr.com/photos/sherseydc/2954982676/
Picture of Bellinzona by H005 – https://commons.wikimedia.org/w/index.php?curid=7498502
Picture of Lake Como by Aconcagua – https://commons.wikimedia.org/w/index.php?curid=2553547