Conclusions from previous meetings
Lisbon, Tribunal da Relação de Lisboa, 2019
First Part – Acquired Distinctiveness
A short summary on the question of how “acquired distinctiveness” through a market survey is treated in the various national jurisprudences related to an application for registration or in cases to give evidence for “reputation” of a trademark.
Court of Justice:
In the Judgement at “Chiemsee”, (CJEU C-108/97 point 49, 51, 53) the basic statement of the court was made. “ In determining whether a trade mark has acquired distinctive character following the use which has been made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings; … the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations. …. if the competent authority finds that a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied; where the competent authority has particular difficulty in assessing the distinctive character of a mark in respect of which registration is applied for, Community law does not preclude it from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment. Where the competent authority has particular difficulty in assessing the distinctive character of a mark in respect of which registration is applied for, Community law does not preclude it from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment.”
The Court also quoted from the case „Gut Springenheide“ (C-210/96 points 36, 37) “However, Community law does not preclude the possibility that, where the national court has particular difficulty in assessing the misleading nature of the statement or description in question, it may have recourse, under the conditions laid down by its own national law, to a consumer research poll or an expert’s report as guidance for its judgment.“ In “Oberbank” (C-217/13 points 48,49) “it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has acquired a distinctive character through use and that, even with regard to contourless colour marks, such as the mark at issue in the main proceedings, and even if a consumer survey may be one of the factors to be taken into account when assessing whether such a mark has acquired a distinctive character through use, the results of a consumer survey cannot be the only decisive criterion to support the conclusion that a distinctive character has been acquired through use. In the light of those considerations, the answer to the first question is that Article 3(1) and (3) of Directive 2008/95 must be interpreted as precluding an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark has acquired a distinctive character through use, it is necessary in every case that a consumer survey indicate a degree of recognition of at least 70%.”
Recently the Opinion of Advocate General SAUGMANDSGAARD ØE in the case Oy Hartwall Ab (delivered on 22 November 2018 – Case C 578/17) carried out on point 73: “As regards the distinctive character acquired through use, it must be stressed that the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of all the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking. In that connection, it follows from the Court’s judgment in Oberbank that it is contrary to Directive 2008/95 for the assessment of a colour mark’s distinctive character acquired through use to be based solely on the results of a consumer survey. In that case, the Court held that even though a consumer survey may be one of the factors in the assessment, the results of a consumer survey cannot be the sole decisive criterion.”
The GC follows in its case-law the principles decided on by the CJEU and it repeatedly quotes from the above-mentioned CJEU Judgments, following them as a basic statement. It is necessary to take into account all the elements of proof – there is no specific requirement for a “poll” – the analysis of a “poll” can be quite strict. If a survey seems to be not sufficiently clear, the application will be refused.
The following observations, in different opinions and decisions, are reflected in the judgments of the General Court: Salispir Case T-261/17 Bayer/EUIPO it should be emphasized that a detailed and strict analysis of the survey is made (“…one of the criteria allowing the results of a survey to be recognized as having probative value is that the survey be carried out in the objective circumstances in which the marks at issue are present, or may be present, on the market”). In point 50 the court considered that in particular the analysis of the pertinence of polls is done also in the context of a likelihood of confusion situation, as well as in the analysis of prior non-registered anterior rights under 8 (4) of the EU TM R – “Use of a sign in the course of trade of more than mere local significance”. In addition in point 60 and 61 the court stated: “As for the probative value of the two surveys, according to settled case-law, the principle which prevails in EU law is that of the unfettered evaluation of evidence, from which it follows, in particular, that the only relevant criterion for the purpose of assessing the probative value of evidence lawfully adduced relates to its credibility (see, to that effect, judgment of 15 December 2016, Infineon Technologies v Commission, T 758/14, not published, EU:T:2016:737, paragraph 179 and the case-law cited). Thus, in order to assess the probative value of a document, it is necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (see, to that effect, judgment of 6 November 2014,Popp and Zech v OHIM — Müller-Boré & Partner (MB), T 463/12, not published, EU:T:2014:935, paragraph 53 and the case-law cited).” …… Par. 61 “The probative value of a survey will depend on the survey method used (see, to that effect, judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T 277/04, EU:T:2006:202, paragraph 38). Applied to a survey produced as evidence by one party, the case-law cited in paragraph 60 above has already led the Court to refrain from recognising that the results of the survey have probative value, as the survey in question did not include sufficient information to enable the Court to satisfy itself as to the reliability of the survey (see, to that effect, judgment of 30 May 2013, Brauerei Beck v OHMI — Aldi (Be Light), T 172/12, not published, EU:T:2013:286, paragraph 28).”
See also: Case T 277/04, Vitakraft-Werke Wührmann & Sohn GmbH & Co. KG/EUIPO (point 38 and following) on the points of evidence to substantiate the public’s recognition of an earlier mark and Case T-112/13 (point 65 to 111) – Mondelez, in which the Court addresses surveys under the aspect of proof.
Austria: A survey is not mandatory, but delivered in many cases; no fixed result in numbers is required for acquired distinctiveness to be accepted.
Belgium: A survey is not mandatory; mostly applications on acquired distinctiveness are decided according to the Chiemsee decision of the CJEU on a case by case basis in considering the overall circumstances of the used sign in general. No fixed number in the result is necessary of conclusive.
Cyprus: In Cyprus there is no mandatory requirement for carrying out a market survey before applying for the registration of a trade mark. So far, there is no jurisprudence from the Cyprus Courts indicating that the absence of a market survey can lead to failure to prove that a trade mark is not distinctive or the contrary. Nor has any case been decided on the basis of percentage of distinctiveness. It is the overall impression that matters.
Czech Rep.: Surveys are not mandatory. No fixed number is demanded to accept acquired distinctiveness by use for registration.
France: A survey is not mandatory; if one is delivered, the jurisprudence requires no fixed number to accept acquired distinctiveness; whether the survey’s result is accepted by the court depends on the quality of the surveys method. Accepted is the 3 step-method. If the survey is not logically structured the court will decide on the basis of an overall view according to the Chiemsee case.
Germany: A survey in cases of a trademark application is not mandatory by law; but in the jurisprudence of the Federal Court of Justice (BGH) it is required as the most reliable proof. The result must reach at least 50 % plus 1. The Federal Court of Justice (BGH) allows courts to demand a survey ex officio and the competent board may even designate a certain institute. If a survey is not logically structured the case is set aside and the application for registration is refused. Before a party is allowed to submit a survey, prima facie evidence must be provided at the court. The numbers which must be given in it are similar to the “overall view” in the Chiemsee-case. If the numbers appear sufficient for a successful survey at least the court gives permission to conduct the poll.
Latvia: A survey is not mandatory; mostly the court decides on the basis of all circumstances. No fixed number is demanded to accept acquired distinctiveness by use for registration.
Netherlands: A survey is not mandatory; mostly applications on acquired distinctiveness are decided according to the Chiemsee-decision of the CJEU on a case by case basis in considering the overall circumstances of the used sign in general. No fixed number in the result is foreseen.
Norway: A survey is not mandatory but it is certainly helpful if the questions are conducted in a clear and precise manner. The case is decided on a consideration of all circumstances. No exact number is demanded to accept acquired distinctiveness by use for registration.
Poland: Surveys are not mandatory; they are one of the evidentiary measures of acquired distinctiveness. No fixed percentage of recognition is demanded to accept acquired distinctiveness by use for registration. Consequently, it is for the Patent Office to assess what degree of recognition of a given sign among the relevant public is necessary to consider that that mark has acquired a distinctive character as a result of its use. It is recommended that surveys are performed by independent institutes. Surveys should contain properly worded questions that should above all be neutral. This means that when formulating a survey, one should avoid asking questions which may suggest an answer or lead to the answers expected by applicant. Excessive interference in the answer may affect the evidentiary relevance of such surveys. It is also necessary to correctly identify the group of respondents so that they are representative of the relevant public.
Portugal: A survey is not mandatory but may be submitted, although not many surveys are submitted in the procedure; mostly it is too expensive for the parties. But if there is a survey, no fixed number is decisive to accept registration through acquired distinctiveness by use. In almost all cases acquired distinctiveness is considered by assessing all circumstances according the Chiemsee Judgement and the other cases of the CJEU.
Switzerland: A survey is not foreseen by law; therefore most cases are decided on the basis of an overall view if the numbers seems sufficient. Even if a survey shows an unprompted awareness of only 25 %, it might be considered sufficient (Swiss Federal Supreme Court, 4A_128/2012 of 7 August 2012, consid. 4.1.2 „Vogue“). The Swiss Office (IGE) published in it’s rules (12.3.9.) the following: “The Federal Supreme Court described the value of two thirds of the representative interviewees as a guideline sufficient for the assumption of the enforcement of the mark; at the same time, however, it referred to a guideline value of at least more than 50 percent, which it had assumed in a further decision concerning the question of a well-known trademark (BGer in sic! 2009, 167, E. 6.4.1 – POST, with reference to BGE 130 III 267, E. 4.7.3 – Tripp Trapp.)……..If the degree of identification is less than 50 percent, the majority of customers do not assign the sign in question to a specific company, either demonstrably or by a logical reverse conclusion.” In practice, however, nobody has ever submitted a demoscopic survey in the trademark registration process. This happens almost exclusively before civil courts, where the Office is not involved, so its view from the Guidelines is irrelevant.
Spain: Surveys are uncommon; the cases are considered on assessing all circumstances.
Turkey: Surveys are not very common in procedures, but parties are free to submit them. The court cannot ask for one. No fixed number is demanded to accept acquired distinctiveness by use for registration.
UK: Surveys are not mandatory. A claim to acquired distinctiveness can, in principle, be supported by survey evidence put forward for consideration together with other evidence concerning such things as the manner and scale of use of the sign in question. However, permission must in all cases be obtained in advance in order to put forward survey evidence for use in court proceedings and in proceedings in the Trade Marks Registry. This is a “gatekeeper” procedure intended to prevent the expenditure of time and money on survey work that may not provide evidence of real value. A request for permission should be accompanied by the results of a pilot survey and an explanation of the methodology that will be used for the proposed full scale survey. The request should demonstrate that the questionnaire is properly focused and fairly designed, that the answers to the questions are likely to be of real assistance to the tribunal and that the survey methodology can be expected to yield results that may be regarded as statistically valid. The survey should be designed and carried out in accordance with the “Guidelines” set out in the Judgment of the Court of Appeal in Interflora Inc. v. Marks & Spencer Plc.  EWCA Civ 1501 at  (i) to (vii). No particular number / percentage result is required. The decision taker must always use his or her own judgment to assess the value of the information that is obtained. Surveys are treated as experiments. Experience has shown that it is difficult to design a survey that will be accepted as reliable to the required standard. A recent example of this (where several of the surveys presented to the court were carried out using the 3 step method) is provided by Glaxo Wellcome UK Ltd v. Sandoz Ltd  EWHC 2545 (Ch) (4th October 2019). The methods and results of the surveys were examined in detail in paragraphs  to  of the Judgment. The court concluded that the survey evidence was largely unreliable and of no real value.
Second Part – Conclusions
1. Certification trademarks: geographical origin
Marks used for the purpose of certifying ‘geographical origin’ cannot be protected by registration as certification marks at the EU level under Art. 83(1) EUTMR 2017, but they may be protected by registration as certification marks in Member States which have exercised the option to make such protection available at the national level under Art. 28(4) Recast TMD 2015.
The question this raises is whether Art. 28(4) authorises Member States to depart from the rule that protection within the coverage of the various EU Regulations providing for registration of designations of origin / geographical indications at the EU level must and can only be obtained by registration under those Regulations (see, in particular, Case C-35/13 Assica EU:C:2014:306 at  to  and Case C-56/16P EUIPO v. Instituto dos Vinhos do Douro e do Porto (PORT CHARLOTTE) EU:C:2017:693 at  to ).
The reasoning of the Court in Joined Cases C-673/15P to C-676/15P The Tea Board (DARJEELING) EU:C:2017:702 at  to  points to the conclusion that there should be no substantive overlap between the bases on which designations of origin / geographical indications can be protected by registration under the regimes established by those Regulations and the bases on which trademarks can be protected by registration under the regimes established by the EUTMR 2017 and Recast TMD 2015.
In her Opinion in Case C-766/18 BBQlloumi (Halloumi) EU:C:2019:881 at  the Advocate General supported the view that it would be contradictory if producers’ associations could obtain equivalent or even stronger protection for geographical designations on the basis of trade mark law than in the protected designation of origin system.
If that is correct, it seems that Member States will need to avoid the potential for overlap by limiting the nature and scope of the protection obtainable by trademark registration for signs which have the capacity to function as designations of origin / geographical indications.
It is difficult to see how that could be done by limiting certification trade mark protection under Art. 28(4) to the extent necessary to give effect to the proposition that “the protection granted by a national set of rules must not have the effect of guaranteeing to consumers that products which enjoy that protection have a particular quality or characteristic, but only of ensuring that those products do in fact originate from the geographical area referred to”: Case C-35/13 Assica at  and .
The limitation would need to redefine the concept of certification in relation to signs indicative of ‘geographical origin’ so as to: (i) permit protection by registration at the national level of those which simply provide a guarantee of geographical origin; and (ii) prevent protection by registration at the national level of those which provide a guarantee not only of geographical origin, but also of the particular quality or characteristics of the products for which they are used.
Another way of avoiding the potential for overlap might be to prevent signs indicative of “geographical origin’ from being registered as certification trade marks at the national level under Art. 28(4) for products within the coverage of the EU Regulations which provide for the protection of designations of origin / geographical indications by registration at the EU level.
We think there is a need for early clarification as to whether the option provided by Art. 28(4) may only be exercisable at the Member State level subject to conditions and requirements which still remain to be clearly identified and implemented.
2. Accepted principles of morality
Art. 7(1)(f) EUTMR 2017 and Art. 4(1)(f) Recast TMD 2015 prevent the registration of “trademarks which are contrary to public policy or accepted principles of morality”. These provisions give effect to the requirements of Art. 2(1) of the TRIPs Agreement and Art. 6quinquies B(iii) of the Paris Convention of 20th March 1883 (as last amended on 28th September 1979).
The EFTA Court decided in Case E-5/16 Municipality of Oslo (6th April 2017) at  to  that the legislation identifies two alternatives (“public policy” based on an assessment of objective criteria and “accepted principles of morality” based on an assessment of subjective values) each of which may serve as a ground for refusal of registration. The end result is the same in either case: the obnoxious mark is treated as a “non-mark” for the purposes of registration.
We see nothing wrong, in principle, in deciding to exclude anti-social marks from registration in cases where it can be expected that commercial exploitation of the mark in question would be seriously hurtful or disturbing to a section of the public whose beliefs and values ought to be respected.
In our view, the main question of law to be addressed in this connection is whether the refusal of registration under Art. 7(1)(f) / Art. 4(1)(f) should be regarded as a restriction on the fundamental right to freedom of expression which must be tested for legitimacy in accordance with the requirements of Art. 11 of the EU Charter and Art. 10 of the ECHR.
That question is presently pending for determination by the CJEU in Case C-240/18P Constantin Film Produktion GmbH v. EUIPO (FACK JU GOETHE).
The Advocate General has proposed in his Opinion delivered on 2nd July 2019 (EU:C:2019:553) that the right to freedom of expression should be given real weight in the balancing exercise which he found to be necessary for the purposes of Art. 7(1)(f) / Art. 4(1)(f). He did not seek to attach – and we think it would be undesirable to attach – overriding importance to freedom of expression as a way of making obnoxious marks generally acceptable for registration under those Articles.
We note that the Lanham Act prohibition against registering “… immoral … or scandalous” trademarks has recently been invalidated by the US Supreme Court in the FUCT Trade Mark case for interfering too broadly and imprecisely with the right to “freedom of speech” guaranteed by the First Amendment to the US Constitution: Iancu v. Brunetti 588 U.S. (2019).
However, from an EU law perspective we see no reason to question the validity of the prohibitions set out in Art. 7(1)(f) / Art. 4(1)(f) and Art. 6quinquies B(iii) since they can, so far as necessary, be interpreted and applied compatibly with the requirements of Art. 11 of the EU Charter and Art. 10 of the ECHR.
3. Non-distinctive elements / disclaimers
The purpose of a disclaimer is to clarify the scope of the protection conferred by registration of a trademark.
This was recognised by the EU legislator in Art. 38(2) CTMR 1994 (repealed with effect from 13th April 2009) : “Where the trade mark contains an element which is not distinctive, and where the inclusion of said element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, the Office may request, as a condition of registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element.”
It was generally understood that a disclaimer had the legal effect of making it obligatory for the disclaimed element(s) to be treated as origin neutral for all purposes relating to the protection of the trademark as registered.
However, the CJEU has departed from that approach in Case C-705/17 Hansson EU:C:2019:481 on the basis that EU trade mark law precludes the possibility of providing “for a disclaimer whose effect would be to exclude an element of a complex trade mark, referred to in that disclaimer, from the global analysis of the relevant factors for showing the existence of a likelihood of confusion … or to attribute to such an element, in advance and permanently, limited importance in that analysis.”
We note that the ruling of the Court does not permit or require non-distinctive elements to be deemed distinctive. The Judgment confirms at  that “the proprietor of a complex trade mark cannot in any event claim an exclusive right solely in one element of the trade mark, whether or not it is referred to in a disclaimer” and it remains the case as stated in Arts 14(1)(b) and (2) EUTMR 2017 / Arts 14(1)(b) and (2) Recast TMD 2015 that the registration of a trade mark “shall not entitle the proprietor to prohibit a third party from using, in the course of trade: …(b) signs or indications which are not distinctive … where the use made by the third party is in accordance with honest practices in industrial or commercial matters.”
With those considerations in mind, we think that even after Hansson it should be legitimate to treat a disclaimer as prima facie evidence of the non-distinctiveness of the disclaimed element(s) of a complex trade mark, leaving it to the proprietor of the trade mark to prove otherwise if he can. In our view, it is appropriate in the interests of fair competition for third parties (particularly small and medium sized enterprises) to be able to rely on a disclaimer in the registration of a trade mark which has been asserted against them without being required to prove that it was and remains an accurate record of the non-distinctiveness of the disclaimed element(s).
4. Stay of EU trademark court action pending the outcome of EUIPO proceedings
An EU trade mark court should not “unless there are special grounds for continuing with the hearing” proceed to determine whether an EU trade mark is validly registered in a case “where an application for revocation or for a declaration of invalidity has already been filed at the Office”: Art. 132(1) EUTMR 2017.
We are aware that some EU trade mark courts may be more willing than others to proceed to a judicial determination of validity on the basis that the need for commercial certainty and their capacity to come to a decision without too much delay satisfies the requirement for “special grounds”. In such situations it remains possible for the proceedings pending before the EUIPO to continue unless and until the registration in question has been cancelled by a final order of an EU trademark court.
The situation becomes more complicated if the validity of the relevant EU trademark registration has not been challenged on the same basis and to the same extent in both the EU trademark court and the EUIPO. And the likelihood of that happening would increase substantially if the CJEU were to decide as some national decisions have suggested that claims for invalidity pursued in an EU trade mark court under Arts 127 and 128 EUTMR 2017 may not extend beyond the scope of the claims for infringement to which they respond. In many cases, the right to pursue a claim for invalidity in an EU trademark court would then be narrower than the right to pursue a claim for invalidity in the EUIPO.
We also note that the EU trade mark courts appear to have made no move towards using Art. 132(3) EUTMR 2017 as a basis for proceeding to deliver provisional decisions on the merits pending the outcome of EUIPO proceedings, by analogy with the reasoning of the CJEU in Case C-616/10 Solvay S.A. EU:C:2012:445 at  to .
There is, in our view, a need for authoritative guidance from the supervising courts in Luxembourg as to the principles on which the EU trademark courts and the EUIPO should operate for the purpose of implementing the “primarily exclusive” approach to jurisdiction envisaged by Art.132.
5. Individual trademarks and quality marks
On the one hand, use of a mark as a “quality mark” is not sufficient, in and of itself, to amount to use of the mark as an “individual trade mark”: Case C-689/15 W.F. Gozze Frottierweberei GmbH EU:C:2017:434 at  to ; see also Case C-514/18P Landeskammer fur Land- und Forstwirtschaft in Steiermark EU:C:2019:878 at  to .
On the other hand, use of a mark as a “quality mark” can infringe the rights conferred by registration of that mark as an “individual trade mark”: Case C-690/17 OKO-Test Verlag GmbH EU:C:2019:317 at , ,  and  to .
We recognise that there is no requirement for infringing use to be use of the kind which the proprietor must make in order to obtain or retain registration: see, for example, Joined Cases C-673/15P to C-676/15P The Tea Board (DARJEELING) EU:C:2017:702 at  to .
The point we wish to emphasise is that the proprietor of a mark which is used only as a “quality mark” cannot safely register it without structuring his economic activities in a way that will enable him to register it otherwise than as an “individual trade mark”.
Vienna, Palace of Justice, 2018
In Case C-129/17 Mitsubishi EU:C:2018:594, the CJEU decided that the proprietor of a registered trade mark has the right to prevent third parties from introducing goods bearing his trade mark into the EEA and placing them under a customs warehousing procedure for the purpose of ‘removing all the signs identical to that mark and affixing other signs on products placed in the customs warehouse … with a view to importing them or trading them in the European Economic Area (EEA) where they have never yet been marketed’.
The Judgment with regard to liability for infringement seems to establish that de-branded goods must always be regarded as infringing goods in proceedings for infringement of registered trade mark in cases where the proprietor of the trade mark has not consented to the removal of his mark from the goods in question. It does not appear to be a condition of liability for infringement that the process of de-branding should take place either within the territory of the EEA or within the territory for which the proprietor’s trade mark is protected by registration.
We find it difficult to see how a trade mark proprietor’s negative right to prevent use of his registered trade mark by re-sellers in relation to the goods they are re-selling can be extended by interpretation to include a right to prevent the re-selling of de-branded goods in circumstances which involve no use of the registered trade mark by the re-sellers in the course of trade in relation to the de-branded goods they are re-selling.
2. Consistency of decisions
If the factual position regarding the reputation of a trade mark has been considered and determined on assessment of the evidence filed in a case which has already been decided by the EUIPO, the determination can be cited and relied on in similar cases subsequently brought before the EUIPO: Case C-564/16 P EUIPO v. Puma SE EU:C:2018:509 at paras  and .
The Judgment in Puma further emphasises at paras , ,  and  to  that the EUIPO must in such circumstances: take account of the contents of the previous decision; consider with especial care whether to decide in the same way or not in the case before it; not disregard the previous decision without giving the party who relies on it an opportunity to supplement its evidence as to the factual position concerning the reputation of the trade mark in question; and not depart from the determination made in the previous decision without providing an explicit statement of its reasons for doing so.
This may come to be regarded as the application of a general proposition to the effect that rules of evidence and procedure should be implemented, so far as it is possible to do so compliantly with the principle of legality, in a way which is conducive to the delivery of consistent decisions in similar cases. With that in mind, we note that the reasoning of the Judgment in Puma is potentially far-reaching: there are various kinds of factual determination to which the reasoning can logically be applied and there does not appear to be any specific justification for restricting the application of it to factual determinations made in cases decided by the EUIPO. In our view, further guidance is required from the supervising courts in Luxembourg as to the wider implications of the Judgment of the CJEU in Puma.
3. The ‘NEUSCHWANSTEIN’ Judgment
We consider that the reasoning of the Judgment in Case C-488/16 P Bundesverband Souvenir – Geschenke – Ehrenpreise eV (NEUSCHWANSTEIN) EU:C:2018:673 is open to re-appraisal in three respects.
First, as stated in paras  and  of the Judgment, the Court adopted the following position with regard to the goods covered by the contested trade mark: “… the fact that those goods are sold as souvenir items is irrelevant for the purpose of assessing the descriptive character of the name ‘Neuschwanstein’. The souvenir function ascribed to a product is not an objective characteristic inherent to the nature of that product, since that function is determined by the free will of the buyer and is focused solely on that buyer’s intentions. … merely affixing that name on, inter alia, the goods enables the relevant public to regard those everyday consumer goods also as souvenir items. The fact that they constitute souvenirs through the mere affixing of that name is not, in itself, an essential descriptive characteristic of those goods”.
This does not appear to allow for descriptiveness to be assessed by reference to features which goods may optionally, rather than inherently, possess in order to make them attractive to consumers. Thus, the name ‘Neuschwanstein’ may appropriately be assessed for descriptiveness having regard to the elements and aspects of presentation and configuration which goods within the coverage of the contested trade mark would be likely to possess for the purpose of making them attractive to consumers wanting to purchase memorabilia of the famous ‘fairy tale castle’ of that name. We think that the Court ought to have recognised the need for descriptiveness to be assessed on that basis in accordance with the principles set out in Case C-51/10 P Agencja Wydawnicza Technopol EU:C:2011:139.
Second, as stated in para  of the Judgment, the Court adopted the following position with regard to distinctiveness of the name ‘Neuschwanstein’: “It is precisely because of the contested trade mark’s lack of descriptive character that it is open to an entity, such as the Freistaat Bayern, to apply for the name of the museum location of which it is the owner to be registered as an EU trade mark, since Regulation No. 207/2009 does not, in principle, preclude it”.
This does not appear to allow for the possibility that registration of the name of a famous building such as the Neuschwanstein castle may be refused for reasons of “public policy” related to the status of it as a place of major historical or cultural significance c.f. the reasoning of the Judgment of the EFTA Court in Case E-5/16 Municipality of Oslo (06 April 2017) as applied by the Norwegian Board of Appeal for Industrial Property Rights in its Decision in Cases 16/148 to 151, 153 and 154 Municipality of Oslo (VIGELAND) (13 November 2017).
Third, as stated in para  of the Judgment, the Court adopted the following position with regard to the concept of bad faith: “… even in a situation where that applicant files an application for registration of a sign with the sole aim of competing unfairly with a competitor who is using a similar sign, it cannot be excluded that the applicant’s registration of the sign may be in pursuit of a legitimate objective”.
This seems to be allowing for the pursuit of self-interest by means of unfair competition to be regarded as legitimate for the purposes of the EU law concept of bad faith.
4. EUIPO Guidelines
The Guidelines published by the EUIPO are well-written and helpful for the purpose of assisting users of the European Union trade mark system to understand the approach adopted by the Office in relation to issues of law and practice affecting the cases which come before it. However, the Guidelines do not have the force of law and we wish to emphasise that they should not be regarded as a substitute for research and analysis of the applicable case law in trade mark proceedings before courts and tribunals in the Member States.
5. Proof of use and part-cancellation for non-use
It is often difficult to decide how strict or generous to be when identifying the ‘sub-categories’ of goods or services for which genuine use of a trade mark has been demonstrated in response to a request for proof of use or a claim for revocation on the ground of non-use.
We note that the General Court recently stated in Case T-94/17 ACTC GmbH v. EUIPO (TAIGA) EU:T:2018:539 at para : “… the criterion of the purpose or intended purpose … is of fundamental importance in the definition of a sub-category of goods or services. In contrast, the nature of the goods at issue and their characteristics are not, as such, relevant to the definition of sub-categories of goods or services …”. The end result of the assessment then depends upon how broadly “the purpose or intended purpose” of the relevant goods or services is defined.
We think this approach is liable to be too generous because it concentrates on the genus to the exclusion of the species to which the relevant goods or services belong. In our view, the purpose or intended purpose should not be divorced from the nature and characteristics of the goods or services in question when seeking to place them in appropriately identified sub-categories in accordance with the applicable legislative requirements. In so far as the “the purpose or intended purpose” of the goods or services affects or is affected by their “nature and characteristics”, that should be taken into account.
6. The requirement for EU-wide distinctiveness
Art. 7(2) EUTMR 2017 enables an objection to the registration of an EU trade mark to be based on the existence of absolute grounds for refusal anywhere within the EU. In combination with Art. 7(1)(b), it provides for refusal of registration at the EU level in cases where the relevant trade mark is devoid of any distinctive character “in only part of the Union”.
We think that it should, in principle, be open to question whether there are any minimum requirements as to size and economic significance (relative to the internal market as a whole) which must be satisfied before the absence of distinctive character in a geographical area forming “part of the Union” can be regarded as sufficient to justify refusal of registration.
On one view, it is a necessary consequence of the principle of the unitary character of the EU trade mark that there should be no further requirement for the geographical area forming “part of the Union” to be defined or delimited by reference to any national boundaries.
The view to the opposite effect is that there must necessarily be a further requirement for the geographical area forming “part of the Union” to be defined or delimited by reference to national boundaries because the EU trade mark system does not allow trade marks to be protected by registration at the EU level when they would not be eligible for registration in accordance with the parallel requirements for protection by registration at the Member State level.
In response to the opposing arguments presented to it on these lines, the CJEU preferred to address the interpretation of Art. 7(3) CTMR 2009 (now Art. 7(2) EUTMR 2017) simply in geographical terms: Joined Cases C-84/17 P, C-85/17 P and C-95/17 P Societe des produits Nestle S.A. EU:C:2018:596. It was determined that registration at the EU level should be refused if the trade mark in question does not possess a distinctive character throughout the European Union. As matters now stand, there should be no part of the European Union (“even a part consisting of only one Member State”: para ) in which the trade mark is devoid of any distinctive character.
We note that there are concerns as to whether this effectively establishes a requirement for EU-wide distinctiveness which trade marks that are not intrinsically distinctive in all Member States can rarely be expected to satisfy.
7. Need for transitional provisions
Art. 7(1)(e) CTMR 2009 was amended with effect from 23 March 2016 by Regulation (EU) 2015/2424 so as to enable objections to registration to be raised under the provisions of that Article in respect of the shape “or another characteristic” of goods. The amending legislation was (in accordance with the usual practice of the EU legislator) enacted without any transitional provisions. The pending Order for Reference in Case C-21/18 Textilis therefore seeks guidance from the CJEU as to the operation and effect of the amended version of Art. 7(1)(e) in relation to pre-existing subject matter and pre-enactment events. We think the EU legislator ought to have put in place transitional provisions for the purpose of preventing uncertainty in relation to such matters. We also think there is a strong case for requiring EU legislation to include such provisions for that purpose in all instances where uncertainty about such matters is otherwise likely to arise.
8. The burden of proof in relation to exhaustion
The CJEU re-affirmed in Case C-291/16 Schweppes S.A. EU:C:2017:990 at paras  to  that in order to guard against the risk of artificial partitioning of the internal market, the claimant in an action for trade mark infringement concerning the parallel importation of goods can be required to prove that his rights have not been exhausted in relation to the goods in question.
It is apparent from the Schweppes case that this will be the position where the defendant puts forward a clear and consistent body of evidence from which it may be inferred that the goods in question have been placed on the market in the EEA directly or indirectly under the control of the trade mark proprietor, acting alone or in collaboration with others.
We wish to emphasise that for the purpose of implementing these principles and making a fair and effective determination of the rights of the parties in such situations, it is necessary to have court procedures in place which each side can use to obtain relevant evidence and information from the other (subject to protection of confidentiality) with regard to the actualities, not simply the contractual framework, of their respective business operations.
9. Restoring an improperly registered trade mark to its true owner
Art. 13 TM Directive 2015 and Art. 21 EUTMR 2017 (previously Art. 18 CTMR 2009) cover the situation where a trade mark has been registered in the name of an agent or representative of a person who is the proprietor of it. The proprietor can demand that the trade mark is assigned to him if it was registered without his authorisation and there is no justification for the actions of the agent or representative.
The CJEU decided in Case C-381/16 Benjumea Bravo de Laguna EU:C2017:889 that in situations outside the scope of those provisions, a person harmed by the filing of a trade mark application “in fraud of his rights or in breach of a legal or contractual obligation” is likewise entitled to bring a claim against the applicant under provisions of national law in order to recover ownership of the trade mark as an object of property.
Such cases give rise to a problem which has not yet been addressed: if the relevant trade mark was registered pursuant to an application for registration which still remains liable to be declared invalid for having been filed in bad faith, the true owner to whom the trade mark is transferred will receive an object of property which may at any time be extinguished ex tunc at the request of anyone who chooses to attack the validity of the registration on that ground.
We think that EU law ought to allow this problem to be resolved by treating the filing of the original application for registration as a particular form of wrongdoing (involving breach of an inter partes obligation) which the true owner of the trade mark can counteract by choosing to adopt and ratify the original filing for the purpose of enabling his trade mark to be validly and effectively restored to him.
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 Leiden by AWossink – https://commons.wikimedia.org/wiki/File:Oude_Sterrewacht,_Leiden.jpg
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
Picture of Palace of Justice by Peter Gugerell – https://commons.wikimedia.org/wiki/File:Wien_01_Justizpalast_a.jpg
Picture of Arco da Rua Augusta by Rehman Abubakr – https://commons.wikimedia.org/wiki/File:Rua_Augusta_Arch_-_April_2019.jpg