Bellinzona (Switzerland)
Picture of Bellinzona by H005
https://commons.wikimedia.org/w/index.php?curid=7498502

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 [38] and [39] (with reference to the retailing of services) and from C-421/13 Apple Inc, EU:C:2014:2070 at points [25] and [26] (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.