European University Institute
Picture of Florence by Steve Hersey
http://flickr.com/photos/sherseydc/2954982676/

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 [34] 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 [49] to [54] 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 [55]. 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 [54] to [65], 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).