Academy of European Law

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.
6. «Störerhaftung»
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.