2017 – Leiden

University of Leiden

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.

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.

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.

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).

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.

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.

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.