Common sense prevails in trade mark transfer dispute

The High Court of Justice has interpreted Article 17(2) of theCommunity Trade Mark Regulation, which provides that ‘[a]transfer of the whole of the undertaking shall include the transferof the Community trade mark’, in a commonsense mannerthat provides that the Community trade mark shall follow thetransferred business. The Court gave great weight to facts andcircumstances of the relevant transactions in giving effectto the transfer of the trade mark rights.     

Community registered design invalidated by prior registered trade mark

In a series of four decisions, the OHIM Invalidity Divisionhas declared invalid Community registered designs 00016245-0001to 0004 in the light of international trade mark registration810732, designating various European Union Member States. Thisis believed to be the first time that a Community registereddesign has been declared invalid on the basis of an earliertrade mark right.     

Demonstrating 'use' of an earlier registered mark in CTM opposition proceedings

An earlier registered trade mark may serve to oppose a laterapplication to register a Community trade mark, notwithstandingthat the earlier mark is not used in the form in which it isregistered, so long as the actual use had not destroyed thedistinctive character of the earlier mark.     

Court turns a DEF ear to opponent's entreaties

Where the previous owner of a company gives a third party theauthority to register trade marks abroad in its own name, thatauthority remains an effective basis upon which to apply fora Community trade mark even where events subsequent to the givingof the authority would appear to be of contrary effect.     

The overlap between registered Community designs and Community trade marks

Legal context: Community trade marks and registered Communitydesigns have co-existed since April 2003. The relevant Europeanlegislation permits some subject matter to be registered undereither or both of these regimes. Key points In the absence of an express prohibition, it wasperhaps inevitable that the owners of distinctive designs wouldconsider registering them as trade marks and, conversely, thatthe owners of certain non-conventional trade marks might takeadvantage of opportunities for cheap and speedy registrationunder the designs system. The ability to obtain registered Communitydesigns and trade marks for the same subject matter is consideredhere. Practical significance A party seeking to protect the designof a distinctive product shape or its packaging may be ableto register it as a Community trade mark where it has missedthe boat for claiming novelty as a registered design, or wherea pre-existing design right is about to expire. On the otherhand, a distinctive and new logo or get-up which needs quickand cheap protection may benefit from being registered as aCommunity design. Neither the rights owners, nor those againstwhom they seek to assert their rights, should accept the validityof a registered Community design without question since thereis no substantive examination procedure. However, where valid,it can provide a powerful alternative to a trade mark and auseful additional weapon against unfair competition.     

Keywords,case law and the Court of Justice: the need for legislative intervention in modernising European trade mark law

Recent preliminary references to the CJEU on online keyword advertising and registered trade mark infringement have exposed the challenges facing EU registered trade mark law in its response to new technologies. These cases and the challenges they pose provide a timely prism through which to examine the European trade mark law-making process and the role of the CJEU within that process. This article will employ an analysis of the way in which the CJEU has developed certain key new aspects of the law on ‘infringing use’ to explore concerns over the CJEU's role and approach. It will be argued that, driven by policy considerations, the CJEU has acted creatively to develop the law of infringement in ways that cannot be sustained by the TMD and CTMR and which are likely to cause increasing uncertainties going forward. With the European Commission currently considering reform of Trade Marks Directive 2008/95/EC and Community Trade Mark Regulation 207/2009/EC, this paper will argue that there is a need for more comprehensive and forward-looking legislative intervention than has yet been proposed and that such intervention will be essential to restoring balance in the European trade mark law-making process.     

Court of First Instance takes firm line on appeals against refusal to register Community trade marks of marginal distinctiveness

An application to register as a Community trade mark the wordsCARGO PARTNER in respect of the transport, packaging, and storageof goods failed for lack of distinctive character.     

VORSPRUNG DURCH TECHNIK ineligible for CTM registration

OHIM refused registration as a Community trade mark of the wordsVORSPRUNG DURCH TECHNIK in the name of Audi AG for goods andservices in Classes 9, 14, 25, 28, 37–40, and 42 on thegrounds that the mark was devoid of any distinctive character.Audi's action for annulment of this decision was dismissed bythe CFI.     

Community trade mark case law round-up 2006

Legal Context: This article looks at the important decisions of 2006 on theCommunity Trade Mark made by the Court of First Instance, theEuropean Court of Justice and the OHIM. These cases concernthe application of Council Regulation 40/94 on the CommunityTrade Mark, and also preliminary rulings from the European Courtof Justice on the interpretation of Council Directive 89/104(the Trade Mark Directive). Key Points: The volume of case law relating to Community trade marks, notto mention the variety of official languages in which the lawis interpreted, makes it almost impossible for even the conscientiouspractitioner to keep abreast with developments as they occur. This article provides an overview of the shifts in Communitytrade mark practice, in terms of not only the relatively accessiblesubstantive law but also the far more diffuse areas of procedurallaw and Office practice. In seeking to review and explain these shifts, the authors haveadopted a view of the case law that is functional rather thanphilosophical. In doing so, they lay bare the manner in whichthe institutions that administer and adjudicate Community trademark issues interrelate to one another. Practical Significance: Practitioners can quickly find the important decisions from2006 relating to particular articles of the Council Regulation40/94 on the Community Trade Mark. This article provides an overview of the most significant trademark cases decided in 2006 by the European Courts of Justiceand the OHIM Boards of Appeal. The article enables practitionersto access rapidly the key decisions of 2006. The cases discussed concern the application of Council Regulation40/94 on the Community trade mark (‘CTMR’), CommissionRegulation 2868/95 implementing the CTMR (‘CTMIR’),and Council Directive 89/104 (the ‘Trade Mark Directive’).     

Coexistence in Community trade mark disputes: conditions and implications

Legal context. A defence based on coexistence has no legal basisin the Trade Mark Directive or in the Community Trade Mark Regulation.Still, a practical approach to Community trade mark conflictsrequires attention to the situation in the marketplace whereconflicting marks may be shown to coexist without any currentconfusion or dilution being reported. Key points. Trade mark coexistence may sometimes be persuasive,the strict requirements being laid down by the Community courts.Through a detailed review of the case-law of the Community courtsand OHIM's Boards of Appeal, this article explains the conditionsfor and the consequences of proving the coexistence of the conflictingmarks in cases based on likelihood of confusion or dilution. Practical significance. Consideration must also be given tothe effects of third parties' neighbouring marks which may diminishan earlier mark's distinctive character. Accordingly, this articlefurther addresses the issue of whether the scope of protectionof a mark may be damaged by the use of later marks in the lightof the ECJ Judgment in the preliminary ruling Case C-145/05Levi Strauss v Casucci Spa.     

Significant 2007 case law on the Community trade mark from the ECJ and the CFI

Legal context: This article looks at the important decisions of 2007 on theCommunity trade mark made by the Luxembourg courts. Key points: The cases discussed concern the application of Council Regulation(EC) No. 40/94 of 20 December 1993 on the Community trade mark(the ‘CTMR’), Commission Regulation (EC) No. 2868/95of 13 December 1995 implementing the CTMR (the ‘CTMIR’),and the Council Directive 89/104/EEC of 21 December 1988 (‘Directive89/104’). Practical significance: The purpose of this article is to give a quick overview of themost significant trade mark cases decided in 2007 by the Luxembourgcourts. The article has a practical bias and is aimed at readerswho wish to find quickly the key decisions of 2007.     

The irresistible force of freedom of speech meets the immovable object: trade mark law in South Africa

Legal context. The right of freedom of expression is a fundamentalright entrenched in the Bill of Rights incorporated in the SouthAfrican Constitution. While intellectual property rights donot enjoy this status, they are internationally recognised rightsgranted by a law of general application and may thus in termsof the Constitution limit the fundamental rights protected inthe Bill of Rights, and more particularly the right of freedomof expression. Where the enforcement of trade mark rights comes into conflictwith the right of freedom of expression, the two rights mustbe weighed up against one another and the competing interestsof the owner of the trade mark against the claim of expressionof a user without permission must be considered. The departurepoint of the weighing up process is that neither right is superiorto the other. Key points. This article discusses an action brought by SabmarkInternational, which claimed that Laugh It Off Promotions CCinfringed its registered trade mark BLACK LABEL in respect ofbeer by using a corruption of this mark with strong politicalundertones as ornamentation on T-shirts sold by it. It was claimedthat the offending use diluted Sabmark's registered trade mark.In an appeal, the Constitutional Court rejected the claim onthe basis that Sabmark had not shown that the offending usewas likely to cause economic damage to it. Practical significance. The case in effect equated trade markrights with rights enshrined in the Bill of Rights and thusgave important recognition to intellectual property rights.It created a precedent in intellectual property law, if notin South African law in general, in that the constitutionalcourt overruled a decision of the Supreme Court of Appeal (SCA)and in effect ruled that the SCA had not interpreted the relevantprovision of the Trade Marks Act correctly.     

A Case for Applying the Theoretical Semiotics in the Practice of Trade Mark Law

The application of semiotics in trade mark law is an interdisciplinary endeavour in its infancy. The author traces its genesis in recent years and situates it within the context of general theoretical approaches, in particular of an interdisciplinary kind, appearing in the trade mark law literature in the past. The purposes for which such theories are applied, and questions of methodology arising from this, are examined. In particular, it is observed that semiotic theory has, by and large, been used for the purpose of debating legal policy in trade mark law (especially in the United States), and that this has given rise to argument about the extent to which semiotic theory can exert any normative force of its own upon the law. This article offers a different perspective. It is sought to demonstrate the usefulness of theoretical semiotics in solving trade mark law questions in practice. The author emphasises that this involves no threat to orthodox legal problem-solving methodology (whatever one may think of the orthodoxy), and in particular does not require the normative use of semiotic theory. Taking as a starting point the concept of ‹trade mark use’, and having regard to trade mark law and literature in Europe, the United States and Australia, the author proceeds to demonstrate the proposed approach by reference to some current problems in trade mark infringement.     

Whose trade mark rights? What the Microsoft case means for trade mark owners

Legal context. The article considers the influence of the commissionruling in the Microsoft case, forcing Microsoft to use its WINDOWS-trademark for an ‘unbundled’ version of the program inthe light of the trade mark owner's properties rights. The scopeof these rights is determined by the function of the trade markand the rights that the trade mark laws confer to the ownerin case of infringement. Key points. Trade marks are protected as property rights undercommunity law. They are the embodiment of past investments andtransform the reputation of the owner into a bankable asset.Consumers rely on trade mark owners' control over quality. Thisis mirrored by the rights of the trade mark owner to stop interferencewith quality and image, in particular in the context of resaleof altered products. Any interference that would be considereda trade mark infringement if committed by a private party shouldbe considered an interference with the protected property rightif caused by a government agency. This interference is not justifiedby the public interest because trade mark rights also embodyimportant public interests. Practical significance. If the analysis proposed in the articleis followed, intellectual property rights have to be given greaterweight in shaping antitrust remedies.     

To a hammer, everything looks like a nail

Legal context: Trade mark oppositions are routinely filed by brand owners againstan offending application or registration in either a pre-grantor a post-grant procedure before the respective national trademark office, but in Japan, there are several nuanced trade markopposition practice differences that should not be taken forgranted. Key issues: In light of persisting and recent abysmal trade mark opponentsuccess rates, favourable trade mark invalidation appeal (IA)data, and the inherent procedural handicaps against opponentsin Japan's current trade mark opposition system, Trade markowners would be better served by using Japan's trade mark IAprocedures to police against conflicting trade marks in Japanand not mechanistically file oppositions in Japan as one couldin other important trade mark jurisdictions like the USA orEurope. Practical significance: Japan's trade mark opposition and IA procedures offer complementaryoptions to police against conflicting trade marks so choosingthe right procedure is critical to its achieving the mission'ssuccess in curbing competitors' marks in the world's secondlargest free market economy.     

Don't be a Martyr to Res Judicata

The High Court rules that a party who unsuccessfully opposesa trade mark application cannot later re-challenge the validityof the same trade mark by way of defence to an infringementclaim.     

Comparative advertising and trade mark infringement: some guidance from the Netherlands

A recent decision of one of the five Dutch Appeal Courts hasclarified the relationship between trade mark law and advertisinglaw, holding that a trade mark owner cannot successfully accumulatetrade mark and advertising claims: where publicity complieswith the standards of advertising law, such use cannot thusamount to trade mark infringement.     

ECJ denies relevance of 'acquired attractiveness' for registration of shape marks

The ECJ rejects the suggestion of the Dutch Supreme Court thata shape which gives substantial value to the product (in thiscase, a specific stitching on G-Star jeans) may neverthelessbe registered as a trade mark if the shape's attractivenesshas predominantly become the result of its recognition by thepublic as a distinctive sign.