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Confusion about the public: when is it relevant?

Confusion about the public: when is it relevant?. BMM – Annual Meeting Alicante 16 October 2009 Tjeerd Overdijk VONDST Advocaten. The problem (1):. Watches of the mark XX are well-known among wealthy consumers? among the general public?

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Confusion about the public: when is it relevant?

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  1. Confusion about the public:when is it relevant? BMM – Annual Meeting Alicante 16 October 2009 Tjeerd Overdijk VONDST Advocaten

  2. The problem (1): • Watches of the mark XX are well-known • among wealthy consumers? • among the general public? • For assessing notoriety, confusion etc.: should we look at wealthy consumer and/or general public?

  3. The problem (2): • The profile of bicycle tyres V are claimed to be distinctive sign of origin • among professionals in the trade? • among the general cyclists? • For assessing distinctiveness: should we look at the informed professional in the trading channels and/or general public?

  4. The problem (3): • The brand of a new pharmaceutical drug YY is (is not) confusing for • the end users / patients? • the doctors and/or pharmacists? • For assessing distinctiveness, notoriety, confusion etc.: should we look at end users and/or medical profession?

  5. The general issue: • The ‘public’ addressed by a trade mark is often multiform – different groups of addressees: end consumers; traders; other professionals; different territories; different languages; • Between these groups a trade mark may or may not fulfil its function(s), or fulfil its functions in a different manner; • How do we make the assessments which must take into account “the public”? • When is the public ‘relevant’ public?

  6. When does the issue arise? • Is the sign a trade mark? • Distinctiveness (incl. acquired distinctiveness, mark turned generic) (3, 12 HD; 7, 50(1)b CTMR); • Genuine use (12(1) HD; 50(1)a CTMR); • Notoriety (5(2) HD; 9(1)c CTMR); • Liability to deceive or mislead (3g, 12(2)b HD; 7(1)g CTMR); • Confusion (4(1)b & 5(1)b HD); 9(1)b CTMR); • Advantage or damage (5(2) HD; 9(1)c CTMR) .

  7. The rules: • HD, CTMR, BIPC: “the public”; “in the trade”; • Why should public be ‘relevant’? • ‘Relevant public’ = invention of the courts; • First mention of ‘relevant public’?

  8. The rules – genuine use • There is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function (i.e. to guarantee the identity of the origin of the goods or services), in order to create or preserve an outlet for those goods or services – i.e. noticeable for the relevant public (ECJ 11-03-03 C-40/01, Ajax/Ansul); • Relevant market (public) for genuine use is not only end consumer, but may also consist of distributors (SC 23-12-05, Sidoste / Bonnie Doon) • Even minimal use or use by a single importer can be sufficient (ECJ 27-01-04 C-259/02 La Mer).

  9. The rules – distinctive character • The distinctive character of a trade mark within the meaning of Article 3(1)(b) must be assessed by reference, first, to the goods or services in respect of which registration is sought and, second, to the perception of the relevant persons, namely the consumers of the goods or services. • (ECJ 08-04-03 C-53-55/01 (Linde-Winward-Rado))

  10. ECJ 16-07-98 C-210/96 (Gut Springenhei-de, Tusky / Okd Kreis Steinfurt - ALü) • Ready-packed eggs with the description '6-Korn — 10 frische Eier‘ (six-grain — 10 fresh eggs). According to the company, the six varieties of cereals in question account for 60% of the feed mix used to feed the hens. • Breach of Paragraph 17(1) of the German Foodstuffs and Consumer Goods Law under which misleading descriptions were prohibited.

  11. The average Gut Springenheide consumer • Questions asked to ECJ: • (a) actual expectations or (b) objectified concept of a purchaser? • If (a): informed average consumer or casual consumer? • If (b): Definition of objectified purchaser? • Answer: court must take into account the presumed expectations of an average consumer who is reasonably well-informed and reasonably observant and circumspect.

  12. From Gut Springenheide to Lloyd ECJ 22-06-99 C-342/97 (Lloyd/Loint’s) • Global appreciation of the likelihood of confusion (…), based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components; • (…) perception of marks in the mind of the average consumer [who] normally perceives a mark as a whole; • For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (see, to that effect, Case C-210/96 Gut Springenheide and Tusky [1998] (…). However, account should be taken (…) that the average consumer [makes no] direct comparison between the different marks but [has] imperfect picture of them that he has kept in his mind; • the average consumer's level of attention is likely to vary according to the category of goods or services in question.

  13. The average Gut Springenheide consumer – stricter test or not? • Verkade: ECJ has its eyes on an end user who is more qualified than the average consumer, because of the two adjectives. • Van der Kooij: ‘Average’ has been added to distinguish the normal consumer from the more specialized consumer. • Gielen: The adjectives are merely descriptive for the average consumer, who is rarely in a position to make a direct comparison and has to work with an imperfect recollection of what he has seen.

  14. Consumer is not always ‘average’:CFI 12-06-07 T-441/05 (IVG / OHIM) • Applicant is undertaking specialising in property construction, administration and management and supplies the services to professional or private consumers; • In the light of the specific nature and high price of the transactions generally involved, those services are aimed at an informed public, whose level of attention is higher than that of the average consumer.

  15. Consumer is not always ‘average’:CFI 10-10-07 T-460/05 (B&O / OHIM) • B&O applied for 3-D mark of organ pipe shaped loud-speaker; • top-of-the-range products (suggested retail price EUR 1,750); • marketed through a selective distribution system; • target group is restricted to consumers who are also quality-minded and invest in the product only after careful consideration.

  16. CFI 10-10-07 T-460/05 (B&O / OHIM) • Distribution system or marketing method is immaterial (“may change”??); • in the light of the nature of the goods concerned, in particular, their durable and technological nature, the average consumer displays a particularly high level of attention when purchasing such goods [and] purchases them only after a particularly careful examination; • (Cf. Case C-361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643, paragraph 40 and 41)

  17. The rules: distinctive character (contd) • Vredestein claimed 3D mark for its PERFECT-profile; • 3D mark declared null and void because general public does not perceive the profile of the tyre as a designation of origin; • Mind of professional retailer not relevant.

  18. SC 11-05-01 (Vredestein / Ring 65 – profile of bicycle tyres) • Supreme Court: • Court of Appeal ruled that the professional retailer does not form part of the relevant public, because he will only have an advisory role in the decision to purchase; no predominant influence on decision of end user; • General public will recognize tyre with PERFECT-profile as originating from Vredestein only after receiving advice from professional retailer. [ reference to Burberry’s II ?? ]

  19. ECJ 29-04-04 C-371/02 (Björnekulla / Procordia Food) • Procordia owned trade mark Boston Gurka; • Björnekulla sought revocation claiming that it had become generic name; • Procordia claimed that tm was still distinctive among persons who deal commercially with the product – the relevant class on basis of ‘travaux préparatoires’ of Swedish Law on Trade Marks.

  20. ECJ 29-04-04 C-371/02 (Björnekulla / Procordia Food) • Question referred: • ‘In cases where a product is handled at several stages before it reaches the consumer what is or are, under Article 12(2)(a) HD, the relevant class or classes of persons for determining whether a trade mark has become the common name in the trade for a product in respect of which it is registered? • Shorter: what means ‘in the trade’ in 12(2)(a) HD? • Ruling: in cases where intermediaries participate in the distribution to the consumer or the end user (…), the relevant classes of persons (…) comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with that product commercially.

  21. The rules: distinctive character (contd) • Alcon filed application for CTM BSS for ‘ophthalmic pharmaceutical preparations; sterile solutions for ophthalmic surgery (cl. 5); • Dr Robert Winzer Pharma GmbH filed claim for declaration of invalidity; • Office: BSS is a descriptive indication for ‘Balanced Salt Solution’;

  22. CFI 05-03-03 T-237/01 (Alcon/OHIM) • In view of the intended use of the goods the relevant public must be considered to be made up of ophthalmologists and ophthalmic surgeons throughout the whole of the European Union; • the evidence provided was sufficient to show that, in specialist circles, the term BSS had become customary as a generic indication for ‘sterile solutions for ophthalmic surgery’.

  23. The rules: confusion • Alcon filed application for CTM Travatan for ophthalmic pharmaceutical products (cl. 5); • Opposition from earlier Italian tm Trivastan (similar products); • CFI: the products are medicinal products requiring a doctor’s prescription. The relevant public is composed not only of end users, but also of professionals (doctors who prescribe the product and pharmacists who sell it.

  24. ECJ 26-04-07 C-412/05 (Alcon/OHIM) • the fact that intermediaries such as healthcare professionals are liable to influence or even to determine the choice made by the end-users is not, in itself, capable of excluding all likelihood of confusion on the part of those consumers as regards the origin of the goods at issue; • the role played by intermediaries must be in part balanced against the high degree of attentiveness of users and against ability of users to make those professionals take into account their perception of the trade marks at issue and, in particular, their requirements or preferences.

  25. The rules: language aspects • If a mark is descriptive in one or more particular linguistic areas, it must have acquired distinctive character through use throughout the relevant linguistic area(s); • In the relevant linguistic area(s) the relevant class of persons, or at least a significant proportion must identify the product or service in question as originating from a particular undertaking because of the trade mark. • ECJ 07-09-06 C-108/05 (Europolis) • CFI 15-10-08 T-405/05 (Manpower)

  26. The rules: notoriety & unfair advantageECJ 12-03-09 C-320/07 (NASDAQ) • Opposition by The Nasdaq Stock Market, Inc. under Art. 8(5) CTMR; • the relevant public to be taken into consideration will vary according to the type of injury alleged by the proprietor of the earlier mark; • Injury in the form of ‘drawing benefit’ must be assessed by reference to average consumers of the goods or services for which the later mark is requested.

  27. The rules: notoriety & territorialityECJ 14-09-99 C-375/99 (Chevy) • For protection extending to non-similar products or services, a trade mark must be known by a significant part of the public concerned by the products or services which it covers (not same as general public); • In the Benelux, it is sufficient if the trade mark is known by a significant part of the public concerned in a substantial part of that territory, which part may be a part of one of the countries composing that territory.

  28. The rules: notoriety & territorialityECJ 06-10-09 C-301/07 (PAGO) • For protection afforded in Article 9(1) CTMR, a CTM must be known by a significant part of the public concerned by the products or services covered by that trade mark; • In view of the facts of the main proceedings, the territory of the Member State in question (Austria) may be considered to constitute a substantial part of the territory of the Community.

  29. Conclusions: • Relevant public = average member of target group; • Sometimes trade mark has more than one target group (end users and professionals in distribution chain) -> then caution: • Unclear how to balance perception of either group (“depending on features of market” and ‘reverse influence’ (Alcon)) • Tendency: end user rules the waves! • The ‘relevant public’ may vary according to the type of injury alleged.

  30. Contact:tjeerd.overdijk@vondst-law.com+31(0)20 504 2000

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