David Llewelyn Head of IP, White & Case (London) Director, IP Academy, Singapore Visiting Professor, King’s College, London. RECENT DEVELOPMENTS IN EU TRADE MARK LAW 2005-2006. TRADE MARKS – APPELLATE SYSTEM and ART. 234 EC. OHIM Board of Appeal. References from National Courts.
Head of IP, White & Case (London)
Director, IP Academy, Singapore
Visiting Professor, King’s College, London
OHIM Board of Appeal
References from National Courts
Court of First Instance
Focus on keeping marks available for common use ?
‘DOUBLEMINT’(ECJ)ABSOLUTE GROUNDS Distinctiveness / Descriptiveness… The Story So Far
Combinations of descriptive words need to create a phonetic or visual impression to be held distinctive
Public interest considerations require that distinctive signs are “not unduly restricted” and descriptive signs are “kept free for all”
Can the elements of a composite mark have distinctive character in their own right?
Nestlé SA v. Mars UK Ltd.
Public perception of the mark is of two non distinctive words
BioID v. OHIM
Can a mark be registered in a Member State if it is descriptive of the relevant product or service in the language of another Member State?
‘MATRATZEN’ (AG Jacobs)
“Seen as a whole the mark applied for fails to differentiate itself materially from the ordinary shape of the containers concerned, which are commonly used in trade, but instead appears to be a variant of those shapes”
EUROCERMEX SA v. OHIM
Appeal should be dismissed
ECJ cannot revise CFI’s assessment of facts
DEUTSCHE SISI-WERKE GMBH v. OHIM (ECJ)
NESTLÉ WATERS SA v. OHIM (CFI)
Will consumers be confused as to whether this is a medicinal product?
Invalidity and revocation presuppose ACTUAL DECEIT or SUFFICIENTLY SERIOUS RISK OF DECEPTION
Reasonably circumspect consumers deemed to know that there is not a link between size of publicity markings relating to an increase in a product’s quantity and the size of that increase
The AP to the ECJ:
Can a sign consisting of a person’s name validly be registered or used as a trade mark by others if that registration or use causes the relevant public erroneously to think that such person is in some way connected with the business that owns and uses the mark?
ELIZABETH FLORENCE EMANUEL v. CONTINENTAL SHELF
“There may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing the company name of another party and a registered mark which has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein’
MUEHLENS v. OHIM
Phonetic similarity outweighed by conceptual and visual differences
Urgent to improve harmonisation
Appeal dismissed. No comment on national court.
“Conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned”
CLAUDE RUIZ-PICASSO & OTHERS v. OHIM
GILLETTE v. LA LABORATORIES OY
‘All Parason FLEXOR® and all Gillette SENSOR® HANDLES
are COMPATIBLE with this razor blade’ !
LEVI STRAUSS & CO. v. CASUCCI SPA
Infringement to be determined on the basis of public’s perception of trade mark at the time the use of similar mark began.
Order cessation of use not appropriate when infringed mark has lost distinctiveness following inactivity of proprietor;
Goods in transit but which are not cleared by customs have not been “imported” into the EU
No free circulation no infringement
CLASS INTERNATIONAL v. COLGATE PALMOLIVE COMPANY & OTHERS
Protection for retail services… a breakthrough
PRAKTIKER BAU UND HEIMWERKERMARKTE AG