Highlights from Luxembourg: A Selective Review of Recent CJEU Trade Mark Case Law Gordon Humphreys Chairperson of 5 th Board of Appeal, OHIM Fordham’s 23rd Annual Intellectual Property Law & Policy Conference 8-9 April 2015, Cambridge, UK

Judgment of 10 July 2014 in Case C-421/13 Apple Inc. v Deutsches Patent- und Markenamt - DESIGN OF THE LAYOUT OF A RETAIL STORE Apple registered the above as ‘layout of flagship retail store’ in USA and several European countries but it was refused in Germany as one consisting merely of basic store elements and lacking distinctiveness. Bundespatentgericht (Federal Patent Court of Germany) questioned the CJEU:  Is representation without any indication of size/proportions sufficiently distinctive?  If yes, is the representation of a retail store in which services are provided to be treated in the same way as packaging?

Judgment of 10 July 2014 in Case C-421/13 Apple Inc. v Deutsches Patent- und Markenamt - DESIGN OF THE LAYOUT OF A RETAIL STORE In the Court’s view:  Graphic representation of a retail store via ‘lines, curves and shapes’ can function as a mark, even without indication of size/proportions.  Assessing distinctive character of the sign is for the competent national authority.  The layout of a flagship store is also registrable for services (e.g. in-store demonstrations), if these do not form an integral part of the offer for sale of those goods Case remitted and now with the German Patent Court

Judgment of 10 July 2014 in Case C-421/13 Apple Inc. v Deutsches Patent- und Markenamt - DESIGN OF THE LAYOUT OF A RETAIL STORE Conclusions:  Glimmer of hope for franchise operators intending to obtain overall protection rather than being engaged in other legal procedures (unfair competition, passing off).  CJEU showing open-mindedness to non-traditional marks.  Registration continues to depend on distinctiveness, on the design being different from the market norms and not purely functional.  Solid evidence including that of acquired distinctiveness is probably going to be needed.  Question remains if such evidence for non-word marks must cover the whole EU or merely a sufficiently important part of it (probatio diabolica).

Joined Cases C ‑ 581/13 P and C ‑ 582/13 P, Intra-Presse SAS v Office for Harmonisation in the Internal Market (Trade Marks and Designs) and Golden Balls Ltd - GOLDEN BALLS/BALLON D’OR Contested CTMA Earlier CTM GOLDEN BALLSBALLON D’OR Cl. 9, 28 and 41Various G & S including Cl. 9, 28 and 41 Grounds of opposition: Art. 8(1)(b) and 8(5), opposition rejected based on sufficient visual and phonetic dissimilarity BoA considered the marks ‘extremely similar’ and therefore upheld the opposition under Art. 8(1)(b). No consideration of dissimilar G & S under Art. 8(5). GC annulled the BoA’s decision and held: 1.Slight conceptual similarity was insufficient to counteract their visual and phonetic dissimilarities 2.The signs were not similar enough for Art. 8(5) to apply.

Joined Cases C ‑ 581/13 P and C ‑ 582/13 P, Intra-Presse SAS v Office for Harmonisation in the Internal Market (Trade Marks and Designs) and Golden Balls Ltd - GOLDEN BALLS/BALLON D’OR Appeal by the opponent claiming: => Distortion of facts – dismissed as unfounded since only points of law and not fact are examined by CJEU. That the French speaking public’s understanding of English is a question of fact. =>Flawed and incomplete conceptual assessment – CJEU held: GC had considered EN/FR relevant public in the conceptual analysis.  Article 8(5) wrongly ignored – CJEU agreed that a lesser similarity than for Art. 8(1)(b) may suffice to trigger an Art. 8(5) examination, if reputation exists (Ferrero v OHMI, C-552/09 P). Case remitted to OHIM BoA.

Joined Cases C ‑ 581/13 P and C ‑ 582/13 P, Intra-Presse SAS v Office for Harmonisation in the Internal Market (Trade Marks and Designs) and Golden Balls Ltd - GOLDEN BALLS/BALLON D’OR Conclusions A thorough multilingual search is a must before applying for a CTM. Linguistic zones continue to be antagonistic to the unitary character of the CTM. Some words may be understood by a wider public without them having a meaning in their mother tongue. Any degree of similarity between signs will lead to examination of whether Article 8(5) applies.

Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. - TRIPP TRAPP Preliminary reference from the Dutch Supreme Court on the interpretation of Article 3(1)(e)(i) and (iii) TMD

Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. - TRIPP TRAPP  Consistent interpretation of all the objectives set in Article 3(1)(e) is needed (i.e. to prevent monopolies of technical solutions or functionality and permanent extension of other IP rights), as well as a case-by-case analysis of the most important elements of the sign, either looking at the individual components one by one or in an overall context (‘Lego’).  Decorative or imaginative elements, not inherent to the generic function of the goods and playing an important or essential role, will avoid application of Article 3(1)(e)(i).  No trade mark monopoly of ‘a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors’.

Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. - TRIPP TRAPP  Art. 3(1)(e)(iii) may apply where ‘…in addition to its aesthetic function, the product concerned also performs other essential functions’.  The ‘... presumed perception of the sign by the average consumer is not a decisive element when applying the ground for refusal set out in the third indent of the latter provision, but may, at most, be a relevant criterion of assessment for the competent authority in identifying the essential characteristics of that sign’.  Article 3 (1)(e)(iii) ‘…may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value. The target public’s perception of the shape of that product is only one of the assessment criteria which may be used to determine whether that ground for refusal is applicable’.

Judgment of 18 September 2014 in Case C-205/13, Hauck GmbH & Co. KG v Stokke A/S et al. - TRIPP TRAPP Conclusions: The precise meaning of ‘essential characteristic inherent to the generic function of a product’ in the context of Article 3(1)(e) remains unclear and requires case-by-case interpretation. Seems likely that the Dutch court’s findings that the Tripp Trapp chair's essential characteristics are inherent to its functions as ‘a safe, comfortable and reliable children's chair’ is likely to secure its invalidation. Contrary to what the CJEU held, the Lego judgment requires an overall assessment in determining the essential characteristics of a sign. Delicate balance between consumer interests and competition. For 3(1)(e)(iii), the perception of the relevant public may be used but will not be conclusive. Reluctance to permit accumulation of IP rights.

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