MIPLC, December 2014 EU Trademark Law: Introduction Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

EU Trademark Law Trade Mark Directive 89/104/EEC (1988) = 2008/95/EC (2008) TMD Community Trade Mark Regulation 40/94 (1993) = 207/2009 (2009) CTMR

National trademark offices

Regional Benelux Office

Office for Harmonization in the Internal Market (OHIM)

CTM = unitary right ‘A Community trade mark shall have a unitary character. It shall have equal effect throughout the Community: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle shall apply unless otherwise provided in this Regulation.’ (Art. 1(2) CTMR)

In practice: coexistence CTM not intended to replace national/ regional trademark systems equality of rights: CTM and national/ regional trademarks mutually exclusive but double protection possible in respect of the same mark for the same owner conversion and seniority to regulate interface between the CTM and national/ regional trademark rights

Open question: territoriality CTM is a unitary right for the entire EU territory –EU-wide acquisition of distinctive character? –EU-wide use required to maintain CTM? –territorial differences in scope of protection when it comes to CTM with a reputation? –territorial limits on prohibition and relief? deep impact on attractiveness of national/regional systems

Kinds of marks Rationale of protection Protection requirements –graphical representation –distinctiveness Need to keep free Contents

Kinds of marks

‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.’ Art. 15(1) TRIPS

‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’ Art. 2 TMD

Visible signsNon-visible signs words, letters, numerals drawings, colors, pictures 3D hologram motion position sound (audio) smell (olfactory) capable of being represented graphically? Overview of potential marks

from the use of signs to distinguish goods and services to the development of a unique brand experience for all senses Underlying marketing strategy

“American Express”, “Boss”, “Holiday Inn”, “Microsoft”, “Pizza Hut”, “Puma” “Mars”, “McDonald’s”, “Mercedes Benz”, “Ralph Lauren”, “Jil Sander” “Adidas”, “Kit Kat”, “Kodak”, “Reebok” “BMW”, “CNN”, “IBM”, “M&M”, “YSL” “A6”, “501”, “No. 5”, “S 500”, “4711” Words, letters, numerals

Drawings, pictures, colors

Shapes

the roar of a lion? the tune of a mobile phone? an engine noise? the smell of fresh- cut green grass? Audio marks, smell marks

Example of a non-mark

‘[t]he mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation.’ (para. 10) CJEU, 25 January 2007, case C-321/03, Dyson/Registrar of Trade Marks

‘…the holder of a trade mark relating to such a non- specific subject-matter would obtain an unfair competitive advantage […], since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.’ (para. 38) subject matter = mere product property no ‘sign’ in the sense of the Directive CJEU, 25 January 2007, case C-321/03, Dyson/Registrar of Trade Marks

CJEU, 10 July 2014, case C-421/13, Apple Flagship Store ‘the distinctive design and layout of a retail store’ (para. 9)

CJEU, 10 July 2014, case C-421/13, Apple Flagship Store in this case: concrete representation ‘...that a representation [...] which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings.’ (para. 19) distinctiveness conceivable if significant departure from norm in the sector (para. 20)

CJEU, 10 July 2014, case C-421/13, Apple Flagship Store therefore: it constitutes a sign ‘Consequently, such a representation satisfies the first and second conditions [...] without it being necessary [...] to attribute any relevance to the fact that the design does not contain any indication as to the size and proportions of the retail store that it depicts...’ (para. 19) no comparable competition concerns? scope of protection as a solution?

Individual and collective marks

individual marks –holder: individual enterprise –identification of an individual enterprise as the source of goods or services collective marks –holder: association –focus on specific product characteristics certification marks –holder: control institution –guarantee of a specific product characteristic Individual and collective marks

Collective marks

Rationale of protection

origin function –identification of enterprises as the commercial source of goods or services quality function –expectations of consumers –encouragement to maintain the attained quality standard communication function –additional information: lifestyle, attitudes –trademark image Trademark functions

origin distinctive character rights of a defensive nature communication reputation/ repute rights serve exploitation purposes exclusive link with a sign creation of a brand image advertising quality control Resulting business strategy

Recognition of origin function ECJ, 12 November 2002, case C-206/01, Arsenal/Reed ‘In that context, the essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.’ (para. 48)

Recognition of communication function CJEU, 18 June 2009, case C-487/07, L’Oréal/Bellure ‘These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising.’ (para. 58)

from a description of how trademarks function to a sound justification of the grant of protection Sufficient theoretical groundwork?

Economic theory origin function –regulation of supply and demand –search cost argument communication function –protection of investment? –incentive rationale? –competition on mature markets? –easier access to foreign markets?

producercompetitor consumer ensuring honest commercial practices consumer protection contribution to a functioning market Market transparency

EU Charter of Fundamental Rights Art. 17(2): right to property ‘Intellectual property shall be protected.’ Art. 11(1): freedom of expression and information ‘…shall include freedom to hold opinions and to receive and impart information and ideas…’ Art. 16: freedom to conduct a business ‘…in accordance with Union law and national laws and practices is recognised.’

EU Charter of Fundamental Rights Art. 52(1): scope and interpretation ‘Any limitation on the exercise of the rights and freedoms recognised by this Charter must be provided for by law and respect the essence of those rights and freedoms.’ ‘Subject to the principle of proportionality, limitations may be made only if they are necessary and genuinely meet objectives of general interest recognised by the Union or the need to protect the rights and freedoms of others.’

‘Nevertheless, whatever the protection afforded to innovation and investment, it is never absolute. It must always be balanced against other interests, in the same way as trade mark protection itself is balanced against them. I believe that the present cases call for such a balance as regards freedom of expression and freedom of commerce.’ (para. 102) CJEU, Google/Louis Vuitton, Opinion AG Poiares Maduro

‘...that the listings uploaded by users to eBay’s marketplace are communications protected by the fundamental rights of freedom of expression and information provided by Article 11 of [the] Charter of Fundamental Rights of the EU and Article 10 of the European Convention on Human Rights.’ (para. 49) CJEU, L’Oréal/eBay, Opinion AG Jääskinen

‘...not every adverse affect on [communication, investment or advertising] functions justifies the application of Article 5(1) of Directive 89/104. The protection of those functions on the basis of that provision, first, must not undermine the requirements of specific protective rules and, second, must respect overriding other interests.’ (para. 59) CJEU, Viking Gas/Kosan Gas, Opinion AG Kokott

Protection requirements

‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’ Art. 2 TMD

Core requirements procedural: graphic representation (register transparancy) substantial: distinctive character (market transparancy) basic: constituting a sign (undistorted competition)

Graphical representation

at issue: registration of a smell mark (cinnamic acid methyl ester) ‘... that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.’ ECJ, 27 December 2002, case C-273/00, Sieckmann

in case of an olfactory sign (-) ‘In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.’ ECJ, 27 December 2002, case C-273/00, Sieckmann

at issue: registration of a short melody text description: ‘The trademark consists of the first nine notes of Für Elise.’ ‘... at the very least lacks precision and clarity and therefore does not make it possible to determine the scope of the protection sought.’ (para. 59) CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

sequence of notes: ‘E, D#, E, D#, E, B, D, C, A’ ‘...neither clear, nor precise nor self-contained, does not make it possible, in particular, to determine the pitch and the duration of the sounds forming the melody in respect of which registration is sought and which constitute essential parameters for the purposes of knowing the melody and, accordingly, of defining the trade mark itself.’ (para. 61) CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

notation: ‘On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.’ (para. 62) CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

notation: ‘Even if such a representation is not immediately intelligible, the fact remains that it may be easily intelligible, thus allowing the competent authorities and the public, in particular traders, to know precisely the sign whose registration as a trade mark is sought.’ (para. 63) CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

Distinctiveness

trademark = means of distinction distinctiveness = basic requirement to be determined with regard to specific goods or services (principle of speciality) –‘Ajax’ for a soccer team –‘Ajax’ for a cleaning detergent depends on social and cultural context case-by-case analysis

Distinctive signs? indication of product features –‘makes clean’ for a cleaning detergent use of generic terms –‘apple’ for apples –‘camel’ for camels –‘diesel’ for petrol...(-) fanciful signs –‘persil’ for a cleaning detergent signs adopted arbitrarily with in respect of goods or services –‘apple’ for computers –‘camel’ for cigarettes –‘diesel’ for jeans...(+)

In practice: low threshold

regardless of recognition of need to keep descriptive signs free ‘... that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods.’ CJEU, 12 February 2004, case C-265/00, Biomild

A combination of descriptive elements is itself descriptive, unless ‘...there is a perceptible difference between the neologism and the mere sum of its parts.’ decisive: different impression CJEU, 12 February 2004, case C-265/00, Biomild

In practice: low threshold

‘…that all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message. It is clear, however, […] that those marks are not, by virtue of that fact alone, devoid of distinctive character.’ (para. 56) CJEU, 21 January 2010, case C-398/08 P, Audi/OHIM

‘…in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public.’ (para. 57) CJEU, 21 January 2010, case C-398/08 P, Audi/OHIM

may exist from the very beginning (arbitrarily-chosen, strong trademark) can be acquired or become stronger through use (secondary meaning) but may also decrease (dilution) may even be lost (trademark becoming a generic term) No constant level of distinctiveness

secondary meaning genericism dilution (-) (+) (-) Overview of influence factors

‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’ An inescapable protection automatism?

renewable indefinitely copyright law: as of creation 70 years post mortem auctoris in the EU patent law: as of filing date 20 years trademark law: use or filing date Even though protection is renewable?

distinctive signs to be protected as long as they are used as source identifiers And the system is static?

other IP rights (e.g. copyright and patents) are protected only for a limited period of time Instead of supporting cyclic innovation?

Need to keep free

signs excluded from protection inherently distinctive signs acquisition of distinctiveness through use (conditional acceptance) exclusion of signs acceptance on certain conditions limitation of the scope of protection Available balancing tools

Exclusion of Signs

Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: f)trade marks which are contrary to public policy or to accepted principles of morality;...

Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: g)trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;...

Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: h)trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’.

exclusion of armorial bearings, flags, and other State emblems of Union countries exclusion of armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations Art. 6ter PC

Art. 3(2) TMD Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: c)the trade mark includes badges, emblems and escutcheons other than those covered by Article 6ter of the Paris Convention and which are of public interest...

Extensions possible at the national level

signs consisting of a shape resulting from the nature of the goods themselves necessary to obtain a technical result giving substantial value to the goods (Art. 3(1)(e) TMD) Further exclusions

fundamental distinction between the trademark and the product freedom of competition (need to keep product features free) preservation of the public domain (no conflict with cyclic innovation) Need for shape exclusions

Example technical subject matter

‘… to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors.’ (para. 78) no monopolisation of decisive product features safeguarding freedom of competition CJEU, 18 June 2002, case C-299/99, Philips/Remington

‘In refusing registration of such signs, Article 3(1)(e), second indent, of the Directive reflects the legitimate aim of not allowing individuals to use registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions.’ (para. 82) no artifical extension of the term of patent protection CJEU, 18 June 2002, case C-299/99, Philips/Remington

static trademark protection vs. cyclic innovation in copyright and patent law Conflict between the protection systems

patent protection expired reappropriation via trademark law? Example technical solutions

‘…the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.’ (para. 45) Lego brick qualified as functional shape alternatives not decisive (para. 55) CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

result: technical know-how remains free after patent expiry costs: risk of confusion/unfair free riding? ‘In the present case, it has not been disputed that the shape of the Lego brick has become distinctive in consequence of the use which has been made of it and is therefore a sign capable of distinguishing the appellant’s goods from others which have another origin.’ (para. 40) CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

Example industrial design

exclusion of substantial value shapes relevant: value due to beauty or attractiveness irrelevant: value due to trademark recognition Benelux Court of Justice, NJ 1989, 834, Burberrys I

‘…the shape of a product which gives substantial value to that product cannot constitute a trade mark […] where, prior to the application for registration, it acquired attractiveness as a result of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the product in question.’ (para. 28) traditional Benelux distinction overruled? CJEU, 20 September 2007, case C-371/06, Benetton/G-Star

General Court, 6 October 2011, case T-508/08, Bang & Olufson

need to prevent monopoly also in the case of substantial value shapes ‘Like the ground for refusal to register that applies to the shapes of goods which are necessary to obtain a technical result, the ground that concerns refusal to register signs consisting exclusively of shapes which give substantial value to the goods is to prevent the granting of a monopoly on those shapes.’ (para. 66)

General Court, 6 October 2011, case T-508/08, Bang & Olufson this need arises in particular in the case of specific design ‘Indeed, the shape for which registration was sought reveals a very specific design and the applicant itself admits [...] that that design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value.’ (para. 74)

General Court, 6 October 2011, case T-508/08, Bang & Olufson this need arises in particular in the case of specific design ‘Furthermore, it is apparent [...] that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.’ (para. 75)

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

rationales underlying shape exclusions competition: no monopoly on essential product characteristics term extension: no evergreening of rights with limited period of protection CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

need to safeguard competition in case of shape resulting from nature of the goods not only when indispensable (natural and regulated products) but also when inherent to the generic function ‘…that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration.’ (para. 25)

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke no artificial extension of limited protection in the case of substantial value shapes catalogue of essential characteristics –nature of the category of goods concerned –artistic value of the shape in question –dissimilarity from other shapes on the market –substantial price difference –promotion strategy accentuating aesthetic characteristics (para. 35)

copyright protection limited in time term extension via trademark law? accumulation of rights possible in many cases Example literary and artistic works

difference justified because of substitutability? Literary and artistic works

Pierre Bourdieu

Conditional Acceptance (Acquired Distinctiveness)

secondary meaning (-) (+) Degrees of distinctiveness

Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: b)trade marks which are devoid of any distinctive character;...

Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: c)trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;...

Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: d)trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;...

Art. 3(3) TMD in these cases, the exclusion from trademark protection is less absolute backdoor: acquisition of distinctive character in consequence of use in trade ‘A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.’

Example geographical indications

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee Windsurfing Chiemsee –designs and sells sports clothing in the Chiemsee area (manufactured elsewhere) –registered ‘Chiemsee’ as a picture trade mark in the form of various graphic designs Huber and Attenberger –also sell sports clothing in the Chiemsee area –use the designation ‘Chiemsee’ in different graphical form

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee distinctive character acquired by Windsurfing Chiemsee? ‘In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings.’ (para. 49)

actual situation as a starting point goods or services covered by the mark expectations of the average consumer of this category of goods Concrete assessment needed

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee balancing of collective and individual level of reputation ‘…regard must be had in particular to the specific nature of the geographical name in question. Indeed, where a geographical name is very well known, it can acquire distinctive character under Article 3(3) of the Directive only if there has been long-standing and intensive use of the mark by the undertaking applying for registration.’ (para. 50)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee particular efforts required if geographical name already linked with certain goods ‘A fortiori, where a name is already familiar as an indication of geographical origin in relation to a certain category of goods, an undertaking applying for registration of the name in respect of goods in that category must show that the use of the mark — both long-standing and intensive — is particularly well established.’ (para. 50)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee relevant factors (para. 51) –market share held by the mark –how intensive, geographically widespread and long-standing use of the mark has been –the amount invested by the undertaking in promoting the mark

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee relevant factors (para. 51) –the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking –statements from chambers of commerce and industry or other trade and professional associations

CJEU, 19 June 2014, cases C-217/13 and 218/13, Oberbank/DSGV ‘contourless colour mark red’

67,9% but still less than 70,0% Opinion poll as a shortcut?

CJEU, 19 June 2014, cases C-217/13 and 218/13, Oberbank/DSGV use of opinion poll as guidance is possible but no automatism: use of predetermined percentages is inacceptable (para. 45) ‘...even if a consumer survey may be one of the factors to be taken into account when assessing whether such a mark has acquired a distinctive character through use, the results of a consumer survey cannot be the only decisive criterion to support the conclusion that a distinctive character has been acquired through use.’ (para. 48)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee recognition of need to keep free ‘As regards […] geographical names, it is in the public interest that they remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response.’ (para. 26)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee concrete need to keep free not required ‘Article 3(1)(c) of the Directive is not confined to prohibiting the registration of geographical names as trade marks solely where they designate specified geographical locations which are already famous, or are known for the category of goods concerned, and which are therefore associated with those goods in the mind of the relevant class of persons…’ (para. 29)

ECJ, 4 May 1999, cases C-108/97 and C-109/97, Windsurfing Chiemsee potential future need sufficient ‘…the competent authority must assess whether a geographical name in respect of which application for registration as a trade mark is made designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future.’ (para. 31)

Collective marks: same reasoning?

Art. 15(2) TMD registration as a collective mark possible ‘By way of derogation from Article 3(1)(c), Member States may provide that signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute collective, guarantee or certification marks.’ important: regulation ensuring access to the association holding the collective mark

individual marks –holder: individual undertaking –risk of monopolisation collective marks –holder: association –obligation to accept all enterprises from the region which meet the required standards? certification marks –holder: control institution –obligation to grant licenses for all enterprises meeting the required standard? No risk of monopolisation?

Example colour per se

only in exceptional circumstances, a colour per se is inherently distinctive exceptional circumstances: number of goods or services very limited +relevant market very specific in other cases: acquisition of distinctive character through use ECJ, 6 May 2003, case C-104/01, Libertel

background: perception of consumers ‘Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not, in current commercial practice, used as a means of identification. A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking.’ (para. 65) ECJ, 6 May 2003, case C-104/01, Libertel

also limited capacity to distinguish colours ‘The number of colours which [the average, reasonably well-informed and reasonably observant and circumspect consumer] is capable of distinguishing is limited, because it is rarely in a position directly to compare products in various shades of colour. It follows that the number of different colours that are in fact available as potential trade marks to distinguish goods or services must be regarded as limited.’ (para. 47) ECJ, 6 May 2003, case C-104/01, Libertel

therefore strong need to keep free ‘...the fact that the number of colours actually available is limited means that a small number of trade mark registrations for certain services or goods could exhaust the entire range of the colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single trader.’ (para. 54) ECJ, 6 May 2003, case C-104/01, Libertel

this need is the stronger, the more goods or services are involved ‘The greater the number of the goods or services [...], the more excessive the exclusive right which it may confer is likely to be, and, for that very reason, the more likely is that right to come into conflict with the maintenance of a system of undistorted competition, and with the public interest in not unduly restricting the availability of colours for the other traders...’ (para. 56) ECJ, 6 May 2003, case C-104/01, Libertel

Example shape marks

difference between traditional types of marks and shape marks ‘…the perception of the average consumer is not necessarily the same in the case of a three- dimensional trade mark, consisting of the packaging of a product, as it is in the case of a word or figurative mark which consists of a sign that is independent from the appearance of the goods it denotes.’ (para. 52) ECJ, 12 February 2004, case C-218/01, Henkel

traditional trademarks attached to the product shape marks (packaging) form part of the product Fundamental distinction between product and trademark

therefore same assumption as to perception of consumers ‘Average consumers are not in the habit of making assumptions about the origin of goods based on the shape of their packaging, in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctive character in the case of such a three-dimensional trade mark than in the case of a word or figurative mark.’ (para. 52) ECJ, 12 February 2004, case C-218/01, Henkel

shape marks thus require the acquisition of distinctiveness though use but exceptions conceivable ‘…a simple departure from the norm or customs of the sector is not sufficient to render inapplicable the ground for refusal given in Article 3(1)(b) of the Directive. In contrast, a trade mark which significantly departs from the norm or customs of the sector […] is not devoid of distinctive character.’ (para. 49) ECJ, 12 February 2004, case C-218/01, Henkel

Example cultural heritage

Federal Patent Court of Germany, 25 November 1997, ‘Mona Lisa’ The Mona Lisa is not distinctive. The Mona Lisa has become customary in trade practices. But there is no conflict with morality or public order.

Guernica for weapons? distinctive? customary in trade practices?

Solveig’s song for beer? distinctive? customary in trade practices?

CJEU, C-283/01, Shield Mark/Kist ‘I find it more difficult to accept […] that a creation of the mind, which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the services he provides with an exclusivity which not even its author's estate enjoys.’ (Opinion A-G Colomer, 3 April 2003, para. 52)

risk of privatising (re-monopolising) parts of the cultural heritage undesirable redefinition of important cultural expressions in commerce free riding on the status, reputation and favourable image of cultural expressions discouragement of ‘cultural heritage grabbing’ Cultural grounds for refusal necessary?

Art. 3(2) TMD Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: b)the trade mark covers a sign of high symbolic value, in particular a religious symbol;...

investment in abstract colour marks desirable? acquired distinctive character of shape marks a result of previous industrial design protection? investment in cultural heritage marks desirable? In general: appropriate incentives?

Territoriality

CJEU, 7 September 2006, case C- 108/05, ‘Europolis’ Bovemij Verzekeringen –wants to register the sign ‘EUROPOLIS’ for insurance and financial services –provides evidence of distinctive character acquired through use in the Netherlands Benelux Trademark Office –refuses registration because distinctive character not acquired for the entire Benelux territory

CJEU, 7 September 2006, case C- 108/05, ‘Europolis’ distinctive character must be acquired throughout the requested territory ‘…only if it is proven that that trade mark has acquired distinctive character through use throughout the territory of the Member State or, in the case of Benelux, throughout the part of the territory of Benelux where there exists a ground for refusal.’ (para. 23)

CJEU, 7 September 2006, case C- 108/05, ‘Europolis’ linguistic differences relevant? ‘…if the ground for refusal exists only in one of the linguistic areas of the Member State or, in the case of Benelux, in one of its linguistic areas, it must be established that the mark has acquired distinctive character through use throughout that linguistic area.’ (para. 28) an appropriate model for CTMs?

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