Oppositions and enforcement related to the European Community Trademarks - practical issues Markpatent Seminar, Ahmedabad, February 2010

CTM – ONE RIGHT EFFECTIVE THROUGH 27 MEMBER STATES OF EUROPEAN COMMUNITY

CTM SYSTEM – BENEFITS Savings on official fees Savings on professional fees Uniform protection Specialized court system in Member States – chances for more effective enforcement CTM may be designated under Madrid System

PRINCIPLE OF UNIFORMITY – ART 1.2 OF CTM REGULATION Equal effect throughout the Community: CTM shall not be registered, transferred or surrendered or be the subject of revocation or invalidation, nor shall its use be prohibited, save in respect of the whole Community Principle shall apply unless otherwise provided in the Regulation (art. 1.2 CTMR)

CHALLENGES TO THE PRINCIPLE OF UNIFORMITY

CHALLENGES TO THE PRINCIPLE OF UNIFORMITY Reference to ECJ, Case C-301/07 „PAGO” Tirol Milch, the defendant, sold a "me too" drink called Lattella whose get-up (shape, colour, cap, label) resembled in several respects the PAGO drink In the advertising for its drink, Tirol Milch used a representation which, like Pago’s CTM, shows a bottle next to a full glass

Legal ground for action – art 9.1.c) CTMR The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: … (c) any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community (…)

Proven reputation in Austria Much less awareness in Germany Little or no awareness elsewhere Austrian Supreme Court asks ECJ (on point of law):

Is a Community trade mark protected in the whole of the Community as a “trade mark with a reputation” for the purposes of Article 9.1.c) of the Regulation if it has a “reputation” only in one Member State? If the answer to the first question is in the negative: is a mark which has a “reputation” only in one Member State protected in that Member State under Article 9.1.c) of the Regulation, so that a prohibition limited to that Member State may be issued?

Attorney General Sharpstone (opinion, p.50) where an undertaking wishes to register a trade mark for use in (progressively) more than one Member State, it seems reasonable to suppose that it will tend to apply for a Community trade mark, rather than for multiple trade mark registrations in different Member States, unless there is some specific reason why it should proceed otherwise (…)

AG Sharpstone (opinion, p.50) (…) where such a mark has a reputation in (a substantial part of) a Member State but not in a substantial part of the Community, national registration in that Member State will be necessary in order to protect the reputation of the mark in that Member State, because such protection will not be available from the Community trade mark under Article 9.1.c) of the Regulation

ECJ: in order to benefit from the protection afforded in Article 9.1.c) of 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 a substantial part of the territory of the European Community, in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community

May the CTM court grant protection only for the country where the rights are proven to be infringed? AG Sharpston in PAGO – yes ECJ in PAGO – skipped the question ECJ in DHL C-235/09 – will have to face the question (?)

CTM DRAWBACKS - CHANCES FOR OPPOSITION Increased risk of absolute grounds of refusal Art. 7.2 CTMR Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community language issues local phenomena in trade

CTM DRAWBACKS - CHANCES FOR OPPOSITION Increased risk of relative grounds of refusal Art. 8 CTMR – relative grounds considered only upon opposition includes national trademarks national applications unregistered well known trademarks non-registered trademarks or another signs used in the course of trade of more than mere local significance (insofar as they give relevant right under national law)

OPPOSITION VS. INVALIDITY ACTION OppositionInvalidity action MOMENTBefore registrationAfter registration TIME/DEADLINE3 months from publication5 years acquiescence, being aware of use of registered CTM DECIDING BODYOHIMOHIM or CTM court (if raised as counterclaim) GROUNDSRelative*Absolute and relative STANDINGProprietors of earlier rightsIf absolute grounds, also third parties *OHIM may be separately advised about absolute grounds

STRATEGIES FOR CTM ENFORCEMENT – CHOICE OF FORUM 1)CTM courts of the Member State in which defendant domiciled or, if not domiciled in any Member State, in which he has an establishment 2)IF NOT - courts of the Member State in which plaintiff domiciled or, if not domiciled in any Member State, in which he has an establishment 3)IF NOT – Spanish courts (seat of OHIM) 4)express or implied agreement as to choice of CTM court 5)ourts of the Member State in which the act of infringement has been committed or threatened

STRATEGIES FOR CTM ENFORCEMENT – CHOICE OF FORUM 6) additional ground - as one of a number of defendants when cases closely connected Art. 6.1 of Council Regulation (EC) No 44/2001 on jurisdiction and the recognition and enforcement of judgments eg. manufacturer and distributor

STRATEGIES FOR CTM ENFORCEMENT – CHOICE OF FORUM EXTENT OF JURISDICTION cases 1-4 – acts of infringement committed or threatened within the territory of any of the Member States Consequently, verdicts and provisional measures may be enforced in whole Community subject to granting enforcement clauses in target States (may be refused if provisional measure granted ex parte)

STRATEGIES FOR CTM ENFORCEMENT – CHOICE OF FORUM EXTENT OF JURISDICTION case 5 – only in respect of acts committed or threatened within the territory of the Member State in which that court is situated Case 6 – ????

STRATEGIES FOR CTM ENFORCEMENT – CHOICE OF FORUM Substantial law used by CTM courts CTMR provides for a right to prevent third parties from using the infringing designations in the course of trade

STRATEGIES FOR CTM ENFORCEMENT – CHOICE OF FORUM Substantial law used by CTM courts Other sanctions – application of local law of the Member State, including private international law trademark law unfair competition law civil liability eg ways of assessment of damages

STRATEGIES FOR CTM ENFORCEMENT – CHOICE OF FORUM Other criteria Efficiency and competence of the courts Markets where CTM enjoys most renown Economic realities (important markets for the CTM holder or for the infringer)

OTHER CONSIDERATIONS Coherence of argumentation when actions in multiple juriscictions similarity issues registrability issues

Thank you for your attention! Michał Siciarek advocate LDS Łazewski Depo i Wspólnicy sp.k. ul. Mysłowicka Warszawa Poland